Intrinsic Evidence and Patentee’s Expert Admission Narrowed Scope of Claim Term “About” To Specific Numerical Range Ortho-McNeil Pharma, Inc. v. Caraco Pharma. Labs., Ltd. v. Click here to download the case Click here to download the case Date: Jan. 19, 2007 Panel: Schall, Gajarsa, McKinney Author: McKinney District court: E.D. Mich. Trial judge: Steeh Summary: Fed Cir affirms summary judgment of noninfringement of a patent directed to pharmaceutical composition comprising certain weight ratios of two pain relievers. Claim construction: The Fed Cir agreed with construction of term “about 1:5,” which the district court construed to mean “approximately 1:5, encompassing a range of ratios no greater than 1:3.6 to 1:7.1.” Although the claim term “about” means “approximately,” precedent recognizes varying ranges based on invention’s technology. The Fed Cir held that the claimed range should be narrow here because (i) the “1:5” ratio is “distinctly claimed and distinguished from other broader weight ratio ranges in the patent”; (ii) a broader range for the limitation “could potentially render meaningless another claim’s limitation”; (iii) the data points from the specification’s experiments indicate compositions very close to the claimed ratio; and (iv) the construction was consistent with appellant-patentee Ortho’s expert who testified that the desired synergistic effect was achievable within the statistical range of up to 1:7.1 and as low as 1:1.36. Infringement: There was no literal infringement because the accused formulation required a weight ratio of no less than 1:7.5. In addition, there was no infringement under the doctrine of equivalents, because such ruling would vitiate the express and “critical” limitation of “about 1:5” and would recapture scope surrendered during reissue proceedings.
KEY WORDS: CLAIM CONSTRUCTION (NARROW), ABOUT, VITIATION, NONINFRINGEMENT; SUMMARY JUDGMENT
Meaning of “Vacated and Remanded” Explained; Phillips Might Permit Previously Adopted Construction; Method Steps To Be Performed In Recited Order If Each Step Refers to Completed Result of Previous Step E-Pass Techs., Inc. v. 3Com Corp. v. Click here to download the case Click here to download the case Date: Jan. 12, 2007 Panel: Michel, Linn, Prost Author: Linn District court: N.D. Cal.
Trial judge: Jensen Summary: Fed Cir affirms summary judgment that the defendants’ Palm PDAs and use of the Palm PDAs did not infringe a patent directed to a single electronic multifunction card for multiple credit cards. This is the second time that this case came before the Federal Circuit. Meaning of “vacated and remanded”: The district court did not violate the Federal Circuit’s mandate from the previous appeal in this case when it again granted summary judgment on the same claim term, because the Fed Cir merely “vacated and remanded” the previous summary judgment and thus did not foreclose summary judgment on the corrected claim construction. “By vacating, we signaled that, although the district court’s prior decision rested upon erroneous grounds, a proper claim construction might support a judgment (summary or otherwise) in favor of either party, depending on the evidence and argument submitted to the district court on remand and considered by the district court in the first instance.” Slip op. at 6. Law of the case: The patentee also pointed to a statement in the ruling on remand to suggest that the district court changed the construction adopted in the previous appeal. One of the defendants responded that the intervening en banc decision in Phillips allowed changes to a construction improperly derived from general dictionaries. Although “[a] claim construction articulated by a prior panel decision of this court ordinarily remains the law of the case unless it is in conflict with a subsequent decision by this court sitting en banc or by the Supreme Court,” the Fed Cir found no conflict between its previous opinion and Phillips, and further concluded that the disputed district court statement was harmless since it “was not strictly necessary to its holding.” Infringement: As to literal infringement, the patentee complained that the district court improperly treated the words of the construction as additional claim limitations. Although “the terms courts use to enunciate the proper construction of a claim are not themselves limitations that require interpretation,” slip op. at 11, the district court’s ruling was harmless because it remained consistent with the Fed Cir’s original construction. As to the doctrine of equivalents, the Fed Cir ruled that the district court’s one-paragraph statement that the accused product did not meet the function-way-result test was “too conclusory” and did not address the proper inquiry of whether the differences were substantial. But the Fed Cir affirmed on another procedural ground given the patentee’s failure to meet its summary judgment burden of proof when it failed to offer any evidence that the accused PDAs performed each steps of the claimed method in the specific order of steps as recited in the claims (the method claim here requires a specific order because “the language of most of the steps of its method claim refer to the completed results of the prior step”).
KEY WORDS: PROCEDURAL, LAW OF THE CASE, CLAIM CONSTRUCTION (BROAD), SUMMARY JUDGMENT, NONINFRINGEMENT, HARMLESS ERROR, FUNCTION-WAY-RESULT TEST, INSUBSTANTIAL DIFFERENCES, ORDER OF STEPS
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