ENDO PHARM. INC. v. ACTAVIS LLC, decided May 3, 2019, Claim Interpretation

U.S. Patent No. 8,871,779 is directed to preparing morphinan alkaloids used for pain relief (pages 2-5). “14-hydroxymophinone” limitations were interpreted to be the salt form of 14-hydroxymorphoninone (page 10). Claim 1 recites a salt comprising 14-hydroxymophinone, so the claims indicate the salt form (pages 10-11). The specification teaches an example removing 14-hydroxymophinone in general but is not supportive of a construction requiring or not requiring salt form (pages 11-12). The intrinsic evidence from an expert reading the example supports limiting to the salt form (pages 12-13).

Hindsight: The draftsperson of the application can control two sources for interpretation, the claims and the specification. Consistent usage and including alternatives may help with broader interpretation. In the claims, every word matters. Indicating in the preamble that the claim is directed to the salt form limited the type of 14-hydroxymophinone. Other preambles could have been used for at least one of the independent claims to avoid a narrow interpretation using common terminology.