Texas Digital Systems v. Telegenix, Inc.: Toward a More Formalistic Patent Claim Construction Model
Berkeley Technology Law Journal
Texas Digital Systems v. Telegenix , Inc.: Toward a More Formalistic Patent Claim Construction Model
Ruoyu Roy Wang
Follow this and additional works at: http://scholarship.law.berkele y.edu/btlj
Dictionaries' are many courts' favorite interpretive tools. First, they
are readily available. More important, they can provide courts with the
prevailing, or ordinary, understanding of a term. This practice of
determining a term's ordinary meaning is crucial in legal interpretation of any
written instrument.3 Thus, it is no accident that patents as a particular form
of written instruments are construed according to the plain meaning of
their claims.4 To that end, dictionaries invariably play a central role in a
patent claim construction proceeding, where courts decide the scope of
disputed patent claims.
What is striking, then, is how dictionaries' importance in patent claim
construction has differed from that in other interpretative contexts. In
interpreting contracts and statutes, courts' reliance on dictionaries has
become a routine exercise that seldom requires much doctrinal justification.
In contrast, dictionaries' evidentiary weight and significance in patent
claim construction had been ambiguous before Texas Digital Systems v.
Telegenix, Inc., where the Federal Circuit firmly ratified dictionary use in
claim construction, clarified dictionaries' evidentiary categorization, and
set forth new procedures for lower courts to follow. 5 Viewed together with
a long line of precedents, Telegenix evinces the Federal Circuit's
increasing preference toward a more formalistic interpretive model for claim
construction. This Note evaluates and supports the soundness of this move
© 2004 Berkeley Technology Law Journal & Berkeley Center for Law and Technology.
1. In this Note, the term "dictionary" is used interchangeably with "dictionary,
encyclopedia, or treatise," unless otherwise noted.
2. See, e.g., Bayer AG v. Housey Pharms., Inc., 340 F.3d 1367, 1371 (Fed. Cir.
2003) ("Dictionaries of the English language provide the ordinary meaning of words used
3. See, e.g., Watt v. Alaska, 451 U.S. 259, 266 n.9 (1981) (quoting from Judge
Learned Hand that "[o]f course it is true that the words used, even in their literal sense,
are the primary, and ordinarily the most reliable source of interpreting the meaning of any
writing: be it a statute, a contract or anything else").
4. See, e.g., Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989
(Fed. Cir. 1999).
5. Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193 (Fed. Cir. 2002).
toward formalism, paying special attention to unique features and
prospective and retrospective functions of patent law.
Part I of this Note traces the history of dictionary use in claim
construction. Part II summarizes the Telegenix case and examines its
connection to the Federal Circuit's past teachings, concluding that the ruling is
not entirely unprecedented and provides the latest landmark in the move
toward formalism. Part III then analyzes and applauds the logic of
formalism in claim construction through an institutional lens into patent law,
arguing that it is the most sensible model from a variety of interpretive
theories in analogous fields of law.
The scope of a patent derives from the meaning of its claims. In
determining the scope of patent claims, courts have long held that claims are
usually given their accustomed, ordinary meanings. 6 The origin of this
plain meaning doctrine can be traced back to cases as early as 1877. 7 The
most recent standard of its application, the presumption of ordinary
meaning in claim construction, appeared in Johnson Worldwide Associates, Inc.
v. Zebco Corp.8
Courts have also acknowledged that patents are instruments that
convey highly technical and innovative ideas, for which plain meaning may
bperecinisaidoenqutaote:deascbrirboeadagheingehrliyc dteiccthionnicaarly, mspeeacniainligzeodf,teonr lancekws scuofnfciceipetn. t9
Therefore, courts developed a second and equally venerable canon of
claim construction-patentees can be their own lexicographers. 0 Under
6. The ordinary meaning controls unless otherwise pointed out by patentees. See
Id. at 1201-02 (internal citation omitted).
7. James R. Barney, In Search of "OrdinaryMeaning", 85 J. PAT. & TRADEMARK
OFF. SOC'Y 101 (2003) (describing Keystone Bridge Co. v. PhoenixIron Co., 95 U.S. 274
(1877), as setting forth the requirement that the terms of a patent should be clear and
distinct, and therefore construction should follow ordinary or clear meaning).
8. Id. (citing Zebco).
9. See Autogiro Co. of Am. v. United States, 384 F.2d 391, 397 (Ct. Cl. 1967)
("The dictionary does not always keep abreast of the inventor. It cannot. Things are not
made for the sake of words, but words for things. To overcome this lag, patent law allows
the inventor to be his own lexicographer.").
10. See, e.g., id. There are other scenarios where the presumption of ordinary
meaning can be rebutted. See, e.g., Zebco, 175 F.3d 985, 990 (Fed. Cir. 1999) (pointing out the
second rebuttal besides the aforementioned lexicographer exception occurs when a
dethis doctrine, a patentee may define words in the patent to take on different
meanings than their ordinary ones. This freedom comes at a cost though,
because courts cannot now limit claim construction to the claims alone but
have to search the intrinsic record to ascertain whether the patentee made
Together, these two canons demand a holistic treatment of claim
construction, requiring examination of both the patent's claims and its
intrinsic record. The former demands that courts discern a term's ordinary
meaning used by persons ordinarily skilled in the art. This is where
dictionaries, especially dictionaries commonly referred to in the relevant
field, can be most helpful. The latter canon requires that courts inspect the
specification and file history in order to ascertain whether the patentee
made any customized definition that is inconsistent with the dictionary
The interplay between dictionaries and the intrinsic record is also
found in two other important and related interpretative canons of patent
law: (1) "one may not read a limitation into a claim from the written
description"; (2) that "one may look to the written description to define a
term already in a claim limitation, [and] a claim must be read in view of
the specification.' 12 The two canons make necessary a claim construction
model that neither favors the written description nor completely ignores it.
Just like the plain meaning and lexicographer doctrines, these two canons
support the notion that ordinary meaning of claim language should
normally control the scope of a patent, unless it is evident from the intrinsic
record that the patentee has acted as his or her own lexicographer.
fault literal reading would so deprive the claim of clarity that the scope of claim could not
11. Zebco, 175 F.3d at 990. The Zebco court stated that
[a]llowing the patentee verbal license only augments the difficulty of
understanding the claims. The sanction of new words or hybrids from
old ones not only leaves one unsure what a rose is, but also unsure
whether a rose is a rose. Thus we find that a claim cannot be interpreted
without going beyond the claim itself. No matter how clear a claim
appears to be, lurking in the background are documents that may
completely disrupt initial views on its meaning.
