Holding: Meaningful alterations made to an issued patent compared to its provisional application may be used to inform claim construction regardless of whether the alteration narrows or broadens the claim.
FMC owns US Patents Nos. 9,107,416 and 9,596,857 related to insecticides and miticides. Both patents claim the benefit of the same provisional patent application. These patents claim a composition comprising bifenthrin and a cyano-pyrethroid selected from a group of listed compounds at a specific weight ratio. Sharda sells WINNER, an insecticide that contains bifenthrin and zeta-cypermethrin, one of the cyano-pyrethroids listed in the claims of the ‘416 Patent and the ‘857 Patent.
FMC sued Sharda for patent infringement and moved for a temporary restraining order and preliminary injunction, which were denied. However, when deciding FMC’s motion, the district court construed the term “composition” as limited to “stable compositions, rather than the well-known unstable compositions that produce ineffective results as discussed throughout the prosecution history.” In coming to this claim construction, the district court relied on statements about physical stability made in the provisional application and disclosures made in a related patent in the same family, but that were not included in the ‘416 Patent and the ‘857 Patent.
After the district court’s claim construction, FMC renewed its motion for a temporary restraining order. This time, the district court granted FMC’s motion and the temporary restraining order converted into a preliminary injunction. In granting FMC’s motion, the district court rejected Sharda’s invalidity defense of both anticipation and obvious based on a prior art reference that disclosed only unstable compositions.
The Federal Circuit found that the district court erred in its construction of the term “composition” to refer only to stable compositions. Although the provisional application and the related patent included references to stable compositions, it is significant that these descriptions were deleted from the ‘416 Patent and the ‘857 Patent. Citing its recent decision in DDR Holdings, LLC v. Priceline.com,1 the Federal Circuit held that a skilled artisan would have found the deletion of all disclosures about stable compounds from the ‘416 Patent and the ‘857 Patent to be meaningful. In light of these deletions, a skilled artisan would not have understood the term “composition” to only cover stable formulations as determined by the district court.
FMC tried to distinguish DDR by arguing that DDR applied to a situation where changes made between a provisional patent application and the later issued patent narrowed the meaning of the claim term. In this case, the deletions of the references to stable compositions when progressing from the provisional application to the later issued patent broadened the scope of the claim term “composition.” However, the Federal Circuit noted that the reasoning in DDR did not depend on whether deletions would narrow or broaden claim scope, but instead looked just for the existence of meaningful alterations made in the content of the provisional application compared to the content of the patent at issue.
Based on its ruling regarding claim construction, the Federal Circuit found that the district court abused its discretion regarding Sharda’s anticipation and obviousness defenses. To avoid a preliminary injunction, an accused infringer only needs to show a substantial question of invalidity and does not need to prove actual invalidity. Therefore, on remand, the district court should determine whether Sharda raised a substantial question of invalidity based on the new construction of “composition” that does not require the composition to be stable.
- DDR Holdings, LLC v. Priceline.com LLC, 122 F.4th 911 (Fed. Cir. 2024) ↩︎
Federal Circuit Precedential 
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