Lack of overlap between markush groups used to narrowly construe claim term

Fed. Cir. reverses the district court's claim constructions and finding of infringement, and remands for further proceedings. The patent covers a controlled-release oral pharmaceutical composition for treating inflammatory bowel diseases.

Shire Development, LLC v. Watson Pharmaceuticals, Inc., __ F.3d __ (Fed. Cir. Mar. 28, 2014) (Rader, Prost, HUGHES) (No. 2013-1409, S.D. Fla.) (1 of 5 stars)
The claim terms "inner lipophilic matrix" and "outer hydrophilic matrix" were improperly construed as requiring lipophilic/hydrophilic characteristics of the excipients in a matrix. The intrinsic evidence, however, supported constructions that required the matrices themselves to possess lipophilic and hydrophilic properties, respectively. Such evidence included: 1) statements made by the applicants during prosecution, even though the statements did not rise to the level of prosecution disclaimer; 2) the specification (Background of Invention) teaching that a lipophilic matrix exhibits lipophilic properties; 3) the claim structure requiring the inner lipophilic matrix to be "separate, if not distinct, from the outer hydrophilic matrix," slip op. at 11 (which Shire also admitted during oral argument); 4) a logical reading of the claim terms indicating that "inner lipophilic" and "outer hydrophilic" are mutually exclusive; 5) the lack of overlap between the two Markush groups further limiting the "inner lipophilic" and "outer hydrophilic" terms; and 6) examples in the specification indicating that the lipophilic matrix could not have hydrophilic properties. Whether an accused composition infringes under a particular construction has no bearing on the inquiry.