The Federal Circuit's En Banc Consideration of Claim Construction in Phillips v. AWH Corp.

Federal Circuit decisions on how to interpret patent claim language are critically important. Unfortunately, however, recent Federal Circuit decisions do not reflect a unitary approach to patent claim interpretation. On July 21, 2004, the Federal Circuit issued an order granting a petition to rehear en banc the appeal in Phillips v. AWH Corp., 363 F.3d 1207 (Fed. Cir. 2004). The court “determined to hear this case en banc in order to resolve issues concerning the construction of patent claims,” and invited the parties as well as amicus curiae to submit briefs on seven very specific questions relating to claim construction methodology and review on appeal. This article analyzes the Phillips en banc appeal focusing on the amicus briefing and responses to the Federal Circuit's seven questions. Overall, the response to the court's call for amicus briefs was indicative of the keen interest in the bar on these issues. Thirty-three responses were filed, with the majority of them urging the court to interpret claim terms by looking primarily to the patentee's use of the terms in the specification and prosecution history and secondarily to dictionaries and similar sources if useful. The majority of the amici also advocated allowing expert testimony to play at least some role in claim construction. Further, most of the amici that addressed the final question posed in Phillips urged the Federal Circuit to accord deference to varying aspects of trial court claim construction rulings, rather than review these findings entirely de novo. A chart summarizing the positions advocated by each of the amici on each issue can be accessed at the following Web site address: www.mofo.com/misc/chartphillipsawh.pdf.