Patent’s Prosecution History Informs the Meaning of the Claim Language, Saving them from Invalidity

Kaken Pharmaceutical Co., Ltd. v. Iancu, [2018-2232] (March 13, 2020), the Federal Circuit   reversed the PTAB’s claim construction, and vacated its determination that the challenged claims of U.S. Patent No. 7,214,506 on a method for treating onychomycosis were unpatentable as obvious.

Kaken proposed that the phrase “treating a subject having onychomycosis” means “treating the infection at least where it primarily resides in the keratinized nail plate and underlying nail bed.” The Board rejected Kaken’s construction as too narrow, concluding that “the express definition of onychomycosis includes superficial mycosis, which in turn is expressly defined as a disease that lies in the skin or visible mucosa.

The Federal Circuit found that the prosecution history—which includes, specifically, statements made by Kaken to overcome a rejection and the examiner’s statements explaining withdrawal of the rejection based on those statements — provides decisive support for limiting the claim phrase at issue to a plate-penetrating treatment of an infection inside or under the nail plate.  A patent’s prosecution history can “inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be.  Particularly useful are “express representations made by or on behalf of the applicant to the examiner to induce a patent grant,” which include “arguments made to convince the examiner that the claimed invention meets the statutory requirements of novelty, utility, and nonobviousness.”  The Federal Circuit said that Kaken’s statements during prosecution, followed by the examiner’s statements, make clear the limits on a reasonable understanding of what Kaken was claiming.

The Federal Circuit thus reversed the Board’s claim construction, and vacated the determination of obviousness based upon the erroneous construction.

Prosecution History Doesn’t Have to Rise to the Level of Disclaimer to Inform the meaning of the Disputed Claim Term

In Personalized Media Communications, LLC, v. Apple Inc., [2018-1936] (March 13, 2020), the Federal Circuit reversed the Board’s construction of a claim term of U.S. Patent No. 8,191,091 ON methods for enhancing broadcast communications, vacating the anticipation and obviousness determinations of the corresponding claims, and affirmed the remainder of the Board’s determinations of anticipation and obviousness.

The Federal Circuit noted that the prosecution history, in particular, may be critical in interpreting disputed claim terms because it contains the complete record of all the proceedings before the Patent and Trademark Office, including any express representations made by the applicant regarding the scope of the claims.  Accordingly, even where prosecution history statements do not rise to the level of unmistakable disavowal, they do inform the claim construction.

At issue was the meaning of “an encrypted digital information transmission including encrypted information,” and in particular whether this term is limited to digital information or can also include analog information.  The Federal Circuit began its analysis with the claim language, noting that the claims use the adjective “digital” to describe the “information transmission,” thus supporting the view that the information is, in fact, digital. On the other hand, the Federal Circuit added, the claims do not say “entirely digital.”

Although the Federal Circuit agreed that with the Board that the specification’s broad definition of “programming” could encompass analog signals, it did not agree that it necessarily requires them. Instead, the definition is largely agnostic to the particular technology employed.

The Federal Circuit turned to the specification, finding some relevant statements, but noting that they are not definitional; instead, they are merely illustrations that use open-ended, permissive phrases such as “usually,” “for example,” and “with capacity for.” And when considered in the context of the more than 280 columns of text in the specification of the ’091 patent, these two passages fall far short of defining the relevant terms through repeated and consistent use.

Finally, the Federal Circuit turned to the prosecution history.  While the Board found the prosecution history inconclusive, the Federal Circuit disagreed, noting that even where prosecution history statements do not rise to the level of unmistakable disavowal, they do in-form the claim construction.  The Federal Circuit said an applicant’s repeated and consistent remarks during prosecution can define a claim term—especially where, as here, there is no plain or ordinary meaning to the claim term and the specification provides no clear interpretation.  The Federal Circuit found that the Board erred by effectively requiring the prosecution history evidence to rise to the level of a disclaimer in order to inform the meaning of the disputed claim term, adding the prosecution history provides persuasive evidence that informs the meaning of the disputed claim phrase and addresses an ambiguity otherwise left unresolved by the claims and specification.

Because the Federal Circuit concluded that the disputed claim term was limited to all-digital signals, it reversed the Board’s unpatentability determination for those claims.

