Proper grammar is essential in both claim drafting and other statements that may be used to construe the claims, such as arguments made during prosecution. Here, for example, the patentee argued during prosecution that “disparate” databases referred to an “absence of [A] compatible keys or [B] record identifier (ID) columns of similar value or [C] format,” which was found to require the absence of all of the listed criteria A, B, and C, rather than merely the absence of either A, B, or C alone. “[C]onsistent with proper grammar, … the phrase ‘not A, B, or C’ means ‘not A, not B, and not C.’” It may therefore be best to ensure that proper grammar is used in claim drafting as well as other statements of record (see, e.g., A. Scalia &. B. Garner, Reading Law: The Interpretation of Legal Texts (2012)); this would also be a good case to consult and cite in response to a grammatically improper claim interpretation asserted by the PTO.
Background / Facts: The patents being asserted here are directed to different features of an online analytical processing (“OLAP”) cube capable of collecting and processing live data from multiple incompatible databases. During prosecution, the claims were amended to clarify that the recited system accesses “disparate” databases, with the patentee stating that “[t]he disparate nature of the above databases refers to [an] absence of [A] compatible keys or [B] record identifier (ID) columns of similar value or [C] format in the schemas or structures of the database that would otherwise enable linking data within the constituent databases.”
Issue(s): Whether the claims require the absence of all of the listed criteria A, B, and C, rather than merely the absence of either A, B, or C alone.
Holding(s): Yes. “The statement in the prosecution history that ‘disparate databases’ refers to an absence of compatible keys or record ID columns of similar value or format can, theoretically, be interpreted in two ways: that the absence of any one of these characteristics makes databases disparate (the ‘disjunctive interpretation’) or that only the absence of all of these characteristics makes them disparate (the ‘conjunctive interpretation’).” In addition to citing the “manner in which the applicant distinguished [the prior art]” as dictating the conjunctive interpretation, the court noted that “[t]he conjunctive interpretation is also consistent with proper grammar, where the phrase ‘not A, B, or C’ means ‘not A, not B, and not C.’ [] Thus, proper grammar supports the district court’s conclusion that disparate databases—which, as explained in the prosecution history, means an ‘absence of [A] compatible keys or [B] record identifier (ID) columns of similar value or [C] format’—should be understood as [A] an absence of compatible keys; and [B] an absence of record ID columns of similar value; and [C] an absence of record ID columns of similar format.”