Judge Stein Construes Claims in OxyContin Case


Case Number: 1:13-cv-03372-SHS (Dkt.26)

Judge Stein construed various terms of two patents in this OxyContin patent infringement case. He concluded, inter alia, that

  • A claim reciting elements A, B, C, and D, “additionally comprising” element E requires that element E to be different than any of elements A-D.
  • Element E is not limited to a list to exemplar substances found in the patent specification using Markush group format, stating that to so do would be to incorporate limitations from the specification into the claims, and citing Abbott Labs. v. Andrex Pharm. Inc., 473 F.3d 1196, 1210 (Fed. Cir. 2007).
  • Despite defendants’ argument that various claims were indefinite, and defendants’ refusal to construe the terms, the court said that it preferred to decide indefiniteness on the full record. Nevertheless, the court did not accept plaintiff’s constructions without modification.

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