Affirmed; Patent Owner’s Claim Construction that Excluded Preferred Embodiments Was Not Correct

In Eko Brands, LLC, v. Adrian Rivera Maynez Enterprises, Inc., [2018-2215, 2018-2254] (January 13, 2020), the Court of Appeals for the Federal Circuit affirmed the judgment of invalidity of U.S. Patent No. 8,720,320 owned by ARN, on an adaptor device for use with Keurig® single-brew coffee machines and of infringement of U.S. Patent No. 8,707,855 owned by EKO on a reusable filter cartridge device for use with single-serve beverage brewing machines.

On appeal ARM argued that brewing chamber in the claims of the ‘320 patent required a closed chamber, and thus the prior art did not make the claimed invention obvious.  The Federal Circuit distinguished other patents that showed closed brewing chamber, noting that these specifically describe the chamber as sealed. The Federal Circuit also rejected the argument that several embodiments of in the ‘320 patent that showed sealed brewing chambers, meant that brewing chamber had to be sealed, because there were also several embodiments with unsealed brewing chambers.  The Federal Circuit applying the Canon of Claim construction that “a claim construction that ‘excludes the preferred embodiment is rarely, if ever, correct and would require highly persuasive evidentiary support” to find that the district court’s construction was correct.  The Federal Circuit also affirmed the award of attorneys fees to the accused infringer of the ‘320 patent.

On the issue of infringement of the ‘855 patent, ARM argued that the claims of the patent required a single serve beverage brewer (“A beverage brewing device for use with a single serve beverage brewer having a brewing holster . . .”).  The Federal Circuit disagreed, noting that on its face does not require a beverage brewer, even if the preamble is limiting. To the extent that claim mentions a beverage brewer it is only as a “reference point” to define the purpose and structure of the brewing device.  Thus the Federal Circuit affirmed the finding of infringement.  The Federal Circuit also affirmed the finding of no willful infringement, noting that the instruction as a whole was not legally erroneous given the limited nature of Eko’s objection.

Markush Groups Open to Additional Elements

Amgen, Inc. v. Amneal Pharmaceuticals LLC, [2018-2414, 2019-1086] (January 7, 2020), the Federal Circuit vacated and remand the district court’s judgment that Amneal did not infringe U.S. Patent 9,375,405, and affirmed that Piramal did not infringe and that Zydus did infringe the ‘405 patent.

On appeal Amgen challenged the district court’s construction of a Markush group of binders:

from about 1% to about 5% by weight of at least one binder selected from the group consisting of povidone, hydroxypropyl methylcellulose, hydroxypropyl cellulose, sodium carboxymethylcellulose, and mix-tures thereof

and a Markush group of disintegrants:

from about 1% to 10% by weight of at least one disintegrant selected from the group consisting of crospovid[o]ne, sodium starch glycolate, croscarmellose sodium, and mixtures thereof

The district court held both of these Markush groups were closed, such that additional binder and disintegrant substances in addition to the ones specified in the Markush ground avoided infringement.

The Federal Circuit said that Multilayer and Shire did not hold broadly that, whenever “consisting of” Markush group language is present in a particular claim limitation, even when the limitation follows a general claim transition phrase of “comprising,” all components of an accused product that perform the general function of the particular limitation must meet the requirements of that limitation, thus precluding components outside the Markush group.  The Federal Circuit explained that those decisions do not apply in this case, where the question is whether the “binder” or “disintegrant” claim limitations are written to preclude other binders and disintegrants in the claimed composition. The Federal Circuit concluded that they are not.

In Multilayer, the Markush group was closed because the language of the claim was closed, requiring “each layer being selected from the group consisting of . . . “.  In Multilayer the Federal Circuit further held that dependent claim 10, which added a requirement that “at least one said inner layer” contain a resin not listed in the element, was invalid because it was inconsistent with the independent claim.  In particular, the Federal Circuit said, it had no occasion to, and did not, consider the effect of the transition phrase “comprising”.

In construing the (a) and (b) Markush groups in Shire, the Federal Circuit explained that the “consisting of” language defined the groups and created a “very strong presumption” that the Markush groups were closed to additional elements not specified in the claim.  The Federal Circuit pointed out that this was also decided without reference to the comprising transition.  The claim specified that  the outer matrix of the claimed composition “consists of” the compounds in the Markush group. The outer matrix, by the terms of the element, had to “consist of” of those compounds to meet that limitation.

