Phillips v. AWH Corp.
415 F.3d 1303 (Fed. Cir. 2005)
Phillips invented a corrugated
steel wall that was useful for prisons. He obtained a patent. Phillips
then sued AWH who made a similar product.
Phillips walls were filled
with 'baffles'. The 'baffles' shown in Phillips' patent were a different
shape from the baffles that AWH was using in their product.
fyi, AWH's baffles were
used to stop bullets from going through the walls.
Basically, AWH had argued
that Phillip's 'baffles' weren't designed deflect bullets at all, they
just help the wall stand up. AWH said that the word 'baffle' is defined
in the dictionary as something that 'deflects something', therefore
Phillip's wall didn't actually have 'baffles' at all. Phillips argued
that architects used the word 'baffle' differently, and so his wall had
The Trial Court found for AWH.
The Trial Court found that,
in light of to Marksman v. Westview Instruments, Inc. (517 U.S. 370 (1996)), it was the Judge who
was to construe the meaning of the terms in the patent specification.
The Judge looked only at the
specification, and found that the "baffles" must be angled to
deflect bullets. Under this construction, Phillips could not prove
The Appellate Court reversed.
Phillips argued that the
Trial Judge should not have placed so much weight on the wording in the
specification when construing the claim construction. However, the
Appellate Court found that "entirely appropriate for a court, when
conducting claim construction, to rely heavily on the written description
for guidance as to the meaning of the claims."
The Court noted that 5
U.S.C. § 112 ¶1, says that the
"specification necessarily informs the proper construction of the
Courts should also look at
the other claims of the patent to see if you can construe meaning of any
terms in the ambiguous claim.
The canon of claim
differentiation says that courts
should not construe to claims to have the same meeting.
The Court found that looking
at prosecution history is less useful because of a lack of clarity in
comparison to the specification.
The Court found that
extrinsic evidence (like dictionaries) is less useful because here is no
guarantee that a term is used in the same way in a treatise or dictionary
as it is by the patentee.
Although dictionary and
treatise definitions may have value when it comes to better
understanding the underlying technology, they may only be used to
construe clams when the definition does not contradict definitions found
in or ascertained from the specification.
Although the Court agreed
with the way the Trial Court approached the problem, they disagreed with
the Trial Court's conclusion that the intrinsic evidence contained in the
specification made it impossible for AWM to be infringing on Phillips
patent, so they reversed on those grounds.
Basically, this case said that
when a judge is called on to construe what the words in a patent claim
mean, they should perform a detailed analysis of the patent specification
(as well as the other claims in the patent), and not rely very heavily on
extrinsic evidence (like dictionary definitions) or procedural history.