Deleted Specification Portions Undermine Claim Construction

Written by:Jeremiah S. Helm, PhD. and Matthew J. Petersen

FMC Corp. v. Sharda USA, LLC

Before Moore, Chen, and Barnett.  Appeal from the Eastern District of Pennsylvania.

Summary: The district court erred by construing a claim term based on disclosures made in a provisional application and an unasserted patent in the same patent family.

FMC Corp. sued Sharda USA, LLC for infringement of two patents related to insecticide and moved for a preliminary injunction. The district court construed the claim term “composition” as extending only to physically stable compositions, as opposed to unstable compositions. The court based its reasoning on disclosures on stability found in a related provisional application and in an unasserted patent family member. The patents-in-suit, however, removed the references to “stable,” “stability,” and variations thereof. The district court rejected Sharda’s invalidity defenses based on its construction of “composition” and ultimately granted a preliminary injunction. Sharda appealed and argued that the district court’s construction of “composition” was erroneous because it improperly limited the scope of the claim to just stable compositions.

The Federal Circuit agreed with Sharda and vacated the district court’s injunction order. The Federal Circuit focused on the differences between the disclosure of the patents-at-issue and the respective disclosures of the provisional application and the unasserted related patent. Regarding the provisional, the Federal Circuit reasoned that FMC chose to delete the disclosure pertaining to stability when drafting its asserted patent specification. The Federal Circuit explained that a skilled artisan “would find that evolution meaningful.” Accordingly, the prosecution history demonstrated that a skilled artisan would not have understood the claimed composition to be limited to only stable formulations. Regarding the related patent, the Federal Circuit noted that it typically applies a consistent meaning to claim terms within a patent family. But, the court explained, that presumption does not apply when, as here, the applicant materially alters the specification of some family members.

The Federal Circuit vacated the injunction order and remanded so that the district court could reconsider its validity analysis under the correct claim construction.

Editor: Sean Murray