Sun Pharmaceutical Industries, Ltd. v. Eli Lilly and Company (Fed. Cir. Jul. 28, 2010)

In this case, the Federal Circuit held that the "the relevant specification for claim construction purposes is that of the issued patent, not an early version of the specification that may have been substantially altered throughout prosecution."

The district court found Eli Lilly's '826 patent invalid for obviousness-type double patenting over its '614 patent.  Both patents related to the drug gemcitabine.  The '614 patent claimed gemcitabine as well as a method of using gemcitabine for treating viral infections.  The '826 patent claimed a method of using gemcitabine for treating cancer.

The specification of the original application that resulted in the '614 patent described only gemcitabine's utility for antiviral purposes.  During prosecution, a continuation-in-part was filed that resulted in the '614 patent and added a description of gemcitabine's anticancer utility to the specification, though the '614 patent did not claim a method of using gemcitabine for treating cancer.  This continuation-in-part was filed the same day as the application that ultimately issued as the '826 patent.

While a "claim to a method of using a composition is not patentably distinct from an earlier claim to the identical composition in a patent disclosing the identical use", Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d 1353, 1363 (Fed. Cir. 2008), Eli Lilly argued that the district court used the wrong specification in construing the '614 patent claim relating to the gemcitabine compound.  Eli Lilly asserted that the court should have used the earlier-filed application (i.e. the one that only described gemcitabine's utility for antiviral purposes, not for cancer purposes) instead of the specification of the ultimately issued patent, as Phillips stated that claim terms should be given their ordinary and customary meaning "the term would have to a person of ordinary skill in the art in question at the time of invention, i.e., as of the effective date of the patent application." 

The Federal Circuit disagreed, stating that "our claim construction precedent establishes that claim terms must be construed in light of the entire issued patent … the relevant specification for claim construction purposes is that of the issued patent, not an early version of the specification that may have been substantially altered throughout prosecution."  The court therefore affirmed the finding of obviousness-type double patenting.

Haemonetics Corp. v. Baxter Healthcare Corp. (Fed. Cir. Jun. 2, 2010)

In this case, the Federal Circuit held that the district court erroneously gave the claim term "centrifugal unit" two different constructions for different instances of the term in a single claim and remanded the proceedings back to the district court.

The patent at issue related to a compact blood centrifuge device for separating and collecting components in a liquid such as blood.  In the asserted claim, the claim preamble stated "A centrifugal unit comprising a centrifugal component and a plurality of tubes" and the term "the centrifugal unit" also appeared twice in the body of the claim.  The district court construed the term "centrifugal unit", as found in the preamble, as comprising both the vessel and the tubing but also construed the same term, as found in the claim body, as comprising only the vessel.  The district court had reasoned that given certain dimensional limitations in the claim body, giving the term, as found in the claim body, a construction that includes the tubing "would yield an absurdity."

The Federal Circuit disagreed, stating that claim construction occurs "with an eye toward giving effect to all [] terms … even if it renders the claims inoperable or invalid."  In this particular case, the Federal Circuit found that the preamble language of the claim did not merely state the intended use but instead was controlling and defined "centrifugal unit" as comprising "two structural components: a centrifugal component and a plurality of tubes."  While the court acknowledged that an error may have occurred in drafting this claim, "it is what the patentee claimed and what the public is entitled to rely on."  The court went on to state that "we do not redraft claims to contradict their plain language in order to avoid a nonsensical result."  The Federal Circuit therefore concluded that the term "consistently means a vessel and a plurality of tubes."

Honeywell Int'l, Inc. v. United States (Fed. Cir. May 25, 2010)

In this case, the Federal Circuit affirmed the claim construction from the Court of Federal Claims but also found that the Court of Federal Claims deviated from its claim construction in its obviousness analysis.

The patent at issue related to passive night vision goggles that are compatible with a full color display when both are used in an aircraft cockpit.  During claim construction, the Court of Federal Claims construed the term "local color display" as requiring the emission of perceptible red light.  The Federal Circuit agreed, stating "The claimed invention addressed the need for red warning lights in NVG-compatible cockpits, and it is inconceivable that an aircraft would use warning lights that are not perceptible to the crew. In other words, there would be no point, in the context of this invention, to pass a narrowband of red light that cannot be seen."

The Federal Circuit also found that the Court of Federal Claims "deviated" from this claim construction in its obviousness analysis when the court stated that is claim construction did not require the perception of red and instead required only that at lease one color be perceptible.

The government also contended that the patent claim was indefinite, arguing that the construction of "local color display" included the word "perceptible" which is "a subjective standard amenable to two different interpretations - color and brightness."  The Federal Circuit disagreed, stating that "We do not perceive any difficulty or confusion in determining what is a local color display and what is not a local color display in terms of the '914 patent. That is, local color displays are displays that emit visible, color light."   

Randall May Int'l, Inc. v. DEG Music Prods., Inc. (Fed. Cir. May 11, 2010) (nonprecedential)

In this case the Federal Circuit held that the district court's claim construction was in error where the construction read out an "adjustability" limitation for one element of the claims.

The patent at issue related to a shoulder-mounted harness for holding a percussion instrument, typically a drum, upon the torso of a musician in a marching band.  One limitation of the claims at issue was directed to the claimed harness "having changeable or adjustable shoulder supporting members."  The district court's claim construction of this term addressed the changeability of the shoulder supporting members but did not address the adjustability of the members.

The Federal Circuit, in an opinion by Chief Judge Michel, reiterated that claim construction is reviewed de novo however "in reviewing a district court's claim construction, this court takes into account the views of the trial judge … [t]hough we review those views and the record de novo, 'common sense dictates that the trial judge's view will carry weight.'" (internal citations omitted).  In this particular case, "the district court provided no explanation of the reasoning behind its claim construction."

The Court found that the claim language teaches that the shoulder supporting members are changeable or adjustable as "these terms immediately precede the term 'shoulder supporting members' and the only reasonable construction, therefore, is that these shoulder supporting members themselves, rather than the entire assembly, should be adjustable or changeable."  Further, all embodiments described in the specification taught that the shoulder straps are changeable, adjustable, or both.  The Court concluded that "[t]he district court's elision of the claim limitation (supported by the specification) that the shoulder supporting members are either changeable or adjustable is legal error because all the limitation in a claim must be considered meaningful."