Term defined in specification limited even though partially characterized as exemplaryDecember 28, 2007

In a recent decision, the Federal Circuit vacated and remanded a limited exclusion order by the International Trade Commission. The ITC entered an exclusion order that prevented importation of products produced by a method that infringed two patents.The Federal Circuit vacated the finding of infringement, holding that under the correct claim construction, there was no literal infringement. The court held that the patentee defined the term in dispute in the specification of the patent, and applied that definition to the claim, even though part of the definition was characterized as exemplary. The court remanded for the ITC to determine whether there was infringement under the doctrine of equivalents. Judge Newman dissented, arguing that the panel majority improperly narrowed the scope of the claims in a manner inconsistent with the specification, and that excluded several of the listed examples. More detail of Sinorgchem Co. v. Int'l Trade Comm'n after the jump.Sinorgchem is a producer and importer of 6PPD, a rubber antidegradant which is used to protect tires from deteriorative effects of various environmental factors. Sinorgchem also makes 4-aminodiphenylamine (4-ADPA), which is an intermediary compound used to produce 4-ADPA. The process of making 4-ADPA involves use of a protic material. Flexsys filed a complaint with the ITC, alleging that Sinorgchem's method for producing 6PPD and 4-ADP infringed method claims of two patents, and therefore violated § 337(a)(1)(B) of the Tariff Act of 1930, which makes it unlawful to import products which infringe a valid U.S. patent or are produced by a claimed process in a valid U.S. patent. Claim 61 of the '063 patent is exemplary (emphasis added):

61. A method of producing alkylated p-phenylenediamines comprising the steps of:a) bringing aniline and nitrobenzene into reactive contact in a suitable solvent system; b) reacting the aniline and nitrobenzene in a confined zone at a suitable temperature, and in the presence of a suitable base and controlled amount of protic material to produce one or more 4-ADPA intermediates. c) reducing the 4-ADPA intermediates to produce 4-ADPA; and d) reductively alkylating the 4-ADPA of Step c).

At issue was the construction of the term "controlled amount of protic material." Both parties agreed that the construction of the term should be the same for both patents. Sinorgchem argued that the term "controlled amount of protic material" should be construed as "up to about 4% water in the reaction mixture when aniline is the solvent". Flexsys alternatively argued that the term should be construed as "that the amount of protic material should be controlled between an upper limit and a lower limit," where the upper limit is the "amount beyond which the reaction between nitrobenzene and aniline is inhibited" and the lower limit is "that amount below which the desired selectivity for 4-ADPA intermediates is not maintained." The administrative law judge adopted Flexsys's construction and accordingly concluded that Sinorgchem's process infringed the asserted claims. The ITC, on appeal from the administrative law judge's determination, rejected Flexsys's proposed construction, finding that the patentee had acted as his own lexicographer and had expressly defined the term in the specification as "an amount up to that which inhibits the reaction of aniline with nitrobenzene." The ITC did not include in its definition the second clause of the sentence form the specification, which reads: "e.g., up to about 4% H2O based on the volume of the reaction mixture when anline is utilized as the solvent." The ITC concluded that this phrase was inconsistent with the language found in the rest of the paragraph in addition to Example 10 of the specification. The Federal Circuit noted that where "a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess . . . the inventor's lexicography governs." The Federal Circuit noted that the term "controlled amount" in the specification was set off by quotation marks, which it stated was "a strong indication that what follows is a definition."The court rejected the ITC's determination that the additional specification paragraph language made clear that the phrase "e.g., up to about 4% H2O" was utilized in the specification as an example and not a definition, stating that "[t]his vague language cannot override the express definitional language." The Federal Circuit also rejected the ITC's determination that the phrase was inconsistent with Example 10, which the ITC described as a preferred embodiment. The Federal Circuit stated "Example 10 is merely one of twenty-one distinct examples set out in the two specifications, all of which are described as 'preferred embodiments'" and that "we have previously interpreted claims to exclude embodiments where those embodiments are inconsistent withy unambiguous language in the patent's specification or prosecution history." Accordingly, the court held that the correct claim construction of the term "controlled amount" was the express definition in the specification, "an amount up to that which inhibits the reaction of aniline with nitrobenzene, e.g., up to about 4% H2O based on the volume of the reaction mixture when anline is utilized as the solvent." Under this definition, it was undisputed that the accused process did not literally infringe, as it uses approximately 10% water, so the court remanded the case for the ITC to determine whether there was infringement under the doctrine of equivalents. Judge Newman dissented. She argued that "[t]he Commission's findings concerning the amount of protic material shown in the specifications are supported by substantial evidence" and that "[t]he panel majority has seriously erred in discarding the Commission's findings and conclusions, for they are not only supportable on the required standard of review, but they also are correct." Judge Newman noted that "the specifications define the amount as varying with the solvent, base, base cation, and the like" and that "[t]he panel majority promotes the number that is described for one condition, to a limit under all conditions, contrary to the specifications."To read the full decision in Sinorgchem Co. v. Int'l Trade Comm'n, click here.

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