Exploring the Law of Embodiments After Phillips

The decision by the Federal Circuit in <i>Phillips v. AWH Corp.</i>, 415 F.3d 1303 (Fed. Cir. 2005) (en banc) in July 2005 reaffirmed and amplified many of the court's prior decisions addressing various aspects of patent claim construction. In particular, it emphasized the critical role of the specification in determining what the claim means and stated that the specification 'is the single best guide to the meaning of a disputed term.' While the specification provides a number of sign posts or guides to interpreting a claim, one of the most important considerations is whether and how the patentee may have limited the invention to certain embodiments or may have distinguished the invention from prior inventions. It is important, therefore, for both patent prosecutors and litigators to understand how the Federal Circuit has approached the issue of limiting claims in a post-<i>Phillips</i> world based on the embodiments disclosed in the specification.

18 minute read November 28, 2006 at 03:11 PM

By

Peter J. Toren