Cohesive Technologies v. Waters Corp. (Fed Cir 10/7/08)

The patents at issue in the appeal to The Court of Appeals for the Federal Circuit (CAFC) have claims drawn to a high performance liquid chromatography process (“HPLC”), which separates, identifies and measures compounds in a liquid. The terms to be construed included the terms “rigid” and “greater than about 30” microns. Claim construction requires claims to be interpreted within the context of the claims themselves and the specification. Also, the prosecution history must be considered in determining what the claims mean. There were three interesting holding by the CAFC in this recent decision: limiting disclaimer to what is actually disclaimed, finding error in keeping the issue of anticipation from the jury, and an interesting determination of the meaning of the term “about” that precludes the consideration of the Doctrine of Equivalence as already included within the literal meaning of the claim term.
In one matter before the CAFC, Cohesive Technologies asserted that the polymeric material used in particles of Waters Corp. is rigid. However, Waters Corp. argued that the prosecution history clearly and unequivocally disclaimed polymer materials as insufficiently rigid to be considered “rigid” within a proper interpretation of the claims. This interpretation of the prosecution history by Waters Corp. was an overly broad reading of the record, which merely distinguished a particular type of polymer particle as being not rigid. Had Waters Corp. used that particular type of polymer particle, then its particles would not have infringed the asserted claims. The CAFC held that there was sufficient evidence to support the juries determination the polymer particles used by Waters Corp. were rigid within the meaning of the claim. In determining the meaning of a claim term in a patent, it is important not to overly broadly narrow meanings of claims terms in ways that were not clearly and unequivocally disclaimed by the applicant.

In a second issue, CAFC agreed with Waters Corp. that granting judgment as a matter of law of no anticipation before the jury was allowed to consider the issue was error. The trial court thought that preserving the issue of obviousness over the same references precluded any harm to Waters Corp., but obviousness requires a different analysis than anticipation. A reference anticipates a claim if it reads on each and every claim limitation exactly, without considering any of the other factors that must be considered in an determination of obviousness. If not allowed to consider anticipation, a jury might consider a claim to be nonobvious for any of a number of reasons that are not relevant to a determination of anticipation. Thus, the issue of anticipation should not have been removed from the juries consideration if it was “iffy” as suggested by the trial court. Both anticipation and obviousness must be submitted to the jury, unless no claim was anticipated as a matter of law with deference to the defendant.

CAFC overturned the trial courts interpretation of the meaning of “greater than about 30” microns, because the use of “about 30” within the context of the claims and the specification provided a range for the lower range of particle size. Interestingly, CAFC held that the claim was not entitled to the benefit of the Doctrine of Equivalents, because by introducing “about” to the claim limitation, the applicant had already captured what would have been captured by the Doctrine of Equivalents within the literal meaning of the claim. The term “about” within the context of the claims, the specification, prosecution history and the prior art meant plus or minus 15.22%, according to the CAFC. For this reason, the CAFC reversed the trial court’s judgment of noninfringement based on trial court’s erroneous claim construction of “at least about 30” microns, without consideration of the Doctrine of Equivalents for the applicable literal range of particle size. Claims drafted with a similar use of “about” may avoid arguments that the Doctrine of Equivalents vitiates a claim limitation specifying a lower or higher critical range within a claim by introducing a variance within the literal meaning of the claim.