              NOTE: This disposition is nonprecedential.


United States Court of Appeals for the Federal Circuit

                          2009-1427, -1444


                   SANOFI-AVENTIS U.S. LLC,
              SANOFI-AVENTIS, and DEBIOPHARM S.A.,

                                             Plaintiffs-Appellants,

                                  v.

                           SANDOZ, INC.,

                                             Defendant-Appellee,

                                 and

     TEVA PARENTERAL MEDICINES, INC., TEVA PHARMACEUTICALS
                USA, INC., and PHARMACHEMIE BV,

                                             Defendants-Appellees,

                                 and

     MAYNE PHARMA LIMITED, MAYNE PHARMA (USA) INC., HOSPIRA
              AUSTRALIA PTY LTD., and HOSPIRA, INC.,

                                             Defendants-Appellees,

                                 and

         BARR LABORATORIES, INC. and PLIVA-LACHEMA A.S.,

                                             Defendants-Appellees,

                                 and

                       W.C. HERAEUS GMBH,

                                             Defendant,

                                 and

     APP PHARMACEUTICALS, INC. and ABRAXIS BIOSCIENCE, INC.,
      `                                              Defendants,
                                         and

          ACTAVIS TOTOWA LLC, ACTAVIS, INC., and ACTAVIS GROUP HF,

                                                     Defendants,

                                         and

            FRESENIUS KABI ONCOLOGY PLC (formerly known as Dabur
              Oncology plc) and FRESENIUS KABI PHARMA LIMITED
                    (formerly known as Dabur Pharma Limited),

                                                     Defendants-Appellees,

                                         and

             SUN PHARMACEUTICAL INDUSTRIES LTD. and CARACO
                  PHARMACEUTICAL LABORATORIES, LTD.,

                                                     Defendants,

                                         and

                       EBEWE PHARMA GES.M.B.H. NFG KG,

                                                     Defendant,

                                         and

    MUSTAFA NEVZAT ILAC SANAYII A.S. (also known as MN Pharmaceuticals),
              PAR PHARMACEUTICAL COMPANIES, INC., and
                     PAR PHARMACEUTICAL, INC.,

                                                     Defendants.


      Dominick A. Conde, Fitzpatrick, Cella, Harper & Scinto, of New York, New York,
argued for plaintiffs-appellants. With him on the brief were William E. Solander and
Nina Shreve. Of counsel was Brian L. Klock, of Washington, DC.

      Patricia J. Thompson, Schiff Hardin LLP, of Chicago, Illinois, argued for
defendant-appellee Sandoz, Inc. With her on the brief were Douglass C. Hochstetler,
Jason G. Harp, and Amethyst C. Smith.

      James F. Hurst, Winston & Strawn LLP, of Chicago, Illinois, argued for
defendants-appellees Mayne Pharma Limited, et al. With him on the brief were
James M. Hilmert, of Chicago, Illinois, Gail J. Standish and Peter E. Perkowski, of Los
Angeles, California, and Steffen N. Johnson and Andrew C. Nichols, of Washington,
DC.

        David M. Hashmall, Goodwin Procter LLP, of New York, New York, for
defendants-appellees Teva Parenteral Medicines, Inc., et al. and Barr Laboratories,
Inc., et al. With him on the brief were Frederick H. Rein and Keith A. Zullow, of New
York, New York, and Henry C. Dinger, of Boston, Massachusetts.

      Steven M. Lieberman, Rothwell, Figg, Ernst & Manbeck, of Washington, DC, for
defendants-appellees Fresenius Kabi Oncology PLC, et al. With him on the brief were
Minaksi Bhatt and Glenn E. Karta.

Appealed from: United States District Court for the District of New Jersey

Judge Joel A. Pisano
             NOTE: This disposition is nonprecedential.


United States Court of Appeals for the Federal Circuit
                           2009-1427, -1444

                   SANOFI-AVENTIS U.S. LLC,
              SANOFI-AVENTIS, and DEBIOPHARM S.A.,

                                        Plaintiffs-Appellants,

                                   v.

