Phillips V. AWH, Corp., a Doctrine of Equivalents Case?
Sturicz, Natalie, Marquette Intellectual Property Law Review
INTRODUCTION I. IMPORTANT LEGAL DOCTRINES IN KIRIN-AMGEN AND PHILLIPS A. History of Claim Interpretation in the United States B. The Development of Problems with the Doctrine of Equivalents II. THE CASES A. Phillips v. AWH, Corp. B. Kirin-Amgen, Inc. v. Hoechst, Inc. III. SIMILARITIES BETWEEN PHILLIPS AND KIRIN-AMGEN AND BENEFITS OF ELIMINATING THE DOCTRINE OF EQUIVALENTS A. Similarities between the Cases B. Benefits of Eliminating the Doctrine of Equivalents C. Other Options Available to Patentees for Broadening Claims D. Many Still Favor the Doctrine of Equivalents CONCLUSION
As noted by several U.S. courts, the doctrine of equivalents has been "unworkable" for a number of years. (1) However, as American courts move toward a more holistic approach to claim interpretation, the doctrine of equivalents will become unnecessary as a means of expanding patent scope. (2) The holistic approach to claim interpretation involves a contextual reading of the patent claims that takes into account the definitions used throughout the patent document, including the specification and prosecution history. (3) It places less emphasis on extrinsic sources, like dictionary definitions and treatises, and more emphasis on the patentee's intent when he drafted his claims. In this way, the holistic approach protects the intent of the patentee, while avoiding over-broad claim interpretation. (4)
U.S. courts have adopted the standard used by the House of Lords in the landmark claim interpretation case, Kirin-Amgen v. Hoechst, whereby the House of Lords defines claim language as would a person reasonably "'skilled in the art.'" (5) This standard for claim interpretation is consistent with the holistic approach recently favored by the Federal Circuit in Phillips v. AWH, Corp., and will push U.S. patent law further toward abolishing the doctrine of equivalents as a means of expanding claim scope. (6)
Claims delimit a patentee's intellectual property rights and notify the public of what information a patentee owns, so the claims and the way in which they are interpreted are very important in patent litigation. Some U.S. courts focus heavily on abstract dictionary definitions and other extrinsic sources in order to objectively interpret claim meaning. (7) Such abstract methods of claim interpretation lead to over-broad patent rights in some cases, and they also fail to account for the patentee's intentions when he wrote the claims. (8) The courts' reliance on abstract extrinsic definitions in claim interpretation has meant that patentees did not always receive the protection they expected when they drafted their patent claims; this interpretive method has also made it difficult for third parties to determine what information falls within the claims' scope. (9) In short, abstract claim interpretation provides very little predictability for concerned parties who are seeking to predict their rights or to avoid infringement.
Although abstract claim interpretation leads to unpredictable results, the results seem to be more objective, at least at first glance. (10) Dictionary definitions, treatises, and similar resources provide uniform definitions that are easy for most people to understand. However, patentees often draft claims using terminology that has special meaning to them and to other members of their professions. Dictionary definitions do not always adequately express what a patentee intended to convey, and this Comment will explore a new standard adopted by the Federal Circuit in Phillips v. AWH, Corp. that addresses this very issue. This Comment will also discuss the similarities between the standard adopted in Phillips with the standard adopted by the House of Lords in the United Kingdom case, Kirin-Amgen v. Hoechst, and its implications for U.S. doctrine of equivalents law.
While extrinsic sources remain an important part of claim interpretation in the United States, the context of the claims (including intrinsic evidence of meaning, contained in the specification and prosecution history, and the inventor's intent) should carry more weight in deciding the claims' meanings. …