May 22, 2017
Authored and Edited by Paula E. Miller; Thomas L. Irving
In Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350 (Fed. Cir. 2016), the CAFC affirmed the district court’s decision that a Markush group in which a list of resins was preceded by “consisting of” excluded unlisted resins, and reversed the decision regarding blends, holding that the intrinsic evidence demonstrated that the Markush group was open to blends because one listed resin was a sub-type of another listed resin. In Shire Dev., LLC v. Watson Pharms., Inc., 848 F.3d 981 (Fed. Cir. 2017), the CAFC held that Watson’s product did not infringe because a Markush group of compounds comprising an outer hydrophilic matrix was closed to the lipophilic magnesium stearate in the outer matrix of Watson’s product, reversing a district court judgement holding otherwise. Both cases illustrate the strong presumption that a claim term set off with ‘consisting of’ is closed to unrecited elements. Further discussion of Markush groups and these decisions can be found on Finnegan’s Prosecution First Blog.
Markush claims, claim construction, drugs, Food and Drug Administration (FDA), United States Court of Appeals for the Federal Circuit (CAFC)
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