The Art of Telling IP Stories

How does that task differ from the one you face when you sit down to a computer keyboard to draft your Memorandum of Points and Authorities in Support of Defendant’s Motion for Summary Judgment? Or your Response to Examiner’s Office Action of June 1, 2019? Not one bit.

In both, you have an audience. And to hold the audience, you must tell a good story. Yet many lawyers “tell stories” in briefs and memos that no one—certainly not a judge or a patent examiner—wants to listen to. They fail to use techniques that hold complex bits of information together. And they write in a style that belongs in the 1600s.

In this article, we’ll start with some tricks you can use to advance your story line. That might take a couple of articles. Then, in future issues, we’ll explore some ways to shed our powdered wigs and start writing like great storytellers.

Stories Must Flow

As your readers proceed through your memo or brief, you want them to anxiously await the next development in your plot. In short, the story must flow. How do you achieve a flow in your writing? You learn and follow the four Rs: refer, relate, reveal the structure, and engage in rhetoric. We’ll explore the first R today—refer—and then proceed to the other Rs in future articles in Landslide.

How to Refer to Your Stuff

The first trick (the first R) seems self-evident, yet many lawyers do a terrible job with it. When you write about your case, your story, you necessarily must refer to your subject matter. A variety of techniques come to mind, but many lawyers needlessly repeat nouns over and over again, and thus produce a way of storytelling that bores the listener.

Noun Repetition

How might a lawyer refer to said lawyer’s subject matter? Many lawyers love to repeat lawyers’ nouns because lawyers think that lawyers increase lawyers’ clarity by repeating lawyers’ nouns. Now don’t lawyers?

Fear Not the Pronoun

These legal writers fear the pronoun. Instead, they should develop their subject in a way in which pronouns become readily available. Why? Because when you use a pronoun, what do your readers have to do? They have to make the mental connection (as you’re doing right now) that the pronoun (they) links back to its antecedent (readers). That mental act requires engagement by your readers.

Bryan Garner wonders about the fear of pronouns in the legal profession:

Why the fear of pronouns? Because lawyers have overlearned the lesson that pronouns sometimes have ambiguous referents. That being so, they (the lawyers, not the referents) swear off using them (the pronouns, not the lawyers) altogether. The result, to paraphrase Fred Rodell, is that many legal sentences read as if they have been translated from the German by someone who barely knows English.¹

Justice Robert Jackson used pronouns all the time in U.S. Supreme Court opinions. Here he writes about the U.S. Tax Court without using stilted references like “said Court” or by even repeating the noun court. Instead, he uses the pronouns it and its:

The court is independent, and its neutrality is not clouded by prosecuting duties. Its procedures assure fair hearings. Its deliberations are evidenced by careful opinions. All guides to judgment available to judges are habitually consulted and respected. It has established a tradition of freedom from bias and pressures. It deals with a subject that is highly specialized and so complex as to be the despair of judges. It is relatively better staffed for its task than is the judiciary.²

Or Just Drop the Noun

Many times, lawyers will repeat a noun that just isn’t necessary at all. In Garner’s Dictionary, we find this example, which also shows the adept use of pronouns. Garner’s suggested changes appear in the brackets: “After the persons obligated under the loan failed to pay the loan [delete the previous two words], the bank foreclosed on the collateral and caused the collateral [read it] to be sold.”³

Word Pickup

Now don’t get me wrong: I do not mean to say you should avoid all noun repetition. In fact, great writers often use the art of repetition to move the story along. In my courses on effective legal writing, I call this “the word pickup device” and illustrate it with the famous statement of facts in Palsgraf v. Long Island Railroad, the case we all fondly remember from our first-year torts class. Recall the words of Justice Cardozo. And notice (1) the words he repeats (bold type), (2) the pronouns he uses (italic type), and (3) the words he creates by turning verbs into nouns (bold italic type):

Plaintiff was standing on a platform of defendant’s railroad after buying a ticket to go to Rockaway Beach. A train stopped at the station, bound for another place. Two men ran forward to catch it. One of the men reached the platform of the car without mishap, though the train was already moving. The other man, carrying a package, jumped aboard the car, but seemed unsteady as if about to fall. A guard on the car, who had held the door open, reached forward to help him in, and another guard on the platform pushed him from behind. In this act, the package was dislodged, and fell upon the rails. It was a package of small size, about fifteen inches long, and was covered by a newspaper. In fact, it contained fireworks, but there was nothing in its appearance to give notice of its contents [following the verb “contained”]. The fireworks when they fell exploded. The shock of the explosion [following the verb “exploded”] threw down some scales at the other end of the platform [count ’em; four uses of “platform”], many feet away. The scales struck the plaintiff, causing injuries for which she sues.⁴

We can all recall our schoolteachers’ advice: never use the same word twice. Well, our teachers had our best interests in mind. They wanted us to learn lots of new words and do well on the SAT exam. But they gave us some very bad advice on the art of telling a story.

Recap

Above, we looked at a most self-evident fact: when writers tell a story, that is, when lawyers write a brief or a response to an office action, they necessarily must refer to their subject matter. We saw that many legal writers don’t do a very good job of referring to their stuff: they unnecessarily repeat nouns over and over, they fail to use pronouns, and they shy away from picking up words as a way of launching the next sentence.

Now, we’ll look at three additional ways storytellers refer to the yarn they seek to spin: (1) demonstrative pronouns and demonstrative adjectives, (2) renaming, and (3) sane shortening.

Demonstrative Pronouns and Demonstrative Adjectives

The English language gives us four words that come in mighty handy in legal writing: this, that, these, and those. We call these words “demonstrative pronouns” when they stand alone and take the place of a noun. We call them “demonstrative adjectives” when they accompany a noun (see “these words” in the preceding sentence).

