The IP Law Bulletin provides great coverage of intellectual property issues and how those issues relate to the business world and the legal profession. (Unfortunately there is a subscription fee).
In today’s copy, they have a great summary article on Phillips v. AWH case and provide a transcript of the oral arguments. Luckily, I have a transcript too:
- Download a copy of the Phillips v. AWH transcript [Phillips AWH Transcript.pdf]. I believe that this transcript originally came from Brad Wright at Banner who was at the hearing.
My Highlights from the transcript:
Dyk: If the claims are broader than the specification, doesn’t that create a problem?
Manthie [counsel for Phillips]: No, the specification is written to satisfy the written description, enablement, and best mode requirements, not to define the scope of the claims.
Bryson: So the specification can be limiting if there is a clear definition, but what about an implicit narrowing, as in Vitronics? Can the specification limit by implication?
A: No, that’s where the problem arises. Different people have different interpretations of the specification. Its like the famous Supreme Court case you know pornography when you see it. The devil is in the details of implicit . Judge Krieger said that baffle required both an angle limitat ion and an interlocking limitation. The prior panel decision in this case said that only the angle was required by the specification. Judge Dyk in dissent said the specification required neither limitation. There are just too many possibilities. Nothing in the claim mentions the function of deflecting bullets.
Clevenger: But we are looking at the process what is your posit ion on implicit narrowing based on the specificat ion? Should we require an explicit narrowing in order to narrow a claim term?
Fischer [Counsel for AWH]: Implicit narrowing is proper.
Clevenger: How can we tell if something has been implicitly narrowed?
A: If an element is described as essential to the invention, and there are no other examples given, then it is implicitly narrowed.
Clevenger: Should we rely on the purposes of the invention? Must it be unequivocally expressed? What if it s a multi-purpose patent?
Clevenger: Is it OK to rely on a dictionary? Is it error to use a regular dictionary if it s a technical term?
Whealan [U.S. government]: If you are dealing with sequencing, that word means something different in electronics and biotech.
Clevenger: Should we overrule our prior cases?
A: It should be clarified that the starting point is not the dictionary.
Dyk: The Supreme Court in statutory construction says to start with the dictionary?
A: But the dictionary doesn’t reflect one skilled in the art . The place to start is the specification.
Dyk: What if there is nothing explicit in the specification?
A: Yes, it’s OK to rely on implicit definit ions or meanings from the specification. The Novartis case not all terms were expressly defined. The next point is when does the specification narrow a claim term? Look at the Bard and Astrazeneca cases. A detailed analysis of the specification and prosecution history. In Brookhill, the same analysis was applied remote was not limited by the specification or prosecution history. So broader is fair. The Brookhill and Bard cases are instructive.
As noted by a trusted court observer, the “transcript does not capture the visual image that trumps everything else!” A major highlight of the argument was the change in facial expression of many panel members when they heard appellant’s counsel (Manthie) point to chapter, line and verse of the patent document on his easel to support an alternate embodiment. It appeared that those panel members may have been pursuaded that the term ‘baffle’ should not have been limited, even when using the specification as guide. Bill Heinze connects the dots: “Could a clearly erroneous factual determination ultimately decide the whole case?
Could a clearly erroneous factual determination ultimately decide the whole case?”