FOREST LABORATORIES, LLC v. SIGMAPHARM LABORATORIES, LLC, decided March 14, 2019, Claim Interpretation

U.S. Patent No. 5,763,476 is directed to Saphris, an antipsychotic drug.  The limitation of claim 1 of “the composition is a solid composition and disintegrates within 30 seconds in water at 37 degrees C” was limited by the district court to sublingual or buccal formulations, which is a limitation of dependent claim 4 (pages 4-5).  The specification teaches the sublingual and buccal formulations as the “invention” and notes benefits of these formulations as compared to the prior art (page 5).  The title even includes these two formulations, and the formulations are indicated as being solid and having the recited disintegration (page 5).  Sublingual and buccal are repeatedly used to modify “composition” in the specification, indicating that the formulations are properties of the composition itself (page 5).  Claim 1 was held to include the specific formulations (pages 5-6).

Hindsight:  It may be useful to avoid characterizing anything other than claims as “the invention.”   Varying terms and directly including alternatives broader than the preferred embodiment may also avoid such narrow interpretation.