Is The Name Of The Game Still The Claim? The Post-Phillips Revolution In Patent Law

Originally published in Intellectual Property Today, June 2007

Copyright Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Introduction

In 1990, Giles Rich, then Chief Judge of the Federal Circuit, proclaimed, "The name of the game is the claim." 1 Indeed, more than a decade of precedent both before and after made clear that the scope of a patent rested primarily in the words of its numbered patent claims. Patent claims written narrowly were typically afforded limited protection. Broadly crafted claims regularly resulted in expansive patent protection.

Thus over the last three decades, experienced patent drafters honed the skill of crafting broadly worded claims to cover more than what a patent expressly describes. For example, if a technical description in a patent disclosed only "a serial bus," it would not have been unusual to claim that structure as "an interface." In this way, the patent drafter hoped to cover not only all forms of serial busses, but also parallel busses and all other types of interfaces a competitor might employ.

Companies invested their patenting dollars in elaborate claiming strategies, placing less emphasis on the technical description and background parts of their patent applications. There seemed little need to do otherwise. For the name of the game was truly the claim.

Then, two years ago, the winds abruptly began to shift with the Federal Circuit's decision in Phillips v. AWH. 2 In the wake of that en banc decision, dozens of later decisions confirmed a revolution underway in patent law. No longer would the judiciary afford deference to broad claim language. For the Federal Circuit began developing a new body of case law curtailing patent rights where language in a patent suggested that an invention was narrower than the actual words in the claims. Applying this new rationale, the Federal Circuit interpreted a claimed "board" as requiring a board cut from a log and not boards made of synthetic materials.3 It interpreted the word "fiberfill" as requiring only synthetic and not natural material.4 And it interpreted a claimed "host interface" as referring only to a "parallel bus interface," and not a serial-bus interface.5 These limiting interpretations each resulted from statements made by the inventors in their patent specifications. And in each of these examplesas in many recent othersthe Federal Circuit's interpretation led to findings of no infringement in cases where the words of the claims alone counseled the opposite conclusion.

The upshot of this new trend is twofold: Patent drafters must invest more effort in crafting patent specifications so as not to infect their applications with inherent narrowness. And litigators must realize that patent claims might no longer mean what they say. The name of the game is now the entire patent.

It Started with Phillips

The Federal Circuit's July 2005 decision in Phillips v. AWH was unremarkable in its outcome. It reversed a district court's interpretation of claimed "baffles" as requiring a particular angular orientation. This outcome made perfect sense, since the claims themselves did not recite any particular angular orientation. Yet more significant than the outcome was a shift in rationale. For the first time, an en banc panel of the Federal Circuit signaled that the words of patent claims could not be interpreted in a manner divorced from the context of the entire patent. In doing so, the Federal Circuit elevated the patent specification as the primary guide for interpreting patent claims. And since the issue of patent claim interpretation is a question of law, the Phillips decision began a new era where courts could now go so far as to dispose of patent cases without a jury, if in a court's view the patent specification supported a narrow claim interpretation under which no reasonable jury could find infringement.

Consistent with the Phillips rationale, the Federal Circuit began scrutinizing patent claims like never before. But this time, unlike the unremarkable outcome in Phillips, decision after decision appeared to insert into the claims limitations nowhere found within the words of the claims themselves. These cases fall into six categories.

1. Vague Claim Terms Pose a Risk of Narrow Interpretation

   When a claim term is vague or subject to multiple interpretations, the first place courts will now look for understanding is the patent specification. And if the patent specification includes a particularly narrow disclosure, that narrowness may infect the claim. For example, when Network Commerce sued CRS and Microsoft, claiming infringement of a patented system for purchasing software or audio files over the Internet, the vague term "download component," proved to be the atent owner's downfall.6 Unable to understand the meaning of...