United States Court of Appeals for the Federal Circuit
2007-1400
ABBOTT LABORATORIES,
Plaintiff-Appellant,
and
ASTELLAS PHARMA, INC.,
Plaintiff-Appellant,
v.
SANDOZ, INC.,
Defendant-Appellee,
and
SANDOZ GMBH,
Defendant,
and
TEVA PHARMACEUTICALS USA, INC. and
TEVA PHARMACEUTICAL INDUSTRIES, LTD.,
Defendants-Appellees,
and
RANBAXY LABORATORIES, LTD. and RANBAXY, INC.,
Defendants,
and
PAR PHARMACEUTICAL COMPANIES, INC. and PAR PHARMACEUTICAL,
Defendants.
----------------------------------------------
2007-1446
LUPIN LIMITED,
Plaintiff/Counterclaim Defendant-
Appellee,
and
LUPIN PHARMACEUTICALS, INC.,
Counterclaim Defendant-Appellee,
v.
ABBOTT LABORATORIES,
Defendant/Counterclaimant-Appellant,
and
ASTELLAS PHARMA, INC.,
Defendant/Counterclaimant-Appellant.
James F. Hurst, Winston & Strawn LLP, of Chicago, Illinois, argued for all plaintiffs-
appellants in 2007-1400 and defendants/counterclaimants-appellants in 2007-1446. With him
on the briefs for Abbott Laboratories were Todd J. Ehlman, Kathleen B. Barry, and Ivan M.
Poullaos, and Steffen N. Johnson, of Washington, DC. Of counsel on the brief for Abbott
Laboratories were William F. Cavanaugh, Jr., Jeffrey I.D. Lewis, and Stuart E. Pollack,
Patterson Belknap Webb & Tyler LLP, of New York, New York. Of counsel was John C. Knapp.
On the briefs for Astellas Pharma, Inc., were Richard D. Kelly, Stephen G. Baxter and Frank J.
West, Oblon, Spivak, McClelland, Maier & Neustadt, P.C., of Alexandria, Virginia.
Meredith Martin Addy, Brinks, Hofer, Gilson & Lione, of Chicago, Illinois, argued for
defendant-appellee Sandoz, Inc. With her on the brief were Thomas J. Filarski, Mark H. Remus,
C. Noel Kaman, and Laura A. Lydigsen. Of counsel was Rashad L. Morgan.
Thomas J. Meloro, Jr., Wilkie Farr & Gallagher LLP, of New York, New York, argued for
defendants-appellees Teva Pharmaceuticals USA, Inc., et al. With him on the brief was Neal K.
Feivelson. Of counsel were Michael W. Johnson and Alexander H. Swirnoff.
Deanne M. Mazzochi, Rakoczy Molino Mazzochi Siwik, LLP, of Chicago, Illinois, argued
for plaintiff/counterclaim defendant-appellee Lupin Limited and counterclaim defendant-
appellee, Lupin Pharmaceuticals, Inc. in 2007-1446. With her on the brief were William A.
Rakoczy, Paul J. Molino, and Amy D. Brody.
Appealed from: United States District Court for the Northern District of Illinois (07-CV-1721)
Judge Wayne R. Andersen
Appealed from: United States District Court for the Eastern District of Virginia (3:06-CV-400)
Judge Robert E. Payne
2
UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
2007-1400
ABBOTT LABORATORIES,
Plaintiff-Appellant,
and
ASTELLAS PHARMA, INC.,
Plaintiff-Appellant,
v.
SANDOZ, INC.,
Defendant-Appellee,
and
SANDOZ GMBH,
Defendant,
and
TEVA PHARMACEUTICALS USA, INC. and
TEVA PHARMACEUTICAL INDUSTRIES, LTD.,
Defendants-Appellees,
and
RANBAXY LABORATORIES, LTD. and RANBAXY, INC.,
Defendants,
and
PAR PHARMACEUTICAL COMPANIES, INC. and PAR PHARMACEUTICAL,
Defendants.
-----------------------------------------------
2007-1446
LUPIN LIMITED,
Plaintiff/Counterclaim Defendant-
Appellee,
and
LUPIN PHARMACEUTICALS, INC.,
Counterclaim Defendant-
Appellee,
v.
ABBOTT LABORATORIES,
Defendant/Counterclaimant-
Appellant,
and
ASTELLAS PHARMA, INC.,
Defendant/Counterclaimant-
Appellant.
Appeals from the United States District Court for the Northern District of Illinois in case
no. 07-CV-1721, Judge Wayne R. Andersen and the United States District Court for the
Eastern District of Virginia in case no 3:06-CV-400, Judge Robert E. Payne.
___________________________
DECIDED: May 18, 2009
___________________________
Before RADER, PLAGER, and BRYSON, Circuit Judges. MICHEL, Chief Judge, and
RADER, BRYSON, GAJARSA, LINN, DYK, PROST, and MOORE, Circuit Judges, have
joined Section III.A.2 of the opinion. Dissenting opinion as to Section III.A.2 filed by
NEWMAN, Circuit Judge, in which MAYER and LOURIE, Circuit Judges, join.
Dissenting opinion filed by LOURIE, Circuit Judge. SCHALL, Circuit Judge, did not
participate as a member of the en banc court.
2007-1400, -1446 2
RADER, Circuit Judge.
In this case, the same patent, U.S. Patent No. 4,935,507 (the ’507 patent),
occasions litigation in both the United States District Court for the Eastern District of
Virginia and the United States District Court for the Northern District of Illinois. The
Virginia District Court granted the motion of Lupin Ltd. and Lupin Pharmaceuticals Inc.
(collectively Lupin) for summary judgment of noninfringement. In the other case, the
Illinois District Court denied a preliminary injunction to Abbott Laboratories, the
exclusive licensee of the ’507 patent, based on the claim construction from the Eastern
District of Virginia.
Because the Eastern District of Virginia correctly construed the claims of the ’507
patent and correctly discerned no genuine issues of material fact on literal infringement
of claims 2-5 or infringement by equivalents of claims 1-5, this court affirms its partial
summary judgment of noninfringement. Likewise, this court affirms the Northern District
of Illinois’ denial of Abbott’s motion for a preliminary injunction, based in large part on
the same correct claim construction.
I.
Abbott Laboratories, the exclusive licensee of the ’507 patent, markets crystalline
cefdinir according to the ’507 patent under the trade name Omnicef. The Virginia case
arose when Lupin sought a declaratory judgment of noninfringement against Abbott
Laboratories and Astellas Pharma Inc., the owner of the ’507 patent (collectively
Abbott). The Food and Drug Administration had previously approved Lupin’s
Abbreviated New Drug Application (ANDA) to market a generic version of Omnicef.
Lupin’s generic product contains almost exclusively the Crystal B form of crystalline
2007-1400, -1446 3
cefdinir (cefdinir monohydrate), whereas Abbott’s Omnicef product contains the Crystal
A form of crystalline cefdinir (cefdinir anhydrate). Further, Lupin makes its products with
processes other than those claimed in the ’507 patent. For these reasons, Lupin
brought the Virginia action to clarify that its proposed product would not infringe a valid
patent. Abbott counterclaimed for infringement. The Eastern District of Virginia
construed the claims, Lupin Ltd. v. Abbott Laboratories, 484 F. Supp. 2d 448 (E.D. Va.
2007) (Lupin CC Order), and ultimately granted-in-part Lupin’s motion for summary
judgment of noninfringement, as to both literal and equivalent infringement for claims 2-
5 and as to equivalent infringement for claim 1, Lupin Ltd. v. Abbott Labs., 491 F. Supp.
2d 563 (E.D. Va. 2007) (Lupin SJ Order). The parties stipulated to the dismissal without
prejudice of the remaining claims (invalidity) and counterclaims (literal infringement of
claim 1).
In the Illinois action, Abbott sued Sandoz, Inc. and Sandoz GmbH (collectively
Sandoz), Teva Pharmaceuticals USA, Inc. and Teva Pharmaceuticals Industries, Ltd.
(collectively Teva), Ranbaxy Laboratories, Ltd., Ranbaxy, Inc., Par Pharmaceutical
Companies, Inc., and Par Pharmaceutical (all defendants, collectively, Sandoz and
Teva) for infringement of the ’507 patent. Like Lupin, Sandoz and Teva had previously
filed ANDAs, seeking to market generic versions of Omnicef. Abbott sought a
preliminary injunction in the Illinois case. For purposes of that motion, the parties
agreed to adopt the Eastern District of Virginia’s claim construction from the Lupin case.
Abbott Labs. v. Sandoz, Inc., 486 F. Supp. 2d 767 (N.D. Ill. 2007) (Sandoz PI Order).
Despite this agreement, the parties to the Sandoz case disagreed as to how to interpret
some of the Eastern District of Virginia’s constructions, necessitating some clarification
2007-1400, -1446 4
by the Northern District of Illinois. 486 F. Supp. 2d at 770-71 (disputing “Crystal A,”
“peaks,” and “about,” and seeking construction of “powder X-ray diffraction pattern,”
which the Eastern District of Virginia had not defined). Ultimately, the Northern District
of Illinois, based on the claim construction from Virginia, denied the preliminary
injunction.
Both cases arrived at this court on appeal. This court heard the cases together
and decides them together with this decision.
II.
The ’507 patent has five claims, all of which Abbott asserts against Lupin as well
as Sandoz and Teva. Claim 1 claims crystalline cefdinir, using its chemical name, and
defining its unique characteristics with powder X-ray diffraction (PXRD) angle peaks:
1. Crystalline 7-[2-(2-aminothiazol-4-yl)-2-hydroxyiminoacetamido]-3-
vinyl-3-cephem.-4-carboxylic acid (syn isomer) which shows the peaks at
the diffraction angles shown in the following table in its powder X-ray
diffraction pattern:
___________________________________________
diffraction angle (°)
about 14.7°
about 17.8°
about 21.5°
about 22.0°
about 23.4°
about 24.5°
about 28.1°
’507 patent, col.16 ll.13-27. In contrast, claims 2-5 claim crystalline cefdinir, without any
PXRD peak limitations, but with descriptions of processes used to obtain the crystalline
cefdinir. Claims 2 and 5 are independent:
2. Crystalline 7-[2-(2-aminothiazol-4-yl)-2-hydroxyiminoacetamido]-3-
vinyl-3-cephem-4-carboxylic acid (syn isomer) which is obtainable by
2007-1400, -1446 5
acidifying a solution containing 7-[2-(2-aminothiazol-4-yl)-2-
hydroxyiminoacetamido]-3-vinyl-3-cephem-4-carboxylic acid (syn isomer)
at room temperature or under warming.
5. Crystalline 7-[2-(2-aminothiazol-4-yl)-2-hydroxyiminoacetamido]-3-
vinyl-3-cephem-4-carboxylic acid (syn isomer) which is obtainable by
dissolving 7-[2-(2-aminothiazol-4-yl)-2-hydroxyiminoacetamido]-3-vinyl-3-
cephem-4-carboxylic acid (syn isomer) in an alcohol, continuing to stir the
solution slowly under warming, then cooling the solution to room
temperature and allowing the solution to stand.
Id. at col.16 ll.29-34, 43-50.
These claims use PXRD as a way to claim the structure and characteristics of
the unique crystalline form. PXRD is a method for identifying and distinguishing
different crystalline compounds. The method beams X-rays toward a powdered
chemical. The method then measures the ways the rays reflect or bend upon contact
with the chemical. The diffraction angles and intensities vary with the type and purity of
the test compound. A graph then plots the diffraction angle on one axis and the
intensity on another. These graphs yield a unique “fingerprint” for each crystalline form
of a chemical. A more sensitive form of X-ray diffraction is single crystal X-ray
diffraction (SCXRD). As this name suggests, this method uses only a single crystal as a
sample. SCXRD does not detect intensity, but produces a more precise diffraction
angle measurement.
The ’507 patent was not the first cefdinir patent. Rather, Astellas’ prior art U.S.
Patent No. 4,559,334 (the ’334 patent) describes the discovery of cefdinir as a
compound demonstrating high antimicrobial activity. ’334 patent, col.11 ll.18-24. The
’334 patent expired on May 6, 2007.
The ’507 patent claims priority to Japanese Patent Application No. 62-206199
(the JP ’199 application), which claimed two crystalline forms of cefdinir, “Crystal A” and
2007-1400, -1446 6
“Crystal B.” The JP ’199 application claimed Crystals A and B very specifically, defining
Crystal A by three infrared (IR)-absorption wavelengths and sixteen PXRD angles and
intensities. In contrast, Crystal B featured five IR-absorption wavelengths and twenty-
one PXRD angles/intensities.
Despite using the JP ’199 application for priority, the ’507 patent’s specification
differs significantly. Specifically, Abbott (actually Fujisawa Pharmaceutical Co., Ltd.,
Astellas’ predecessor in interest) jettisoned the Crystal B disclosure found in the JP ’199
application and crafted broader claims in its prosecution of the ’507 patent. Because
the JP ’199 applications defines Crystal A and Crystal B physiochemically rather than
structurally, the forms actually represent subgenuses of crystalline cefdinir. Thus
Crystals A and B comprise crystalline forms of varying structures, which in the context
of this case means varying levels of hydration.
The Eastern District of Virginia construed the claim terms “crystalline,” “shows,”
“peaks,” and “about” as follows:
1) “crystalline” means “Crystal A as outlined in the specification”;
2) “shows” requires the display of a powder X-ray diffraction pattern which
demonstrates the existence of the relevant peaks to a scientifically
acceptable degree of certainty either visually or by other appropriate
means of data display;
3) “peaks” is the plural of “peak;” a “peak exists at a powder X-ray
diffraction angle that corresponds to an intensity measurement greater
than measurements attributable to “noise” if that angle is immediately
preceded by and followed by powder X-ray diffraction angle with a lower
intensity measurement; “noise” refers to those portions of a PXRD pattern
produced by intrinsic measurement error, and which cannot be associated
with a scientifically significant quantity of the material which is the subject
of the PXRD test;
4) “about” encompasses measurement errors inherently associated with
powder X-ray diffraction testing.
2007-1400, -1446 7
Lupin CC Order, 484 F. Supp. 2d at 459, 466. The Eastern District of Virginia also
concluded that claims 2-5 were product-by-process claims. Id. Later the district court
concluded that the process terms of claims 2-5, indicated by the phrase “obtainable by,”
limit the claims to the specified processes and process steps. In reaching that
conclusion, the trial court followed this court’s opinion in Atlantic Thermoplastics Co. v.
