**United States Court of Appeals for the Federal Circuit**

03-1269,-1286

EDWARD H. PHILLIPS,

Plaintiff-Appellant,

v\.

AWH CORPORATION,

HOPEMAN BROTHERS, INC., and LOFTON CORPORATION,

Defendants-Cross Appellants.

[Carl F. Manthei]{.underline}, Attorney at Law, of Boulder, Colorado,
filed a petition for rehearing en banc for plaintiff-appellant.

[Mark W. Fischer]{.underline}, Faegre & Benson LLP, of Boulder,
Colorado, filed a response to the petition for defendants-cross
appellants. With him on the response was [Scott Holwick]{.underline}.

Appealed from: United States District Court for the District of Colorado

Judge Marcia S. Krieger

## United States Court of Appeals for the Federal Circuit

03-1269, -1286

EDWARD H. PHILLIPS,

Plaintiff-Appellant,

v\.

AWH CORPORATION,

HOPEMAN BROTHERS, INC., and LOFTON CORPORATION,

Defendants-Cross Appellants.

Before MAYER, [Chief Judge]{.underline}, NEWMAN, MICHEL, LOURIE,
CLEVENGER, RADER, SCHALL, BRYSON, GAJARSA, LINN, DYK, and PROST,
[Circuit Judges]{.underline}.

# O R D E R

A combined petition for panel rehearing and rehearing [en]{.underline}
[banc]{.underline} having been filed

by the Plaintiff-Appellant, and a response thereto having been invited
by the court and filed by the Defendants-Cross Appellants, and the
petition for rehearing having been referred to the panel that heard the
appeal, and thereafter the petition for rehearing [en]{.underline}
[banc]{.underline} having been referred to the circuit judges who are in
regular active service, and a poll having been taken

IT IS ORDERED THAT:

(1) the petition for rehearing is denied;

(2) the petition to rehear the appeal [en]{.underline}
    [banc]{.underline} is granted;

(3) the judgment of the court entered on April 8, 2004, is vacated, and
    the opinion of the court accompanying the judgment, reported at 363
    F.3d 1207 (Fed. Cir. 2004), is withdrawn.

This court has determined to hear this case [en]{.underline}
[banc]{.underline} in order to resolve issues concerning the
construction of patent claims raised by the now-vacated panel majority
and dissenting opinions. The parties are invited to submit additional
briefs directed to these issues, with respect particularly to the
following questions:

1.  Is the public notice function of patent claims better served by
    referencing primarily to technical and general purpose dictionaries
    and similar sources to interpret a claim term or by looking
    primarily to the patentee's use of the term in the specification? If
    both sources are to be consulted, in what order?

2.  If dictionaries should serve as the primary source for claim
    interpretation, should the specification limit the full scope of
    claim language (as defined by the dictionaries) only when the
    patentee has acted as his own lexicographer or when the
    specification reflects a clear disclaimer of claim scope? If so,
    what language in the specification will satisfy those conditions?
    What use should be made of general as opposed to technical
    dictionaries? How does the concept of ordinary meaning apply if
    there are multiple dictionary definitions of the same term? If the
    dictionary provides multiple potentially applicable definitions for
    a term, is it appropriate to look to the specification to determine
    what definition or definitions should apply?

3.  If the primary source for claim construction should be the
    specification, what use should be made of dictionaries? Should the
    range of the ordinary meaning of claim language be limited to the
    scope of the invention disclosed in the specification, for example,
    when only a single embodiment is disclosed and no other indications
    of breadth are disclosed?

4.  Instead of viewing the claim construction methodologies in the
    majority and dissent of the now-vacated panel decision as
    alternative, conflicting approaches, should the two approaches be
    treated as complementary methodologies such that there is a dual
    restriction on claim scope, and a patentee must satisfy both
    limiting methodologies in order to establish the claim coverage it
    seeks?

5.  When, if ever, should claim language be narrowly construed for the
    sole purpose of avoiding invalidity under, [e.g.]{.underline}, 35
    U.S.C. §§ 102, 103 and 112?

6.  What role should prosecution history and expert testimony by one of
    ordinary skill in the art play in determining the meaning of the
    disputed claim terms?

