Claim construction by any other name…

By Jason Rantanen

is still claim construction in my book.  This is true even when the claim construction focuses less on the specific meaning of individual words or phrases and more on construing the invention as a whole.

***

One of the most enjoyable things about teaching a course like Patent Law, which I’m doing again this fall, is that you get to re-read all the old classics and work through them from first principles with students who are not (yet) locked in the dogma of accepted narratives.  In other words, to see cases such as Mayo, Myriad, and Alice through fresh eyes, or to explore the evolution of post-Markman claim construction from Markman to Cybor to Phillips to Teva.  Today we worked through some of the examples that the PTO has published–for those who aren’t aware, there’s a host of them on the PTO’s website.

As I’ve read through the patent eligible subject eligibility cases again, I’m struck by the extent to which the courts engage in what I can only describe as claim construction–but a very different type of claim construction than what’s contained in the countless opinions deciding the meaning of individual claim terms over the last two decades.  Those cases address the meaning of individual terms or phrases in a patent claim, often in a way that is dispositive of an infringement, novelty or nonobviousness issue.

The different type of claim construction that I’m talking about is what courts necessarily do when conducting a patent eligible subject matter analyses (and perhaps nonobviousness and enablement as well): construe the invention from the claims rather than interpret a particular word or phrase. None of the judicial opinions talk about what they’re doing as claim construction, but that seems to me to be exactly what it is.

The idea that courts describe patent claims in words other than those of the claims themselves during patent eligible subject matter inquiries is nothing new–to the contrary, it’s a frequent complaint about the Supreme Court’s patent eligible subject matter cases.  Usually, it’s referred to as determining what the claims are “directed to,” or, in the second part of the Mayo/Alice inquiry, the search for an “inventive concept.”

But if claim construction is understood as the translation  of the words of a patent claim into text that will have meaning for the person deciding a legal issue such as infringement or validity, then discussions of the patent claims in the context of patent eligible subject matter analyses would seem to be exactly that.  Alice offers an obvious example: there, the Supreme Court explained that “[o]n their face, the claims before us are drawn to the concept of intermediated settlement,” (an abstract idea, failing Mayo step 1), and that “viewed as a whole, petitioner’s method claims simply recite the concept of intermediated settlement as performed by a generic computer” (thus failing Mayo step 2).  Put another way, the Court took the words of the claim, gave them legally operative meaning, and then assessed whether that legally operative meaning against the criteria of abstract idea and inventive concept.  That’s claim construction.

I can see some pushback here from folks who think of claim construction solely as the process of determining the meaning of individual words or phrases in a claim–in other words, as  questions of accuracy about the meaning of words.  The sharp focus on the meaning of individual claim terms has dominated thinking about patent law for the last two decades, but I think it’s a mistake to view claims only as individual limitations.  That approach is useful for inquiries such as literal infringement or novelty, but it’s of less use when conducting other types of patentability or validity analyses.  I’m not suggesting that claim term interpretation is irrelevant to patent eligible subject matter or enablement inquiries–sometimes the meaning of individual terms matters quite a bit.  But what I see courts doing again and again in the patent eligible subject matter cases is to read the claims to arrive at a construction of the invention, rather than resolve disputes about the meaning of particular terms.

My thinking in this area is heavily influenced by Andres Sawicki’s forthcoming article The Central Claiming Renaissance.  Professor Sawicki argues that the Supreme Court’s re-invigoration of patent eligible subject matter has been accompanied by a rebirth of “central claiming”: the idea that “courts use both the specification and the claims to situate the inventor’s work in the context of the technological field to understand just what it is that the inventor contributed.”  Id. at 10.  Sawicki observes that the Mayo/Alice analysis necessarily requires a determination of the inventor’s contribution–and particularly, whether that is the type of thing that is patent eligible subject matter.  Consistent with the idea of central claiming, he suggests that in identifying the inventor’s contribution, the Supreme Court looked mostly to the the specification when making this determination in Bilski, Mayo, and Alice,  even as he acknowledges the important role the claims play in what the Court was doing.  Id. at 23-35.

While I mostly agree with Professor Sawicki’s analysis of the Supreme Court’s patent eligible subject matter cases,  I think the article gets over-invests in the concept of “central claiming.”  As Sawicki recognizes, even when conducting the Mayo/Alice analysis, courts are still construing the actual claims, not the written description, to identify the invention.   They draw on the written description, but so too does conventional claim term interpretation.  I’m also hesitant because what’s involved isn’t “claiming;” it’s the process of construing an existent claim.   That said, I don’t have any sticky words to describe this alternate approach to claim construction.  The best I’ve come up with are “whole claim construction,” “invention-focused construction,” or “inventive contribution construction” as contrasted with “claim term interpretation.”

***

Why does it matter whether we call what the court’s doing “claim construction?” After all, a rose by any other name still smells as sweet.

There are a few reasons.  First, the old adage that “the name of the game is the claim” is just as true when courts are construing the claims in a general sense as it is when courts are engaged in term-based constructions.  As patent practitioners know, how the court articulates the claims for Mayo steps 1 and 2 matters–and can even be dispositive, as the recent case of Visual Memory LLC v. NVIDIA Corp. shows.  Recognizing that the courts are engaged in type of claim construction has the benefit of focusing the parties’ arguments on an issue that may determine the outcome of the case.

A second benefit from recognizing that courts are engaged in claim construction in the patent eligibility inquiry is that the discussion can then turn to what constitutes an abstract idea.  Sure, the court’s construction matters, but so too does the question of what an abstract idea actually is.  Untangling these two issues–the construction of the claim and the meaning of “abstract idea”–may bring clarity to the second one.

A third reason why we should acknowledge that there’s a type of claim construction going on in patent eligible subject matter analysis is because the Federal Circuit’s opinions don’t.  Recognizing that the courts are engaged in a type of claim construction raises an important question: we have a complex methodology and approach to interpreting claim terms; what then is the methodology for this other type of claim construction that the courts are doing?  As the patent eligible subject matter jurisprudence develops, methodological variants are emerging that reflect sharp differences in the way that claims are being construed when conducting the patent eligible subject inquiry.  Some of these divisions present the same types of issues as the conventional claim term interpretation cases raise, such as “how much weight to give the specification?,” while others present new divisions, such as the question of “at what level of generality the claims should be read?”

As a first pass at this idea, here are a few different ways that “invention-focused construction” can be done:

  • At one extreme is the ipsis verbis methodology: to repeat the words of the claim and nothing but.  Only those words, and perhaps interpretations of some key terms, suffice.  One might picture an attorney standing before a judge who repeatedly asks “what’s the invention?” while the attorney dutifully recites the words of the claim again and again, neither understanding why the other doesn’t get it.
  • At the other extreme is a claim construction untethered from the claims themselves.  An example might be to construe a claim to a typewriter as being to a hot dog.  While this example is absurd, the point is to illustrate that there is a range from ipsis verbis to a construction of the invention that has no connection to the claims.
  • Another dimension of the invention-focused construction involves the degree to which the construction hones in on the inventor’s contribution.  To borrow from the USPTO’s gunpowder example, the “inventive concept” of a claim to “an intimate finely-ground mixture of 75% potassium nitrate, 15% charcoal and 10% sulfur” isn’t the individual ingredients; those already exist in nature.  Rather, the “invention” is the combination of the ingredients, or the specific ratios, or that they are finely ground in the mixture.
  • Alternately, the court may treat the claim as a whole as the “invention,” not caring about which part of it constitutes the inventor’s contribution to the art.  I struggle with applying this approach: how do you conduct an analysis of whether the invention is eligible subject matter when you aren’t focusing in on what is new?

In my next post I’ll write more about how these different approaches recently manifested in the Visual Memory case that Dennis blogged about last month.

30 thoughts on “Claim construction by any other name…

  1. We live in a small world, where ideas spread fast. One jurisdiction can be rapidly infected by a vigorous idea being promulgated in another jurisdiction. The jurists of the USA are not immune to infection from England.

    So how much of the legal thinking in the USA on claim construction has been infected by the method long-established in England, in which the court asks itself: What was the claim writer using the language of the claim to mean (to the notional PHOSITA reader).

    Then there’s the established (40 year old) claim construction caselaw of the EPO, which assesses what the claim means in a way that is somewhere between peripheral and central. Mandatory is to find a meaning for the claim with which it delivers simultaneously a scope of protection that is “fair” for the inventor yet gives “legal certainty” for the public. See the Protocol on Art 69 EPC.

  2. “construe the invention from the claims rather than interpret a particular word or phrase”

    I know what you’re trying to say but really all their doing is construing what is apparently trying to be claimed by the claiming going on.

  3. These are interesting observations by Prof. Rantanen.

    But, I’m not sure that Visual Memory v. NVIDIA is a good case to use as a good example of claim interpretation for avoiding an Alice-101? Yes, claiming actual novel improvements in the operation of computers is one clearly judicially recognized way to avoid being “Aliced.” But is this more of a case in which the D.C. and the Fed. Cir. missed the boat on identifying what is old re what is being broadly claimed? Should this kind of case be more logically returned to the D.C. with directions for serious evaluation of a S.J. on 102 or 103, rather than encouraging a Hobsons choice of mere ambiguous “abstraction or not” decisions versus a full blown trial?
    [On the other hand, how much sympathy do defendants deserve who fail to promptly file IPRs in cases like this?]

  4. Jason The idea that courts describe patent claims in words other than those of the claims themselves during patent eligible subject matter inquiries is nothing new

    It’s also nothing new in the context of “inquiries” into any of the other statutory categories. In fact, it’s a routine and arguably inevitable step in every instance where claim construction is an issue. See, for just one example out of zillions, today’s opinion in IV v. Motorola where the CAFC writes:

    In general terms, the invention of the ’462 patent is a laptop computer formed by docking a smartphone into a “shell” having a larger display and keyboard.

    The actual claim has five times as many words. But so what? Scriveners do what scriveners got to do. When the question is “is the subject matter of the claim eligibible” the core issue is “what ineligible subject matter — if any — does this claim protect”. If the claim protects any ineligible subject matter in any prior art context then [insert crying trombone noise] the claim is ineligible. That’s the analysis. I’ve been saying this for many many years now. It’s not a difficult concept to understand, nor is it revolutionary. Accurately summarizing the information content of thirty words using a five word phrase is something that judges and lawyers are very skilled at doing. It’s an essential skill.

    Sawicki: the idea that “courts use both the specification and the claims to situate the inventor’s work in the context of the technological field to understand just what it is that the inventor contributed.”

    Glad to see that Sawicki has caught up with me. And I’m glad that you’re on board, too, Jason.

    I don’t have any sticky words to describe this alternate approach to claim construction. The best I’ve come up with are “whole claim construction,” “invention-focused construction,” or “inventive contribution construction” as contrasted with “claim term interpretation.”

    Those are all terrible terms. The best term is “claim deconstruction” because for the purpose of determining whether ineligible subject matter is protected by the claim there is no other way to proceed except to identify what in the claim is old and what is new. Now, that doesn’t mean that you pretend you were born yesterday and just chuck out every term that’s “old”. That would be absurd. What it means is that you determine what otherwise eligible (but old) prior art elements are recited in the claim for contextual purposes and (simultaneously) what new elements have been added to those prior art elements to make the claimed subject matter “new”. The typical situation — as we all have seen — are (i) claims that combine old structures with “new” non-structural abstractions (e.g., “wherein result”, functionally claimed logic, and/or information) (ala Alice); and (ii) claims that combine old physically transformative steps and subsequent “new” steps of “determining” a “meaning” for information obtained from those physically transformative steps (ala Mayo).

    Jason Alternately, the court may treat the claim as a whole as the “invention,” not caring about which part of it constitutes the inventor’s contribution to the art. I struggle with applying this approach: how do you conduct an analysis of whether the invention is eligible subject matter when you aren’t focusing in on what is new?

    You struggle with it because in most cases it’s a pointless exercise that prevents you from reaching the right result. It’s like trying to figure out how fast you can run naked “using an approach” where your legs are shackled.

    1. pointless exercise that prevents you from reaching the right result.

      Translation (to and for Malcolm): the Ends justify the Means.

      Pay no attention to that man behind the curtain – the great and wonderful Oz (because, per Malcolm’s feelings, it’s a pointless exercise).