The Federal Circuit found that the decisive issue in the current case is critically different from any issue decided in Multilayer or Shire. The issue is whether all binders or disintegrants in the claimed formulation are subject to the specific binder or disintegrant limitations. The Federal Circuit concluded that they were not.  First, the Federal Circuit noted that there is no language in Amgen’s claim indicating that every binder or disintegrant in the claimed formulation must be within the Markush groups.  The Federal Circuit said that the limitations merely require that those particular binders or disintegrants meet the specified weight-percentage requirements, which is not inconsistent with the overall composition containing other binders or disintegrants.

The Federal Circuit said that the plain language of the claim requires “at least one” of the Markush members and certainly does not indicate that the only binders and disintegrants in the claimed formulation are those listed in the groups. The Federal Circuit did not see a sufficient basis for a different conclusion in the specification or in the prosecution history.  The Federal Circuit also noted the transition “comprising,” which makes clear that the claim does not preclude the presence of components or steps that are in addition to, though not inconsistent with, those recited in the limitations that follow.  The Federal Circuit said that the use of the “comprising” transition phrase reinforces the conclusion that the language of those limitations is best construed not to foreclose such additional binders and disintegrants. The Federal Circuit vacated the district court’s decision as to the Amneal product.  However, the Federal Circuit agree that prosecution history estoppel prevented Amgen from asserting that Piramal’s product infringed under the doctrine of equivalents.

OK, Campers, Here’s How to Make Your Claim Preamble a Limitation

In In re Fought and Clanton, [2019-1127](November 4, 2019) the Federal Circuit reversed the PTAB decision that the claims 1 and 2 in U.S. Application Serial No. 13/507,528 were anticipated.

The claims were directed to travel trailer with a movable garage wall. Claim 1 read:

Claim 1 form U.S. Application 13/507528
Figs. 1 and 2 of Application 13/507528

The Examiner rejected both claims 1 and 2 as anticipated. The Board affirmed the examiner’s rejection, concluding the preamble term “travel trailer” is a mere statement of intended use that does not limit the claim.

The Federal Circuit rejected appellants first argument that “A travel trailer having” was not a preamble, noting though this claim does not use the typical claim language (comprising) which denotes the transition be-tween the preamble and the body, the word “having” performs the same role.

Appellants next argument was that even if “travel trailer” is part of the preamble, it is limiting because limitations in the body of the claims rely on “travel trailer” for antecedent basis and for structural limitations. On this point, the Federal Circuit agreed, noting that it has repeatedly held a preamble limiting when it serves as antecedent basis for a term appearing in the body of a claim. Appellants provided extrinsic evidence to support their assertion that “travel trailer” is a specific type of recreational vehicle that includes a living quarters. The Federal Circuit said:

Based on the extrinsic evidence, we conclude that a “travel trailer” is a specific type of recreational vehicle and that this term is a structural limitation of the claims. There is no dispute that if “travel trailer” is a limitation, Dietrich and McDougal, which disclose cargo trailers and shipping compartments, do not anticipate. Just as one would not confuse a house with a warehouse, no one would confuse a travel trailer with a truck trailer.

The Federal Circuit rejected appellant’s argument that the Patent Office had an obligation to identify the level of ordinary skill in the art — at least where the applicant had not put it in issue.

Whether a preamble is a limitation is a two-edged sword for applicants, one the one hand if the preamble is a limitation, it can make the claim patentable, but on the other hand it can also make the claims harder to infringe, Where the applicant wants the preamble to be a limitation, purposely using the words in the body of the claim will achieve that goal, however idly parroting the words of the preamble in the body can unintentionally limit the claims for purposes of infringement.

Setting the Standard for Claim Drafting

Claims often reference government or industry standards. However standards can change over time, which has the potential to change the scope of the claim, unless it is understood that the meaning is fixed as of the filing date, and that is what the BPAI does.

In Ex parte McClary, Appeal 2009-001300, Application 11/101,897 (May 17, 2010), the Board reversed the Examiner’s 112 rejection that reference to the ARINC 615 protocol (an industry standard in the field of avionics) was indefinite because it was subject to being changed in the future. The Board said:

Compliance with the provisions of 35 U.S.C. § 112 is determined as
of the filing date of the application. W.L. Gore & Assoc., Inc. v. Garlock,
Inc., 721 F.2d 1540, 1556 (Fed. Cir. 1983). There does not appear to be any
dispute here that a particular version of the ARINC 615 protocol was in
existence as of Appellant’s filing date. Thus, one of ordinary skill in the
art, with reference to the standard in effect as of the filing date of
Appellant’s application, would readily be able to determine the metes and bounds of this element found in claims 10 and 12. Accordingly, we will not sustain the rejection of claims 10 and 12 under 35 U.S.C. § 112, second paragraph, as being indefinite.

