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An error made by the applicant during prosecution of a patent should not be enforced as a limitation if a “person of reasonable intelligence would not be misled into relying on the erroneous statement” when interpreting the patent, the Federal Circuit recently held. Biotec Biologische Naturverpackungen Gmbh & Co. Kg v. Biocorp Inc., et al. , Nos. 99-1578, 00-1093, -1094, Fed. Cir. The court upheld the U.S. District Court for the Central District of California, which ruled that two patents owned by Biotec Biologische Naturverpackungen Gmbh were not invalid and were infringed by Biocorp Inc. and Novamont S.P.A. The lower court entered a jury award of compensatory damages of $750,000 against Novamont and $250,000 against Biocorp for infringement or inducement of infringement, although it found that the infringement was not willful. At issue were patents to make plastic-forming starch, which is manufactured at high temperatures, while substituting additives to replace water, which foams as steam and leaves undesirable bubbles in the final plastic product. Specifically under dispute on appeal were the lower court’s construction of the terms “substantially water free,” “thermoplastically processable starch” and “crystalline content.” CLAIM CONSTRUCTION The Federal Circuit agreed with the district court that the former term simply means a water content less than the 5 percent described in a prior art reference and was not limited to any particular percentage. It also agreed with the district court’s conclusion that the calculation of water content is based on the water content of the total mixture. Biocorp argued on appeal that the prosecution history of the patent limits the claims to a process that uses only starch that is pre-dried to be substantially water free at the beginning of the process and excludes starch that is initially melted with its natural water present. It pointed to an argument presented by Biotec during prosecution that its process starts with substantially water-free starch. Biotec responded that the specification states that either dried or not dried starch may be used and that the claims as granted do not distinguish between those starting materials. It said the argument made by its agent during prosecution that the starting starch was water free was an obvious error, pointing out that it was an isolated statement contradicted by the rest of the prosecution history, including other statements in the same amendment. Biocorp in turn said it is not a court’s role to correct a patentee’s error and a statement during prosecution that limits the claims should be construed against the patentee, regardless of whether the statement was made in error or whether the error would have been recognized as such by a reader of the prosecution history. CLAIMS ARE CONTROLLING But the Federal Circuit said the claims themselves control over an erroneous remark by an attorney in the course of prosecution. “An error in the prosecution record must be viewed as are errors in documents in general; that is, would it have been apparent to the interested reader that an error was made, such that it would be unfair to enforce the error,” the opinion said. “The defendants do not argue that this statement led them to believe that it clearly limited the invention that was claimed. “A person of reasonable intelligence would not be misled into relying on the erroneous statement, for it is contrary not only to the plain language of the claims and the specification, but also to other statements in the same prosecution document.” The Federal Circuit also upheld the lower court’s interpretations of the other disputed claims, saying the district court properly considered the competing views of qualified experts. LITERAL INFRINGEMENT The court further held that the accused products and processes infringed literally. Regarding inducement, Biocorp argued that instructions to melt the pellets before using them in plastic-forming machines cannot be grounds of induced infringement unless it was also established that the user was thereby induced to and did engage in direct infringement. But the court agreed with Biotec that it was not controverted that the pellets are melted before they are used and that a reasonable jury could have found that the customers followed the instructions. Biocorp also argued that there was no infringement because the imported product of the patented process was materially changed, citing water absorption between manufacture and arrival in the United States increasing the water content above the 5 percent limit of the claims. But the court said there was substantial evidence that the product was not materially changed by the absorption of water after manufacture. Although the opinion also upheld the validity of the patents and the damages award, it rejected Biotec’s cross-appeal of the finding that infringement was not willful. Biotec noted that Biocorp did not seek an opinion of counsel as to infringement or invalidity upon learning of Biotec’s patents but instead relied on the advice of a Novamont employee, who advised that neither Biocorp nor Novamont was infringing. Failure to obtain an opinion of counsel is relevant evidence but does not automatically require a finding of willful infringement, the court said, noting that the employee consulted was a recognized expert in the field and that the factual questions resolved by the jury were perceived to be close. Biotec is represented by Larry R. Laycock of Workman, Nydegger & Seeley in Salt Lake City. Biocorp is represented by Chester T. Kamin of Jenner & Block in Chicago. �; Copyright 2001 Mealey Publications, Inc.

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