{"id":1498,"date":"2017-04-07T00:15:55","date_gmt":"2017-04-07T04:15:55","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1498"},"modified":"2017-04-07T00:15:55","modified_gmt":"2017-04-07T04:15:55","slug":"dont-exalt-slogans-over-real-meaning-find-the-claim-construction-that-naturally-aligns-with-the-specification-and-prosecution-history","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1498","title":{"rendered":"Don’t Exalt Slogans over Real Meaning; Find the Claim Construction that Naturally Aligns with the Specification and Prosecution History"},"content":{"rendered":"

In The Medicines Company v. Mylan, Inc.<\/em>, [2015-1113, 2015-1151, 2015-1181] (April 6, 2017), the Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent No.\u00a07,598,343, and reversed a bench trial determination of infringement of U.S. Patent No.\u00a07,582,727.<\/p>\n

The district court reasoned that the accused product did not infringe the ‘343 patent because this patent required “efficient mixing,” and concluded that the accused product infringed the ‘727 patent because the claims\u00a0did not include the “efficient mixing” requirement. \u00a0The Federal Circuit found that the claims of\u00a0both patents include a “batches” limitation, which according to the patents requires efficient mixing, thus both patents require “efficient mixing.”<\/p>\n

The Federal Circuit noted that both patents included the “batches” limitation, that set a maximum impurity level for the product. \u00a0The Federal Circuit said that the claims could not be construed to cover any batch that met the impurity level, because it would cover the prior art, rendering the claim invalid. \u00a0Rather, properly construed, what the batches limitation\u00a0requires is the use of a process that achieves batch
\nconsistency. \u00a0The Federal Circuit noted that the patent owner agreed that\u00a0Medicines agrees\u00a0that batch consistency is the result of following the\u00a0patents in suit and is what distinguishes them from\u00a0the prior art.<\/p>\n

The Federal Circuit found a claim construction that covered any process that achieved the impurity standard and was not limited to the disclosed “efficient mixing” was unworkable, because an infringer would not know whether it infringed until all of the batches were completed, and thus would not provide reasonable certainty regarding the claim scope. \u00a0This reasoning seems faulty because if the infringer used a process which, like the disclosed process, reliably achieved the claimed impurity level, there would be no uncertainty.<\/p>\n

The Federal Circuit also noted that during prosecution the applicant characterized the invention as being the process: “[i]n the
\npresent invention, various embodiments relate to a less
\nsubjective and more consistent process.” \u00a0The applicant also took care to distinguish its post-critical date sales from its pre-critical date sales because they were “prepared by the new process\u00a0of the present invention.”<\/p>\n

Finally the Federal Circuit noted that the patent owner distiguished the invention to the district court based upon the process disclosed in the specification, telling the court that it was readily apparent\u00a0that the definition of pharmaceutical batches refers to\u00a0the compounding processes described in the patents-in-suit.<\/p>\n

After a detailed review of the language of the specification, the Federal Circuit found that the specification teaches\u00a0efficient mixing as a necessary and sufficient condition for\u00a0achieving batch consistency, and the prosecution history confirms that achieving batch\u00a0consistency requires efficient mixing. The Federal Circuit concluded that\u00a0to attribute to the\u00a0claims a meaning broader than any indicated in the\u00a0patents and their prosecution history would be to ignore\u00a0the totality of the facts of the case and exalt slogans over\u00a0real meaning.<\/p>\n

The Federal Circuit went on to find that the required “efficient mixing” was not met by the accused products, and reversed the district court’s finding of infringement.<\/p>\n

 <\/p>\n

 <\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In The Medicines Company v. Mylan, Inc., [2015-1113, 2015-1151, 2015-1181] (April 6, 2017), the Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent No.\u00a07,598,343, and reversed a bench trial determination of infringement of U.S. Patent No.\u00a07,582,727. The district court … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[7,16],"tags":[],"class_list":["post-1498","post","type-post","status-publish","format-standard","hentry","category-claim-constructino","category-infringement"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1498","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1498"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1498\/revisions"}],"predecessor-version":[{"id":1499,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1498\/revisions\/1499"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1498"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1498"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1498"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}