Goodwin Insights May 06, 2019

Most Impactful Commission Decisions

Commission Finds Evidence of Infringement Insufficient and Complainant Bound by Patent’s Description of the Prior Art

In the Matter of CERTAIN DENTAL CERAMICS, PRODUCTS THEREOF, AND METHODS OF MAKING SAME, Inv. No. 337-TA-1050, Commission Opinion (Feb. 11, 2019)

Before: Commission Opinion (ID issued by Chief Judge Bullock)

Practice Tips and Insights:

To prove infringement at the Commission, Complainant cannot rely on conclusory testimony of its expert based on the expert’s “knowledge and experience.” Further, if the Commission requests briefing on how the accused “methods” meet certain claim limitations, be sure to brief all of the accused methods or the Commission will find any method that is not addressed to have been abandoned. Finally, the Commission will find a patentee bound by statements in a patent’s disclosure, including characterizations of the prior art unless the patentee can rely on non-enablement as a potential basis for collateral attack on the admission.

Holding and Status:

The Commission found no violation of Section 337 as to the ’894 Patent’s annealing claims.

Case Background:

The Complainant, Ivoclar, filed a complaint against GC Corporation of Tokyo, Japan and its US subsidiary, claiming GC violated Section 337 by importing certain dental ceramic products that allegedly infringed four Ivoclar patents. The claims related to two of the patents were withdrawn and the case proceeded with regard to the ‘836 and ‘894 patents. The claims of the ’894 patent were divided into “the ’894 annealing claims,” and “the ’894 flexure strength claims.” The ID found, inter alia, that Complainant failed to demonstrate infringement of the claims of the ’836 patent and that the’894 flexure strength claims are invalid as indefinite under 35 U.S.C. § 112. The ID further found that Complainant failed to demonstrate infringement and failed to meet the technical prong of the domestic industry requirement as to the ’894 annealing claims. The ID also found that some, but not all, of the ’894 annealing claims are invalid in view of certain prior art.

The Commission determined not to review the ID with respect to the ’836 patent and the ’894 flexure strength claims, thereby terminating the investigation as to those claims.  The Commission determined to review the ID’s findings as to the ’894 annealing claims and solicited further briefing from the parties. The Commission also solicited briefing from the parties, interested government agencies, and members of the public on remedy, the public interest, and bonding.

Notable Disputed Issues and Related Points of Law:

Proof Necessary to Show Infringement: The asserted claims required three heating steps: (1) a melting step between 1200-1600°C; (2) an annealing step between 300-600° C for between 15 minutes to 8 hours and (3) at least one heat treatment step between 400-1100° C.  The dispute over infringement stemmed from the fact that there is overlap in the temperature ranges for the annealing and heat treatment steps (i.e. 400-600° C). The ID found that the annealing step is a separate step from the heat treatment step. That construction was not challenged and the Commission thus found that Complainant waived any challenge to the construction.

In its attempt to prove infringement, Complainant relied on two charts that purported to demonstrate the heating parameters for the accused processes, one from 2015 and one from 2017.  The Commission’s notice of review sought briefing on whether the “methods” (plural) demonstrate the “annealing” step. In its briefing to the Commission, however, Complainant only addressed the 2017 process and, therefore, the Commission found Complainant had abandoned any infringement argument concerning the 2015 process.

With regard to the 2017 process, the Commission found Complainant’s evidence insufficient because it relied on the same step in the manufacturing process (the same temperature profile) to show both the annealing and heat treatment steps were practiced. The Commission affirmed the ID’s finding that Complainant’s reliance on the same single step to show the process practices both limitations failed to demonstrate infringement.  The Commission further found that Complainant’s expert’s testimony attributing a portion of the heat treatment to the annealing step and a portion to heat treatment step was conclusory and not supported by any additional testing modeling or text and treatise support.  Although the Commission was careful to point out that it “does not impose a requirement that an expert’s conclusion of infringement be corroborated, the expert’s conclusion based on “knowledge and experience” was not enough.

Complainant Bound By Patent’s Description of the Prior Art: The Commission also affirmed the ID’s finding that certain claims of the ‘894 patent were anticipated by the Barrett reference and, in particular, on the ’894 patent’s own characterization of Barrett which the ALJ found was an admission. The Commission found “the public notice function of a patent entitles the public to take as true statements in a patent’s disclosure, including characterizations of the prior art.”  The Commission stated, however, that Complainant “may have more appropriately relied on non-enablement as a potential basis for collateral attack upon that admission.” Although the Commission found that Complainant failed to demonstrate non-enablement, it indicated that a sufficient non-enablement showing may be sufficient to attack an admission in the patent’s specification.