December 21, 2020 - Last Week in the Federal Circuit

Last Week in the Federal Circuit (December 14-18): And/or confusion

Last week, we got what may be the last big batch of Federal Circuit opinions of 2020.  (In 2019, only six more opinions issued between this time and the end of the year.)  Although most of last week’s decisions were issued pretty speedily after argument, one case had been on the Court’s plate for a while.  After pending for over a year since argument, Biogen v. Iancu, an IPR appeal, ended anticlimactically in a Rule 36 affirmance.  (For more on opinion timing, see our stats post last week.)  As we haven’t discussed a patent case since November, we decided to remedy that deficiency—even if that means writing about a non‑precedential decision.  Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.

Precedential opinions: 2

Non-precedential opinions:  12

Rule 36:  5

Longest pending case from argument:  Biogen, Inc. v. Iancu, No. 19-1364 (376 days)

Shortest pending case from argument (non-Rule 36):  Caterpillar Inc. v. ITC, No. 19-2306 (42 days)

Case of the week: Bracco Diagnostics Inc. vs. Maia Pharmaceuticals, Inc., No. 20-1387

Panel: Judges Lourie, Clevenger, and Chen, with Judge Lourie writing the opinion

You should read this case if: grammar gets you going

Does “X/Y” mean “X and Y,” “X or Y,” or both?  The Federal Circuit took on the meaning of a slash in our case of the week.

The case concerns drug patent claims referring to “a surfactant/solubilizer.”  Whether the defendant infringed the patent turns in part on the meaning of the slash.  According to the accused infringer, the slash means “and”:  To be “a surfactant/solubilizer,” a substance must be both a surfactant and a solubilizer.  According to the patentee, the slash captures both “and” and “or”:  To be “a surfactant/solubilizer,” a substance can be a surfactant or a solubilizer, or both.  (Nobody argued for the third possibility that the slash means only “or”:  The substance must be either a surfactant or a solubilizer but not both.)  Because this is an issue of claim construction and the parties didn’t resort to extrinsic evidence, the case called for an answer to the meaning of the slash as a matter of law.

The district court sided with the patentee.  With no apparent sense of irony, the court construed the term to mean a “surfactant and/or a solubilizer.”  The district court then showed off even more uses of this beguiling punctuation mark, explaining that a surfactant can change the properties of a substance “at air/liquid or liquid/solid interfaces.”

The Federal Circuit agreed that the slash in “surfactant/solubilizer” captures both “and” and “or.”  (The Court actually called it a “backslash,” which ordinarily refers to a different punctuation mark, “\”.  Maybe we should be saying “slash/backslash” in this post, but we’re sensitive to our readers’ pain tolerance.)

Had the Court looked outside of the patent, it could have surveyed the varied uses of slashes in common parlance.  We often understand slashes to mean “and”—as in “JD/MBA” and “I’m working remotely from my bedroom/office.”  Slashes can also mean “or”—as in “he/she.”  And they can mean, as the Court held here, both “and” and “or”—as in “Please bring food/drinks.”  (There are still more possibilities.)  Is one of these the slash’s plain ordinary meaning?

The Court didn’t go there, instead focusing only on contextual clues in this patent bearing on the slash’s meaning.  Other claims in the patent, the Court concluded, indicated that “surfactant/solubilizer” can include a substance that is only a “surfactant.”  Also, the specification used slashes with other words, and the Court found those uses consistent with the slash capturing “or.”

This opinion won’t put an end to debates over slashes.  Not only was the opinion’s analysis tailored to this patent, but the Court also made the opinion non-precedential.  We hope that when the Federal Circuit takes on the next greatest linguistic debate of the modern era, it will issue its view on whether a hot dog is a sandwich in a binding opinion.