Statements Made to the EPO Do Not Support Prosecution Disclaimer (Web Only)

In this patent infringement case spawned by an application to market a new generic drug, the U.S. Court of Appeals for the Federal Circuit upheld the district court’s reliance on extrinsic evidence for claim construction. The Court also upheld its rejection of prosecution disclaimer based on arguments made in the prosecution of a corresponding European patent application. TAP Pharmaceutical Products, Inc., et al. v. OWL Pharmaceuticals, LLC, et al., Case Nos. 03-1634, 1635 (Fed. Cir. Aug. 18, 2005) (Bryson, J.).

TAP sued OWL, claiming OWL infringed five patents on the drug leuprolide. The district court granted summary judgment of infringement on the asserted claims of two patents.

OWL argued that, as the claim recited to "a copolymer . . . of lactic acid and . . .glycolic acid," it was limited to copolymers made from lactic acid and glycolic acid as starting materials and excluded the use of lactide and glycolide. OWL relied on examples of copolymer preparation in the prosecution