Guest Post by Prof. Chiang: A Response to Hrdy and Picozzi

Professor Tun-Jen Chiang is an Associate Professor of Law at the George Mason University School of Law.  Below, he responds to Camilla Hrdy and Ben Picozzi’s commentary on The Interpretation-Construction Distinction in Patent Law.  As with the previous two posts in this series, the real name policy applies to comments on this post. 

Thanks to Jason and Dennis for inviting me to post, and to Jason for the extremely flattering introduction. I should make clear at the outset that I am only speaking for myself, not my coauthor, on this blog, though of course the article represents our joint views.

A brief recap for those who have not read (or only skimmed) the article. The article’s primary claim is conceptual. The claim is that in making decisions pursuant to text, courts necessarily engage in a two-step process: (1) they read the text and try to discern its linguistic meaning, i.e. the meaning of the language, qua language, to members of the intended audience, and (2) they determine the legal effect of the text by rendering a decision. We call the former “interpretation” and the latter “construction.” The key point is that linguistic meaning and legal effect are not always the same, and therefore uncertainty over the legal scope of patent claims does not necessarily arise because of linguistic ambiguity.

A couple of clarifications at the outset. The first is that our definition of “construction” is simply giving text a legal effect—it does not care whether that legal effect is consistent with statute, precedent, and text or not. Camilla’s articulation (where judges “‘construe’ the claims according to their normative beliefs about what the claims’ legal effect should be”) potentially gives the impression that we define construction as only when judges act as super-regulators who engage in free-floating first-order policy analysis. This is not correct. Even the most restrained judge who makes decisions strictly in accordance with statute, precedent, and/or claim text engages in construction, because his decisions necessarily give the claim text a legal effect.

Second, our claim is conceptual, not normative. Our claim is not that interpretation is good or that construction is bad; our claim is that both are intrinsic to the activity of claim analysis, so there is really no “good” or “bad” about the matter. And because our claim is conceptual, our doctrinal prescriptions are very limited. We do not opine, for example, whether courts should give more or less weight to dictionaries, or specifications, or anything else.

The sum is that we are not trying to push a textualist or plain meaning agenda, and we are not trying to suggest that judges who engage in construction are judicial activists who ought to be impeached. Our goal is to simply provide more clarity in analysis and a better diagnosis for what ails patent claims. Specifically, we argue that the uncertainty in patent claims is not caused by linguistic ambiguity, but by methodological disagreement among judges about whether to construe claims according to the patentee’s actual inventive contribution, or instead according to the linguistic meaning of claim text written by the patentee (which is likely to be broader than the real invention).

It is at this point that Hrdy and Picozzi’s response comes in. Hrdy and Picozzi agree with us that methodological disagreement, rather than linguistic ambiguity, underlies disagreements over claim construction. But, they argue, the root source of methodological disagreement in patent law is more narrow than in other areas of law. That is, according to Hrdy and Picozzi, in areas such as constitutional law, “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.” But in patent law, they argue, judges are constrained by the Patent Act, and so disagreements over claim construction do not stem from free-floating beliefs about desirable policy outcomes, but instead are tethered to more mundane and legalistic disagreements about the proper statutory construction of the disclosure requirements of 35 U.S.C. § 112. In particular, they argue that “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.”

It might perhaps surprise Hrdy and Picozzi to discover that I agree that judges’ approaches to claim construction largely parallel, and are likely influenced by, their positions on § 112. Yet I do not think this defeats my argument. As an initial matter, I would note that, even if Hrdy and Picozzi are correct that disagreements over claim construction stem from narrow legalistic disagreements about the proper understanding of § 112, that would not contradict the core claims of the article—the basic point that disputes about claim analysis are mostly disputes about legal methodology rather than linguistic meaning would still stand. In that sense Hrdy and Picozzi’s argument is less a refutation and more in the nature of a follow-on contribution. But I also think there is a deeper disagreement: Implicit in Hrdy and Picozzi’s con-law-is-different argument seems to be the contention that disagreements about § 112 are not based on beliefs about desirable policy but instead are narrow, mundane, and legalistic debates unencumbered by ideological priors. I think this contention is flawed and that their evidence is more consistent with an alternative hypothesis, namely that judges show a consistent pattern across several doctrinally-distinct issues—claim construction, § 112(a), § 112(b)—because they are influenced by their underlying beliefs about desirable policy (specifically, beliefs about desirable patent scope) in all of them. Judges who favor broad patents tend to construe claims broadly and read § 112 narrowly; judges who favor narrow patents tend to do the opposite. Rather than proving that patent law is not like con law, I submit that the Hrdy and Picozzi’s evidence tends to show that it is.