Faytex Corp., 970 F.2d 834 (Fed. Cir. 1992). Lupin SJ Order, 491 F. Supp. 2d at 567-
68; Lupin Ltd. v. Abbott Labs., No. 3:06-CV-400 (E.D. Va. May 10, 2007) (Lupin PbyP
Order). In the Lupin appeal, Abbott challenges only the Eastern District of Virginia’s
constructions of “crystalline” and “obtainable by.”
III.
Evaluation of a summary judgment of noninfringement requires two steps: claim
construction, which this court reviews without deference, Cybor Corp. v. FAS
Technologies, Inc., 138 F.3d 1448, 1451 (Fed. Cir. 1998) (en banc), and comparison of
the properly construed claims to the accused product, process, or composition of
matter, which in the context of summary judgment also occurs without deference, see
Ormco Corp. v. Align Technologies, Inc., 498 F.3d 1307, 1312 (Fed. Cir. 2007).
Although infringement by equivalency is a question of fact, this court may affirm
summary judgment “where no reasonable fact finder could find equivalence.” Sage
Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1423 (Fed. Cir. 1997) (citing Warner-
Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 39 n.8 (1997).
A. Claim Construction
Because the claims define the patent right, see Innova/Pure Water, Inc. v. Safari
Water Filtration Systems, Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004), naturally “the
2007-1400, -1446 8
claims themselves provide substantial guidance as to the meaning of particular claim
terms.” Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc). But the
claims “must be read in view of the specification, of which they are a part.” Markman v.
Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S.
370 (1996). A patent’s specification provides necessary context for understanding the
claims, and “is always highly relevant to the claim construction analysis.” Phillips, 415
F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996)). While equally true in a general sense, sometimes the specification offers
practically incontrovertible directions about claim meaning. For example, inventors may
act as their own lexicographers and give a specialized definition of claim terms. See id.
at 1316. Likewise, inventors and applicants may intentionally disclaim, or disavow,
subject matter that would otherwise fall within the scope of the claim. See id.
When consulting the specification to clarify the meaning of claim terms, courts
must take care not to import limitations into the claims from the specification. This court
has recognized the “fine line between” the encouraged and the prohibited use of the
specification. Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir.
1998). When the specification describes a single embodiment to enable the invention,
this court will not limit broader claim language to that single application “unless the
patentee has demonstrated a clear intention to limit the claim scope using ‘words or
expressions of manifest exclusion or restriction.’” Liebel-Flarsheim Co. v. Medrad, Inc.,
358 F.3d 898, 906 (Fed. Cir. 2004) (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299
F.3d 1313, 1327 (Fed. Cir. 2002)). By the same token, the claims cannot “enlarge what
is patented beyond what the inventor has described as the invention.” Biogen, Inc. v.
2007-1400, -1446 9
Berlex Labs., Inc., 318 F.3d 1132, 1140 (Fed. Cir. 2003) (quoting Netword, LLC v.
Central Corp., 242 F.3d 1347, 1352 (Fed. Cir. 2001)). Thus this court may reach a
narrower construction, limited to the embodiment(s) disclosed in the specification, when
the claims themselves, the specification, or the prosecution history clearly indicate that
the invention encompasses no more than that confined structure or method. See
Liebel-Flarsheim, 358 F.3d at 908.
Along with the specification, the prosecution history is “intrinsic evidence” of the
meaning of the claims, because it “provides evidence of how the [United States Patent
& Trademark Office (PTO)] and the inventor understood the patent.” Phillips, 415 F.3d
at 1317. Although often producing ambiguities occasioned by ongoing negotiations
between the inventor and the PTO, “the prosecution history can often inform the
meaning of the claim language by demonstrating how the inventor understood the
invention and whether the inventor limited the invention in the course of prosecution,
making the claim scope narrower than it would otherwise be.” Id. “[C]lear and
unmistakable” statements during prosecution may also disavow claim scope. Computer
Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed. Cir. 2008) (quoting
Purdue Pharma L.P. v. Endo Pharms., Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006)).
Again owing in part to the inherent ambiguities of prosecution history, the doctrine of
prosecution disclaimer only applies to unambiguous disavowals. See id. at 1375.
1. “crystalline”
2007-1400, -1446 10
The Eastern District of Virginia’s construction of “crystalline” in claims 1-5 as
“Crystal A” included the important caveat “as outlined in the specification.” Lupin CC
Order, 484 F. Supp. 2d at 459. Although the Eastern District noted the parties agreed
that “crystalline” ordinarily means exhibiting “uniformly arranged molecules or atoms,”
id. at 454, the court relied on the language of the claims themselves, the specification,
and the prosecution history to arrive at the more specific meaning recited in the
specification.
The ’507 specification states that “Crystal A of the compound (I) [cefdinir] shows
its distinguishing peaks” at the seven particular PXRD angles enumerated in claim 1.
’507 patent col.1 ll.51-62. Indeed, the phrase “Crystal A of the compound (I)” appears
throughout the written description, and the patent offers the following definition: “any
crystal of the compound (I) which shows substantially the same diffraction pattern [as in
the table in col.1/claim 1] is identified as Crystal A of the compound (I).” Id. at col.1 l.67-
col.2 l.2. As the Eastern District correctly concluded:
Had Astellas intended, in the chart found in column 1, to distinguish
Crystal A from other forms of crystalline cefdinir that also fall within the
scope of claim 1, it would have listed, at a minimum, an eighth peak
associated only with Crystal A. However, by listing in column 1 only the
same seven ‘distinguishing’ peaks featured in Claim 1, Astellas confirmed
that Crystal A was synonymous with the invention listed in Claim 1.
Lupin CC Order, 484 F. Supp. 2d at 456-57. The problem, within the confines of claim
1, is that defining “crystalline” as “Crystal A,” where “Crystal A” incorporates the seven
PXRD peak limitations, arguably renders the remainder of that claim redundant. To
distinguish the invention, however, the specification refers several times to “Crystal A of
the compound (I) of the present invention,” see, e.g., ’507 patent, col.2 ll.15-17, and
offers no suggestion that the recited processes could produce non-Crystal A
2007-1400, -1446 11
compounds, even though other types of cefdinir crystals, namely Crystal B, were known
in the art. As noted earlier, the Crystal B formulation actually appears in the parent JP
’199 application. Thus, Abbott knew exactly how to describe and claim Crystal B
compounds. Knowing of Crystal B, however, Abbott chose to claim only the A form in
the ’507 patent. Thus, the trial court properly limited the term “crystalline” to “Crystal A.”
The trial court’s definition correctly identifies claim 1’s literal scope.
Unlike claim 1, claims 2-5 do not recite the seven PXRD peaks expressly
associated with Crystal A in the ’507 specification. Nonetheless, the Eastern District of
Virginia limited “crystalline” to “Crystal A” in these claims as well, The trial court gave
two reasons for this limitation. First, “[t]he process steps detailed in those claims
[claims 2-5] correspond with the processes for making Crystal A disclosed in the
specification under the heading ‘The Process For Preparing Crystal A of The Compound
(I).’” Id. at 457 (quoting ’507 patent, col.2 ll.13-14). Second, the parent JP ’199
application recited these steps “to distinguish between preparations of Crystal A and
Crystal B.” Id. (citing JP ’199 application, col.6 ll.1-25).
In limiting “crystalline” to “Crystal A” in claims 1-5, the Eastern District of Virginia
did not improperly import the preferred embodiment into the claims. Initially, Crystal A is
the only embodiment described in the specification. As discussed above, the
specification’s recitation of Crystal A as its sole embodiment does not alone justify the
trial court’s limitation of claim scope to that single disclosed embodiment. See Liebel-
Flarsheim, 358 F.3d at 906 (“[T]his court has expressly rejected the contention that if a
patent describes only a single embodiment, the claims of the patent must be construed
as being limited to that embodiment.”). In this case, however, the rest of the intrinsic
2007-1400, -1446 12
evidence, including the prosecution history and the priority JP ’199 application, evince a
clear intention to limit the ’507 patent to Crystal A as defined by the seven PXRD peaks
in the specification and in claim 1.
Initially, the Eastern District of Virginia properly considered the JP ’199
application as relevant objective evidence of the inventor’s knowledge at the filing of the
’507 patent. While statements made during prosecution of a foreign counterpart to a
U.S. patent application have a narrow application to U.S. claim construction, Pfizer Inc.
v. Ranbaxy Labs. Ltd., 457 F.3d 1284, 1290 (Fed. Cir. 2006), in this case the JP ’199
application is part of the prosecution history of the ’507 patent itself. Indeed the ’507
patent claims priority from the JP ’199 application. Furthermore, the trial court did not
rely on attorney argument or amendments during a foreign prosecution as in Pfizer, but
consulted only the contents of the foreign priority application. The JP ’199 application
strongly suggests that the ’507 patent intentionally excluded Crystal B compounds. As
discussed above, the JP ’199 application establishes unequivocally that Abbott knew
and could describe both Crystal A and Crystal B. Abbott could have retained the
disclosure of Crystal B to support the broader claims of the ’507 patent, but instead
disclosed and claimed A alone.
Furthermore, the prosecution history of the ’507 patent shows a clear and
intentional disavowal of claim scope beyond Crystal A. Co-inventor Takao Takaya, who
prepared samples according to Examples 14 and 16 of the prior art ’334 patent and a
sample of “Crystal A of the present application,” offered a declaration that Crystal A was
more stable than the prior art samples from the ’334 patent. An analytical chemist,
Yoshihiko Okamato, corroborated this evidence. J. A. 501-04. Beyond these
2007-1400, -1446 13
declarations, the applicant specifically limited the invention to Crystal A: “the method of
preparation of the crystalline form of the presently claimed compounds is not considered
the heart of the present invention. The crystalline form of the compound represents the
inventive concept hereof, and it is clear that [the ’334 patent] does not anticipate or
suggest said crystalline form.” J. A. 511 (Response to Office Action of May 11, 1989,
received October 27, 1989, at 6).
Given the exclusive focus on Crystal A in the specification as well as the
prosecution history of the ’507 patent, the Eastern District of Virginia properly limited
“crystalline” in claims 1-5 to “Crystal A.”
2. proper interpretation of product-by process claims 1
This court addresses Part III.A.2 of this opinion en banc, which addresses the
proper interpretation of product-by-process claims in determining infringement.
Claims 2-5 of the ’507 patent begin by reciting a product, crystalline cefdinir, and
then recite a series of steps by which this product is “obtainable.” The Eastern District
of Virginia correctly categorized claims 2-5 as product-by-process claims. On appeal,
Abbott argues that the Eastern District erred in construing the process steps of claims
2-5 under the rule in Atlantic Thermoplastics, 970 F.2d at 846-47, that “process terms in
product-by-process claims serve as limitations in determining infringement,” rather than
in accordance with Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d
1565, 1583 (Fed. Cir. 1991) (“[T]he correct reading of product-by-process claims is that
1
This court, sua sponte, took en banc Section III.A.2 before issuing a panel
opinion. The following judges join this section of the opinion: Chief Judge Michel and
Judges Rader, Bryson, Gajarsa, Linn, Dyk, Prost, and Moore. Judges Newman and
Lourie dissent in separate opinions. Judges Mayer and Lourie join in Judge Newman’s
dissent. Judge Schall did not participate as a member of the en banc court.
2007-1400, -1446 14
they are not limited to product prepared by the process set forth in the claims.”). This
court takes this opportunity to clarify en banc the scope of product-by-process claims by
adopting the rule in Atlantic Thermoplastics.
In Atlantic Thermoplastics, this court considered the scope of product-by-process
claim 26 in the patent at issue: “[t]he molded innersole produced by the method of
claim 1.” 970 F.2d at 836. The patentee urged that competing, indistinguishable
innersoles made by a different method nonetheless infringed claim 26. Id. at 838. This
court rejected the patentee’s position. This court in Atlantic Thermoplastics construed
product-by-process claims as limited by the process. Id. at 846-7.
This rule finds extensive support in Supreme Court opinions that have addressed
the proper reading of product-by-process claims. See Smith v. Goodyear Dental
Vulcanite Co., 93 U.S. 486, 493 (1877) (“The process detailed is thereby made as
much a part of the invention as are the materials of which the product is composed.”);
Goodyear Dental Vulcanite Co. v. Davis, 102 U.S. 222, 224 (1880) (“[T]o constitute
infringement of the patent, both the material of which the dental plate is made . . . and
the process of constructing the plate . . . must be employed.”); Merrill v. Yeomans, 94
U.S. 568 (1877); Cochrane v. Badische Anilin & Soda Fabrik, 111 U.S. 293 (1884)
(BASF); The Wood-Paper Patent, 90 U.S. 566, 596 (1874); Plummer v. Sargent, 120
U.S. 442 (1887); Gen. Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364 (1938); see
also Atl. Thermoplastics, 970 F.2d at 839-42 (discussing each of these cases). In
these cases, the Supreme Court consistently noted that process terms that define the
product in a product-by-process claim serve as enforceable limitations. In addition, the
binding case law of this court’s predecessor courts, the United States Court of Customs
2007-1400, -1446 15
and Patent Appeals (see In re Hughes, 496 F.2d 1216, 1219 (CCPA 1974)
(acknowledging that “true product claims” are “broader” in scope than product-by-
process claims)), and the United States Court of Claims (see Tri-Wall Containers v.
United States, 408 F.2d 748, 751 (Ct. Cl. 1969)), followed the same rule.
This court’s sister circuits also followed the general rule that the defining process
terms limit product-by-process claims. See, e.g., Hide-Ite Leather v. Fiber Prods., 226
F. 34, 36 (1st Cir. 1915) (“It is also a well-recognized rule that, although a product has
definite characteristics by which it may be identified apart from the process, still, if in a
claim for the product it is not so described, but is set forth in the terms of the process,
nothing can be held to infringe the claim which is not made by the process.”); Paeco,
Inc. v. Applied Moldings, Inc., 562 F.2d 870, 876 (3d Cir. 1977) (“A patent granted on a
product claim describing one process grants no monopoly as to identical products
manufactured by a different process.”). Indeed, this court itself had articulated that
rule: “For this reason, even though product-by-process claims are limited by and
defined by the process, determination of patentability is based on the product itself.” In
re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (emphasis added).
