A couple of cases from the Federal Circuit this week suggest (to me anyway) that the court has no intention of relinquishing any real power any time soon. The march toward total control over the outcome of patent cases thus continues.

In Astrazeneca AB, et al. v. Mutual Pharmaceutical Company, Inc. the Federal Circuit once again relies on features of the preferred embodiment to find limitations that don’t actually appear in the claims. In Laboratory Corporation of America Holdings, et al. v. Chiron Corporation, the court considers a narrow procedural issue and concludes that it has the power to decide questions that actually affect the outcome of patent cases. The net result is to consolidate the power of the Federal Circuit to determine the final outcome in patent cases with little, if any, say from others.

In Astrazeneca the question was the meaning of “solubilizer.” The parties agreed that people skilled in the art would understand “solubilizer” to include surfactants as well as other agents. The specification, however, disclosed only surfactants as the preferred form of solubilizer. The accused infringer used a solubilizer that was not a surfactant and argued that the claims were limited to surfactants only – even though “surfactant” appeared nowhere in the claims. The district court disagreed that the claims were so limited and found infringement. The Federal Circuit reversed holding that the specification limited the invention to surfactants only, even though those skilled in the art understood “solubilizer” (i.e., the word actually appearing in the claims) to include other agents as well. The Federal Circuit remanded the case with instructions to enter a finding of non-infringement, thereby effectively ending the patent owner’s case.

To tell the truth, I’m not sure where I come out on this case. The specification does include statements that, with hindsight, might be viewed as limiting “solubilizers” to “surfactants.” However, these statements do not rise to the type of “clear” and “unequivocal” disavowal the Federal Circuit pays lip service to being required. More importantly, the inventors and their lawyer used the word “solubilizer” – not “surfactant” – in their claims. “Solubilizer” has a clear and definite meaning to those skilled in the art, and it can be safely presumed that this is what the inventors meant when they used that word. (As an electrical man, not a chemist, I am taking it on faith that this is the case.) If they had meant “surfactant” or a “surfactant based solubilizer,” presumably they would have said so in their claims. They didn’t. They used the broader term instead. Nevertheless, the Federal Circuit basically said, “we don’t care what you said, this is what you meant.”

As lawyers and supposedly educated people, what are we supposed to do? When we use a word, particularly in a claim, do we also need to say, “and I really mean it”? The better approach is to assume that when inventors and lawyers use a word, they mean it. And if they don’t mean it, they better put in a clear and unambiguous statement to that effect. (In fact, that’s my understanding of what current Federal Circuit law requires – at least to the extent it’s been expressed by the court). The problem comes in the application. The problem is that, in far too many cases, the Federal Circuit does not rely on clear, unambiguous statements as to what is or is not meant by the inventor. Instead the court seizes on statements that (to me anyway) do not look like knowing and intentional waivers or “disavowals” of important rights. In Astrazeneca the court found the supposedly limiting statements in the “Background” section of the specification and in descriptions of certain preferred embodiments. In fact, the decision in Astrazeneca suggests that the outcome might have been different had the patent said “A solubilizer suitable for the preparations…” instead of “The solubilizer suitable for the preparations….” This seems like hair splitting of the worst kind. We are supposed to believe that in describing the preferred embodiment, the inventors and their counsel carefully considered the implications of using “the” instead of “a” while at the same time ignoring the different meanings of “solubilizer” and “surfactant” as used in the claims? That I have a tough time doing.

The lesson to be learned here, I think, is to be VERY careful with gratuitous statements made in a patent. Regardless of what the Federal Circuit holds, I’ll bet that nine times out of ten the inventors DID NOT intend to limit their inventions and that the “clear disavowals” so apparent to the court are anything but.

As an aside, I once worked with a highly skilled and experienced colleague who had a unique approach to writing patent applications. The “Background” portion of his patent applications consisted solely of an identification of relevant art. The “Abstract” and “Summary of the Invention” portions consisted solely of the broadest claim rewritten with standard punctuation. The “detailed description” was based primarily on the claims and used similar terminology. It was maddening trying to figure out what the claims meant – a check of the specification revealed just more of the same. Needless to say, he never included statements to the effect that “the invention provides…” or “the invention includes….” “That’ll just get you into big trouble” he’d explain. At the time I thought he was crazy. After seeing how the law has developed, I now think he was just ahead of the curve.

As a further aside – and as a credit to the court – the Federal Circuit was at least big enough to note that, “The district court’s lengthy and careful opinions relied extensively on our recent case law, which is unfortunately complex and inconsistent.” (Uh, no kidding.) While that may be the understatement of the year, it’s refreshing to see the court acknowledge what many of us in the trenches have been thinking for quite some time.

In Laboratory Corporation of America, the issue was procedural and not particularly important in its own right. The question was, is an order barring parallel litigation an injunction subject to immediate appeal, or is it merely a procedural order that isn’t? Some circuits say it is while others say it is not. The issue comes up frequently in patent cases where the patent owner and accused infringer race to the courthouse to file parallel cases in different districts. Often, one of the cases is stayed by way of such an order.

Traditionally, the Federal Circuit adopts its own rules as to matters that are “unique” to patent law, and defers to the law of the regional circuit in which the lower district court sits as to matters that are not. In the Federal Circuit, orders staying parallel litigation are subject to immediate appeal. In the Third Circuit, where the order in question was issued, such orders are not. Perhaps not surprisingly, the Federal Circuit held in that its own law should apply. While that outcome is not troubling (in fact, I think it’s a good outcome) the court’s reasoning is suggestive. Even though – strictly speaking – the Third Circuit’s law was not unique to patent law and applied equally to all cases in that circuit, the Federal Circuit held that uniformity is needed when the issue comes up in patent cases. To do otherwise would mean that the results in a particular case might turn on where the case is filed rather than on its underlying merits.

Again, this is not an earth shaking decision. Its true importance lies in its suggestion that any issue that might affect the final outcome of a patent case is fair game for Federal Circuit second guessing. Anyone litigating patent cases would be wise to keep this thought firmly in mind and not rely too heavily on non-Federal Circuit precedent. (And you ought to be careful relying on Federal Circuit precedent too!)