11 thoughts on “Guest Post by Prof. Chiang: A Response to Hrdy and Picozzi

  1. 4

    Having finally had a chance to read all the relevant pieces to this thread, I have to agree with Prof. Chiang that “Hrdy and Picozzi’s argument is less a refutation and more in the nature of a follow-on contribution.” I think that the distinction that Profs. Chiang & Solum (and Hrdy & Picozzi) are proposing would be a very useful one if appellate judges were to take it up.

    Thanks for allowing this interchange on this blog. I am not sure that I would have encountered either article in more normal course of life, but I have enjoyed both.

    1. 4.1

      Greg, I think this these articles aptly describe the debate between Lourie and Rader that occurred in Phillips.

      I believe that Lourie has been better argument.

  2. 2

    Professor Chiang, would you agree or disagree that a patent can only legally cover that which is disclosed an equivalents? Cf. O’Reilly v. Morse, regarding the untethered scope of claim 8, and Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 67 S. Ct. 6, 91 L. Ed. 3 (1946).

    [T]o prevent extension of a patent’s scope beyond what was actually invented, courts have viewed claims to combinations and improvements or additions to them with very close scrutiny.

    Id. at 10.

    Neither in the specification, the drawing, nor in the claims here under consideration, was there any indication that the patentee contemplated any specific structural alternative for the acoustical resonator or for the resonator’s relationship to the other parts of the machine.

    Id. at 11.

    Had Walker accurately described the machine he claims to have invented, he would have had no such broad rights to bar the use of all devices now or hereafter known which could accent waves. For had he accurately described the resonator together with the Lehr and Wyatt apparatus, and sued for infringement, charging the use of something else used in combination to accent the waves, the alleged infringer could have prevailed if the substituted device (1) performed a substantially different function; (2) was not known at the date of Walker’s patent as a proper substitute for the resonator; or (3) had been actually invented after the date of the patent.

    Id. at 13.

    1. 2.1

      I think it is a pretty uncontroversial statement of existing law to say that “a patent can only legally cover that which is disclosed and equivalents,” and in that sense I would certainly agree with it.

      The problem is that people have different conceptions of what is “disclosed” by a particular specification. Did Morse disclose “an apparatus that communicates across long distances using electricity”? Or did he only disclose one particular telegraph? The difference between these two conceptions of what is disclosed by his specification leads to radically different conclusions about what can be legally covered, even if we stipulate that “a patent can only legally cover that which is disclosed and equivalents.”

      1. 2.1.2

        Professor, but this one can abstract the principle in any disclosure. The point of Morse and of Haliburton is simply that one is not entitled to claim an invention in the abstract.

        This seems central to the current 101 jurisprudence as well.

        One can only claim the embodiments described and the scope of the patent is that plus equivalents. If the claim scope is not to the embodiments, but to the principle, as in Morse, the claim must fail. Currently, this is a 101 principle.

        Thus, during construction, must one declare a claim invalid if it is too broad, or should the claim be construed to cover the corresponding structure and equivalents? My view is that if one construes a claim beyond the embodiments disclosed, one must also declare the claim invalid as claiming a principle in the abstract.

        Malcolm (MM) and I have been debating this point for some time. He favors invalidated the claim. I am not so sure.


          On the question of how abstractly an “invention” should be characterized, I think the cases are in irreconcilable conflict. For every Morse, there is a Bell. If you are really asking whether I agree with the proposition that “a patent can only legally cover [the specific embodiments disclosed in a specification] and equivalents,” then I would say that I disagree with that as a descriptive statement of existing law as it is applied by courts. Courts sometimes limit patentees to the specific embodiments disclosed in a specification, but not always.

