Sunday, December 23, 2007

Forceful Newman dissent in Sinorgchem vs. ITC

By a 2-1 vote, the CAFC reversed the ITC on a claim construction issue ("controlled amount"), vacated, and remanded.

Flexsys, the patent holder, went after Sinorgchem. The compounds in question are p- phenylene diamines [PPD] and the particular issue was the scope of "a controlled amount of protic material."

Interestingly, the CAFC cites to Durel v. Osram, 256 F.3d 1298, a case in which the CAFC corrected a garish chemical error by the district court (using atomic numbers instead of atomic weights to calculate stoichiometry).

Judge Newman dissented in Sinorgchem. An important sentence: "The panel majority promotes the number that is described for one condition, to a limit under all conditions, contrary to the specifications."

UPDATE

The prior art at issue in Warner Jenkinson v. Hilton-Davis was at highly basic conditions. The adoption of the limitation of pH 6-9 in the claim arose because that range was explicitly recited in the specification. In the end, the patentee won under the doctrine of equivalents.

Judge Newman's concern was that the numerical limitation adopted by the panel majority was a limitation ONLY for one situation, not for all situations, as other examples in the specification illustrated. In Sinorgchem, the patentee did NOT place the numeric limitation in the claim.

2 Comments:

Blogger David B. Woycechowsky said...

I love "Definitions sections" in patents. Use them all the time. But, why, of why, did the patentee in include a numerical limitation in its explicitly defined term? I mean, if the number is to avoid a specific, known piece of prior art, a-la one of the numerical limits in the patent from the Warner-Jenkinson case then okay. Otherwise, though?!?!?

5:51 AM  
Blogger David B. Woycechowsky said...

Mr. Ebert said: In Sinorgchem, the patentee did NOT place the numeric limitation in the claim.

Fed. Cir. majority said: The term “controlled amount” is set off by quotation marks—often a strong indication that what follows is a definition. . . . Moreover, the word “is,” again a term used here in the specification, may “signify that a patentee is serving as its own lexicographer.” . . . As such, the patentee must be bound by the express definition.

Dave says: When you put a numerical limitation into a definition-qua-definition in a patent application, then you are, for all meaningful intents and purposes putting that numerical limitation in the claim. I realize that Judge Newman was trying to be solicitous under the rubric of claim interpretation analysis here, similar to the way doctrine of equivalents can be solicitous. However, for better or worse, these kind of solicitousness in favor of the patentee seem to be going away.

Whether that is a good or bad thing, the implication for ppl who write patent claims is pretty clear: don't put in a numerical limitation in your claims (either directly or through lexicographic language in the spec), unless there a specific, known prior art that requires it to be there. Again, for better or worse, there is a lot of hostility toward patents out there these days. The old saving doctrines won't save you anymore.

To play Monday morning quartback on the claim in suit in Sinorgchem, maybe the patentee could have left the "controlled amount" language out of the claim entirely and still been patentable. If so, that would have been the best way to go. If absolutely required, then the definition should have read:

A "controlled amount" of protic material is an amount up to that which inhibits the reaction of aniline with nitrobenzene; the "controlled amount" of protic material can vary with type of base, amount of base, and base cation, and/or other conditions used in the various solvent systems.

The relevant skill set isn't understanding chemistry so much as writing exactly what you mean and not merely approximately what you mean. It is difficult, but not impossible. More and more, it is simply expected. Lawyer up, inventors!

9:41 AM  

Post a Comment

<< Home