Some drafters affirmatively control the meaning of their claims by expressly referencing the standard or protocol “in effect on the filing date.

Claim 11 of U.S. Patent No. 9,945,005 provides:

11. The method according to claim 1 wherein the material is leached for a sufficient period of time that the residue after leaching meets the EPA TCLP limits according to EPA Test Method 1311 procedure in effect on the filing date of this application.

Claim 27 of U.S. Patent No. 7,043,402 provides:

27. The system of claim 20, wherein said electrical indication means is comprised of at least one of: (a) a serial communications port; (b) a bi-directional serial data bus chosen from among standards SAE/TMC J1708/J1587 protocol in effect on the filing date hereof, or SAE J1939 communications protocol in effect on the filing date hereof; (c) a CAN data bus; (d) a RF device; and/or (e) an IR device.

Claim 16 of U.S. Patent No. 6,889,385 provides:

16. The apparatus of claim 8 wherein said DOCSIS cable modem is compatible with any DOCSIS national standard for cable modems as of the filing date of the parent patent application of this patent application.

While claims referencing standards are not indefinite merely because the standard could be changed in the future, claim drafters still have to account for how infringement can be proved if the standard is in fact changed.

Board Misread and Mischaracterized Features of the Claims, and Thus Failed to Appreciate that the Claims Provide a Technical Solution to a Technical Problem

In Sipco, LLC v. Emerson Electric Co., [2018-1635] (September 25, 2019), the Federal Circuit reversed the PTAB’s construction of “low power transceiver” and its finding that U.S. Patent No. 8,908,842 does not satisfy the second part of §42.301(b) defining “technological invention.” § 42.301(b). Because the Board did not address the applicability of the first part of § 42.301(b), the Federal Circuit vacated and remanded.

The Board found that the term “low-power” as used in the claims did not necessarily require that the device transmit and receive signals only within a “limited transmission range.” The Federal Circuit reversed, construing “low-power” to mean “a device that transmits and receives signals at a power level corresponding to limited transmission range.”

The Federal Circuit found that the Board’s conclusion that the claims recite an apparatus “for performing data processing or other operations used in the practice, administration, or management of a financial product or service” under AIA § 18(d)(1) was not arbitrary and capricious. The definition of a covered business method patent is not limited to products and services of only the financial industry, or to patents owned by or directly affecting the activities of financial institutions such as banks and brokerage houses. § 18(d)(1) on its face covers a wide range of finance-related activities.

While SIPCO argued before the Board and on appeal that because it disclaimed claims 3 and 4, the Board should not have relied on them in analyzing whether the ’842 patent is CBM eligible. However, SIPCO ultimately conceded at oral argument that a patent may be CBM eligible based on a single claim and that the Board could have properly relied on claims 3 or 4.

The Federal Circuit then turned to the Board’s decision as to whether the ’842 patent qualifies as a “technological invention” under § 18(d)(1). Section 18(d)(1) excludes “patents for technological inventions” from CBM review. However, Congress did not define technological invention, instead leaving it to the USPTO to issue regulations for determining whether a patent is for a technological invention. 37 C.F.R. § 42.301:

In determining whether a patent is for a technological invention solely for purposes of the Transitional Program for Covered Business Methods (section 42.301(a)), the following will be considered on a case-by-case basis: [1] whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and [2] solves a technical problem using a technical solution.

If each part of this definition is satisfied, then the patent is not eligible for CBM review.

The Federal Circuit held that the Board misread and mischaracterized the features of claim 1 in its analysis of dependent claims 3 and 4, it did not appreciate that the claims provide a technical solution to a technical problem, under part 2 of 37 C.F.R. § 42.301. The Federal Circuit said that the question of whether a patent is for a “technological invention” is fact-specific and must be considered on a case-by-case basis. The Federal Circuit said that the problem solved by the claims is technical in nature. The Board limited its characterization of the “problem” being solved to an example problem provided in the background that is resolved by the claims—automating machine service requests. But it is clear from both the claims and the specification that the claimed invention implements a communication system that connects an unconnected, remote device with a central station.