                            SANDOZ, INC.,

                                        Defendant-Appellee,

                                  and

    TEVA PARENTERAL MEDICINES, INC., TEVA PHARMACEUTICALS
               USA, INC., and PHARMACHEMIE BV,

                                        Defendants-Appellees,

                                  and

    MAYNE PHARMA LIMITED, MAYNE PHARMA (USA) INC., HOSPIRA
             AUSTRALIA PTY LTD., and HOSPIRA, INC.,

                                        Defendants-Appellees,

                                  and

         BARR LABORATORIES, INC. and PLIVA-LACHEMA A.S.,

                                        Defendants-Appellees,

                                  and

                        W.C. HERAEUS GMBH,

                                        Defendant,

                                  and

     APP PHARMACEUTICALS, INC. and ABRAXIS BIOSCIENCE, INC.,

                                        Defendants,
                                          and

         ACTAVIS TOTOWA LLC, ACTAVIS, INC., and ACTAVIS GROUP HF,

                                                Defendants,

                                          and

            FRESENIUS KABI ONCOLOGY PLC (formerly known as Dabur
              Oncology plc) and FRESENIUS KABI PHARMA LIMITED
                    (formerly known as Dabur Pharma Limited),

                                                Defendants-Appellees,

                                          and

             SUN PHARMACEUTICAL INDUSTRIES LTD. and CARACO
                  PHARMACEUTICAL LABORATORIES, LTD.,

                                                Defendants,

                                          and

                       EBEWE PHARMA GES.M.B.H. NFG KG,

                                                Defendant,

                                          and

    MUSTAFA NEVZAT ILAC SANAYII A.S. (also known as MN Pharmaceuticals),
              PAR PHARMACEUTICAL COMPANIES, INC., and
                     PAR PHARMACEUTICAL, INC.,

                                                Defendants.

On appeal from the United States District Court for the District of New Jersey in case
no. 3:07-cv-02762, Judge Joel A. Pisano.

                           ___________________________

                           DECIDED: September 10, 2009
                           ___________________________

Before LINN, PROST, and MOORE, Circuit Judges.




2009-1427, -1444                            2
MOORE, Circuit Judge.
    Sanofi-Aventis U.S. LLC, Sanofi-Aventis, and Debiopharm S.A. (collectively,

Sanofi) appeal from the district court’s grant of summary judgment of noninfringement of

U.S. Patent No. 5,338,874 (the ’874 patent).       Because the district court erred in

construing composition claims as product-by-process claims, we vacate and remand.

                                    BACKGROUND

      This case is on appeal from a Hatch-Waxman infringement action concerning the

pharmaceutical oxaliplatin, the active ingredient in Sanofi’s Eloxatin®, approved for the

treatment of colorectal cancer. A number of drug manufacturers filed Abbreviated New

Drug Applications (ANDAs) seeking to market generic oxaliplatin products prior to the

expiration of the ’874 patent, which claims optically pure oxaliplatin. Sanofi sued the

generic drug manufacturers (collectively defendants) for infringement under 35 U.S.C.

§ 271(e)(2), triggering a thirty-month stay of approval by the United States Food & Drug

Administration (FDA) of the defendants’ ANDAs pursuant to 21 U.S.C. § 355(j)(5)(b)(iii).

On June 18, 2009, the district court construed claim 1 of the ’874 patent as a product-

by-process claim limited to “optically pure oxaliplatin that has been resolved by means

of the HPLC [high performance liquid chromatography] method described in the ’874

patent specification.” Sanofi-Aventis U.S. LLC v. Sandoz, Inc., No. 07-2762, slip op. at

16 (D.N.J. June 18, 2009) (Claim Construction Opinion). Holding that there was no

disputed issue that the defendants did not employ the HPLC method, the district court

granted summary judgment of noninfringement and entered final judgment on June 30,

2008. Sanofi filed its notice of appeal on that same day. On July 10, 2009, we granted

Sanofi’s request to stay the judgment. On August 7, 2009, despite the stay of judgment,

the FDA granted final approval of the ANDAs held by certain defendants.           These


2009-1427, -1444                           3
defendants then launched their generic oxaliplatin products.         We granted Sanofi’s

motion for expedited review and heard arguments on September 2, 2009.

                                      DISCUSSION

       This court reviews a grant of summary judgment de novo. Immunocept, L.L.C. v.

