“[T]he comma…this capricious bit of punctuation…”
United States v. Ron Pair Enterprises, Inc., 489 US 235, 249
(1989) (O’Connor, J, dissenting)
For want of a comma, we have this case.”
O’Connor et al. v. Oakhurst Dairy et al.,
851 F.3d 69, 70 (1st Cir. 2017)
“But, when pressed, I do find I have strong views about commas.”
Holy Writ by Mary Norris
THE NEW YORKER, February 16, 2015
As long ago as 1818, in United States v. Palmer, 16 U.S. 281, 293 (1818)(separate opinion of Johnson, J.), a Justice of the United States Supreme Court noted that “the use of the comma is exceedingly arbitrary and indefinite,” and a federal circuit court in 1988 noted that the comma is “often a matter of personal style,” and therefore “is a very small hook on which to hang a change in the law of substantial proportions.” In re Newbury Café, Inc, 841 F.2d 20, 22 (1st Cir. 1988). Indeed, at varying times the Supreme Court has noted some undervaluing of the legal import of punctuation. See, e.g., Barrett v. Van Pelt, 268 U. S. 85, 91 (1925) (“`Punctuation is a minor, and not a controlling, element in interpretation, and courts will disregard the punctuation of a statute, or re-punctuate it, if need be, to give effect to what otherwise appears to be its purpose and true meaning’ “); Ewing v. Burnet, 11 Pet. 41, 53-54 (1837) (“Punctuation is a most fallible standard by which to interpret a writing; it may be resorted to when all other means fail; but the court will first take the instrument by its four corners, in order to ascertain its true meaning: if that is apparent on judicially inspecting the whole, the punctuation will not be suffered to change it”). Following such precedents, the Supreme Court has not hesitated in the past to change or ignore the punctuation in legislation to effectuate congressional intent. See, e.g., Simpson v. United States, 435 U. S. 6, 11-12, n. 6 (1978) (ignoring punctuation and conjunction so that qualifying phrase would modify antecedent followed by comma and the word “or”); Stephens v. Cherokee Nation, 174 U. S. 445, 479-480 (1899) (ignoring punctuation so that qualifying phrase would restrict antecedent set off by commas and followed by the word “and”). As Justice Scalia and co-author Brian Garner noted in Reading Law: Interpreting Legal Texts (2012), at 139, “[n]o helpful aid to interpretation has historically received such dismissive treatment from the courts as punctuation—periods, semicolons, commas, parentheses, apostrophes.”
Despite, or maybe because of, that history, the comma recently took center stage in the United States Patent Trial and Appeal Board’s February 22, 2024 decision in Netflix Inc. v. DivX LLC, case number IPR2020-00558, a case on remand from the United States Court of Appeals for the Federal Circuit. That decision illustrated both the importance and unimportance of punctuation in understanding intellectual property rights, and provides a useful take-off point for reminding ourselves of where such matters sit in the IP world these days, and whether there are “must-know comma rules for lawyers.”
Netflix/DivX is a patent case concerning the patentability vel non of 24 claims in U.S. Patent No. 10,225,588 B2 concerning devices and methods for playing back alternative streams of content protected through a common set of cryptographic keys. Central to the dispute were the contending interpretations of the Patent Owner and the challenging Petitioner concerning claims limitation “[I] locating encryption information that identifies encrypted portions of frames of video within the requested portions of the selected stream of protected video,” quoted at Netflix/DivX decision at 11 as it appears in patent—in other words, without commas. The Board then summarized the parties’ contentions as:
Patent Owner argues that the clause “within the requested portions of the selected stream of protected video” in limitation [l] of claim 1 modifies “locating encryption information,” and, properly construed, dictates that the “encryption information” must be “located,” “within the requested portions of the selected stream of protected video.” PO Resp. 26–39 (citing Ex. 2012 ¶ 85); PO Sur-reply 1–8. Petitioner asks us to reject Patent Owner’s arguments, and adopt our preliminary determination at the institution stage that the “within” term of limitation [l] connotes where the particular encrypted portions of frames of video must be located, not necessarily where the encryption information must be located. Pet. Reply 20–23.
