Camilla Hrdy is the Center for Technology, Innovation & Competition Fellow at the University of Pennsylvania Law School and a Visiting Fellow at the Yale Law School Information Society Project. Below, she comments on The Interpretation-Construction Distinction in Patent Law by Professors Chiang and Solum. The “real name” rule applies to comments on this post.
Uncertainty and unpredictability in claim construction outcomes is one of the most important problems in patent litigation today. But patent law isn’t the only context in which judges struggle to determine the meaning of legal texts. In a recent article in the Yale Law Journal, The Interpretation-Construction Distinction in Patent Law, T.J. Chiang and Lawrence Solum argue that construing a patent is no different from any other form of legal analysis performed by judges, whether in constitutional law, statutory law, or contract law. As in these contexts, judges proceed in two distinct stages when determining the legal meaning of a patent’s claims. First, they “interpret” the claims’ linguistic meaning. Second, they “construe” the claims according to their normative beliefs about what the claims’ legal effect should be. According to Chiang and Solum, uncertainty in claim construction outcomes is caused mainly by judges’ disagreements in the “construction” phase, not the “interpretation” phase. In other words, judges disagree over policy, not language.
In a response in the Yale Law Journal Forum, Ben Picozzi and I argue that the “interpretation-construction distinction” does not fully capture how judges construe patent claims because it does not take into account the difference between the statutory context in which claim construction occurs and the constitutional context in which the interpretation-construction distinction evolved. In constitutional analysis, judges are relatively free to interpret and construct the text based on their prior beliefs about which policy outcomes or which form of interpretive methodology (e.g., textualism or anti-textualism) is superior. In contrast, when judges construe the terms of a patent, they must do so in light of the requirements of the Patent Act – in particular, 35 U.S.C. § 112. Section 112 imposes several requirements for minimum disclosure and definiteness. If a patent does not meet these requirements, judges are obligated to find it invalid under one of several doctrines.
We agree with Chiang and Solum, as well as other commentators such as Thomas Krause and Heather Auyang, that significant policy disagreements underlie judges’ divergent views on the legal meaning of patent claims, and that one of the major debates is whether claims should be interpreted broadly, according to how a patentee wrote them, or narrowly, according to what the judge finds to be the “real invention.” But in our view, these debates are based on judges’ disagreements over the precise levels of disclosure and definiteness that section 112 requires. Simply put, what Chiang and Solum call “claim construction” versus “claim interpretation” is actually statutory construction. In our response, we analyze the major claim construction cases that Chiang and Solum use as examples of their theory and show that in each of these examples, the judges’ disagreement over the meaning of the claims at issue was motivated by their disagreement over the meaning of the statute. Specifically, judges’ approaches to claim construction closely followed—and were likely influenced by—their constructions of section 112(a)’s written description requirement and section 112(b)’s definiteness requirement.
Our disagreement with Chiang and Solum is not just theoretical. It is highly relevant for the Supreme Court’s upcoming decision in Teva v. Sandoz, where the Court will decide what standard the Federal Circuit must apply in reviewing district courts’ claim construction decisions. Is claim construction a purely legal question that must be reviewed de novo? Or should at least some aspects of claim construction be reviewed under the more deferential “clear error” standard ordinarily applied to district courts’ factual findings? Most commentators—and the Solicitor General—argue that many issues that arise in claim construction, such as expert testimony on the level of ordinary skill in the art, are factual issues that should be reviewed deferentially. Chiang and Solum disagree, arguing that claim construction should be treated as a question of law and reviewed without deference. The reason they give for their somewhat unusual stance is their view that many important disputes over claim meaning involve construction, not interpretation of claims. If district courts were free to engage in construction without significant oversight from courts of appeal, this would increase, not reduce, uncertainty in outcomes, with “hundreds of district court judges across the nation each following their own individually preferred methodologies in the individual cases that come before them.”
We agree with Chiang and Solum’s conclusion that some purely legal questions underlie judicial disagreements over the meaning of patent claims and that many of these questions are in need of appellate review. But this is because they are questions of statutory construction. Judges disagree over issues like the contours of section 112’s disclosure and claim definiteness requirements, and consequently disagree over the proper construction of claims.
