Friday, October 01, 2004

Another claim construction case: AstraZeneca v. Mutual

Appellant Mutual won on a claim construction issue (thus, this is another case in which the district court interpretation was NOT UPHELD) and thereby won on the noninfringement issue but not on the invalidity issue.

The Federal Circuit cited Texas Digital again and referred to upcoming resolution in Phillips:

Language in some of our recent cases suggests that the intrinsic record, except for the claims, should be consulted only after the ordinary and customary meaning of claim terms to persons skilled in the pertinent art is determined. See, e.g., Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1204 (Fed. Cir. 2002) (“[T]he presumption in favor of a dictionary definition [of a claim term] will be overcome where the patentee, acting as his or her own lexicographer, has clearly set forth an explicit definition of the term different from its ordinary meaning. Further, the presumption also will be rebutted if the inventor has disavowed or disclaimed scope of coverage, by using words or expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.”) (citations omitted). The language in these cases emphasizes the use of technical and general-usage dictionaries in determining the ordinary meaning. Id. Under this approach, where the ordinary meaning of a claim is evident, the inventor’s written description of the invention, for example, is relevant only insofar as it provides clear lexicography or disavowal of the ordinary meaning. See, e.g., id.

Footnote 2: I.e., the invention vel non taught by the specification, as distinct from particular, idiosyncratic embodiments disclosed in the specification. See, e.g., Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1370 (Fed. Cir. 2003) (“[T]his court recognizes that it must interpret the claims in light of the specification, yet avoid impermissibly importing limitations from the specification. That balance turns on how the specification characterizes the claimed invention. In this respect, this court looks to whether the specification refers to a limitation only as a part of less than all possible embodiments or whether the specification read as a whole suggests that the very character of the invention requires the limitation to be a part of every embodiment.” (citations omitted)).

Footnote 3: Resolution of this question may be approaching. See Phillips v. AWH Corp., __ F.3d __, Nos. 03-1269, 03-1286, 2004 WL 1627271 (Fed. Cir. July 21, 2004) (granting petition for en banc rehearing, to address broadly the law of claim construction).

The particular technical term at issue in the AstraZeneca case is

Against this backdrop, the question becomes whether the intrinsic evidence takes priority in our construction of the claim term “solubilizer,” or if instead the ordinary meaning of the term, as determined from sources such as treatises and dictionaries, controls our construction in the absence of intrinsic evidence of clear lexicography or disavowal. Given that the parties agree that the extrinsic meaning of solubilizer is broad, Astrazeneca unsurprisingly urges the latter approach to claim construction.

We need not decide which approach is proper as a matter of law, as even under Astrazeneca’s preferred methodology, the district court’s claim construction must be reversed. The intrinsic evidence, we hold, clearly binds Astrazeneca to a narrower definition of “solubilizer” than the extrinsic evidence would support.

Mutual contends that the specification limits the scope of the claim term “solubilizer” to surfactants, and we agree. First, we hold that the inventors deliberately acted as their own lexicographers. The “Description of the Invention” states that “[t]he solubilizers suitable according to the invention are defined below” (emphasis added), and two paragraphs later, states that “[t]he solubilizers suitable for the preparations according to the invention are semi-solid or liquid non-ionic surface active agents” (emphasis added). Astrazeneca maintains that these statements simply refer to preferred embodiments of “suitable” solubilizers. We might agree if the specification stated, for example, “a solubilizer suitable for the preparations according to the invention,” but in fact, the specification definitively states “the solubilizers suitable for the preparations according to the invention” (emphasis added). Astrazeneca seems to suggest that lexicography requires a statement in the form “I define ____ to mean ____,” but such rigid formalism is not required. See, e.g., Bell Atl. Network Servs., Inc., 262 F.3d at 1268 (“[A] claim term may be clearly redefined without an explicit statement of redefinition. . . . [T]he specification may define claim terms ‘by implication’ such that the meaning may be ‘found in or ascertained by a reading of the patent documents.’” (citation omitted)). Certainly the ’081 specification’s statement that “[t]he solubilizers suitable according to the invention are defined below” provides a strong signal of lexicography.
Second, we hold the specification clearly disavows nonsurfactant solubilizers. The inventors’ lexicography alone works an implicit disavowal of nonsurfactant solubilizers, but the rest of the specification goes further.
Again, Astrazeneca contends that these statements in the specification simply address the features of preferred embodiments. Astrazeneca seems to suggest that clear disavowal requires an “expression of manifest exclusion or restriction” in the form of “my invention does not include ____.” But again, such rigid formalism is not required: Where the general summary or description of the invention describes a feature of the invention (here, micelles formed by the solubilizer) and criticizes other products (here, other solubilizers, including co-solvents) that lack that same feature, this operates as a clear disavowal of these other products (and processes using these products).