The Supreme Court has long emphasized the limiting requirement of process
steps in product-by-process claims. In BASF, the Court considered a patent relating to
artificial alizarine. Specifically, the patent claimed “[a]rtificial alizarine, produced from
anthracine or its derivatives by either of the methods herein described, or by any other
method which will produce a like result.” 111 U.S. at 296 (quoting U.S. Patent Reissue
No. RE 4,321). In turn, the specification generally described a method for making
artificial alizarine involving anthracine or its derivatives. Alizarine had been in use for
2007-1400, -1446 16
thousands of years as a red textile dye, traditionally extracted from madder root. Pure
alizarine has the chemical formula C14H8O4, but “artificial alizarines” available in the
market at the time of the litigation varied from almost completely pure alizarine, to
combinations of alizarine and anthrapurpurine, to pure purpurine containing no alizarine
whatsoever. Id. at 309-10. The defendant’s product contained approximately sixty
percent anthrapurpurine. Thus both alizarine and artificial alizarines were known in the
prior art. The Supreme Court clearly articulated some of the scope and validity
problems that arise when process limitations of product-by-process claims are ignored:
[The defendant’s product] is claimed by the plaintiff to be the artificial
alizarine described in No. 4,321, and to be physically, chemically, and in
coloring properties similar to that. But what that is is not defined in No.
4,321, except that it is the product of the process described in No. 4,321.
Therefore, unless it is shown that the process of No. 4,321 was followed to
produce the defendant’s article, or unless it is shown that that article could
not be produced by any other process, the defendant’s article cannot be
identified as the product of the process of No. 4,321. Nothing of the kind
is shown.
* * *
If the words of the claim are to be construed to cover all artificial alizarine,
whatever its ingredients, produced from anthracine or its derivatives by
methods invented since Graebe and Liebermann invented the bromine
process, we then have a patent for a product or composition of matter
which gives no information as to how it is to be identified. Every patent for
a product or composition of matter must identify it so that it can be
recognized aside from the description of the process for making it, or else
nothing can be held to infringe the patent which is not made by that
process.
Id. at 310 (emphasis added).
After BASF, the Supreme Court continued to emphasize the importance of
process steps in evaluating the infringement of product-by-process claims. See, e.g.,
Plummer, 120 U.S. at 448 (“[W]hatever likeness that may appear between the product
of the process described in the patent and the article made by the defendants, their
2007-1400, -1446 17
identity is not established unless it is shown that they are made by the same process.”);
Gen. Elec. Co., 304 U.S. at 373 (“[A] patentee who does not distinguish his product
from what is old except by reference, express or constructive, to the process by which
he produced it, cannot secure a monopoly on the product by whatever means
produced.” (footnote omitted)).
Thus, based on Supreme Court precedent and the treatment of product-by-
process claims throughout the years by the PTO and other binding court decisions, this
court now restates that “process terms in product-by-process claims serve as limitations
in determining infringement.” Atl. Thermoplastics, 970 F.2d at 846-47. As noted earlier,
this holding follows this court’s clear statement in In re Thorpe that “product by process
claims are limited by and defined by the process.” 777 F.2d at 697.
More recently, the Supreme Court has reiterated the broad principle that “[e]ach
element contained in a patent claim is deemed material to defining the scope of the
patented invention.” Warner-Jenkinson, 520 U.S. at 19. Although Warner-Jenkinson
specifically addressed the doctrine of equivalents, this rule applies to claim construction
overall. As applied to product-by-process claims, Warner-Jenkinson thus reinforces the
basic rule that the process terms limit product-by-process claims. To the extent that
Scripps Clinic is inconsistent with this rule, this court hereby expressly overrules Scripps
Clinic.
The dissenting opinions lament the loss of a “right” that has never existed in
practice or precedent – the right to assert a product-by-process claim against a
defendant who does not practice the express limitations of the claim. This court’s en
banc decision in no way abridges an inventor’s right to stake claims in product-by-
2007-1400, -1446 18
process terms. Instead this decision merely restates the rule that the defining
limitations of a claim – in this case process terms – are also the terms that show
infringement.
Thus this court does not question at all whether product-by-process claims are
legitimate as a matter of form. The legitimacy of this claim form was indeed a relevant
issue in the nineteenth century when Ex parte Painter, 1891 C.D. 200, 200-01 (Comm’r
Pat. 1891), and some later cases were before the Commissioner of Patents. However,
this court need not address that settled issue. The issue here is only whether such a
claim is infringed by products made by processes other than the one claimed. This court
holds that it is not.
The jurisprudence of the Court of Customs and Patent Appeals – a court with
virtually no jurisdiction to address infringement litigation – can shed little light on the
enforcement of the only claim limitations that an applicant chooses to define the
invention. Indeed, this court’s venerable predecessor expressed its ambivalence
towards the relevant infringement analysis:
The policy of the Patent Office in permitting product-by-process type
claims to define a patentable product, where necessary, has developed
with full cognizance of the fact that in infringement suits some courts have
construed such claims as covering only a product made by the particular
process set forth in the claim and not to the product per se.
In re Bridgeford, 357 F.2d 679, 683 n.5 (CCPA 1966). The reference to “some courts”
in this prior citation, as this court notes en banc, includes the United States Supreme
Court and every circuit court to consider the question, including this circuit. See also
Jon S. Saxe & Julian S. Levitt, Product-by-Process Claims and Their Current Status in
Chemical Patent Office Practice, 42 J. Pat. Off. Soc’y 528, 530 (1960) (“[P]roduct-by-
2007-1400, -1446 19
process claims have met with a most strict interpretation in the courts in infringement
proceedings . . . . [T]he courts uniformly hold that only a product produced by the claim-
designated process may be held to infringe the claim.”) (citing Gen. Elec. Co., 304 U.S.
364 and BASF, 111 U.S. at 310).
Product-by-process claims, especially for those rare situations when products
were difficult or impossible to describe, historically presented a concern that the Patent
Office might deny all product protection to such claims. See In re Butler, 17 C.C.P.A.
810, 813 (CCPA 1930) (“Process claims are valuable, and appellant thinks he is entitled
to them; but it is submitted that he should not be limited to control of the process when
the article which that process produces is new and useful.”). In the modern context,
however, if an inventor invents a product whose structure is either not fully known or too
complex to analyze (the subject of this case – a product defined by sophisticated PXRD
technology – suggests that these concerns may no longer in reality exist), this court
clarifies that the inventor is absolutely free to use process steps to define this product.
The patent will issue subject to the ordinary requirements of patentability. The inventor
will not be denied protection. Because the inventor chose to claim the product in terms
of its process, however, that definition also governs the enforcement of the bounds of
the patent right. This court cannot simply ignore as verbiage the only definition supplied
by the inventor.
This court’s rule regarding the proper treatment of product-by-process claims in
infringement litigation carries its own simple logic. Assume a hypothetical chemical
compound defined by process terms. The inventor declines to state any structures or
characteristics of this compound. The inventor of this compound obtains a product-by-
2007-1400, -1446 20
process claim: “Compound X, obtained by process Y.” Enforcing this claim without
reference to its defining terms would mean that an alleged infringer who produces
compound X by process Z is still liable for infringement. But how would the courts
ascertain that the alleged infringer’s compound is really the same as the patented
compound? After all, the patent holder has just informed the public and claimed the
new product solely in terms of a single process. Furthermore, what analytical tools can
confirm that the alleged infringer’s compound is in fact infringing, other than a
comparison of the claimed and accused infringing processes? If the basis of
infringement is not the similarity of process, it can only be similarity of structure or
characteristics, which the inventor has not disclosed. Why also would the courts deny
others the right to freely practice process Z that may produce a better product in a better
way?
In sum, it is both unnecessary and logically unsound to create a rule that the
process limitations of a product-by-process claim should not be enforced in some
exceptional instance when the structure of the claimed product is unknown and the
product can be defined only by reference to a process by which it can be made. Such a
rule would expand the protection of the patent beyond the subject matter that the
inventor has “particularly point[ed] out and distinctly claim[ed]” as his invention, 35
U.S.C. § 112 ¶ 6.
Thus, the Eastern District of Virginia correctly applied the rule that the recited
process steps limit the product-by-process claims 2-5 for any infringement analysis.
3. “obtainable by”
2007-1400, -1446 21
In this case, Abbott’s plain language argument, that “obtainable by” introduces an
optional process, even if “obtained by” would introduce limiting process steps, is also
unavailing. The BASF case, an analogous situation to this case, controls. As noted
above, the Supreme Court in BASF considered the following claim language: “Artificial
alizarine, produced from anthracine or its derivatives by either of the methods herein
described, or by any other method which will produce a like result.” 111 U.S. at 296
(emphasis added). The patentee argued that even though the defendant did not make
artificial alizarine by “either of the methods herein described,” the claim should capture
the product because of the “or by another method” language. Id. at 309. The Supreme
Court refused to attach importance to those expansive words: “No. 4,321 furnishes no
test by which to identify the product it covers, except that such product is to be the result
of the process it describes.” Id. at 305. Abbott’s claims 2-5, like those in BASF and like
product-by-process claims in general, do not furnish any test by which to identify the
cefdinir crystals except that they are the result of their respectively claimed processes.
As per BASF, Abbott’s claim cannot capture a product obtained by or obtainable by
processes other than those explicitly recited in the claims.
If this court were to strip the process elements from the claims, as Abbott would
urge, for infringement purposes, there would then be nothing to differentiate
independent claim 2 from independent claim 5. After all, if those claims are not bound
by the process terms but only “define” the basic cefdinir compound, then each of the
claims recite the same thing, over and over again. Though Abbott argues that it merely
intends to give meaning to the word “obtainable,” it instead seeks to have this court
2007-1400, -1446 22
render meaningless the explicit process limitations that the applicant chose to define its
invention.
The intrinsic evidence in this case further rebuts Abbott’s contention that its
claims are not limited to those products actually obtained by the processes recited. In
column 2 of the ’507 patent, under the title heading “The Process for Preparing Crystal
A of the Compound (I),” the patentee used specific language to describe the very two
processes that are mirrored in claims 2 and 5. ’507 patent col.2 ll.13-51. This language
is not open-ended, nor does it constitute a mere description of the product by reference
to the manner in which it can be made, as Abbott argues. By drafting claims 2 and 5 to
incorporate these specific processes, Abbott made a conscious choice to place process
requirements on its claimed product. If Abbott had wanted to obtain broader coverage
for crystalline cefdinir devoid of any process limitations, as it seeks to do here, it could
have simply done so (if indeed, as it argues, it is really the product that is the heart of
the invention, not the process). But it did not. The crystals of claims 2 and 5 are simply
not identifiable other than by the processes disclosed in column 2. This court must
enforce the ways and terms that a party chooses to define its invention.
The prosecution history also does not support Abbott’s contention that
“obtainable by” offers merely an optional set of definitional process conditions. During
prosecution, Abbott faced obviousness rejections based on application claims 6-9,
which were process claims that mirrored the very process limitations of issued claims 2-
5. The PTO refused to issue the claims until one set of duplicates was cancelled.
Abbott’s action in cancelling claims 6-9 demonstrates its acquiescence to the PTO’s
view that the process elements of claims 2-5 are critical parts of those claims. In
2007-1400, -1446 23
addition, in a response to the PTO’s office action, Abbott chose to differentiate a cited
§ 103 reference, Takaya, on the basis that Abbott’s claimed processes are different.
For these reasons, the applicant’s statement in the file wrapper that “the method of
preparation . . . is not considered the heart of the present invention” should not be
afforded undue gravitas. The process limitations cannot be haphazardly jettisoned for
an infringement analysis when they were so important in the patentability analysis.
In sum, a patentee’s use of the word “obtainable” rather than “obtained by”
cannot give it a free pass to escape the ambit of the product-by-process claiming
doctrine. Claims that include such ambiguous language should be viewed extremely
narrowly. If this court does not require, as a precondition for infringement, that an
accused infringer actually use a recited process, simply because of the patentee’s
choice of the probabilistic suffix “able,” the very recitation of that process becomes
redundant. This would widen the scope of the patentee’s claims beyond that which is
actually invented—a windfall to the inventor at the expense of future innovation and
proper notice to the public of the scope of the claimed invention. For all the above
reasons, the Eastern District of Virginia correctly construed the process limitations
beginning with “obtainable by” in claims 2-5 as limiting the asserted claims to products
made by those process steps.
B. Summary Judgment
In the Lupin case, the Eastern District of Virginia granted summary judgment of
noninfringement of claims 2-5, both literal and by equivalents, and of claim 1 by
equivalents. Lupin SJ Order. Literal infringement of claim 1, i.e., whether Lupin’s
generic cefdinir product contains any Crystal A, is therefore not a live issue on appeal.
2007-1400, -1446 24
As for claims 2-5, the Eastern District noted that “Abbott and Astellas have conceded
that literal infringement of Claims 2-5 cannot be established if the product-by-process
analysis is performed pursuant to Atlantic Thermoplastics,” given that “Abbott and
Astellas have presented no evidence that Lupin is practicing the process steps set forth
in Claims 2-5.” Lupin SJ Order, 491 F. Supp. 2d at 568. Because the Eastern District
correctly applied the rule from Atlantic Thermoplastics and likewise properly construed
the limiting process terms in claims 2-5, only infringement by equivalents of claims 1-5
remains before this court.
Infringement analysis under the doctrine of equivalents proceeds element-by-
element; a generalized showing of equivalency between the claim as a whole and the
allegedly infringing product or process is not sufficient to show infringement. See
Warner-Jenkinson, 520 U.S. at 29 (“the doctrine of equivalents must be applied to
individual elements of the claim, not to the invention as a whole”). The primary test for
equivalency is the “function-way-result” or “triple identity” test, whereby the patentee
may show an equivalent when the accused product or process performs substantially
the same function, in substantially the same way, to achieve substantially the same
result, as disclosed in the claim. Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339
U.S. 605, 608 (1950). But, because “[d]ifferent linguistic frameworks may be more
suitable to different cases,” Warner-Jenkinson, 520 U.S. at 40, the function-way-result
test is not the only test for equivalency. Equivalency may also be proven where the
differences between the invention as claimed and the accused product or process are
insubstantial. Hilton Davis Chem. Co. v. Warner-Jenkinson Co., 62 F.3d 1512, 1517-18
(Fed. Cir. 1995) (en banc), rev’d on other grounds, 520 U.S. 17 (1997). In no case,
2007-1400, -1446 25
however, may the doctrine of equivalents ignore the individual claim elements. See
Warner-Jenkinson, 520 U.S. at 40 (requiring “a special vigilance against allowing the
concept of equivalence to eliminate completely any such [individual] elements”).
