Much of the book is devoted to descriptions of textualist canons, from the fundamental (such as the supremacy-of-text principle: “The words of a governing text are of paramount concern, and what they convey, in their context, is what the text means”) to the semantic (such as the fixed-meaning canon: “Words must be given the meaning they had when the text was adopted”) to the contextual (such as the presumption of consistent usage canon: “A word or phrase is presumed to bear the same meaning throughout a text; a material variation in terms suggests a variation in meaning”). Interwoven throughout are applications of these canons designed to both illustrate the operation of textualism and make the case that textualism is the only rational approach to interpreting legal texts. These illustrations help achieve the book’s descriptive goal, but perhaps at the expense of its normative ambition; one experiences the sense that textualism’s application can’t be as simple as the anecdotes suggest. Indeed, Judge Richard Posner’s scathing review of Reading Law questions several of the book’s examples.²

For me, however, it is less these examples that offer food for thought and more the inherent strengths and limitations of textualism that rise to the surface when it is considered in the context of patent law. Two in particular are worth discussing: patent law statutes and patent claims.

Textualism and the Interpretation of Patent Law Statutes

Statutory interpretation is hardly unique to patent law; to the contrary, it is a task undertaken by any lawyer. Yet, even without making a claim of patent law exceptionalism, its statutes offer a powerful illustration of the strengths and limitations of textualism as an interpretive tool.

In some areas of statutory interpretation of patent laws, the use of textualist canons is an obvious choice. The Federal Circuit frequently employs textualism when confronted with statutory language. In Wyeth v. Kappos, for example, the court addressed a dispute over the interpretation of 35 U.S.C. § 154(b) by focusing on the text, not its consequences:

Regardless of the potential of the statute to produce slightly different consequences for applicants in similar situations, this court does not take upon itself the role of correcting all statutory inequities, even if it could. In the end, the law has put a policy in effect that this court must enforce, not criticize or correct.³

Other times, particularly when disputes involve the “core” patent law statutes, textualism may offer less value to decision makers. These statutes are concise formulations employing general terminology such as “useful,” “printed publication,” or “obvious.” While textualism can contribute interpretive guidance—such as through the fixed-meaning canon—it provides less help in applying meanings to specific situations. In large part, this is because these terms are what the authors refer to as vague: a species of lexicographic uncertainty deliberately adopted by its drafters “to cover a multitude of situations that cannot practicably be spelled out in detail or even foreseen.”⁴ Vagueness often relates to the level of generality according the term. For example, does “printed publication”⁵ refer to physical printed documents or does it encompass any type of reference that is accessible to the public? But it can also simply indicate that the term is deliberately general in meaning and its actual scope unsettled at the time of adoption.

The already classic case of Ariad v. Eli Lilly illustrates how textualism responds when confronted by these types of uncertainties.⁶ Ariad involved patent law’s disclosure provision, 35 U.S.C. § 112. The issue before the Federal Circuit, sitting en banc, was whether § 112 contained a separate written description requirement and, if so, what its scope and purpose was. The relevant statute stated:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.⁷

The dispute first presented a question of ambiguity: two interpretations of the statute were presented and the court had to determine which one was correct. Applying a strong textualist approach, the Federal Circuit concluded that indeed there was a separate written description requirement.⁸

This begged the question, however: what is that requirement? Here, the term was decidedly vague. Clearly some sort of description was required, and it had to be written, but beyond that neither the text nor context provided any clues as to the requirement’s actual contours. Ultimately, the court adopted the “possession” standard: “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession [as shown in the disclosure] of the claimed subject matter as of the filing date.”⁹ One searches in vain in this section of Ariad for anything more than a whisper of reference to the text.¹⁰

Why was textualism able to resolve the dispute involving ambiguity but not the dispute involving vagueness? Certainly, Scalia and Garner do not suggest that textualism is only applicable to ambiguous terms and not vague ones. To the contrary, they argue that textualism is readily applicable to both types of uncertainty.¹¹

Perhaps the answer lies in textualism’s emphasis on meaning rather than application. Textualism is, at its core, about figuring out the meaning of legal text. This is clear even if one merely skims Scalia and Garner’s one-sentence summaries of each canon: most, if not all, are focused on the meaning (many of them even use that word directly). Given this emphasis, it should be no surprise that textualism tends to be strongest when resolving ambiguities, as these uncertainties generally involve questions of meaning.