[Netflix/DivX decision at 12]
The Board “determine[d] Patent Owner’s reading of the claim limitation is the better one,” holding it “reasonable that the second and third clauses of the limitation both modify the first clause (for example, as could perhaps be expressed through the use of commas as ‘locating encryption information, that identifies encrypted portions of frames of video, within the requested portions of the selected stream of protected video’),” the Board having “included commas above to illustrate Patent Owner’s understanding of the claim interpretation.” Netflix/DivX decision at 13, and fn. 10. [I have made the Board-inserted commas bolded and enlarged the font for emphasis]. The Board held that Petitioner’s reading, “while not unreasonable, makes less sense” but nowhere presented a repunctuated version of the limitation illustrating Petitioner’s interpretation. Id. at 13-14.
And a dissenting Board member called the majority on that difference, noting that “[t]he majority opinion acknowledges that limitation [l] of independent claim 1 contains no commas, such that their placement would have been helpful to understand Patent Owner’s intent in creating and amending such a limitation” and that neither the punctuation nor the claim language in question came from the inventor. Netflix/DivX decision at 39 (page 3 of dissent). The language came through Examiner’s Amendment and the punctuation by the Board. The challenger has already appealed, and we are left wondering whether punctuation is important (as it seemed necessary for the majority to add it to explain the patent limitation’s meaning) or unimportant (the majority imposed no requirement on inventor or applicant to have provided such punctuation to illustrate that meaning in the first place).
That US decision, and analytic approach, stands in contrast to a September 30, 2022 decision of the Board of Appeal of the European Patent Office in Matter T 1473/19 30-09-2022 between Schleifring GmbH and Siemens Healthcare GmbH concerning a patent for a contactless rotary joint. In that matter, “the contested expression, which does not contain any commas,” involved language stating that “said body having a free inner bore holding a capacitive data link.” EPO Decision at 2 (Summary item VI), 11 (paragraph 2.4). Rather than supplying commas in aid of expressing a favored interpretation, the EPO Board Appeal determined who a person skilled in the art, “on a plain reading of this expression,” would construe the operative language “[i]n the absence of any comma and any coordinating conjunction separating the various terms.” EPO Decision at 22 (para. 4.2). In other words, the lack of comma was held against the inventor/applicant’s interpretation rather than supplied in further support thereof. EPO Decision at 28-31 (para. 5.1-7, and Order). Indeed, the EPO Board concluded that it could not allow the patent at issue to be “corrected” by supplying an “additional comma and noun group ‘said body’” without violating prohibitions on added subject matter. EPO Decision, at 25 (para. 5.1)
Unlike the permissive Netflix/DivX decision from its US counterpart, the EPO Board’s decision illustrates that, although “punctuation saves lives!” at times, it can also kill patents.
There are any number of US patent decisions that similarly sway back and forth on the issues of whether a court can, or should, supply a needed comma or other punctuation in patent or other contexts. See, e.g., Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F. 3d 1339, 1352-53 (Fed. Cir. 2009)(not indefinite because one skilled in the art would realize need to read omitted comma into formula); Credle v. Bond, 25 F. 3d 1566, 1572 (Fed. Cir. 1994) (because in one portion of patent “there is a comma, indicating the beginning of a new, distinct step to be taken in the method of producing the collapsible bags,” but “there is no such comma preceding ‘flexibly securing.’ This suggests that ‘securing’ is not a present participle signifying a distinct method step, but instead indicates the static relationship between the spout and the form,” and thus “Credle’s proposed construction of the count is at war with its grammar and syntax and thus would force an unreasonable interpretation.”), and Allen Eng’g Corp. v. Bartell Indus., 299 F.3d 1336 (Fed. Cir. 2002) (lack of punctuation in limitation mean claim failed to meet definiteness requirement). And other court panels, such the Federal Circuit in Quality Edge, Inc. v. Rollex Corp., simply concede that, for example, there are “no hard and fast grammatical rule[s]” on the import of placing–or not placing–a comma between two adjectives, and thus courts need to consider other aids of interpretation.
