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Judge Joseph J. Farnan, Jr.: New Claim Construction Opinion

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Judge Farnan recently construed six terms used in patents related to the well-known asthma drug—albuterol. Sepracor, Inc. v. Dey, L.P., C.A. No. 06-113-JJF (Consol.), Memo. Op. (D. Del. Dec. 18, 2008).

The first disputed term, “side effects” was construed to mean “effects other than the desired therapeutic effect associated with the administration of racemic albuterol.” Id. at 13-14. The Defendants argued that by not limiting the term to those side effects set forth in the specification, the claims would cover side effects that were not known at the time the patent was filed and therefore the scope of the claims would be improperly expanded. Id. at 8-9. Judge Farnan found that the patentee did not expressly limit its claim scope to those side effects listed in the specification and, in fact, used language suggesting that the listed effects were only meant to be exemplary. Id. at 12-13. Also, the term “side effects” is a general, not technical, term and therefore can be construed according to its plain meaning. Id. at 13. Thus, the Court did not limit the claim term “side effects” to those set forth in the specification.

As typically arises in a situation where the patentee is awarded such a broad claim construction, the Defendants argued that such a construction would render the claims invalid on the grounds of indefiniteness and written description. Judge Farnan, in a footnote, acknowledged that such a construction may have that effect, however, these invalidity arguments are “best dealt with in a context other than the Court’s initial consideration of claim construction.” Id. at 15 n.2.

The second set of terms, “chronic administration” and “chronically administering to the individual,” was construed to mean “prophylactic or periodic administration.” Id. at 17. Because both parties relied on a declaration in construing this term and the PTO allowed the claims on the basis of this declaration, the Court used this extrinsic evidence in adopting its construction of “chronic administration.” Id. at 16.

The next term, “acute administration,” was construed to mean “treatment after onset of an asthma attack.” Id. at 18. The dispute related to this term was whether the treatment needed to be after the asthma attack began or at some other time. The specification and declaration mentioned above both supported the Court’s definition and because the Plaintiff offered no evidence otherwise, the Court adopted the construction above. Id. at 18.

The parties’ next dispute surrounded the terms “inducing bronchodilation or providing relief of bronchospasm.” Id. at 19. Specifically, the Defendants argued that the term should be limited to the treatment of asthma. Id. The Court found that there was not a “manifest exclusion or restriction” of the claim scope in the specification or prosecution history and because there was no particular definition of the terms in the patent history it looked to the dictionary definitions of “bronchospasm” and “bronchodilation” to define these terms. Id. at 22-23. The Court defined the claim terms to mean “inducing relaxation of smooth muscle in the walls of the bronchi and bronchioles or providing relief from contraction of smooth muscle in the walls of the bronchi and bronchioles.” Id.

The remaining terms were defined as follows:

– “treating bronchospasm in a patient with reversible obstructive airway disease”: “treating bronchospasm in a patient with a respiratory disorder such as asthmas, chronic bronchitis, or emphysema” Id. at 27.

– “preventing bronchospasm in a patient with reversible obstructive airway disease”: “preventing bronchospasm in a patient with a respiratory disorder such as asthma, chronic bronchitis, or emphysema” Id. at 29.

Sepracor, Inc. v. Dey, L.P., C.A. No. 06-113-JJF (Consol.), Memo. Op. (D. Del. Dec. 18, 2008).

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