Intervet America, Inc. v. Kee-Vet Laboratories, Inc.

• Decision Date: 06 October 1989
• Docket Number: KEE-VET,No. 89-1036,89-1036
• Citation: 887 F.2d 1050,12 USPQ2d 1474
• Parties: INTERVET AMERICA, INC., Plaintiff-Appellant, v.LABORATORIES, INC., Robert D. Keenum, and Keenum, Inc., Defendants-Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1050

887 F.2d 1050

12 U.S.P.Q.2d 1474

INTERVET AMERICA, INC., Plaintiff-Appellant, v. KEE-VET LABORATORIES, INC., Robert D. Keenum, and Keenum Inc., Defendants-Appellees.

No. 89-1036.

United States Court of Appeals Federal Circuit.

Oct. 6, 1989.

Herbert I. Cantor, Wegner & Bretschneider, Washington, D.C., argued, for plaintiff-appellant. With him on the brief were Barry E. Bretschneider, Harold C. Wegner and Mary Ann Capria, Washington, D.C.

Albert S. Anderson, Jones, Askew & Lunsford, Atlanta, Ga., argued, for defendants-appellees. With him on the brief was Stephen M. Schaetzel, Atlanta, Ga.

Before FRIEDMAN, RICH and MAYER, Circuit Judges.

RICH, Circuit Judge.

This appeal is from the September 28, 1988, judgment of the United States District Court for the Northern District of Georgia, Gainesville Division. Intervet America, Inc. (Intervet) sued Kee-Vet Laboratories, Inc., Robert D. Keenum, and Keenum, Inc. (Kee-Vet) for infringement of its patent No. 4,530,831 ('831 patent), entitled "Infectious Bursal Disease Vaccine." The district court held that Intervet failed to prove infringement and did not reach the question of validity of the patent. We reverse and remand.

I

A. Background

Intervet's patent claims a vaccine for a poultry disease called infectious bursal disease (IBD) and a method of making the vaccine. IBD particularly attacks chickens and its name derives from an organ in chickens called the "bursa" which is important in maintaining the immune system. If the bursa is damaged, as it may be by IBD, the chicken's ability to resist a host of As is usual with inventions of this type, the inventors deposited vaccine virus samples in the American Type Culture Collection (ATCC) in Rockville, Maryland, to satisfy the requirements of the law. Before any patent issued, a predecessor of Kee-Vet Labs., Inc., Agri-Bio Corporation, obtained some of the samples and used them to grow its own vaccine, which it called Bio-Burs I (pronounced "eye"). Pursuant to 9 CFR 114.9(d), Agri-Bio's United States Department of Agriculture production outline recited the history of the development of Bio-Burs I vaccine as follows:

diseases is diminished. Undiminished, IBD can cause great economic loss.

Twenty vials of bursal disease vaccine virus was [sic] obtained from ICB-clonevac D-78, serial lot No. 11-103 on November 3, 1982. Four sequential passages were made in C[hicken] E[mbryo] F[ibroblasts] by Agri-Bio Corp.

Kee-Vet Labs., Inc., subsequently purchased Agri-Bio's Bio-Burs I operation, and Agri-Bio's production license for Bio-Burs I was transferred to Kee-Vet which continued to make and sell Bio-Burs I, prompting Intervet's complaint for patent infringement.

A bench trial was held. The district judge limited his decision to the issue of infringement. He construed the claims, relying heavily on part of the patent prosecution history, and held that "Plaintiff's claims limit their vaccine to unattenuated viruses" and that "plaintiff's patent is limited to a single administration scheme." The judge made findings that Bio-Burs I is an attenuated virus and that it is not effective upon a single administration. For those reasons he held that Intervet had failed to prove infringement.

B. Claims

Intervet alleges infringement of claims 1, 4, 5, and 7. They read:

1. A live vaccine effective against Infectious Bursal Disease in poultry upon a single administration to birds at the usual age of vaccination comprising a live Infectious Bursal Disease virus belonging to the strain deposited at the ATCC under No. VR-2041.

4. A virus suspension containing the Infectious Bursal Disease virus deposited at the ATCC under no. VR-2041.

5. A lyophilized virus composition containing the Infectious Bursal Disease virus deposited at ATCC under no. VR-2041.

7. In a method for the preparation of a live vaccine that protects poultry against Infectious Bursal Disease virus which comprises:

a. growing an Infectious Bursal Disease virus on a culture medium selected from the group consisting of embryonated eggs, chicken embryo cells, a culture of bursal cells and newborn mice,

b. subsequently arresting the cultivated virus material, and

c. subjecting the material obtained from step b. to at least one of the following treatments:

i. clarifying by centrifugation and/or filtration;

ii. adding a stabilizing agent;

iii. putting the material in a vessel;

iv. freeze-drying,

the improvement comprising that the Infectious Bursal Disease virus grown in step a. is the virus of the strain deposited in the ATCC under No. VR-2041.