But knowing the meaning does not necessary establish the scope of a statute, let alone resolve all issues of application. Take again the example of the written description requirement: even given the meaning that the Federal Circuit ultimately adopted—“whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession [as shown in the disclosure] of the claimed subject matter as of the filing date”¹²—the actual contours of that requirement remain elusive today.¹³

The authors do attempt to work out textualism’s role in application of meaning, but in doing so highlight textualism’s limitations. This is particularly apparent where the authors attempt to both justify originalist textualism when applying meaning and to carve out exceptions to the practice.¹⁴ On the one hand, they argue that originalism requires that general terms such as due process or cruel and unusual punishment be limited based on their application at the time they were adopted (and thus would not encompass the mandatory death penalty); on the other, this position forces them to begin articulating exceptions such as the technological advancement exception, under which general language encompasses the onward march of science and technology.

Textualism and the Interpretation of Patent Claims

Statutory interpretation has an important place in patent law, and the Federal Circuit is no stranger to the use of textualism in that context. Yet, in the context of individual cases, the interpretation of patent claims is often much more important.¹⁵ “The name of the game is the claim,”¹⁶ and validity and infringement nearly always turn on the scope of the claim as construed by the court. On the surface, interpreting claims might not seem that different from interpreting statutes and other legal texts.¹⁷

From this perspective, Reading Law could easily be a treatise on claim construction. The canons Scalia and Garner describe should sound familiar. Compare canon 6, the ordinary meaning canon, with the Federal Circuit’s statement in Phillips v. AWH that “the words of a claim ‘are generally given their ordinary and customary meaning.’”¹⁸ Or canon 7, the fixed-meaning canon (“words must be given the meaning they had when the text was adopted”) with its claim interpretation parallel (“the ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention”).¹⁹ Or canon 24, that the text must be construed as a whole, with the instruction in Phillips that “the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.”²⁰

Simply put, claim interpretation is fundamentally an exercise in textualism. This is hardly a revelation.²¹ The statement that “[i]t is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms,” could easily have come from Reading Law. In fact, this quotation was in an 1886 Supreme Court opinion discussing a patent claim.²² “Proceduralism” or “holism”²³—claim focused or specification focused—all begin with, and largely revolve around, the text.

Given the strong textualist underpinnings of claim interpretation as it is performed today, a reader might reasonably hypothesize that it is relatively certain and predictable. After all, the authors make the claim that “textualism will provide greater certainty in the law, and hence greater predictability and greater respect for the rule of law.”²⁴ Applying transitive logic (if a=b and b=c, then a=c), patent claim construction must therefore be one of the most certain and predictable areas of the law.

This is, of course, not the case. Complaints about the lack of certainty and predictability in claim construction are some of the most often heard criticisms of the Federal Circuit’s jurisprudence. These complaints are well founded: the empirical evidence shows the Federal Circuit reverses district court claim interpretations at a high rate.²⁵ One could argue that this failure undermines the authors’ claim about the benefits of textualism. Judge Frank Easterbrook identifies this pitfall in the Forward, hypothesizing that in an imaginary world where the Supreme Court is made up of nine Justice Scalias, litigants might simply “bring more and more of the disputes that divide textualists.”²⁶ Perhaps this has already happened to patent claim construction.

Another plausible explanation for this high degree of uncertainty might be that claim interpretation raises problems that go well beyond the typical issues that textualism must confront. Consider the following.

A Priori Meaning

A priori meaning refers to the idea that readers of text come to the text with some mental meaning already ascribed to the words of that text.²⁷ Readers are not merely attempting to divine the meaning of the words from the words themselves; rather, they bring some (and in fact, a great deal) of prior knowledge about what the words mean to the process. What readers generally do not do is view text as if they were behind a veil of ignorance, clueless as to what the symbols on the page stand for and charged with figuring them out as a cryptographer might. Rather, readers view the text through the lens of vocabulary and grammar they have developed over the course of their lives. Thus, when confronted with a sign stating “No dogs, cats, or fish allowed on premises,” we apply our prior knowledge of the words “dogs” and “cats.” We don’t try to figure out from the context of the sign what those words mean. This is the a priori meaning.

