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Joseph J. Farnan: “Comprising” Rule Inapplicable When Use Limited to Specification

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Last week, district judge Joseph J. Farnan Jr. issued a Markman decision addressing the claims of a skin-care-product patent. Notable among the Court’s analysis is its discussion of the term “comprising” in the context of the specification. The Court considered, and rejected, defendants’ argument that, because the specification details that the invention comprises an “absorption enhancing material,” the claim at issue must also be defined to include an “absorption enhancer”:

“The Court is aware of no cases, and Defendants do not cite any, standing for the proposition that the term ‘comprising,’ when used in the specification, means ‘the listed ingredients are required.’”
According to the Court, the specification describes a number of components that no party contends are properly part of the claim’s scope. As a result, “the specification – including its passages that use the word ‘comprise’ – simply does not provide a clear and consistent basis upon which to limit the claims.”
Laboratory Skin Care Inc. v. Limited Brands Inc., C.A. No. 06-601-JJF (D. Del. Feb. 11, 2009).

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