    2. Sounds so familiar:

      “I pay very little attention to legal rules, statutes, constitutional provisions,” said Posner, a prolific jurist, about his work in the federal judiciary. “A case is just a dispute. The first thing you do is ask yourself — forget about the law — what is a sensible resolution of this dispute?”

      1. Sensibility and reason is for the weak and lawyerless.

        True freedom requires strict adherence to the Drool of Flaw, and cashing those checks as quickly as possible.

        1. Exactly why we are a nation of laws and not men. Subjective standards of “sensibility” and “reason” only work when people administering the rules are sensible and reasonable. Our founders were smarter than that.

          1. Clearly not as smart as Malcolm, who in his self-appointed (and anointed) role of watcher over the fields of patent rye knows all and his feelings must be right.

            Where is that sar casm emoticon when one needs it…?

          2. Exactly why we are a nation of laws and not men.

            ROTFLMAO You’re a true patriot! You remembered your lines!

            Our founders were smarter

            LOL “Our founders” were hypocritical r@ cists who treated brown people and women like animals. Their “subjective beliefs” left a giant stain on this country.

            My gosh but the glibertarian streak runs deep and hard through the patent maximalists brains. Like 90% of them stopped thinking after they memorized the words to My Country Tis of Thee. What’s up with that? Oh right: greed, Republi k k k anism, mindless flag-waving and following orders. It’s a unified thing.

            Note that Posner never said anything about ignoring “the law”. He just suggested that a good place to start is by contemplating what would be a sensible resolution of the dispute. He’s a judge, after all. Presumably we appoint them because they are sensible people with a demonstrated ability to reason and a demonstrated sense of fairness and justice.

            Or maybe some people appoint judges for other reasons that have nothing to do with fairness and justice and everything to do with kicking the faces of “liberals” and siphoning more power to the already powerful? Nah. That’s too cynical.

            1. Your hypocrisy is showing if you think the Liberal Left is somehow not tainted with that same sense of “siphoning more power to the already powerful” – just ask Hilary.

              1. just ask Hilary.

                LOLOLOLOLOLOLOLOLOLOLOLOLOLOL

                Remember, folks: in “anon”‘s world, they’re “all the same.”

                He’s a real deep thinker.

                1. I am not the one that throws everyone else into a single bucket…

                  Right. You’ve got three buckets: “leftists”, “commies” and “ivory towerists.” And they’re all totally different.

                  Let’s bake a cake for “anon” and celebrate his awesomeness. Because he’s totally not a transparent hypocrite. Nope. Not him.

                2. In a 2011 study, the Public Religion Research Institute asked Americans if elected officials could fulfill their public duties if they committed immoral acts in their private lives.

                  White evangelical Protestants were the least forgiving. Sixty-one percent said such a politician could not “behave ethically,” twice the 30 percent who felt that such a politician could manage it.

                  Among all groups, evangelicals were the least tolerant on this point. But in the era of Trump, evangelicals have undergone a sea change.

                  Five years later, in October, 2016, P.R.R.I. asked the same question. The percentage of white evangelical Protestants who said that a politician who commits an immoral act in their personal life could still behave ethically shot up from 30 to 72 percent. The percentage saying such a politician could not serve ethically plunged from 63 to 20 percent.

                  But … her emails!

            2. Note that Posner never said anything about ignoring “the law”.

              Did you put ‘the law’ in quotes because somehow you feel that statutes and Comstitutional provisions are not the law?

              Your shameless spin is spectacular (and that’s not a good thing)

            3. “LOL “Our founders” were hypocritical r@ cists who treated brown people and women like animals. Their “subjective beliefs” left a giant stain on this country.”

              I lulzed. Some of the most socially advanced peoples on the face of the planet at the time just don’t measure up because they don’t meet modern day standards of sociability, in MM and other lefties minds. Most of who were alive before “racism” and “sexism” had even been dreamed up as concepts, or substantially spread, to occupy the minds of men, much less have been deemed to be substantially harmful. These leftists have a tenuous grasp on what “history” and “in their/that time” actually means. You know, as those leftists toss away the facts that some of those same mans were the ones helping to build the social order MM so lurves to bash people with today, out of the whole cloth of the chaos of the brutal world around them.