C. Contentions of the parties

Appellant Intervet alleges some ten issues on appeal which, upon analysis, all resolve into the legal question of claim interpretation by the trial court involving essentially only the two issues stated above: (1) are the claims asserted "limited to a single administration scheme" and (2) are the claims limited to vaccines made from unattenuated viruses?

Responding to the question whether the trial court erred in holding that the claims are limited in the two respects just stated, Kee-Vet argues, as it presumably did in the trial court considering the results it achieved there, that without reading these two limitations into the claims from the prosecution history the claims are "vague

                and ambiguous, or completely trivial."    It makes the argument that the form of the claims is comparable to a hypothetical claim reading "A seasoning composition for food comprising a material deposited at the public archives," which "needs interpretating because there is no recital of structure, functions, or properties of the material deposited."    On this basis it attempts to justify reading limitations into claims
                

D. Issues

Did the trial court err in construing all claims in suit to be limited to (a) a single administration scheme and (b) vaccines made from unattenuated viruses?

II

OPINION

A. Applicable Law

This appeal is from a judgment below holding the asserted claims 1, 4, 5, and 7 not infringed, given the trial judge's construction of those claims. We agree with Kee-Vet's statement of the law that interpreting the scope of claims is a question of law and that determining the issue of claim infringement is a question of fact, citing McGill v. John Zink Co., 736 F.2d 666, 671-72, 221 USPQ 944, 948 (Fed.Cir.), cert. denied, 469 U.S. 1037, 105 S.Ct. 514, 83 L.Ed.2d 404 (1984). As an issue of law, our review of claim construction is plenary. Corning Glass Works v. Sumitomo Electric U.S.A., Inc., 868 F.2d 1251, 1256, 9 USPQ2d 1962, 1965 (Fed.Cir.1989).

On the issue of claim construction, which takes into account the specification of the patent, the prosecution history, and the prior art, we find it necessary to cite only the section of this court's recent opinion in E.I. Du Pont De Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433, 7 USPQ2d 1129, 1131 (Fed.Cir.1988), designated "I.A. Claim Interpretation." Kee-Vet also cites this case but has apparently not taken adequate notice of that section's several times repeated statement to the effect that this court has consistently adhered to the proposition that courts cannot alter what the patentee has chosen to claim as his invention, that limitations appearing in the specification will not be read into claims, and that interpreting what is meant by a word in a claim "is not to be confused with adding an extraneous limitation appearing in the specification, which is improper." The court quoted with approval from Autogiro Co. of America v. United States, 384 F.2d 391, 395-96, 155 USPQ 697, 701 (Ct.Cl.1967), the statement that "No matter how great the temptations of fairness or policy making, courts do not rework claims. They only interpret them." The panel found it necessary in Du Pont to reverse the district court's interpretation of claims which read into them properties of a polymer which were not recited in the claims. We have to do the same here. We refer the lower court to this section of the Du Pont opinion for a complete and up-to-date exposition of this court's "consistent approach in interpreting claims." What it says is, a fortiori, applicable to the impropriety of injecting into claims limitations from the prosecution history. Ambiguity, undue breadth, vagueness, and triviality are matters which go to claim validity for failure to comply with 35 U.S.C. Sec. 112-p 2, not to interpretation or construction. We fully subscribe to the proposition that claims must be given the same construction when considering infringement as when considering validity.

B. The supposed single administration scheme limitation

The facts are simple, confusing, and presented the trial judge with a dilemma. He got out of it by making a seemingly logical choice. However, as a matter of well-established patent law, we must hold that the choice was legally wrong.

The facts are these. Responding to the second Patent Office action on August 6, 1984, applicants' attorney attempted to distinguish from the principal prior art reference, an article by Cursiefen et al., on the ground that their vaccination scheme involved two vaccinations with their strain of virus to get protection whereas applicants' strain "takes with a single vaccination at the age of 14 days in the face of MDA [maternally derived antibodies]." In the third office action the examiner said, "The instant claims are not limited to a single vaccination scheme which would patentably distinguish them from the reference." In response, the attorney, taking the examiner at his word, amended three of the claims, including patent claim 1, to refer to "single administration" effectiveness but did not so amend other claims. In the "Remarks" accompanying the amendment, however, the attorney made the unqualified and now admittedly untrue statement that "the claims are restricted to a single vaccination scheme."

Of the asserted patent claims, only claim 1 will be seen to contain such a limitation....