May 12, 2017  –  [Looking back to 2008 case]

“And” Connotes Alternatives in Topiramate Litigation

When is and “and?” When is and “or?” That sounds silly. But reading Chisum on Patents in the law library reminded me of one of the holdings in the topiramate litigation of Ortho-McNeil v. Mylan, 520 F.3d 1358 (Fed. Cir. 2008), in which the meaning of and was taken seriously. While most dictionary definitions of “and” are additive, dictionary definitions also show use of “and” to “connote alternatives.”

In the Ortho-McNeil v. Mylan case, the Court of Appeals of the Federal Circuit (CAFC) held that the term “and,” in Ortho-McNeil’s claim [US Pat. No. 4,513,006 “Anticonvulsant Sulfamate Derivatives”] was used to connote alternatives rather than in the additive sense.

Ortho-McNeil’s US Pat. No. 4,513,006 claimed a genus of sulfamates covering Topiramate. The disputed clause stated: “R2, R3, R4, and R5 are independently hydrogen or lower alkyl and R2 and R3 and/or R4 and R5 together may be a group of formula (II).” (Emphasis added) [A full copy of claim 1 appears below.]

The CAFC said that the two subsets did not need to simultaneously exist. The claim was not limited to compounds that were in both subsets because, construed in context, the claim to compounds that were of a first subset “and” a second subset covered compounds that were either in the first group “or” the second subset.

Here “and” meant to “join alternatives” because, in this case, the claim did not use the word “and” in isolation. Rather, the claim used “and” in a larger context with clarifying adverbs “independently” and “together.”

More on the word “AND”

Chef America v. lamb-Weston, 358 F.3d 1371 (Fed. Cir. 2004)

• A court may not re-write a patent claim even to avoid a nonsensical result.
• Here, however, giving “and” its most common dictionary meaning would fail to cover the patent owners own drug product and render dependent claims meaningless

The CAFC distinguished Chef America:

To the contrary, this court and the district court must interpret the term to give proper meaning to the claim in light of the language and intrinsic evidence. Giving and its most common dictionary meaning would produce in this case the nonsensical result of not covering topiramate and rendering several other dependent claims meaningless. In Chef America, the only possible interpretation of the claim led to a nonsensical result. This situation is distinguishable because claim 1 can and should be interpreted as the patentees intended, with the meaning of and connoting alternatives.

https://en.wikipedia.org/wiki/Topiramate