Do extrinsic sources, such as dictionaries, treatises, and encyclopedias, offer utility in patent claim construction?
Courts generally assume that the words of a statute mean what an “ordinary” or “reasonable” person would understand them to mean. Dictionaries, treatises, and encyclopedias provide a common interpretation for society and are critical in deciding patent lawsuits. In Texas Digital Systems v. Telegenix, the jury held, “[d]ictionaries, encyclopedias and treatises . . . are objective resources that serve as reliable sources of information on the established meaning.” Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1202-03 (Fed. Cir. 2002). These sources free human interpretation from bias persuasion and in turn, give accurate meaning for all to apply. Though dictionaries, treaties, and encyclopedias carry less weight than intrinsic evidence, all are first resort protocol for courts when searching for answers to clarity questions. Though patent examiners generally follow suit with the court, there are instances when exceptions to the norm prevail.
There are times when a traditional meaning, perhaps annotated in a dictionary, is inconsistent with intrinsic explanations and industry norms. In Texas Digital Systems, the court held that [in] determining ordinary meanings…ordinary meanings prevail unless they conflict with the intrinsic record. Id. at 1204. Intro the inventor’s lexicography opportunity.
In Digital Biometrics v. Identix, the court held that though dictionaries routinely provide ordinary meaning for a reasonable person to interpret, under patent prosecution and litigation circumstances, such ordinary meaning may be absurd when conceptualizing highly technical inventions. Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1346 (Fed. Cir. 1998). To solve the interpretation dilemma, courts allow inventors to explain words in the invention application. Such lexicography controls questions of clarity.
While inventors should always begin with ordinary meanings of language and grammar, it is a good idea to consult other sources of authority to determine the meaning of an ambiguous word or phrase, or to determine whether a particular word or phrase has a specific meaning. There could be instances where extrinsic sources prevail over intrinsic sources or vice versa. And arguments for which to use depend on the motivation of the party.
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