12. Renishaw PLC v. Marposs Societa' Per Azioni, 158 F.3d 1243, 1248 (Fed. Cir.
Dictionaries' Uncertain Place in the Claim Construction
Evidentiary Hierarchy Prior to Telegenix
In the search of the proper scope of a patent claim, two forms of
evidence are generally considered: intrinsic evidence and extrinsic evidence.
Intrinsic evidence refers to the claims, the specification, and the
prosecution history, or the so-called file wrapper or file history. 13 Extrinsic
evidence generally refers to evidence external to the patent and file history,
such as expert and inventor testimony. 14 The dichotomous division reflects
a difference in their evidentiary significance. The intrinsic record is almost
always admitted if it is offered into evidence and has significant weight in
claim construction.' 5 Extrinsic materials, on the other hand, are admitted
into evidence at the court's discretion, and receive lesser weight. 16 That is,
extrinsic evidence "may be used only to help the court come to the proper
understanding of the claims; it may not be used to vary or contradict the
claim language."' 7 In fact, when intrinsic evidence is unambiguous,
reliance on extrinsic evidence is "legally incorrect."' 8 In addition, Intrinsic
and extrinsic evidence contain many subtypes that enjoy different
gradations of evidentiary weight.19
Courts have long had difficulties placing dictionaries in this
dichotomous categorical scheme. While dictionaries have regularly been used in
claim construction, 20 the Federal Circuit, in Markman v. Westview
Instruments, Inc., listed dictionaries as part of extrinsic evidence. 2' Shortly after
13. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
14. Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995),
aff'd, 517 U.S. 370 (1996).
15. See Autogiro, 384 F.2d at 397 (Ct. C1. 1967) ("In deriving the meaning of a
claim, we inspect all useful documents and reach what Justice Holmes called the 'felt
meaning' of the claim. In seeking this goal, we make use of three parts of the patent: the
specification, the drawings, and the file wrapper."); see also Vitronics, 90 F.3d at 1582
("Usually, [the specification] is dispositive; it is the single best guide to the meaning of a
disputed term."); Markman, 52 F.3d at 980 ("[P]rosecution history can and should be
used to understand the language used in the claims.").
16. See Vitronics, 90 F.3d at 1584.
18. Id. at 1585 ("Because the specification clearly and unambiguously defined the
disputed term in the claim, reliance on this extrinsic evidence was unnecessary and,
hence, legally incorrect.").
19. See id.at 1582-84.
20. Extrinsic evidence may "show what was then old, to distinguish what was new,
and to aid the court in the construction of the patent." Brown v. Piper, 91 U.S. 37, 41
(1875). Extrinsic evidence includes dictionaries. Markman, 52 F.3d at 980.
21. Markman, 52 F.3d at 980 ("Extrinsic evidence consists of... expert and
inventor testimony, dictionaries, and learned treatises.").
Markman, the court in Vitronics Corp. v. Conceptronic,Inc. again
categorically placed dictionaries in the domain of extrinsic evidence with the
caveat that courts may consult dictionaries at any time.22 This qualified
categorization is puzzling: extrinsic evidence is supposed to help courts'
understanding of the underlying technologies, whereas dictionaries mainly
reveal the ordinary meaning of claim terms. Moreover, extrinsic evidence
should be used only after identifying an ambiguity in the intrinsic record.23
This threshold restriction again conflicts with the caveat, which makes
dictionary use temporally unconstrained. Additional confusion emanated
from language in Vitronics that described the supreme importance of the
specification (part of the intrinsic record) and then analogized the
specification to a dictionary.24
This odd practice of labeling dictionaries extrinsic yet placing them
outside the limitations of extrinsic evidence produced a strange creature in
Vitronics's structured hierarchy of evidence. A district court aptly
summarized the aftermath of Vitronics: "Dictionaries are in that strange
netherworld between the realms of intrinsic and extrinsic evidence. 25 The
uncertainty surrounding dictionaries' role in claim construction has caused
much uncertainty in patent litigation, where identifying the weight and
admissibility of evidence derived from dictionaries became difficult.
Scholars have been critical of this ambiguous placement, especially given
that, unlike other extrinsic evidence, dictionaries are publicly available at
the time of patent grant.26
Compounding the categorical uncertainty, the Federal Circuit also
repeatedly admonished against indiscriminate use of dictionaries, further
undermining the evidentiary significance of dictionaries. For example, in
Renishaw v. Marposs Socita' Per Azioni, the court stated that
"[i]ndiscriminate reliance on definitions found in dictionaries can often
produce absurd results. 27 In Hoechst v. BP Chemicals Ltd., the court
22. Vitronics, 90 F.3d at 1584 n.6 ("[T]echnical treatises and dictionaries fall within
the category of extrinsic evidence .... ).
23. Id. at 1583 ("Where the public record unambiguously describes the scope of the
patented invention, reliance on extrinsic evidence is improper.").
24. Id. at 1582 ("The specification acts as a dictionary when it expressly defines
terms used in the claims or when it defines terms by implication .... Usually, [the
specification] is dispositive; it is the single best guide to the meaning of a disputed term.").
25. SeaChange Int'l, Inc. v. nCUBE Corp., 115 F. Supp. 2d 473, 480 n.4 (D. Del.
26. See, e.g., 5A DONALD, CHISUM, CHISUM ON PATENTS, § 18.03[b][i][C]
27. Renishaw PLC v. Marposs Societa' Per Azioni, 158 F.3d 1243, 1250 (Fed. Cir.
stated that dictionaries sometimes could not give dispositive answers to
contested technical meanings. 28 The Hoechst court was especially wary of
general dictionaries, placing their definitions below meanings "used and
understood" by persons in a particular technical field, 29 thereby
disapproving of their use for terms described in a technical context.
