texas digital systems: the use of dictionaries in claim construction jennifer c. kuhn, april 16,...
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Texas Digital Texas Digital Systems:Systems:
The Use of Dictionaries in Claim The Use of Dictionaries in Claim ConstructionConstruction
Jennifer C. Kuhn, April 16, 2003Jennifer C. Kuhn, April 16, 2003Law Office of Jennifer C. KuhnLaw Office of Jennifer C. Kuhn
[email protected]@austin.rr.com512-502-1334512-502-1334
Main Points of Main Points of Texas DigitalTexas Digital308 F.3d 1193 (Fed. Cir. 2002)308 F.3d 1193 (Fed. Cir. 2002)
►Dictionaries are not extrinsic evidence, and Dictionaries are not extrinsic evidence, and judges may look to dictionaries judges may look to dictionaries sua spontesua sponte at at any stage of the litigation. 308 F.3d at 1202.any stage of the litigation. 308 F.3d at 1202.
►When determining the meaning of an When determining the meaning of an ambiguous claim term, judge should look to ambiguous claim term, judge should look to dictionary dictionary firstfirst, and then look to the , and then look to the specifications in order to avoid importing specifications in order to avoid importing limitations into the claims. 308 F.3d at 1204.limitations into the claims. 308 F.3d at 1204.
BackgroundBackground
► Texas Digital (TDS) sued Telegenix on four Texas Digital (TDS) sued Telegenix on four patents “directed to the methods and patents “directed to the methods and devices for controlling the color of pixels in a devices for controlling the color of pixels in a light emitting diode (“LED”) display.” 308 light emitting diode (“LED”) display.” 308 F.3d at 1197-98.F.3d at 1197-98.
► Jury returned a verdict of infringement and Jury returned a verdict of infringement and willfulness. 308 F.3d at 1201.willfulness. 308 F.3d at 1201.
►Damages, enhanced damages and interest Damages, enhanced damages and interest totaled nearly $40 million. 308 F.3d at 1201.totaled nearly $40 million. 308 F.3d at 1201.
Background (cont.)Background (cont.)
►Telegenix’s appeal focused on claim Telegenix’s appeal focused on claim construction, and expert testimony.construction, and expert testimony.
►Dictionaries were used during claim Dictionaries were used during claim construction, but were construction, but were notnot subject of subject of tremendous controversy during tremendous controversy during District Court proceedings. 2000 WL District Court proceedings. 2000 WL 1801849 (Dec. 6. 2000 N.D. Tex.).1801849 (Dec. 6. 2000 N.D. Tex.).
Background (cont.)Background (cont.)
►District Court “set up” the Federal Circuit’s District Court “set up” the Federal Circuit’s opinion by:opinion by: stating that intrinsic evidence should be stating that intrinsic evidence should be
reviewed before extrinsic (and excluding any reviewed before extrinsic (and excluding any discussion of dictionaries);discussion of dictionaries);
stating that if claim term is ambiguous, with no stating that if claim term is ambiguous, with no meaning in the prior art, meaning must be meaning in the prior art, meaning must be found elsewhere in the patent; andfound elsewhere in the patent; and
stating that court cannot review extrinsic stating that court cannot review extrinsic evidence if spec or file history unambiguously evidence if spec or file history unambiguously defines scope of claims. defines scope of claims. Id.Id., at *2., at *2.
Result of District Court’s RuleResult of District Court’s Rule
►Claim terms would be defined by Claim terms would be defined by specification if terms were ambiguous, specification if terms were ambiguous, not only if patentee acted as his own not only if patentee acted as his own lexicographer;lexicographer;
►No extrinsic evidence could be used to No extrinsic evidence could be used to resolve claim ambiguity if specification resolve claim ambiguity if specification gave enough meaning to claim for gave enough meaning to claim for construction purposes.construction purposes.
Federal Circuit’s Response:Federal Circuit’s Response:The Contours of Claim The Contours of Claim
ConstructionConstruction► ““Educational” section entitled “The Contours Educational” section entitled “The Contours
of Claim Construction” precedes the claim of Claim Construction” precedes the claim construction analysis:construction analysis: In construing claims, focus must begin, and In construing claims, focus must begin, and
remain centered on the language of the claims remain centered on the language of the claims themselves,themselves,
Claim terms “mean what they say” and have Claim terms “mean what they say” and have ordinary meaning attributed by POSIAordinary meaning attributed by POSIA
Claim terms receive full range of ordinary Claim terms receive full range of ordinary meaning (as understood by POSIA).meaning (as understood by POSIA).
