Abbott Gmbh & Co. v. Yeda Research and Development

• Citation: 516 F.Supp.2d 1
• Decision Date: 28 June 2007
• Docket Number: Civil Action No. 00-1720 (RMU).
• Court: United States District Courts. United States District Court (Columbia)
• Parties: ABBOTT GMBH & CO. KG, Plaintiff, v. YEDA RESEARCH AND DEVELOPMENT CO., LTD., Defendant.

Page 1

516 F.Supp.2d 1

ABBOTT GMBH & CO. KG, Plaintiff, v. YEDA RESEARCH AND DEVELOPMENT CO., LTD., Defendant.

Civil Action No. 00-1720 (RMU).

United States District Court, District of Columbia.

June 28, 2007.

George Aloysius Hovanec, Jr., Buchanan Ingersoll, PC, R. Danny Huntington, Burns, Doane, Swecker & Mathis, LLP, Alexandria, VA, for Plaintiff.

Roger Lowen Browdy, Ronni S. Jillions, Browdy & Neimark, P.L.L.C., Washington, DC, Alexander E. Gasser, Oblon, Spivak, McClelland, Maier & Newstadt, PC., Alexandria, VA, Kevin M. Flowers, Matthew C. Nielsen, Michael F. Borun, Nabeela McMillian, Marshall, Gerstein & Borun LLP, Chicago, IL, for Defendant.

MEMORANDUM OPINION

RICARDO M. URBINA, District Judge.

I. INTRODUCTION

The plaintiff, Abbott GmbH & Co. KG, is the owner of U.S. Patent No. 5,344,915, also known as the LeMaire patent. Pursuant to 35 U.S.C. § 146, the plaintiff seeks to set aside decisions made by the Board of Patent Appeals and Interferences of the United States. Trademark Office (the "Board") holding that the claims of the LeMaire patent are unpatentable and that therefore any interference claims are void. This matter is before the court on the issue of claim construction. The primary issue of this claim construction is whether the LeMaire patent covers a single protein, TBP-II, or if the LeMaire patent covers the TBP-II protein and all of its naturally occurring muteins. Based on the intrinsic record, the court concludes that the LeMaire patent covers only one protein, TBP-II, described in the plaintiff's patent application. That is, the patent includes neither man-made nor naturally occurring muteins. For this reason, the court adopts the plaintiffs claim interpretation.

II. BACKGROUND

A. Proteins

Generally speaking, proteins are long chains of amino acids like beads on a string. See In re O'Farrell, 853 F.2d 894, 895-99 (Fed.Cir.1988). "Any sequence of amino acids of a significant length within a given protein will be unique to that protein." Pl.'s Claim Construction Br. ("Pl.'s Br." at 4). The chain begins at the N-terminus, the location of an amino group to which all other amino acids are sequentially attached. Id. The long chains of amino acids fold on themselves to form an often complex shape determined by the interplay of the amino acids in the chain. Both the sequence of amino acids and the folded structure are unique to each protein. Because a protein can be made up of a very long sequence of amino acids, scientists identify each protein by listing the sequence of amino acids beginning at the N-terminus. Id. The number of amino acids necessary to uniquely identify a protein varies. Id. (stating that amino acid sequences of varying lengths can be characteristic of a single protein). For example, the TBP-II protein is described in the patent by listing 22 of the amino acids located at the N-terminus.¹ Id. at 7. The sole requirement in identifying a protein by a sequence of amino acids in a patent is that "one skilled in the art" be able to recreate the protein without experimentation. In re Fisher, 57 C.C.P.A. 1099, 427 F.2d 833, 836 (C.C.P.A.1970); see generally In re O'Farrell, 853 F.2d at 895-99.

B. The LeMarie Patent

On May 4, 1990, Hans-Georg LeMaire, Heinz Hillen, Achim Moeller, Lothar Daum, Thomas Doerper, and Thomas Subkowski filed an international patent application, PCT/EP90/00719, for a protein, called the TBP-II protein, that is isolated from the urine of individuals with a fever and from the ascites fluid of individuals with ovarian carcinomas. Mem. Op. (June 13, 2005) ("Mem.Op.") at 1. After the patent application entered the United States, on September 6, 1994, the Patent and Trademark Office ("the PTO") issued the LeMaire patent to BASF, a previous owner of the patent. Id. at 2. The plaintiff is now the owner of this patent.