THE TELEGENIX DECISION
Despite, and perhaps in light of, the past confusion over dictionaries'
significance and exact role in claim construction, the Telegenix panel
firmly and enthusiastically approved the use of dictionaries in claim
construction.30 To that end, the court explicitly placed dictionaries outside the
domain of extrinsic evidence, 31 and invited lower courts to consult them
before the intrinsic record.32
Procedural History, Facts, and Holdings
In Telegenix, plaintiff Texas Digital Systems ("TDS"), the owner of
four patents 33 on methods and devices for controlling color in light
emitting diode ("LED") display, sued its competitor Telegenix for patent
infringement. Following a jury verdict, the district court found TDS's
patents at issue valid and ruled in TDS's favor, holding that Telegenix
willfully infringed one or more of the asserted patents.34
Telegenix appealed the lower court's ruling to the Federal Circuit,
asserting inter alia that the lower court (1) erroneously construed the claims
28. Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1580 (Fed. Cir. 1996)
("[G]eneral dictionary definition is secondary to the specific meaning of a technical term
as it is used and understood in a particular technical field.").
30. Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193,1203 (Fed. Cir. 2002).
31. Id. The court stated:
As resources and references to inform and aid courts and judges in the
understanding of technology and terminology, it is entirely proper for
both trial and appellate judges to consult these materials at any stage of
a litigation, regardless of whether they have been offered by a party in
evidence or not. Thus, categorizing them as "extrinsic evidence" or
even a "special form of extrinsic evidence" is misplaced and does not
inform the analysis.
32. Id. at 1203-05.
33. U.S. Patent No. 4,965,561 (issued Oct. 23, 1990) ("the '561 patent"); U.S.
Patent No. 4,845,481 (issued July 4, 1989) ("the '481 patent"); U.S. Patent No. 4,804,890
(Feb. 14, 1989) ("the '890 patent"); U.S. Patent No. 4,734,619 (Mar. 29, 1988) ("the '619
34. Telegenix, 308 F.3d at 1201.
at issue and (2) err3o5neously instructed the jury based on the incorrect
The Federal Circuit, reviewing the claim construction issues de novo,
reaffirmed the critical importance of construing claims from their ordinary
meaning. 36 Citing numerous precedents, the court also ratified dictionaries
and technical treatises as proper ways to ascertain the customary and
ordinary meaning of disputed terms. 37 The court reasoned that "[d]ictionaries,
encyclopedias and treatises, publicly available at the time the patent is
issued, are objective resources that serve as reliable sources of information
on the established meaning." 38 The court further held that determining
ordinary meanings, such as dictionary meanings, should be the first step in
claim construction, and ordinary meanings prevail unless they conflict
with the intrinsic record. 39 That is, the "presumption in favor of a
dictionary definition" can be overcome if "the patentee [acts] as his or her own
lexicographer" within the intrinsic record.4"
After explicating the new claim construction procedure and the new
centrality of dictionaries, the court reversed eight constructions and
affirmed one.4 1 The court further held that the district court's claim
construction errors were prejudicial, and therefore vacated the decision below
and remanded for a new trial of both liability and damages.42
35. Id. Other contentions on appeal included that the lower court abused its
discretion in denying certain evidence and admitting certain other evidence; and that the lower
court erroneously relied on a precedent in awarding damages. Id.
36. Id.at 1201-02.
37. Id.at 1202.
38. Id.at 1202-03.
39. Id. at 1204 ("Consulting the written description and prosecution history as a
threshold step in the claim construction process, before any effort is made to discern the
ordinary and customary meanings attributed to the words themselves, invites a violation
of our precedent counseling against importing limitations into the claims.").
41. Five of the eight reversed claims were means-plus-function limitations. The
court reversed them because the district court misidentified either the function or the
corresponding structure. Id.at 1207-16 (reversing claims C, F, G, H, and I).
42. Id.at 1216. Regarding the two non-claim-construction issues, the court found no
error regarding the admissibility of testimonial evidence and the lower court's reliance on
contested precedents, and therefore, affirmed the lower court's decisions on these two
issues. Id.at 1218-20.
Reliance on Dictionaries
The Telegenix court began its analysis by reiterating the doctrine that a
claim term is presumed to carry its ordinary meaning. 43 Citing numerous
precedents, the court reaffirmed the notion that dictionaries "are
particularly useful resources to assist the court in determining the ordinary and
customary meanings of claim terms." 44 The court then removed
dictionaries from the category of extrinsic evidence, to which dictionaries had
Besides removing dictionaries out of the domain of extrinsic evidence,
the court endowed dictionaries with a special kind of authority-they are
objective sources that are free from individuals' biases and motivations.46
The court further reasoned that after applying the new rule of claim
construction, consultation with dictionaries would increase the accuracy of
claim construction; more specifically, it would prevent the improper
importation of limitations from the written description.47
Following the unequivocal endorsement of the use of dictionaries in
claim construction, the Telegenix court set forth explicit procedural
requirements for lower courts to follow. To begin with, the court stressed
that dictionaries ought to be consulted before the intrinsic record, not the
other way around, as was often done before.48 Still, the intrinsic record
should always be checked to rebut the presumption of ordinary
meanings.a9While ordinary or dictionary meanings presumptively control the
claim scope, the presumption is rebuttable where the intrinsic record does
43. See id.at 1202 ("The terms used in the claims bear a 'heavy presumption' that
they mean what they say and have the ordinary meaning that would be attributed to those
words by persons skilled in the relevant art.").
45. Id.at 1204 (holding that "categorizing them as 'extrinsic evidence' or even a
'special form of extrinsic evidence' is misplaced and does not inform the analysis").
Before Telegenix, dictionaries had been generally thought to be extrinsic evidence. See
Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995), aff'd, 517
U.S. 370 (1996).
46. Telegenix, 308 F.3d at 1203 (stating that dictionaries are "unbiased reflections of
common understanding not influenced by expert testimony or events subsequent to the
fixing of the intrinsic record by the grant of the patent not colored by the motives of the
parties, and not inspired by litigation").
47. Id.at 1205 ("The full breadth of the limitations intended by the inventor will be
more accurately determined and the improper importation of unintended limitations from
the written description into the claims will be more easily avoided.").