Because “crystalline” in claims 1-5 is limited to “Crystal A” as defined by the
seven PXRD peaks enumerated in claim 1 and in the specification of the ’507 patent,
the doctrine of equivalents cannot capture crystals that are not themselves equivalent to
Crystal A. In turn, the bounds of Crystal A equivalents cannot ignore the limits on
Crystal A in the ’507 patent, which as discussed above, includes a conscious decision
to distinguish Crystal B from the claimed invention. To recall, the applicant removed
Crystal B from the US prosecution of the parent JP ’199 application. The ’507 patent
indisputably describes and claims Crystal A, and not Crystal B. The ’507 patent, of
course, could have claimed the known Crystal B formulation which was known to the
inventors because it appeared in their priority JP ’199 application. The applicants chose
not to claim Crystal B. Thus Crystal B compounds, most relevantly cefdinir
monohydrate, fall outside the scope, literal or equivalent, of claims 1-5 of the ’507
patent.
The parties agree that the “bulk” of Lupin’s cefdinir product is Crystal B, not
Crystal A. The degree to which Lupin’s product may or may not also contain Crystal A
is the central inquiry regarding the alleged literal infringement of claim 1, which is not
part of the present appeal. Abbott cannot extend its exclusive right in the ’507 claims
under the doctrine of equivalents to embrace known but unclaimed subject matter. In
other words, Abbott effectively disclaimed Crystal B during prosecution of the ’507
patent, by removing the Crystal B disclosure from the parent JP ’199 application and
2007-1400, -1446 26
emphasizing the sole teaching of Crystal A in communications with the PTO as well as
in the ’507 specification itself. Abbott cannot now recapture that unclaimed subject
matter under the doctrine of equivalents because the Eastern District properly
interpreted claims 2-5 to limit “crystalline” to Crystal A. To expand that claim term to
embrace Crystal B would ignore the specific claim limitations of the ’507 patent.
Alternatively this court notes that this case seems to fit within the dedication
doctrine that forecloses invocation of the doctrine of equivalents. The patent applicant
clearly knew of the Crystal B forms of the claimed invention because it claimed and
disclosed them in its Japanese priority application. Yet it declined to claim an
embodiment expressly disclosed in its priority document, thus dedicating that
embodiment to the public and foreclosing any recapture under the doctrine of
equivalents. See Johnson & Johnston Assocs. v. R.E. Serv. Co., 285 F.3d 1046, 1054
(Fed. Cir. 2002).
During prosecution, Abbott chose to eschew Crystal B and focus exclusively on
Crystal A compounds. Without a complete record and no arguments about validity
before this court on appeal, this court cannot speculate on the reasons for this choice.
Nonetheless, the parties hotly contest whether Example 14, which reports obtaining
“crystals” not specifically identified or described, and/or Example 16 of the ’334 patent
enable cefdinir monohydrate, i.e. Crystal B type crystals.
Beyond the attempt to reinflate the claims to encompass Crystal B based on
mathematical comparisons of the PXRD peak patterns of Crystal A and Crystal B,
Abbott also asserts that Lupin effectively admitted infringement by equivalents when it
claimed before the Food and Drug Administration that its cefdinir generic was a
2007-1400, -1446 27
bioequivalent to Abbott’s Omnicef product. While bioequivalency may be relevant to the
function prong of the function-way-result test, bioequivalency and equivalent
infringement are different inquiries. Bioequivalency is a regulatory and medical concern
aimed at establishing that two compounds are effectively the same for pharmaceutical
purposes. In contrast, equivalency for purposes of patent infringement requires an
element-by-element comparison of the patent claim and the accused product, requiring
not only equivalent function but also equivalent way and result. Different attributes of a
given product may thus be relevant to bioequivalency but not equivalent infringement,
and vice versa. As the Northern District of Illinois observed in the Sandoz case, “[i]f
bioequivalency meant per se infringement, no alternative to a patented medicine could
ever be offered to the public during the life of a patent.” Sandoz PI Order, 486 F. Supp.
2d at 776. Thus, while potentially relevant, the bioequivalency of an accused product
with a product produced from the patent at issue is not sufficient to establish
infringement by equivalents.
Because Crystal B is not an equivalent of Crystal A, the Eastern District of
Virginia did not err in granting summary judgment of noninfringement of claims 2-5, both
with respect to literal and equivalent infringement, and with respect to equivalent
infringement of claim 1.
IV.
This court reviews the grant or denial of a preliminary injunction for abuse of
discretion. Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1350 (Fed.
Cir. 2001). A district court may enter a preliminary injunction based on its consideration
of four factors: “(1) the likelihood of the patentee’s success on the merits; (2) irreparable
2007-1400, -1446 28
harm if the injunction is not granted; (3) the balance of hardships between the parties;
and (4) the public interest.” Erico Int’l Corp. v. Vutec Corp., 516 F.3d 1350, 1353-54
(Fed. Cir. 2008) (quoting PHG Techs., LLC v. St. John Cos., Inc., 469 F.3d 1361, 1365
(Fed. Cir. 2006).
Sandoz and Teva’s Omnicef generic products, like Lupin’s, are also at least
primarily cefdinir monohydrate, a Crystal B compound. Sandoz PI Order, 486 F. Supp.
2d at 769. Before the Northern District of Illinois, the parties to the Sandoz litigation
disputed whether Sandoz and Teva’s products also contained small amounts of cefdinir
anhydrate, i.e., Crystal A, which would fall within the literal scope of claim 1 of the ’507
patent. Working primarily from the Eastern District of Virginia’s claim construction, to
which the parties to the Sandoz litigation agreed would bind their litigation as well for
purposes of the preliminary injunction motion, the Northern District of Illinois denied
Abbott’s motion for a preliminary injunction, finding that Abbott was unlikely to prevail on
the merits at trial.
This court detects no abuse of discretion in the Northern District of Illinois’
preliminary injunction denial. As described above, the ’507 patent is properly construed
to exclude Crystal B, both as to literal and equivalent infringement. Thus, this court
need not delve into the Northern District of Illinois’ clarifications of the Eastern District of
Virginia’s claim constructions. The Northern District of Illinois succinctly concluded:
“[w]e know that Crystal B was known to the plaintiffs because it had been included in
the Japanese ‘199 patent. Thus we conclude that the plaintiffs deliberately excluded
from the definition of Crystal A, cefdinir monohydrate, which is Crystal B.” Id. at 775.
2007-1400, -1446 29
As to the alleged presence of small amounts of Crystal A in Sandoz and Teva’s
products, Abbott’s evidence did not persuade the Northern District of Illinois. Id. This
court perceives that decision as well within the trial court’s discretion. As additional
support, the Northern District observed that there was no evidence that any trace
amounts of cefdinir anhydrate, i.e. Crystal A, in Sandoz and Teva’s products “could be a
contributing factor in the efficacy” and that even “if there is a small amount of cefdinir
anhydrate in defendants’ products, we do not conclude that this could cause literal
infringement.” Id. While these may be misstatements of the law, because de minimis
infringement can still be infringement, see 35 U.S.C. § 271(a); see also SunTiger, Inc.
v. Sci. Res. Funding Group, 189 F.3d 1327, 1336 (Fed. Cir. 1999) (“If a claim reads
merely on a part of an accused device, that is enough for infringement.”), this court
need not reach that issue in a preliminary injunction context which affords the trial court
broad leeway to discern a “likelihood of success.” Likewise the district court may have
overstated the relevance of efficacy, because the ’507 patent contains no claim
limitations relating to efficacy. But these misstatements were harmless because they
merely formed an alternative basis for the Northern District of Illinois’ reasonable
assessment of the evidence proffered by Abbott for its preliminary injunction motion. As
noted, this court sustains the trial court’s discretion based primarily on its administration
of the proper claim construction and its finding that Abbott was not likely to show
Sandoz and Teva’s products contained any Crystal A at all.
CONCLUSION
The Eastern District of Virginia correctly construed the ’507 patent’s recitation of
“crystalline” in each of the asserted claims as limited to Crystal A, as outlined in the
2007-1400, -1446 30
specification. Because Abbott scrubbed all references to Crystal B in the ’507 patent’s
specification, which were present in the ’507 patent’s parent foreign application, Abbott
clearly demonstrated its intent to limit the ’507 patent to Crystal A. This intent was
further underscored by comments made during prosecution. As such, Abbott is unable
to recapture Crystal B through broad claim language or under the doctrine of
equivalents. The Eastern District of Virginia therefore properly concluded on summary
judgment that Lupin’s cefdinir product did not infringe claims 1-5 literally or claims 2-5
by equivalency. Similarly, the Northern District of Illinois did not abuse its discretion in
declining to enter a preliminary injunction against Sandoz and Teva’s cefdinir products.
AFFIRMED
COSTS
Each party shall bear its own costs.
2007-1400, -1446 31
United States Court of Appeals for the Federal Circuit
2007-1400
ABBOTT LABORATORIES,
Plaintiff-Appellant,
and
ASTELLAS PHARMA, INC.,
Plaintiff-Appellant,
v.
SANDOZ, INC.,
Defendant-Appellee,
and
SANDOZ GMBH,
Defendant,
and
TEVA PHARMACEUTICALS USA, INC. and
TEVA PHARMACEUTICAL INDUSTRIES, LTD.,
Defendants-Appellees,
and
RANBAXY LABORATORIES, LTD. and RANBAXY, INC.,
Defendants,
and
PAR PHARMACEUTICAL COMPANIES, INC. and PAR PHARMACEUTICAL,
Defendants.
-----------------------------------------------
2007-1446
LUPIN LIMITED,
Plaintiff/Counterclaim Defendant-
Appellee,
and
LUPIN PHARMACEUTICALS, INC.,
Counterclaim Defendant-
Appellee,
v.
ABBOTT LABORATORIES,
Defendant/Counterclaimant-
Appellant,
and
ASTELLAS PHARMA, INC.,
Defendant/Counterclaimant-
Appellant.
Appeals from the United States District Court for the Northern District of Illinois in case
no. 07-CV-1721, Judge Wayne R. Andersen and the United States District Court for the
Eastern District of Virginia in case no 3:06-CV-400, Judge Robert E. Payne.
NEWMAN, Circuit Judge, with whom Circuit Judges MAYER and LOURIE join,
dissenting from en banc Section III.A.2.
The court today acts en banc to overturn a century of precedent and practice,
and holds that a new product that is difficult to describe without reference to how it was
made, but that is nonetheless a new and unobvious product, cannot be protected as a
product if its description is aided by reference to how it was made. Heretofore a new
product whose structure was not fully known or not readily described could be patented
2007-1400, -1446 2
as a product by including in the product description sufficient reference to how it can be
made, to distinguish the new product from prior art products. Patentability was
determined as a product, independent of any process reference in the claim, and
validity and infringement were based on the product itself. This expedient for patenting
products whose structure was not fully known at the time of filing the patent application
has been called the “rule of necessity.” It was pragmatic, fair, and just, for it attuned
patent law and practice to the realities of invention.
Today the court rejects this expedient and discards this practice, ruling that all
claims containing a process term under the rule of necessity now must be construed, for
purposes of infringement, as limited to use of any process term that was used to assist
in defining the product. That is, such a product is not patented as a product, however it
is produced, but is limited to the process by which it was obtained. This is a new
restraint on patents for new products, particularly today’s complex chemical and
biological products whose structure may be difficult to analyze with precision. It is a
change of law with unknown consequences for patent-based innovation.
The court acts sua sponte, without explanation of what policy is intended to be
served by this change, without consideration of the technologies that may be adversely
affected by elimination of this expedient, without notice to those whose property rights
may be diminished. In so doing, the court departs from statute, precedent, and practice.
This change is as unnecessary as it is flawed, gratuitously affecting inventions past,
present, and future. I respectfully dissent.
2007-1400, -1446 3
DISCUSSION
For most product inventions, the process by which the product was made,
whether or not the process is itself a patentable invention, is not stated in the product
claims. However, as the variety and complexity of invention and technology have
increased, various forms of product claims with process terms have been used in
specific circumstances, depending on the nature of the invention. 1 The form here at
issue relates to product claims for new and unobvious products whose structure is not
fully known, and for which process parameters are used to aid in defining the product.
This claiming expedient has been recognized since at least 1891.
The court today overturns this expedient for all circumstances, brooking no
exception. Acting en banc for the purpose, the court rules that if any process term or
descriptive aspect is included in a product claim to aid in distinguishing a new product,
the claim cannot be infringed by the identical product unless the same process aspect is
used in making the accused product. The court holds that it is irrelevant whether the
product is new or was known, irrelevant whether the product could have been fully
described by its structure at the time of the patent application, irrelevant whether the
particular invention is a new product or is actually a process. The court adopts a
simplistic universal rule, thereby targeting a small but significant class of inventions.
The effect of this decision on innovation in complex fields of science and technology is
unknown to the court, for we have had no advice on the consequences of this change of
1
As discussed by Eric P. Mirabel, Product-By-Process Claims: A Practical
Perspective, 68 J. Pat. & Trademark Off. Soc’y 3, 3-4 (1986), the various forms of
product-by-process claims include “true” product-by-process claims, product claims with
a process limitation, product claims with a process-derived structural element, and
product claims with functional terms.
2007-1400, -1446 4
law. My dissent is directed as much to the court’s procedure, as to the substance of the
court’s decision.
I
PROCEDURE
The court has given no notice of this impending en banc action, contrary to the
Federal Rules of Appellate Procedure and contrary to the Federal Circuit’s own
operating procedures. The en banc court has received no briefing and held no
argument, although the Federal Rules so require. The communities of inventors,
innovators, and the public who may be affected by this change of law have had no
opportunity to be heard. The court has received no information concerning the effect on
patents that were granted based on this long-established practice, no advice on what
kinds of inventions may now lie fallow because they are unprotected. Nor does the
court explain its suspension of the standards of judicial process.
The Federal Rules have the force of law. 28 U.S.C. §2072. Federal Rules of
Appellate Procedure 34 and 35 are here implicated. Rule 34 provides that “oral
argument must be allowed in every case” unless certain specific exceptions exist:
Rule 34(a)(2) Standards. Oral argument must be allowed in every case
unless a panel of three judges who have examined the briefs and record
unanimously agrees that oral argument is unnecessary for any of the
following reasons:
(A) the appeal is frivolous;
(B) the dispositive issue or issues have been authoritatively
decided; or
(C) the facts and legal arguments are adequately presented in
the briefs and record, and the decisional process would not be
significantly aided by oral argument.
Applying the Rule 34 standards, it is clear that (A) this appeal is not frivolous and (B) the
dispositive issue has not been authoritatively decided, for it is currently being addressed
2007-1400, -1446 5
en banc. There has been (C) no briefing and no record to the court, and this is not a
case in which the decisional process would not be aided by oral argument. The en
banc court has heard no argument, and has received neither written nor oral exploration
of the diverse aspects of this long-established claiming practice.