This is, admittedly, somewhat indeterminate, at least as far a patent law goes, and the US Manual of Patent Examining Procedure (MPEP) has relatively little of substance to say about punctuation. If one considers “indentation” a replacement or supplement for punctuation, one should recall that the MPEP, at 608.01(m) references the substantive impact of indentations, noting that “there may be plural indentations to further segregate sub-combinations or related steps.” Similarly, the Code of Federal Regulations, 37 C.F.R. § 1.75(i), notes that “[w]here a claim sets forth a plurality of elements . . ., each element . . . of the claim should be separated by a line indentation.” One court in 2021, in a Western District of Texas case named Shotkam LLC v. Tachyon, Inc., even combined references to these items, indentations, and “the use of a semicolon” to determine that a patent claim had three, rather than two, required elements. The Patent Trial and Appeal Board, however, continued to illustrate a more indulgent approach than its European Union Counterpart, with its March 14, 2024 decision in Metacluster LT Uab v. Bright Data Ltd, PGR2022-00061. Metacluster involved a motion by the Patent Owner to “cancel claims 1–34, and substitute claims 35–66,” and to provide “written description support for several claim limitations sought to be added.” The US board not only granted to the motion but did so after providing “Preliminary Guidance” in the form of “information indicating [the Board’s] initial, preliminary, and non-binding views on whether Patent Owner had shown that it has satisfied the statutory and regulatory requirements associated with filing a motion to amend in a post-grant review and whether Petitioner (or the record) established that the substitute claims are unpatentable.” Opinion at 2-3. The Board then went on to grant the motion to amend, even though the substituted claims including “determining limitations” and “removing limitations” that were “not included” in the original application. Though these were not originally included, the US Board did not find them to represent “new matter.” Opinion at 4-5, and 9-18. Though Metacluster did not involve the adding of punctuation alone, it certainly illustrates an approach to drafting, iterative submissions, and Board guidance that differs markedly from the European Patent Office’s approach in Matter T 1473/19 30-09-2022 between Schleifring GmbH and Siemens Healthcare GmbH.
So this begs the question of whether the US approach includes specific directions and rules on meaning, language and punctuation or not. I guess you could say, or sing, that “I am a man without conviction” as to whether such determinacy exists, and “I’m a man who doesn’t know/How to sell a contradiction” like adding something that was not previously is different from adding new matter. [I guess advice is just to say that one can “come and go, you come and go.”]. With patent not offering the determinacy sought, perhaps one can find more structured and determinate punctuation rules in other intellectual property areas, such a trademark. That may be worth a look.
In contrast to the MPEP, Trademark Manual of Examining Procedure, or TMEP, deals repeatedly and substantively with the impact of punctuation on trademark rights, as well as one the items submitted to the trademark office as proof of a trademark’s content/elements or proof of its use. For example, in section 1213.05(b)(ii)(C), the TMEP notes that the “use of punctuation, such as a question mark, exclamation point, colon, dash, or period, as well as the meaning of the punctuation itself, may be a factor weighing either in favor of or against a mark or a portion of a mark” as it is considered in the application process. Likewise, under section 807.12(a)(i), “[p]unctuation in the mark on the drawing must also appear on the specimen because a mark sought to be registered under §1 must be “used in commerce,” and if the punctuation on the drawing does not appear on the specimen, the mark on the drawing is not used in commerce.” Other provisions, such section 1209.03, deal with the impact of punctuation on descriptiveness analysis. Further, punctuation is an important aspect of expressing, listing and defining the goods and services to which trademarks will apply, as seen in sections 1402.01(a) and 1902.02(f). The EU Intellectual Property Office Guidelines, at section 4.2.5, also deal expressly with punctuation in this context, noting that the “use of correct punctuation is very important in a list of goods and services — almost as important as the words.”
With that sort of background and grounding, one might hope that trademark cases concerning punctuation come out more definitively than those involving patents. But Adventis, Inc. v. Consol. Prop. Holdings, Inc., 2006 WL 1134129 (W.D. Va. Apr. 24, 2006), suggests otherwise. In that case, one of the issues presented involved the addition of an exclamation point (!) to a previously-adopted word mark. Though the Adventis Court noted that “the exclamation point would have been protected under the registration” defendant had obtained “[i]f the defendants had registered the word ‘Big Lots’ with an exclamation point,” it also noted that a “word mark registration, however, does not invariably permit the holder to unabashedly add letters, words, symbols, or graphics to a word mark and receive protection for these additions.” But the Adventis Court continued, asking the question as to whether such a change would nonetheless have left the two mark “convey[ing] the same continuing commercial impression,” allowing a tacking of period of uses. On that question, the Adventis Court also had its perspectives “come and go,” noting first that the “court would agree with the defendants that the addition of an exclamation point when used as a punctuation mark would generally not alter the commercial impression of a mark whose major feature is the words themselves,” but then that, “[i]f, however, the exclamation point is more than a mere punctuation mark and is intended to be a new design feature, then the addition of the exclamation point could impart a differing commercial impression.” After some further observations such as “the exclamation point used in the 987 mark is placed between the words ‘Big’ and ‘Lots,’” the “court knows of no instance when it is grammatically correct to place an exclamation point in the middle of a sentence or between two words that denote a single proper noun,” and the “exclamation point is independently featured on advertising and in-store signs,” the Adventis Court found questions of fact precluded summary judgment. Consequently, as in the patent field, the impact of punctuation is somewhat more of a ? than a definitive !, if you get the point.
