From time to time during oral arguments at the Federal Circuit, grammatical issues arise. Sometimes a judge will instruct an advocate about what the proper grammatical interpretation of something is (according to that particular judge). And, at least one judge is a self-described “grammar nerd.” I’m curious if any of the judges will ever put their grammar credentials on the line to assess the proper grammatical interpretation of “well-understood, routine, conventional activity” from the Mayo/ Alice cases.
It seems clear to me that in the phrase “well-understood, routine, conventional activity” that “well-understood, routine, conventional” are being used as coordinate adjectives. The grammar.com site gives this definition for coordinate adjectives:
Coordinate adjectives are two adjectives, of equal weight, modifying the same noun. Generally, you should separate the adjectives with a comma. A good test to use: Put the word and between the two adjectives and see if that makes sense. If so, the adjectives are coordinate adjectives.
Consider this example:
It was a long, hot summer.
See http://www.grammar.com/coordinate-adjective (last accessed August 7, 2016).
As the test makes clear, “well-understood, routine, conventional” is the equivalent of “well-understood, routine, and conventional” — a conjunctive phrase.
The Federal Circuit has noted that a conjunctive test requires that all parts of the test be met. For example, in Luigi Bormioli v. United States, 304 F.3d 1362 (2002), after determining that Bormioli did not satisfy a criterion of a conjunctive test, a panel of Judges Dyk, Clevenger, and Archer stated for the Federal Circuit:
We conclude that the Court of International Trade correctly held that Bormioli did not demonstrate that it met TD 85-111’s criterion that its financing arrangement with Bormioli Italy for the subject charges was in writing.
Because the TD 85-111 requirements are conjunctive, we need not address whether Bormioli satisfied the final requirement: that “where required by Customs, the buyer can demonstrate that [t]he goods undergoing appraisement are actually sold at the price declared as the price actually paid or payable, and [t]he claimed rate of interest does not exceed the level for such transaction prevailing in the country where, and at the time, when the financing was provided.” See TD 85-111. For these reasons, the judgment of the Court of International Trade is
Luigi Bormioli v. United States, 304 F.3d 1362 (2002)(emphasis added).
Other circuits have applied conjunctive principles as well. For example, in US v. SOTO-MATEO, No. 13-2031 (1st Cir. Aug. 26, 2015), Judges Kayatta, Selya, and Dyk stated for the First Circuit:
A defendant facing a charge of illegal reentry after removal may, under some circumstances, challenge the validity of the underlying order of removal. See 8 U.S.C. § 1326(d); United States v. Luna, 436 F.3d 312, 317 (1st Cir. 2006). To wage such a collateral attack, he must demonstrate that
(1) [he] exhausted any administrative remedies that may have been available to seek relief against the order;
(2) the deportation proceedings at which the order was issued improperly deprived [him] of the opportunity for judicial review; and
(3) the entry of the order was fundamentally unfair.
8 U.S.C. § 1326(d). In reviewing a district court’s determination as to whether a particular defendant has satisfied these requirements, we assay the district court’s subsidiary factual determinations for clear error, see United States v. DeLeon, 444 F.3d 41, 48 (1st Cir. 2006), and afford plenary review to its conclusions of law, see Luna, 436 F.3d at 316. Moreover, when “performing the collateral attack analysis under § 1326(d), [an inquiring] court ordinarily should address the initial test of exhaustion of administrative remedies before going on to the other two tests.” DeLeon, 444 F.3d at 45. The elements of section 1326(d) are conjunctive, and an appellant must satisfy all of those elements in order to prevail on a collateral challenge to his removal order. See Luna, 436 F.3d at 317.
US v. SOTO-MATEO, No. 13-2031 (1st Cir. Aug. 26, 2015)(emphasis added).
If the grammarists on the Federal Circuit choose to apply proper rules of grammar to the “well-understood, routine, conventional activity” test so as to treat it as a tripartite conjunctive test, they could reign in much of the overzealous application of Mayo/Alice that runs rampant today in assessing patent eligibility under 35 U.S.C. §101.