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IP LitigationFederal Circuit

“A” does not mean “one or more” when such construction leads to an absurd result

May 1, 2014

IP LitigationFederal Circuit

“A” does not mean “one or more” when such construction leads to an absurd result

May 1, 2014

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Federal Circuit affirms-in-part and reverses-in-part claim construction, vacates summary judgment of infringement, and affirms findings that the claims are not anticipated, obvious, or indefinite.

Braintree Labs., Inc. v. Novel Labs., Inc., __ F.3d __ (Fed. Cir. Apr. 22, 2014) (Dyk (concurring-in-part; dissenting-in-part), PROST, Moore (dissenting-in-part)) (D.N.J., Sheridan) (3 of 5 stars)

CLAIM CONSTRUCTION:  Federal Circuit affirms construction of the term “purgation,” which did not require a full cleansing of the colon: 1) the claim language only required claimed compositions to “induce” diarrhea, not achieve a full cleansing; 2) specification referencing a cleansing was only in the context of a preferred embodiment and thus could not be imported as a limitation; and 3) Braintree’s statements to the PTO that its product is one for “cleansing (i.e., purging)” did not amount to a clear and unmistakable disavowal of claim scope.  Slip op. at 8.  As for “clinically significant electrolyte shifts,” the patentee defined the term in the specification.  Although the definition arguably excluded one of the preferred embodiments, “the patentee’s lexicography must govern the claim construction analysis.”  Id. at 9.

INFRINGEMENT:  Federal Circuit vacates and remands summary judgment of infringement that was based on the erroneous constructions of “clinically significant electrolyte shifts” and “a patient.”  The latter term referred to “a patient population,” not “one or more patients,” based on statements in the specification and abstract.  Moreover, the construction “one or more patients” would lead to an absurd result.

VALIDITY:  Claims were not anticipated by prior art reference Hechter, which failed to disclose several of the limitations.  During prosecution, patentee added the word “hypertonic” to distinguish Hechter.  Hechter taught away from administering hypertonic solution and there was no evidence that the initial mixture in Hechter was either tested in a patient population or found to be hypertonic.  As for obviousness, Novel failed to prove that a skilled artisan would have been motivated to combine the sixteen references it relied upon and the district court found Novel’s expert’s testimony to be less credible.  As for indefiniteness, the term “copious” was not indefinite.  Such descriptive terms are commonly used “to avoid a strict numerical boundary” and would be understood by a skilled artisan in this context.

CONCURRENCE:  Judge Dyk would have found non-infringement as a matter of law because Novel’s ANDA does not meet the volume limitation recited in the claim.  He also viewed Braintree’s infringement theory as unsupportable because it rested on an incorrect construction of “volume.”

DISSENT:  Based on the term’s plain meaning, Judge Moore would have construed “a patient” as one or more patients, and nothing in the specification or prosecution history justified rewriting the patent claims.  Under this construction, Judge Moore would affirm summary judgment of infringement.

Related Tags

appellate
CAFC Summary
Federal Circuit

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