Proper Interpretation of Product-by Process Claims: Process Terms in Product-by-Process Claims Serve as Limitations in Determining Infringement

Abbott Laboratories v. Sandoz, Inc., No. 2007-1400 (Fed. Cir. May 18, 2009):

Holding:

“[P]rocess terms in product-by-process claims serve as limitations in determining infringement.”

Slip op. at 18 (affirming the holding of Atlantic Thermoplastics Co. v. Faytex Corp., 970 F.2d 834 (Fed. Cir. 1992) and rejecting the holding of Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1583 (Fed. Cir. 1991)).

AND

“[A] patentee’s use of the word ‘obtainable' rather than ‘obtained by’ cannot give it a free pass to escape the ambit of the product-by-process claiming doctrine.”

Id. at 24.

Comments:

Here is the excellent reasoning by the Court:

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In sum, a patentee’s use of the word “obtainable” rather than “obtained by” cannot give it a free pass to escape the ambit of the product-by-process claiming doctrine. Claims that include such ambiguous language should be viewed extremely narrowly. If this court does not require, as a precondition for infringement, that an accused infringer actually use a recited process, simply because of the patentee’s choice of the probabilistic suffix “able,” the very recitation of that process becomes redundant. This would widen the scope of the patentee’s claims beyond that which is actually invented—a windfall to the inventor at the expense of future innovation and proper notice to the public of the scope of the claimed invention.
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Id.