Free Letter - District Court of Delaware - Delaware

__._ _ ________ M llnn ____ Case 1:05-cv-00029-JJF Document 40 Filed 07/20/2005 Page 1 of 3
Ricainnus, LAYTON 6. FINGER
A PROFESSIONAL ASSOCIATION
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July 20, 2005
VLA E-FILE AND HAND DELIVERY
The Honorable Joseph J , Farnan, Jr.
United States District Court
District of Delaware
844 King Street
Wilmington, DE 19801
Rc: Ccphalor-1 Inc., ct al v. BarrLnb0rr1t0rics
C.A. 05-0029-JJF
Dear Judge Farnan;
Pursuant to Local Rule 7 1.2(c), I write to bring to the Court’s attention the Federal
Circuit’s recent en banc decision in Phillips v. AWH Corp., No 03-1269 (Fed. Cir. July l2,
2005) (copy attached) and its applicability to this action.
Cephalon filed its Opening Brief On Claim Construction For U..S. Patent No 4,863,737
(“Briet") on July 8, 2005. At that time, as noted in Footnote 3 of Cephalon’s Brief the much~
anticipated Phillips decision had not yet issued Several days later, on July 12, the Federal
Circuit issued its decision. This letter briefly addresses the effect of Phillips on the law of claim
construction as discussed in Cephalonls Brief
Much of the law of` claim construction remains unchanged in the wake of Phillips
interpreting a patent ciaim is still primarily a matter of reading the language ofthe claim itself,
the specification, and the prosecution history. This intrinsic evidence is still the most significant
source for determining the legally operative meaning of disputed claim language. (Br at 2-3,
Phillips, slip op at l2~l8.) Claim construction analysis begins with the language ofthe claims
themselves, and there is still a presumption that claim terms carry the full scope of their ordinary
and plain meaning. (Br. at 3; Phillips, slip op. at 9). The words of claims are still interpreted
from the perspective of a person of ordinary skill in the art, who is deemed to read the words
used in the patent documents (including the specification) with an understanding of their
meaning in the relevant field. (Br, at 3, Phillips, slip op. at 9-10.)
Claims must still be construed so as to be consistent with the specification, of which they
are a part. (Br. at 4; Phillips, slip op. at l2—l6.) Limitations generally may not be imported from
nrirrasurzus-i

Case 1:05-cv-00029-JJF Document 40 Filed 07/20/2005 Page 2 of 3
The Honorable Joseph l Farnan, lr
luly 20, 2005
Page 2
the specification into the claims, even where the specification describes only a single
embodiment or a limited number of embodiments (Br at 4, Phillips, slip op at 280.9.)
A patentee may use the specification to impart a specialized meaning to a term that is
different from its ordinary meaning (Br. at 5, Phillips, slip op. at l6.) The prosecution history
may reveal pertinent evidence concerning construction of the claims, including evidence of a
disclaimer ofthe full breadth of claim scope. (Br. at 5-6, Phillips slip op. at 17.) The Phillips
decision notes, however, that “because the prosecution history represents an ongoing negotiation
between the PTO and the applicant, rather than the final product of that negotiation, it often lacks
the clarity of the specification and thus is less useful for claim construction pur·poses." Phillips,
slip op. at E7 (citations omitted)
The Phillips decision has clarified certain aspects of the law of claim construction in
important ways. ln Texas Digital Sy s., Inc. v. Telgenix Inc., 308 F3d 1193 (Fed. Cir 2002) and
several subsequent cases, various panels of the Federal Circuit suggested that district court
_judges should consult dictionaries and treatises to determine the ordinary meaning of claim terrns
before looking at the specification, and to use the specification only for the limited purpose of
determining whether the specification excluded one or more aspects ofthe ordinary meaning
Phillips, slip op at 23 in Phillips, the Federal Circuit has stated unequivocally that such an
approach would be incorrect - the specification is "the single best guide to the meaning of a
disputed term," and should not be assigned a limited role in claim construction. Ld, at 24
Yet the Phillips decision also says that "dictionaries or cornparable sources are often
useful to assist in understanding the commonly understood meaning of words and have been
used both by our court and the Supreme Court in claim interpretation . . [A] dictionary
definition has the value of being an unbiased source ‘accessible to the public in advance of
litigation."’ Q at 28 (citations omitted) Courts are still free to consult dictionaries and
technical treatises, so long as such extrinsic evidence does not contradict any definition found in
or ascertained by a reading ofthe specification and prosecution history See id.
ln sum, Phillips holds that "there is no magic formula or catechism for conducting claim
construction Nor is the court barred from considering any particular sources or required to
analyze sources in any particular sequence, as long as those sources are not used to contradict
claim meaning that is unambiguous in light of the intrinsic evidence " Q. at 30-3l "lior
example, a judge who encounters a claim term while reading a patent might consult a general
purpose or dictionary to begin to understand the meaning of the term, before reviewing the
remainder of the patent to determine how the patentee has used the term The sequence of steps
used by the judge in consulting various sources is not important, what matters is t`or the court to
attach the appropriate weight to be assigned to those sources in light of the statutes and policies
that inform patent law " ld. at 3l
Phillips does not change the analysis or the conclusions presented to the Court in
Cephalon’s Brief Cephalon’s proposed constructions of the disputed terms are consistent with
their plain meaning and the intrinsic evidence, which are still the most important factors for
claim construction No clear and unambiguous disclaimer of claim scope is evident in the
Ri,-F1—290l209—1

1h:0§;cy;OOO29-JJF Document 40 Filed 07/20/2005 Page 3 of 3
The Honorable Joseph J . Farnarr, Ir
July 20, 2005
Page 3
prosecution history Therefore, Cephalon respectfully submits that its proposed constructions
should be adopted by the Court
Respectfully,
(liar ssl,
§“}Frederick L. Cottrell, IH
FLC,IH/ps
Enclosure
cc. Clerk of Courr w/ enclosure (via e—fi1e)
Josy W. Ingersoll, Esquire w/ enclosure(via e—iile and hand delivery)
George C. Lombardi, Esquire, Esquire W! enclosure (via facsimile)
David B. Bassett, Esquire wl enclosure (via facsimile)
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