By Jason Rantanen
Professor Margaret Radin, who recently retired from the University of Michigan Law School, is a leading scholar known for her work in property theory, contracts law, intellectual property, and internet commerce. She’s best known to my students for her articulation of a modern personhood theory of property in Property and Personhood, 34 Stan. L. Rev. 957 (1982).
In her essay Patent Notice and the Trouble with Plain Meaning forthcoming in the Boston University Law Review, Professor Radin offers her thoughts on a topic at the heart of contemporary debates in patent law: the extent to which the words of claims can operate as boundaries that provide the same degree of notice that we expect in the real property context. The abstract reads:
In their book, Patent Failure, James Bessen and Michael Meurer took the position that notice of the scope of a patentee’s property right is usefully analogous to notice conveyed by real property boundaries. In this essay I argue to the contrary that the idea that patent claim language could be rendered determinate enough to justify an analogy with physical fences or metes and bounds is illusory. Patent claims raise the question, in a way that fences do not, of how words “read on” objects in, or states of, or events in the world. I take a small detour through the language theory of Quine as backdrop to my argument that there is no such thing as plain meaning, at least not in situations involving innovative products and processes where there is money at stake. I draw on three landmark patent cases — Markman, Phillips, and Festo — to illustrate this basic point. In my concluding Postscript I bring the big picture into play. The costs of providing better notice, even if that were possible, might outweigh the gains. Plus, even if the analogy with physical boundaries and the commitment to plain meaning were not illusory, such rigidity in interpreting claims would undermine a significant feature of the patent system: the flexibility to reward breakthrough inventions proportionately to their importance.
Professor Radin’s discussion is worth a read for the eloquent way that she captures and synthesizes the raw strands floating around in current discussions about patent claims.
Viewed through the lens of my current projects, though, her essay raises deeper questions about the meaning of claim construction itself. Over the last two decades, patent law has experienced the emergence of the perception that claim construction is simply the process of interpreting the meaning of the words in the claims. From Markman to Cybor to Phillips, claim construction grew into a search for linguistic meaning. Even Teva reinforces this perception, with its focus on the role of evidence in determining the meaning of key claim terms.
But patent law’s dirty secret is that claim construction isn’t just about divining the linguistic sense of words and phrases in the claims. That’s a seemingly fine inquiry when analyzing questions such as infringement, or anticipation or even, perhaps, nonobviousness. Yet when it comes to other issues in patent law–enablement, written description and especially § 101–defining the meaning of words is less central to the analysis. To be sure, sometimes the formalized procedure of Phillips does matter in enablement. Liebel-Flarsheim and Automotive Technologies offer two examples. But for the most part, the formalized claim construction that we’re used to is absent from the Federal Circuit’s enablement, written description and § 101 determinations.
Nevertheless, claim construction of a sort is present. The court articulates something that it uses in its analysis. In the enablement and written description contexts, I’ve come to call this something a target that must be enabled or adequately described. What it really is, though, is claim construction–just not in the sense that we’ve become comfortable with.
The Federal Circuit’s opinion on Monday in Bascom v. AT&T Mobility [Download Opinion] illustrates this point. That case involved a motion to dismiss granted by the district court on the ground that the claims were invalid on § 101 grounds. (I’ll summarize the facts and holding in more detail in a subsequent post.) After assuming that the claims were directed to an abstract idea under Enfish‘s statement about “close calls” at step one of the Alice/Mayo framework, the court turned to step two: the search for an “inventive concept.” Here, the court concluded that the “inventive concept described and claimed in the patent is the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user,” a concept that the court concluded was not (on the record before it) conventional or generic. Slip Op. at 15-16. This determination–of identifying an “inventive concept”–is as much claim construction as the linguistic machinations of Phillips. Indeed, the court even refered to what it is doing as construing the claims: “Thus, construed in favor of the nonmovant–BASCOM–the claims are “more than a drafting effort designed to monopolize the [abstract idea].” Slip Op. at 17.