308 F.3d at 1201-02.308 F.3d at 1201-02.
Texas DigitalTexas Digital Issue 1: Due Issue 1: Due ProcessProcess
► If a District Court of Federal Circuit If a District Court of Federal Circuit panel selects a dictionary definition panel selects a dictionary definition sua spontesua sponte, as , as Texas DigitalTexas Digital allows, allows, doesn’t this deprive the parties the doesn’t this deprive the parties the opportunity to litigate the issue of opportunity to litigate the issue of whether or not the definition is whether or not the definition is appropriate, and violate the parties appropriate, and violate the parties due process rights?due process rights?
Issue 1 as Arising in Texas Issue 1 as Arising in Texas DigitalDigital
► Two patents contained claim limitation Two patents contained claim limitation “repeatedly, substantially, simultaneously, “repeatedly, substantially, simultaneously, activating.”activating.”
► District Court construed “repeatedly” as District Court construed “repeatedly” as repeating,repeating, and “substantially, simultaneously and “substantially, simultaneously activating” as activating” as during some portion of the during some portion of the period defined by repeatedly, the two period defined by repeatedly, the two separate lights are on at the same timeseparate lights are on at the same time. 308 . 308 F.3d at 1205.F.3d at 1205.
► Federal Circuit found that this approach Federal Circuit found that this approach ignored meaning of “activating.” 308 F.3d at ignored meaning of “activating.” 308 F.3d at 1206.1206.
Issue 1 as arising in Issue 1 as arising in Texas Texas DigitalDigital, (cont.), (cont.)
► Federal Circuit turned to definition of “activate” Federal Circuit turned to definition of “activate” (not “activating”) in (not “activating”) in Modern Dictionary of Modern Dictionary of ElectronicsElectronics (6 (6thth ed. 1984). 308 F.3d at 1206. ed. 1984). 308 F.3d at 1206.
►Definition: “To start an operation, usually by Definition: “To start an operation, usually by application of an appropriate enabling signal.”application of an appropriate enabling signal.”
► Claim phrase then construed to mean Claim phrase then construed to mean during during some portion of the period defined as some portion of the period defined as “repeatedly” the two separate lights are turned “repeatedly” the two separate lights are turned on at the same or nearly the same time. on at the same or nearly the same time. Id.Id.
Issue 1 as arising in Issue 1 as arising in Texas Texas DigitalDigital (cont.) (cont.)
►The The Modern Dictionary of ElectronicsModern Dictionary of Electronics was not in the record below, nor, was not in the record below, nor, apparently, was it presented by either apparently, was it presented by either party on appeal.party on appeal.
►Neither party had opportunity to Neither party had opportunity to provide rebuttal definition of provide rebuttal definition of “activating,” or challenge use of “activating,” or challenge use of definition of “activate” instead of definition of “activate” instead of “activating.”“activating.”
Definitions: question of law or Definitions: question of law or fact?fact?
► If a question of fact, court could take If a question of fact, court could take judicial notice. Title 28, Rule 201 judicial notice. Title 28, Rule 201 addresses judicial notice of adjudicative addresses judicial notice of adjudicative facts:facts: Fact cannot be subject to reasonable dispute;Fact cannot be subject to reasonable dispute; Judicial notice may be taken at any stage of Judicial notice may be taken at any stage of
the proceeding;the proceeding; Party is entitled (upon timely request) to an Party is entitled (upon timely request) to an
opportunity to be heard as to the propriety of opportunity to be heard as to the propriety of taking judicial notice.taking judicial notice.
Law or Fact? (cont.)Law or Fact? (cont.)
►Thus, dictionary definition could be Thus, dictionary definition could be subject of judicial notice as a fact if subject of judicial notice as a fact if met other requirements and Federal met other requirements and Federal Circuit created procedure for parties to Circuit created procedure for parties to have an opportunity to be heard.have an opportunity to be heard.
►ABA IP Section Appellate Practice ABA IP Section Appellate Practice Committee has recommended just Committee has recommended just such an approach.such an approach.
►Unlikely that this would be adopted.Unlikely that this would be adopted.
Law or Fact? (cont.)Law or Fact? (cont.)
► If a question of law, the Federal Circuit If a question of law, the Federal Circuit would not need to take judicial notice. would not need to take judicial notice. However, it is not clear that identifying However, it is not clear that identifying relevant dictionary definitions, relevant dictionary definitions, sua sua spontesponte, is permissible even if this is a , is permissible even if this is a question of law.question of law. Opinion equates use of dictionaries in Opinion equates use of dictionaries in
claim construction to their use in claim construction to their use in statutory construction and contract statutory construction and contract interpretation. 308 F.3d at 1203.interpretation. 308 F.3d at 1203.
Supreme Court’s Use of Supreme Court’s Use of Dictionaries: Law or Fact? Dictionaries: Law or Fact?
