Dec 202013

Patent law is rife with use of the word “said” in places where “the” would be just as appropriate. While I’m not an expert at patent law or English, I do know that there’s very little reason to ever use “said” in place of “the” unless it’s customary or you want to be pretentious.1 However, after nearly a year and a half of working with patents, I have finally come across a scenario in which using “said” serves a purpose by increasing clarity (technically). So, if you want to use “said” instead of “the” in normal conversation, but can’t come up with an excuse when someone tells you you’re a douche, read on! For anyone else, I would probably stop now…it’s not going to be interesting.

We’ll use the mathematical concept of a least common multiple (LCM) to illustrate the scenario, but we’ll have to go through some examples leading up the actual scenario.2 First, consider the following instructions:

First, determine integers a and b. Then determine the LCM.

These instructions are very straightforward and, most likely, nothing appears odd. It is clear that the final step is to determine the LCM of a and b. In this case, the fact that the LCM requires at least two inputs is implied: “Then determine the LCM of and b.” This is obvious, as there are only two possible inputs, they are consistent with the expected types of inputs, and they are in close proximity to the function that takes the inputs.3 No big deal…but it should start to be apparent that implied relationships (a and b are inputs to the LCM step) can result in ambiguity. Consider the ever-so-slightly more complex instructions:

First, calculate a. Next, determine integers b and c. Last, determine the LCM.

It’s not entirely clear what the instructions want. The LCM of a, b, and c? The LCM of b and c? The LCM of a and b?…etc. Even if the vast majority of people would interpret these instructions to have the same meaning, we have introduced some ambiguity.

The entire purpose of this exercise was to illustrate the fact that there can be an relationship between various concepts (in this case, a mathematical operation and its inputs). In at least some scenarios, not making this relationship explicit is perfectly fine, and perhaps better. For example, if it’s obvious that the relationship exists, it’s certainly reasonable to ask why you should waste words making the relationship more explicit. However, not making the relationship explicit can result in ambiguity, as illustrated above. Now, let’s (start) get(ting) to the point.

Consider the following pseudo-patent claim:

1. A method comprising:
computing a least common multiple of a and b;
determining the values of c and d; and
outputting the least common multiple.

I don’t think there’s any real question about what is meant: the last clause describes outputting the LCM of a and bHowever, it’s not explicit, thus making an argument that “outputting the least common multiple” actually means outputting the LCM of c and d facially valid, even if silly. In other words, because there is ambiguity, even if slight, the door is opened for almost any argument that takes advantage of that ambiguity.

There’s nothing inherently wrong with an implied operation,4 as in the following:

2. A method comprising:
computing a least common multiple of a and b;
determining the values of c and d; and
outputting the least common multiple of c and d.

The above does not include an explicit operation that describes computing the LCM of c and d, but the operation has to have been performed at some point. Or, consider the first example claim, but without the first clause:

3. A method comprising:
determining the values of c and d; and
outputting the least common multiple.

I think it’s clear that this is not a particularly well written claim (even ignoring antecedent basis and definiteness issues), but it seems that it can easily be interpreted to mean outputting the LCM of c and d. So, we know that operations can be implied, as can the inputs to the operations. Further, the concept of the LCM is such that it exists as an abstract concept, and anytime you have two or more values you technically have an LCM (possibly getting around an antecedent basis rejection).5 Thus, it’s at least facially valid to state that there is some ambiguity in claim 1, above, regardless of how weak of a position it is.

However, the following clears up that ambiguity:

4. A method comprising:
computing a least common multiple of a and b;
determining the values of c and d; and
outputting said least common multiple.

While “the” can be “used to indicate a person or thing that has already been mentioned”, like “said”, “the” can be more broad and refer to things that exist but have not been mentioned. Thus, by having an even slightly narrower usage than “the”, “said” can, in some instances, reduce ambiguity. While this is probably not a particularly common scenario, it’s worth noting that the difference can have an impact. The main difference, again, is the fact that “said” more clearly refers to an element that was explicitly mentioned, while “the” is not restricted to explicitly mentioned elements, but also includes elements that exist but have not been explicitly mentioned.

But why does it matter, in light of knowing how silly the above argument is? One of an attorney’s job functions is to reduce ambiguity as much as reasonably possible (given practical constraints, like time and budget). Thus, if you recognize a potential source of ambiguity that can be fixed by using a particular term without other potential repercussions, you almost have to use the alternative term. And once you’ve recognized that there is a potential source of ambiguity in using the term “the”, you must either be consciously aware of that scenario when choosing to use “the”, or just use “said”. I like the latter option, because that’s one less thing I have to worry about.

Additionally, money plays a huge role. Any argument that I can prevent now has the potential to significantly reduce cost in the future. In other words, it costs a client a hell of a lot less money for me to use “said” or, even, to use “the” and just consciously be looking for instances where I should use “said” instead than it would if some high-priced litigator decided to waste the client’s money and make a facially valid, but idiotic argument. Let’s not even bother considering what could happen if a judge found the argument persuasive (it happens).

This also does a great job illustrating that you should really make an effort to make sure you know what words mean, instead of just using them based off of previous contexts. It’s also a pretty good illustration why, sometimes, sticking with pretentious, customary language, can be beneficial, even if not preferable from the reader’s standpoint. But most importantly, now you can be annoyingly pedantic when you pretentiously use “said” during a social function and someone makes fun of you.

1. Many people, myself included (at some point in the past), think that simply using a particular word or phrase because it is customary, when a more modern word or phrase will suffice, is silly. I have even heard of judges complaining and/or requiring less “legalese” in filings (although I do not have first hand knowledge of any such incidents). However, one of the implicit prerequisites for that point of view is that the words/phrases are truly interchangeable or that the person will recognize when they are not. It’s difficult to know when there is or is not an odd, uncommon scenario that two words that are interchangeable the vast majority of the time are not, in fact, interchangeable. In real life, generally, it doesn’t matter. In the legal field, however, those are the kind of scenarios that can come back to bite you in the ass. So, if it ain’t broke, don’t fix it.

2. Is this irony? Also, for those of you that don’t remember, the least common multiple is just the smallest number that can be divided by two or more numbers. So, for example, the least common multiple of 3 and 4 is 12.

3. While the first factor is most important in introducing ambiguity, the last can reduce clarity. In other words, the further away the related elements are from each other in the text (or whatever), the worse the use of an implied relationship gets.

4. In fact, this is frequently a strategy that is consciously chosen.

5. The typical patent language I’ve been exposed to always uses “a” when introducing something, even if it technically already existed as an implied or abstract concept. For example, normal people would say “There is a bird flying. The altitude of the bird is 50 feet.” Patent language would translate it to “There is a bird flying. An altitude of the bird is 50 feet.” I think this is silly, but never bothered to figure out why people do it (i.e., if there’s some reason the obvious antecedent basis argument fails and/or there are other implications). I’ll just continue being blindly being silly until I have some free time.

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