The Federal Circuit identified the technical problem solved by the claims as: how to extend the reach of an existing communication system from a central location to a remote, unconnected device while protecting against unwanted interference with the transmitted signals. The Federal Circuit found that the claims solved this problem with a technical solution. Because SIPCO’s claims combine certain communication elements in a particular way to address a specific technical problem with a specific technical solution, the Federal Circuit reversed the Board’s finding that the patent does not satisfy the second part of its “technological invention” regulation.

The Federal Circuit found that the Board did not analyze whether the ’842 patent satisfied the first part of § 42.301(b) because it found that the patent did not satisfy the second part. Rather than address this issue in the first instance on appeal, the Federal Circuit remanded the case for the Board to address the first part of § 42.301(b) under the proper claim construction.

Judge Reyna dissented because the majority’s opinion was contrary to basic tenants of claim construction set forth in Phillips, and the deference owed to underlying factual findings under Teva. Judge Reyna said that the majority reached its own construction by improperly reading a functional limitation into the claim from a preferred embodiment. Further, the Board’s construction rests on factual findings that are supported by substantial evidence, including expert testimony on the meaning of the claim term “low-power transceiver” to a person of ordinary skill in the art.

Arguments Regarding Enablement Confirm Narrow Scope of Claims

In Iridescent Networks, Inc. v. AT&T Mobilitiy, LLC, [2018-1449] (August 12, 2019), the Federal Circuit affirmed judgment of non-infringement of U.S. Patent No. 8,036,119, on System and Method of Providing Bandwidth on Demand, affirming the district court’s construction of “high quality of service connection.”

The ’119 patent discloses a system and method for managing network traffic routes and bandwidth availability to minimize adverse network conditions and to assure that the network connection maintains a requested minimum level of one of these three parameters. Iridescent proposed broadly construing the claim term “high quality of service connection” to mean “a connection in which one or more quality of service connection parameters, including bandwidth, latency, and/or packet loss, are assured from end-to-end based on the requirements of the application.” The magistrate judge, however, largely adopted AT&T’s proposed construction, construing the term to mean “a connection that assures connection speed of at least approximately one megabit per second and, where applicable based on the type of application, packet loss requirements that are about 10-5 and latency requirements that are less than one second.”

The Federal Circuit began with the language of the claims. The district court found that “high quality of service connection” is a coined term that has no ordinary meaning in the industry, and the Federal Circuit agreed. Because the claim was silent as to what amount of quality is sufficient to be “high,” the Federal Circuit looked first to the specification, followed by the prosecution history, to determine the meaning of the term “high quality of service connection.”

The applicant of the ’119 patent relied on Figure 3 during prosecution to support an amendment that gave rise to the term “high quality of service connection.” Figure 3 indicates minimum requirements for connection speed, packet loss, and latency. During prosecution of the parent application, the applicant argued that “the various connection parameters illustrated for high quality of service enabled bandwidth applications in Fig. 3” supported the term “high quality of service connection.” The Federal Circuit found the applicant relied on the minimum connection parameter requirements described in Figure 3 to overcome the examiner’s §112 enablement rejection.

The Federal Circuit rejected the patent owner’s argument that the prosecution history was not relevant in the absence of clear disavowal, noting that any explanation, elaboration, or qualification presented by the inventor during patent examination is relevant, for the role of claim construction is to capture the scope of the actual invention that is disclosed, described, and patented. The Federal Circuit said that where there is no clear ordinary and customary meaning of a coined term of degree, it may look to the prosecution history for guidance without having to first find a clear and unmistakable disavowal.

The Federal Circuit also rejected the argument that statements made in response to an enablement rejection do not affect claim scope. Noting that the enablement requirement prevents claims broader than the disclosed invention.

The Federal Circuit affirmed the District Courts claim construction.

Infringement was a Matter of Degree

In Cobalt Boats, LLC v. Brunswick Corp., [2018-1376] (May 30, 2019), the Federal Circuit, in a NON-PRECEDENTIAL decision, the Federal Circuit reversed district court judgment of nearly $5.4 million for willful infringement of U.S. Patent No. 8,375,880 on a swim step for boats.

The claims at issue required a step “capable of being rotated 180° between a stored position . . . and a deployed position.” It was undisputed that the accused boat step did not rotate 180°. The Federal Circuit began with the fact that while the parties disagreed on the claim construction, the court did adopted the patent owner’s position, holding that the “180 degrees” limitation should be given its “plain and ordinary meaning” and rejecting Brunswick’s proposed construction. The Federal Circuit observed that it is not appropriate to leave to the jury the task of resolving claim construction disputes.

