Phillips v. AWH Decided

The patent world largely took a pass on the breathlessness that surrounded the Supreme Court’s opinion in Grokster. For patent lawyers, today is the big day: The Federal Circuit has released its long-awaited en banc opinion in Phillips v. AWH Corp. Patently Obvious is up with a summary of the opinion, including a link to the full text of the opinions (majority, dissent, and partial dissent).

On the narrow question: The court appears to be unanimous in declaring that dictionaries are to be considered extrinsic evidence, and ordinarily should be disfavored in claim construction. The key, the court emphasizes over and over again, is the specification itself.

On the broad question: Claim construction remains a question of law, rather than a question of fact. In posing the questions for argument en banc, the court teased the patent bar with the prospect of revisiting Cybor: “Consistent with the Supreme Court’s decision in Markman v. Westview Instruments, 517 U.S. 370 (1996), and our en banc decision in Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998), is it appropriate for this court to accord any deference to any aspect of trial court claim construction rulings? If so, on what aspects, in what circumstances, and to what extent?” The majority, perhaps taking a cue from the Grokster opinion (which refused to revisit the Betamax doctrine), punts. “After consideration of the matter, we have decided not to address that issue at this time. We therefore leave undisturbed our prior en banc decision in Cybor.”

In dissent, Judges Mayer and Newman groan, loudly, voicing the misery of district judges throughout the land:

If the proceedings before the district court are merely a “tryout on the road,” id. (quoting Wainwright v. Sykes, 433 U.S. 72, 90 (1977)), as they are under our current regimen, it is wasteful to require such proceedings at all. Instead, all patent cases could be filed in this court; we would determine whether claim construction is necessary, and, if so, the meaning of the claims. Those few cases in which claim construction is not dispositive can be remanded to the district court for trial. In this way, we would at least eliminate the time and expense of the charade currently played out before the district court. Eloquent words can mask much mischief. The court’s opinion today is akin to rearranging the deck chairs on the Titanic—the orchestra is playing as if nothing is amiss, but the ship is still heading for Davey Jones’ locker.