Novartis Pharmaceuticals Corporation, Novartis Ag, Novartis Pharma Ag, and Novartis International Pharmaceutical Ltd. v. Eon Labs Manufacturing, Inc.

CLEVENGER, Circuit Judge,

dissenting.

At trial, the parties disputed the meaning of “hydrosol” as it appears in the '382 patent. Novartis argued that the term should have its accepted normal meaning, i.e., solid particles dispersed in any aqueous medium. Eon did not disagree with this meaning of the term, but insisted that “hydrosol” as claimed in the patent must be limited to hydrosols made outside the body, and exclude any hydrosol that is formed in the stomach. Eon claimed support for its view from the references in the specification and the file history describing the invention as directed to a hydrosol that is intravenously acceptable and in injecta-ble form. Since the specification and file history made no reference to formation of the claimed hydrosol anywhere other than outside the body, the district court agreed with Eon that the “intravenous-injectable” connotations required the term to be restricted to the preferred embodiments shown in the patent.

On appeal, Novartis again asks why it is denied the ordinary meaning of hydrosol, which of course is not restricted to hydro-sols made in any particular place, whether it be in a factory or in a human stomach. See, e.g., Prima Tek II, L.L.C. v. Polypap, S.A.R.L., 318 F.3d 1143, 1148-52 (Fed.Cir.2003). Novartis challenges the rationale of the district court as contrary to our established law, which precludes narrowing a claim term simply because the specification and file history describe examples of embodiments that reflect the use of a contested term in a specific way. See, e.g., Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 905-09 (Fed.Cir.2004) (holding that claim terms are given the full breadth of their ordinary meaning unless a clear disavowal of scope is stated in the specification). The majority makes no attempt to defend the incorrect rationale of the district court’s claim interpretation analysis. Instead, the majority uses multiple dictionaries to find an ambiguity in the meaning of “hydrosol” as claimed. With more than one possible pertinent meaning for “hydrosol” on the table, the majority can properly apply our precedent to look to the specification and file history of the patent to determine whether the patentee has eliminated the apparent ambiguity by choosing one definition over the other. The majority concludes that the specification teaches that the inventor here clearly limited the claimed hydrosol to medicinal varieties of the same prepared outside the body.

I differ not with the majority over the tools of claim interpretation to be applied; my difference is in how the majority has used those tools to arrive at its perceived ambiguity. Let me explain.

The majority starts with its dictionaries in hand, and goes first, as makes sense, to the word “hydrosol.” It uses Webster’s Third New International Dictionary to learn that “hydrosol” means “a sol in which the liquid is water.” Other dictionaries could be used to arrive at the same definition, and in each instance the definition covers “hydrosol” no matter where it gets made. See, e.g., Dorland’s Illustrated Medical Dictionary 873 (30th ed.2003) (“a sol in which the dispersion medium is water”); Stedman’s Medical Dictionary 385 (1995) (“a colloid with water as the dispersing medium”); Webster’s Ninth New Collegiate Dictionary 590 (1985) (“a sol in which the liquid is water”). We all agree that this is a suitable definition of “hydro-*1314sol.” For certain, the ordinary meaning of “hydrosol” carries no manufacturing site limitation with it. That being so, one would have thought that the majority would have applied our settled law to allow the term its full breadth, unless the paten-tee had made an explicit disclaimer or clear disavowal of scope to alter the ordinary broad meaning of the term. See, e.g., Liebel-Flarsheim, 358 F.3d 898, 905-09; Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1341-48 (Fed.Cir.2001); Specialty Composites v. Cabot Corp., 845 F.2d 981, 986-88 (Fed.Cir.1988). As the majority correctly and candidly concedes, the paten-tee in this ease did not make any explicit disclaimer or disavowal of hydrosols made inside the body, so under our precedent Novartis would appear to be correct in its understanding of the disputed term.

But not so, according to the majority. It pursues the search in the dictionary, relying on Webster’s Third New International Dictionary (2002). There, it finds as a definition for “sol” the following: a “dispersion of solid particles in a liquid colloidal solution.” For the majority, this definition from this particular chosen dictionary is crucial, for it permits the court to move to a further degree of separation away from the word “hydrosol” to investigate the meaning of “solution.” Had the majority used the Merriam Webster Medical Dictionary (2003), available at http://www.intelihealth.com, definition of “sol,” it would have been deprived of the opportunity to pursue the meaning of “solution,” because the more pertinent medical dictionary defines “sol” simply as “a fluid colloidal system; especially: one in which the dispersion medium is a liquid.” Id. The pursuit of the meaning of “solution” is also blocked if one had turned to Webster’s Ninth New Collegiate Dictionary (1984) (the copy provided to my chambers by the court), which defines “sol” as “a fluid colloidal system; esp: one in which the continuous phase is a liquid.” Id. at 1121; see also Merriam-Webster’s Collegiate Dictionary 1117 (10th ed.1998); id. at 1186 (11th ed.2003).

Having found a need to define “solution”' — remember, the need is in order to know the meaning of “hydrosol” — the majority again relies on its dictionary in the next degree of separation to produce two meanings for “solution.” One meaning, “a liquid containing a dissolved substance” is deemed by the majority, correctly, to be broad enough to relate back to “hydrosol” without imposing any restrictions on the manufacturing site of the hydrosol. The other meaning, however, is pay dirt for the majority. That second definition of “solution” is “a liquid and usu. aqueous medicinal preparation with the solid ingredients soluble” (emphasis added).

