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Tun-Jen Chiang & Lawrence B. Solum, The Interpretation-Construction Distinction in Patent Law, Yale L. J. (forthcoming), available at SSRN.

Claim construction is the meat and potatoes of a patent litigator’s diet: it is performed early and often in patent infringement litigation, and it is often outcome determinative. Claim construction’s notoriously uncertain and unpredictable nature is therefore highly problematic. In The Interpretation-Construction Distinction in Patent Law, Tun-Jen Chiang and Lawrence B. Solum argue that courts and commentators have misdiagnosed the root cause of this problematic unpredictability, and they lay out a new route forward for courts seeking to make claim construction more predictable. At the end of the day, I am unconvinced that the patent community should follow this route. Nonetheless, I think that The Interpretation-Construction Distinction is a provocative read that forces the reader to clarify what are sometimes implicit, unarticulated assumptions about the nature of claim construction in order to mount an effective rebuttal.

Drawing on a literature that explains how courts give legal effect to other legal documents (including the Constitution and contracts), Chiang and Solum offer a new perspective on claim construction. They argue that many courts that perform claim construction are not employing a single process but, rather, are in fact employing two distinct processes. First, there is interpretation, or the process of determining the linguistic meanings of words. For Chiang and Solum, linguistic meaning is entirely determined by the understandings of an audience, and it is therefore factual and objective. “The ideas and concepts that the intended audience will comprehend from a certain text is simply a fact of the world.” (P. 15.) Second, there is construction, or the process of imbuing claim language with legal import in order to achieve particular policy outcomes. For Chiang and Solum, any process in which courts consider the policy of optimal claim scope cannot be interpretation and must be construction. “[L]inguistic meaning is the domain of interpretation, and it is factual, and there is no ‘should’ in that question.” (P. 22.) “[L]inguistic meaning is beyond the control of, and thus not dependent upon, the normative preferences of a third-party interpreter such as a judge.” (P. 15.) For example, any attempt of a court “to tailor patent scope to the real invention” is an act of construction because it requires a court to consider normative, patent-policy concerns to identify the level of abstraction at which the “real invention” should be identified. (P. 4.)

With the interpretation-construction distinction in place, Chiang and Solum draw a sharp distinction between what conventional wisdom identifies as the source of uncertainty of claim construction and what they identify as its source. Conventional wisdom, they argue, is that the uncertainty derives predominantly from interpretation and thus uncertainty in the descriptive breadth of words’ meanings. In contrast, Chiang and Solum argue that the uncertainty derives primarily from a disagreement among judges concerning the legal import with which courts should imbue claim language in order to achieve particular policy outcomes. They argue that courts frequently use claim construction to override the legitimate range of interpretation of a word’s meaning and to give a legal effect to a word that is beyond the bounds of what the word actually means as a linguistic matter:  “[T]he cause of uncertainty in claim analysis is typically not a linguistic defect, but rather normative disagreement.” (P. 11).

I do not want to suggest that Chiang and Solum are per se wrong when they draw a categorical distinction between interpretation from construction. In fact, I believe that they offer one theoretically plausible way of describing what goes on when a court engages in claim construction. However, I worry that they oversimplify the conventional wisdom on claim construction and that the distinction between the extant debate and the Chiang/Solum thesis is itself just a matter of semantics. That is, I wonder if Chiang’s and Solum’s overarching thesis is novel only because it uses newly crafted concepts to describe the same-old controversy that has been percolating in the courts and law reviews for the last fifteen years or so.

Chiang and Solum assume that the existing debate about claim construction is focused on uncertainties in “linguistic meaning” as they themselves define the concept. That is, they assume that scholars and judges who talk about meaning are talking about an unmediated phenomenon governed solely by the understandings of the intended audience—namely the actual, real-world PHOSITAs. Yet, the linguistic meaning of a term in a patent claim need not be defined in this manner, and I am doubtful that the extant literature on claim construction has routinely defined it in this manner, either. Why can’t linguistic meaning be mediated by courts? What is wrong with saying that courts have authority to establish the rules that must be followed to identify the meanings of the words in a patent claim? There is an Academie Francaise that in some sense determines what French means as a linguistic matter, so why can’t there be courts that establish a claim construction methodology, i.e., the rules that one must follow determine what patent claims mean as a linguistic matter?1 As soon as patent claims are recognized as a realm in which there are special rules for linguistic meaning and as soon as the courts are given an instrumental role in determining these rules, the interpretation-construction distinction blurs into a continuum. There are certainly cases in which the meanings of claim terms according to the court-determined rules will be closer to and farther away from the meanings of those claim terms to actual, real-world PHOSITAs without knowledge of those legal rules, but there is no dichotomy.