Federal Rule of Appellate Procedure 35 has also failed of compliance. That rule
recognizes the exceptional nature of en banc hearing or rehearing, and identifies the
two circumstances warranting such procedure:
Rule 35(a) . . . An en banc hearing or rehearing is not favored and
ordinarily will not be ordered unless:
(1) en banc consideration is necessary to secure or maintain
uniformity of the court’s decisions; or
(2) the proceeding involves a question of exceptional importance.
When an en banc hearing or rehearing is ordered sua sponte by the court, whether for
uniformity of decision or on a question of exceptional importance, the hearing or
rehearing must receive the appellate process set by the Rules.
I agree that en banc review is appropriate, for this apparent conflict in our
precedent has existed since 1992. Now that the court has undertaken to resolve the
conflict, the withholding of public notice, or even notice to the parties to this case, is
devoid of justification. The question is of importance, but there has been no assertion of
urgency sufficient to require bypassing the standard appellate procedures. The breadth
of the en banc court’s ruling, the solidity of the precedent now overruled, the importance
of the technologies affected, and the untold issued patents that are now placed in limbo,
require this court’s compliance with Federal Rules 34 and 35.
The Federal Circuit has recognized that it can benefit from the advice of those
knowledgeable in the law and its purposes, in the areas of our nation-wide
2007-1400, -1446 6
responsibility. Patent law has a direct impact on innovation, industry, and technological
advance, and when an en banc ruling may change the law affecting some areas of
technology and the industries based thereon, this court has routinely sought to be
informed, by the parties and amici curiae, of relevant concerns. When the impact of a
sua sponte change of law transcends the interests of the parties to the specific case,
notice to the interested public, as well as to the parties, is fundamental to due and fair
process. The Federal Circuit’s Internal Operating Procedure (IOP) 14 was adopted to
implement these principles:
IOP 14.3(c) If the sua sponte petition for hearing en banc is granted, a
committee of judges appointed by the chief judge, which shall normally
include the judge who initiated the poll, shall within seven working days
(fourteen working days between June 21 and September 11) transmit on a
vote sheet to the judges who will sit en banc an order setting forth the
questions proposed to be addressed by the court en banc. The clerk shall
provide notice that a majority of the judges in regular service has acted
under 28 U.S.C. §46 and Fed. R. App. P. 35(a) to order the appeal to be
heard en banc, and indicate any questions the court may wish the parties
and amici to address. Notice shall be given that the court en banc shall
consist of all circuit judges in regular service who are not recused or
disqualified. Additional briefing and oral argument will be ordered as
appropriate.
United States Court of Appeals for the Federal Circuit, Internal Operating Procedures at
40, available at http://www.cafc.uscourts.gov/pdf/IOPs122006.pdf. This IOP has not
been followed. No notice was given, even to the parties, that the court had ordered this
question to be reheard en banc; nor did the court advise the parties or the public as to
the aspects being addressed for en banc decision. The court is acting sua sponte,
without notice and without argument and without an opportunity for participation. By
bypassing this court’s standard operating procedure, as well as violating the Federal
Rules of Appellate Procedure, the court has deprived itself of input concerning the
2007-1400, -1446 7
experience of precedent, of advice as to how this change of law may affect future
innovation, and of guidance as to the effect on existing property rights.
II
PRECEDENT AND PRACTICE
The court’s opinion does not mention the long-established precedent that it is
overturning. This is not a simple conflict between isolated rulings of the Federal Circuit;
it is a change of law and practice with roots in century-old decisions. I start with this
precedent, for the expedient of what came to be called the “rule of necessity” originated
in the recognition, by the courts and the Patent Office, that not all new products could
be fully described by their structure, due to the state of scientific knowledge or available
analytical techniques. It was also recognized, over a century ago, that sufficient
distinction from prior art products could sometimes be achieved by reference to how the
product was made. Thus the courts and patent administrators established the
exception that permitted inclusion in a product claim of sufficient recitation of how the
product was made, to aid in identifying the product and distinguishing it from the prior
art. This claim form was loosely called a “product-by-process” form, although that term
includes a variety of situations, see n.1 supra, having diverse legal consequences. The
only form here at issue is that in which the product is new and its structure is not fully or
readily known, such that its definition as a product is aided by referring to how it was
made. Since before 1891, this has been an accepted way to claim products as
products, recognizing that this is an exception to the general rule that new products are
claimed without reference to the process by which they are produced.
2007-1400, -1446 8
This exception was discussed in 1891 in Ex parte Painter, the Commissioner of
Patents explaining that when there is entitlement to a patent on a new article of
manufacture, it can be claimed by reference to the process of producing it, when the
inventor lacks other language to “define and discriminate” the invention:
It requires no argument to establish the proposition that as a rule a claim
for an article of manufacture should not be defined by the process of
producing that article. On the other hand, when a man has made an
invention his right to a patent for it, or his right to a claim properly defining
it, is not to be determined by the limitations of the English language.
When the case arises that an article of manufacture is a new thing, a
useful thing, and embodies invention, and that article cannot be properly
defined and discriminated from prior art otherwise than by reference to the
process of producing it, a case is presented which constitutes an
exception to the rule.
1891 C.D. 200, 200-01 (Comm’r Pat. 1891). The Commissioner cited, as an earlier
example of this exception, the claim in Globe Nail Co. v. U.S. Horse Nail Co., 19 F. 819
(C.C.D. Mass. 1884) (sustaining validity of claim directed to horse-shoe nail claimed by
reference to its process of manufacture, and finding it infringed by the accused nail
having only a “trivial and unsubstantial variation” from the claimed product). In contrast,
where the patent application made clear that the product could be described by its
structure, the Patent Office ruled that the exception did not apply. See, e.g., Ex parte
Scheckner, 1903 C.D. 315, 315-16 (Comm’r Pat. 1903) (sustaining rejection of claim
directed to an etched printing-plate that “specifies certain steps by means of which the
etching is accomplished” because other claims “define the plate in terms of its
structure”).
This expedient has been discussed in various judicial decisions. In all cases the
issue has not been whether this expedient was available, for its availability was not
challenged; the issue was simply its application to the particular facts. For example, at
2007-1400, -1446 9
a time when it heard direct appeals from Patent Office rulings, the D.C. Circuit remarked
on this “only exception” to the general rule of product claiming, stating:
It is a well-settled rule of patent law that claims for a product which is
defined by the process of producing it will not be allowed; and the only
exception to this rule seems to be in cases where the product involves
invention and cannot be defined except by the process used in its
creation. In extreme cases of this character, the product may be allowed;
but that is not this case, especially in view of the broad claims allowed
appellant in his copending application . . . .
In re Brown, 29 F.2d 873, 874 (D.C. Cir. 1928) (emphasis added).
The Court of Customs and Patent Appeals discussed precedent involving claims
for processes and products in various factual situations, and summarized that:
Where it is possible to define a product by its characteristics, the practice
is clearly settled that this should be done. Where, however, the product is
novel and involves invention and cannot be defined except by the steps of
the process involved in its creation, there are cases holding that such a
claim may be allowed, and it has been sustained by a Court.
In re Butler, 37 F.2d 623, 626 (CCPA 1930) (emphasis added) (quoting Ex Parte
Feisenmeier, 1922 C.D. 18 (Comm’r Pat. 1922)). The CCPA then found this rule
inapplicable to the facts of Butler’s invention, explaining that “the record at bar does not
meet this requirement [that the product was new].” Id.
In In re Lifton, 189 F.2d 261 (CCPA 1951), the CCPA again commented on this
exception for product claims, stating that when “proper article claims” were possible
they must be used, with the exception of when such claims are “impossible”:
This court has uniformly held that a claim for an article must define the
article by its structure and not by the process of making it. The one
exception to this rule, where the invention is the article and it is impossible
to otherwise define it, is clearly ruled out in the present case because
appellant has demonstrated the possibility of proper article claims by
including several devoid of process limitations.
2007-1400, -1446 10
Id. at 263 (emphasis added, citations omitted). The court again recognized “the one
exception,” holding once again that it does not apply when the product can be described
independently of the process of making it.
These inquiries into the facts warranting application of the exception demonstrate
that the rule of necessity was seldom applied, but was nonetheless recognized both by
the courts and the Patent Office. Decisions of the Patent Office Board of Appeals
illustrate the practice. See, e.g., Ex parte Pfenning, 65 U.S.P.Q. 577 (Pat. Off. Bd. App.
1945) (allowing claim “directed to a product which results from the method of claim 9” in
light of applicant’s argument that “it is impossible in the instant case to define the
product adequately in terms of the elements which compose it or in terms of its physical
characteristics”); Ex parte Lessig, 57 U.S.P.Q. 129 (Pat. Off. Bd. App. 1943) (allowing
claim for a “product containing vulcanized rubber” strongly adhered to fibers which “has
been prepared by the process of claim 4” because “it is not possible to otherwise
distinguish over the art of record”).
Commentators have explained that this claiming practice became of increasing
importance as the complex sciences blossomed. See, e.g., Mark D. Passler, Product-
by-Process Patent Claims: Majority of the Court of Appeals for the Federal Circuit
Forgets Purpose of the Patent Act, 49 U. Miami L. Rev. 233, 233 n.3 (1994) (“Such
claims are often used by companies to patent complex drug or chemical products
whose structure is not completely understood and, therefore, can only be accurately
described by the process through which it is made.”). It is well known that the full
structure of some chemical and biological products is not always known at the time the
2007-1400, -1446 11
patent application is filed. Indeed, it is a tenet of the scientific method that explanation
and theory tend to follow, not precede, the observation of a development in the science.
The CCPA continued to recognize the use of process terms to aid in describing
new products—the form of claim sometimes called a “pure” product-by-process claim,
see n.1 supra—and repeatedly ruled that such claims are properly viewed as product,
not process, claims. The court also disallowed such claims where the product itself was
not novel and unobvious. The court confirmed that such a claim, when justified for a
novel and unobvious product, is properly construed as encompassing the full scope of a
product claim. For example, in In re Bridgeford, 357 F.2d 679 (CCPA 1966), the court
again explained that a new product may be defined by the process of making it if there
is no other way to describe the product, stressing that “the invention so defined is a
product and not a process,” id. at 682. The Bridgeford court relied on this view of the
scope of the product-by-process claims in a related patent, and held unpatentable for
double patenting claims that defined the “product per se.” Id. at 680. The court
explained that product-by-process claims are true product claims, and overruled the
suggestion in In re Freeman, 166 F.2d 178, 181 (CCPA 1948), that product-by-process
claims are “dependen[t] . . . on process limitations” and therefore coextensive with
process claims. Bridgeford, 357 F.2d at 683 n.6 (“While there is some language in
Freeman to support the contention that a product-by-process type claim differs only ‘in
scope’ from a process type claim and they therefore ‘are directed to a single invention,’
(166 F.2d at 181) so far as this is inconsistent with our holding here it must be
overruled.”).
2007-1400, -1446 12
My colleagues misstate the holding of Bridgeford, for Bridgeford directly
contravenes today’s holding. In Bridgeford the CCPA noted that “some courts” have
construed claims with process steps as limited to the recited process, id. at 683 n.5,
apparently without inquiring whether the rule of necessity justified full product scope for
the invention at issue. The CCPA’s observation that patents are construed
inconsistently in other courts cannot be taken, as apparently do my colleagues, as error
by the CCPA. To the contrary, the inconsistency among courts led eventually to
consolidation. 2
Again in In re Brown, 459 F.2d 531 (CCPA 1972), the CCPA explained that
product-by-process claims are product claims, not process claims, and that the
patentability of the product must be established independently of the process by which it
is identified. See id. at 535 (“[I]n spite of the fact that the claim may recite only process
limitations, it is the patentability of the product claimed and not of the recited process
steps which must be established.”).
Other decisions discussing application of this expedient to claims directed to
complex new products include In re Pilkington, 411 F.2d 1345, 1349 (CCPA 1969)
(“While we are satisfied that the references of record do not anticipate appellant’s glass
or demonstrate that it would be obvious, the differences between that glass and the
glass of the prior art do not appear to us to be particularly susceptible to definition by
the conventional recitation of properties or structure.”), and In re Fessmann, 489 F.2d
2
The Hruska Commission Report, which informed the debate that
eventually led to the formation of our court, described the varying attitudes towards
patents held by the regional courts of appeal and the variations in patent rulings among
the circuits. See Commission on Revision of the Federal Court Appellate System
Structure and Internal Procedures: Recommendations for Change, 67 F.R.D. 195, 370
(1975).
2007-1400, -1446 13
742, 743 (CCPA 1974) (affirming obviousness rejection of product-by-process claim
directed to a “liquid smoke” product, but observing that prior art compositions “are
complex mixtures of the chemical compounds which can be derived from wood” which
“defy simple characterization and this fact presumably accounts for the use of product-
by-process claims”). The need for this expedient, and the proper scope afforded such
claims, is summarized in the treatise Walker on Patents:
[P]atent rights over a chemical product are typically independent of the
process by which the product is made, and are particularly valuable
because of this fact. This independence is normally accomplished by
defining the product in terms of its structural features alone, with no
reference in the claims to process steps whatsoever. The state of
chemical technology, however, is sometimes too limited for a structural
description of this type to be made. The structure of some chemicals,
especially those including elaborate polymer chains, cannot be accurately
determined. The same chemicals, however, may be both economically
valuable and technologically reproducible, in the sense that they can be
reliably made by subjecting a particular set of raw materials to a particular
set of process steps.
***
The law reacted to these difficulties by making it easier to obtain
traditional product protection over this special class of chemicals. The
inventor was allowed to describe such a chemical in terms of how one
gained possession of it, that is, by way of the process steps by which it
was made. Once he did so, the law preserved to the inventor the fullest
measure of product-only protection that it could; it treated the process
recitations as proxies for the direct recitations of structure that could not
be made. Such a claim was therefore equivalent to one stated in terms of
structure only. It would broadly dominate all methods by which the
chemical could be made or used. At the same time, it carried the same
dangers of running afoul of the art: it would be anticipated if the chemical
had been produced previously, even if by a method other than what the
inventor disclosed.
1 Moy’s Walker on Patents §4:74 (4th ed. 2008) (emphases added).
The en banc court appears to misunderstand this precedent, for my colleagues
now state that “binding case law” of the Court of Customs and Patent Appeals and the
Court of Claims mandates a single rule for all claims that contain any process terms,
2007-1400, -1446 14
whether the product is novel or known, citing In re Hughes, 496 F.2d 1216 (CCPA
1974), for this proposition. However, Hughes does not state this proposition; Hughes
stands for the contrary proposition. In Hughes the question was the patentability of
claims directed to “shakes” as are used in roofing, as follows:
12. Shakes manufactured from a shake bolt by the process of making a
plurality of cuts into and across the shake bolt to an extent to establish
predetermined tip lengths, and splitting the weather end portions of the
shakes from the bolt by starting the splits at the inner ends of the cuts and
continuing the splits to the end of the bolt.
