dissenting.
Claim 81 of the '840 patent recites a composition comprising four components: cyclosporin A; a propylene glycol hydro-philic component; a hydrophilic surfactant; and a lipophilic component. The lipophilic component is described in the patent as an oil-loving substance that dissolves the cyc-losporin so that when water is added to the composition an oil-in-water microemulsion is created.
It is not disputed that the accused Abbott composition contains the first three of the claimed components; only the presence of a lipophilic component is in dispute. Novartis argues that the Abbott composition has a lipophilic component in the form of Span 80, a lipophilic surfactant. Abbott argues that although Span 80 is lipophilic, it cannot serve as the lipophilic component of claim 81. The court today agrees with Abbott, based on statements in the specification of the '840 patent. Although the court acknowledges that a lipo-philic surfactant such as Span 80 can serve as part of the claimed lipophilic component, it holds that the specification does not allow for a surfactant to serve as the entire lipophilic component. Accordingly, the court holds that because Span 80 is the only lipophilic component in Abbott’s composition, the Abbott composition does not infringe, either literally or under the doctrine of equivalents.
Because it is undisputed that Span 80 is lipophilic and that cyclosporin dissolves in Span 80, Span 80 appears to qualify as a “lipophilic component” as that term is used in the '840 patent. Thus, Abbott can prevail on this claim construction issue only if the specification is read as requiring that the “lipophilic component” limitation be construed more narrowly. The court today concludes that the specification has that effect, but I do not agree.
In reaching its conclusion as to the proper construction of the term “lipophilic component,” the court relies on a passage from the specification stating that a surfactant may be incorporated in a microemulsion composition of the invention not only as the surfactant, “but in excess as an additional carrier or co-solvent phase, i.e. as part of the hydrophilic or lipophilic phase.” '840 patent, col. 12,11. 47-49. See also id,., col. 14, 11. 40-42 (referring to a lipophilic surfactant serving “as a surfactant or as a co-solvent”); id., col. 16, 11. 39-41 (referring to a surfactant that is “employed as a surfactant only or both a surfactant and a co-solvent”). The court interprets that language, which recognizes that a surfactant can serve as part of the hydrophilic or lipophilic components of the claimed composition, as meaning that a surfactant may be a part of the lipophilic component but may not serve as the lipophilic component by itself.
I do not draw the same conclusion from the quoted language. The statement on which the court relies refers to the role performed by excess amounts of the substance that serves the role of the surfactant in the claimed composition. The quoted language indicates that the composition of the invention must have at least three components in addition to the cyclos-porin, as required by claim 81. In addition, it contemplates that the substance that serves as the surfactant may also serve as part of either the hydrophilic or the lipophilic component. The quoted language therefore makes clear that the composition may not consist of only two com*1341ponents in addition to the cyclosporin, as would be the case if one ingredient served as both the surfactant and the lipophilic component in the composition. However, the quoted language does not address the case presented by Abbott’s composition, which contains three components in addition to the cyclosporin, and in which a hydrophilic surfactant serves as the surfactant, while Span 80 serves the function of the lipophilic component (dissolving and carrying the cyclosporin). Thus, because in Abbott’s composition Span 80 does not serve as the surfactant referred to in claim 81, the quoted language from the specification does not apply to Abbott’s composition. For that reason, I agree with Novartis that, where another substance serves as the hydrophilic surfactant, the specification does not disclaim the use of a lipophilic surfactant such as Span 80 as the sole component of the lipophilic component of the claimed invention. I therefore do not find a disclaimer of subject matter in the specification. A fortiori, I do not find a specific exclusion of subject matter for purposes of the doctrine of equivalents.
I respectfully dissent.