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The Federal Circuit's long-awaited en banc decision in Phillips v. AWH Corp.

Article Excerpt
Clarifying the role of intrinsic and extrinsic evidence in patent claim construction

Introduction

On July 12, 2005, the Federal Circuit issued its much-anticipated en banc decision in Phillips v. AWH Corporation. The decision directly addressed the frequently debated and controversial role of dictionaries in patent claim construction, and clarified "the extent to which [courts] should resort to and rely on a patent's specification in seeking to ascertain the proper scope of [a patent's] claims." Phillips v. AWH Corp., No. 03-1269, -1286, available at http://www.fedcir.gov/dailylog.html, at *7. The Phillips court concluded that intrinsic evidence, such as the claims, specification, and prosecution history, is the most reliable evidence by which a court can construe claim terms, whereas extrinsic evidence, including dictionaries, is less reliable and should be used for limited purposes.

The Federal Circuit did not address the deference, if any, that the Court should give district court claim construction decisions, even though the en banc court had requested briefing on the issue.

Phillips sought to provide uniformity in claim construction and resolve the dispute regarding the role of dictionaries in claim construction

Patent claim terms are to be given their "ordinary and customary meaning," which is defined as "the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention." Phillips at *9. Courts often look to other sources to shed light on what an ordinary person in the art would understand the term to mean, including "the...

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