{"id":2900,"date":"2020-08-27T18:06:05","date_gmt":"2020-08-27T23:06:05","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2900"},"modified":"2020-08-29T13:38:53","modified_gmt":"2020-08-29T18:38:53","slug":"clear-claim-language-trumped-written-description-in-construction","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2900","title":{"rendered":"Clear Claim Language Trumped Written Description in Construction"},"content":{"rendered":"\n

In Baxalta Inc. v. Genentech, Inc.<\/a>, [2019-1527] (August 27, 2020), the Federal Circuit vacated the district court’s judgment of non-infringement of the asserted claims of U.S. Patent No. 7,033,590 because the district court erred in construing the terms \u201cantibody\u201d and \u201cantibody fragment,\u201d and remanded.<\/p>\n\n\n\n

Generally, antibodies are Y-shaped structures comprising two heavy chains (H chains) and two light chains (L chains). Baxalta argued \u201cantibody\u201d should be construed as a molecule having a specific amino acid sequence comprising two heavy chains (H chains) and two light chains (L chains). Genentech argued \u201cantibody\u201d should instead be construed as an immunoglobulin molecule, having a specific amino acid sequence that only binds to the antigen that induced its synthesis or very similar antigens, consisting of two identical heavy chains (H chains) and two identical light chains (L chains).<\/p>\n\n\n\n

The district court determined that the term antibody standing alone without other structural terms can have different meanings to those skilled in the art, and that both Baxalta\u2019s and Genentech\u2019s proposed constructions were acceptable definitions. However, the district adopted Genentech’s narrower definition based on an express definition in column 5 of the patent.<\/p>\n\n\n\n

The Federal Circuit said that contrary to the district court\u2019s construction, nothing in the plain language of claim 1 limits the term \u201cantibody\u201d to a specific antibody consisting of two identical heavy chains and two identical light chains or an antibody that only binds the antigen that induced its syn-thesis or very similar antigens. The dependent claims confirm that \u201cantibody\u201d is not so limited.<\/p>\n\n\n\n

The Federal Circuit said that the district court\u2019s construction which excludes explicitly claimed embodiments is inconsistent with the plain language of the claims. The district court rejected this inconsistency, suggesting that the proper result here is \u201cinvalidation of the inconsistent claims rather than an expansion of the independent claims.\u201d The plain language of these dependent claims weighs heavily in favor of adopting Baxalta\u2019s broader claim construction, and rejected the district court\u2019s construction which renders dependent claims invalid.<\/p>\n\n\n\n

As to the definition in the specification that the district court found limiting, the Federal Circuit said that when considered in the context of the remainder of the written description and the claims, it read the excerpt in column 5 as a generalized introduction to antibodies rather than as a definitional statement. The Federal Circuit also noted that these general statements do not include terms we have held to be limiting in other contexts such as \u201cthe present invention includes . . .\u201d or \u201cthe present invention is . . .\u201d or \u201call embodiments of the present invention are . . . .\u201d The Federal Circuit further disagreed that the prosecution history supported the narrow construction, recognizing that that the prosecution history \u201coften lacks the clarity of the specification and thus is less useful for claim construction purposes.\u201d<\/p>\n\n\n\n

The construction of antibody fragment followed the construction of antibody, and because the district court erred in construing the terms \u201cantibody\u201d and \u201cantibody fragment\u201d and entered judgment of non-infringement based on its erroneous constructions, the Federal Circuit vacated and remand for further proceedings consistent with the correct constructions of the terms.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Baxalta Inc. v. Genentech, Inc., [2019-1527] (August 27, 2020), the Federal Circuit vacated the district court’s judgment of non-infringement of the asserted claims of U.S. Patent No. 7,033,590 because the district court erred in construing the terms \u201cantibody\u201d and … 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],"tags":[],"class_list":["post-2900","post","type-post","status-publish","format-standard","hentry","category-claim-constructino"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2900","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=2900"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2900\/revisions"}],"predecessor-version":[{"id":2901,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2900\/revisions\/2901"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2900"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2900"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2900"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}