Comma, Comma, Comma, Comma, Comma Chameleon: How Punctuation Can Color IP & Other Legal Rights

James P. Flynn, Managing Director of the Firm and Member in the Litigation and Employment, Labor & Workforce Management practices, in the firm’s Newark office, authored an article in ILN IP Insider, titled “Comma, Comma, Comma, Comma, Comma Chameleon: How Punctuation Can Color IP & Other Legal Rights.”

Following is an excerpt:

• “[T]he comma…this capricious bit of punctuation…”
  United States v. Ron Pair Enterprises, Inc., 489 US 235, 249
  (1989) (O’Connor, J, dissenting)
• “For want of a comma, we have this case.”
  O’Connor  et al. v. Oakhurst Dairy et al.,
  851 F.3d 69, 70 (1^st Cir. 2017)
• “But, when pressed, I do find I have strong views about commas.”
  Holy Writ by Mary Norris
  THE NEW YORKER, February 16, 2015

As long ago as 1818, in  United States v. Palmer, 16 U.S. 281, 293 (1818)(separate opinion of Johnson, J.), a Justice of the United States Supreme Court noted that “the use of the comma is exceedingly arbitrary and indefinite,” and a federal circuit court in 1988 noted that the comma is “often a matter of personal style,” and therefore “is a very small hook on which to hang a change in the law of substantial proportions.” In re Newbury Café, Inc, 841 F.2d 20, 22 (1^st Cir. 1988). Indeed, at varying times the Supreme Court has noted some undervaluing of the legal import of punctuation. See, e.g.,  Barrett v. Van Pelt, 268 U. S. 85, 91 (1925) (“`Punctuation is a minor, and not a controlling, element in interpretation, and courts will disregard the punctuation of a statute, or re-punctuate it, if need be, to give effect to what otherwise appears to be its purpose and true meaning’ “); Ewing v. Burnet, 11 Pet. 41, 53-54 (1837) (“Punctuation is a most fallible standard by which to interpret a writing; it may be resorted to when all other means fail; but the court will first take the instrument by its four corners, in order to ascertain its true meaning: if that is apparent on judicially inspecting the whole, the punctuation will not be suffered to change it”). Following such precedents, the Supreme Court has not hesitated in the past to change or ignore the punctuation in legislation to effectuate congressional intent. See, e.g., Simpson v. United States, 435 U. S. 6, 11-12, n. 6 (1978) (ignoring punctuation and conjunction so that qualifying phrase would modify antecedent followed by comma and the word “or”); Stephens v. Cherokee Nation, 174 U. S. 445, 479-480 (1899) (ignoring punctuation so that qualifying phrase would restrict antecedent set off by commas and followed by the word “and”). As Justice Scalia and co-author Brian Garner noted in Reading Law: Interpreting Legal Texts (2012), at 139, “[n]o helpful aid to interpretation has historically received such dismissive treatment from the courts as punctuation—periods, semicolons, commas, parentheses, apostrophes.”

Despite, or maybe because of, that history, the comma recently took center stage in the United States Patent Trial and Appeal Board’s February 22, 2024 decision in Netflix Inc. v. DivX LLC, case number IPR2020-00558, a case on remand from the United States Court of Appeals for the Federal Circuit. That decision illustrated both the importance and unimportance of punctuation in understanding intellectual property rights, and provides a useful take-off point for reminding ourselves of where such matters sit in the IP world these days, and whether there are “must-know comma rules for lawyers.”