Fulbright & Jaworski, L.L.P., 504 F.3d 1281, 1286 (Fed. Cir. 2007). We also review

claim construction de novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1455-56

(Fed. Cir. 1998) (en banc). The words of a claim are generally given their ordinary and

customary meaning as understood by a person of ordinary skill in the art in question at

the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir.

2005) (en banc).

       Claim 1 of the ’874 patent recites:

              1. Optically pure cis-oxalato (trans-l-1,2-cyclohexanediamine) Pt(II)
              having a general formula of Formula (1).




Claim 2, the only other claim at issue on appeal, depends from claim 1 and adds a

melting point limitation. The district court construed the term “optically pure oxaliplatin”

as “optically pure oxaliplatin that has been resolved by means of the HPLC method

described in the ’874 patent specification.” 1 Claim Construction Opinion at 16.


       1
               Mayne views this construction as an interpretation of the level of purity
required by term “optically pure.” Tr. of Oral Argument at 23:51-23:59, Sanofi-Aventis
U.S. LLC v. Sandoz, Inc., No. 2009-1427 (Fed. Cir. Sept. 2, 2009), available at
http://oralarguments.cafc.uscourts.gov/. However, the district court stated that it did not
determine the level of purity required by the term “optically pure.” See Claim
Construction Opinion at 3 n.6. On remand, the district court may, if necessary,
determine the level of purity required by the term “optically pure,” by looking to “‘those


2009-1427, -1444                             4
       On appeal, Sanofi argues that the district court erred when it construed claim 1

as limited to optically pure oxaliplatin purified by the HPLC process. Sanofi argues that

this claim is a composition claim and does not contain a process limitation. Defendants

argue that in light of the specification and prosecution history, the district court properly

limited claim 1 to optically pure oxaliplatin purified by the HPLC process.

       As the district court noted, “[t]here is no dispute that nothing on the face of the

claims of the ’874 patent limits the claims to ‘optically pure’ oxaliplatin that is produced

through the use of HPLC.” Claim Construction Opinion at 16.           Claim 1 is a straight

forward composition claim. The district court held that the claims were nonetheless

limited to oxaliplatin purified by the HPLC method in view of the specification and

prosecution history. We do not agree.

       We have repeatedly warned of “the danger of reading limitations from the

specification into the claim.” See, e.g., Phillips, 415 F.3d at 1323. “Absent a clear

disavowal or contrary definition in the specification or the prosecution history, the

patentee is entitled to the full scope of its claim language.” Home Diagnostics, Inc. v.

Lifescan, Inc., 381 F.3d 1352, 1358 (Fed. Cir. 2004). To narrow the plain language of a

claim, a disclaimer must be clear and unmistakable. Cordis Corp. v. Boston Scientific

Corp., 516 F.3d 1319, 1329 (Fed. Cir. 2009).          We see no such disclaimer in the

specification or prosecution history of the ’874 patent.


sources available to the public that show what a person of skill in the art would have
understood disputed claim language to mean,’” including “‘the words of the claims
themselves, the remainder of the specification, the prosecution history, and extrinsic
evidence concerning relevant scientific principles, the meaning of technical terms, and
the state of the art.’” Phillips, 415 F.3d at 1314 (quoting Innova/Pure Water, Inc. v.
Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)).




2009-1427, -1444                             5
       The defendants point to examples in the specification that compare the purity of

oxaliplatin produced using the process discussed in a prior art reference, the Kidani

process, with the purity of oxaliplatin after the HPLC process. In the “Comparative

Example,” the results indicate that following the Kidani process yields oxaliplatin having

an optical purity of 90%. Id. col.7 ll.25-50, col.8 ll.13-15. Table 1 compares the purity of

the samples obtained in all of the examples before and after resolution by HPLC. ’874

patent col.8 ll.3-15. The results indicate that using HPLC optical purity was obtained.

Id. col.8 ll.3-15. Thus, the examples illustrate how to obtain optically pure oxaliplatin.

They do not clearly and unmistakably disclaim any process, and they do not justify

reading a process limitation into a composition claim.

