Ruling to Impact Acacia Case, EFF Attorney Says

Rhett Pardon
WASHINGTON — In a decision of particular interest to online adult companies, the U.S. Court of Appeals for the Federal Circuit ruled earlier this week that courts should look to the language in the patent itself rather than turn first to dictionaries to determine the meaning of patent claims.

The ruling is expected to have direct impact in the infringement case brought on by Acacia Technologies against online adult companies, an Electronic Frontier Foundation official told XBiz.

“The new Federal Circuit decision will make it even harder for Acacia to show its patents are valid,” EFF staff attorney Jason M. Schultz told XBiz. “[U.S. District Court] Judge [James] Ware has already indicated that most of the Acacia patents are too vague and unclear to be valid, and the new Federal Circuit decision reinforces the notion that if you didn't disclose something in your patent, you can't sue people for infringing it. That looks exactly like what Acacia has done.”

After several years of litigation against more than a dozen adult companies, Acacia Technologies, a division of Newport Beach, Calif.-based Acacia Research Corp., is continuing its suit over its patented technology, called Digital Media Transmission. The intellectual property licensing firm has five U.S. patents that cover the transmission and receipt of digital audio and video content.

Acacia legal counsel Robert Berman did not respond to repeated XBiz inquiries on the impact of this week’s ruling by the federal appeals court.

In the case decided this week, an en banc panel of the appeals court addressed the issue of dictionary use in Phillips vs. AWH, 03-1269.

The Federal Circuit, which ultimately decides most contentious patent cases, embraced dictionary definitions in a 2002 decision, Texas Digital Systems vs. Telegenix, 308 F.3d 1193.

But since then the court has been split — some of the panels have ruled that dictionary definitions should be the first source for construing the meaning of a word in a patent claim while others have relied on both the written description of the invention and dialogue between patent applicants and the U.S. Patent and Trademark Office interpreting the scope of the patent.

In this week’s 38-page decision, the Federal Circuit found fault with the Texas Digital ruling.

“The methodology [the Texas Digital] adopted placed too much reliance on extrinsic sources such as dictionaries, treatises and encyclopedias and too little on intrinsic sources, in particular the specification and prosecution history,” Judge William Bryson wrote for the 10-to-2 panel. “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.”

Some lawyers say the Federal Circuit has brought back some sense of predictability in patent cases with the decision, as it realigned itself with the U.S. Supreme Court's 1996 ruling in Markman vs. Westview Instruments, 517 U.S. 370, which directed courts to look first at intrinsic evidence in determining the scope of a claim and then turn to extrinsic evidence.

“Texas Digital had turned Markman on its head, and the court today set it back upright,” patent attorney Theodore Herhold told the Recorder, a San Francisco-based legal newspaper. Herhold filed an amicus brief for Visa U.S.A. Inc. and others in the Phillips case.

In a dissent, Judge Haldane Mayer wrote that “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.”

“While this court treats the district court as an intake clerk, whose only role is to collect, shuffle and collate evidence, the reality, as revealed by conventional practice, is far different,” Mayer wrote. “We simply must follow the example of every other appellate court, which, regarding the vast majority of factual questions, reviews the trial court for clear error.”

In the Phillips case, the en banc panel concluded that the district court and a panel of the Federal Circuit had too narrowly interpreted the term in finding AWH did not infringe the patent and remanded the case back to the district court to address the infringement claims. Inventor Edward Phillips claimed that AWH infringed his patent on steel-shell panels resistant to vandalism. The case centered on the meaning of the term “baffles.”