US patent law and dictionaries

[Baker, John]

        The opinion is from the U.S. Court of Appeals for the Federal
Circuit, which handles patent appeals and certain other specialized
appeals.  It is the highest court for patent law, except the Supreme
Court.  The opinion was en banc, which means that it was heard by all
twelve judges of the court, not just the usual three-judge panel.  It is
available online at http://www.fedcir.gov/opinions/03-1269.pdf and
includes a good discussion of the relative value of dictionaries and
intrinsic evidence in understanding the meaning of words used in a
particular case.  Here are some of the key paragraphs from the majority
opinion:


        <<The main problem with elevating the dictionary to such
prominence is that it focuses the inquiry on the abstract meaning of
words rather than on the meaning of claim terms within the context of
the patent. Properly viewed, the "ordinary meaning" of a claim term is
its meaning to the ordinary artisan after reading the entire patent. Yet
heavy reliance on the dictionary divorced from the intrinsic evidence
risks transforming the meaning of the claim term to the artisan into the
meaning of the term in the abstract, out of its particular context,
which is the specification. The patent system is based on the
proposition that claims cover only the invented subject matter. As the
Supreme Court has stated, "[i]t seems to us that nothing can be more
just and fair, both to the patentee and the public, than that the former
should understand, and correctly describe, just what he has invented,
and for what he claims a patent." Merrill v. Yeomans, 94 U.S. at 573-74.
The use of a dictionary definition can conflict with that directive
because the patent applicant did not create the dictionary to describe
the invention. Thus, there may be a disconnect between the patentee's
responsibility to describe and claim his invention, and the dictionary
editors' objective of aggregating all possible definitions for
particular words.

        . . . .

        Dictionaries, by their nature, provide an expansive array of
definitions. General dictionaries, in particular, strive to collect all
uses of particular words, from the common to the obscure. By design,
general dictionaries collect the definitions of a term as used not only
in a particular art field, but in many different settings. In such
circumstances, it is inevitable that the multiple dictionary definitions
for a term will extend beyond the "construction of the patent [that] is
confirmed by the avowed understanding of the patentee, expressed by him,
or on his behalf, when his application for the original patent was
pending." Goodyear Dental Vulcanite Co. v. Davis, 102 U.S. 222, 227
(1880). Thus, the use of the dictionary may extend patent protection
beyond what should properly be afforded by the inventor's patent. See
Smith v. Snow, 294 U.S. 1, 14 (1935) ("if the claim were fairly
susceptible of two constructions, that should be adopted which will
secure to the patentee his actual invention") (emphasis added). For that
reason, we have stated that "a general-usage dictionary cannot overcome
art-specific evidence of the meaning" of a claim term. Vanderlande
Indus. Nederland, 366 F.3d at 1321; see also Renishaw, 158 F.3d at 1250,
quoting Liebscher v. Boothroyd, 258 F.2d 948, 951 (CCPA 1958)
("Indiscriminate reliance on definitions found in dictionaries can often
produce absurd results. . . . One need not arbitrarily pick and choose
from the various accepted definitions of a word to decide which meaning
was intended as the word is used in a given claim. The subject matter,
the context, etc., will more often than not lead to the correct
conclusion.").

        Even technical dictionaries or treatises, under certain
circumstances, may suffer from some of these deficiencies. There is no
guarantee that a term is used in the same way in a treatise as it would
be by the patentee. In fact, discrepancies between the patent and
treatises are apt to be common because the patent by its nature
describes something novel. See Autogiro, 384 F.2d at 397 ("Often the
invention is novel and words do not exist to describe it. The dictionary
does not always keep abreast of the inventor. It cannot.").

        Moreover, different dictionaries may contain somewhat different
sets of definitions for the same words. A claim should not rise or fall
based upon the preferences of a particular dictionary editor, or the
court's independent decision, uninformed by the specification, to rely
on one dictionary rather than another. Finally, the authors of
dictionaries or treatises may simplify ideas to communicate them most
effectively to the public and may thus choose a meaning that is not
pertinent to the understanding of particular claim language. See
generally Ellen P. Aprill, The Law of the Word: Dictionary Shopping in
the Supreme Court, 30 Ariz. St. L.J. 275, 293-314 (1998). The resulting
definitions therefore do not necessarily reflect the inventor's goal of
distinctly setting forth his invention as a person of ordinary skill in
that particular art would understand it.>>


John Baker



-----Original Message-----
From: American Dialect Society [mailto:ADS-L at LISTSERV.UGA.EDU] On Behalf
Of Bethany K. Dumas
Sent: Wednesday, July 13, 2005 9:53 AM
To: ADS-L at LISTSERV.UGA.EDU
Subject: US patent law and dictionaries

"Inventors, not dictionaries, get to define the terms in patents
involved in lawsuits, a federal appeals court said in a ruling that sets
guidelines for judges on how to interpret patents." See:

http://www.nytimes.com/2005/07/13/business/13patent.html?

Bethany