(cont.)(cont.)►The Supreme Court frequently uses The Supreme Court frequently uses
dictionaries to define terms during dictionaries to define terms during statutory construction in civil matters:statutory construction in civil matters: In In Pennoyer v. NeffPennoyer v. Neff, 95 U.S. 714 (1878) , 95 U.S. 714 (1878)
the Supreme Court used an early edition the Supreme Court used an early edition of of Webster’sWebster’s to define “editor.” to define “editor.”
In In National Endowment for the Arts v. National Endowment for the Arts v. Finley, 524 U.S. 569 (1998) the Supreme Finley, 524 U.S. 569 (1998) the Supreme Court defines “taking into consideration” Court defines “taking into consideration” by reference to by reference to Webster’s New Webster’s New InternationalInternational..
Supreme Court’s Use of Supreme Court’s Use of Dictionaries: Law or Fact? Dictionaries: Law or Fact?
(cont.)(cont.)► Black’s Law DictionaryBlack’s Law Dictionary also a favorite of the also a favorite of the
Supreme Court.Supreme Court.► Dictionaries, as well as other standard literary Dictionaries, as well as other standard literary
reference works, relevant judicial reference works, relevant judicial pronouncements on the ordinary meaning of pronouncements on the ordinary meaning of such words, and prior legal history may be used such words, and prior legal history may be used to interpret a statute. to interpret a statute. See Ernst and Ernst v. See Ernst and Ernst v. HochfelderHochfelder, 425 U.S. 185, 199 (1976); , 425 U.S. 185, 199 (1976); Pittston Pittston Coal Group v. SebbenCoal Group v. Sebben, 109 S. Ct. 414, 420 , 109 S. Ct. 414, 420 (1988); and (1988); and United States v. Ron Pair Enters. United States v. Ron Pair Enters. Inc.Inc., 109 S. Ct. 1026, 1030-31 (1989)., 109 S. Ct. 1026, 1030-31 (1989).
Conclusion: Law or Fact?Conclusion: Law or Fact?
► If a question of fact (If a question of fact (contra Markmancontra Markman) ) then District Court and Fed Cir would have then District Court and Fed Cir would have to introduce a new procedure to allow to introduce a new procedure to allow parties to be heard on definition. parties to be heard on definition. (Unlikely)(Unlikely)
► If a question of law, (If a question of law, (per Markmanper Markman) then ) then Federal Circuit has some additional Federal Circuit has some additional freedom to refer to the dictionaries of its freedom to refer to the dictionaries of its choice. Each patent is treated like the choice. Each patent is treated like the prima facie interpretation of a new prima facie interpretation of a new statute.statute.
Texas DigitalTexas Digital Issue 2: Issue 2:
►How do parties and District Court How do parties and District Court judges determine which dictionaries judges determine which dictionaries should be used to construe claims?should be used to construe claims?
►(The answer to this issue implicates a (The answer to this issue implicates a number of other questions.)number of other questions.)
Issue 2 as arising in Issue 2 as arising in Texas Texas DigitalDigital
►Modern Dictionary of ElectronicsModern Dictionary of Electronics (6 (6thth ed. ed. 1984) was cited for patents filed in October 1984) was cited for patents filed in October 1986, and March 1989.1986, and March 1989.
► This dictionary is (apparently) not a common This dictionary is (apparently) not a common electronics dictionary.electronics dictionary.
► Penguin Dictionary of ElectronicsPenguin Dictionary of Electronics, (3d ed. , (3d ed. 1998) did not include the terms “activate” 1998) did not include the terms “activate” or “activating.”or “activating.”
► The New IEEEThe New IEEE Dictionary (1993) does not Dictionary (1993) does not contain the term “activating” and defines contain the term “activating” and defines “activate” by reference to “assert.”“activate” by reference to “assert.”
Which dictionary?Which dictionary?
► 1. A dictionary publicly available at time that 1. A dictionary publicly available at time that patent patent issuedissued, not when filed., not when filed.
► 2. A dictionary with a definition that harmonizes 2. A dictionary with a definition that harmonizes with the context of the art in question, the with the context of the art in question, the specification, and the file wrapper.specification, and the file wrapper.
► 3. All dictionaries with definitions that 3. All dictionaries with definitions that harmonize with the art, specification and file harmonize with the art, specification and file wrapper.wrapper.
► 4. No dictionary if the specification or 4. No dictionary if the specification or prosecution history rebuts the presumption that prosecution history rebuts the presumption that the term carries its ordinary and customary the term carries its ordinary and customary meeting.meeting.