       The district court relied on Andersen Corp. v. Fiber Composites, L.L.C., 474 F.3d

1361 (Fed. Cir. 2007), when construing claim 1 as a product-by-process claim.             In

Andersen, this court held that claims to composite structures included a pelletizing

process limitation where the patentee relied on that process both to define the invention

and to distinguish the prior art. Andersen, 474 F.3d at 1372-74. We determined that

the specification attributed the claimed physical properties to the process and that the

specification indicated that the pelletizing step was a requirement, not a preference, of

the invention.   Id. at 1372.    We further determined that the patentee had clearly

disavowed other processes during prosecution. Id. at 1373-74; see also Chimie, 402

F.3d at 1385 (holding that “atomized precipitated silica particulates” was limited to a

those silica particulates formed by the patentee’s process because of an unequivocal

disclaimer of other processes to overcome prior art).




2009-1427, -1444                             6
       By contrast, here, the patent specification and prosecution history focus on the

property of the composition (optical purity) and not the process used to obtain that

property. The specification defines the invention as oxaliplatin of optically high purity,

not oxaliplatin prepared by the disclosed HPLC process. ’874 patent col.2 ll.3-5 (“The

present invention is cis-oxalato (trans-l-1,2-cyclohexanediamine) Pt(II) of optically high

purity having general formula of Formula (1).”). The specification never asserts that

HPLC is required to obtain optically pure oxaliplatin.      It characterizes HPLC as an

“illustrative method” and a “representative process” by which the claimed compound

“may be prepared.” Id. col.2 l.16, col.2 l.52, col.3 l.65. Moreover, the specification does

not define the property (optical purity) by reference to the process of purification by

HPLC. Thus nothing in the specification limits the invention to optically pure oxaliplatin

purified using HPLC.

       The prosecution history also illustrates that it is the optical purity of oxaliplatin

that distinguished it from the prior art, not the process used to obtain that purity. The

Examiner rejected the initially filed claims to oxaliplatin “of optically high purity” as

anticipated or rendered obvious by Kidani. 2 The Examiner stated that Kidani disclosed

“a single isomer [oxaliplatin] useful as an antitumor agent. Note that since the single

isomer complex was prepared, the optical purity of such material is very high or almost

pure isomer.” In response, the applicant (Tanaka Kikinzoku Kogyo K.K., referred to

herein as Sanofi) explained that it had repeated Kidani’s process “using identical

reactant materials and the subsequent testing thereof. . . . The resultant material was


       2
           The Examiner’s rejection was based on an article (Kidani et al., J. Med.
Chem. 21(12) 1315-18 (1978)), which does not substantively differ from the Kidani
patent.


2009-1427, -1444                             7
tested and found to be 90% [oxaliplatin] not optically pure . . . .” Sanofi explained that

“[o]nly after HPLC resolution (in accordance with the teachings of the present

application) was optical purity obtained.”       Sanofi further asserted that the products

prepared using Kidani’s method “do not have the presently claimed optical purity.”

Therefore, Sanofi argued that the claimed oxaliplatin “having high optical purity[] is not

found or taught in the prior art either by inherency or by being obvious thereover.”

Following a telephone interview, Sanofi agreed to amend the claims to “optically pure”

oxaliplatin, rather than oxaliplatin “of high optical purity.” The Examiner entered the

amendment and allowed the claims, stating that “[t]he Examiner agrees with applicants

that Kidani et al. does not teach[] the cis-oxalato(trans-l-1,2-cyclohexanediamine)Pt(II)

as an optically pure isomer. It is clear from Kidani et al. that also other isomers can be

in the final product.”   Thus, Sanofi argued that the defining feature of the claimed

oxaliplatin was its optical purity, not the HPLC process. Nothing in the prosecution

history amounts to a clear and unmistakable disclaimer of optically pure oxaliplatin

prepared using other (non-HPLC) processes.

      We conclude that the district court erred in its construction of claim 1. Claim 1 of

the ’874 patent is not limited to optically pure oxaliplatin produced by HPLC; this is a

composition claim, not a product-by-process claim.

                                     CONCLUSION

      Because we conclude that the district court erred when construing the claims, we

vacate the judgment of noninfringement and remand.




2009-1427, -1444                             8
