Claim Construction or Statutory Construction?

16 Pages Posted: 28 Dec 2014 Last revised: 26 May 2020

See all articles by Camilla Alexandra Hrdy

Camilla Alexandra Hrdy

University of Akron School of Law; Yale University - Information Society Project

Ben Picozzi

Independent

Date Written: December 26, 2014

Abstract

Uncertainty in claim construction is perceived to be one of the most important problems in patent law today. But patent law isn't the only context in which courts must determine the meaning of legal texts. In a recent article, The Interpretation-Construction Distinction in Patent Law, T.J. Chiang and Lawrence Solum argue that construing a patent is no different from any other form of legal analysis performed by judges, whether that analysis is performed in constitutional, statutory, or contract law. As in these contexts, judges proceed in two distinct stages when determining a patent's legal meaning: first, they "interpret" the linguistic meaning of the claim terms; second, they "construe" those terms according to their legal and policy beliefs regarding what the terms' legal effect should be. According to Chiang and Solum, uncertainty in claim construction is caused by judges' disagreements in the "construction" phase, not the "interpretation" phase. That is, judges disagree over policy, not language.

Although it is conceptually appealing, the "interpretation-construction distinction" does not fully capture how judges construe patent claims because it does not take into account the difference between the statutory context in which claim construction occurs and the constitutional context in which the interpretation-construction distinction evolved. In constitutional analysis, judges are relatively free to interpret and construct the text based on their prior beliefs about which policy outcomes or which form of interpretive methodology (e.g., textualism or anti-textualism) is superior. In contrast, when judges construe the terms of a patent, they must do so in light of the requirements of the Patent Act, and especially 35 U.S.C. § 112. In our view, the policy debates that Chiang and Solum identify — whether claims should be interpreted broadly, according to how a patentee wrote them, or narrowly, according to what the judge finds to be the "real invention" — are based on judges' disagreements over the precise levels of disclosure and definiteness that section 112 requires. Simply put, what Chiang and Solum call claim construction, versus interpretation, is actually statutory construction.

In the response, we analyze the major claim construction cases that Chiang and Solum use as examples of their theory and show that in each of these examples, the judges' disagreement over the meaning of the claims at issue was motivated by their disagreement over the meaning of the statute. In our analysis, judges' approaches to claim construction closely follow, and are likely influenced by, their constructions of section 112(a)'s written description requirement and section 112(b)'s definiteness requirement. We then explain the implications of our statutory view of claim construction for determining whether claim construction is a question of law or a question of fact. This has special relevance as the Supreme Court prepares to decide whether district courts' claim constructions should be reviewed de novo on appeal as legal determinations or under the more deferential standard of review reserved for factual findings.

Suggested Citation

Hrdy, Camilla Alexandra and Picozzi, Ben, Claim Construction or Statutory Construction? (December 26, 2014). 124 Yale Law Journal Forum 208 (2014), Available at SSRN: https://ssrn.com/abstract=2542984

Camilla Alexandra Hrdy (Contact Author)

University of Akron School of Law ( email )

259 S. Broadway
Akron, OH 44325
United States

Yale University - Information Society Project ( email )

New Haven, CT

Ben Picozzi

Independent ( email )

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