7.  Consistent with the Supreme Court's decision in [Markman v. Westview
    Instruments, Inc.]{.underline}, 517 U.S. 370 (1996), and our
    [en]{.underline} [banc]{.underline} decision in [Cybor Corp. v. FAS
    Technologies, Inc.]{.underline}, 138 F.3d 1448 (Fed. Cir. 1998), is
    it appropriate for this court to accord any deference to any aspect
    of trial court claim construction rulings? If so, on what aspects,
    in what circumstances, and to what extent?

This case will be heard [en]{.underline} [banc]{.underline} on the basis
of the briefs already filed and any additional briefs addressing the
questions set forth above. An original and thirty copies of all
additional briefs shall be filed, and two copies served on opposing
counsel. Such additional briefs shall be filed simultaneously by the
parties, sixty days from the date of this Order, and shall not exceed
7,000 words in length.

[Amicus]{.underline} [curiae]{.underline} briefs may be filed by bar
associations, trade or industry associations, government entities, and
other interested parties. In particular, the United States Patent and
Trademark Office is invited to submit an [amicus]{.underline}
[curiae]{.underline} brief. [Amicus]{.underline} briefs shall be limited
to 5,000 words, and shall be filed within sixty days from the date of
this Order. [Amicus]{.underline} briefs shall comply with Fed. R. App.
P. 29 and Federal Circuit Rule 29. In order to reduce the number of
redundant briefs, the court requests that, whenever possible,
[amicus]{.underline} participants advocating similar positions file a
joint brief.

Both the parties' briefs and the [amicus]{.underline} briefs shall be
limited to the issue of claim construction, and shall not address the
issue of whether the plaintiff-appellant's trade secret misappropriation
claim was barred by the statute of limitations.

Oral argument will be scheduled by a later order.

RADER, [Circuit Judge]{.underline}, concurs in a separate opinion.

MAYER, [Chief Judge]{.underline}, dissents in a separate opinion.

FOR THE COURT,

July 21, 2004 Jan Horbaly

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_
\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

Date Jan Horbaly

Clerk

**United States Court of Appeals for the Federal Circuit**

03-1269,-1286

EDWARD H. PHILLIPS,

Plaintiff-Appellant,

v\.

AWH CORPORATION,

HOPEMAN BROTHERS, INC., and LOFTON CORPORATION,

Defendant-Cross Appellants.

RADER, [Circuit Judge]{.underline}, concurring in this court's order to
rehear the appeal [en]{.underline} [banc]{.underline}.

To provide completeness in the [en]{.underline} [banc]{.underline}
proceeding, this court should receive commentary on the following
question as well:

> Is claim construction amenable to resolution by resort to strictly
> algorithmic rules, e.g., specification first, dictionaries first,
> etc.? Or is claim construction better achieved by using the order or
> tools relevant in each case to discern the meaning of terms according
> to the understanding of one of ordinary skill in the art at the time
> of the invention, thus entrusting trial courts to interpret claims as
> a contract or statute?

**United States Court of Appeals for the Federal Circuit**

03-1269, -1286

EDWARD H. PHILLIPS,

> Plaintiff-Appellant,

v\.

AWH CORPORATION,

HOPEMAN BROTHERS, INC., and LOFTON CORPORATION,

Defendants-Cross Appellants.

MAYER, [Chief Judge]{.underline}, dissenting.

Until the court is willing to reconsider its holdings in [Markman v.
Westview Instruments, Inc.]{.underline}, 52 F.3d 967 (Fed. Cir. 1995)
(en banc), [aff'd on other grounds]{.underline}, 517 U.S. 370 (1996),
and [Cybor Corp. v. FAS Techs., Inc.]{.underline}, 138 F.3d 1448 (Fed.
Cir. 1998) (en banc), that claim construction is a pure question of law
subject to [de novo]{.underline} review in this court, any attempt to
refine the process is futile. Nearly a decade of confusion has resulted
from the fiction that claim construction is a matter of law, when it is
obvious that it depends on underlying factual determinations which, like
all factual questions if disputed, are the province of the trial court,
reviewable on appeal for clear error. To pretend otherwise inspires
cynicism. Therefore, and because I am convinced that shuffling our
current precedent merely continues a charade, I dissent from the [en
banc]{.underline} order.