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ARTICLE · 06 MAY 2014

A Prosecution History Without Express Disclaimers Still Informs Claim Construction

McDermott Will & Emery
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The U.S. Court of Appeals vacated and remanded a lower court’s ruling of infringement, finding that the lower court construed relevant terms too broadly.

United StatesIntellectual Property
Atabak Royaee, Ph.D
Atabak Royaee, Ph.D
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Shire Development, LLC v. Watson Pharmaceuticals, Inc.

Addressing the impact of statements made during prosecution on claim construction, the U.S. Court of Appeals for the Federal Circuit vacated and remanded a lower court's ruling of infringement, finding that the lower court construed relevant terms too broadly in view of the statements made during prosecution.  Shire Development, LLC v. Watson Pharmaceuticals, Inc., Case No. 13-1409 (Fed. Cir., Mar. 28, 2014) (Hughes, J.).

Shire owns a patent directed to a controlled-release oral pharmaceutical composition for treating inflammatory bowel disease.  The patent requires the claimed composition to have an inner lipophilic matrix consisting of substances and an outer hydrophilic matrix consisting of compounds.  After Watson filed an Abbreviated New Drug Application (ANDA) to obtain approval to sell a generic form of the drug, Shire sued for infringement.

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