Construing patent claims according to their "interpretive community": a call for an attorney-plus-artisan perspective.

• Author: Golden, John M.

TABLE OF CONTENTS I. INTRODUCTION II. ARGUMENT FOR AN AUDIENCE-ORIENTED PERSPECTIVE III. THE ORDINARY ARTISAN RULE IN LAW, HISTORY, AND PRACTICE A. Implicit Recognition of a Non-Artisan Audience for Patent Claims 1. Courts' Actual Claim Construction Methodology 2. Gillette's Razor: An Illustration of Claim Construction in Action B. The Origins of Patent Law's "Person of Ordinary Skill" Measure C. A Short History of Claims and Claim Construction 1. The Slow Evolution of Modern Claims and Claim Interpretation 2. Historical Alternatives to the Artisan Perspective IV. ELIMINATING THE DISJUNCTION BETWEEN STATED RULE AND PRACTICE A. Problems with an Ordinary Artisan Perspective B. Undesirability of the Disjunction Between Rule and Practice C. A Hybrid Alternative to the Ordinary Artisan Rule V. CONCLUSION THE CONSTRUCTION OF WRITTEN INSTRUMENTS IS ONE OF THOSE THINGS THAT JUDGES OFTEN DO AND ARE LIKELY TO DO BETTER THAN JURORS UNBURDENED BY TRAINING IN EXEGESIS. PATENT CONSTRUCTION IN PARTICULAR "IS A SPECIAL OCCUPATION, REQUIRING, LIKE ALL OTHERS, SPECIAL TRAINING AND PRACTICE."

- MARKMAN V. WESTVIEW INSTRUMENTS, INC. (SOUTER, J.) (1)

1. INTRODUCTION

   Determination of the scope of a patented invention is one of the most contentious and difficult tasks of modern patent law. Claims--numbered clauses at the end of a patent--are meant to provide notice of what a patent covers and to describe a patented invention in a way that distinguishes it from prior art. (2) Because of claims' centrality to determinations of patent scope and patent validity, the stakes in trying to improve the predictability of claim construction are large.

   Patents play a critical role in modern business planning and finance. (3) Moreover, as with other types of intellectual property, the importance of patents appears to be increasing: (4) recently, the number of United States patents issued each year has grown faster than the real gross domestic product. (5) The pace and breadth of modern patenting has fed concerns that overlapping or fragmented patent rights may act to retard innovation rather than "promote ... Progress." (6)

   The certainty with which patent scope is defined is a crucial variable in determining whether the net impact of patents is positive or negative. Relative certainty regarding a patent's scope can promote the development and dissemination of related technology by providing a sense of security both to investors in patent rights and to investors in activities that might be vulnerable to charges of patent infringement. (7) Greater certainty may also facilitate licensing that promotes efficient levels of inventive and productive activity. (8) Parties may be more likely to avoid expensive litigation and agree to licensing terms if they can first agree on a patent's scope. (9) Further, probable correlates of certainty--such as the coherence of claim construction law and the predictability of courts' constructions--are likely to make processes of construing claims, forecasting court constructions, and drafting claims that adequately cover an invention less taxing and less error-prone.

   Several developments of the last few decades were intended to bring greater predictability and rationality to claim construction. In 1982, Congress created the United States Court of Appeals for the Federal Circuit, a new appellate court with exclusive jurisdiction over appeals in cases that arise under federal patent law. (10) In 1996, the Supreme Court's opinion in Markman v. Westview Instruments, Inc. (11) affirmed the Federal Circuit's holding that claim construction is a task for judges rather than juries. (12) Two years later, the Federal Circuit held that claim construction is not only a judicial task, but also a purely legal one, the entirety of which is subject to de novo review. (13) Thus, for about a decade, a single and relatively expert court of appeals has had the development of claim construction law firmly and clearly under its thumb.

