This case addresses two primary issues (i) whether the district court erred in construing the claim term “composition” in FMC’s pesticide patents to mean only “stable compositions,” based on disclosures found in a provisional application and a related patent, even though the asserted patents contained no stability language and (ii) whether the district court misapplied the preliminary injunction standard in rejecting Sharda’s anticipation and obviousness defenses.
Background
FMC Corporation (“FMC”) owns U.S. Patent Nos. 9,107,416 and 9,596,857 (collectively, the “Asserted Patents”), which share a common specification and claim priority to U.S. Provisional Application No. 60/752,979 (the “’979 Provisional”). The asserted claims are directed to insecticidal/miticidal compositions comprising bifenthrin and a cyano-pyrethroid, including zeta-cypermethrin, within specified weight ratios. Sharda USA, LLC (“Sharda”) markets WINNER, an insecticide containing bifenthrin and zeta-cypermethrin, prompting FMC to sue Sharda for patent infringement in the Eastern District of Pennsylvania and to seek a temporary restraining order (“TRO”) and preliminary injunction.
The district court initially denied FMC’s motion for reasons not pertinent here, but in doing so construed the term “composition” to be limited to “stable compositions,” relying on explicit stability statements in the ’979 provisional and a related FMC patent, U.S. Patent No. 8,153,145, that also claims priority to the same provisional. The Asserted Patents themselves contain no references to “stable” or “stability.” FMC renewed its request for a TRO; the court rejected Sharda’s anticipation challenge based on a 1996 article (“McKenzie”), and rejected obviousness and certain § 112 arguments, and entered a TRO that converted to a preliminary injunction under Rule 65(b)(2). Sharda appealed.
Issue(s)
Whether the district court erred by construing “composition” to mean only “stable compositions,” based on disclosures in the ’979 Provisional and the related patent, despite the Asserted Patents’ common specification containing no discussion of “stability.”
Whether the district court abused its discretion in rejecting Sharda’s anticipation and obviousness defenses by applying an erroneous claim construction and by effectively requiring proof of actual invalidity rather than a “substantial question” of invalidity at the preliminary injunction stage, including treating the “miticidal” preamble as limiting and by discounting non-preferred embodiments in the prior art.
Holding(s)
The Federal Circuit held that “composition” must be given its plain and ordinary meaning and not limited to “stable compositions,” particularly in light of the applicant’s deletion of all stability language from the Asserted Patents’ specification.
The Federal Circuit held that the district court abused its discretion in its anticipation and obviousness analyses by relying on the erroneous construction, and by elevating the preliminary injunction invalidity standard, by treating the preamble “miticidal” as limiting, and by faulting reliance on non-preferred prior art embodiments.
Reasoning
The Federal Circuit emphasized that claim terms are generally given their plain and ordinary meaning to a person of ordinary skill in the art in view of the claims, specification, and prosecution history. The Asserted Patents’ common specification contains no references to “stable” or “stability,” notwithstanding that the ’979 provisional and the related patent both discuss stability at length. The court treated the deliberate deletion of stability language as “highly significant,” relying on DDR Holdings v. Priceline and similar cases, which recognize that alterations between a provisional application and a later patent specification reflect an evolution in the applicant’s intended meaning. When the applicant purposely deletes a restrictive concept from the later-filed specification, courts should not graft it back into the claims. The Federal Circuit also rejected FMC’s attempts to equate “homogeneous” with “stable,” noting that the asserted patents do not discuss physical separation and in the provisional application “homogeneous” and “phase separation” appear in different contexts. Likewise, “unexpected insecticidal activity” concerns efficacy (e.g., kill rates) rather than physical stability over time, further undermining any equivalence between activity and stability. The Federal Circuit additionally noted that “composition” as claimed includes “tank mixtures,” which the district court seemed to exclude only due to purported instability; that exclusion could not be justified once “stability” was removed from the claim scope.
Next with respect to the anticipation issue, the Federal Circuit held that the district court’s analysis was flawed due to the erroneous stability requirement and by an improper application of the preliminary injunction standard. An accused infringer at the preliminary injunction stage need not prove actual invalidity. Instead, an alleged infringer needs only to raise a substantial question of invalidity. By rejecting McKenzie’s anticipatory teachings because it purportedly disclosed only “unstable” compositions, the district court effectively decided the merits under a flawed claim construction. The Federal Circuit also rejected the argument that reliance on non-preferred embodiments in a prior art reference is improper, noting that any single anticipating embodiment can suffice. Further, FMC’s argument that McKenzie cannot anticipate because it allegedly does not disclose a “miticidal” rate fails because the preamble’s “miticidal” language recites an intended use and is not limiting absent clear reliance in the claim body. The Federal Circuit cautioning against treating preambles as limiting where they merely recite purpose citing prior precedent.
Similarly, with respect to obviousness the Federal Circuit likewise vacated the district court’s express reliance on its anticipation reasoning and on the supposed “well-known difficulty” of achieving stable formulations—both of which were a result of the district court’s erroneous claim construction. The Federal Circuit also addressed the district court’s reliance on secondary considerations of non-obviousness. Although the district court referenced “unexpected superior performance,” the Federal Circuit informed the district court that secondary considerations must be assessed against the strength of the prima facie case, and that here, the district court’s prima facie analysis had been tainted by its incorrect construction and an elevated validity standard. On remand, the Federal Circuit instructed that the district court must identify each distinct obviousness theory advanced by Sharda and determine whether Sharda has shown a substantial question of obviousness, weighing any secondary indicia, including unexpected results, against the prima facie case under the correct claim scope.
The Federal Circuit vacated the preliminary injunction and remanded for further proceedings consistent with its opinion, directing the district court to apply the plain and ordinary meaning of “composition,” to reconsider anticipation and obviousness under the correct preliminary injunction framework, and to avoid treating the preamble’s “miticidal” language as claim-limiting. Based on these findings the Federal Circuit did not address Sharda’s written description challenge.