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ARTICLE · 10 JANUARY 2018

Prosecution History Informs Claim Meaning Even Without Unmistakable Disclaimer

Foley & Lardner LLP
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Although non-precedential, the Federal Circuit decision in Aptalis Pharmatech, Inc. v. Apotex Inc. is worth a read to see how the court "tiptoes" the "fine line between reading a claim in light ...

United StatesIntellectual Property
Courtenay Brinckerhoff
Courtenay Brinckerhoff
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Although non-precedential, the Federal Circuit decision in Aptalis Pharmatech, Inc. v. Apotex Inc. is worth a read to see how the court "tiptoes" the "fine line between reading a claim in light of the specification, and reading a limitation into the claim from the specification." Here, the court also notes that the prosecution history can inform claim meaning even without clear and unmistakable disclaimer of claim scope.

The Patents At Issue

The patents at issue were U.S. Patent Nos. 7,790,199 and 7,829,121, which are listed in the Orange Book for Aptalis's AMRIX® product. The court cited claim 1 of the '199 patent as representative:

  1. A pharmaceutical dosage form comprising a population of extended release beads, wherein said extended release beads comprise:

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