48. See id. at 1204.
49. Id. ("The intrinsic record also must be examined in every case to determine
whether the presumption of ordinary and customary meaning is rebutted.").
not agree with the ordinary meanings of a claim term,5° where a patentee
"clearly set forth an explicit definition of the term different from its
ordinary meaning, ' 51 and where an inventor has used words or expressions
"representing a clear disavowal of claim scope.",52 These rebuttal
situations are consistent with the canons that "patentee can be his or her own
lexicographer" and that "claims should be read in light of the
specification." Furthermore, when there are multiple dictionary definitions, a court
may construe the relevant claims to encompass all dictionary meanings
that are consistent with the intrinsic record.53
The Telegenix court then applied this new method of claim
construction to four of the nine disputed claims on appeal. 54 For example, the
district court construed the phrase "repeatedly substantially simultaneously
activating" to require that the lights be on simultaneously. 55 The Federal
Circuit held that the district court had ignored the meaning of the term
"activating." The court relied on the Modern Dictionaryof Electronicsand
found "activate" defined as "to start an operation, usually by application of
an appropriate enabling signal.",56 Therefore, the court narrowed the
ordinary meaning of "activating" to turning on the lights simultaneously,
rather than the broader meaning of both "turning on" and "being on," as
argued by TDS.57 Following the ordinary meaning determination, the
court examined the intrinsic record and found no contradiction to the
narrower interpretation.5 8
In construing the limitation "display areas and background areas," the
court consulted the IllustratedDictionary of Electronics for the meaning
of "background" and identified its definition as "[the] context or
supporting area of a picture., 59 From that definition, the court determined that the
display and background areas are not interchangeable. Citing evidence in
the prosecution history that suggested that the author disavowed the
interchangeability, the court ruled for the ordinary meanings that "display" and
"background" are mutually exclusive spatial areas.6° This application
demonstrates that the intrinsic record can sometimes be used to support
In construing "selectively controlling the durations of time intervals of
activation," the court, without citing any dictionary source, stated that
"[t]he plain meaning of 'controlling the durations' indicates that the
claimed invention requires variation of the duration of individual time
intervals, or controlling the width of pulses, during which the LEDs are
activated.' Consulting the intrinsic record, the court then concluded that the
phrase is limited to changing light intensity by varying the width of the
pulses alone and rejected the lower court's construction that covered an
alteration in both pulse width and the number of pulses. 62 This application
suggests that a court may arrive at ordinary meanings entirely on its own.
Finally, regarding the limitation "display areas arranged in a pattern,"
the Federal Circuit agreed with the district court's construction of the
meaning of "pattern," as "having a systematic arrangement., 63 The panel
refused to limit the word "pattern" to the seven-segment display disclosed
in the description, as Telegenix proposed, because there was no intrinsic
evidence to suggest the limitation of the seven-segment display.
Telegenix as Part of the Move toward Formalism
Telegenix ' DoctrinalExpansion is Limited
Telegenix's contribution to the court's claim construction
jurisprudence lies mainly in its clarification of claim construction procedures; on
the doctrinal side, Telegenix is a mere extension of the court's long march
towards the emphasis on text and the reliance on dictionaries. In several
passages, the court in fact referred to precedent cases, including Vitronics,
59. Id. at 1209 (citing ILLUSTRATED DICTIONARY OF ELECTRONICS 147 (3d ed.
60. Id. at 1210.
61. Id. at 1207.
63. Id. at 1211.
to justify the centrality of dictionaries in claim construction. Telegenix,
therefore, does not overrule or abandon its precedents but only clarifies
and expands the existing treatment of dictionaries. 64 One illustration of the
limited doctrinal expansion comes from the words of Judge Schall, who
joined the Telegenix opinion and has since written that Telegenix simply
hheellpd itnhfaotr m"a thceoucrotumrt aoyf tchoenosurdltinaardyicmtieoannairnyg, oenfacywcloorpde.,d6ia5, or treatise to
Telegenix can be best viewed as a critical response to its own
precedents. The case explicitly removed dictionaries from the category of
extrinsic evidence, a classification that started in Markman and had
continued until Telegenix.66 The case also clarified Vitronics's vague guidance
on how district courts should use dictionaries. Whereas Vitronics created
an impression that dictionaries are on the same level of evidentiary
significance as other extrinsic evidence, 67 Telegenix explicitly labeled
dictuinodnearrsietasndasin"gthoef tmheosttecmhneaonloinggyf.u68l sources of information" to aid judges'
Telegenix's treatment of the intrinsic record also shows its harmony
with precedent. In Vitronics, the Federal Circuit already warned against
the exclusive reliance on dictionaries-dictionary-controlled construction
is valid only when the dictionary definition "does not contradict any
definition found in or ascertained by a reading of the patent documents." 69 In
Telegenix, the message is the same: the examination of the intrinsic record
is mandatory in every case to check for rebuttals of the presumption of
Dictionariesto be ConsultedBefore the IntrinsicRecord
The most significant change in the new claim construction procedure
that Telegenix outlines is the priority of dictionaries over the intrinsic
record. The court formulated this temporal hierarchy out of the concern that
if the written specification were read first, judges could inappropriately
limit claim scope by reading in embodiments disclosed in the
specification. 71 The danger is that once a particular embodiment registers first with
a claim interpreter, he or she is likely to be influenced by it, thereby
filtering out an otherwise valid and broader ordinary meaning.72
This approach of examining dictionaries before the specification and
file history is thus an attempt to reconcile a purely literal reading of the
claim text with a contextual reading from the intrinsic record. This
approach also addresses the tension between the canons that "claims must be
irmeapdroinpelrigthot roefadthelimspiteactiifoincsatiforonmofthwehwicrhitttehneydeasrceriaptpiaornt,"inatonda tchlaati m"i.t, i7s3
Courts had never clearly harmonized the two canons, and Telegenix only
took a small step here-the Telegenix approach heeds the latter canon by
ascertaining dictionary or ordinary meaning before checking the intrinsic
record, and upholds the former canon by requiring an intrinsic record
check in every case.74 Navigating between ordinary meaning and intrinsic
record is, however, not an easy task, and often produces disputed
interpretations. For example, in a post-Telegenix case, Judge Linn, the author of
Telegenix, dissented from the majority's narrower construction of the term
"chromosomally integrated," stating that the majority improperly limited
an otherwise broad meaning which contemporary treatises endorse. 75
The reach of Telegenix should not be overstated. Dictionaries are
nothing more than a source for ordinary meaning; they need not be used in all
claim interetations. Indeed, when the Telegenix court construed the term
"pattern, ' 7 and the term "controlling the duration," it provided the
ordinary meanings without citing any dictionary. 77
71. Id. at 1204-05 (citing various cases to advocate that claims should not be limited
to embodiments described in the specification alone).
