Nystrom v. Trex Co. (Fed. Cir. 2005). This summer’s Phillips v. AWH decision shifted the focus of claim construction from extrinsic evidence (e.g. dictionaries) to the patent specification. After agreeing to rehear the Nystrom v. Trex appeal to address the effects of Phillips, a Federal Circuit panel (Mayer, Gajarsa, and Linn) has withdrawn its June 28, 2004 opinion (in which Gajarsa had dissented) and has substituted a new unanimous opinion that reaches a different claim construction, resulting in a different case outcome.
Nystrom’s patent related to a design for deck boards that are shaped to shed water. The main claim construction issue related to whether the claim term “board” was limited to boards made of “wood cut from a log” or whether a broader dictionary definition (e.g. “a flat piece of wood or similarly rigid material adapted for special use”) would apply. In its pre-Phillips opinion, the panel relied on the dictionary definition and claim differentiation (a dependent claim specifically called for “wood cut from a log,” while broader claims did not) to determine that “board” was to be construed broadly.
In its post-Phillips opinion, the same panel noted that Nystrom’s specification and the prosecution history consistently described boards made of wood cut from a log. The panel dismissed claim differentiation as a basis for its previous broad construction: “[d]ifferent terms or phrases in separate claims may be construed to cover the same subject matter where the written description and prosecution history indicate that such a reading of the terms or phrases is proper.” Regarding the broad dictionary definition previously relied on, the panel noted:
What Phillips now counsels is that in the absence of something in the written description and/or prosecution history to provide explicit or implicit notice to the public – i.e., those of ordinary skill in the art – that the inventor intended a disputed term to cover more than the ordinary and customary meaning revealed by the context of the intrinsic record, it is improper to read the term to encompass a broader definition simply because it may be found in a dictionary, treatise, or other extrinsic source.
Importantly, there was no clear disavowal of claim scope in this case – Phillips doesn’t require as much – but nothing in the intrinsic record supported a construction broader than “wood cut from a log.”
Marcus Thymian is still a Minnesota Vikings fan and has been involved with several recent litigations in which claim construction turned on intrinsic extrinsic. He is a partner at McDonnell Boehnen Hulbert & Berghoff LLP in < ?xml:namespace prefix = st1 />
. [Marcus Thymian’s Bio] Chicago