The Interpretation-Construction Distinction in Patent Law

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ARTICLE CONTENTS  INTRODUCTION  I. THE LINGUISTIC INDETERMINACY THEORY OF PATENT LAW     A. Background on Patents    B. The Problem of Claim Meaning  II. THE INTERPRETATION-CONSTRUCTION DISTINCTION     A. A Simple Example    B. Interpretation       1. What Is Interpretation?       2. The Problem of Apparent Ambiguity       3. The Problem of Unfamiliar Language    C. Construction       1. What Is Construction?       2. Choosing a Second-Order Theory of Construction       3. Filling Gaps and Drawing Lines on Vagueness    D. Payoffs  III. APPLYING THE INTERPRETATION-CONSTRUCTION DISTINCTION TO PATENT LAW     A. An Initial Outline       1. Interpreting the Linguistic Meaning of Claims       2. Constructing the Legal Effect of Claims     B. An Illustration: Phillips v. AWH Corp.       1. Interpretation       2. Construction     C. Prior Articulations of the Interpretation-Construction    Distinction in Patent Law  IV. WHY DISPUTES ARE OVER CONSTRUCTION     A. The Conventional Framing: Dictionary Versus Specification as    Guides to Linguistic Meaning     B. The Real Dispute: Linguistic Meaning Versus the "Tree" Invention       1. Doctrine Treats the Patentee's Invention as Equivalent to the       Linguistic Meaning of Claim Text       2. The Patentee's Invention Is Not the Linguistic Meaning of       Claim Text       3. Examples of Conflation    C. The Consequences of Conflation       1. The Incorrect Diagnosis of Linguistic Indeterminacy       2. Obscuring Judicial Policy-Making       3. Conflating Linguistic Context with Policy Context       4. The Demise of the Construction-to-Save-Validity Doctrine     D. Disputes over Gap-Filling Construction       1. The Problem of Vagueness       2. The Problem of Deliberate Ambiguity       3. The Problem of Irreducible Ambiguity  V. WHY DISPUTES ARE NOT ABOUT LINGUISTIC MEANING     A. Our Existing Interpretative Tools Are Adequate    B. Reversal Rates Do Not Prove Linguistic Ambiguity    C. Theories of Linguistic Ambiguity Are Not Plausible       1. The Scientific Jargon Theory       2. The Evolving Language Theory       3. The Radical Indeterminacy Theory  VI. IMPLICATIONS    A. Linguistic Tools and Claim Interpretation    B. Policy Arguments and Claim Construction    C. The Resolution of Vagueness    D. The Role of Institutional Allocation  CONCLUSION 

INTRODUCTION

The uncertainty over how courts will apply patent claims in adjudicating infringement is a real and very substantial problem in patent law today. A large literature addresses this problem. (1) The common premise of this literature is that the uncertainty arises because claim language is itself uncertain, (2) and the proposals for reform accordingly focus on linguistic solutions. (3) For example, judges and scholars debate whether the best source of linguistic meaning is dictionary definitions, (4) or the context provided by the whole patent document, (5) or testimony from expert witnesses. (6) A closely related debate is institutional: whether appellate judges, trial judges, or juries are best equipped to implement a particular linguistic solution and discern linguistic meaning. (7) At the pessimistic extreme, Dan Burk and Mark Lemley argue that claim language is so innately indeterminate that it should be abolished altogether. (8) Although the proposed solutions vary widely, there is wide agreement that the source of the difficulty is that claim language is vague or ambiguous. (9) We will call this the "linguistic indeterminacy thesis."

This Article challenges the widely shared premise. The uncertainty in how courts will apply claims does not characteristically arise because of uncertainty regarding linguistic meaning. There may be some occasional cases in which linguistic ambiguity (where language has more than one sense) produces underdeterminacy of legal outcomes, and more cases in which vagueness (where language has borderline cases) causes uncertainty; but we argue that uncertainty in claim application most typically arises because judges have core policy disagreements about the underlying goals of claim construction. …