In a precedential ruling that underscores the importance of consistency in claim drafting, the United States Court of Appeals for the Federal Circuit reversed a claim construction based on an improper interpretation of the term “composition.” This decision highlights the issues with  inferring limitations from provisional applications not present in the issued patent.

As brief background, FMC Corporation (“FMC”)  owns patents (U.S. Patent Nos. 9,107,416 and 9,596,857) for insecticidal and miticidal mixtures containing bifenthrin and cyano-pyrethroids. FMC sued Sharda USA, LLC (“Sharda”) for infringement of its patents based on Sharda’s product, WINNER, which also contains bifenthrin as well as zeta-cypermethrin, a cyano-pyrethroid. 

The district court had construed “composition” to mean “stable composition,” relying on disclosures from a provisional application and a related patent that emphasized the composition’s stability. The district court relied heavily on statements about the physical stability of the compositions found in U.S. Provisional Application No. 60/752,979. The provisional application discussed the challenges of achieving physical stability in insecticidal compositions, emphasizing the importance of stability for effectiveness. The district court also considered the disclosure in U.S. Patent No. 8,153,145, a separate patent owned by FMC that claimed the benefit of the same provisional application. This patent included explicit references to the “physical stability” of the compositions.

The Federal Circuit found the common specification of the asserted patents did not contain any references to “stability” that were present in the provisional application but omitted in the issued patents. The court held that the district court erred by reading a stability limitation into the term “composition” and held that “composition” should be given its plain and ordinary meaning.

Regarding Sharda’s invalidity defenses based on anticipation and obviousness, the Federal Circuit found that the district court’s erroneous claim construction influenced its anticipation and obviousness analyses. The court emphasized that the effect of unexpected results, a secondary consideration in obviousness, requires considering the patent challenger’s prima facie case, which was affected by the incorrect claim construction. 

The Federal Circuit vacated the district court’s preliminary injunction and remanded the case, emphasizing the importance of correct claim construction in patent infringement cases.

Key Takeaways:

1. Consistency in Specification and Claims: Ensure that the specification supports the claims. When drafting applications at the provisional and non-provisional stages, maintain consistency between the provisional application and the final patent application to avoid potential claim construction issues.
2. Clear Definitions and Terminology: Define key terms clearly within the specification. Clear definitions can avoid ambiguity in claim interpretation. 
3. Avoid Unnecessary Limitations: Avoid including limitations unless they are essential to the invention, as they may restrict the scope of the claims. In this case, the court found that the district court improperly imposed a stability requirement that was not present in the issued patents. 
4. Consider Prosecution History: Changes made to the applications or claims during prosecution will impact claim interpretation. In this case, the court emphasized the significance of modifications made between the provisional application and the issued patents.