At this stage in the dictionary expedition, the majority should have noticed the error of its ways. This is so, because the definition it adopts for “solution” requires that the solid ingredients be soluble. A purpose if not the purpose of the claimed hydrosol is to address the problem of cyc-losporin’s insolubility. A hydrosol solves the problem by finely dispersing the insoluble solid ingredient (cyclosporin) in a liquid. Cyclosporin is no more soluble than before. Indeed, Appellee Eon’s brief informs us of this very fact: “Hydrosols are distinguishable from solutions in that in a solution there are no solid particles .... ” (Appellee’s Br. at 4). For this reason, the claimed hydrosol is not a “medicinal preparation with the solid ingredients soluble,” and the preferred definition of “solution” cannot be tied back to the claim language. When such a disconnect occurs in the dictionary pathway, the dictionary exercise has gone too far.7

*1315In the next degree of separation, the majority embraces the term “medicinal preparation,” and forthwith abandons Webster’s in favor of The Oxford English Dictionary 548-49 (2d ed.1989), to plumb the depths of the meaning of the word “medicine.” (The reader should not forget that the word we are trying to define is “hydro-sol,” not “medicine.”). But The Oxford English Dictionary clearly does not state that a “medicine” must be manufactured outside the body, as the majority claims. Indeed, that dictionary emphasizes that “medicine” is taken internally, as is the case with Eon’s alleged infringing substance. By no stretch does The Oxford English Dictionary require a medicine to be made in a pharmaceutical factory. As a matter of fact, the primary definition of “medicine” in that dictionary (“[a]ny substance or preparation used in the treatment of a disease”) is broad enough to cover a hydrosol made in the body. The secondary definition of medicine, “medicament,” leads to the concept of internal consumption on which the majority relies. Note also, that the definition of “medicine” in The Oxford English Dictionary, being restricted to “medicaments taken internally,” is suspect, since many medicines are topically applied. Furthermore, appropriate medical dictionaries do not similarly restrict the ordinary definition of the word “medicine,” i.e., “a substance or preparation used in treating disease.” See Merriam Webster Medical Dictionary (2003), available at http://www.intelihealth.com; see also Stedman’s Medical Dictionary (27th ed.1999) (defining “medicine” as “[a] drug”); Dorland’s Illustrated Medical Dictionary (30th ed.2003) (defining “medicine” as “any drug or remedy”). In short, the ordinary meaning of “medicine” includes a hydrosol of cyclosporin formed in the stomach.

At the end of the long search in various dictionaries, the majority concludes that “hydrosol” is ambiguous because of “multiple possible” conflicting dictionary definitions. I am at a loss to understand why this dictionary search creates such an ambiguity. Indeed, at the end of the dictionary exercise, the majority narrows “medicine” to things made outside the body, even though the very dictionary on which the majority relies offers a primary meaning for the term that reaches hydrosols made anywhere. The majority’s decision depends entirely on a suspect secondary meaning for “medicine” found in only a single dictionary.

“Hydrosol” simply means “a sol in which the liquid is water.” Nothing in the dictionary listed under the word “hydrosol” speaks to the site where hydrosols are made. A “hydrosol” can be made anywhere, and manufacture outside the body is just a narrower subset of anywhere, with anywhere including inside the body. The existence of the narrower subset does not create ambiguity. It simply tells us what we know that terms frequently have broad and narrow meanings. We then look to the specification and file history to determine whether the patentee made a clear disclaimer of the broader meaning. If not, the patentee is not taxed with narrowing references by way of examples (such as the intravenous and injection examples in the patent in suit) to narrow the broad scope.

*1316Our case law has long recognized that medicines claimed in patents can be made inside or outside the body, and that infringement will lie in either case- if the proper proofs are made. These cases are no less concerned with patient treatment than the instant case. In all of them, we have a “medicine” whose ordinary meaning carries no manufacturing site limitations. See Schering Corp. v. Geneva Pharms. Inc., 339 F.3d 1373 (Fed.Cir.2003); Hoechst-Roussel Pharms., Inc. v. Lehman, 109 F.3d 756, 759 (Fed.Cir.1997); Zenith Labs., 19 F.3d at 1421-22. Each of these precedents involved medical preparations. But until this case, no one had suggested that a suspect dictionary definition of the term “medicine” should be used to deny a patentee the right to prove infringement when the claimed composition is formed as a medicine in the body following the ingestion of a different composition that was manufactured outside the body.

In short, the majority should have ended its dictionary analysis at the word “hydro-sol.” Only by pressing on through several degrees of separation can the majority get to the definition of “medicine” on which it relies to confirm the existence of a second competing pertinent definition of “hydro-sol.” Dictionaries are fine tools to assist in the exercise of claim interpretation, for sure, but in this case the majority has simply overworked the dictionaries to a point of error.

My preference is to use our standard tools of claim interpretation, including proper use of dictionaries, in this case, and let it fit comfortably, as it should, in our body of law that recognizes that medicinal preparations made in the body can infringe valid claims. For the reasons set forth above, Novartis’s patent should not be limited to injectable hydrosols of cyclosporin made outside the body. Novartis is entitled to a trial in which it can bring forward its proof of infringement.

With respect, I therefore dissent.

. The majority’s attempted escape from our reasoning on this point also fails. Jumping away from the chosen dictionary definition *1315(the one that allows a pursuit of the meaning of "medicinal preparation”) because of the "solution” roadblock it presents, the majority finds another definition presenting the concept of dispersion, and uses that concept to read back into "solution” a fluid containing solid particles, such as the claimed hydrosol. This chase through the dictionary establishes one point with sparkling clarity: the majority eschews the preferred meaning of common terms, (i.e., solution means "a liquid containing a dissolved substance,” Majority op. at 1309), in favor of secondary, or tertiary, etc. meanings of the word in question.