By Jason Rantanen
Last week, I wrote about my view that patent rights are malleable; that is, their scope and strength can be altered by the parties who interact with them after their issuance. Malleability is different from ideas that patent rights are simply uncertain; that the scope and strength of patents that revolve around chance or indeterminacy, as it involves changes to the patent right rather than resolution of an unknown variable.
In connection with that work, I’ve recently had several valuable exchanges with Professor Tun-Jen Chiang, whose ability to articulate theoretical concepts in patent law is possibly without equal. This is not to say that I agree with Chiang’s perspectives; I frequently do not. But his work bears strong traces of both Richard Epstein and Timothy Dyk in the rigor of its analysis and lucidity of its explanations.
One of Professor Chiang’s most recent works, The Interpretation-Construction Distinction in Patent Law, 123 Yale L. J. 530 (2013), co-authored with Professor Lawrence Solum, takes head-on the issue of indeterminacy in claim scope. Chiang and Solum argue that this indeterminacy is not so much due to linguistic ambiguity as it is to “a conflict about the underlying goal of claim construction: is it to give effect to the linguistic meaning of text, or is it to tailor patent scope to the real invention?” Id. at 536. This conflict, they argue, involves two fundamentally different goals, and determining claim meaning is an incoherent inquiry when judges move between them. The result is indeterminacy not due to linguistic ambiguity but due to an inability to resolve whether to apply linguistic analysis in the first place.
I’ve provided the abstract below; the full article is here: http://www.yalelawjournal.org/article/the-interpretation-construction-distinction-in-patent-law
The ambiguity of claim language is generally considered to be the most important problem in patent law today. Linguistic ambiguity is believed to cause tremendous uncertainty about patent rights. Scholars and judges have accordingly devoted enormous attention to developing better linguistic tools to help courts understand patent claims.
In this Article, we explain why this diagnosis is fundamentally wrong. Claims are not often ambiguous, and linguistic ambiguity is not a major cause of the uncertainty in patent law today. We shall explain what really causes the uncertainty in patent rights, how the erroneous diagnosis of linguistic ambiguity has led the literature off track, and what will get us back on track to solving the uncertainty problem.
Tomorrow, Camilla Hrdy will guest-blog about her response to The Interpretation-Construction Distinction in Patent Law. For this series of posts, we’ll be doing something a bit different for comments. Only comments with the author’s real name will be permitted; all others will be removed.
I also disagree with Professor Chiang’s theory that strictly separates interpretation and construction for claim language.
(1) The example of interpreting “Congress” in the 1st Amendment cases is not “construction” of the legal effect of the term, because the term “Congress” is, by Professor Chiang’s own later examples, ambiguous (apparently and by unfamiliar language of 18th century American legalese). There are many instances of different interpretations of “Congress” even by Founding Fathers’ own writings. Thus, the term is apparently ambiguous within the legal text of the Constitution, requiring interpretation.
(2) Additionally, the problem with the strict separation of interpretation and construction is that it ignores the effect of follow on effects of legal constructions in precedence. I.e. if a first case constructs “Congress” in a specific manner, then a court in future cases would be obligated heavily to follow precedence to interpret “Congress” in the new manner, without actually going through “construction”, i.e. policy rationale. In fact, the future cases would involve more interpretations, i.e. where parties would compare and contrast the facts against the first case, to fit into or distinguish from the first case’s set definition of the terms.
For example, the Marsh v. Alabama case came in 1946, thus, when Lloyd Corp. v. Tanner case came in 1972, the court followed the Marsh case definition for “Congress” for interpreting the facts in Lloyd case.
(3) Furthermore, as exemplary in contract laws, whether a term is “ambiguous” may require extrinsic evidence for determination. A term may be clear to some, and ambiguous to others.
This is a particularly worse problem for patents, because patents are drafted to enable one of “ordinary skill” in the art to practice the invention, but it is written with terminologies of particular specialties. Additionally, patent attorneys often draft claims with generic broad terminologies.
In contract laws, (in some jurisdictions) judges may use extrinsic evidence to determine whether a term is ambiguous. The extrinsic evidence are typically not within the legal text.
Thus, even before “interpreting” the meaning of a term, the ambiguity of a term may be subject to legal interpretation of the term in light of extrinsic evidence.
“Ambiguity” of claims is thus not as simple as looking up a dictionary.
Once a term is established as “ambiguous”, then the court has already sided with at least 1 litigant party as far as whether to inject extrinsic evidence to reinterpret a term’s meaning. And determining whether a term is “ambiguous” is heavily dependent upon “construction”, i.e. public policy reasons, and legal scope.
Thus, one cannot even begin to “interpret” a term, without first “constructing” the ambiguity of the term. The 2 are not so separated.
