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86 J. Pat. & Trademark Off. Soc'y 878 (2004)
Where Do We Go From Here - A Critical Examination of Existing Claim Construction Doctrine

handle is hein.journals/jpatos86 and id is 880 raw text is: Where Do We Go From Here? A Critical Examination of Existing Claim Construction Doctrine Michael S. Connor and John A. Wasleffi R ecent Federal Circuit decisions present two paradigms of claim construction that may be regarded as being at odds each with the other. One line of decisions seems to emphasize the primacy of ordinary and accustomed meaning, often derived from dictionaries, and insists that the patentee is entitled to the full scope of that meaning unless the specification diminishes the claim terms with unmistakable language. Another line of decisions can be read to derive limits to the claim terms from what is disclosed and enabled in the patent specification. Individual Federal Circuit judges have acknowleged that the court's precedent invited confusion, and called for clarification.2 The court's dissatisfaction with its own claim construction doctrine recently came to a head when it granted a petition for rehearing en banc in the case of Phillips v. AWH Corp.3 The court invited further briefing from the parties and amici, issuing seven questions that put essentially its entire claim construction doctrine under review. This article will attempt to I Mr. Connor is a partner and Mr. Wasleff is counsel in the Intellectual Property Litigation Practice Group of Alston & Bird LLP. The opinions expressed herein are those of the authors and do not necessarily reflect the views of Alston & Bird LLP or its clients. The authors gratefully acknowledge the comments and suggestions of Professor P.K. Saha, a distinguished linguist and consultant to Webster's New World Dictionary for Indo-European languages. 2 See Scimed Life Systems, Inc. v. Advanced Cardiovascular Systems, Inc., 242 F.3d 1337, 1347 (Fed. Cir. 2001) (Dyk, J., concurring) (The problem is that our decisions provide inadequate guidance as to when it is appropriate to look to the specification to narrow the claim by interpretation and when it is not appropriate to do so. Until we provide better guidance, I fear that the lower courts and litigants will remain confused); SuperGuide v. DirecTV Enterprises, Inc., 358 F.3d 870, 898, 69 USPQ2d 1865, 1886 (Fed. Cir. 2004) (Michel, J., concurring) (I am concerned then, that the use of those 'shorthand' expressions about ordinary meaning obscures the correct analysis, tempting panels to look for an 'ordinary meaning' divorced from the proper perspective - the artisan's - and the preferred, proper sources of interpretation - the disclosure, technical dictionaries, prior art patents, and expert testimony.). 3 363 F.3d 1207, 70 USPQ2d 1417 (Fed. Cir. 2004) vacated by 2004 WL 1627271.

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