When (Claimed) Size Matters

Posted on | December 4, 2009 | 2 Comments

2010-1096 Biopolymer v. Immunocorp

D/MN 05-cv-536

Judge Joan Ericksen

Plaintiff Biopolymer appeals the grant of summary judgment by Judge Joan Ericksen finding that defendants did not infringe 5,702,719, related to an animal nutritional supplement with yeast cell wall extract.

The case involved 14 patents but, following the grant of partial summary judgments all around, the parties settled and dismissed all of the claims–except those related to the '719.

The relevant claim language specified purified beta (1,3) glucan "having a particle size of about 1.0 microns or less."  The question was whether "having" was open, thereby allowing some larger particle sizes, or closed such that all of the particles had to be at about or below the claimed size.

Basing her ruling on the intrinsic evidence, Judge Ericksen concluded it was closed and then found that the undisputed evidence showed that defendants' IMMUTOL and IMMUPET products did not infringe due to the size limitation. 

The prosecution history was particularly compelling to the Court as the applicant successfully argued that the relative small size of the invention distinguished it over otherwise invalidating prior art.  The Court's analysis of the "having" construction appears on pages 22-27.

Standing.  Although standing may not come up during appeal (it would have to be a Immunocorp cross-appeal), it was contested as to whether Biopolymer even owned the '719 patent–a judgment by a Texas state court in 2008  decreed that Immudyne, Inc. was the owner of the '719 and not Biopolymer.  However, because that judgment occurred after the Minnesota action was filed, the Court, based on Arachnid, Inc. v. Merit Industries, Inc., 939 F.2d 1574 (Fed. Cir 1991), held that the post-filing judgment in another case did not retroactively deprive Biopolymer of standing in this case.

2010-1096 SJ Order

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