This claim had been rejected as an improper product-by-process claim, on the ground
that the product could be described without including process steps. The Hughes court
acknowledged the general rule against product-by-process claiming, but also explained
the “proper exception to the general rule” as first set forth in Painter, as follows:
[T]he Commissioner of Patents enunciated the general rule that a product
should not be defined in terms of the process of making it. In Painter, a
proper exception to the general rule was found on the ground that the
product could not be properly defined and discriminated from the prior art
otherwise than by reference to the process of producing it. This basic rule
and the exception have been recognized and followed continuously by the
Patent Office and the Courts.
Hughes, 496 F.2d at 1218 (quoting approvingly the Solicitor’s argument). The court
reaffirmed that “in spite of the fact that a product-by-process claim may recite only
process limitations, ‘it is the product which is covered by the claim and not the recited
process steps.’” Id. Contrary to my colleagues’ statement, Hughes did not eliminate this
form of claim, or change its role as a product claim. Indeed, the Hughes court applied
the exception and reversed the Board’s rejection of a product-by-process claim, stating:
We agree with appellant that the [general] rule should not be applied to
the situation before us. We have been shown no true product claim which
describes appellant’s invention, in the words of the solicitor, “in terms of
structure or physical characteristics.” When an applicant seeks to
2007-1400, -1446 15
describe his invention by a product-by-process claim because he finds
that his invention is incapable of description solely by structure or physical
characteristics, it is incumbent upon the Patent Office to indicate where, or
how, the applicant’s invention is, or may be, so described.
Id. at 1219. My colleagues could hardly have selected less apt support for their
construction of product-by-process claims, for Hughes explicitly states that such claims
are for the product, not the process.
In addition to misstating precedent of the CCPA, the en banc court also
mischaracterizes the decisions of our predecessor the Court of Claims, stating that the
Court of Claims’ decisions support today’s ruling. The court cites Tri-Wall Containers v.
United States, 408 F.2d 748 (Ct. Cl. 1969), for this purpose. That citation, too, is
mysterious, for in Tri-Wall Containers the court found that the claimed product was not
“new” because it had been on sale for more than the permitted period, although the
product that was on sale had been made by a different process than the process stated
in the claim. The Court of Claims stated that the evidence showed that “the prior art
product and the claimed product are structurally identical,” id. at 751, and explained that
a known product cannot be patented by including process terms in the claim:
It is well established that a product claimed as made by a new process is
not patentable unless the product itself is new. The Wood-Paper Patent,
90 U.S. (23 Wall.) 566, 596, 23 L. Ed. 31 (1874), Cochrane v. Badische
Anilin & Soda Fabrik [“BASF”], 111 U.S. 293, 311, 4 S. Ct. 455, 28 L. Ed.
433 (1984). . . .
....
More recent cases point out that the addition of a method step in a
product claim, which product is not patentably distinguishable from the
prior art, cannot impart patentability to the old product. Jungerson v.
Baden, 69 F. Supp. 922, 928 (D.C.S.D.N.Y. 1947), aff’d, 166 F.2d 807 (2d
Cir. 1948), aff’d, 335 U.S. 560, 69 S. Ct. 269, 93 L. Ed. 235 (1949); In re
Stephens, 345 F.2d 1020, 1023, 52 CCPA 1409 (1965).
2007-1400, -1446 16
Tri-Wall Containers, 408 F.2d at 750-51. This case applied the standard rule that old
products cannot be patented—it contains no statement limiting the scope of claims that
include process aspects to aid in describing new products. The Supreme Court cases
cited in Tri-Wall are all directed to new processes for making old products—these are
the same cases that the en banc court today incorrectly applies to new products, as I
discuss post.
Contrary to my colleagues’ statement, CCPA and Court of Claims precedent do
not support today’s en banc thesis. Our predecessor courts understood the complexity
of patenting, and the CCPA consistently implemented the expedient whereby process
terms contributed to the description of complex new products of incompletely known
structure. These courts recognized the independence of product claims for new
products, and did not limit such claims to the specific process steps that were used to
aid in describing the product. 3
With the advent of the Federal Circuit, this court continued to apply these
principles. In In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985), the court explained that
3
The en banc court impugns the CCPA’s experience. Maj. op. at 18
(stating that the CCPA had “virtually no jurisdiction to address infringement litigation”).
The CCPA for many years addressed infringement litigation, in appeals from the
International Trade Commission and its predecessor tribunals. E.g., Sealed Air Corp. v.
Int’l Trade Comm’n, 645 F.2d 976 (CCPA 1981) (issues of validity and infringement);
Hale Fire Pump Co. v. Tokai, Ltd., 614 F.2d 1278 (CCPA 1980) (issues of validity,
scope, and infringement); In re Orion, 71 F.2d 458 (CCPA 1934) (issues of jurisdiction
and infringement).
Our predecessor’s legal and scholarly distinction in the field of patent law, and
the high regard in which Congress and the innovation communities held the
jurisprudence of the CCPA were a critical foundation for formation of the Federal Circuit
and its charge to reinvigorate the role of the patent system in service to the nation’s
technological innovation. See 125 Cong. Rec. 23,462 (1979) (statement of Sen.
DeConcini) (“It is a reflection of high esteem which Congress has for the sitting judges
of the Court of Claims and Court of Customs and Patent Appeals that these judges will
become the first judges of the new Court of the Federal Circuit.”).
2007-1400, -1446 17
product-by-process claims are anticipated when the product existed in the prior art,
even if the product was made by a different process. My colleagues are mistaken in
stating that Thorpe held that all such claims are to be construed as process claims,
even when the product is new and the rule of necessity justifies this mode of describing
the invention. In Thorpe the product was not new; it was a known color developer for
carbonless paper copy systems, and this court held that the PTO correctly rejected the
claim to “the product of the process of claim 1,” explaining that since the product was
old it could not be claimed as a product, whether or not process steps are recited in the
claim.
The facts of Thorpe did not concern the exception and expedient where process
terms are invoked to describe a new product of complex structure. This exception is
rarely invoked. The general rule requiring claims to have a process-free definition of the
structure of a new product accommodates most inventions. Some recent exceptions
are seen in emerging aspects of biotechnology. For example, in Amgen, Inc. v. Chugai
Pharmaceuticals Co., 706 F. Supp. 94 (D. Mass. 1989), aff’d in relevant part, 927 F.2d
1200 (Fed. Cir. 1991), the district court considered the following claim:
4. A procaryotic or eucaryotic host cell transformed or transfected with a
DNA sequence according to claim 1, 2 or 3 in a manner allowing the host
cell to express erythropoietin.
Id. at 108. The district court found claim 4 “ambiguous,” explaining that while it is
directed to a new product—this host cell—the words “transformed or transfected”
appear to invoke a process. The district court recognized that “[i]n the traditional patent
framework, a product is wholly separate and distinct from a process.” Id. at 107. The
court observed that “[a] product patent gives the patentee the right to restrict the use
2007-1400, -1446 18
and sale of the product regardless of how and by whom it was manufactured,” while “[a]
process patentee’s power extends only to those products made by the patented
process.” Id. (quoting United States v. Studiengesellschaft Kohle, 670 F.2d 1122, 1127-
28 (D.C. Cir. 1981)). The district court, affirmed by the Federal Circuit, found this claim
to be valid and infringed as a product claim, and although many issues and arguments
were present in this litigation, the applicability of the venerable rule of necessity was not
at issue.
In Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565 (Fed.
Cir. 1991), the Federal Circuit addressed the interpretation and scope of claims
exemplified by claim 13:
13. Highly purified and concentrated VIII:C prepared in accordance with
the method of claim 1.
Claim 1 set forth the method referred to in claim 13, as follows:
1. An improved method of preparing Factor VIII procoagulant activity
protein [VIII:C] comprising the steps of
(a) adsorbing a VIII:C/VIII:RP complex from a plasma or
commercial concentrate source onto particles bound to a monoclonal
antibody specific to VIII:RP,
(b) eluting the VIII:C,
(c) adsorbing the VIII:C obtained in step (b) in another adsorption to
concentrate and further purify same,
(d) eluting the adsorbed VIII:C, and
(e) recovering highly purified and concentrated VIII:C.
It was not disputed that the product was a new product, that the “highly purified and
concentrated” blood clotting Factor VIII:C had not previously been obtained, and that a
complete structural identification of Factor VIII:C was not available. The defendant
Genentech had made its commercial Factor VIII:C not by the method set forth in claim
1, but by using a sample of the Scripps product to “clone” Factor VIII:C protein using
2007-1400, -1446 19
recombinant DNA techniques. One question presented in the case was whether claims
such as claim 13 were infringed by the same product produced by a different method, or
whether such claims were infringed only if the accused infringer used the process of
claim 1.
Scripps stressed that its product was novel and enabled and was patentable as a
product, although the full structure of Factor VIII:C was not available at that stage of the
science. The court addressed whether claims exemplified by claim 13, properly
construed, were product claims, or whether they were limited to the specific processes
in the process claims to which they referred. This court held that the claims were
product claims. The court held that since claims are construed the same way for
infringement as for validity, the question was whether the Genentech product was the
same as the claimed product, not whether they were produced by the same process.
The court remanded to the district court for this factual determination. Scripps, 927 F.2d
at 1584.
After Scripps was decided, a panel of this court decided an appeal concerning
plastic innersoles for shoes. In Atlantic Thermoplastics Co. v. Faytex Corp., 970 F.2d
834 (Fed. Cir. 1992), the claims at issue were represented by:
Claim 24. The product produced by the method of claim 1.
In turn, claim 1 was as follows:
1. In a method of manufacturing a shock-absorbing, molded innersole for
insertion in footwear, which method comprises:
(a) introducing an expandable, polyurethane into a mold; and
(b) recovering from the mold an innersole which comprises a
contoured heel and arch section composed of a substantially open-celled
polyurethane foam material, the improvement which comprises:
(i) placing an elastomeric insert material into the mold, the
insert material having greater shock-absorbing properties and being
2007-1400, -1446 20
less resilient than the molded, open-celled polyurethane foam
material, and the insert material having sufficient surface tack to
remain in the placed position in the mold on the introduction of the
expandable polyurethane material so as to permit the expandable
polyurethane material to expand about the insert material without
displacement of the insert material; and
(ii) recovering a molded innersole with the insert material
having a tacky surface forming a part of the exposed bottom
surface of the recovered innersole.
The panel held that a claim in the form of claim 24 always requires use of the
referenced method, and that it is irrelevant whether the product was new or known. The
court stated that the rule of necessity, as applied in Scripps, is contrary to Supreme
Court rulings. The panel stated that the decision in Scripps is incorrect. A majority of
the Federal Circuit declined to resolve the conflict en banc, resulting in several further
opinions. E.g., Atlantic Thermoplastics Co. v. Faytex Corp., 974 F.2d 1279 (Fed. Cir.
1992) (dissents of Chief Judge Nies and Judges Rich, Newman, and Lourie from denial
of rehearing en banc). Judge Rich wrote:
[T]his whole excursion was unnecessary because the patentee admitted
that claim 24, the product-by-process claim, was limited to the process.
The claim read: “The molded innersole produced by the method of claim
1.” There was, therefore, no occasion to review the law to determine how
the claim should be construed. . . . We are not here to provide
restatements of the law. Such restatements should not be made without
an opportunity for all affected parties to be heard from. The affected
parties here are not the vendors of inner soles but largely the entire
chemical industry, particularly the pharmaceutical manufacturers.
Id. at 1280 (Rich, J., dissenting from denial of rehearing en banc).
Most trial courts continued to recognize the rule of necessity. For example, in
Trustees of Columbia University v. Roche Diagnostics GmbH, 126 F. Supp. 2d 16 (D.
Mass. 2000), the district court considered claims such as the following.
72. A eukaryotic cell into which foreign DNA I has been inserted in
accordance with the process of claim 54.
2007-1400, -1446 21
The court referred to the Scripps/Atlantic conflict, concluded that the earlier panel
decision controlled under the Federal Circuit’s rule, see Newell Companies, Inc. v.
Kenney Manufacturing Co., 864 F.2d 757, 765 (Fed. Cir. 1988) (“This court has adopted
the rule that prior decisions of a panel of the court are binding precedent on subsequent
panels unless and until overturned in banc.”), and applied the Scripps ruling, holding
that the new cell was not limited by the process by which it was made.
The PTO also continued to apply the rule of necessity. In instructing examiners
that products should whenever possible be described without reference to how they
were made, the PTO continued to point out the exception that patentability as a product
is not foreclosed when independent description is not available. The Manual of Patent
Examining Procedure (MPEP) instructs the examiner to consider the structure implied
by any process steps in the claim:
The structure implied by the process steps should be considered
when assessing the patentability of product-by-process claims over the
prior art, especially where the product can only be defined by the process
steps by which the product is made, or where the manufacturing process
steps would be expected to impart distinctive structural characteristics to
the final product.
MPEP §2113 (8th ed., July 2008 rev.). This has been the practice since at least Ex
parte Painter in 1891. I am surprised at the en banc court’s casual misstatement about
“the treatment of product-by-process claims throughout the years by the PTO,” maj. op.
at 17, for the statement is directly contrary to the treatment of such claims throughout
the years by the PTO.
The en banc court’s insistence that one universal rule should now be applied is
contrary to the entire body of decisional law, including the Supreme Court cases cited
by my colleagues. As I next discuss, in most of the cited cases the product was not a
2007-1400, -1446 22
new product and thus was not patentable as a product, whether or not any process term
was included in the claim. The Court consistently held that when the product was old
and only the process was a patentable invention, a claim for the “product of that
process” could not cover the old product made by a different process. That is, and has
always been, the law. I comment briefly on the Court’s cases that my colleagues
misinterpret and misapply:
Cochrane v. BASF
The en banc opinion relies primarily on Cochrane v. Badische Anilin & Soda
Fabrik, 111 U.S. 293 (1884) (“BASF”), even though my colleagues acknowledge that
the product in that case was the well-known dye alizarine. The patent before the Court
was a reissue patent that claimed artificial alizarine in the following way:
Artificial alizarine, produced by either of the methods herein described, or
by any other method which will produce a like result.
