"Controlled Amount" Limited by One-Sentence Definition in Specification

In Sinorgchem v. ITC & Flexsys America (December 21, 2007), the Federal Circuit relied on the just the itallicized portion from the specification in U.S. Patent No. 5117063 to define the claimed “controlled amount:”

Control of the amount of protic material present in the reaction is important. Generally, when the reaction is conducted in aniline, water present in the reaction in an amount greater than about 4% H2 O, (based on volume of the reaction mixture) inhibits the reaction of the aniline with the nitrobenzene to an extent where the reaction is no longer significant. Reducing the amount of water to below the 4% level causes the reaction to proceed in an acceptable manner. When tetramethylammonium hydroxide is utilized as a base with aniline as the solvent, as the amount of water is reduced further, e.g., down to about 0.5% based on the volume of the reaction mixture, the total amount of 4-nitrodiphenylamine and 4-nitrosodiphenylamine increases with some loss in selectivity so that more 2-nitrodiphenylamine is produced but still in minor amounts. Thus, the present reaction could be conducted under anhydrous conditions.

A “controlled amount” of protic material is an amount up to that which inhibits the reaction of aniline with nitrobenzene, e.g., up to about 4% H2O based on the volume of the reaction mixture when aniline is utilized as the solvent.

The upper limit for the amount of protic material present in the reaction varies with the solvent. For example, when DMSO is utilized as the solvent and tetramethylammonium hydroxide is utilized as the base, the upper limit on the amount of protic material present in the reaction is about 8% H2 O based on the volume of the reaction mixture. When aniline is utilized as a solvent with the same base, the upper limit is 4% H2 O based on the volume of the reaction mixture. In addition, the amount of protic material tolerated will vary with type of base, amount of base, and base cation, used in the various solvent systems. However, it is within the skill of one in the art, utilizing the teachings of the present invention, to determine the specific upper limit of the amount of protic material for a specific solvent, type and amount of base, base cation and the like. The minimum amount of protic material necessary to maintain selectivity of the desired products will also depend on the solvent, type and amount of base, base cation and the like, that is utilized and can also be determined by one skilled in the art. [paragraph break added]

In the lower proceedings, the ITC held that the language “e.g., up to about 4% H2O based
on the volume of the reaction mixture when aniline is utilized as the solvent” should not
be considered part of that definition for two reasons. First, the ITC dismissed the 4% limit as merely an example that did not apply to all situations in which aniline was used as the solvent. Second, the ITC found that the 4% language was inconsistent with Example 10 (which appears identically in both the ‘063 and the ‘111 patents), a “preferred embodiment,” which uses more than 10% water in a reaction where aniline is the solvent.

According to opinion by Circuit Judge Dyk,

Where, as here, multiple embodiments are disclosed, we have previously interpreted claims to exclude embodiments where those embodiments are inconsistent with unambiguous language in the patent’s specification or prosecution history. Telemac
Cellular Corp. v. Topp Telecom, lnc., 247 F.3d 1316, 1326 (Fed. Cir. 2001); see also N. Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335 (Fed. Cir. 2005). In Telemac, the district court looked to the specification to determine the meaning of the claim term “communication means,” since that term was written in the claim in
“meansplus-function” form. 247 F.3d at 1324. Telemac challenged the district court’s construction on the basis that it left certain embodiments inoperable. Id. at 1326. We held that the description of those embodiments did not call for a different construction. Id. Instead, we held that those embodiments “could not provide the structure or the scope of the claims. Id. See also Rheox, Inc. v. Entact, Inc., 276 F.3d 1319, 1327 (Fed. Cir. 2002) (“where the prosecution history requires a claim construction that excludes some but not all of the preferred embodiments, such a construction is permissible”) (emphasis added).

It is moreover significant that Example 10 does not specifically disclose the amount of water used in the reaction. Instead, the amount of water used in that reaction can only be determined by a complex calculation.4 In stark contrast, the patentees in Tables 2 and 6, accompanying Examples 3 and 8 respectively, specifically disclose the amount of water used in those reactions. ‘063 patent col.9 ll.32-48, col.11 ll.25-33. In Example 3, for example, the amount of water added to the reaction where aniline is the solvent ranges from 2.2 to 4.7%, and illustrates the effect of water on the yield of 4-NDPA and p-NDPA. Table 2 shows that the yield dropped from 0.18 mmole to 0.05 mmole, an unacceptably low level, as the amount of water added was increased from 3.45 to 4.7%. Similarly, Example 8 illustrates the effect of the amount of water added to a reaction where DMSO is the solvent. Water added there ranged from 2.3 to 14.7%, and again shows that the yield dropped to an unacceptably low level when more than 8% water is added. Significantly, Example 10 is not even directed toward illustrating the control of the amount of protic material to be used in the reaction. . . . Under these circumstances, the fact that the calculated amount of water in Example 10 exceeds 4% where aniline is used as the solvent is entitled to little weight, and cannot override the clear definitional language set forth in the specification. . . .

However, as noted by Circuit Judge Newman in her dissent, if “the entire specification including the specific examples is consulted, rather than selected snippets, the correct claim scope is apparent from the specifications.”