The Interpretation-Construction Distinction in Patent Law

Article excerpt

IV. WHY DISPUTES ARE OVER CONSTRUCTION

A. The Conventional Framing: Dictionary Versus Specification as Guides to Linguistic Meaning

In the conventional framing, the Federal Circuit is divided into two camps. (152) One camp, the "dictionary-first" camp, supposedly sees the dictionary as being the best guide to linguistic meaning:

   Dictionaries, encyclopedias and treatises, publicly available at
   the time the patent is issued, are objective resources that serve
   as reliable sources of information on the established meanings that
   would have been attributed to the terms of the claims by those of
   skill in the art. Such references are unbiased reflections of
   common understanding ... not colored by the motives of the parties,
   and not inspired by litigation. (153)

The opposing camp, commonly called the "specification-first" camp, supposedly opposes the dictionary-first camp by arguing that the patent specification provides a better guide to linguistic meaning:

   The best source for understanding a technical term is the
   specification from which it arose, informed, as needed, by the
   prosecution history. The evolution of restrictions in the claims,
   in the course of examination in the PTO, reveals how those closest
   to the patenting process-the inventor and the patent
   examiner-viewed the subject matter. (154)

What happens frequently in cases is that one camp of judges will cite the dictionary to support a broad construction of the claim, while another camp of judges will cite the specification for a narrow construction. In Phillips, for example, the majority opinion invokes a dictionary definition to say that "baffle" means a steel support capable of "obstruct[ing] the flow of something" generally, (155) while the dissent cites the specification to say that "baffles" in the particular patent must be angled and capable of deflecting bullets. (156) Rhetorically, both sides appear to be pursuing the linguistic meaning, just using different tools.

B. The Real Dispute: Linguistic Meaning Versus the "True" Invention

The core payoff of applying the interpretation-construction distinction in patent law is to show that the conventional framing is fundamentally misconceived. The conflict does not occur because the dictionary-first camp and the specification-first camp are both pursuing the linguistic meaning but coming to different results. Rather, the uncertainty in claim analysis arises because some judges adopt a textualist theory of construction that pursues the linguistic meaning of claim text while others adopt a theory of construction that pursues the true invention. It is this age-old conflict between textualism and anti-textualism--a quintessentially normative conflict-that causes claim uncertainty. Below, we elaborate on the mechanism by which this conflict arises.

1. Doctrine Treats the Patentee's Invention as Equivalent to the Linguistic Meaning of Claim Text

Initially, we think it utterly uncontroversial to say that judges routinely seek to construe claims to cover the patentee's invention. Indeed it is considered axiomatic that they do so. Courts treat "the understanding of claim text by a person of skill in the art" and "the patentee's invention" as if they were interchangeable and equivalent concepts. In United States v. Adams, the Supreme Court says "it is fundamental that claims are to be construed in the light of the specifications and both are to be read with a view to ascertaining the invention." (157) In Phillips v. AWH Corp., the Federal Circuit holds that the question for claim construction is "how a person of ordinary skill in the art understands a claim term." (158) The courts perceive absolutely no difference between these two formulations. Indeed, often the same case recites both formulations in one breath. (159)

2. The Patentee's Invention Is Not the Linguistic Meaning of Claim Text

What these courts do not appreciate is that the patentee's invention is not the linguistic meaning of claim text. …