by Dennis Crouch
The Federal Circuit recently expanded its doctrine associated with specification changes in family member patent applications — using minor changes in the specification justify differing claim construction across a patent family. FMC Corporation v. Sharda USA, LLC, No. 24-2335 (Fed. Cir. Aug. 1, 2025). This is helpful for careful patent attorneys, but also requires care when drafting non-provisional applications claiming priority back to a provisional. Notably, in both FMC and the 2024 DDR case, the construction hurt the patentee.
FMC owns US9107416 and US9596857, both claiming “Insecticidal and Miticidal Mixtures of Bifenthrin and Cyano-Pyrethroids.” These patents both claim the benefit of a provisional application (No. 60/752,979). Representative claim 1 of the ‘416 patent recites a “miticidal composition comprising bifenthrin and a cyano-pyrethroid selected from the group consisting of deltamethrin, … zeta-cypermethrin, . . . and esfenvalerate, wherein the weight ratio of bifenthrin to cyano-pyrethroid is from 10:1 to 1:30.”
When Sharda began selling WINNER, an insecticide containing bifenthrin and zeta-cypermethrin, FMC sued for infringement and sought a preliminary injunction. The dispute centered on the proper construction of the claim term “miticidal composition.” The district court granted preliminary relief after narrowly construing “composition” as limited to “stable compositions, rather than the well-known unstable compositions that produce ineffective results as discussed throughout the prosecution history.”
To support this narrow construction, the district court relied heavily on statements about physical stability found in the ‘979 provisional application, which noted that stability has been a known problem and statements in another family-member patent which also included the stability disclosure and stated that the invention was superior because of its stability.
Based on this stability-focused construction, the district court subsequently granted FMC’s renewed motion for temporary restraining order, finding that Sharda’s invalidity defenses prior art reference failed because the cited prior art (McKenzie) disclosed only unstable compositions.
The Federal Circuit’s Reversal: Specification Changes Have Consequences
The Federal Circuit reversed, holding that the district court’s construction impermissibly grafted a stability requirement onto “composition” based on disclosures that FMC had deliberately omitted from the asserted patents. Writing for the panel, Circuit Judge Chen explained that while the provisional application contained several references to “stability” and “stable compositions,” none of those statements appeared in the asserted patents’ common specification. As the court noted, “neither ‘stable’ nor ‘stability,’ nor any variation thereof, appear anywhere in the common specification.”
This outcome parallels that of DDR Holdings, LLC v. Priceline.com LLC, 122 F.4th 911 (Fed. Cir. 2024), where the Federal Circuit found that deliberate changes between a provisional application and the final patent can inform claim construction. In DDR, the provisional application defined “merchants” as “producers, manufacturers, and select distributors of products or services,” but the final patent altered this statement to remove “or services.” The Federal Circuit found this deletion “highly significant,” explaining that a skilled artisan would understand the “progression between the provisional application and the patent specification to indicate an evolution of the applicant’s intended meaning of the claim term.”
Applying this principle, the FMC court concluded that “every textual reference in the provisional application that a skilled artisan might reasonably have relied upon for interpreting ‘composition’ as covering only stable compounds was removed from the asserted patents.” The court emphasized that “[a] skilled artisan, in light of such deletions in the prosecution history, would not understand ‘composition’ as claimed in the asserted patents to cover only stable formulations.”
FMC attempted to distinguish DDR Holdings by arguing that it applied only where the progression between applications narrows claim meaning, whereas here the progression would broaden the scope to include unstable compositions. The Federal Circuit firmly rejected this limitation, explaining that DDR Holdings “did not turn on whether the deletions there would narrow or broaden the claim scope.” Instead, the court emphasized that DDR Holdings “turned on the existence of meaningful alterations the patent owner made between the content of the provisional application and the patent-at-issue.”
Rejecting Cross-Patent Family Consistency Arguments
FMC also argued that “composition” should be interpreted consistently across its patent family, particularly pointing to the related ‘145 patent, which maintained the provisional application’s stability disclosures. The Federal Circuit acknowledged the general principle from SightSound Technologies, LLC v. Apple Inc., 809 F.3d 1307 (Fed. Cir. 2015). However, the court distinguished SightSound by explaining that this consistency principle “does not hold true when the patent owner, like FMC here, materially alters the specification of some of the members of the patent family in a manner that directs a skilled artisan to interpret the claim term differently.”
Implications for Invalidity Defenses and Preliminary Injunction Standards
With the corrected claim construction in hand, the Federal Circuit found that the district court had abused its discretion in rejecting Sharda’s invalidity defenses. The court reiterated the established standard that in preliminsary injunction proceedings, an accused infringer “need not make out a case of actual invalidity” but need only show “a substantial question of invalidity.” The Court vacated the preliminary injunction and remanded for reconsideration under the correct construction.
The court also addressed FMC’s argument that the McKenzie prior art reference failed to meet the “miticidal” limitation in certain claim preambles. Applying the well-established principle that “[p]reamble language that merely states the purpose or intended use of an invention is generally not treated as limiting the scope of the claim.”
Connecting to the Broader Doctrine of Specification Changes
The FMC decision extends the analytical framework established in DDR Holdings and builds on earlier precedent such as MPHJ Technology Investments, LLC v. Ricoh Americas Corp., 847 F.3d 1363 (Fed. Cir. 2017). Together, these cases establish what might be characterized as a “soft disclaimer” doctrine, where changes between applications will be scrutinized and seen as particularly relevant to claim construction.
These cases have most often focused on transition from provisional to non-provisional applications — a point that attorneys often use to engage in cleanup, clarification, and refinement (especially when claiming priority to multiple provisionals). The Federal Circuit’s emphasis on the significance of these changes acknowledges that patent prosecutors make deliberate choices about what to include or exclude from their final specifications, and these choices will inform how skilled artisans understand claim terms.