Judicial Howlers: Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.

I thought I’d take a break from talking about Reading Law, and instead discuss a case that will be of interest to patent lawyers and to aficionados of interpretations that are breathtakingly bad. Actually, most of the patent lawyers probably know about the case already, although they don’t necessarily know about the decision’s breathtaking badness.

The case is Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., and it was decided in 2010 by the U.S. Court of Appeals for the Federal Circuit, which hears all appeals in patent cases.

The legal issue is esoteric in the extreme, but the linguistic issue is quite simple, and of course it’s the linguistic issue I’m interested in. In fact, I take no position about whether the ultimate legal outcome is correct. Therefore, I won’t spend too much time sketching out the legal issue, and if you don’t understand it, don’t worry.

The case concerns the requirement that patents describe the invention:

The [patent] shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains. . . to make and use the same[.] [35 U.S.C. § 112]

The issue was whether the description must do more than simply enable a person skilled in the art to make and use the invention. Or, in patent-speak, whether there is a written-description requirement that is distinct from the “enablement” requirement.

If this is less than clear (by which I mean, “if you’re not a patent lawyer”), and if you want a better understanding of the legal issue, you can check out the court’s decision (p. 1349), this paper (especially pages 33–35), or (for more detail than you probably want) this paper.

But as I said, that’s not necessary, because the linguistic issue is set up nicely by the parties’ competing arguments about how the statute should be interpreted.

The patent-holders, who had sued Eli Lilly for infringement, were fighting against Lilly’s argument that the patent was invalid because its written description was inadequate. They argued in support of the patent that the phrase “in such full, clear, concise and exact terms. . .” modified the entire noun phrase that it followed. And they presented this interpretation visually with this representation of the statute’s grammatical structure:

The [patent] shall contain

[A] a written description

[i] of the invention, and

[ii] of the manner and process of making and using it,

[B] in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same . . .

Lilly, on the other hand, parsed the statute this way (the ellipses are Lilly’s):

(1) The [patent] shall contain a written description of the invention, and

(2) The [patent] shall contain a written description . . . of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same

So the linguistic issue is which of these two interpretations is correct.

The court of appeals agreed with Lilly (the ellipses are the court’s):

The prepositional phrase “in such full, clear, concise, and exact terms as to enable any person skilled in the art . . . to make and use the same” modifies only “the written description . . . of the manner and process of making and using [the invention],” as Lilly argues, without violating the rules of grammar.

That conclusion, in my view, is absurd. I don’t think the statute can reasonably be read that way.

You may have noticed that in Lilly’s representation of its preferred interpretation, which the court agreed with, the phrase the patent shall contain a written description appears twice, while in the statute it appears only once:

The actual statutory language

The [patent] shall contain a written description of the invention, and of the manner and process of making and using it

Lilly’s interpretation (with the repeated language underlined)

The [patent] shall contain a written description of the invention, and the patent shall contain a written description of the manner and process of making and using it

Literally inserting additional language into a statute in the guise of interpreting it is usually frowned on. So the only way the court’s move here is kosher, it seems to me, is if it merely clarifies what the statute’s actual language means, by making explicit what was previously implicit.

Now, it happens that there are in fact situations in which words can be added into a sentence, as Lilly did here, without changing the sentence’s meaning. I am talking about the phenomenon of ELLIPSIS:

Someone gave me this book, but I don’t remember who.
= Someone gave me this book, but I don’t remember who gave me this book.

Sam made the guacamole and Bob, the salsa.
= Sam made the guacamole and Bob made the salsa.

I’ll wash the dishes and you stack.
= I’ll wash the dishes and you stack the dishes.

The question, then, is whether the court’s insertion of additional language can be justified on the theory that the actual statutory language represents an example of ellipsis. I think it’s pretty clear that it cannot.

I say that for three reasons. First, it’s implausible to think that someone reading the statute without any preconceptions would understand it to mean what the court said it means. Second, the addition of the language inserted by the court demonstrably changes what the text means. And third, assuming it’s appropriate to treat the statute as involving ellipsis, the question of exactly what material was elided (and therefore has to be inserted) can be answered in more than one way—and each possible answer has a different effect on the statute’s meaning.

An unnatural interpretation

In elliptical constructions, it’s usually pretty obvious that there’s a gap that needs to be mentally filled in. In some cases, an essential grammatical constituent is missing:

Sam made the guacamole and Bob ____ the salsa. [missing verb]

Here the only way to make any sense at all out of Bob the salsa is to mentally fill in the verb.