A priori meaning finds its way into the interpretation of legal texts through what both the authors and the Federal Circuit refer to as the “ordinary meaning” canon. But it also works its way in more intrinsically—and perhaps subconsciously—as interpreters engage in the simple act of reading. Indeed, an interpreter may not even appreciate that he or she is applying meaning to words unless attention is specifically directed at it. Social, cultural, educational, and other differences in our linguistic heritage can affect how we read words.

The existence—and indeed, functional necessity—of a priori meaning creates one of the main challenges when dealing with the interpretation of any type of legal text. Indeed, it is often the simplest words that create the greatest problems of a priori meaning.²⁸ Take the example of “ribbon,” addressed in a recent Federal Circuit opinion. A lay reader might come to the word with a specific image in mind: perhaps a red bow on a box, a hair ribbon, or something else entirely. The court interpreted “ribbon” to mean “a strip of film.”²⁹

Challenges of Anchoring Language and Meaning

One solution to inconsistent a priori meanings is to tie meaning to something fixed and less subject to distortion by individual experience. Scalia and Garner offer many tools for anchoring meaning, including multiple syntactic canons. Of course, if everyone also followed those canons (they don’t, as the authors acknowledge), the result would be a more consistent and shared a priori meaning.

The authors’ main tool for anchoring meaning, however, is the dictionary. In addition to frequent references throughout the text to the use of dictionaries, Scalia and Garner devote an appendix to identifying those dictionaries they consider the most useful and authoritative for the English language generally and for law specifically. Others have written extensively about problems inherent in the courts’ use of dictionaries for claim construction,³⁰ so I will make just a few observations.

One of the main problems with dictionaries is figuring out which one to use. This is especially true when it comes to patent claims because patent claims potentially involve at least three separate categories of meaning: general purpose, technical, and legal. Sometimes, the words used in patent claims are those that have general meaning; they require no special skill, other than a general knowledge of English, to understand them. Often, however, technical terminology is used in patent claims; patents, after all, establish rights to a new technological invention. Patent claims also often include legal terminology that has special meaning to patent lawyers. Scalia and Garner mention one instance of this patent law specific language: “comprises” as used in patent claims.³¹ As an example of indeterminacy, this is a poor one because its meaning in patent claims is clear and undisputed.³² But it serves as an example of the multiple levels or domains of meaning that can be present in patent claims.

These multiple domains make resort to a dictionary particularly challenging when interpreting patent claims. While the task of using the correct dictionary might be modest in other contexts, because it is reasonably clear from context which domain is involved, patent claims nearly always make use of all three within the same sentence. A portion of a patent claim might read, “An elastomeric laminate consisting essentially of at least one elastomeric layer and at least one continuous microtextured skin layer over substantially the entire laminate.”³³ Many of the words in that phrase could plausibly be said to fall into more than one of the technical, legal, and common usage categories.

Incentives for Patent Claim Drafters to Embrace Linguistic Uncertainties

A third challenge is the incentives that push claim drafters to embrace linguistic uncertainties when writing claims. In contrast with the unintentional and undesirable aspects of ambiguity as envisioned by the authors of Reading Law, this linguistic uncertainty is often by the drafter’s design. “Broad, to the point of inherently ambiguous, claim drafting is not just a matter of poor drafting skills on the part of some lawyers who prosecute patent applications. On the contrary, the art of broad claim drafting is a prized talent . . . .”³⁴ The problem here is not just generality of scope;³⁵ rather, deliberate indeterminacy maximizes the patent holder’s ability to argue in the future for a claim interpretation that most favors its case at that time.

Claim drafters are able to take this approach for several reasons. First, patents do not contain a single claim; rather, they contain multiple claims that are often stacked like levels of a pyramid, beginning with the broadest and progressing to the narrowest. This multiclaim structure allows patent drafters the opportunity to write both highly ambiguous (and vague) claims and those that are much more specific. Even if the ambiguous claim is held invalid for indefiniteness, the specific one is unlikely to be.³⁶ Imagine if one were allowed to draft deeds this way. One might start with stating, “The boundaries of my land extend as far as one can see from the big oak tree, but if a court finds that’s unclear, then they extend as far as I can see from the big oak tree. But if a court holds that that’s not clear enough, then they extend 100 paces outward from the big oak tree.” And so on.