72. See id.at 1204. The court stated:
If an invention is disclosed in the written description in only one
exemplary form or in only one embodiment, the risk of starting with the
intrinsic record is that the single form or embodiment so disclosed will be
read to require that the claim terms be limited to that single form or
73. Tate Access Floors, Inc. v. Maxcess Techs., Inc., 222 F.3d 958, 966 (Fed. Cir.
74. Telegenix, 308 F.3d at 1204.
75. Genzyme Corp. v. Transkaryotic Therapies, Inc., 346 F.3d 1094, 1107 (Fed. Cir.
2003) (Linn, J., concurring in part and dissenting in part).
76. The court agreed with the district court's construction "having a systematic
arrangement" without consulting to any dictionary. Telegenix, 308 F.3d at 1210-11.
77. See supranotes 61 and 63.
This Note so far has not explored the distinctions between dictionaries,
encyclopedias, and treatises. It is an unanswered question what sources
constitute treatises. Would a white paper by an industry standard body be
considered a treatise? To what extent do we allow a publication by an
interest group into the ranks of dictionaries, encyclopedias, and treatises so
as to encompass all the contemporary de facto understandings in a
technical field? What about situations where dictionaries do not adopt terms at
the rate of the vernacular evolution in a field of technology? In this last
instance, a new edition of a dictionary providing true contemporary
meanings may come so late (after the time of patent filing) that it would be
forever barred from being admitted in claim construction. These questions
will have to be resolved in future cases.
The Case for Formalism in Claim Construction
Viewed together with its precedents, Telegenix's advocacy of
dictionary use is an indication of the Federal Circuit's increasing preference
toward a more formalistic claim construction model, where fidelity to the
ordinary meaning of the terms is heavily favored, while the intrinsic
record, though never ignored, recedes to second place. 78 The next question
then is whether such a formalistic or textualist interpretive direction is
sensible for the domain of patent claim construction.
1. A BriefCatalogueof CompetingInterpretiveModels
Before the question is answered, a brief catalogue of competing
interpretive models is in order. Here, an analogy to other fields of law such as
contracts and statutes is drawn because they supply a rich set of
interpretive theories and bear close relationship with patent law. On a general
level, patents, contracts, and statutes are all instances of written legal
documents. Indeed, patent scholars have often couched patent doctrines,
such as enablement, in contractual terms. 79 In fact, Telegenix already used
78. In this sense, the word formalism is used interchangeably with textualism in this
Note, since textualism also advocates adherence to the plain meaning of the text. For a
discussion of textualism as a major school of interpretation, see WILLIAM N. ESKRIDGE,
JR. ET AL., CASES AND MATERIALS ON LEGISLATION STATUES AND THE CREATION OF
PUBLIC POLICY 670-71 (3d ed. 2001). The interchange does not hide the fact that certain
variations of textualism, such as the "new textualism" advocated by Justice Scalia, which
disapproves of any reference to legislative history. This is quite different from the
formalism advocated here, which does refer to "history." See ESKRIDGE ET AL., supra, at
79. See ROBERT L. HARMON, PATENTS AND THE FEDERAL CIRCUIT § 5.2 at 195 (5th
ed. 2001) (arguing that the public gave the patentee a privilege of exclusivity; therefore,
the patentee should uphold the other end of the bargain by enabling the public to practice
contract law as an analogy to advance dictionaries' role in patent claim
construction. 80 Still, patents share perhaps more similarities with statues.
Both have the public as the audience; both contain a "history" in public
record. In both cases, the subjective intents of Congress and patentees are
not determinative in their interpretation. More importantly, the Markman
court pointed out that both patents and statutes may create liabilities in
third persons who did not participate in the genesis of the instruments. 81
In general, modern interpretive theories navigate between formalism
and realism.8 2 In contract law, for example, the formalists emphasize the
text within the four comers of the contract. A concrete example is a view
of contracts that denies the propriety of filling in missing terms and
concentrates the interpretation on the expressed terms.83 This theory advocates
that a court should limit its interpretative enforcement role to the
unambiguous and verifiable terms in a contract.84 In contrast, realist approaches to
contract law, exemplified in neoclassical and relational contract theories,
focus on the entire factual and social context surrounding contract
formation to discern the intent of the parties and the fairness of the ultimate
In the field of statutory interpretation, various models can be grouped
into three general categories: intentionalism, which tries to identify the
original intent of the drafters; 86 purposivism, which chooses the
interpretation best suited for the purpose of the statute; and textualism (synonymous
to formalism in this Note), which follows the plain meaning of the text. 87
Professor William Eskridge has also proposed a dynamic statutory
interpretation model that deals with changed political and social
circumstances. 88 The model tries to save judges from wrestling with antiquated
wlaenigguhatgoen tcourfrietntevpoollvitiincgal oarndchsaoncgiaeldcosnodciiteitoanls.n8o9rms by placing greater
The interpretive models sketched above do not represent a complete
picture of available interpretive theories; they provide only a vocabulary
and a conceptual framework, from which a sensible model for patent claim
construction can be identified and defended.
The sensibility of formalism, out of all the above interpretive models,
cannot be fully appreciated without first understanding the institutional
features and constraints of patent law. Patents as public legal instruments
necessarily affect the course of conduct of a variety of institutional
players. Business entities evaluate, use, strategize around them. Inventors
study and produce them. Patent agents and prosecutors draft and obtain
them from the Patent and Trademark Office (PTO). Patent litigators are
their defenders and challengers. And federal judges, who shape the
jurisprudence of patent claim construction, drive how all other players perceive
and act upon the next patent. A consideration of courts' institutional
limitations, therefore, is central to the discussion of choices of interpretive
models for patent law.