But there should be answer, as commas can cost companies millions, or so the story goes. And knowing the rules should let you save your IP, according some watchdogs. Right?
But, alas, that isn’t how it has worked in legal matters. In fact, commas can confuse even more than IP rights. Punctuation and grammar have spawned or contributed to sports rivalries and implicated multi-million dollar swings, as seen in the NBA/ABA merger battles around an indemnity agreement that read “The Nets shall have the right, without further approval of Center, to play their home games at any location within the Net’s home territory in New York, other than in the Counties of New York, Bronx, Queens, Kings or Westchester or at any location in New Jersey, or any location in New Jersey” and whether that last phrase (“or any location in New Jersey”) referenced where the New York Nets could, or could not, move without further approval of the Knicks and Madison Square Garden, i.e. the Center. See Besser, Is There A Grammarian In The House, in Besser, Old Lawyers Never Die, They Just Lose Their Appeal (1996), at 35-37; see also Sam Goldaper, Order Restraining Knicks In Nets’ Move Continued,NY Times, July 14, 1977, at 23. Commas have also contributed to the constitutional conundrum around the 2d Amendment, because history leaves unclear how many commas are in the amendment:
Essentially, the older written versions [of the Second Amendment] I’ve seen in books – like Joseph Story’s – have one [comma] while more recent ones use three. I’m told the version on public display in Washington, DC has three, but that that is an anomaly to others of the period and to those sent around for ratification. I have seen one of them, and it contained one comma. Anyway, my question was, do the number of commas make a difference in the Second’s meaning?
***
Strict constructionists… might do better to interpret the 2nd Amendment based not on what they learned about commas in college but on what the framers actually thought about commas in the 18th century.
The most popular grammars in the framers’ day were written by Robert Lowth (1762) and Lindley Murray (1795). Though both are concerned with correcting writing mistakes, neither dwells much on punctuation. Lowth calls punctuation “imperfect,” with few precise rules and many exceptions. Murray adds that commas signal a pause for breath. Here’s an example of such a pause, from the Constitution: “The judicial power of the United States, shall be vested in one Supreme Court” (Article III, Section 1). But times change. If a student put that comma in a paper today, it would be marked wrong.
[Van Alstyne, A Constitutional Conundrum of Second Amendment Commas, 10 GREEN BAG 2D 469, 470-72 (2007); see also, generally, 469-477]
This means that punctuation, especially commas, have a long history of confounding us and that that will probably continue.
In the end, what was true in 1990 when Richard Wydick asked “Should Lawyers Punctuate?” is true now: “One can find recent case law in the United States to support almost any view of punctuation,” and it isn’t much different elsewhere. And, as Wydick further noted, it remains true that “commas (or the lack of them) cause more trouble than all the other punctuations marks put together.” Getting the meaning (as reflected in the grammar and punctuation) right and set consistently “every day is like survival” for the rule of law:
The rule of law is commonly identified with respect for a set of fundamental values deemed essential for maintaining a just and stable society. These values include:…[4] Predictability: The rule of law requires that the legal system be predictable, so that individuals can plan their lives and businesses accordingly. This means that laws and legal decisions must be consistent and predictable, and that individuals can rely on the law to make decisions and resolve disputes.
[What are the most commonly identified rule of law values?, inTwenty questions (and answers) on the rule of law…, at Jurist: Legal News and Commentary—Reporting The Rule of Law In Crisis]
That means, as we slog through punctuation problems and grammatical quagmires as IP lawyers, we’re left hoping for better “[comma] karma, [comma] karma, karma …” because clarity and consistency are not fostered if meaning simply changes back and forth, chameleon-like, depending on the surroundings that punctuate any particular legal or factual setting.