On this view, granting deference to district courts with respect to questions that do not involve statutory construction would not necessarily increase uncertainty and disuniformity in claim construction outcomes. Moreover, even if the Federal Circuit must review many facets of district courts’ claim construction decisions under the more deferential clear error standard, the Federal Circuit could still do much to increase certainty by resolving a number of outstanding statutory debates. For instance, does section 112(a), which the Federal Circuit has held contains a separate written description requirement, also require claims to be construed according to what the inventor “actually invented,” as Judge Lourie and other members of the court have suggested in several claim construction decisions? Does section 112(b), as construed by the Supreme Court in Nautilus v. Biosig, require courts to review more expert evidence in order to determine whether a patent’s claims would inform those skilled in the art “with reasonable certainty” about the scope of the invention?
If the Federal Circuit or the Supreme Court cannot resolve such issues, then Congress should amend the statute to provide greater clarity. This is how patent law has historically progressed and, we believe, is how lawmaking should work within a well-functioning statutory framework. Chiang and Solum’s analysis is a good start, but it doesn’t take this framework into account. Doing so would lead to conclusions that are less pessimistic and more complete.
There should be no real debate here, as the prosecution history is binding on claim construction to the extent that the applicants have argued that the claims cover or do not cover certain references.
But even in the absence of prosecution history, the specification must disclose the invention being claimed. I think we have had recent cases from the Federal Circuit where random mentions in the specification of various features is not a written description of an invention in the combination of those random features and cannot be claimed. There must be some indication in the specification itself that the combination of features actually is considered to be an invention.
This description then would operate as a clarification of what the claim language actually means. So in construing claims, one first would find what the claim term means to one of ordinary skill in the art, and then one would find the corresponding structure materials or acts in the specification to further define what that language actually means. I think the latter part is what we deem construction.
Imagine claim construction only the first step, where the claim language was only interpreted by what it meant to one of ordinary skill in the art. One could then claim anything regardless of what was disclosed with the only possible defense being lack of support for the claimed subject matter, which typically requires proof by clear and convincing evidence. But is that the right approach? I don’t think so.
As I have often said and I’ll say again here, I start with the premise that one can claim no more than what is disclosed and equivalents. The purpose of claims is to particularly point out the parts of the specification that are regarded as inventive for the purposes of examination against the prior art. But the specification is King. One should never be able to claim beyond the scope of the specification.
We recently had a discussion Muncie Gear here where the applicant began claiming the combination of a smooth housing with an anti-cavitation plate where the specification gave no indication whatsoever that the anticavitation plate was inventive, the specification entirely being directed to an anti-torque plate as the novel feature. The Supreme Court seem to suggest in that case that the switch in theory of invention from something the specification never indicated to be inventive in the first place was not permitted. This is one of the reasons why I say the specification is King.
Ned, “the premise that one can claim no more than what is disclosed and equivalents” even if it were to be accepted is another claim ambiguity land mine. What does “disclosed” mean? There is all kinds of case law that claims are NOT normally limited to the narrow scope of the mere examples in the specification, or their “equivalents” [another ambiguity] unless the claim element in question is written in “means for” format so as to trigger a very specific and abnormal 112 claim interpretation clause.
Paul, we know that old and generic items can be briefly described and claimed, but should be given broad scope. But the novel subject matter must be described. To THAT subject matter, not the old and conventional, the Supreme Court has consistently been clear that one is entitled to foreclose that which is disclosed and equivalents. Beyond that, the invention is neither described nor enabled. Claims that extend beyond equivalents can cover the independent inventions of others. To allows such claims would be to retard the progress in the useful arts, not promote it.
It is important to note that those Fed. Cir. judges that would “require claims to be construed according to what the inventor ‘actually invented’ ” [as opposed to the literal scope of the claim] do so by refering to the patent specification [not normally extrinsic evidence]. In effect, either extensively judicially re-writing the claims to add narrowing claim limtations based on the scope of the examples of the invention in the specification, or, holding the claim to be invalid under 112 for having insufficient support for its claim breadth. The latter is long standing law for generic chemical claims lacking sufficient species examples support, but until fairly recently relatively rare for electronic or mechanical invention claims. Either is far removed from merely dealing with verbal ambiguities in the claim language itself.
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