          That is straying pretty far from the point of the article. I have an entire separate article (named “The Levels of Abstraction Problem in Patent Law”) on that topic.


            Professor Chiang, the real debate between the Lourie’s and the Rader’s on the Federal Circuit is on this issue, IMHO. At some point, the claim exceeds the scope of the disclosure such that one is not claiming simply an equivalent of the disclosed means or methods, but all possible means or methods for achieving the novel object. Take the baffle of Phillips. The only baffles disclosed were obliquely angled, yet the construction given the term was broader than the disclosure, essentially overturning the panel decision by Lourie that has limited the baffle to obliquely angled. With the latter construction, the patent holder would have had to show the accused baffles functioned in the same way, etc., for infringement purposes. But without that limitation, the claims were construed to cover any structure that performed a baffling function.

            The problem I have with the majority decision in Phillips is that the specification disclosed no alternative configurations for a baffle other than obliquely angled configurations. Anyone reading the specification would have understood the term baffle to cover obliquely angled configurations only. Yet, the construction given the term by the court was considerably broader than the disclosure, embracing all possible equivalents within the literal scope.

            Post-Nautilus, the question also becomes whether one of ordinary skill reading the claim in light of the specification would understand the claim to cover anything other than obliquely angled baffles given the disclosure that baffles were obliquely angled structures and with no disclosure that other configurations were contemplated.

            I think it is important to understand that if the patentee wants a broader construction of a particular term, he should indicate in some manner in his specification that alternative configurations are contemplated.

            Despite Phillips, the issue is not settled because I believe Phillips is in fundamental conflict with controlling Supreme Court authority.


              Ned, I agree with your understanding of the conflict at the Federal Circuit (and elsewhere). I have just a point on analysis of situations as in Philips (and Morse, etc.) where the scope of a claim as understood linguistically (“interpretation” of the claim) extends beyond the scope of the disclosure. Even accepting the dichotomy of interpretation (linguistic meaning) and construction (legal effect), I first think that the construction of the claim should never be based on other than the interpretation of the claim. What I mean by that is the claim means what it means linguistically, and it is that interpretation of the claim is (or should be) the “legal” scope of the claim (that is the construction of the claim vis-à-vis what it covers). Given this, the meaning of the claim (interpretation/construction) should then be assessed under the patentability requirements (is the claim as interpreted/constructed novel, nonobvious, and supported by adequate written description? In this light, the overbroad claims of Philips and Morse are unpatentable for failing to be adequately described (Philips and Morse) and/or enabled (Morse). By this analysis, there is no reason to “reinterpret” (or construct) the claim to mean something other than its linguistic meaning. This simplifies the debate considerably.

              Two notes related to this. First, the linguistic meaning of the claim may be ambiguous. It is only in such a situation that the claim should be considered to fail to meet the requirement of definiteness. A supposed ambiguity in the construction of a claim (that differs from the linguistic interpretation) only arises if some requirement of patentability other than definiteness is present. In that case, don’t reinterpret the claim, just apply the appropriate patentability standard.

              Second, the problems I see in the debate over the interpretation-construction distinction comes from acting as if any and all (or most) detriments to patentability vis-à-vis 112 can or should be analyzed or viewed as implicating the “meaning” of the claim. It is this wrong turn in the analysis, I think, that creates muddle thinking and a false debate.

  3. 1

    I would only suggest consideration of the fact that far more patent cases now arrive at the Fed. Cir. appealed solely on non-infringement decisions below. That is, appeals in which invalidity, especially 103 obviousness, has not been decided below, and thus cannot be considered by the Fed. Cir. It is difficult not to suspect that some Fed. Cir. judges may be influenced to accept a narrower claim interpretation that avoids infringement in a case where the subject patent claims seem obvious to them? Is this another factor in claim scope interpretation to be considered?
    [If so, the new situation of a large number of PTO IPR proceedings 103 rejections of patent claims in suit should reduce that factor.]

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