Professor Joseph Miller along with James Hilsenteger have pulled together an interesting working paper discussing the Federal Circuit’s use of dictionaries in claim construction. (Abstract and Article Download). They looked at all Federal Circuit cases since 1995 and tallied the use of dictionaries. Findings:
1) General purpose dictionaries are much more popular than technical dictionaries (more than a 2:1 ratio).
2) Webster’s Third International is the most popular dictionary (25% of total).
3) Use of dictionaries appears to vary widely according to the members of each Appellate Panel (Miller provides a nice table in the appendix).
Finally, the authors propose a rule change that would “require that every patent applicant put her dictionary selections (general purpose and technical) on the record during examination, and that any resulting issued patent state the applicant’s dictionary selections on its face.” According to the paper, this requirement would help to strengthen the public notice function of patents.
Comment: Interestingly, I was discussing a similar proposal with another attorney last week. We were thinking of scenarios where it would be in the Applicant’s best interest preset the dictionary to be used. For instance, linking your terms to a dictionary will result in well defined terms that are cheaper to litigate. However, many patent attorneys are reluctant to completely define their terms for fear of losing some undefined scope. This complex issue may be resolved quite soon by the Federal Circuit in Phillips v. AWH.