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Obvious Error in Prosecution Statement Not Held Against Patentee

May 14, 2001

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Last Month at the Federal Circuit - June 2001

Judges: Newman (author), Mayer, and Schall

In Biotec Biologische Naturverpackungen GmbH & Co. KG v. Biocorp, Inc., No. 99-1578 (Fed. Cir. May 14, 2001), the Federal Circuit affirmed a district court’s claim construction and, accordingly, a jury’s verdict of infringement. The Court also affirmed SJ that the patents were not invalid. Biotec Biologische Naturverpackungen GmbH & Co. KG (“Biotec”) charged Biocorp, Inc. and Novamont, S.p.A. (collectively “Biocorp”) with infringement and inducing infringement of U.S. Patent Nos. 5,362,777 and 5,280,055. Biotec asserted that its patents, which cover substantially water-free thermoplastically processable starch (“TPS”) and methods of making it, were infringed by Biocorp’s product, which was manufactured in Italy and imported into the United States.

The district court, on SJ, found the patents not invalid and enforceable. In doing so, it construed the claim term “substantially water free” to mean “a total water content of less than 5%.” On appeal, Biocorp argued that, in view of the prosecution history, “substantially water free” means “substantially less than 5%.” Biocorp relied on statements made in the prosecution history that discuss water contents of 1% and 3% and drawbacks associated with compositions having more than 3% total water. The Federal Circuit agreed that, although the term “substantially water free” is not defined in the specification, the prosecution history clearly shows that the term has the meaning found by the district court. The Court noted that the Applicant had filed two declarations in response to a rejection over the lack of a definition in the specification, both of which stated that those of skill in the art would understand “substantially water free” to mean “less than 5%.” Accordingly, the Federal Circuit affirmed the district court’s construction.

The district court had also determined that the crystalline content related to the content of only starch crystals in the composition, not the content of all crystals in the composition. On appeal, Biocorp argued that the district court had erred in not including all crystals under this claim term. The Federal Circuit disagreed, holding that the district court had heard reliable and relevant evidence on the issue.

Concerning infringement, Biocorp argued that its product does not infringe because it is not made using substantially water-free starch as a starting material and during prosecution, Biotec had stated that its process uses substantially water-free starch as the starting material. Biotec asserted that the statement made during prosecution was an obvious error on the part of its agent that one skilled in the art would quickly recognize. Biocorp countered that, regardless of whether the statement was made in error, the statement should be held against the patentee.

The Federal Circuit ruled that an error in the prosecution record must be viewed as errors in documents in general; that is, would it have been apparent to the interested reader that an error was made, such that it would be unfair to enforce the error? Finding that the error was apparent, the Court refused to restrict the claims as argued by Biocorp. Biocorp also argued that, although its TPS contains less than 5% water when produced, by the time it is imported into the United States, it contains more than 5% water and, thus, does not infringe. The Federal Circuit, reviewing the evidence presented at trial, rejected Biocorp’s argument, stating that there was substantial evidence to support the findings of the jury.

On cross appeal, Biotec argued that the failure of Biocorp to obtain an opinion of counsel upon being accused of infringement should result in a finding that the infringement was willful. The Federal Circuit disagreed, however, citing the reliance of Biocorp’s CEO on the noninfringement position of an employee who was a worldrenowned expert in the art, together with the closeness of several issues concerning claim construction and infringement.