Sounds Fishy: Can Broadening Language Actually Be Limiting?

In a previous essay, I discussed a U.S. Supreme Court case that had nothing to do with patent law, but that patent practitioners may wish to note. That discussion pertained to a decision indicating that constitutional arguments ought to be preserved before an administrative agency?such as the United States Patent and Trademark Office?even if the agency lacks the jurisdiction to decide constitutional questions on their merits.

In this essay, I turn to one of the most humorous Supreme Court decisions in recent years. Even though this case seems far removed from patent law, it may hold a serious lesson for patent practitioners.

Yates v. United States

Yates v. United States, 574 U.S. ___ (2015), was a criminal matter. Yates was a fisherman, and he got caught with some undersized red grouper on his boat. A federal officer noted the violation at sea and instructed Yates to keep the undersized fish segregated from the rest of the catch until his ship returned to port. The officer then departed, and Yates instructed his crew to throw the undersized fish overboard, which they did. Yates was charged with destroying, concealing, and covering up undersized fish to impede a federal investigation, in violation of 18 U.S.C. § 1519.

The question in the case—and I am not making this up—was, “Is a fish a tangible object?”

The United States Supreme Court said no, a fish is not a tangible object within the meaning of the statute in question. I am not making that up, either. Five-to-four, that is the way the Court ruled.

The statute in question says: “Whoever knowingly alters, destroys, mutilates, conceals, covers up, falsifies, or makes a false entry in any record, document, or tangible object,” with unlawful intent, is subject to criminal penalty. Yates was convicted under another statute as well, and he did not challenge that conviction. But he did maintain that “fish are not trapped within the term ‘tangible object,’ as that term is used in § 1519.”

Lost in Construction

At first glance, this case seems like a slam-dunk. Is a fish tangible? Is a fish an object? If the answer to both questions is “yes” (which is what the dissent thought, citing Dr. Seuss as authority—and I am not making that up, either), then where’s the problem?

The case turned upon issues of statutory construction. This was actually a four-justice plurality case, but Justice Alito was largely on board with the plurality’s concerns about statutory construction.

The words “tangible object” were not in the statute in isolation. They were, rather, part of a list of things:  “any record, document, or tangible object.”  Moreover, the naughty actions that may be done are listed as altering, destroying, mutilating, concealing, covering up, falsifying, or making a false entry.

There is a principle of construction called noscitur a sociis, which means “It is known from its associates.” The plurality opinion explained that noscitur a sociis basically means, “a word is known by the company it keeps” and “a word is given more precise content by the neighboring words with which it is associated.”

The plurality and Justice Alito observed that the “associates” of “tangible object” were documents and records; in other words, things that preserve information or are related to filekeeping. So, a “tangible object” is of this kind as well. Also, the itemized statutory offenses are consistent with this construction, notably falsifying and making a false record. As Justice Alito wondered: “How does one make a false entry in a fish?” The dissent—and again, I am not making this up—likened Justice Alito’s analysis to “an odd game of Mad Libs.”

The plurality and Justice Alito also took note of a related canon of statutory construction, ejusdem generis, which means “of the same kind, class or nature.” This principle generally means that general words following a list of specific words should usually be read in light of those specific words to mean something similar.

Applying noscitur a sociis and ejusdem generis, the result was: pisces non est aliquid tangibile. And that last Latin phase, well, I did make that up. That phrase does not appear in the opinions, but it does encapsulate the result. Under these canons of construction, a fish would not be a “tangible object” under the statute, even though (as the dissent pointed out) a fish would fall within the plain and ordinary meaning of “tangible object.”

What it Means for Patents

These canons of construction are not necessarily limited to statutes. Noscitur a sociis and ejusdem generis have been applied to legal written instruments such as wills and contracts; and a patent is a legal written instrument as well. See, e.g., Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. ___ (2015) (comparing construction of patent claims to construction of written instruments such as deeds, contracts, or tariffs).

The canons of noscitur a sociis and ejusdem generis may well be applied to patents, because many patent drafters include lists of items in a patent’s description, intending to broaden the scope of the description.

For example, a patent may mention that a particular component may be constructed of “metal, plastic, ceramic, or the like, or any combination thereof.” The drafter’s expectation, of course, is that the disclosure is intended to be very broad, to the effect that it does not matter of what material the component is made. The “catchall” language (“or the like, or any combination thereof”) may be intended to be broadening beyond the specific items listed.

But applying noscitur a sociis and ejusdem generis, might such a facially broad disclosure actually be limiting? Would such a list of materials encompass, say, semiconductive material or silicone? How about stone or concrete? Would it capture a biological material?  Might an infringer colorably argue, “My product does not have the component in question, because the accused part of my product is made of wood”? Might an examiner assert that such language in a patent application does not describe or enable a component made of rubber, because rubber is different from metal and plastic and ceramic?

Here’s another example: the patent’s claim language refers to a component that performs an operation “based upon the average value” of some group of quantities. The patent’s description discusses the term “average” by saying that the term includes “the arithmetic mean value, the median value, the mode value, and other numerical values representative of a group of values.” Would such language include all possible representative numerical values, even those that inventor never contemplated at all?  An argument can be made that the mean and the median and the mode are fairly well-defined and standard metrics, and so the catch-all language should encompass no more than other metrics of that type. Someone seeking to design around the patent might use a unique, non-standard way of selecting a representative numerical value.

The Takeaway

By being aware of these rules of construction, patent practitioners can be mindful of the potential breadth—or lack of breadth—of a list of elements. Also, should a patent drafter desire that a list not be limiting, the drafter can take extra care to reduce the risk of application of these rules of construction. The drafter may, for example, include a more careful and encompassing definition and may explicitly say (in addition to “catchall” language) that the list is neither limited nor exclusive.

Final Observations

Two additional observations may be in order. First, there was a recent case in the patent area in which “catchall” language in a statute was deemed not to be broadening. In Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., decided by the United States Supreme Court on January 22, 2019, the Court (while invoking neither noscitur a sociis nor ejusdem generis), found that a “catchall phrase” in a patent statute was not as all-encompassing as it seemed on its face to be. Second, the canon of noscitur a sociis made an appearance in Bilski v. Kappos, 561 U.S. 593, 604 (2010), in which the Supreme Court determined the canon inapplicable when a definition (in this case, the definition of “process” in 35 U.S.C. § 101(b)) explicitly defines the word in question.