Is Something Amiss? A Commentary on the Aftermath of Phillips v. AWH Corp.


Holly L. Bonar


In Phillips v. AWH Corp., decided en banc in July of 2005, the Federal Circuit held that dictionaries or other similar sources may be used to assist a construing court in its quest to interpret the claim language, but must take an inferior role to the meanings of claim terms as they would be understood by one of ordinary skill in the art in view of the intrinsic evidence. The court further noted that the usage of a term in the specification is the "single best guide to the meaning of [a] disputed term." This decision reversed the court's opinion in Texas Digital Inc. v. Telegenix, Inc. (2002) where the court had held that dictionaries and the like are "particularly useful resources to assist the court in determining the ordinary and customary meanings of claim terms," and should be consulted before referencing the specification and prosecution history in an attempt to prevent limitations from being read into the claims. In rejecting this approach, the Phillips court stated that, "If the District Court starts with the broad dictionary definition in every case and fails to fully appreciate how the specification implicitly limits definition, the error will systematically cause the construction of the claim to be unduly expansive."

The article’s topic considers the aftermath of Phillips. The Federal Circuit has already revisited this issue several times since July 2005, and it is drawing much attention from practitioners. One of the main purposes of my article is to profile these post-Phillips cases and their effects. The article also introduces several considerations for the patent prosecutor in the aftermath of Phillips.


Intellectual Property Law

Date of this Version

February 2006