The Court held that since alizarine was a known product, the claim was limited to the
patentee’s two processes, stating:
It was an old article. While a new process for producing it was patentable,
the product itself could not be patented, even though it was a product
made artificially for the first time, in contradistinction from being eliminated
from the madder root. Calling it artificial alizarine did not make it a new
composition of matter, and patentable as such, by reason of its having
been prepared, artificially, for the first time, from anthracite, if it was set
forth as alizarine, a well-known substance. Wood Paper Patent, 23 Wall.
560, 593 [(1874)]. There was therefore no foundation for reissue No.
4,321, for the product, because, on the description given, no patent for the
product could have been taken out originally.
111 U.S. at 311-12. The Court accordingly limited the claim to the two processes
described in the patent, and in the portion of BASF quoted by my colleagues, the Court
discussed the proofs needed to show infringement:
2007-1400, -1446 23
[U]nless it is shown that the process of [the specification] was followed to
produce the defendants’ article, or unless it is shown that the article could
not be produced by any other process, the defendants’ article cannot be
identified as the product of the process of [the specification]. Nothing of
the kind is shown.
Id. at 310. The Court did not state, or imply, despite my colleagues’ contrary theory,
that a claim to a new and complex product that is of necessity defined and distinguished
by the process by which it was made, can never be infringed unless that specific
process is practiced. There was no issue in BASF of a product that could not be
defined without reference to how it was made. The BASF Court, providing guidance,
remarked on the importance of independent description of a patented product, in the
following sentence cited by my colleagues:
Every patent for a product or composition of matter must identify it so that
it can be recognized aside from the description of the process for making
it, or else nothing can be held to infringe the patent which is not made by
that process.
Id. at 310. This statement is indeed the general rule, as stated by the Patent
Commissioner several years later in Ex parte Painter. However, BASF did not present
the situation for which the expedient of necessity was created, for as the Court stated,
the invention was “a process for preparing alizarine, not as a new substance prepared
for the first time, but as the substance already known as alizarine, to be prepared,
however, by the new process, which process is to be the subject of the patent, and is
the process of preparing the known product alizarine from anthracine.” Id. at 308-09.
This was not an instance of a new product describable only in terms of its
process of manufacture. The BASF decision lends no support to today’s en banc rule
that every product claim that mentions a process step is always restricted to that
2007-1400, -1446 24
process, with no exception, no expedient, no preservation of the distinctions among
forms of claim based on the nature of the invention.
The Goodyear Dental cases
The en banc court also states that its new ruling is supported by two cases
relating to a patent on the use of vulcanized rubber to form a plate for holding dentures,
Smith v. Goodyear Dental Vulcanite Co., 93 U.S. (3 Otto) 486 (1876), and Goodyear
Dental Vulcanite Co. v. Davis, 102 U.S. (12 Otto) 222 (1880). Review of these cases
reveals no support for the en banc court’s statement of their holdings. The claim at
issue was:
The plate of hard rubber or vulcanite, or its equivalent, for holding artificial
teeth, or teeth and gums, substantially as described.
Davis, 102 U.S. (12 Otto) at 223. The claim was written in the then-standard format of
incorporating the description in the specification through the phrase “substantially as
described.” This was not a product-by-process or product-of-the-process claim at all,
for the claim contains no process distinction or limitation, but simply refers to the
description in the specification. Nonetheless, the en banc majority appears to state that
these cases mean that the Supreme Court requires that all claims for products whose
method of production is set forth in the specification—as is required by the description
and enablement requirement—cannot be infringed unless that method is used.
That is not what the Goodyear Dental cases said. The Court referred to the
position of Goodyear Dental Vulcanite that its patent covered all dental plates made of
vulcanized rubber, and held, upon reviewing the specification and the prior art, that the
process of manufacture was what distinguished this dental plate from the prior art dental
plates, and concluded: “The invention, then, is a product or manufacture made in a
2007-1400, -1446 25
defined manner. It is not a product alone, separated from the process by which it is
created.” Smith, 93 U.S. (3 Otto) at 493. Were the claim not limited to this process, the
Court concluded that the claim would not have been patentable. See id. at 492 (holding
that if the patent were for a “mere substitution of vulcanite for other materials, which had
previously been employed as a base for artificial sets of teeth” then it “constituted no
invention”). Four years later, considering the same patent in Davis, the Court
emphasized that the claim was limited to use of vulcanized rubber or its equivalent, and
held that since the accused infringer made its dental plate with celluloid, there could not
be infringement. See 102 U.S. (12 Otto) at 228-30.
The court today cites these cases as definitive of the interpretation of claims with
process elements, although the only process referent is the phrase “substantially as
described.” This flawed reasoning was disposed of in 1890 in the classic Robinson on
Patents, and until now has not reappeared:
In stating Claims certain phrases are frequently employed to which a
special importance seems to be attached by applicants. Among these are
the phrase “substantially as described” and others of the same meaning.
These phrases import the same thing when used in a Claim as when
elsewhere employed. They are neither necessary nor technical. The
reference they make to the Description is always implied, and relates only
to the essential features of the invention as therein delineated. They add
nothing, therefore, to the certainty of the Claim, nor do they detract from it
unless the claimant carelessly inserts them as a substitute for a more
clear and definite statement of his invention.
II W.C. Robinson, Robinson on Patents 517 (1890) (footnotes omitted).
Merrill v. Yeomans
My colleagues also rely on Merrill v. Yeomans, 94 U.S. (4 Otto) 569 (1877).
Again, the relevance is remote. The Merrill Court explained that the issue was the
“correct construction of plaintiff’s patent,” id. at 569, construing the following claim:
2007-1400, -1446 26
[T]he above-described new manufacture of the deodorized heavy
hydrocarbon oils, suitable for lubricating and other purposes, free from the
characteristic odors of hydrocarbon oils, and having a slight smell like fatty
oil, from hydrocarbon oils, by treating them substantially as hereinbefore
described.
Id. at 570. The Court examined the specification to determine what was invented, and
found that the invention was directed solely to a process, not to a product. The Court
then concluded that the claim’s usage “new manufacture” referred to the manufacturing
process, and not to the product. The claim was thus a process claim, and no “product-
by-process” issue was presented. The Court concluded that the defendant’s oil, which
was made by a different process, did not infringe.
The Merrill Court discussed its practice of looking to the patent application and
interpreting the claim in light of what was “really invented”:
[W]here it appears that a valuable invention has really been made, this
court, giving full effect to all that is found in the application on which the
Patent Office acted, will uphold that which was really invented, and which
comes within any fair interpretation of the patentee’s assertion of claim.
Id. at 573. This approach is inimical to the en banc court’s theory that it is irrelevant
what the patentee describes as his invention, and that if a process step is mentioned in
the claim or “substantially described” in the specification, the claim always requires
performance of that step. Although the Court in Merrill was not confronted with a
situation of indescribable product or necessity bred of complexity—indeed no product at
all was claimed—neither did the Court hold that every product invention must be limited
by the process that produced the product.
The Wood Paper Patent case
The list of Supreme Court cases relied on by my colleagues continues with The
Wood Paper Patent, 90 U.S. 566, 596 (1874), where claims with the standard
2007-1400, -1446 27
“substantially as described” language were construed in two reissue patents relating to
the pulping of wood to make paper. The Court explained that one reissue patent was
for “a product or manufacture, and not for the process by which the product may be
obtained,” and the other “for a process and not for its product.” Id. at 593. The Court
examined the prior art and concluded that the claim for the product could not be
sustained, because the product produced by the inventor’s new pulping process was
not new:
Paper-pulp obtained from various vegetable substances was in common
use before the original patent was granted to Watt & Burgess, and
whatever may be said of their process for obtaining it, the product was in
no sense new. The reissued patent, No. 1448, is, therefore, void for want
of novelty in the manufacture patented.
Id. at 596. The Court then discussed the reissue patent for the “process and not for its
product,” and held this reissue void because it claimed a different invention than in the
original patent. The Court also discussed several other patents directed to boilers used
to produce paper-pulp, and to a process for bleaching straw. Nothing in this case
concerns the product-by-process issue on which the court is today acting.
I cannot discern why the en banc court relies on The Wood Paper Patent case as
invalidating Scripps, and the court has not attempted to explain.
Plummer v. Sargent
The en banc court also relies on Plummer v. Sargent, 120 U.S. 442 (1887),
which again provides no support for my colleagues’ thesis. This case again illustrates
the Court’s practice of reviewing what the patentee stated he invented as set forth in the
specification in light of the prior art. The claim in Plummer was for a “new manufacture,”
“substantially as described”:
2007-1400, -1446 28
What I claim and desire to procure by letters patent is the new
manufacture hereinabove described, consisting of iron ornamented in
imitation of bronze by the application of oil and heat, substantially as
described.
Id. at 445. The trial court had found non-infringement because the defendant had used
a prior art process for bronzing iron. This prior process was work of F.W. Brocksieper,
an employee of the defendant’s predecessor company. The Supreme Court affirmed,
stating that the claims were limited to the process described in the specification:
It seems necessarily to follow from this view either that the Tucker patents
are void by reason of anticipation practiced by Brocksieper, or that the
patented process and product must be restricted to exactly what is
described . . . .
Id. at 449. The Court thus limited the claims to the process described by the patentee,
not because of any rule about limiting a product to how it was made in the specification,
but to sustain validity of the patent in view of the Brocksieper prior art. The decision in
Plummer is unrelated to any rule of claim construction based on whether process terms
are included in the claim.
These nineteenth-century cases do not relate to the en banc court’s new
universal rule of claim construction, whereby all product claims having process terms
are treated as process claims, whatever the nature of the product, whatever the need
for process descriptors, or any other factor that precedent shows to be relevant to the
exception that is here at issue as to the use of and construction of such claims. Nor do
any more recent Court cases.
General Electric v. Wabash
My colleagues also cite General Electric Co. v. Wabash Appliance Corp., 304
U.S. 364 (1938), although the relevance of this case is, again, not apparent, for it
2007-1400, -1446 29
involved no product-by-process claims, but rather claims that recite the properties of the
product. A typical claim is claim 25, which describes an electric lamp filament
composed of tungsten grains of a size and shape that prevents sagging of the filament:
25. A filament for electric incandescent lamps or other devices, composed
substantially of tungsten and made up mainly of a number of
comparatively large grains of such size and contour as to prevent
substantial sagging and offsetting during a normal or commercially useful
life for such a lamp or other device.
Id. at 368. The Court held this claim “invalid on its face” for failing to provide a “distinct
and definite statement of what he claims to be new, and to be his invention.” Id. at 369.
The Court stated that the description of the grains as “of such size and contour as to
prevent substantial sagging and offsetting” was “inadequate as a description of the
structural characteristics of the grains.” Id. at 370. The Court also criticized the use of
functional language in the claim, stating that such terms were too indefinite to provide
clear guidance. Id. at 371. There was no issue of whether process steps in the claims
were regarded as limiting, for there were no process steps in the claims. Instead, the
Court stated that even the implicit inclusion of process steps could not save the claim,
because the description of the process in the specification was inadequate:
Even assuming that definiteness may be imparted to the product claim by
that part of the specification which purportedly details only a method of
making the product, the description of the Pacz process is likewise silent
as to the nature of the filament product.
Id. at 373. The Court held the patent invalid for lack of a “distinct and definite”
description of the invention, for the court “doubted whether one who discovers or
invents a product he knows to be new will ever find it impossible to describe some
aspect of its novelty.” Id. Whatever the inadequacies in the Pacz description of his
invention, the Court’s optimistic view of scientific capability cannot be deemed to have
2007-1400, -1446 30
barred all recourse to the rule of necessity when it is warranted, or to have voided the
ensuing seventy-one years of Patent Office and judicial recognition of this pragmatic
expedient.
No Supreme Court case discussed the problems of complexity and structural
analysis that warrant this expedient, or created a legal solution to these problems. It is
inappropriate, unsupported by law or precedent, and contrary to the purposes of patent
systems, for this court now to rule that such products cannot be patented as products.
Regional circuit decisions
My colleagues also rely on some decisions of the regional circuits preceding this
court’s formation, announcing that “our sister circuits also followed the general rule that
the defining process terms limit product-by-process claims,” and citing two cases, one
decided in 1915 and one in 1977. These cases do not support the en banc court’s
opinion, 4 and raised no issue of an expedient based on necessity.
4
It is curious to observe this en banc court extolling decisions of the
regional circuits as authoritative, while it disregards the decisions of our predecessor
courts and of this court. This court was created to remove patent law questions from
the regional circuit courts. See H.R. Rep. 96-1300, at 20 (1980) (“Directing patent
appeals to the new court will have the beneficial effect of removing these unusually
complex, technically difficult, and time-consuming cases from the dockets of the
regional courts of appeals. . . . [T]he central purpose is to reduce the widespread lack of
uniformity and uncertainty of legal doctrine that exist in the administration of patent
law.”); see also Federal Courts Improvement Act of 1979: Hearings Before the
Subcomm. on Improvements in Judicial Machinery of the Comm. on the Judiciary, U.S.
Senate, 96th Cong. 197 (1979) (statement of Hon. Henry J. Friendly) (“What is needed
is a group of judges, some but not all patent lawyers, with scientific training and interest,
aided both by law clerks of similar bent and by a staff of experts in a variety of
technologies, such as the Court of Customs and Patent Appeals has had for years and
the courts of appeals in the very nature of things, cannot . . . ”). To cite two regional
circuit decisions, while jettisoning the precedents of the court uniquely qualified to
address patent questions and selected to supplant the regional circuits, is puzzling.
2007-1400, -1446 31
In Hide-Ite Leather Co. v. Fiber Products Co., 226 F. 34 (1st Cir. 1915), the
appeal was of two process claims for making leatherboard, and a product claim for
leatherboard “made from pulp” and reciting the second step in the process claims plus
the reference “substantially as described.” The accused infringer did not use the same
first step of the process. The court found that the invention was for a process, not a
product, and therefore that the product claim was not infringed.
My colleagues also cite Paeco, Inc. v. Applied Moldings, Inc., 562 F.2d 870, 876
(3d Cir. 1977), in which the court used the specification to resolve an ambiguity in the
language of a product claim relating to “replica wooden beams” made of foamed
urethane. The court reviewed whether ambiguous claim language required a closed or
open mold, for this determined the question of anticipation based on a prior art
reference that used an open mold. Thus the court stated that the manufacturing
process described in the specification was “of paramount importance,” and construed
the claim in light of that process as requiring a closed mold, thus preserving the claim’s
validity as against the prior art that used and open mold. The sentence quoted by my
colleagues out of its context, does not relate to the en banc court’s new rule concerning
process terms in product claims, and the Paeco case raised no question of whether the
product was capable of description apart from the process.
