John Larry Sanders and Specialty Fertilizer Products v. Mosaic and Cargill (CAFC 2010-1418) nonprecedential; Prost, Schall, and Moore (author)

We construe a patent claim according to the plain meaning of its terms to one of ordinary skill in the relevant art. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). A patentee, however, may diverge from the plain meaning of a term by acting as its own lexicographer. Id. at 1316. A patentee can also narrow the meaning of a claim term through prosecution, for example by distinguishing a claim from a piece of prior art. Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323-26 (Fed. Cir. 2003). Any disclaimer, however, must be clear and unmistakable. Id. at 1325-26.

Sanders planted a seed in parent (6,132,485) prosecution.

The district court held that Sanders disclaimed everything except high-nutrient compositions in order to distinguish United States Patent No. 5,571,303 (Bexton). The first disclaimer cited by the court occurred during prosecution of the parent patent. During prosecution, Sanders submitted proposed amended claims to the examiner for discussion at an examiner interview. At the interview, the examiner cited Bexton for the first time, as the nearest prior art. Sanders sought to distinguish Bexton by adding a high-concentration limitation, "said amount of micronutrient being a majority of the composition on a weight basis." Sanders argued that Bexton no longer reads on the claims (in the parent) because Bexton does not suggest "a high-concentration product as presently claimed," it only discloses "a minor amount of trace element, less than 5% by weight." J.A. 264.

The claims in suit, however, are distinct from the claims of the parent patent. For one, the claims in suit do not include the high-concentration limitation--that micronutrients make up "a majority of the composition." The claims in suit also differ from the parent claims because they include a limitation that "the amount of ammonium sulfate . . . [is] greater than the amount of elemental sulfur . . . on a weight basis." See, e.g.,'459 patent claim 1.

Mosaic took the wrong approach, arguing "that despite the differences between the parent claims and the '459 claims, the '459 claims are also limited to high-concentration micronutrient."

In remarks submitted with a preliminary amendment, the applicant explained: "The present invention is concerned with highconcentration micronutrient compositions and composites . . . ." J.A. 147. Mosaic asserts that this statement justifies reading the "high-concentration micronutrient" limitation into the claims because the applicant unreservedly characterized the invention as a whole. We do not agree that this introductory sentence amounts to a clear and unmistakable disclaimer.

Other statements were made, but not rising to have "clearly and unambiguously limited the claims at issue to high-concentration compositions."

That meant the claim construction was wrong. Sanders, fearful of prior art invalidity, had stipulated to a narrow construction.

Turning now to the construction of the terms at issue, the parties agreed that "soil nutrient composition" and a "composite comprising a self-sustaining body," both "comprising . . . a micronutrient," should be construed the same way. Because we find the specification, prosecution history, and language of the claims do not limit these terms solely to high-concentration micronutrient compositions, and do not exclude compositions other than nonstratified homogenous products, we decline to read those limitations into the plain language of the claim. Instead, "comprising . . . a micronutrient" should be given its plain meaning, which is "including, but not limited to, . . . a micronutrient." See CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007) ("In the patent claim context the term 'comprising' is well understood to mean 'including but not limited to.'").

Meanwhile, "mixture" is mixture-plus.

The parties also contest the construction of the term "mixture." The trial court construed mixture as part of a larger phrase: "composite comprising a self-sustaining body formed of a mixture comprising ammonium sulfate, elemental sulfur, and a micronutrient selected from" a group of micronutrients. The court held that "mixture" within this phrase meant "a mixture of those listed elements: ammonium sulfate, elemental sulfur, and at least one micronutrient." Thus, it appears the court construed "mixture" to mean "a mixture." We agree that "mixture" does not require any additional construction. We note, however, that the phrase construed by the trial court is actually "a mixture comprising" various ingredients. While the claimed mixture must include the listed ingredients, it is not limited to them, and may optionally include other components in addition to those explicitly recited. CIAS, 504 F.3d at 1360-61.

Sanders appealed the district court allowing amendment to charge inequitable conduct. Barren soil there.

Sanders also appeals the district court's grant of Mosaic's motion for leave to amend its pleadings to add allegations of inequitable conduct. A motion to amend a pleading is a procedural matter governed by the law of the regional circuit. Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1318 (Fed. Cir. 2009). "Whether inequitable conduct has been pleaded with particularity under Rule 9(b) is a question governed by Federal Circuit law." Id. To plead inequitable conduct, "the pleading must identify the specific who, what, when, where, and how of the material misrepresentation or omission committed before the PTO." Id. at 1328. At the pleading stage the proponent of the inequitable conduct theory need only plead facts supporting a reasonable inference that a specific individual knew of the misrepresentation and had the specific intent to deceive the PTO. Id. at 1328-29. "A reasonable inference is one that is plausible and that flows logically from the facts alleged . . . ." Id. at 1329 n.5.

The court below conducted a thorough analysis of Mosaic's amended pleadings in light of the standard we set forth in Exergen. Although the court specifically noted that "it remains to be seen whether the inequitable conduct claim . . . will survive a motion for summary judgment," it concluded that Mosaic alleged facts sufficient to meet the pleading standard. We agree.

Sanders argues that the amended pleading does not include any allegations of knowledge or specific intent to deceive, and is futile in any case. Mosaic's amended counterclaims, however, plead facts from which the court could reasonably infer both knowledge and intent to deceive the Patent Office. For example, Mosaic's Second Amended Counterclaim alleges that Sanders filed a continuation application and included an expert declaration from Dr. Larry S. Murphy that was written in significant part by an employee of co-plaintiff Specialty Fertilizers. Mosaic also alleges that Sanders failed to disclose Dr. Murphy's business relationship with Sanders and his company, and that Dr. Murphy omitted publications that he co-authored with Sanders on the curriculum vitae submitted to the Patent Office. Mosaic further alleges that the failure to disclose the relationship between Dr. Murphy and Sanders was intentional and material.

Our cases indicate that the failure to disclose an expert's affiliation with the applicant to the Patent Office can constitute inequitable conduct. See, e.g., Refac Int'l, Ltd. v. Lotus Dev. Corp., 81 F.3d 1576, 1584-85 (Fed. Cir. 1996). It is a plausible inference, flowing logically from the facts alleged, that the applicant intended to conceal Dr. Murphy's connection to Sanders and Specialty Fertilizers from the Patent Office, thereby buttressing his credibility as an impartial witness. We see no error in the court's Exergen analysis, and Sanders's other arguments on this issue are likewise unavailing. As a result, we hold that the trial court did not err by allowing Mosaic to amend its complaint to add a counterclaim of inequitable conduct. Consequently, on remand, Mosaic's counterclaim will be before the court for adjudication.

Vacated and remanded. Expect this to circle back around to the CAFC in a few years, at least on invalidity, if not inequitable conduct.