In a recent order, issued shortly after the Markman hearing in Allergan USA, Inc. v. Aurobindo Pharma Ltd., C.A. No. 19-1727-RGA, Judge Andrews addressed the question of "how much weight should be assigned to a Patent Examiner's statement, in a Notice of Allowance, about the meaning of a claim."
He explained the background as follows:
During prosecution of the '291 Patent, Plaintiffs initially argued that the claimed percentage of mannitol, a well-known filler, should be calculated separately from the claimed percentage of filler. The Examiner disagreed, and, in his Notice of Allowance, indicated that the percentage of mannitol would be included in calculating the percentage of filler.
(emphasis added)
The plaintiffs/patentees urged the Court to ignore their initial statements and arguments, and instead adopt the Examiner's position. Judge Andrews declined to do so, explaining that "[t]he Examiner's interpretation is not controlling simply because the Examiner had the last word." Rather, "regardless of whether the Examiner agreed with Plaintiffs' initial interpretation of the claims, that initial interpretation is still relevant intrinsic evidence for claim construction."
He distinguished a Federal Circuit case that was focused on whether a patentee's statements could give rise to disclaimer that would bar a finding of infringement under the doctrine of equivalents because in that case "[c]laim construction was not in dispute."
Judge Andrews concluded that "filler" "should be given its plain and ordinary meaning and the percentage of mannitol . . . dlisclosed in the claims is a separate limitation that cannot be double counted," a finding consistent with the plaintiffs' initial statement during prosecution.
If you enjoyed this post, consider subscribing to receive free e-mail updates about new posts.
