Bad Punctuation Can Be Fatal to Patent Rights

As we recently wrote about in this blog, even something as seemingly trivial as the little word “a” can be important when it comes to interpreting a patent.

Punctuation is also more important than you might think when it comes to legal documents like patents and contracts.

As the BBC recently reported,

A dairy company in the US city of Portland, Maine settled a court case for $5m earlier this year because of a missing comma.

Three lorry drivers for Oakhurst Dairy claimed that they were owed years of unpaid overtime wages, all because of the way commas were used in legislation governing overtime payments.

The state’s laws declared that overtime wasn’t due for workers involved in “the canning, processing, preserving, freezing, drying, marketing, storing, packing for shipment or distribution of: 1) agricultural produce; 2) meat and fish products; and 3) perishable foods”.

The drivers managed to successfully argue that because there was no comma after “shipment” and before “or distribution”, they were owed overtime pay. If a comma had been there, the law would have explicitly ruled out those who distribute perishable foods.

Several Circuit Court cases deal with punctuation in the patent context.

The case of Cultor Corp. v. A.E. Staley dealt with a method for the purification of polydextrose. The specification stated:

As used herein, the expression “water-soluble polydextrose” (also known as polyglucose or poly-D-glucose) specifically refers to the water-soluble polydextrose prepared by melting and heating dextrose (also known as glucose or D-glucose), preferably with about 5-15% by weight of sorbitol present, in the presence of a catalytic amount (about 0.5 to 3.0 mol %) of citric acid.

[Emphasis added.]

That comma after “present” meant that only the phrase in bold was optional – but not the rest of the sentence.

In Allen Eng’g Corp. v. Bartell Indus., a missing period was the problem. One claim of the patent read:

23. The riding trowel as defined in claim 22 wherein said tertiary linkage means comprises crank means driven by said connecting shaft means and coupled to said gearbox means by rigid

There was no period after “rigid” and it appears that whatever was presumably meant to follow “rigid” was missing.

Held the court,

Since it is impossible to discern the scope of such a truncated limitation, claim 23 is indefinite and thus invalid under 35 U.S.C. § 112, paragraph 2.

Interestingly, the person drafting the patent, the patent prosecutor, the patent examiner, and perhaps even the plaintiff’s patent litigation attorney failed to spot this mistake.

The European Patent Office (EPO) recently nullified a Boeing patent due to the inconsistent placement of a comma leading to an ambiguous interpretation of a term.

The claim at issue contained three sub-features which were repeated word-for-word in an auxiliary request. But the second time the list appeared, the first two features were separated by a comma, whereas number features two and three were included in the same clause.

The EPO Board of Appeal noted the importance of being precise and consistent with punctuation:

The appellant argues that English does not have clear rules for the use of commas. However, if feature (g3) were intended to be separated from feature (g2), a comma would indeed be necessary here in order to even suggest to the reader that each occurrence of the word "identifying" should be interpreted differently. It cannot however be expected that the skilled person reading a claim would speculate as to other possible meanings which might result from inserting commas at various places. This would place an undue burden on the reader of a claim.

As we blogged about recently, even small mistakes in patent drafting can have big impacts.