Issue 188 | April 23, 2004
Subsequent Processing not a
Defense to Unfair Importation

On March 25, 2004, the United States Court of Appeals for the Federal Circuit confirmed in Kinik Co. V. Int’l Trade Comm., No. 02-1550 that the "subsequent processing" defense under 35 U.S.C. §271(g)(1) does not apply to the unfair importation of products that are produced by an infringing process outside the U.S. The decision is yet another reason why intellectual property owners should consider the U.S. International Trade Commission as a forum for enforcing their intellectual property rights.

During its "Abrasive Products" investigation, the Commission found that the process claimed in 3M’s U.S. Patent No. 5,620,489 was being used in Taiwan to produce certain abrasive articles that were being imported by the Kinik Company into the United States. Kinik defended its actions by arguing that, under 35 U.S.C. §271(g), the product made by the patented process was "materially changed by subsequent processes." Specifically, the patent required the mixture to be "sintered" to a temperature just below the melting point, while the Kinik process "brazened" the mixture to a much higher temperature that, according to Kinik, materially changed the resulting product and prevented any infringement.

The Federal Circuit agreed with the Commission that the "subsequent processing" and/or "trivial and nonessential component" defenses to patent infringement under 35 U.S.C. §271(g) are expressly limited to patent infringement actions before the judiciary under Title 35 of the U.S. Code, and therefore these defenses do not apply to unfair import actions before an administrative agency under 19 U.S.C. §1337. The appeals court then went on to discuss legislative history and precedent to support its conclusion.

Ultimately, the appeals court avoided having to decide whether Kinik’s "brazening" substantially changed the mixture, or whether any defenses similar to those that are codified by §271(g)(1) are available in §337 actions, by reversing the Commission’s finding of infringement. Nonetheless, the decision gives new import to the Commission’s power to exclude from entry into the U.S. those products that are produced by an infringing process outside the U.S.

General information about "Unfair Import Investigations at the U.S. International Trade Commission" is also available at http://www.aplf.org/events/roundtables/2002-06-20.shtml and ftp://ftp.usitc.gov/pub/reports/studies/PUB3516.PDF. To discuss this topic further, please feel free to contact the author, Chris Guinn (chris.guinn@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley in Atlanta, Georgia USA.

The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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