(4) a patent is essentially a contract between the Public/people and the patentee. Laws of the people may define terms in patents as necessary, and this includes case laws.
If a court decides to deem a claim term ambiguous based upon evidence, and interpret it in a new way, then that is part of the process. (no different than from contract laws).
Contract laws have evolved over the last few centuries, to reflect new views on contract terms.
Patents cannot be any less malleable. In fact, patents should be more malleable by logic, because of the rapid changes in technologies.
(5) The additional problem for patent is that, different from contracts, patent claim disputes often involve broad scopes of claims, whereas contract disputes often involve narrower scope of terms.
This is because patent is a contract to exclude some general practices, whereas most contracts are for performing a specific practice/sale of a product.
Thus, in contract disputes, a plaintiff would often want to interpret the term narrowly. but in patent disputes, a patentee would often want to interpret the term broadly.
This poses a problem for evaluating the patent claims based upon the terms only, because the patent claims could be interpreted as including meanings that were never intended.
“Wings” could be written as “surface creating directional force when moving through fluid”. That could also cover “propellers” and even “rudders”, and many other possible not yet conceived mechanical devices.
And the patentee can’t possibly disclaim and narrow his claim scope from things he cannot conceive, and yet, he does not want to narrow his claim scope only to his disclosure either. Thus, “interpretation” in such a case require significant construction in conjunction by the court to determine the meaning of the claim scope.
The problem is not one of “legal scope”, but also interpretation, because fundamentally, the old claim terms’ context was drastically different from the new technologies.
By strictly separating interpretation and construction, the only solution would be to declare that the meaning of the terms were clear, but the “legal scope” determination would be still uncertain. So, the “clarity” of interpretation gets nowhere.
Mr. Gu, consider a contract term that has a definition. A cardinal rule is that the definition controls the interpretation.
In the same way, the specification is the definition of terms in the claims. Thus an apparent meaning based on language can change dramatically, as in your wing example, when one consults the specification.
You seem to be misunderstanding what we mean by “interpretation” and “construction.” Construction is the activity of giving text legal effect, which may involve policy. But that is not the same as saying that construction only occurs when courts apply a first-order policy rationale to arrive at a decision.
In other words, you argue that “if a first case constructs ‘Congress’ in a specific manner, then a court in future cases would be obligated heavily to follow precedence to interpret ‘Congress’ in the new manner, without actually going through ‘construction’, i.e. policy rationale.” This is not correct. If Case A construes “Congress” to cover all government for legal purposes, that is a construction (because it is giving the word “Congress” a legal effect). If Case B follows the precedent of Case A and construes “Congress” to cover all government for legal purposes, that is still construction (because it is giving the word “Congress” a legal effect), even if it is simply mechanically following precedent and not debating any considerations of first-order policy.
You also seem to misunderstand what we mean by ambiguity. It is true, of course, that contract doctrine often hinges the determination of whether to permit extrinsic evidence on the presence of ambiguity. And, as a practical matter, courts often give in to the temptation to manipulate findings about ambiguity–so they declare something to be “ambiguous” when they want to admit extrinsic evidence and declare something to be “unambiguous” when they don’t. But the fact that courts can and do manipulate judicial findings about ambiguity does not mean that ambiguity has no objective existence, any more than the fact that courts can and do manipulate judicial findings about the meaning of “Congress” proves that the linguistic meaning of that word is non-existent or ambiguous (on that note, I do not understand your claim that later examples show that “Congress” in the First Amendment is ambiguous–what examples did you have in mind?).
Professor Chiang:
You argued: “If Case B follows the precedent of Case A and construes “Congress” to cover all government for legal purposes, that is still construction (because it is giving the word “Congress” a legal effect), even if it is simply mechanically following precedent and not debating any considerations of first-order policy.”
Then by that logic, virtually everything can be considered “construction”, because virtually every interpretation has legal effects. Even if a court recites a dictionary definition word by word, it has legal effects.
The issue I have is that “interpretation-construction” appears to divide the process into 2 different kinds of judicial decisions, but you are actually talking about 2 different kinds of results which cannot be so cleanly separated into 2 different kinds of judicial decisions.
I.e. every judicial decision may in fact have interpretive effects and constructive effects.
Then the question becomes, is there such a thing as a pure “interpretive judicial decision”, where a judge decides something about a claim term that has NO legal effects whatsoever?
I would say, the answer is no.
Even if a judge decides that there is no ambiguity, and sticks to the narrowest possible definition of a claim term according to the written specification, that choice has legal effects.
(aka dr2chase)
I thought the mention of “animal” meaning kingdom vs. the not-human animals was amusing. I can well imagine how the explicit reference to the broader definition vs. the apparently-not-human usages in the patent came about.
