Does The Skilled Artisan Care About Commas?

In an otherwise unremarkable opinion, the Federal Circuit took an extra deep dive into the precise structure of sentences in the specification in order to reach an otherwise straightforward claim construction.  3form, Inc. v. Lumicor, Inc. (Fed. Cir., Feb. 2, 2017)

3form’s utility patent covers a method of making a decorative laminate panel without deforming objects placed in the laminate.  The claim terms requiring construction recite that the method does not lead to “an unnatural appearing conformation” and that the final product has a “substantially natural appearing conformation.”

Although the parties had largely agreed on a construction, the district court followed its own path, which eliminated “splitting” and “cracking” from the construction of “unnatural appearing conformation” and imposed a rigid 75% compression level.

The relevant portion of the specification reads:

For the purposes of this specification and claims, “critical pressure” refers to the pressure at which the structural integrity of the object collapses, such that the object splits, cracks, or otherwise compresses into an unnatural conformation. There are, of course, varying grades of collapse, or compression, for any given compressible object, such that an “unnatural conformation” may mean that an object has compressed to 90% of its thickness in one direction, 75% of its thickness in one direction, and so on.

The opinion would eventually find error in the reliance solely on the 75% clause by the district court.  But before getting there, it parsed the comma usage of the first sentence.  Despite comma usage in law being the subject of no small amount of controversy, the Federal Circuit quickly concluded that the lack of a comma between “otherwise” and “compresses” decided the issue.  Of course, it that comma had been there, the word “otherwise” would become a verb (as part of a list with “splits” and “cracks”), and the sentence would make no sense.

Even though the Federal Circuit understood the sentence correctly, it still seems bizarre that it went through such a detailed and formalistic reading of the specification.  Patents are legal instruments.  That is why claim construction after Teva v. Sandoz is still reviewed de novo when only intrinsic evidence is used.

However, specifications are read and understood from the prospective of the skilled artisan.  In most technical fields, it is hard to imagine a skilled artisan scrutinizing comma usage to determine whether a modifier applies to an entire list or only a portion.  If the sentence is truly ambiguous, skilled artisans are more likely to rely on experience or other portions of the patent to sort out the ambiguity than look to the presence or absence of a comma in a single sentence.

In this case, the sentence is clear enough that the comma analysis  seems superfluous.  It may not be in a future case.  Thus, it is worth thinking about not just what a patent teaches to the skilled artisan, but how the skilled artisan actually goes about reading a patent document.

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