For the foregoing reasons, we conclude that the district court erred in its claim construction, and that properly construed, the claim term “solubilizer” must be limited to surfactants. Because all asserted claims include the term “solubilizer,” and because Mutual’s extended-release felodipine tablets use a co-solvent, not a surfactant, as a solubilizer, Mutual’s tablets could not literally infringe the ’081 patent.

[no doctrine of equivalents]
Astrazeneca contends that even under this construction, the case should be remanded for further proceedings to address the doctrine of equivalents. We disagree. The specification’s clear disavowal of nonsurfactant solubilizers precludes the application of the doctrine of equivalents to recapture the disavowed solubilizers. See, e.g., Gaus v. Conair Corp., 363 F.3d 1284, 1291 (Fed. Cir. 2004) (“Having disavowed coverage of [particular] devices . . . the patentee cannot reclaim that surrendered claim coverage by invoking the doctrine of equivalents.”)<--

In a separate case decided on Sept. 30, 2004, the Federal Circuit addressed a procedural issue in Lab Corp v. Chiron. The Delaware district court had enjoined Chiron from prosecuting a parallel litigation co-pending in the United States District Court for the Northern District of California. Lab Corp won at the Federal Circuit (the injunction remained) BUT NOT for the reasons argued by its lawyers (the argument by Lab Corp's lawyers that Third Circuit law, not Federal Circuit law, applied was REJECTED by the Federal Circuit but Lab Corp won under Federal Circuit law).

From the decision:

-->In this case, the decision whether to follow Federal Circuit or Third Circuit law is critical: as we have previously observed, the Third Circuit has held that injunctions against litigation in other forums are not appealable, while under Federal Circuit law such injunctions are appealable under 28 U.S.C. § 1292(a)(1). Thus, we must decide which law applies. In deciding the applicable law, we held in the first case to address the issue that “the Federal Circuit shall review procedural matters, that are not unique to patent issues, under the law of the particular regional circuit court where appeals from the district court would normally lie.” Panduit Corp. v. All States Plastic Mfg. Co., 744 F.2d 1564, 1574-75 (Fed. Cir. 1984), overruled on other grounds by, Richardson-Merrell Inc. v. Koller, 472 U.S. 424 (1985). More recently, this court articulated the rule in the following way:

We have held that a procedural issue that is not itself a substantive patent law issue is nonetheless governed by Federal Circuit law if the issue pertains to patent law, if it bears an essential relationship to matters committed to our exclusive control by statute, or if it clearly implicates the jurisprudential responsibilities of this court in a field within its exclusive jurisdiction.

Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 1359 (Fed. Cir. 1999) (en banc in relevant part) (internal citations and quotation marks omitted); see also Flex-Foot, Inc. v. CRP, Inc., 238 F.3d 1362, 1365 (Fed. Cir. 2001) (“We answer this question on an issue by issue basis, and will apply the law of the regional circuit to which the district court appeal normally lies unless ‘the issue pertains to or is unique to patent law,’ in which case we will apply our own law to both substantive and procedural issue ‘intimately involved in the substance of enforcement of the patent right.’”) (quoting Amana Refrigeration, Inc. v. Quadlux, Inc., 172 F.3d 852, 855-56 (Fed. Cir. 1999)).
Accordingly, and because of the importance of national uniformity in patent cases, we hold that injunctions arbitrating between co-pending patent declaratory judgment and infringement cases in different district courts are reviewed under the law of the Federal Circuit.

After fully considering Chiron’s arguments, we find no reason to conclude that the district court abused its discretion in enjoining the parallel California action.


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