In addition to these two cases inaptly cited by the en banc court, other regional
circuit decisions also contradict this court’s new thesis. In Dunn Wire-Cut Lug Brick Co.
v. Toronto Fire Clay Co., 259 F. 258 (6th Cir. 1919), the court stated: “Certain it is, in
view of the weight of authority and the latest decisions, that the inventor of a new and
2007-1400, -1446 32
useful product or article of manufacture may have a patent which covers it and gives a
monopoly upon it regardless of great variations in the method of making.” Id. at 261.
In Buono v. Yankee Maid Dress Corp., 77 F.2d 274 (2d Cir. 1935) (L. Hand, J.),
the court held invalid a product claim for a kind of “blind stitch” used in sewing, because
the invention lay only in the process of producing the stitch, which itself “was not new.”
Id. at 279. While the stitch had not been claimed as the product of a particular machine
or process, the court remarked on the conceivability of patenting such a product “merely
as the product of a machine or process, even though it were anticipated if made in other
ways,” id., observing that such a claim might serve a useful purpose in protecting
against products that were produced by the same machine or process abroad and then
imported. Of such a claim, wherein the product itself was anticipated but the process
was new, the court stated “it would in that case not be infringed by anything but the
product of the . . . process.” Id. This routine statement of established law does not
mean that when the product is itself new and useful and unobvious, it cannot be claimed
as a product but must be tied to the machine that made it.
Judge Hand emphasized that this example related only to situations where the
product itself was not new. The opinion explained that to be claimed as a product, the
product “must be new as such, that is, regardless of the process or machine which
makes it; and it must stand upon its own invention, again independently of the machine
or process which makes it.” Id. This was also the CCPA’s view of product claims,
providing the precedent carried forward to, and binding upon the Federal Circuit. 5
5
There has been extensive commentary on this class of claim. See, e.g.,
Jon S. Saxe & Julian S. Levitt, Product-by-Process Claims and Their Current Status in
Chemical Patent Office Practice, 42 J. Pat. Off. Soc’y 528, 559 (1960) (“Except in the
2007-1400, -1446 33
III
THE EN BANC RULING
Defying precedent, the en banc court adopts for all situations “the basic rule that
the process terms limit product-by-process claims,” maj. op. at 17, whether the product
is novel or known, and whether or not the new product could not have been fully
described by its structure alone. The court eliminates the long-accepted expedient for
new products whose structure is not fully known. While the Scripps decision is the only
decision that is mentioned as “expressly overruled,” maj. op. at 17, Scripps is only one
of many cases now discarded.
The en banc majority’s response to the dissenters is to state that “the inventor is
absolutely free to use process steps to define this product” if its “structure is either not
fully known or too complex to analyze,” maj. op. at 19, but to eliminate the premise that
the inventor thereby obtains a product claim, not a process claim. According to the
majority, a patentee can continue to obtain product claims using process descriptors,
but such product claims are treated as process claims for infringement. The applicant
would still have to demonstrate patentability of the new product as a product
(independent of the process), while enforcement of the patent against an identical
product would be limited to the infringer’s use of the process steps used as a descriptor.
For the first time, claims are construed differently for validity and for infringement.
chemical arts, a claim to a product must be in terms of the product’s objective physical
and chemical characteristics; but where these are unknown or impossible to express, a
claim may define a product in terms of the process by which it is made. This product-
by-process exception is to be distinguished from the use of process terminology as
descriptive of a state of being.”); Brian S. Tomko, Scripps or Atlantic: The Federal
Circuit Squares Off Over the Scope of Product-by-Process Patents, 60 Brook. L. Rev.
1693, 1696 (1995) (the Atlantic decision “pared the scope of a product-by-process
patent to that of a glorified process patent”).
2007-1400, -1446 34
It has been an inviolate rule that patent claims are construed the same way for
validity and for infringement. See, e.g., Amgen Inc. v. Hoechst Marion Roussel, Inc.,
324 F.3d 1313, 1330 (Fed. Cir. 2003) (“It is axiomatic that claims are construed the
same way for both invalidity and infringement.”); Amazon.com, Inc. v.
Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) (“Because the claims
of a patent measure the invention at issue, the claims must be interpreted and given the
same meaning for purposes of both validity and infringement analyses.”); C.R. Bard,
Inc. v. M3 Systems, Inc., 157 F.3d 1340, 1363 (Fed. Cir. 1998) (“Claims must be
interpreted the same way for determining infringement as was done to sustain their
validity.”); Southwall Technologies, Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed.
Cir. 1995) (“Claims may not be construed one way in order to obtain their allowance and
in a different way against accused infringers.”); Beachcombers, International, Inc. v.
WildeWood Creative Products, Inc., 31 F.3d 1154, 1163 (Fed. Cir. 1994) (“We have
already interpreted the claims for purposes of assessing their validity. The same claim
interpretation of course applies to the infringement analysis.”); Scripps Clinic &
Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1583 (Fed. Cir. 1991) (“claims
must be construed the same way for validity and for infringement”); Smithkline
Diagnostics, Inc. v. Helena Laboratories Corp., 859 F.2d 878, 882 (Fed. Cir. 1988)
(“The claims of the ’970 patent measure the invention at issue; thus, the claims must be
interpreted and given the same meaning for purposes of both validity and infringement
analyses.”); see also 5A Chisum on Patents §18.01 (2007) (“A fundamental tenet of
patent law is that a claim must be interpreted consistently for purposes of infringement
and validity.”); id. §18.03[2][h] (collecting cases).
2007-1400, -1446 35
As interpreted for validity, the claims obtained under the expedient of necessity
are product claims, and are subject to the requirements of novelty, unobviousness, and
all other requirements for new products, independent of how the products can be made.
My colleagues hold that these are product claims for validity, but process claims for
infringement. Departure from the rule that forbids such deviation requires sound
reason, and fuller exploration than the cursory brush-off dispensed by my colleagues.
I do agree with my colleagues that their logic is “simple.” Maj. op. at 19.
However, today’s inventions are not simple. The needs of inventions of the past and
present, and more so the future, are not simple. The public interest in invention and
development of today’s complex sciences, is not simple. The en banc court’s “simple”
hypothetical about “compound X, obtained by process Y,” is simply irrelevant to the
issues we must resolve. Scientists know that it is often easier to show that two products
are the same, than to decipher their chemical or biological structure; for example, in the
case at bar, comparing the X-ray diffraction patterns and absorption spectra could show
that the products are the same, although their exact crystal structure is undefined.
However, my colleagues announce that the only way to establish whether the accused
compound is the same as the patented compound is by inquiring whether they were
prepared by the same method. Maj. op. at 19-20 (“[W]hat analytical tools can confirm
that the alleged infringer’s compound is in fact infringing, other than a comparison of the
claimed and accused infringing processes?”). That question has many answers, now
stated to be irrelevant.
While the section of this opinion decided by the en banc court is largely directed
to its reversal of precedent, the implementation of its ruling remains with the original
2007-1400, -1446 36
panel. The panel decision enlarges the en banc ruling, further binding this court. The
claims at issue state processes by which the new crystal form is “obtainable,” although
the specification states that other methods might be used. The panel rules that a claim
“cannot capture a product obtained by or obtainable by processes other than those
explicitly recited in the claims.” maj. op. at 21, finding authority in BASF, which I have
discussed ante. My colleagues thus continue to misapply the Court’s ruling in BASF,
where the Court stated repeatedly that the product in that case was a known product.
BASF, 111 U.S. at 311 (“It was an old article.”). In BASF the Court responded to the
patentee’s argument that it was entitled to cover all artificial alizarine made by any
process, by observing that the patentee had not shown how the infringing and patented
products “can be recognized,” id. at 310, an aspect at the opposite pole from the case at
bar, where the patentee provided elaborate details as to how the patented and accused
crystal forms can be recognized.
The panel also states that “the applicant’s statement in the file wrapper that ‘the
method of preparation . . . is not considered the heart of the present invention’ should
not be afforded undue gravitas.” Maj. op. at 22. This too is an aberration of precedent,
and is contrary to the many rulings of the Supreme Court and this court that afford due
gravitas to the applicant’s statement of what has been invented. See, e.g., BASF, 111
U.S. at 308 (“It is very plain that the specification of the original patent, No. 95,465,
states the invention to be a process for preparing alizarine, not as a new substance
prepared for the first time, but as the substance already known as alizarine, to be
prepared, however, by the new process, which process is to be the subject of the
patent . . . .”); Plummer v. Sargent, 120 U.S. at 443 (quoting specification of companion
2007-1400, -1446 37
patent, where inventor stated “My invention consists in a process of covering iron with a
very thin coating of oil, and then subjecting it to heat, the effect of which is to leave upon
the iron a firm film, which is very durable, and gives the iron a highly ornamental
appearance, like that of bronze”). The Federal Circuit’s emphasis on the importance of
the specification has been repeatedly stated. E.g., Phillips v. AWH Corp., 415 F.3d
1303, 1315 (Fed. Cir. 2005) (en banc) (“[T]he specification is always highly relevant to
the claim construction analysis. Usually, it is dispositive; it is the single best guide to the
meaning of a disputed term.” (internal quotation marks omitted)).
The en banc court appears to misjudge the implications of its ruling, for the court
states that it is now making available to “others the right to freely practice process Z [a
different process] that may produce a better product in a better way.” Maj. op. at 20. If
others can indeed make a better product, this expedient presents no impediment. That
is not the issue of this case. The issue is the right to make the same product, by
making a process change that does not change the product. By now assuring that right,
the exclusionary value of the claim to a new product is lost.
The purpose of the rule of necessity is to allow inventors of complex new
products to obtain the patent scope to which their invention is entitled—the scope of the
novel product they invented, no more and no less. The majority’s change of law simply
imposes unfairness as well as legal error on patent-supported advances.
SUMMARY
Precedent establishes that the correct construction of claims that recite process
steps depends, like all claim construction, on what has been invented. No single rule
fits all inventions. The construer must view the claims in light of the description of the
2007-1400, -1446 38
invention in the specification, the prior art, and the prosecution history. In the complex
law and practice of patents and inventions, the special expedient here of concern arises
when the precise structure of a new product is not known from the information available
when the patent application was filed. The law has enabled and endorsed this
expedient of describing a product in order to claim it as a product, whereby validity and
infringement are determined as a product, independent of any process term that was
used to aid in defining the product. This expedient does not enlarge patent scope; it
simply permits patenting what has been invented. A narrow but clear body of law has
evolved to accommodate this need of complex technologies. This entire body of law is
today overturned, sua sponte and without a hearing, without any participation of those
affected, without identification of the intended benefits. I respectfully dissent from the
en banc court’s rulings, as well as the procedure by which they were reached.
2007-1400, -1446 39
United States Court of Appeals for the Federal Circuit
2007-1400
ABBOTT LABORATORIES,
Plaintiff-Appellant,
and
ASTELLAS PHARMA, INC.,
Plaintiff-Appellant,
v.
SANDOZ, INC.,
Defendant-Appellee,
and
SANDOZ GMBH,
Defendant,
and
TEVA PHARMACEUTICALS USA, INC. and
TEVA PHARMACEUTICAL INDUSTRIES, LTD.,
Defendants-Appellees,
and
RANBAXY LABORATORIES, LTD. and RANBAXY, INC.,
Defendants,
and
PAR PHARMACEUTICAL COMPANIES, INC. and PAR PHARMACEUTICAL,
Defendants.
-----------------------------------------------
2007-1446
LUPIN LIMITED,
Plaintiff/Counterclaim Defendant-
Appellee,
and
LUPIN PHARMACEUTICALS, INC.,
Counterclaim Defendant-
Appellee,
v.
ABBOTT LABORATORIES,
Defendant/Counterclaimant-
Appellant,
and
ASTELLAS PHARMA, INC.,
Defendant/Counterclaimant-
Appellant.
Appeals from the United States District Court for the Northern District of Illinois in case
no. 07-CV-1721, Judge Wayne R. Andersen and the United States District Court for the
Eastern District of Virginia in case no 3:06-CV-400, Judge Robert E. Payne.
LOURIE, Circuit Judge, dissenting from en banc Section III. A. 2.
I respectfully dissent from the court’s en banc holding in Section III. A. 2 that
product-by-process claims always require use of the recited process in order to be
infringed.
I agree that there is substantial Supreme Court precedent that holds that product-
by-process claims require use of the recited process for there to be infringement.
However, many of those cases applied overly broad language to fact situations
involving old products or used vague language that makes it difficult to determine
2007-1400, -1446 2
whether the products were old or new. Clearly, however, when a product is old, a
product-by-process claim cannot be interpreted as a claim to the product made by any
means. The product is old and unpatentable per se. BASF in fact involved an old
product. See Cochrane v. Badische Anilin & Soda Fabrik, 111 U.S. 293, 311 (1884) (“It
was an old article.”).
There is arguably a different situation that should apply to chemical-biological
products today than to mechanical products of more than a century ago. When a
product is new and the inventor claims it by a process of preparation, I fail to see why
the product-by-process claim should not be interpreted as a product claim that can be
infringed even when the product is made by means other than that recited in the claim.
Supreme Court precedent dealing with old products, while utilizing broad language,
does not foreclose that possibility. The Court years ago did not have occasion to
consider today’s innovations or decide whether a distinction should be made between a
new chemical-biological product and an old product made by a new process.
And there may be differing results depending upon the exact wording of a claim
at issue. For example, a claim reading “when made by” might only be infringed when
the recited process is used by the accused, as it is situational. On the other hand, a
claim reading “obtainable by” refers to capability, so it might not require use of the
process to infringe. “Obtained by” is ambiguous. Bright lines have their uses, but
judging should take account of differing circumstances. In addition, of course, in order
to sustain any claim for infringement, a patent owner must prove that an accused
product is the same as that covered by an asserted claim. If the reason a product was
claimed by its process was that its structure was unknown, then, if, at the time
2007-1400, -1446 3
infringement is asserted, there still is no means to ascertain structurally whether the
accused product is the same as that claimed, the infringement claim fails. However,
that should not mean that a new product claimed by a process of preparation cannot
ever be infringed when made by another process.
It may be that with today’s analytical techniques there is little need for product-
by-process claims. After all, claim 1 of the Abbott patent is a claim to a compound, not
only by name, but also by certain of its characteristics. A claim to a product defined by
its characteristics or properties surely is a proper claim.
However, product-by-process issues still seem to come before us and I would
make a distinction between old products and new products in interpreting product-by-
process claims. Accordingly, I respectfully dissent from the court’s en banc holding.
2007-1400, -1446 4