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Unambiguous Term Given Its Ordinary Meaning

October 31, 2002

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Last Month at the Federal Circuit - November 2002

Judges: Dyk (author), Rader, and Bryson

In Inverness Medical Switzerland GmbH v. Princeton Biomeditech Corp., No. 01-1188 (Fed. Cir. Oct. 31, 2002), the Federal Circuit vacated the district court’s judgment of noninfringement of U.S. Patent Nos. 5,622,871; 5,602,040; and 5,656,503, and remanded the case for further proceedings. The Court held that the phrase “mobility . . . is facilitated” must be given its ordinary meaning of the capacity to make movement easier at any stage. Under this claim construction, issues of material fact remained regarding infringement.

Unipath Diagnostics, Inc. (“Unipath”) is the assignee of the three patents, which relate to a pregnancy-testing device. Unipath initiated an action against Princeton Biomeditech Corporation (“Princeton”) for infringement of the claims of the three patents. Princeton later filed a motion for SJ of noninfringement, which was initially denied. On reconsideration, the district court granted Princeton’s SJ motion, finding that the accused product did not infringe the claims because it did not facilitate mobility at the point of release, as claimed.

The Federal Circuit determined that the sole issue of claim construction concerned the proper interpretation of the phrase “mobility of said labeled reagent within said test strip is facilitated by . . . a material comprising sugar, in an amount effective to reduce interaction between said test strip and said labeled reagent.” Unipath asserted that mobility need only be facilitated either at the time of release or during the subsequent transit of the reagent, i.e., at some time during the operation. The claim construction adopted by the district court, however, required the sugar to help or improve the release of the labeled reagent from the test strip.

The Federal Circuit looked to the dictionary to determine the ordinary meaning of the word “mobility.” Finding multiple definitions, the Court compared these definitions to the specification and determined that the word “mobility” means “the capacity or facility of movement.” Based on this meaning, the Federal Circuit determined that the ordinary meaning of the phrase “mobility . . . is facilitated” is properly interpreted as the capacity to make movement easier. The claim language relied upon by the district court was not directed to the recited facilitation of mobility in the presence of sugar and, therefore, did not limit the meaning of “mobility.” Moreover, the construction of “mobility” in the independent claims, as determined by the district court, was found to be wholly inconsistent with the use of the term in the dependent claims and the specification.

Looking at two particular instances in the prosecution history of the patents, the Federal Circuit found that neither the patentee nor the PTO interpreted the term “mobility” as meaning the same as “release.” Accordingly, the Court vacated the judgment of the district court and remanded the case for consideration in view of the revised claim construction.

In a related decision, Inverness Medical Switzerland GmbH v. Warner Lambert Co., No. 01-1147 (Fed. Cir. Oct. 31, 2002), the Federal Circuit again vacated a SJ of noninfringement on these same patents based on erroneous construction of other claim terms. The second issue of claim construction related to the proper interpretation of the phrases “said labeled reagent is dry on said test strip” and “drying said labeled reagent onto a portion of said test strip.” The district court construed the phrases to require disposition “in contact with the top or outer surface of said test strip.” On appeal, Unipath asserted that the phrases should be more broadly construed to include disposition of the labeled reagent within the test strip.

The Federal Circuit found that the district court had erred in its claim construction because the ordinary meaning of the terms was supported by dictionary definitions, the specification, and the prosecution history. Upon finding multiple dictionary definitions for the word “onto,” which has as its ordinary meaning two relevant alternatives, the Court determined that the word must be construed to encompass both alternatives. However, to confirm that the word encompasses both alternatives, the Court looked to the specification and the prosecution history to determine if only one of the multiple meanings was intended.

The specification was not so limiting, teaching only a preferred embodiment, not a restricted scope. Moreover, the Court was not convinced that the prosecution history foreclosed the broader dictionary definition that encompasses both surface and internal positions. For this reason, the Court held that the ordinary meaning of “on” and “onto” must control, wherein disposition of the labeled reagent “on” or “onto” the test strip means disposition as a surface layer or within the test strip.