Oral argument of the day: Medicinova v. Genzyme

The oral argument of the day is from MEDICINOVA, INC. v. GENZYME CORPORATION, No. 2020-1064 (Fed. Cir. Dec. 14, 2020). This was a Rule 36 Judgment. I thought the oral argument was interesting for its discussion of “derivative claim construction.” This not so common expression refers to construing a term not present in the claim itself, but rather, present in the construction of the claim term. One example of this is from the Advanced Fiber Technologies Trust v. J & L FIBER, 674 F.3d 1365 (Fed. Cir. 2012) case:

The disputed term at issue, “perforated,” appears not in the claims but rather in the district court’s construction of a disputed claim term. We note, as an initial matter, that “we do not ordinarily construe words that are not in claims.” Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1334 (Fed.Cir.2009)see also Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 339, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961) (“[T]he claims made in the patent are the sole measure of the grant.”). However, in those cases in which the correct construction of a claim term necessitates a derivative construction of a non-claim term, a court may perform the derivative construction in order to elucidate the claim’s meaning.

Advanced Fiber Technologies Trust v. J & L FIBER, 674 F.3d 1365, 1374 (Fed. Cir. 2012).

You can listen to the oral argument here:

You can read the Rule 36 Judgment here: [Link].

Comments are closed.