Aventis Pharmaceuticals Inc. v. Amino Chemicals Ltd.
715 F.3d 1363
Fed. Cir.2013Background
- Aventis Pharms., Inc. and AMRI appeal a stipulated noninfringement judgment after a Markman ruling construing the '703 patent.
- The '703 patent covers processes for making piperidine derivatives using a para-CPK intermediate to yield end products such as fexofenadine, with claims 1, 6, and 7 central to the dispute.
- The district court construed “substantially pure” and “substantially pure regioisomer” to require at least 98% purity with respect to all impurities, applying this uniformly to both the CPK intermediate and the end product.
- The district court relied on the prosecution history of the related '610 patent and statements from the inventor in an interference to support a 98% standard.
- The panel majority reverses, holding that “substantially pure” must have different meanings for the CPK intermediate and the piperidine end product, and adopts a construction closer to the appellants’ position.
- The case is remanded for reconsideration consistent with the revised claim construction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether substantially pure applies the same meaning to the CPK intermediate and end product. | Aventis urges different meaning for the regioisomer (intermediate) versus end product. | AMRI contends there should be a uniform 98% purity standard for both contexts. | District court erred; adopt Appellants’ differentiated construction. |
| What is the proper construction of substantially pure regioisomer in claim 1? | Substantially pure regioisomer means largely but not wholly the para isomer. | Substantially pure regioisomer should align with a uniform high-purity standard. | The term is construed as largely but not wholly the para regioisomer of the intermediate. |
Key Cases Cited
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claim construction guided by intrinsic evidence and ordinary meaning)
- Markman v. Westview Instruments, Inc., 517 U.S. 370 (Supreme Court 1996) (claims construction is a matter of law)
- Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) (presumption that claim terms carry ordinary meaning; context informs scope)
- Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295 (Fed. Cir. 1999) (linguistic and contextual analysis for claim terms)
- Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 279 F.3d 1022 (Fed. Cir. 2002) (contextual interpretation of terms like substantially)