Inventor uses “animal” in initial text, thinking common usage. Patent attorney, looking for generality, asks “any reason this could not also work for humans?” Inventor: “hmmm, come to think of it, no”. And in goes the explicit choice of definition, after much of the rest has already been written.
(Have I been on the inventor side of similar conversations? You bet. But the mixed references got fixed in those cases.)
I am not sure what bearing this has on the patent — I can see any of
(1) an explicit reference to a definition wins.
(2a) the obviously non-kingdom “animal” references indicate original inventor intent.
(2b) it’s not original till the patent is filed.
(3) ambiguity is always interpreted against its author.
[…] 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 […]
There appears to be continued confusion over what constitutes a “real name,” so I’ll try again. Your real name is the name that you use when filling out documents that contain the language “under penalty of perjury.”
You’re right about the authentication issue; if it becomes a significant issue, the solution is to require some form of authentication, be it a link to a linked in profile or another bio. The possibility of identity theft would, of course, remain, but if a commenter is engaging in identity theft, that person has some bigger issues than just wanting to post anonymously.
I’m going to open a separate post with free commenting on this experiment. Like I said, it’s an experiment.
Yes, Hal Wegner and others have pointed out for years that the real problem with patent claim interpretation is that members of the Fed. Cir. cannot agree on it among themselves. That has been particlarly demonstrated in split opionions differently interpreting the same claims in the same case. Some judges would support an almost literal claim reading scope absent clear disclaimers or admissions in prosecution, maybe not even broader claim cancellations. Leaving overly broad claims to 103 defenses. Others would tend to narrow claim scope to spec examples, especially if there is only one such example, or perhaps add only a narrow doctrine of equivalents to that. Thus adding “luck of the panel draw” to claim interpretation. But now the Alice-101 “abstraction” defense has been added to the pot.
It is certinly not a new observation that these are far from just semantic ambiguity issues, although there are some of those as well.
Paul, even on this board Malcolm and I often debate this issue. It is his position that if a claim read literally is not supported for its full scope by the specification or is ambiguous, the claim is invalid.
I’ve course have always taken the position that one can never claim more than what is disclosed or an equivalent as a bedrock principle. Thus if a claim can literally be read much broader, that’s probably not a proper construction. Only if they claim has no other construction than a construction that is far beyond specification should it be invalidated as not supported.
But in essence, in proving infringement, I think the law should require a demonstration not only that the claims cover the accused device but they are the same thing as a disclosed embodiment or an equivalent. In real claim construction disputes, conforming the claims to the specification is what is really going on from my experience.
I don’t know how one could approach finding a linguistic meaning of text without reference to the invention. There may be rare cases where the syntax is not understandable without interpretation, but in practice, the meaning disputed seems to invariably turn on the scope and/or the relationship of the invention or claim elements to other inventions or claim elements.
This would be like saying statutory interpretation really is two distinct processes-finding the linguistic meaning and finding the legislative intent, but of course the former cannot be done without the latter.
I think what’s really being identified/questioned here is the procedural reality that claim construction is often a quasi-trial on questions of anticipation or obviousness, just as statutory interpretation can be thought of as politics by other means.
Sometimes you can slice things too finely from an academic standpoint and lose sight of the practical reality of a given situation.
Martin, in my experience, patent owners go into litigation with a construction of the claims that will read on the accused products or services while avoiding the prior art. Claim construction disputes are not normally about validity, but about infringement. Defendants try to construe the claims in ways that will avoid infringement. I have never been part of any litigation where the defendants try to construe the claims broader than the construction proffered by the patent owner in ways that would read on prior art.
This is the exact opposite of what goes on in the patent office where the examiners and petitioners in reexaminations and the like are trying to construe the claims broadly in order to read on the prior art. Trust me, that typically does not happen in litigation.
Ned, in software cases it seems (and my experience is limited as a non-lawyer) that invalidity is very often the defensive goal, because infringement is virtually certain due to the broad functional claims (esp. mid ’90’s priority dates). Also of course if the target has their own prior art, then invalidity is the non-infringement position. In any case, I agree that non-infringement is likely the lion’s share of construction disputes, but that does not decouple the linguistic and scope/equivalence elements that turn construction into quasi-trials, just as statuary interpretation is quasi-legislating. I wonder what the ratios of claim construction splits are for non-software art units? I bet a LOT lower. That’s why you cant patent movies and books- when the expression is all tied up in the delivery, reasonable minds can and will disagree about boundaries.
Its fascinating (in the way of things when you have your neck out) to watch 101 law develop in real time. DDR was incredibly influential in no-time in establishing district level tests for ‘improving the computer’ v. ineligible basics like editing, saving, storing, transmitting, or re-arranging human relationships… Internet or not….
The patent system must detoxify itself of software patents and that process will be lumpy…..
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