Sinorgchem Co., Shandong v. International Trade Commission
511 F.3d 1132 (2007)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
When a patent specification provides a clear, deliberate, and precise definition for a claim term, that definition governs the term's meaning, even if it is inconsistent with and excludes a preferred embodiment described elsewhere in the specification.
Facts:
- Flexsys America L.P. ('Flexsys') owns patents for a method of producing 6PPD, a rubber anti-degradant.
- The patented process involves reacting aniline and nitrobenzene in the presence of a 'controlled amount of protic material' (like water) to create an intermediate compound, 4-ADPA.
- The patent specification explicitly defines 'controlled amount' as 'an amount up to that which inhibits the reaction of aniline with nitrobenzene, e.g., up to about 4% H20 based on the volume of the reaction mixture when aniline is utilized as the solvent.'
- The specification also contains multiple examples described as 'preferred embodiments,' one of which (Example 10) involves a reaction using aniline as the solvent with a calculated water level of over 10%.
- Sinorgchem Co., Shandong ('Sinorgchem') produces 6PPD and 4-ADPA in China for importation into the United States.
- Sinorgchem's process for reacting aniline with nitrobenzene uses aniline as a solvent and a water concentration of at least 10 to 15%.
Procedural Posture:
- Flexsys filed a complaint with the U.S. International Trade Commission (ITC), a federal agency, alleging that Sinorgchem's imports violated section 337 of the Tariff Act of 1930.
- An Administrative Law Judge (ALJ) held a hearing, construed the disputed claim term broadly in favor of Flexsys, and issued an initial determination that Sinorgchem had infringed the patents.
- The full Commission reviewed the ALJ's decision, rejected the ALJ's claim construction, but adopted its own different construction that was still broad enough to cover Sinorgchem's process.
- Based on its new construction, the ITC affirmed the finding of infringement and issued a limited exclusion order prohibiting the importation of Sinorgchem's products.
- Sinorgchem, as appellant, appealed the ITC's final determination to the U.S. Court of Appeals for the Federal Circuit.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Does the patent claim term 'controlled amount' mean 'up to about 4% H2O' when aniline is the solvent, based on an express definition in the specification, even if a preferred embodiment described in the specification uses a water concentration greater than 4%?
Opinions:
Majority - Circuit Judge Dyk
Yes, the claim term 'controlled amount' is limited by the express definition provided in the specification. When a patentee acts as their own lexicographer and clearly sets forth a definition for a disputed claim term in the specification, that definition governs. The specification here provides a clear, deliberate, and precise definition, stating that a 'controlled amount' is 'e.g., up to about 4% H20 ... when aniline is utilized as the solvent.' This express definition cannot be overridden by vague language elsewhere suggesting the amount may vary, nor by an inconsistent example embodiment. While courts do not normally interpret claims to exclude a preferred embodiment, this rule does not apply when the specification's language is unambiguous and multiple other embodiments are consistent with the definition. Therefore, the 4% water limit applies when aniline is the solvent.
Dissenting - Circuit Judge Newman
No, the claim term should not be narrowly restricted to the 4% limit mentioned in one part of the definition. Claims must be interpreted in light of the entire specification, including all text and examples, not just selected snippets. The specifications demonstrate that the amount of protic material tolerated varies with many factors, and several examples, described as preferred embodiments, successfully use more than 4% water. The majority's construction improperly excludes a major part of the described invention by elevating one part of an exemplary definition ('e.g., up to about 4%') over the patent's broader teachings and concrete examples. The Commission's construction, which was based on the specification as a whole, was correct and should have been affirmed.
Analysis:
This decision significantly reinforces the principle of patentee lexicography, establishing that a clear, express definition of a claim term in the patent's specification is paramount. It clarifies that such a definition can trump even a disclosed 'preferred embodiment' that appears to contradict it. This holding serves as a crucial guide for patent drafters, emphasizing the need for internal consistency between definitions and examples to avoid unintentionally limiting claim scope. For litigators, it solidifies the strategy of focusing on explicit definitional language as the controlling factor in claim construction disputes.
Unlock the full brief for Sinorgchem Co., Shandong v. International Trade Commission