In Kinik v. U.S. Int抣 Trade Comm. et al., No. 02-1550 (Fed. Cir. March 25, 2004), the federal circuit affirmed the Commission抯 decision that section 271(g) did not apply to section 337 investigations at the ITC and reversed a finding of infringement based on an erroneous claim construction.
3M filed for relief under Section 337 based on the importation of products made in Taiwan by respondent Kinik, alleged to infringe 3M抯 �9 patent, directed to a process for producing certain abrasive articles. Kinik argued its products did not infringe the �9 patent under 35 U.S.C. §271(g) because its products were 搈aterially changed by subsequent processes.� The Commission disagreed, stating that §271(g) was not available as a defense to infringement under Section 337 based on the Process Patent Amendments Act of 1988 (搃n adding §271(g) to Title 35, 慬t]he amendments made by this subtitle shall not deprive a patent owner of any remedies available . . . under section 337 of the Tariff Act of 1930, or under any other provision of law.� Pub. L. 100-418, §9006(c)�). To hold otherwise would deprive the patent owner of a remedy available under the Tariff Act.
The federal circuit agreed, highlighting the explicit statement in the legislative history that the existing scope of §337 actions would not be diminished, and that §271(g) -- in the clause introducing the new defenses to infringement by overseas practice -- stated it was "for purposes of this title." According to the court, such clause would have been unnecessary unless it served to avert conflict between the Patent Act and the Tariff Act, recognized in the contemporaneous record. The federal circuit also cited the deference owed to the Commission in interpreting its own rules, since it is charged with the administration of §337(a) and its successor §1337(a)(1)(B)(ii).
Kinik also argued that the �9 patent claims were limited to preform mixtures containing a larger volume of liquid binder composition than powdered matrix material, as described in the �9 patent specification. 3M argued that the '489 claims were not limited to any particular ratio of liquid binder to powder. The Commission agreed with 3M, and affirmed the ALJ's determination of infringement by Kinik抯 process, wherein the volume of liquid binder was significantly less than the volume of matrix powder.
The federal circuit disagreed with the Commission抯 claim construction, finding that the patentee (1) made clear that the invention intended to be claimed was limited to preform mixtures containing a larger volume of liquid binder than matrix material, and (2) specifically disclaimed mixtures other than those with an excess of liquid binder over powder. The court focused both on language in the specification as well as arguments made in response to rejections in the prosecution history. Writing for the panel, Judge Newman rejected 3M抯 contention that the invention was not limited to use of excess binder in the preform (because that limitation was not included in the claims) as inconsistent with precedent that limitations from the specification should not be read into the claims. Although the precedent was described as 憇ound,� 損recedent does not hold that the claims are not limited by what is described and enabled. Patent claims are directed to the invention that is set forth in the "specification".
Resort to dictionary definitions was insufficient to define the term 搈ixture� where, as here, the word "mixture" in the claims had the scope given it in the specification, and explicitly required an excess of liquid binder over powdered matrix.
To view the full decision visit http://www.aplf.org/mailer/Issue194.doc
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