Claim Construction Deconstructed-Another Layer of Diverging Standards

The America Invents Act (AIA) implemented publish-grant proceedings in the Patent Trial and Appeal Board (PTAB) instead of lawsuit at district courts within the federal circuit. Since its institution, much focus continues to be put on the various standards of claim construction utilized by the PTAB and also the district court when construing patents at issue. Whereas the PTAB would be to evaluate claims underneath the largest reasonable interpretation considering the specs with no underlying presumption of validity, the district courts will be to construe claims considering the plain and ordinary meaning using the presumption that the asserted claim applies. Regardless of this chance for diverging claim buildings, a spot for resolution from the discrepancies continued to be in the Federal Circuit, which, until lately, reviewed all claim construction issues de novo. However, on Jan. 20, 2015, the final Court’s holding in Teva Pharm. USA, Corporation. v. Sandoz, Corporation. added another degree of intricacy and elevated the amount of unpredictability for practitioners trying to meaningfully construe patent claims.

At issue in Teva is whether or not the saying “molecular weight” satisfies the definiteness requirement under 35 U.S.C. § 112, second paragraph. Throughout the prosecution from the patent at issue, Teva transformed a rejection under 35 U.S.C. § 112 alleging the word is indefinite by quarrelling the skilled artisan would recognize the word as meaning a typical molecular weight (Mw). However, throughout the prosecution of the different but related patent, Teva contended the skilled artisan would recognize the word as meaning peak molecular weight (MP). During lawsuit, Teva provided, inter alia, expert testimony proclaiming that the skilled artisan, studying the specs from the patent at issue, would notice that the meaning provided during its prosecution was correct, the definition provided throughout the prosecution from the related situation was incorrect, and for that reason an ordinarily skilled artisan wouldn’t depend around the latter. Sandoz contended, and provided expert testimony, the term molecular weight may mean either Mw or Mp, and therefore, the skilled artisan wouldn’t have the ability to for sure see whether subject material fell inside the scope from the claims. Depending around the expert testimony supplied by Teva, and supposing the validity from the patent at issue, the district court found the word definite. On appeal, the government Circuit construed the word de novo, and overturned the district court’s finding.

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