By Bryan K. Wheelock, Principal
In Sumitomo Dainippon Pharma Co., Ltd. v. Emcure Pharmaceuticals Limited, [2017-1798, 2017-1799, 2017-1800] (April 16, 2018) the Federal Circuit affirmed determination of infringement of the claim which depicted the enantiomer that was the active ingredient. While the district court construed the claim as covering both enantiomers and mixtures thereof, the Federal Circuit said that it need not determine what else falls within the claim’s ambit to resolve the dispute.
The plain claim language and specification demonstrate that, at a minimum, the claim covers what it depicts, which suffices to resolve the parties’ dispute because Appellants conceded that the district court’s judgment can be affirmed if the claim at least covers the depicted enantiomer. Noting a lack of anything in the claim language limiting its scope to a “racemate” or “racemic mixture,” or some indication in the specification or prosecution history to the contrary, the Federal Circuit held that the plain and ordinary meaning of the claim covers at least the specific enantiomer depicted in the claim itself.