I was reading through the decision handed down on August 13, 2013 in Appeal No. 2012-1560, Skinmedica, Inc. v. Histogen Inc., and barely staying awake. (A copy is available at the end of this post.) The panel interpreted the claims of Skinmedica’s patents (U.S. Pat. Nos. 6372494 and 7118746) on methods for producing “novel conditioned cell culture medium compositions” by culturing the cells in “three dimensions” to exclude culturing on beads – the infringer cultured cells on beads— even though culturing on beads would normally be considered to include culturing in three dimensions. However, Skinmedica had amended away from culturing cells in two dimensions and had repeatedly differentiated – if not explicitly defined – culturing on beads from a method of culturing in three dimensions. In effect, Skinmedica had been its own lexicographer, since otherwise the POSA would consider that culturing on beads could include three dimensional culturing.
The Fed. Cir. has been pretty hard on defendants alleging disclaimer of claim scope in recent decisions but that was not the case here. But what caught my attention is that Judge Prost spent four pages of his opinion on the effect of the abbreviation, “i.e..”(Slip op. at 22-26). Early in the detailed description, Skinmedica stated: “The cells are cultured in monolayer, beads (i.e., two-dimensions) or, preferably, in three dimensions.” After finding that this list includes the disjunctive (“or”) “as the coordinating conjunction that…plainly designates that a series describe alternatives,” Judge Prost agreed with the district court that the “phrase ‘beads (i.e., two-dimensions)’ explicitly define[s] beads in a two-dimensional culture method, despite that culturing cells in three-dimensions on beads was known to the art.” Judge Prost was just getting started: