Fed. Cir. reverses the district court’s claim constructions and finding of infringement, and remands for further proceedings. The patent covers a controlled-release oral pharmaceutical composition for treating inflammatory bowel diseases.
Shire Development, LLC v. Watson Pharmaceuticals, Inc., __ F.3d __ (Fed. Cir. Mar. 28, 2014) (Rader, Prost, HUGHES) (No. 2013-1409, S.D. Fla.) (1 of 5 stars)
The claim terms “inner lipophilic matrix” and “outer hydrophilic matrix” were improperly construed as requiring lipophilic/hydrophilic characteristics of the excipients in a matrix. The intrinsic evidence, however, supported constructions that required the matrices themselves to possess lipophilic and hydrophilic properties, respectively. Such evidence included: 1) statements made by the applicants during prosecution, even though the statements did not rise to the level of prosecution disclaimer; 2) the specification (Background of Invention) teaching that a lipophilic matrix exhibits lipophilic properties; 3) the claim structure requiring the inner lipophilic matrix to be “separate, if not distinct, from the outer hydrophilic matrix,” slip op. at 11 (which Shire also admitted during oral argument); 4) a logical reading of the claim terms indicating that “inner lipophilic” and “outer hydrophilic” are mutually exclusive; 5) the lack of overlap between the two Markush groups further limiting the “inner lipophilic” and “outer hydrophilic” terms; and 6) examples in the specification indicating that the lipophilic matrix could not have hydrophilic properties. Whether an accused composition infringes under a particular construction has no bearing on the inquiry.