The opinion of the court was delivered by: EDMUND V. LUDWIG
This is an adjudication following a Markman hearing. Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S. Ct. 1384, 134 L. Ed. 2d 577 (1996). The patent claims at issue involve biocidal chemicals used in pesticides. In 1994, plaintiff Rohm and Haas Company was issued U.S. Patent No. 5,312,827 (827 patent). In this action, Rohm and Haas contends that pesticides developed by defendant Sunkyong Industries, Ltd. and marketed by defendant Lonza, Inc. constitute literal infringements of the 827 patent. Jurisdiction is federal question, 28 U.S.C. § 1331 (1994), which is exclusive in patent actions, 28 U.S.C. § 1338(a) (1994).
Plaintiff is proceeding on claims 1, 2, 3, 5, 6, and 8 of the 827 patent, all of which describe chemical compositions. Prior to the patent, biocidal chemicals called 3-isothiazolone compounds were known to be effective pesticides. However, because these compounds, in solution, tended to decompose and become unstabilized, a metal nitrate salt was added. As an untoward result, potentially carcinogenic compounds -- nitrosamines -- also were produced. The 827 patent consisted of 12 compositions and processes intended to reduce or eliminate nitrosamines and impurity by-products that can become nitrosamine precursors.
In a literal infringement action, there are two steps. First, the claims in question must be construed for scope and meaning. See Markman, 517 U.S. at , 116 S. Ct. at 1387. Second, there is the question whether the claims, as construed, cover the accused device or process. See Serrano v. Telular Corp., 111 F.3d 1578, 1582 (Fed. Cir. 1997). Here, only the Markman phase is under consideration.
The objective of claims construction analysis is to ascertain the meaning that a person of ordinary skill in the art would give to the claims in dispute. See Wiener v. NEC Electronics, Inc., 102 F.3d 534, 539 (Fed. Cir. 1997); Haynes Int'l, Inc. v. Jessop Steel Co., 8 F.3d 1573, 1578 n.4 (Fed Cir. 1993). The operative time is the date of the application for the patent. See Wiener, 102 F.3d at 539. In this case, the original application, Serial No. 383,858, was filed with the Patent and Trademark Office on June 1, 1982. See 827 patent, at 1. In construing an asserted claim, the first and paramount precept is to look to the intrinsic evidence of record, i.e., the patent itself, which includes the claims and the specification, together with the prosecution history before the Patent and Trademark Office. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996); Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995). Intrinsic evidence is "the most significant source of the legally operative meaning of disputed claim language." Id.
For these reasons, an evaluation of the specification is essential; the claims "must be read in view of the specification, of which they are a part." Markman, 52 F.3d at 979 (citing Autogiro Co. of Am. v. United States, 181 Ct. Cl. 55, 384 F.2d 391, 397 (Ct. Cl. 1967)). As articulated by the Federal Circuit:
The specification contains a written description of the invention which must be clear and complete enough to enable those of ordinary skill in the art to make and use it. Thus the specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.
Vitronics, 90 F.3d at 1582.
Prosecution history should also be considered as intrinsic evidence, including the record of proceedings before the Patent and Trademark Office. See id. (Prosecution history is "often of critical significance in determining the meaning of the claims"). Those proceedings may incorporate the patentee's representations as to claim scope, together with a review of the prior art. See id. at 1583.
"In most situations, an analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim term." Id. (citing Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1216 (Fed. Cir. 1995)). Accordingly, it ordinarily would be improper to resort to extrinsic evidence such as expert testimony, dictionaries or learned treatises. See id.1 However, in the unusual case, the patent record may be insufficient or an otherwise unsatisfactory basis to enable the claims to be rationally construed. See Vitronics, 90 F.3d at 1585. In that narrow instance, extrinsic evidence is permissible on the issue of how someone skilled in the art would understand the claims. See Markman, 52 F.3d at 979. Nevertheless, such extrinsic evidence may not contradict the manifest meaning of the claims as set forth, even by implication, in the specification and prosecution history. See Vitronics, 90 F.3d at 1584-85.
Here, having reviewed the intrinsic evidence, it appears to be unnecessary -- and insupportable -- to go beyond the proffered record.
Plaintiff has shown that the intrinsic evidence is a legally sufficient matrix for claims construction in this case.
The following meanings are adjudicated:
1. "Stabilized" (all asserted claims) -- means resistant to decomposition, particularly the opening of the isothiazolone ring. The backdrop, or explanation, is that shelf-life of the stabilized composition is significantly longer than that for an unstabilized composition under the same storage conditions. See Joint Markman Hearing Statement, at 10.
The language of the 827 patent specification, its prior art, and the prosecution history support this construction. The 827 patent specification states:
Unfortunately, solutions of the 3-isothiazolones, especially aqueous solutions or solutions in polar organic solvents such as alcohols, are unstable, leading to reduced biological effectiveness.
827 patent, at 1:53 to 2:2. The 827 patent specification also explicitly references prior art -- U.S. Patents Nos. 3,870,795 (795 patent), and 4,067,878 (878 patent)
-- which bolster the same construction. See 795 patent, at 1:23-29 ("While such formulation [of 3-isothiazolones in water or polar organic solvents] has no effect on [their] stability or function . . . if used relatively quickly, extended storage of the formulated solutions, especially at elevated temperatures, may result in chemical decomposition of the 3-isothiazolone active ingredient and, thus, lead to reduced biocidal effectiveness of the solution."); 878 patent, at 1:29-36 (same language).
The prosecution of application no. 383,858, the original ancestor of the 827 patent, also confirms this construction of "stabilized." A letter from plaintiff dated September 19, 1983, supplementing the application, explicated:
Shortly after discovering the novel group of 3-isothiazolone compounds, it was discovered that such compounds were not stable upon storage in solutions such as aqueous solutions and alcohol solutions. This problem was obviated when it was discovered that such compounds could be stabilized in solution using metal nitrates and nitrites. (U.S. Pat. 3,870,795).
Applicants now have discovered that the second invention, i.e., the discovery of a means for stabilizing the 3-isothiazolones, while effective and necessary in order to ship and store solutions of 3-isothiazolones, causes a new problem. The new problem resulted from a finding that the nitrate stabilizer, added for the purpose of preventing decomposition of the isothiazolone, reacts with by-products formed in the isothiazolone reaction to produce nitrosamines.
Prosecution History, Serial No. 383,858, Paper No. 5, Sept. 19, 1983 letter of Marc S. Adler, at 1-2 (plaintiff's exh. 7; defendants' exh. 1).
Defendants' position is that the 827 patent's reference to the 795 patent is vague because the 795 patent tolerates continuing decomposition even after addition of the nitrate salt. See Joint Markman Hearing Statement, at 13-14. Examination of the explicitly referenced 795 patent, however, reveals that plaintiff never intended "stabilized 3-isothiazolone solution" -- as used in the 827 patent -- to mean a solution forever resistant to decomposition.
Defendants do not propose an alternative meaning. To the extent that defendants' argument comes down to vagueness, it is inappropriate in a Markman proceeding. "Ambiguity, undue breadth, vagueness, and triviality are matters which go to claim validity for failure to comply with 35 U.S.C. § 112-P 2, not to interpretation or construction." Intervet Am. v. Kee-vet Laboratories, 887 F.2d 1050, 1053 (Fed. Cir. 1989) (emphasis in original).
2. "Substantially free of nitrosamines or precursors"
(all asserted claims) -- means that the combined content of nitrosamine and nitrosamine precursors is sufficiently low that no appreciable danger to humans or animals will result from contact with the compositions ...