Nystrom Opinion Revised in View of Phillips

In Nystrom v. Trex Company, Inc., et al. (Fed. Cir. September 19, 2004), the court withdrew its previous opinion and granted a panel rehearing for the limited purpose of addressing the effects of Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). At the Georgia Bar Patent Rountable in Atlanta on September 22, 2005, Lawrence Nodine, of Needle & Rosenberg made the following summary comparisons between the original and revised opinions, with the quoted passages from the second opinion:

• Both start by looking at the words of the claim
• Before Phillips, go to the dictionary first; after Phillips the claims must be read in view of the specification:

"The person of ordinary skill in the art views the claim term in the light of the entire intrinsic record. Thus, the claims "must be read in view of the specification, of which they are a part." See id. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc). "‘The construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be, in the end, the correct construction.’" Phillips, 415 F.3d at 1316 (quoting Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)). In addition to
the written description, "the prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be."

• Before Phillips, the dictionary must be disavowed; after Phillips dictionaries do not trump;

"In discerning the meaning of claim terms, resort to dictionaries and treatises also may be helpful. Id. at 1318. However, "undue reliance on extrinsic evidence poses the risk that it will be used to change the meaning of claims in derogation of the ‘indisputable public records consisting of the claims, the specification and the prosecution history,’ thereby undermining the public notice function of patents." Id. at 1319 (quoting Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1578 (Fed. Cir. 1995)). . . ."

However, as explained in Phillips, Nystrom is not entitled to a claim construction divorced from the context of the written description and prosecution history. The written description and prosecution history consistently use the term "board" to refer to wood decking materials cut from a log. Nystrom argues repeatedly that there is no disavowal of scope in the written description or prosecution history. Nystrom’s argument is misplaced. Phillips, 415 F.3d at 1321 ("The problem is that if the district court starts with the broad dictionary definition in every case and fails to fully appreciate how the specification implicitly limits that definition, the error will systematically cause the construction of the claim to be unduly expansive."). What Phillips now counsels is that in the absence of something in the written description and/or prosecution history to provide explicit or implicit notice to the public—i.e., those of ordinary skill in the art—that the inventor intended a disputed term to cover more than the ordinary and customary meaning revealed by the context of the intrinsic record, it is improper to read the term to encompass a broader definition simply because it may be found in a dictionary, treatise, or other extrinsic source. Id.; see also Snow v. Lake Shore & Mich. S. Ry. Co., 121 the appellants, that this language is to be taken as a mere recommendation by the the arrangement of the piston and piston-rod.").

• Claim differentiation is not controlling

"When different words or phrases are used in separate claims, a difference in meaning is presumed. Tandon Corp. v. United States Int’l Trade Comm’n, 831 F.2d
1017, 1023 (Fed. Cir. 1987). This principle of claim construction would suggest that the difference in the use of terms has significance and that "board" should not be limited to wood that is cut from a log. However, simply noting the difference in the use of claim language does not end the matter. Different terms or phrases in separate claims may be construed to cover the same subject matter
where the written description and prosecution history indicate that such a reading of the terms or phrases is proper. Id. at 1023-24 (affirming the International Trade Commission’s holding that "the inclusion of the term ‘non-gimballed’ in claim 5 did not require that claims 1 and 12 be read to encompass a gimballed first transducer")."

• Pre-Phillips decision requires that written description disclaim broad dictionary definition; after Phillips, the specification need not amount to a disavowal

An examination of the term "board" in the context of the written description and
prosecution history of the ’831 patent leads to the conclusion that the term "board" must be limited to wood cut from a log. The written description begins by noting that "[a] variety of specialized flooring materials have been developed for interior and exterior use." ’831 patent, col. 1, ll.13-14. The discussion then proceeds to the specific context of wood flooring materials for exterior use. In the context of the discussion of wood flooring materials for exterior use, the patent states, "In all conventional flooring materials known to applicant, the top and bottom horizontal surfaces of these flooring materials are flat and planar. As a result, water tends to stand on the surface of the decking material, causing it to deteriorate more quickly than it otherwise would." Id. at ll. 57-61. The discussion continues, "Further, the process used to cut such lumber from logs can produce inferior product on the outermost boards, often leading to scrap." Id. at ll. 65-67. The Background of
the Invention, thus, frames the invention in the context of wood decking
materials cut from logs, even though it acknowledges that other materials exist.

• After Phillips, panel is skeptical about arguments to avoid estoppel

"[W]hen arguing against an obviousness rejection, Nystrom stated, "YOSIDA [sic] is
clearly not concerned with materials made from wood, and especially an elongate
board for exterior use and having a convex top surface when installed that will
shed water and at the same time provide a surface that is suitable for
supporting furniture and comfortable to walk on." Id. at 4. Although Nystrom
argues that the latter statement was limited to explaining why Yoshida could not
be combined with the Zagelmeyer reference, which was directed to wood, we are
not convinced that the statement is so limited. "

• Before Phillips, panel reluctant to find "disavowal."

Nystrom explained in the same response that "the extent of curvature used by
ZAGELMEYER in his boards was such that a distinctly uneven surface resulted,
giving any surface constructed from them a corduroy-like texture which would
have been unsuitable for supporting furniture, and which would have produced a
distinct tactile sensation of roughness or uneven surface." Id. at 3. Thus, it is clear that when Nystrom was distinguishing Yoshida from an elongate board that is suitable for supporting furniture and comfortable to walk on, he was referring to the invention and not Zagelmeyer. We need not decide, however, whether this statement represents a clear disavowal of claim scope because the context reflects Nystrom’s consistent use of the term board to refer to wood decking materials cut from a log.

• After Phillips, panel gets to dictionaries last, and gives little weight compared to specification

"Nystrom explained in the same response that "the extent of curvature used by ZAGELMEYER in his boards was such that a distinctly uneven surface resulted, giving any surface constructed from them a corduroy-like texture which would have been unsuitable for supporting furniture, and which would have produced a distinct tactile sensation of roughness or uneven surface." Id. at 3. Thus, it is clear that when Nystrom was distinguishing Yoshida from an elongate board that is suitable for supporting furniture and comfortable to walk on, he was referring to the invention and not Zagelmeyer. We need not decide, however, whether this statement represents a clear disavowal of claim scope because the context reflects Nystrom’s consistent use of the term board to refer to wood decking materials cut from a log. "

• Phillips distinguished: Defendant in Phillips sought to narrow ordinary meaning; plaintif here trying to broaden with "obscure definitions":

In Phillips, we held that the term "baffle" did not require any specific angle—even in view of the written description’s limited disclosure of baffles oriented at right angles to the walls—because the ordinary meaning of the term "baffle," as reflected in a dictionary definition to which the parties stipulated and as supported by the overall context of the written description, was simply "objects that check, impede, or obstruct the flow of something." 415 F.3d at 1324. In this case, both parties acknowledge the ordinary meaning of "board" as "a piece of sawed lumber." Nystrom, however, seeks to broaden the term "board" to encompass relatively obscure definitions that are not supported by the written description or prosecution history. Broadening of the ordinary meaning of a term in the absence of support in the intrinsic record indicating that such a broad meaning was intended violates the principles articulated in Phillips. Therefore, we affirm the district court’s construction of the term "board."

For a copy of Mr. Nodine's side-by-side comparison of the two opinions, please feel free to contact me.