To begin with, federal district court judges tend to be generalists, and
patent issues are resolved almost exclusively in their courts. 90 And
because patents are invariably technologically complex and specialized,
genclaim construction is to discern not the subjective intent of the parties but the meanings
that one ordinarily skilled in the art would have understood at the time of application.
87. ESKRIDGE ET AL., supranote 78, at 670-71.
88. See William N. Eskridge, Jr., Dynamic Statutory Interpretation, 135 U. PA. L.
REv. 1479 (1987).
89. Id. But the dynamism has some difficulties for claim construction: patents enjoy
a relatively short life span (twenty years from the date of issuance) compared to statutes,
where antiquity is more prevalent; and judges in patent cases are less versed in
technology than in making social and political assessment.
90. Exceptions to federal exclusivity exist when patent issues are not raised in
original well-pleaded claims but in a counterclaim. See Holmes Group, Inc. v. Vornado Air
Circulation Sys. Inc., 535 U.S. 826, 831 (2002) ("Respondent argues that the
wellpleaded-complaint rule, properly understood, allows a counterclaim to serve as the basis
for a district court's 'arising under' jurisdiction. We disagree.").
eralist judges often are not technically proficient to assess the true scope of
the lengthy, acronym-laden, drawing-intensive file-wrapper materials in
support of patent claims. In light of this technological mismatch, it is thus
sensible for district judges to adhere to the common meaning of claim
terms under formalism, especially when the meanings can be and often are
determined through dictionaries, which are judges' familiar tools. In this
regard, purposivism and dynamism are much more difficult for judges to
navigate. These models are more result-oriented, requiring judges to
perform policy and value judgments in order to advance the spirit instead of
the letters of a statute. 91 This judicial awkwardness is more acute in the
patent context, where technical intricacy is difficult to navigate through to
determine the "purpose" of a particular device or method.
An objection to formalism could be that formalism cannot avoid the
above technical deficiency problem because Telegenix and its precedents
do require a check into the intrinsic record. But the Telegenix approach,
which consults dictionaries before the intrinsic record, delays the problem
and allows judges to use familiar tools to obtain a more systematically
uniform determination of claim scope. The familiarity benefit is further
amplified by the busy calendars of federal district courts and the judges' need
to keep the calendars moving. In addition, the Telegenix approach
alleviates the technical deficiency problem as judges only need to look in the
intrinsic record for inconsistencies with ordinary meaning or new
lexicography, rather than attempting the formidable task of gaining a complete
technical understanding of an invention.
The judicial limitation in the context of patent law finds an analogy in
statutory interpretation. There, due to time and information constraints, a
generalist court may want to ignore legislative history, "whose large
volume and unfamiliar components could often provoke judicial error."92
Even though Telegenix does not "ignore" but mandates an intrinsic record
check, the same concern of judicial unfamiliarity in resolving intent or
purpose applies, thereby making intentionalism and purposivism less fit
for claim construction.
It could also be argued that the Federal Circuit is better suited to adopt
nonmechanical or nonformalistic interpretive models; the court was
created by Congress in 1982 to centralize handling of patent cases 93 and is
therefore not a generalist court. But because cases start from a generalist
court, and because district courts follow the appellate court's interpretive
91. See ESKRJDGE ET AL., supranote 78, at 671.
92. See Sunstein & Vermeule, supranote 82, at 922.
93. The Federal Circuit also handles appeals from the U.S. Court of Claims.
create more systematic intermproedtievle ferrormorst.h9e4 Federal Circuit would likely
methods, a nonformalistic
The institutional limitation of judges in patent cases has an empirical
support as well. Seven years ago, the Supreme Court decided Markman v.
Westview Instruments, Inc.9 5 with the hope that judges, arguably better
than jurors at interpreting patent claims, would provide consistency and
predictability in claim construction results. The stark reality today is that
district judges are facing a reversal rate above thirty percent. 96 High
reversal rate wastes valuable resources, as litigants have to wait until the end of
trial to appeal a claim construction ruling. 97 The adoption of a formalist
model, which Telegenix continued to shape, should help create a more
uniform standard of claim construction and, in turn, help reduce the reversal
rate seen today.
FormalismPromotesPredictabilityandEx Ante Planning
Another important characteristic of patent law is that patents serve a
public notice function-the public should be able to discern the
boundaries of the exclusionary rights from the patent itself. The function directly
impacts public life. For example, the perceived boundaries of the
exclusive rights may alter competitors' business strategies; competitors
frequently must choose between licenses and design-arounds. Because of this
notice function, any interpretive model for claim construction should
promote predictability for the public and lend greater certainty in ex ante
In this regard, purposivism could undermine the public notice function
of a patent and decrease the predictability for the public to anticipate the
scope of the next patent. Formalism, on the other hand, advances the
pub94. The similar risk argument is seen in a critique of dynamism in statutory
interpretation--dynamism creates "the risk that the judges' relative social insulation, and the
resulting informational deficits, might cause them to err in the other direction, updating
statutes that aren't obsolete." Sunstein & Vermeule supranote 82, at 906.
95. 517 U.S. 370 (1996).
96. See Christian A. Chu, Empirical Analysis of the FederalCircuit's Claim
Construction Trends, 16 BERKELEY TECH. L.J. 1075, 1104 (2001) (finding a 44% reversal
rate in express reviews of claim construction from 179 cases, further resulting in a 29.6%
case reversal, and a 36.6 % reversal rate with summary affirmance decisions added); see
also Kimberly A. Moore, Are District CourtJudges Equipped to Resolve Patent Cases?,
15 HARV. J.L. & TECH. 1, 11 (2001) (finding a 33% reversal rate for the five-year period
after Markman where district judges had at least one claim construction reversed).
97. The Federal Circuit's rejection of all interlocutory appeals of claim construction
orders significantly contributes to the resource waste. The problem is further exacerbated
by the fact that parties cannot easily obtain a speedy summary judgment when a case is
factually complex, as most patent cases are.
lic notice function more because it predictably emphasizes the meanings
of claims within the four comers of a patent. Purposivism's real place in
patent cases perhaps lies in the doctrine of equivalents ("DOE") in the
infringement analysis stage of a case. With DOE, courts expand claim
boundaries to bring in subjects matters that match the "function, way, and
result of the claimed element." 98 This practice, in a way, serves to examine
the "purpose" of the invention. Unlike DOE and infringement analysis, the
goal of claim construction is to resolve disputed claim scopes and to
provide a common framework of reference for later stages of a trial. This
difference amplifies purposivism's difficulty in claim construction.