   Nonetheless, claim construction jurisprudence continues to bear hallmarks of unpredictability. (14) Reversal rates of district court claim constructions stand at roughly 34%, (15) and commentators have repeatedly observed that different Federal Circuit judges favor different claim construction methodologies. (16)

   The Federal Circuit has not been insensitive to these concerns. In 2005, its en banc opinion in Phillips v. AWH Corp. (17) quashed an extreme, dictionary-driven approach to claim construction that some members of the court had championed. (18) The approach rejected in Phillips had displayed a dismaying capacity to produce contextually implausible "plain meanings." In International Rectifier Corp. v. IXYS Corp., (19) for example, the Federal Circuit held that a claim's use of the term "polygonal" to describe regions in semiconductor devices required a physical impossibility. The court acknowledged that "one of ordinary skill in the art would understand from the written description that ... diffusion ... will naturally cause some blurring of the [regions'] corners and sides." (20) But the court relied on a general-purpose dictionary's definition of "polygon" to hold that the claim's "regions" had to have the truly straight-edged and sharp-angled shape of geometric polygons. (21) According to such a geometric definition, the rough-edged nature of Egypt's Great Pyramids would mean that they are not "pyramidal"!

   Aside from rejecting such extreme excursions in dictionary-driven literalism, however, Phillips generally reaffirmed existing precedent. (22) Of particular relevance here, Phillips reemphasized the importance of the rule that claims must be construed from the perspective of one having ordinary skill in the relevant technological art, where the "relevant technological art" is that of the patented invention, rather than some other "technical art" that might be thought relevant, such as the art of claim drafting or claim construction. (23)

   The Federal Circuit's restatement of this ordinary artisan rule was not surprising. Although the Supreme Court failed to mention the rule in Markman, its continued validity may be one of the few points on which Federal Circuit judges (24) and commentators (25) have consistently agreed. Indeed, both judges and commentators have invoked the rule as a basis for proposed reforms to the law of claim construction. Commentators have repeatedly cited it as a reason to rely more on evidence, such as expert testimony, that is "extrinsic" to the patent and its prosecution history. (26) Likewise, Chief Judge Michel of the Federal Circuit recently argued for reconsideration of claim construction's status as a purely legal issue by contrasting the inquiry under the ordinary artisan rule ("How would the average artisan in the relevant field of technology understand the disputed claim terms ...?") with that undertaken in interpreting a statute ("What does the disputed term mean to me, the judge, as an artisan in the law?"). (27)

   I take the heterodox position of challenging the ordinary artisan rule for claim construction. This Article argues that, at least within a patent system that, like ours, relies primarily on claims to mark the boundaries of patent scope, a fundamental distinction should be drawn between technology-centered questions of patent validity and more lawyerly questions of claim meaning. (28) For validity questions such as whether a claimed invention is obvious or inadequately disclosed, reliance on the perspective of the ordinary artisan is both appropriate and statutorily required. (29) In the context of claim construction, however, adherence to an ordinary artisan perspective is neither statutorily required nor likely to be socially optimal. In this context, the optimal perspective is likely to be that of a patent attorney, albeit one who has not only legal expertise but also access to the technical knowledge of an artisan.

   The argument of this Article proceeds in three Parts. Part II examines how determining the proper governing perspective for claim construction relates to concerns about economic efficiency. In particular, Part II discusses why it makes economic sense to use a perspective for claim construction that matches the perspective of claims' basic "interpretive community." (30)

   Part III explains how use of an ordinary artisan perspective in assessing nonobviousness and enablement has led to a common but incorrect assumption that the entire patent must be read, for all purposes, as addressed to an artisan. Part III shows not only that this assumption has a surprisingly weak historical pedigree, but also that it is substantially contradicted by reality. Generally speaking, artisans work with technology, not with patent claims. Such claims are not generated primarily to increase scientific or technological understanding, but instead to provide notice of patent scope to United States Patent and Trademark Office ("USPTO") examiners, patent attorneys and agents, and interested businesspersons. These individuals typically lack the skill in the art that an ordinary artisan possesses. Artisans as artisans are not typically part of this interpretive community.

   Part IV argues for replacing the ordinary artisan rule with a rule declaring the governing perspective of claim construction to be a hybrid one: the perspective of a patent attorney with access to the technological knowledge of an ordinary artisan. Because of artisans' general lack of participation in the interpretive community for patent claims, their views on claim meaning are likely to be too idiosyncratic and personal for a legal regime that seeks to use claims to achieve broad notice of patent scope. Hence, it should not be surprising that the various subrules and conventions of claim construction, which have a strong tendency to reflect the views and mores of claims' actual interpretive community, have become disconnected from the ordinary artisan perspective.

   The proposed...