The Federal Circuit found that the “180 degrees” limitation required that the step be capable of rotating at least 180 degrees, not merely “flipping over” as the patent owner contended. The Federal Circuit said that where a precise value is included in the claim without a term such as “about,” it interprets the claim language as imposing a strict numerical boundary, absent evidence that such a construction would be inconsistent with the intrinsic evidence. The Federal Circuit said the claim does not use “about,” which suggests that 180 degrees serves as a precise numerical boundary for the minimum rotation of the step, and the intrinsic evidence did not suggest a different construction. The Federal Circuit construed the 180 degrees limitation to require that the swim step be capable of rotating at least 180 degrees, which meant that a step that can rotate at most 179 degrees would not meet the limitation, while a step that can rotate 181 degrees would.

The Federal Circuit rejected the argument that the 180 limitation way merely a way of saying the steps flipped, noting that the claims also said that the steps flipped, so such a construction would make the 180 limitation redundant.

Based upon its construction of the 180 degree limitation, the Federal Circuit concluded that there was no literal infringement. With respect to infringement under the doctrine of equivalents, the Federal Circuit found that the claims were limited by prosecution history estoppel since the 180 degree limitation was added to obtain allowance of the claims. The Federal Circuit rejected the patent owners argument that estoppel did not apply since the limitation was added to overcome prior art that only rotated 90°, noting that the scope of disclaimer is measured by the difference between the original and the amended claims, not the difference be-tween the amended claims and the prior art that was avoided through the amendment, this is particularly true where the claims are amended to include a specific numeric boundary.

Reversing the finding of literal infringement and infringement under the doctrine of equivalents, the Federal Circuit reversed.

This case highlights the importance of having some wiggle room on numeric limitations in claims. Also the opinion is non-precedential, the Federal Circuit cited several cases illustrating the importance of Wiggle words, such as “about.” Jeneric/Pentron, Inc. v. Dillon Co., 205 F.3d 1377, 1381 (Fed. Cir. 2000); Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1217 (Fed. Cir. 1995);and Elekta Instrument S.A. v. O.U.R. Scientific International, Inc., 214 F.3d 1302 (Fed. Cir. 2000).

Patent’s Description Was Inconsistent with Patentee’s Claim Construction

In BTG International Limited v. Amneal Pharmaceuticals LLC, [2019-1147, 2019-1148, 2019-1323, 2019-1324, 2019-1325] (May 14, 2019), in consolidated appeals from the District of New Jersey and the PTAB involving U.S. Patent No. 8,822,438, the Federal Circuit affirmed the PTAB’s Final Written Decision in one one of the IPRs, mooting the other appeals.

The ‘438 Patent is directed to methods and compositions for treating cancer. Appellants asserted that the PTAB erred by improperly construing the term “treatment” by not requiring prednisone to have an anti-cancer effect, and then relying on that incorrect construction to find that the asserted claims would have been obvious.

The Federal Circuit agreed with the PTAB’s construction, noting that the claims, specification, and prosecution history teach that treatment includes both anti-cancer effects and palliation or reduction in side effects. The claim required “a therapeutically effective amount,” which was defined in the specification as an amount “effective for treating a disease or disorder . . . such as cancer.” The specification further stated that a “therapeutic agent” may be either “an anti-cancer agent or a steroid.” The Federal Circuit pointed out that the use of “or” in between “anti-cancer agent” and “steroid” suggests that a steroid is not necessarily the same thing as an anti-cancer agent. The Federal Circuit added that if the patentee intended to limit “treating” and “therapeutic agents” to anti-cancer agents, the patentee neither would have identified steroids separately as an agent for reducing adverse side effects, nor described prednisone repeatedly in the specification as a steroid without mentioning any anti-cancer effect.

The Federal Circuit found that the PTAB correctly concluded that the Asserted Claims cover a therapy in which abiraterone has an anticancer effect, while prednisone either has its own anti-cancer effect or has a palliative/side-effect reduction effect.

Based upon this construction, the Federal Circuit found substantial evidence supported the PTAB’s determination of obviousness.

Because the specification is the single best guide to the meaning of claim terms, it is important that the use of the terms in the specification be consistent with the claim construction the patent owner wants.