Realism also has similar problems. This context-centered approach
requires courts to examine the relationships among parties and social
conditions to maximize fairness in judgment. Already, the public notice
function is disserved since realism necessitates a case-specific, fact-dependent
treatment. Furthermore, patents are not formed by extensive, long-term
relationships characteristic of relational contracts. 99 A patentee is often
involved in the formation process only vicariously through a prosecution
agent or attorney. An infringer is even less involved or entirely removed
from the formation process. Regarding past dealings, even when the
prosecuting agent or attorney is a repeated player, his or her past
experience with PTO often informs little about the technology at issue."' For
these reasons, the parties' relational interdependency, which is highly
valued in realism, 10 is less probative in patent claim construction. In
comparison, Telegenix's adoption of a formalistic model aligns with patent law
better because patent claim construction needs to treat patents as discrete,
rather than extended transactions, because for purposes of claim
construction patents are integrated documents, and because factors supplying
external context, such as inventor's testimony, should be treated with much
The hallmark of formalism is its predictability in process and results,
which also opens it to the criticism of being wooden and mechanical.
Formalism promotes patentees' ability to plan and, in general, to gravitate
toward a more uniform dictionary-oriented set of draft language. This
positive feedback mechanism is perhaps the best attribute of formalism: it
gradually reduces courts' interpretive burdens and mistakes, increases
in98. Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17,40 (1997).
99. See Jay M. Fienman, Relational Contract Theory in Context, 94 Nw. U. L. REv.
737, 739-40 (2000).
100. Exceptions probably exist in rare instances. On example is when one attorney
prosecutes numerous patents regarding the same technology in the same field of art.
101. Fienman, supranote 99, at 748.
terpretive accuracy and predictability, and encourages a norm formation
for patent drafting.
FormalismPromotesEx Post Efficiency andFairness
Predictability in process and outcome breeds efficiency, which is
another positive side effect of formalism in claim construction. This occurs
both for patent prosecutors and judges. On the prosecution side, efficiency
is achieved when patentees gravitate toward a standard set of claim terms
that closely follow dictionary definitions used in the field of art, and when
the PTO in turn can devote less energy to deciphering the meaning of
claims, and more to determining patentability. Insights of contract scholars
not write detailed and complete contracts for fear of misinterpretatiomni.g'0h2t
suggest that high transaction costs are the first reason why parties
Therefore, the increased efficiency and reduced costs from an adoption of
formalism would encourage inventors to patent in the first instance and to
describe the underlying technology and the claims more fully.
On the judicial side, judges can theoretically proceed through a
formalistic claim construction more speedily and accurately. An objection
could be advanced that, compared to a specification-driven search, a
dictionary search without help of the intrinsic record is inefficient and often
produces many more irrelevant results. 0 3 It may be true that dictionary
shopping (the practice of litigants selecting "best" dictionaries out of many
competing ones) likely exerts an initial cost to the efficiency of litigation,
when judges are forced to select the most appropriate dictionaries and the
best definitions. It is likely, however, that few dictionaries will give
contradictory meanings, and that a selected dictionary will have few
overlapping meanings relating to the particular technology at issue. In addition,
litigants' submission of their own choices of dictionaries reduces the time
that the court spends in finding dictionaries on its own. This initial cost, if
any, is likely insignificant or can be eventually recouped by a more
standardized and less frequently reversed construction methodology. It is also
worth noting that, under the Telegenix paradigm, courts do not sacrifice
any efficiency for words that are not disputed, or words that have clear
ordinary meanings without the need of dictionary support.
In terms of fairness, it could be argued that Telegenix's heavy reliance
on dictionaries would yield more pro-patentee results, especially
considering that dictionary definitions are often broad and generic. Yet it was the
alleged infringer in Telegenix that benefited from the dictionary-based
claim construction.' °4 Of course, one case can hardly refute the
argument;' ° 5 more empirical data is needed to analyze this bias concern.
Theoretically, however, any initial pro-plaintiff bias should eventually
disappear when patent drafters start to gravitate toward adopting more standard
Another safeguard against unfairness is Telegenix's required
examination of the intrinsic record. 0 6 Commentators and courts alike have pointed
out that dictionaries, even technical ones in the relevant field, are not
always the best objective sources.' 7 Dictionary definitions tend to be
general and simplified. 0 8 The neutrality of dictionaries is likely destroyed for
a highly specialized term when both sides submit self-serving dictionary
evidence, and the court lacks the technical knowledge to identify the most
appropriate dictionary or dictionary definition. 0 9 Moreover, patent
language has a larger vernacular variance due to the broad span of
technologies.110 These reasons perhaps underlie the canon "patentees as their own
lexicographers." Telegenix heeds this canon by requiring a check with the
intrinsic record, thereby mollifying concerns about pure literalism."'
Lastly, the incorporation of intrinsic record also comports with the
precedents' teaching against an indiscriminate use of dictionaries." 2
104. Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1216 (Fed. Cir. 2002)
(reversing the infringement decision in favor of Telegenix, the defendant and the alleged
105. The Telegenix court only invoked dictionaries on two disputed limitations and
narrowed the scopes of both limitations.
106. 308 F.3d at 1204.
107. See, e.g., Anderson v. Int'l Eng'g & Mfg., Inc., 160 F.3d 1345, 1348 (Fed. Cir.
1998) ("[D]ictionary definitions of ordinary words are rarely dispositive of their meaning
in a technological context.").
108. See, e.g., Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1300 (Fed. Cir.
1999) ("However, dictionaries provide general definitions, rarely in sufficient detail to
resolve close questions in particular contexts.").
109. See Barney, supra note 7, at 126 (arguing that the ability ofjudges' pulling
dictionaries off their own shelves is the neutrality that makes dictionaries a particularly
trustworthy source of extrinsic evidence).
110. It is also because "a verbal portrayal is usually an afterthought written to satisfy
the requirements of patent law." Id.
