The dangers of patent blasphemy in the United States and Europe
The choice of words can make or break a US patent. This is especially true when it comes to the specification and language used when pursuing a patent. Moreover, language that might be harmless or even favored in one jurisdiction may be catastrophic in another.
A patent drafting key for US patent applications can be balanced; there are no “one size fits all” patents, and patentees must use a balance to establish a basis for the desired scope of claims in multiple jurisdictions. An important area to keep in mind when writing a US patent application is to avoid patent profanity but position the application, through well-chosen alternatives, to shine in multiple jurisdictions, especially in United States and Europe.
Patent profanity refers to words of characterization, usually absolute characterization. At the USPTO and the Federal Circuit, these terms have been deemed limiting and can lead to unfortunate outcomes for patentees alleging infringement. In this two-part series, we’ll look at several examples of patent profanity, how the Federal Circuit has ruled on these terms, and some considerations for drafters, including drafters involved in patent applications with foreign counterparts, where such characterizing language may be typical and even (dare we say) necessary.
In Atofina v Great Lakes Chemical Corp., 441 F.3d 991 (Fed. Cir. 2006), the limitation at issue was “chromium catalyst”:
Claim 1. A process for the manufacture of difluoromethane consisting essentially of the catalytic gas-phase fluorination of methylene chloride with anhydrous hydrofluoric acids…, at a temperature between 330 and 450 Cº and with a mass or supported chrome catalyst. (emphasis added)
The appellant argued that the district court misinterpreted the term “chrome catalyst” to exclude “metal oxides” and “non-inert additives” based on statements in the specification and prosecution history. According to the appellant, read in context, the statements relied upon by the district court did not amount to a “clear and unequivocal” surrender of the object.
The Federal Circuit, however, agreed with the district court, noting that the specification stated that “it is necessary have a catalyst containing uniquely chromium.” ID. to 997 (emphasis added). Further, the Federal Circuit noted that the appellants had argued during the lawsuit that it was “unnecessary to employ special additives to increase [the catalyst’s] selectivity. Identifier. This led the Federal Circuit to conclude that the District Court did not err in interpreting its claim and that the appellant’s statements rejected catalysts containing metal oxides and non-inert additives. Since the Respondent’s catalyst comprised a material other than chromium, the Federal Circuit found that the Respondent’s catalyst was not limited to “chrome only” and did not violate the Appellant’s contentions.
On appeal from a judgment of non-infringement, the appellants in Pharmacia & Upjohn Co. v. Mylan Pharmaceuticals, Inc., 170 F.3d 1373 (Fed. Cir. 1999) argued that the micronized glyburide compositions of Mylan Pharmaceuticals (“Mylan”) infringed claims asserted under the doctrine of equivalents, allegedly because “anhydrous lactose is the equivalent of spray-dried lactose”. The independent claim at issue read (emphasis added):
Claim 1. In a [sic] micronized antidiabetic pharmaceutical composition in unit dose, containing one or more pharmaceutically acceptable excipients, the improvement comprising: spray dried lactose as the predominant excipient in said composition, being present therein at about not less than [sic] seventy percent (70%) by weight of the final composition.
The district court held that prosecution history estoppel precluded the application of the doctrine of equivalents, noting Pharmacia & Upjohn Co.’s (“Pharmacia”) arguments during the lawsuits that “the use of spray-dried lactose was a ‘critical’ characteristic of the invention”, and emphasizing the “criticality” to use spray-dried lactose as the main excipient in their pharmaceutical composition. Identifier. to 1375, 1377 (emphasis added).
The Federal Circuit agreed with the District Court and held that “these statements would be reasonably construed as a ‘clear and unequivocal assignment’ of micronized glyburide compositions which do not contain spray-dried lactose.” Identifier. at 1377. Thus, the court did not address the issue of whether anhydrous lactose is the equivalent of spray-dried lactose. Due to the fatal use of “criticism” in lawsuits, Pharmacia’s equivalence argument fell on deaf ears.
“Special”, “Particular” and “Superior”
In Bayer AG v Elan Pharmaceuticals Research Corp.212 F.3d 1241 (Fed. Cir. 2000), the patent in suit claimed a pharmaceutical composition containing nifedipine crystals of defined specific surface area (SSA) (emphasis added):
- Solid pharmaceutical composition comprising as active ingredient an effective amount of nifedipine crystals with a specific surface of 1.0 to 4 m2/gin admixture with a solid diluent, to bring about a sustained release of nifedipine.
Bayer claimed that Elan infringed its patent. However, the district court disagreed, noting that Elan’s ANDA specified that the proposed product would have an SSA greater than 5 m2/g, and the claims were limited to nifedipine crystals having an SSA between 1.0 and 4 m2/g. Identifier. at 1247. The Federal Circuit agreed with the district court, noting that throughout the lawsuit’s history, Bayer claimed they were claiming “a special form of nifedipine, namely having a specific surface from 1.0 to 4 m2/gwhich was a “superior inventive range.” Identifier. to 1252 (emphasis added). Additionally, the Federal Circuit noted that Bayer argued that nifedipine crystals with this SSA range provided a “particular” effect of maintaining a high blood level of nifedipine for a long time. Identifier. In the face of such overt blasphemy, the Federal Circuit therefore upheld the District Court’s finding of non-infringement.
The patent in Inpro II Licensing, SARL v T-Mobile USA, Inc., 450 F.3d 1350 (Fed. Cir. 2006) concerned new personal digital assistant (PDA) modules designed to overcome various drawbacks and problems associated with previously available PDA systems. The broader claim at issue was:
Claim 34. A digital assistant module which interfaces with a host computer, comprising: an on-board CPU which manages the functions of the digital assistant module; …; a host interface adapted to provide communications between the PDA module and the host computer when docked to the host computer; and a housing which houses said CPU, said memory, said display, said input device and said host interface. (emphasis added)
The District Court interpreted the term “host interface” as a “direct parallel bus interface”. ID. at 1353.
The appellants argued that a parallel bus interface was missing from the accused infringing device, but argued on appeal that the patent specification did not limit the “host interface” to a single parallel bus interface, and instead contemplated a parallel bus interface. other types, such as serial interfaces and even indirect links. However, the Federal Circuit disagreed, noting that the specification described a “direct parallel bus interface” like a “Very important” characteristic of the PDA system described. ID. at 1355.
Since the appellants stated that the “direct parallel bus interface” was “very important”, the Federal Circuit found that the district court correctly determined that the specification characterized the “direct parallel bus interface” as necessary to provide “direct” communication. Thus, the Federal Circuit upheld the district court’s non-infringement ruling, with another complaint biting the dust due to overt profanity:
As the cases described in this article show, the Federal Circuit has narrowly interpreted the claims based on the absolute characterization language used in the specification and prosecution history. Whenever possible, it is recommended that writers carefully consider the implications of patent profanity and, if they use it, do so deliberately: avoid profanity for certain embodiments in order to create a broad scope of claim and catch those trying to design around a patent, then use patent profanity to define a narrow claim scope position which can be useful for patentability/validity. Carefully written specifications can create valuable patents and prevent future losses.
However, for patent attorneys involved in multi-jurisdictional lawsuits in the United States and Europe, the resulting applications may not meet the requirements of both patent offices. For example, trying to avoid patent blasphemy in the United States by using the phrase “in one embodiment” may lead to additional subject matter headaches when amending claims during the prosecution. ‘European Patent Office. If a practitioner defaults to “the invention is” or similar expressions, it would be good for both EU and US purposes to clearly provide alternative incarnations free from the shadow of such phrases.
© 2022 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XI, Number 64