Biagro v. Grow More (Fed. Cir. 2005).

Claim Construction: In a step-back from recent claim construction holdings, the Court of Appeals for the Federal Circuit held that an “attorney’s statements” made during prosecution “do not alter the ordinary meaning of the claim language.”

Biagro’s patents relate to a phosphorus-based fertilizer for plants.  Representative claim 1 requires a “phosphorous-containing acid or salt . . . in an amount of about 30 to about 40 weight percent.”

Grow More’s product contains phosphorous, but the final product does not contain any phosphorous acid (although it is created using phosphorous acids).  Biagro argued that the claims should be interpreted as requiring the “chemical equivalent” rather than actually requiring an acid in the final product.  Biagro also pointed to the prosecution history where the attorney had pointed to the phosphorous acid in two examples — when in fact those examples only included chemical equivalent amounts of phosphorous acid. The CAFC found Biagro’s arguments unappealing and affirmed the district court’s construction and dismissal.

Doctrine of Equivalents: Biagro had amended the claims during prosecution to include the “phosphorous acid,” but contended that Festo should not apply.  The CAFC disagreed:

Burden: Even at summary judgment, the patentee has the burden of showing that it can overcome the Festo presumption associated with a narrowing amendment.

Reason for the Amendment Merely Tangential: A narrowing amendment made when were claims were rejected but done without any discernible reason is presumed to be made for a patentable reason, and not for a reason merely tangential to the equivalent.

The prosecution history revealed no reason for the amendment, and therefore Festo could not show that the rationale underlying the amendment was only tangential to the accused nonmagnetizable equivalent. Similarly, in this case, since the prosecution history shows no reason for adding an upper limit to the concentration range, Biagro cannot claim that the rationale for the amendment is merely tangential.

Other Reason: The court rejected the Biagro’s reasoning that the patentee had believed the claims meant “chemical equivalent” when, in fact, they did not.

Summary judgment of noninfringement affirmed.

Tap Pharmaceutical v. OWL Pharmaceuticals (Fed. Cir. 2005).

In an action for infringement of several pharmaceutical patents, the Federal Circuit upheld the district court’s findings that the generic drug-maker (OWL) had infringed two of the plaintiffs’ (Tap et al) patents.

Broad Scope Derived from Specification: Claims which described the patented compound as “comprising a copolymer … of lactic acid and … of glycolic acid” were interpreted by the appellate panel to also encompass copolymers “produced by any method.”  Although the specification only provided examples of copolymers made from lactic and glycolic acid, it did note that the polymer “may be produced by any method.” 

Disclaimer Based On Foreign Prosecution: Regarding foreign prosecution history, the CAFC gave little weight to statements made by the patentee to an Examiner in the European Patent Office that the invention did not include compounds made from lactide or glycolide.  The European Examiner had rejected the claims after this argument was made, finding that the compounds which the patentee had attempted to disclaim were not different from those made from lactic and glycolic acid.  Therefore, because the European claims were later allowed on other grounds, and because the patentee had not made this argument before the USPTO, the patentee must have “receded from that characterization of the claims,” and thus these statements should be given little weight in the process of claim construction.

Even Common Words Construed According To Specification: A second claim directed to “particles containing a water-soluble drug” was interpreted to encompass only particles which included both 1) the drug substance, and 2) a drug-retaining substance, because the drug-retaining substance was included in all the examples in the specification and was listed as a benefit of the invention.  The court held that the term “containing,” while not a technical term, helped to describe the patented technology and therefore “cannot be defined by some ordinary meaning isolated from the proper context.”  Thus, the district court was correct to look to both intrinsic and extrinsic evidence to properly interpret the claim.

The Federal Circuit thus affirmed the district court’s claim construction as to both patents.

NOTE: This post was written by Rebecca Brown.  Ms. Brown is a law clerk at MBHB and a student at Northwestern University School of Law.

• As Attorney Jason Rantanen pointed out in a recent e-mail, there is a clear distinction between the prosecution history disclaimer and prosecution history estoppel.  The disclaimer doctrine is related to “claim construction for the purposes of literal infringement” while the estoppel doctrine bars the assertion of DOE under Festo.

Research Plastics v. Federal Packaging (Fed. Cir. 2005).

In a dispute over caulking tubes, Research appealed a district court judgment of non-infringement — arguing that the lower court had erred in its claim construction.

Claim construction centered on the claim term “rear end.” Referencing only intrinsic evidence, the CAFC determined that the lower court had erred slightly in its definition of the term — finding that the prosecution history provided substantial support for defining the rear end as the “point defined by the rear edge of the tube.”  On remand, the district court must reconsider literal infringement in light of the new construction.

Regarding the Doctrine of Equivalents, the Court found that Research had disclaimed equivalents to a ribbed nozzle by amending the claims to overcome a cited reference. Thus, under Festo, that scope cannot be recaptured as an equivalent to the claimed invention.

File Attachment: Decision.pdf (78 KB)

TiVo v. Pause (Fed. Cir. 2005).

In a patent infringement action, the district court had granted summary judgment to the defendant TiVo — finding that certain TiVo products did not infringe Pause’s reissued patent.  On appeal, Pause challenged the district court’s claim construction rulings as erroneously defining the limitations “circular storage buffer” and “time interval of predetermined duration”.  In support of its position, Pause argued, inter alia, that (i) the lower court’s interpretation of a “circular storage buffer” limitation should not depend on other language appearing later in the claim and (ii) the language employed by the district court in construing the limitations was not present within the claim and, thereby, led to impermissible narrowing of the claim’s scope.

The Federal Circuit, relying in part on Phillips v. AWH, rejected the first argument as “[p]roper claim construction . . . demands interpretation of the entire claim in context, not a single element in isolation.” Additionally, the Federal Circuit further found that Pause’s second argument was inconsistent with the prosecution history and the language present elsewhere in the claim and in the specification. 

The Federal Circuit affirmed — finding no error in either claim construction or infringement analysis.

NOTE: This post was written by Cory Hojka. Mr. Hojka is a law clerk at MBHB and a student at the University of Chicago Law School.

< ?xml:namespace prefix ="" o />File Attachment: CAFC Decision.pdf (77 KB)