111. Cf K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1370 (Fed. Cir. 1999) (Rader, J.,
dissenting) ("Divorced from context, words lose their ordinary and accustomed
meanings .... When judges intuit an ordinary and accustomed meaning divorced from context,
they are (usually unwittingly) imposing their own subjective linguistic values on a public
112. See, e.g., Watt v. Alaska, 451 U.S. 259, 266 n.9 (1981) ("But it is one of the
surest indexes of a mature and developed jurisprudence not to make a fortress out of the
A further support for fairness lies in the fact that Telegenix does not
preclude the use of all contextual information in a claim construction
pro.ceeding."13 Instead, it subordinated extrinsic and intrinsic evidence to
ordinary meanings, which are determined through dictionaries or from
claims themselves. Some scholars, in the context of statutory
interpretation, advise litigators to avoid directly citing legislative history, to
formulate more arguments for intra-statute consistency, to increase dictionary
shopping, and to still prepare for the court's interrogation of background
policies." 4 The same strategy can be transplanted to claim construction. In
addition, Telegenix does not expressly rule out any judicial canons of
claim construction. 15 The canons provide forceful arguments, especially
when combined with the intrinsic record in instances of ambiguous literal
meanings. Many of the canons can stand their own ground without the
intrinsic record, and therefore, can be used in ordinary meaning arguments,
complimenting dictionary-based arguments.
Stripped to its essence, patent claim construction revolves around the
interpretation of one or more disputed words." 6 Thus, constructing a
sensible interpretative model is perhaps the single most influential aspect of
claim construction jurisprudence. Against the backdrop of the unique
nature of patents, the Telegenix court engaged in a more formalist approach,
reaffirming the presumption of ordinary meaning of a claim and explicitly
elevating dictionaries' role in claim construction. This Note argues that the
formalistic model toward which Telegenix is moving is a sensible
compromise of the goals and constraints of today's patent law.
Telegenix, however, is neither the beginning nor the end of the court's
claim construction modeling. On this road to formalism, Telegenix is only
dictionary; but to remember that statutes always have some purpose or object to
accomplish, whose sympathetic and imaginative discovery is the surest guide to their
113. 308 F.3d 1193, 1212 (Fed. Cir. 2002) (citing Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996), for the proposition that "[e]xtrinsic evidence in
general, and expert testimony in particular, may be used only to help the court come to
the proper understanding of the claims").
114. See ESKRIDGE ET AL., supra note 78, at 770-71.
115. The choices are plenty, including claim differentiation, patentees as
lexicographers, commensuration between the specification and the claim scope, construction
favoring validity, and many others.
116. See, e.g., Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1345 (Fed. Cir.
1998) ("As with many patent cases, at issue is the meaning of only a few words in the
the latest landmark, and it must be read together with a long line of
precedents for one to appreciate the full scope of claim construction's
evidentiary hierarchy. Telegenix is also not pure literalism. The Telegenix court,
while emphasizing the ordinary meaning of claim terms, never ignored the
intrinsic record and mandated an examination of the intrinsic record in
every case to ensure interpretive accuracy. At the current stage, the model
still has gaps and open questions, such as the undefined scope of treatises
and the unaddressed scenario where dictionaries lag contemporary
vernaculars. Hopefully the Federal Circuit will resolve these issues before
inconsistent rulings start to develop in lower courts.
64. See , e.g., Telegenix , 308 F. 3d at 1202 (citing Victronics Corp . v. Conceptronic, Inc., 90 F.3d 1576 , 1584 n. 6 that "Dictionaries are always available to the court .... ").
65. Alloc , Inc. v. Int'l Trade Comm'n, 342 F.3d 1361 , 1376 - 77 (Fed. Cir. 2003 ) (Schall , J., dissenting).
66. See Markman v. Westview Instruments , Inc., 52 F.3d 967 , 980 (Fed. Cir. 1995 ), aff'd, 517 U.S. 370 ( 1996 ).
67. Vitronics , 90 F. 3d at 1585 (stating that "prior art documents and dictionaries, although to a lesser extent, are more objective and reliable guides" ).
68. Telegenix , 308 F.3d at 1203.
69. Vitronics , 90 F.3d at 1584.
70. Telegenix , 308 F. 3d at 1204 ("The intrinsic record also must be examined in every case to determine whether the presumption of ordinary and customary meaning is rebutted.").
80. Tex . Digital Sys. v. Telegenix, Inc., 308 F.3d 1193 , 1203 (Fed. Cir. 2002 ) (citing Bowers v . Baystate Techs., 302 F.3d 1334 ( Fed. Cir . 2002 ), for its use of nontechnical dictionaries in construing contracts, and Buchanan v . Dep't of Energy , 247 F.3d 1333 , 1339 (Fed. Cir. 2001 ), for its reliance on dictionaries in construing settlement agreements).
81. Markman v. Westview Instruments , Inc., 52 F.3d 967 , 987 (Fed. Cir. 1995 ), aff'd, 517 U.S. 370 ( 1996 ) (concluding that the statutory interpretation model is suitable for patent law at least because "both of these public instruments may create liability in third persons who were not participants in the legislative process or the PTO proceedings" ).
82. Cass R. Sunstein & Adrian Vermeule , Interpretationand Institutions, 101 MICH. L. REV. 885 , 897 ( 2003 ).
83. Robert E. Scott , RelationalContract Theory: UnansweredQuestions A Symposium in Honor of Ian R . MacNeil: The Case For FormalismIn Relational Contract , 94 Nw. U. L. REv. 847 , 859 ( 2000 ).
84. See id. at 859-61.
85. See Jay M. Feinman , The Significance Of Contract Theory , 58 U. CIN. L. REV . 1283 , 1299 ( 1990 ) (stating that relational contract theory, largely developed by Ian Macneil, is "even more multi-dimensional than is neoclassical contract" ).
86. Intentionalism is perhaps already preempted for patent claim construction by 35 U .S.C. § 112, which requires that patents "contain a written description ... in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains ... to make and use the same." 35 U .S.C. § 112 ( 2000 ). Thus, a court's objective in 4.
102. Id . at 862.
103. See generally Ben Hattenbach, Chickens, Eggs and OtherImpediments to Escalating Reliance on Dictionariesin Patent Claim Construction , 85 J. PAT . & TRADEMARK OFF. SOC'Y 181 ( 2003 ).