1. Publicly available at time of 1. Publicly available at time of issuanceissuance..
►““Dictionaries, encyclopedias and Dictionaries, encyclopedias and treatises, publicly available at the time treatises, publicly available at the time the patent is issued, are objective the patent is issued, are objective resources that serve as reliable sources resources that serve as reliable sources of information on the established of information on the established meanings that would have been meanings that would have been attributed to the terms of the claims by attributed to the terms of the claims by those of skill in the art.” 308 F.3d at those of skill in the art.” 308 F.3d at 1202-03. (citing 1202-03. (citing Dow Chem. Co. v. Dow Chem. Co. v. Sumitomo Chem. Co.Sumitomo Chem. Co. 257 F.3d 1364, 257 F.3d 1364, 1372-73 (Fed. Cir. 2001)).1372-73 (Fed. Cir. 2001)).
Which dictionary? (cont.)Which dictionary? (cont.)2. Definition with right context.2. Definition with right context.
►““Because words often have multiple Because words often have multiple dictionary definitions, some having no dictionary definitions, some having no relation to the claimed invention, the relation to the claimed invention, the intrinsic record must always be consulted intrinsic record must always be consulted to identify which of the different possible to identify which of the different possible dictionary meanings of claim terms in dictionary meanings of claim terms in issue is most consistent with the use of issue is most consistent with the use of the words by the inventor.” (citing the words by the inventor.” (citing Renishaw PLC v. Marposs Societa’ Per Renishaw PLC v. Marposs Societa’ Per AzioniAzioni, 158 F.3d 1243 (Fed. Cir. 1998))., 158 F.3d 1243 (Fed. Cir. 1998)).
2. Context2. Context
►The use of the intrinsic record to The use of the intrinsic record to determine context will help to determine context will help to determinedetermine if the term has a special meaning in the if the term has a special meaning in the
art (meaning any definition from a art (meaning any definition from a technical dictionary will supercede one technical dictionary will supercede one from a standard dictionary);from a standard dictionary);
which of potential definitions from which of potential definitions from relevant dictionary are appropriate.relevant dictionary are appropriate.
Which dictionary? (cont.)Which dictionary? (cont.)3. 3. AllAll definitions with right definitions with right
context.context.►“ “ If more than one dictionary definition If more than one dictionary definition
is consistent with the use of the words is consistent with the use of the words in the intrinsic record, the claim terms in the intrinsic record, the claim terms maymay be construed to encompass all be construed to encompass all such consistent meanings.” 308 F.3d such consistent meanings.” 308 F.3d at 1203. (citing at 1203. (citing Rexnord Corp. v.Rexnord Corp. v. Laitram Corp.Laitram Corp., 274 F.3d 1336, 1343 , 274 F.3d 1336, 1343 (Fed. Cir. 2001)).(Fed. Cir. 2001)).
3. All definitions with right 3. All definitions with right context.context.
►Claim Claim maymay be construed to cover all be construed to cover all definitions that harmonize with the definitions that harmonize with the intrinsic evidence.intrinsic evidence.
►Broader scope appears to be Broader scope appears to be permissivepermissive, not mandatory., not mandatory.
►Prudent approach may be to provide Prudent approach may be to provide multiple definitions to provide the multiple definitions to provide the broadest possible coverage.broadest possible coverage.
Which dictionary? (cont.)Which dictionary? (cont.)4. None if spec. rebuts ord. 4. None if spec. rebuts ord.
mng.mng.► ““Moreover, the intrinsic record also must be Moreover, the intrinsic record also must be
examined in every case to determine whether examined in every case to determine whether the presumption of ordinary and customary the presumption of ordinary and customary meaning is rebutted. Indeed, the intrinsic meaning is rebutted. Indeed, the intrinsic record may show that the specification uses record may show that the specification uses the words in a manner clearly inconsistent with the words in a manner clearly inconsistent with the ordinary meaning reflected, for example, in the ordinary meaning reflected, for example, in a dictionary definition. In such a case, the a dictionary definition. In such a case, the inconsistent dictionary definition must be inconsistent dictionary definition must be rejected.” 308 F.3d at 1204. (citing rejected.” 308 F.3d at 1204. (citing RenishawRenishaw, , 158 F.3d at 1250).158 F.3d at 1250).
4. Specification can rebut 4. Specification can rebut def’s.def’s.
►Specification is still the best evidence, Specification is still the best evidence, as stated in as stated in VitronicsVitronics. The . The specification can trump a dictionary, specification can trump a dictionary, but a dictionary cannot trump but a dictionary cannot trump specification.specification.
►Same principle applies for claim scope Same principle applies for claim scope clearly abandoned during prosecutionclearly abandoned during prosecution
ConclusionConclusion
►Texas DigitalTexas Digital is really a product of a is really a product of a particular District Court opinion that particular District Court opinion that prompted a comprehensive tutorial prompted a comprehensive tutorial from the Federal Circuit.from the Federal Circuit.
►All of the particular issues relating to All of the particular issues relating to dictionary use came from earlier dictionary use came from earlier decisions, merely summarized in this decisions, merely summarized in this decision.decision.