              Why it’s as if MM has solely learned what leftists wanted him to know of history. Ask him about Montezuma or any other indian chief and he’ll gush about how amazing he was (never mentioning the whole human sacrifice/brutal tribal annihilation thing). Leftists can’t hold other figures in history up to the same standards as the “dread white daddies” who have to have been perfect or else they’re de mons. Nor would they want to, because their historical ret ard ation begins and ends with the dread white christian mail.

              But thanks for letting us all know one of the reasons why you indeed ha te your country and no doubt would very much like to see it done away with, just as all lefties. Why you would be permitted to hold a public office at all, no matter how low, is a complete mystery.

              1. the most socially advanced peoples on the face of the planet

                ROTFLMAO

                Totally not “subjective”, folks.

              2. MM is a perfect example of why liberalism is doomed to failure notwithstanding the inevitable demographic changes ahead for our country and Trump’s obvious deficiencies as President.

                The irony is he dehumanizes folks in an attempt to bring other dehumanizations to light. Two wrongs don’t make a right.

                1. liberalism is doomed

                  ROTFLMAO

                  he dehumanizes folks

                  I’m not “dehumanizing” anybody.

                  News flash: some people (especially Republi k k k ans) are really, really sensitive when their r@ cist tendencies (or outright r@ cism) is pointed out. Why is that? It’s not like r@ cism is unusual, especially in the United States. But somehow talking about it or reminding people of its existence and its systematic impact on pretty much everything makes those people soooooo uncomfortable. Meanwhile, people who have done a lot of work to address their own r@ cist feelings and who are working to correct r@ cial injustice don’t suffer from this problem. Go figure! It’s a real mystery.

                2. Says the “most sensitive” guy around (judging from the amount of whining he does in his self-appointed role as watcher over the fields of patent rye…

                  (And let’s not even – wink wink – mention his number one meme)

                3. “News flash: some people (especially Republi k k k ans) are really, really sensitive when their r@ cist tendencies (or outright r@ cism) is pointed out. ”

                  Mmmm, not much of that actually happening. Other than leftist slurs.

                  “But somehow talking about it or reminding people of its existence and its systematic impact on pretty much everything makes those people soooooo uncomfortable.”

                  Um that’s because it’s the same old lefties with the same old tired “muh racism” script even when it’s pretty blatant that there is no ray cysm happening at all. People eventually see through lies bruh. Especially when they’re just a blatant grab at powa and the lefties don’t actually do anything to help their “muh victims”. And their attempts to help their muh victims blow up in their faces (best case) or actively harm their muh victims.

                  “Meanwhile, people who have done a lot of work to address their own r@ cist feelings”

                  People other than you then?

                  “and who are working to correct r@ cial injustice don’t suffer from this problem. Go figure! It’s a real mystery.”

                  lulz. Cultural marxism/PCness, leftism etc. doesn’t “correct” racial “injustice”. At all. Ever. All it does do is ensla ve the “racial” that were “injusticed” to the leftists politically. And sometimes it even creates additional “racial injustice”. Eventually republicans are probably going to have to take your slav es away, again.

                4. I’m not “dehumanizing” anybody.

                  …from the guy most likely to sound like the character Buffalo Bill in Silence of the Lambs….

                  Stultifying.

          3. >>Our founders were smarter than that.

            But the 82nd congress wasn’t.

            1. Do you really want to compare the (captured) 82nd congress to the founders…?

              Come Ben – stop being a Malcolm sycophant.


          4. only work when people administering the rules are sensible and reasonable.”

            Or when the disputing parties can be talked into accepting a slightly less than entirely sensible or reasonable person’s suggestion as to what is sensible or reasonable. That’s a perfectly good substitute.

            1. It’s not a good substitute.

              Everyone has an agenda and inherent bias. The law attempts to level the playing field by removing as much subjectivity as possible.

              This is why judges get to rule on procedural disputes and questions of law.

              Juries are the only part of our process that are allowed to interpret factual evidence, where we expect reasonableness in their analysis. Of course we rely on a set of jurors and not a single individual juror for obvious reasons.

  5. “necessarily do” let’s replace that with “prefer to do” or is “more expedient to do”

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