Commas and patents–Is it time to put a gun in your mouth?

A very bright correspondent sent me an e-mail.  He or she has allowed me to post the e-mail.  It elaborates on commas in the context of patents, to wit:

The comma matters a lot in patent cases, too. Consider 3M Innovative Properties Companies v. Tredegar Corp (Fed. Cir. 2013). It’s nicely blogged at PatentlyO.

The following excerpt from Senior Circuit Judge Plager’s concurrence illustrates the problem:

The particular claim construction issue that divides the three appellate judges provides a perfect example of the problem. The claim term, “continuous microtextured skin layer,” truly is perplexing. Does “continuous” apply to the microtexturing, the skin layer, or both? Does it mean the microtexturing is everywhere (except perhaps for manufacturing flaws), or can it cover only a part of the skin layer as long as that part is continuous? Relying on the Chicago Manual of Style, 3M argues that “continuous” and “microtextured” are adjectives that separately modify “skin layer,” and thus, the claim term does not require that the microtexturing itself be continuous. According to 3M, if the applicant wanted “continuous” to modify “microtextured,” the applicant would have used the adverb “continuously.”

3M makes an interesting argument to be sure. But the argument creates its own grammatical problems. For example, there is no comma between “continuous” and “microtextured.” And the Chicago Manual of Style also tells us that adjectives that separately modify a noun are generally separated by a comma, unless of course the second adjective is a unit with the noun being modified (which would favor Tredegar’s construction). The Chicago Manual of Style § 6.33 (16th ed. 2010). The applicant seems to have understood this comma concept, and in fact used it when referring in the written description to a “continuous, deeply textured, microstructured surface.” ‘034 patent, col.15 ll.2-3. But the nuances of comma usage, like 3M’s adverb argument, seem to me a tenuous foundation for an entire claim construction on which substantial liabilities may rest. See United States v. Palmer, 16 U.S. 610, 638, 4 L. Ed. 471 (1818) (noting that “the use of the comma is exceedingly arbitrary and indefinite”); United States v. Ron Pair Enterprises, Inc., 489 U.S. 235, 249, 109 S. Ct. 1026, 1035, 103 L. Ed. 2d 290 (1989) (characterizing a comma as a “capricious bit of punctuation”) (internal quotation marks omitted).

God(s) help me!


16 responses

  1. I dare say that is the very least of our problems as concerns patent law. The fact that anyone with enough money can patent ridiculous vague concepts with no actual specific technological innovations backing it up, or the fact that trolls can pursue infringement cases even though they did nothing but buy the patent and have never actually done anything with the “innovations” described in them seem far m0ore offensive to me. The entire patent system is skewed towards greedy and vindictive people with deep pockets who don’t contribute a damned thing to society. I have no respect for patent trolls or the system that empowers them.

  2. Sean,

    Thanks for your thoughts.

    In truth, I simply don’t know enough about the patent system writ large to have an opinion. See, e.g., Kopf is patently incompetent.

    What I do know is that patent cases give me a migraine headache when I have to try them.

    All the best.


  3. This article by the Cato Institute (I occasionally surprise myself by agreeing with them) actually does a good job of describing the underlying problem and associated costs:

    Click to access v34n4-1.pdf

    That probably wouldn’t have much impact on your rulings since you have to follow the law as it was written (or interpret to the best of your abilities), but I would argue that the whole law has actually been so perverted by these crooks as to have been rendered obsolete. Congress really needs to fix this instead of trying to defund Obamacare (which was originally proposed by – get this – the Heritage Foundation!).

    BTW, as a web developer with over 15 years full-time experience (and at least one patentable idea rolling around in my head), this article offers a particularly interesting perspective:

  4. I also don’t know anything about the patent system. Reading that opinion about commas is like hearing from my 8th grade English teacher. I am very glad that I don’t have to worry about commas in
    patent litigation. Elaine Mittleman

  5. [T]he nuances of comma usage, like 3M’s adverb argument, seem to me a tenuous foundation for an entire claim construction on which substantial liabilities may rest.

    Bad logic, say I. For want of a nail…. Shall we relitigate a battle?

    Eric Hines

  6. Eric,

    I agree. One of the things that amazes me about the few patent cases I have handled is that they often turn on apparently insignificant little things like a comma.

    All the best.


  7. Rich, I suggest that the next topic be order of adjectives. Why do we say “large red barn” but not “red large barn”? Here’s there’s no ambiguity. The concept is obvious. It’s a barn. It’s large. It’s red. I struggle to explain this by any grammatical rule. Perhaps it is a function of English being my native language. French (which I speak reasonably well) actually has some fairly clear rules on this. Adjectives of size come before the noun, those of color (and most others) after. “Une grande grange rouge.” Writing or saying “Une grande rouge grange” will instantly out you as a native speaker of English. If one teaches English as a second language, are there lessons on the order of adjectives? This is covered extensively in French. In fact, some adjectives actually mean different things before an after. “Ancien” before the noun means “former” but after means “ancient.” My head hurts. I’m going to get a beer. Pat.

  8. Pat,

    Having been held back from the second grade (truly), and having a failing mind all these many years later that rejects proof reading out of hand, I continue to struggle with “which,” “that,” commas (Oxford and otherwise), and apostrophe’s, plural vs. singular, and all the rest of the grammar gremlins that appear not infrequently in this blog. That’s why I cuss a lot.

    As for French, my dear departed first wife taught French to the Czech kids in Wilbur and elsewhere. But, the only thing I know about French is that we Germans kick French ass every half-century or so. As a result, and in order to adhere to the law of war, the only French a German soldier needs to know is “J’abandonne.” At least, that’s what Herr Kopf taught me as we discussed why i was such an incredible Dumkopf for my inability to comprehend Dick and Jane.

    All the best.


  9. My strong inclination if this were to come before me would be to find the claim invalid under 35 USC 112 for failure to clearly point out what the claimed invention is. Or at least to find that if it is valid under 112, it can only be for the narrowest possible interpretation (that is, the entire skin layer is continuously microtextured). Unless reference to the drawing figures or specification shows that those terms have been defined specifically otherwise (e.g. if they showed several continuous strips and called them the continuously microtextured skin later), the invention as disclosed by the claim is either for the only unambiguous meaning or is overbroad under sec. 112.

    112 requires the claim to be ” in…full, clear, concise, and exact terms” If you have to resort to interpreting the Chicago Manual of Style, and then discussing a variation from it, your claim is not clear.

  10. Peter H.,

    Thanks for your comment. In truth, and while your point makes good common sense, I know so little about patent law that anything I would have to say would be dumber than normal. All the best.


  11. I have the following cartoon hanging in my office. It’s a nice reminder that lawyers are typically “Eugenes” and get so hung up with spelling, grammar, and punctuation, that they often forget about our ever-impending deaths. Helps me relax and lighten up when I receive correspondence that is poorly edited:

    Always makes me smile. Being a Eugene in law is usually a great thing, but every now and then you’ve got to remember the killer whale under the ice and take a breath (or two).


  12. Matt,

    That wonderful cartoon is going to my goddamn law clerks who dither all the time about my speeling. All the best.


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