Added to this is the nature of patent prosecution. It is often likened to a contract negotiation between a private patent applicant and a government employed patent examiner. But patent prosecution is unlike a conventional negotiation, in the sense that the parties are not true adversaries. The applicant, to be sure, is striving to get the best terms for his or her side. However, while the patent examiner may have an incentive to do a good job, the stakes are much less: what the examiner gives up in claim scope will rarely impose direct costs on the government in the same way giving way in a contract negotiation would. Patent prosecution is also unlike a statute: the examiner is not a legislator, subject to public election and directly accountable to the populace. The consequence is that the applicant has a strong incentive to push hard to get the best deal while the examiner has a weaker incentive to push back.

Nor is there a meaningful interpretive mechanism pushing back against forces encouraging uncertainty by the claim drafter. Although there is a doctrine of claim indefiniteness, claims must meet a high threshold of ambiguity before they may be declared invalid on that ground.³⁷ Also missing when interpreting patent claims is a parallel to the general rule of lenity (canon 49) where ambiguities in claim language are resolved in the defendant’s favor.³⁸

In a curious twist, the lack of any meaningful interpretive canon pushing back against intentional ambiguity by the drafter may be a case of the Federal Circuit moving well past Justice Scalia on the spectrum of textualism. The court has ventured into textualist land that even the authors consider off limits: that of strict constructionism. The rule of lenity, and its sibling in the realm of contractual interpretation, the canon of contra proferentem, are important interpretive canons that act as counterweights to a hyperliteralist reading of words.

Perhaps, as recently suggested by Judge Plager, the Federal Circuit should adopt the canon of contra proferentem to interpret ambiguous claim terms against their drafter. In Judge Plager’s words, applying this principle “would require the applicant to draft clear claims, using simple, direct sentences, proper grammar, and definitions in the written description where appropriate. It harmonizes with the notice function of patent law.”³⁹

Final Comments

I close with two final comments on patent claim interpretation. First, the above points aside, the specification and the prosecution history present the textualist with an additional challenge to patent claim interpretation. Just as preambles and nonoperative statutory text add to the struggles of a textualist interpretation of nonpatent documents, the existence of the specification—of which the claims are just a piece—adds to the difficulties of interpreting patent claims. The prosecution history—a mini-legislative history in its own right, potentially with estoppel effect—further magnifies the task. All of this is not to say that dispensing with a strong textualist approach is the preferable way to approach patent claims, but textualism is hardly guaranteed to ensure consistent and predictable results.

Second, there is substantial empirical evidence that the rate at which the Federal Circuit reverses district court claim constructions has dropped substantially since its en banc decision in Phillips.⁴⁰ Yet this shift does not indicate that the textualist approach to claim construction has overcome the hurdles discussed above. Rather, the empirical evidence indicates that this drop is due to a rise in informal deference to district court claim interpretations. If this trend continues, it would seem to make it more difficult for the Federal Circuit to address the limitations of textualism in the context of claim interpretation. Deference may simply mask those limitations. Claim interpretation will become more like factual issues resolved at the trial court and less like legal issues subject to meaningful appeal. Deference may not be a bad thing from a pragmatic perspective, but it does not seem to be consistent with Justice Scalia and Professor Garner’s view of textualism’s role in the legal landscape.

Endnotes

1. Antonin Scalia & Bryan A. Garner, Reading Law: The Interpretation of Legal Texts, at xxvii (2012).

2. See Richard A. Posner, The Spirit Killeth, but the Letter Giveth Life, New Republic, Aug. 24, 2012. To be fair, Scalia and Garner acknowledge the difficulties that textualism faces, and several of their examples illustrate how multiple textualist outcomes are possible. But these examples come across as somewhat glib, shorn of the sense of a true struggle over meaning.

3. Wyeth v. Kappos, 591 F.3d 1364, 1370 (Fed. Cir. 2010).

4. Scalia & Garner, supra note 1, at 32–33.

5. 35 U.S.C. § 102(a) (2012).

6. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc).

7. 35 U.S.C. § 112 (2006) (emphasis added).

