Oral argument addresses the word “having” in a patent claim

If you use the word “having” interchangeably with the word “comprising” in your claim drafting practice, you might want to listen to the oral argument in Biopolymer Engineering, Inc. and Massachusetts Institute of Technology v. Immunocorp, et al., 2010-1096 (Fed. Cir. Feb. 22, 2011).  The counsel for plaintiff-appellant spent most of the oral argument trying to persuade the panel that the district court had inappropriately given “having” a closed meaning such as that given to “consisting of” in patent claims rather than an open meaning as typically applied to “comprising” in patent claims.  The claim at issue read as follows:

A method for improving the growth and survival of animals comprising: administering an effective amount of a nutritional supplement to an animal, said nutritional supplement comprising water-insoluble yeast cell wall extract comprising purified beta (1,3) glucan having a particle size of about 1.0 micron or less.

The plaintiff-appellant argued that the district court had erred by excluding administration of nutritional supplements that included particle sizes less than about 1.0 micron as well as particle sizes greater than about 1.0 micron.

The panel affirmed the district court decision via a Rule 36 opinion without weighing in on the “having” argument in a written opinion. 

You can listen to the oral argument here: [Listen].  The pertinent discussion begins at about the 3:07 minute mark.

The district court’s claim construction opinion is available here: [Read].

The Federal Circuit per curiam opinion is available here: [Read].

For more on “having” see Crystal Semiconductor Corp. v. Tritech Microelecs. Int’l, Inc., 246 F.3d 1336 (Fed. Cir. 2001) and Regents of University of California v. Eli Lilly and Co., 119 F.3d 1559 (Fed. Cir. 1997).

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