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General Statements in Specification Describing Improvement over Prior Art Did Not Act as Disclaimer

December 29, 2006

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Last Month at the Federal Circuit - January 2007

Judges: Lourie (dissenting), Dyk, Prost (author)

[Appealed from: D. Ariz., Judge Collins]

In Ventana Medical Systems, Inc. v. BioGenex Laboratories, Inc., No. 06-1074 (Fed. Cir. Dec. 29, 2006), the Federal Circuit vacated a judgment of noninfringement due to the district court’s error in claim construction.

U.S. Patent No. 6,352,861 (“the ’861 patent”) relates to automated apparatuses and methods used to perform a variety of biological assays. It stems from the same patent application as six other patents assigned to Ventana Medical Systems, Inc. (“Ventana”), all of which share a common specification. These patents each claim various features and methods related to the common specification. The claims of the ’861 patent relate to automatic dispensing systems that employ bar codelabeled reagent containers and/or slides.

BioGenex Laboratories, Inc. (“BioGenex”) manufactures and sells automated staining devices. Ventana filed suit against BioGenex alleging infringement of various claims of the ’861 patent. After the district court construed the claim term “dispensing” and other terms, Ventana stipulated to a judgment of noninfringement.

On appeal, the sole issue was the proper construction of "dispensing” in the asserted claims. The district court’s narrow construction required “direct dispensing,” which meant that the “reagent is dispensed directly from the reagent container” onto the slide, without the use of an intermediate transport. Moreover, the district court held that the inventors disclaimed the “sip and spit” method of dispensing, which utilized an intermediate transport, during the prosecution of an ancestor application.

The Federal Circuit agreed with Ventana that nothing in the record suggested such a narrow construction of “dispensing.” Specifically, the claims themselves did not contain language that could be read to limit the term “dispensing” to “direct dispensing.” Notably, BioGenex agreed at oral argument that the word “onto” in the claims did not exclude the “sip and spit” method of dispensing from the ordinary meaning of dispensing. Nor did the Federal Circuit find anything in the specification to justify a narrow construction.

While the Federal Circuit has held that the specification may, in some cases, reveal an intentional disclaimer of claim scope, this was not such a case. BioGenex pointed only to general statements by the inventors relating to improvement upon prior art. The Federal Circuit held that “[s]uch general statements, without more, will not be interpreted to disclaim every feature of every prior art device.” Slip op. at 10. Moreover, the fact that the specification discloses embodiments relating to direct dispensing did not mean that the method claims at issue were limited to the disclosed embodiments. In addition, each claim does not cover every feature disclosed in the specification, so it is improper to limit the claim to other, unclaimed features. Merely because the preferred embodiments contain a “direct dispensing” feature did not mean that the inventors were required to claim this feature in the ’861 patent.

Further, BioGenex raised the doctrine of prosecution disclaimer, but the Court explained that this doctrine does not generally apply when the claim term in the descendant patent uses different language. In this case, the claim language at issue did not mirror the allegedly disclaiming statements in the prosecution of an ancestor of the ’861 patent. Therefore, that alleged disclaimer did not apply to the claims of the ’861 patent. The prosecution history of the ’861 patent also supported a broad construction of “dispensing.” Moreover, the prosecution histories of later-issued patents did not inform the proper construction of “dispensing” in the ’861 patent because, like the ancestors of the ’861 patent, the language used in the later-issued patents was not identical to the claim language in the ’861 patent, and, as such, was not relevant. Thus, due to the district court’s error in claim construction, the Federal Circuit vacated the judgment of noninfringement and remanded.

Judge Lourie dissented, focusing instead on the specification for a narrow reading of “dispensing.” He pointed to the abstract, the summary of the invention, the detailed disclosure of the invention, and the figures, which he asserted broadly disclosed the overall invention of all seven patents that stem from the same specification and require “direct dispensing.”