{"id":2889,"date":"2020-08-01T03:58:27","date_gmt":"2020-08-01T08:58:27","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2889"},"modified":"2020-08-23T23:03:26","modified_gmt":"2020-08-24T04:03:26","slug":"half-liquid-is-wholly-indefinite","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2889","title":{"rendered":"“Half-Liquid” is Wholly Indefinite"},"content":{"rendered":"\n

In IBSA Institut Biochemique, S.A. v. Teva Pharmaceuticals USA, Inc.<\/a>, [2019-2400] (July 31, 2020), the Federal Circuit affirmed claims the district court determination that claims 1, 2, 4, and 7\u20139 of U.S. Patent No. 7,723,390 were invalid as indefinite under 35 U.S.C. \u00a7 112.<\/p>\n\n\n\n

Central to the appeal was the parties\u2019 dispute over the construction of \u201chalf-liquid,\u201d which appears in independent claim 1.\u00a0 IBSA proposed that the term \u201chalf-liquid\u201d should be construed to mean \u201csemi-liquid, i.e., having a thick consistency between solid and liquid.\u201d Teva argued that the term \u201chalf-liquid\u201d is indefinite or should be construed as \u201ca non-solid, non-paste, non-gel, non-slurry, non-gas substance.\u201d<\/p>\n\n\n\n

The district court determined that IBSA\u2019s proposed construction was not supported by the record, and that a skilled artisan could not otherwise ascertain a reasonably certain meaning for \u201chalf-liquid.\u201d<\/p>\n\n\n\n

The Federal Circuit began by noting that a claim is invalid for indefiniteness if its language, read in light of the specification and prosecution history, fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention.\u00a0 The Federal Circuit then turned to the language of the claim to determine whether the meaning of \u201chalf-liquid\u201d is reasonably clear. Neither party meaningfully disputed that the claim language did not make the meaning of \u201chalf-liquid\u201d reasonably clear. The Federal Circuit found that the claim language clarifies only that a \u201chalf-liquid\u201d differs from a liquid.\u00a0 The Federal Circuit then turned to the specification and prosecution history, which did not help. In fact, the fact that at one time a claim to a semi-liquid depended from the claim to the half-liquid established that half-liquid and semi-liquid were not synonyms.<\/p>\n\n\n\n

Because the intrinsic evidence failed to establish the boundaries of a \u201chalf-liquid,\u201d the\u00a0 Federal Circuit turned to the extrinsic evidence, and found no error in the district court\u2019s determination that the extrinsic evidence does not supply \u201chalf-liquid\u201d with a definite meaning under \u00a7 112.<\/p>\n\n\n\n

The Federal Circuit concluded that taken together, the intrinsic and extrinsic evidence fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention, and affirmed the judgment of the district court.<\/p>\n\n\n\n

It is important to make sure the meaning of every claim term is clear from the specification, particularly where the claims have been translated from another language. <\/p>\n","protected":false},"excerpt":{"rendered":"

In IBSA Institut Biochemique, S.A. v. Teva Pharmaceuticals USA, Inc., [2019-2400] (July 31, 2020), the Federal Circuit affirmed claims the district court determination that claims 1, 2, 4, and 7\u20139 of U.S. Patent No. 7,723,390 were invalid as indefinite under … 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":[14],"tags":[],"class_list":["post-2889","post","type-post","status-publish","format-standard","hentry","category-indefiniteness"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2889","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=2889"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2889\/revisions"}],"predecessor-version":[{"id":2890,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2889\/revisions\/2890"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2889"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2889"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2889"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}