8. Ariad, 598 F.3d at 1343–45.

9. Id. at 1351.

10. See id. at 1351–54.

11. Scalia & Garner, supra note 1, at 33.

12. Ariad, 598 F.3d at 1351.

13. See, e.g., In re Bimeda Research & Dev. Ltd., No. 2012-1420, 2013 WL 3821557, *4 (Fed. Cir. July 25, 2013) (Rader, C.J., concurring) (highlighting the weakness of the “possession” nomenclature for discussing written description).

14. Scalia & Garner, supra note 1, at 85–91.

15. Scalia and Garner take the view that there is no meaningful distinction between interpretation and construction when working with legal texts. The object of both is to ascertain the meaning of the statute. Id. at 15.

16. Giles S. Rich, The Extent of the Protection and Interpretation of Claims—American Perspectives, 21 Int’l Rev. Indus. Prop. & Copyright L. 497, 499, 501 (1990).

17. See Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (analogizing patent claim interpretation to statutory interpretation).

18. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc).

19. Id. at 1313.

20. Id.

21. See, e.g., Craig Allen Nard, A Theory of Claim Interpretation, 14 Harv. J.L. & Tech. 1 (2000).

22. White v. Dunbar, 119 U.S. 47, 52 (1886).

23. For a description of these interpretive philosophies, see Lee Petherbridge, Patent Law Uniformity, 22 Harv. J.L. & Tech. 421 (2009).

24. Scalia & Garner, supra note 1, at xxix.

25. See, e.g., Kimberly A. Moore, Markman Eight Years Later: Is Claim Construction More Predictable?, 9 Lewis & Clark L. Rev. 231, 232–34 (2005).

26. Scalia & Garner, supra note 1, at xxv.

27. For a far more thorough discussion of this subject, see Kristen Osenga, Linguistics and Patent Claim Construction, 38 Rutgers L.J. 61 (2006).

28. Thanks to Kristen Osenga for this point.

29. See 3M Innovative Props. Co. v. Tredegar Corp., No. 2012-1241, 2013 WL 3984988, *16–17 (Fed. Cir. Aug. 6, 2013). I admit that I cheated by not providing the context of the usage. But that is the idea of a priori meaning: that one comes to the text with meanings assigned and then tests those meanings against the context in which the word is used.

30. In addition to Phillips, which discusses challenges posed by dictionary usage, see Phillips v. AWH Corp., 415 F.3d 1303, 1320–23 (Fed. Cir. 2005) (en banc), both Osenga, supra note 27, at 92–98, and Joseph Scott Miller & James A. Hilsenteger, The Proven Key: Roles and Rules for Dictionaries in the Patent Office and the Courts, 54 Am. U. L. Rev. 829 (2005), have addressed this subject in depth.

31. Scalia & Garner, supra note 1, at 133.

32. See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (“‘Comprising’ is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.”).

33. U.S. Patent No. 5,691,034 claim 1 (filed May 16, 1995).

34. Enzo Biochem, Inc. v. Applera Corp., 605 F.3d 1347, 1348 n.2 (Fed. Cir. 2010).

35. This can be a problem in patent law, but there are other doctrines that push back against overbroad claims.

36. It also allows them to protect against anticipation and obviousness.

37. See Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1371 (Fed. Cir. 2008) (“Only claims not amenable to construction or insolubly ambiguous are indefinite.”).

38. There is a canon that favors adopting the narrower construction of an ambiguous term in certain circumstances. See Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1581 (Fed. Cir. 1996) (“Where there is an equal choice between a broader and a narrower meaning of a claim, and there is an enabling disclosure that indicates that the applicant is at least entitled to a claim having the narrower meaning, we consider the notice function of the claim to be best served by adopting the narrower meaning.”). In practice, however, this canon is applied so rarely as to be largely ineffective.

39. See 3M Innovative Props. Co. v. Tredegar Corp., No. 2012-1241, 2013 WL 3984988, at *19 (Fed. Cir. Aug. 6, 2013) (Plager, J., concurring) (footnote omitted).

40. See Jonas Anderson & Peter S. Menell, Informal Deference: An Historical, Empirical, and Normative Analysis of Patent Claim Construction, 108 Nw. U. L. Rev. (forthcoming 2014).