Many great legal writers use demonstrative pronouns (that is, they use this, that, these, and those without accompanying nouns). When they do this, they immediately engage the reader, for the reader must immediately connect what this refers to. And that’s the test for using a demonstrative pronoun: if the reader immediately knows this what? then the use satisfies ordinary rules of grammar and style.

No rule of grammar states that the word this must refer to a single noun. Consider the views of one noted expert:

The antecedent of this and that may be any single noun . . . . This and that may also refer to a phrase, clause, or sentence, or even to an implied thought. Reference of this kind must, however, be immediately clear and apparent; otherwise the thought will be obscure.⁵

So what great legal writer uses demonstrative pronouns? Well, Roscoe Pound, for one:

In civilized society men must be able to assume that they may control, for purposes beneficial to themselves, what they have discovered and appropriated to their own use, what they have created by their own labor, and what they have acquired under the existing social and economic order. This is a jural postulate of civilized society as we know it.⁶

Renaming

Often in legal writing, you’ll introduce a piece of subject matter and, naturally, face the need of referring to it again. Instead of repeating the noun, you rename the bit of information. And often, when you engage in the practice of renaming, you’ll use a demonstrative adjective to introduce the new name of the stuff you’re talking about. Typically, you’ll use the demonstrative adjective this.

I can best teach this trick with an example. Take a look at the writing of Justice Robert Jackson as he discusses the role and function of the U.S. Tax Court:

Tax Court decisions are characterized by substantial uniformity. Appeals fan out into courts of appeal of ten circuits and the District of Columbia. This diversification of appellate authority inevitably produces conflict of decision, even if review is limited to questions of law. But conflicts are multiplied by treating as questions of law what really are disputes over proper accounting.⁷

Justice Jackson takes the concept of “appeals fanning out” and renames it “diversification of appellate authority.”

You can find out whether you use this device simply by doing a word search for the word this. If you come up empty, then chances are good you’re unnecessarily repeating lots of nouns and thus sounding not like a storyteller but, well, like a lawyer.

Sane Shortening

Of course, lawyers routinely rename, or shorten, the names of people, transactions, events, documents, and so on all the time. And they do it in a way that impedes the flow of the story (hereinafter “story”). Get the picture? These parenthetical intrusions into the story line have a name. They’re called “defined terms.”⁸

The technique is a good one when the noun needs a shortened name not apparent on its face. In patent practice, for example, we have the tradition of shortening a patent number, such as U.S. Patent No. 5,124,402, to the last three digits, that is, “the ’402 patent,” providing a handy way of referring to the patent at issue. But in other areas of practice we often see: “Comes now the Plaintiff, Acme Widgets International (hereinafter referred to as ‘Acme’) . . . .” What else might we call Acme? Zeke?

I once saw a petition for certiorari shorten the “United States Court of Appeals for the Second Circuit” to “Second Circuit” and then proceed to refer to it in the very next sentence as the “United States Court of Appeals for the Second Circuit.” And how often do we see a shortened name only never again to encounter it in the same written piece?

In the literature on legal writing, no one seems to have fashioned any rules on the use of defined terms. I will thus be so bold:

1. Use a defined term only when you plan to use one not immediately apparent from the term shortened. Thus, Coca-Cola Bottling Company, Inc. needs no defined term and can readily be referred to as Coca-Cola without confusion. Neither does Dr. Fred Jackson need the defined term Jackson. And neither does the United States Court of Appeals for the Federal Circuit need the defined term Federal Circuit; after all, common practice in legal writing accepts a reference to the Federal Circuit.
2. Use a defined term for an entity otherwise having an immediately apparent short form when the facts contain two similar or nearly identical entities. Thus, if the facts involve Coca-Cola Bottling Company, Inc. and Coca-Cola Bottling Company Europe, S.A., then shorten the first to Coca-Cola USA and the second to Coca-Cola Europe.
3. Use a defined term when identifying any party as an acronym or initialism.
4. Reveal defined terms as follows: “On April 29, 1993, International Business Machines, Inc. (IBM) filed a patent application for its widget.”

The hereinafter referred to as reference does nothing more than clutter.

Go Ahead, Refer to Your Stuff

When writing anything, you necessarily have to refer to your subject matter. In this article, we’ve explored both good and bad ways of referring to the subject under discussion. So go ahead. Refer to your stuff. Develop your story. Repeat some words, but don’t repeat nouns unnecessarily. Relish the pronoun. Don’t be afraid of the words this, that, these, and those. Just make certain they refer to something immediately apparent. And learn the art of renaming bits of information. But for heaven’s sake, don’t disrupt your story with lots of irritating parenthetically defined terms (“parenthetically defined terms”). Most defined terms are totally unnecessary.

In a future article, we’ll look at some ways to help your reader move seamlessly through your developing story line. Stay tuned.

Endnotes

1. Bryan A. Garner, A Dictionary of Modern Legal Usage 702 (2d ed. 1995).

2. Dobson v. Comm’r, 320 U.S. 489, 498–99 (1943) (emphasis added) (footnote omitted).

3. Garner, supra note 1, at 702.

4. Palsgraf v. Long Island R.R., 162 N.E. 99, 99 (N.Y. 1928) (emphasis added).

5. James Fernald, English Grammar Simplified 40 (1979) (emphasis added).

6. Roscoe Pound, An Introduction to the Philosophy of Law 108 (photo. reprint 1975) (1922) (emphasis added).

7. Dobson, 320 U.S. at 499 (emphasis added).

8. See C. Edward Good, Ugly Legal Writing, 11 Landslide, no. 2, Nov./Dec. 2018, at 55, 56.