In FMC Corp. v. Sharda USA, LLC, No. 2024-2335 (Fed. Cir. August 1, 2025), the Federal Circuit held that a claim term in an asserted patent cannot be construed solely based on disclosures in its provisional application and an unasserted patent in the same patent family. The Federal Circuit found that the District Court improperly narrowed the claim term "composition" of the asserted patents to encompass only "stable compositions." In particular, the Federal Circuit determined that, although the provisional application of the asserted patents and a related patent in the patent family, contained several references to "stability," such disclosures were removed from the asserted patents, and thus, it was improper to impart a "stability" limitation on the claim term. Instead, the Federal Circuit found that the District Court should have given the claim term its plain and ordinary meaning.
The Federal Circuit focused on the difference between the disclosures in the asserted patents and those in the provisional application, to determine that the term "composition" in the asserted patents cannot be limited only to "stable compositions," but instead should be given its plain and ordinary meaning. The Federal Circuit noted that although the provisional application contained several references to "stability," "every textual reference in the provisional application that a skilled artisan might reasonably have relied upon for interpreting 'composition' as covering only stable compounds was removed from the asserted patents.". The Federal Circuit commented that such deletion was "meaningful." Similarly, the Federal Circuit determined that the related patent cannot limit "composition" in the asserted patents to "stable compositions." In particular, the Federal Circuit found that a claim term may have different meanings across a family when a patent owner "materially alters the specification of some of the members of the patent family in a manner that directs a skilled artisan to interpret the claimed term differently." The Federal Circuit noted that the references in the asserted patents to (a) "homogenous" compositions and (b) "unexpected insecticidal activity" did not limit "compositions" to "stable compositions," as the specification (a) illustrates that "homogenous" and "stability" are distinct concepts and (b) indicates that "insecticidal activity" and "stability" describe different properties of the claimed composition.
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