Seeking to patent the same protein, the defendant, Yeda Research and Development, challenged the plaintiff's patent in an interference proceeding before the Board. Id. During the interference proceeding, the defendant argued that the LeMaire patent was invalid because it was described in an article,² in violation of 35 U.S.C. § 102(b).³ Id. In response, the plaintiff argued that it had patented the protein in Germany before the article was published and was therefore entitled to the benefit of the earlier filing dates under 35 U.S.C. § 119.⁴ Id. The Board held that the LeMaire claims were unpatentable because "the party LeMaire [did] not sustain[] its burden of establishing, by a preponderance of the evidence, that their earlier filed German applications satisf[ied] the first paragraph description requirement of 35 U.S.C. § 112." Def.'s Claim Construction Br. ("Def.'s Br.") Ex. C at 8. In other words, the Board ruled that the German patent did not sufficiently describe the invention in the LeMaire patent and that the plaintiff's patent was invalid because it was described in the Engelmann article. The plaintiff now appeals the Board's decision to this court under 35 U.S.C. § 146.⁵

C. Procedural Background

Both parties filed claim construction briefs to propose how the court should interpret the claims of the LeMaire Patent. Because the parties represented to the court that it could Construe the claims without expert testimony, the court vacated the scheduled Markman hearing in favor of deciding on the paper record.⁶ The court now turns to the parties' claim construction briefs.

III. ANALYSIS

A. Legal Standard for Claim Construction

In claim construction cases, the court must construe the often laconic statements of a patent claim. Specifically, the court's task is to "understand and explain, but not to change, the scope of the claims." Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1580 (Fed.Cir. 1991). Claim construction is typically the first step in patent infringement litigation. Markman v. Westview Instruments, Inc., 517 U.S. 370, 385, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996).

Claim interpretation is a question of law. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996). When construing claims, "the analytical focus must begin and remain centered on the language of the claims themselves, for it is that language that the patentee chose to use to particularly point out and distinctly claim the subject matter which the patentee regards as his invention." Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1336 (Fed.Cir.2001) (internal quotations omitted) (citing 35 U.S.C. § 112, ¶ 2). Because the patent must be defined precisely to give adequate notice to the public of the invention, "it is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms." Id. (quoting White v. Dunbar, 119 U.S. 47, 52, 7 S.Ct. 72, 30 L.Ed. 303 (1886)).

The court may consider both intrinsic and extrinsic evidence in construing the meaning of a patent's claims. Zodiac Pool Care, Inc. v. Hoffinger Indus., Inc., 206 F.3d 1408, 1414 (Fed.Cir.2000). "Intrinsic evidence consists of the claim itself, the specification, and any prosecution history." Id. In contrast, the "extrinsic evidence includes expert testimony, investor testimony, dictionaries, treatsies, and prior art cited in the prosecution history." Id. "The court turns to the extrinsic evidence only when the intrinsic evidence is insufficient to establish the clear meaning of the asserted claim." Id. (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582-84 (Fed.Cir.1996)).

1. Intrinsic Evidence

In analyzing intrinsic evidence, courts generally give the words of a patent claim their "ordinary and customary meaning" as would be understood by a person of ordinary skill in the art in question at the time of the invention.⁷ Vitronics, 90 F.3d at 1582; Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.Cir.2005); see also Ferguson Beauregard/Logic Controls v. Mega Sys., LLC, 350 F.3d 1327, 1338 (Fed.Cir. 2003). Although the court gives words their ordinary meaning by default, "a patentee may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning, as long as the special definition of the term is clearly stated in the patent specification or file history." Vitronics, 90 F.3d at 1582.

"The claims, of course, do not stand alone. Rather, they are part of a fully integrated instrument, consisting principally of a specification⁸ that concludes with the claims." Phillips, 415 F.3d at 1315 (quoting Markman, 52 F.3d at 978) (internal quotations omitted). The specification is the "single best guide to the meaning of a disputed term." Vitronics, 90 F.3d at 1582. Thus, it is "always highly relevant to the claim construction analysis" and usually dispositive. Id.

If in evidence, the prosecution history is the final piece of intrinsic evidence which the court may consider. The prosecution history includes the complete record of the proceedings before the Patent and Trademark Office, 35 U.S.C. § 146, and details "whether the applicant clearly and unambiguously disclaimed or disavowed any interpretation during prosecution in order to obtain a claim allowance." Middleton, Inc. v. Minn. Mining & Mfg. Co., 311 F.3d 1384, 1388 (Fed.Cir. 2002) (quoting Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed.Cir. 1985)). This history may reveal instances where "the patentee distinguished [a] term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a particular embodiment as important to the invention." CCS Fitness Inc. v. Brunswick Corp., 288 F.3d 1359, 1366-67 (Fed.Cir.2002) (citations omitted). Accordingly, once a patentee disclaims an interpretation during patent prosecution; she cannot reclaim it during claim interpretation. Teleflex, Inc. v. Ficosa North Am. Corp., 299 F.3d 1313, 1326. Likewise, once a patent applicant disclaims...