Chiang and Solum reject the possibility of a court influencing the linguistic meanings of claim terms by citing a concern about “circular, confused, or misleading argumentation”:

“[T]he standard doctrine…says that courts follow the “meaning” of text. If, for this purpose, the ‘meaning’ referred to the legal effect, then we have a circularity: the court follows the meaning of text, but the meaning is the legal outcome, which is entirely within the control of the court. Under this standard, a court could do anything and it would always be right, which would make clear thinking impossible.” (Pp. 29–30.)

But this argument itself is confused. If courts were to take an ad hoc approach to claim construction, then Chiang and Solum’s concern might have some merit. However, claim construction disputes often center on a dispute over methodology: the set of rules for assessing the meaning of claim terms should be established ex ante, prior to and independent of any given patent claim. The courts’ determination of claim scope is a two-stage game. First, courts establish rules that determine how meaning is to be determined. Second, courts use those rules to determine the meaning of the words in any given claim. The meaning of a text can be its legal effect, and the rules for determining meaning can be both judicially established and steeped in patent policy, yet courts cannot do whatever they please in any given case. Courts must follow the rules, even if rules were established by courts in earlier cases.2

Chiang and Solum argue that the payoff of recognizing that construction, not interpretation, is the primary source of the uncertainty in contemporary claim construction lies in the transparency of intention that follows from calling a spade a spade. If courts and commentators recognize that the disagreements between judges and litigators in claim construction disputes are in fact disagreements over the policy of optimal claim scope rather than disagreements over the actual meaning of language, they posit that we are more likely to identify potential solutions and have rational arguments about which of those solutions will maximize the social-welfare gains of the patent regime. I agree entirely with Chiang and Solum that overt recognition of the role that patent policy does and should play in debates over the optimal claim construction methodology should be encouraged. For any judges or patent practitioners out there who truly believe that the debate over the best claim construction methodology is and should be devoid of policy concerns, Chiang and Solum have provided a sorely needed wake-up call. Yet, I’m not convinced that the distinction between interpretation and construction is either necessary or even helpful to facilitate this recognition. Although it may well just be the rose-colored reading glasses that I wear, I have always read the judicial and scholarly debate over the best methodology for determining the linguistic meanings of words in claims (i.e., the conventional wisdom on claim construction) as a deeply normative debate that is steeped in patent policy. Because I understand word meaning to be a mediated phenomenon in patent law, I read the conventional wisdom to suggest that the courts should establish rules to imbue the words of a patent claim with linguistic meaning that best achieves policy goals (e.g., predictability, optimal claim scope, or something else). Thus, there is no need to recognize a distinction between interpretation and construction to have the conversation about patent policy that we should be having. Furthermore, my suspicion—and it would concededly take much more space than I have here to flush this out in a convincing manner—is that switching over to Chiang’s and Solum’s way of talking about claim construction would do more to muddy the waters than it would to make our policy goals more readily obtainable.

So, in the end, my concern is that the difference between the conventional way of describing what courts do, on the one hand, and Chiang’s and Solum’s way, on the other hand, is itself just a matter of semantics. Chiang and Solum say the rules for determining the meanings of words in a patent claim are exogenous to both the courts and patent policy, so courts need to engage in policy-driven construction in addition to interpretation. Both I and at least some purveyors of the conventional wisdom on claim construction say the rules for determining the meanings of the words in a patent claim should themselves be created by courts in light of patent policy. That is, they say po-TAY-to, and I say po-TAH-to. So long as we agree that the choice of a set of rules for performing claim construction is a choice that should be steeped in patent policy, maybe we should call the whole thing off. If we don’t, each side must at least recognize how the other side defines the term “meaning” so that we don’t just talk past each other.

  1. While it would be an interesting philosophical debate to question whether a phrase in French means what the Academie says it means or what the average francophone thinks it means (to the extent that the two meanings diverge), I’m not seeking a single, dispositive answer. My point is that is entirely imaginable to say that a third-party intermediary establishes the rules that fix meanings of words, even when those words are articulated by a first group and understood by a second group. []
  2. Given the persistent nature of the debate over claim construction in the Federal Circuit, one could argue that the belief in the possibility of a set of clear rules for giving meanings to claim terms is a pie-in-the-sky fantasy. I am sympathetic to this argument, but it does not undermine the point I seek to make here. It undermines the possibility of greater certainty in claim construction regardless of whether or not one embraces the interpretation/construction distinction; recognizing the interpretation/construction distinction does not turn the fantasy of public notice into reality as we still need a set of clear rules for establishing when and how courts should engage in construction. []
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Cite as: Kevin E. Collins, The Interpretation-Construction Distinction in Patent Law: Is It Just a Matter of Semantics?, JOTWELL (September 17, 2013) (reviewing Tun-Jen Chiang & Lawrence B. Solum, The Interpretation-Construction Distinction in Patent Law, Yale L. J. (forthcoming), available at SSRN), http://ip.jotwell.com/the-interpretation-construction-distinction-in-patent-law-is-it-just-a-matter-of-semantics/.