In other cases, the phrase in which the ellipsis site occurs may be grammatical, but it’s semantically incomplete. For example, suppose someone says to you I don’t remember who. If there’s no relevant context, your response is likely to be something like, “You don’t remember who what?” Much the same is true if someone says (in the absence of relevant context), You stack. Stack what?

Constructions like these create an expectation that there is more to come. Sometimes those expectations are satisfied explicitly:

I’ll wash the dishes and you stack the chairs.

Someone gave me this book, but I don’t remember who I lent it to after I got it.

It’s only when the expectations aren’t satisfied explicitly that it’s necessary to fill in the gap based on the context.

However, the statute here doesn’t present a case of unmet expectations; there is no apparent gap that needs to be filled in. Think about it. You start reading the statute, and as you take in each word in sequence, you are building up an understanding of what it means.

The patent
The patent shall contain
The patent shall contain a written description
The patent shall contain a written description of the invention
The patent shall contain a written description of the invention and
The patent shall contain a written description of the invention and of
The patent shall contain a written description of the invention and of the manner…

The crucial point in this sequence is immediately after the and, because that’s the point at which, under the court’s interpretation, you’d have to mentally supply the words the patent shall contain a written description. But there’s no unmet expectation that would provide any reason for that to happen. The text is fully grammatical without those additional words, it makes sense without them, and it doesn’t seem incomplete without them. In fact, the additional material words would at this point seem utterly redundant, contributing nothing to the text’s meaning. So the easiest thing for your brain to do is to process the prepositional phrase of the manner and process… as modifying a written description, in parallel with the phrase of the invention.

A change in meaning

The syntax of the statutory language is essentially as the patent-holder described it, which I’ll repeat here:

The [patent] shall contain

[A] a written description

[i] of the invention, and

[ii] of the manner and process of making and using it,

[B] in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same. . .

That corresponds to the following phrase structure:


Click on diagram to enlarge

That is the only plausible structure, because the prepositional phrase in such full, clear, concise, and exact terms… can only modify the noun phrase a written description… If the in-such-terms phrase is taken to modify either making and using it or the manner and process of making or using it, the result makes no sense.

Given that in such terms… modifies the noun phrase that begins, “a written description…”, there is no way that it can be interpreted to modify a written description…of the manner and process of making and using it without also modifying a written description of the invention. As I said, it can only modify the entire noun phase.

(The Supreme Court reached a similar conclusion about the scope of a modifier in Flores-Figueroa v. United States (a case in which I submitted an amicus brief). The relevant syntax there was analogous to that shown in the tree above, with the difference that the modifier there preceded the phrase that it modified, rather than following it.)

The syntax of the court’s repeated-words rewrite of the statute (and therefore its meaning) differs significantly that of the unaltered statute. It is represented by this tree diagram:


Click on diagram to enlarge

With this structure, the in-such-terms phrase modifies only the phrase a written description of the manner and process of making and using it, because the phrase a written description of the invention is in a separate sentence (albeit the two sentences are combined into a larger compound sentence).

Thus, the court’s insertion of language into the statute cannot be justified as merely making explicit what the statutory language meant all along. On the contrary, the addition results in a different syntactic structure, which in turn results in a different meaning.

Alternative answers to the question of what was elided

Let’s assume that despite what I’ve said so far, you’re going to treat the statutory language as an involving ellipsis and add back the elided material. You then have to face the problem of deciding exactly what material was elided and has to be added back—and what the court did isn’t the only option.

The court saw the missing material that had to be added back as being the phrase the patent shall contain a written description. But one could just as easily conclude that the missing material was simply a written description:

The [patent] shall contain a written description of the invention, and a written description of the manner and process of making and using it

This would result in a syntactic ambiguity, because there would be two possible phrase structures. One of them is consistent with the court’s interpretation:


Click on diagram to enlarge

However, the other structure is consistent with the patent-holder’s interpretation:


Click on diagram to enlarge

There’s also a more drastic alternative, under which the court’s interpretation would be unambiguously wrong. Under this alternative, the elided material would be, not the patent shall contain a written description (or some part thereof), but the phrase in such full, clear, concise, and exact terms as to enable…:

The [patent] shall contain a written description of the invention in such full, clear, concise, and exact terms as to enable…, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains. . . to make and use the same[.]

The court didn’t address either of the possibilities I’ve just outlined, so it obviously didn’t try to explain why its reading was better than the others. And on a purely linguistic level—without taking account of questions of patent law or policy—I don’t think that any valid explanation is possible.

[Edited to correct an error in one of my examples, and to fix some things that should have been picked up in proofreading.]

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