Split Panel Upholds Commission’s Issuance of a Remedy in Genetically Modified E. Coli Battle
Ajinomoto Co., Inc. v. Int’l Trade Comm’n, No. 2018-1590, 2018-1629 (Fed. Cir. Aug. 6, 2019) (on appeal from Inv. Nos. 337-TA-1005)
Before: Federal Circuit (Dyk, Moore, Taranto) (Dyk dissented-in-part)
Practice Tips and Insights:
This was a fairly standard appeal arguing that the asserted patent claim was not infringed and that it lacked written description. It involved issues of claim construction, doctrine of equivalents, invalidity, and various CAFC doctrines that underlie each of those higher-level issues. The decision is broken up into numerous (ten) sub-parts indicating the panel was looking at the case from a number of angles. In the end, all issues went in favor of the appellee and it could be a good reminder that Appellate Judges often caution parties against appealing too many issues.
Holding and Status:
The Federal Circuit affirmed the Commission’s decision that the asserted patent claim is infringed and that claim is not invalid.
Ajinomoto Co., Inc. and Ajinomoto Heartland Inc. filed a Section 337 complaint against CJ CheilJedang Corp., CJ America, Inc., and PT CheilJedang Indonesia in May 2016. The complaint asserted that CJ used several strains of Escherichia coli bacteria to produce L-tryptophan products and then imported those L-tryptophan products into the United States.
The asserted patent covered the process that CJ performed prior to importation. The ALJ issued a final determination in August 2017 finding that there was no infringement and that the asserted claim was invalid for lack of written description. The Commission, however, disagreed and found that certain CJ strains were infringing and that the asserted claim did satisfy the written description requirement.
The Federal Circuit Panel agreed with the Commission. The Commission’s decision was affirmed.
Notable Disputed Issues and Related Points of Law:
Infringement/claim construction: To reach its infringement decision, the Panel applied what it considered to be plain meaning for the claim phrase “replacing the native promoter . . . with a more potent promoter.” CJ asserted that the plain meaning definition was improper due to prosecution history disclaimer, but the Panel disagreed. In disagreeing, the Panel reiterated that, in assessing disclaimer in the context of claim construction, “the question is what a person of ordinary skill would understand the patentee to have disclaimed during prosecution, not what a person of ordinary skill would think the patentee needed to disclaim during prosecution.”
Infringement/Doctrine of Equivalents: Another notable non-infringement defense related to CJ’s argument that prosecution history estoppel prevented a DOE holding against certain accused products. Although there was a relevant prosecution amendment, Ajinomoto successfully argued that the relevant portion of the amendment was subject to the “tangential relation” exception to prosecution history estoppel. In other words, the Panel found that the amendment CJ alleged gave rise to prosecution history estoppel was actually tangential to the asserted equivalent.
Written Description Requirement: The written description dispute boiled down to whether there were sufficient species disclosures in the specification to have adequately disclosed a broader genus. The Panel determined that the specification had sufficient disclosure. In making this finding, the Panel highlighted that “the written-description requirement will necessarily vary depending on the context, considering such facts as “the existing knowledge in the particular field, the extent and content of the prior art, the maturity of the science or technology, and the predictability of the aspect at issue.” Moreover, the Panel explained that “a patentee may rely on information that is well-known in the art for purposes of meeting the written description requirement, because the specification is viewed from the perspective of one of skill in the relevant art.”
Based on these underlying principles, the Panel concluded that “adequate written description does not require a perfect correspondence between the members of the genus and the asserted common structural feature; for a functionally defined genus like the one at issue here, we have spoken more modestly of a correlation between structure and function.” The Panel also held that CJ’s cited cases were inapposite and the disclosure was, therefore, adequate.
Federal Circuit Affirms that Asserted Patent is Not Invalid and Not Indefinite
Guangdong Alison Hi-Tech Co. v. Int’l Trade Comm’n, No. 2018-2042 (Fed. Cir. Aug. 27, 2019) (on appeal from Inv. Nos. 337-TA-1003)
Before: Federal Circuit (Hughes, Stoll, and Wallach)
Practice Tips and Insights:
Although it did not appear to play a major role in the appeal, the Federal Circuit reminded us that arguments not presented to the Commission are waived and cannot be raised at the Federal Circuit level. Additionally, there was a substantial discussion about indefiniteness with respect to a term of degree. The opinion demonstrates that patent claim terms of degree are not per se indefinite and are, indeed, not indefinite if the patent discloses some objective boundaries for the term of degree. Likewise, extrinsic evidence can be helpful in understanding terms of degree and determining whether they are indefinite.
Holding and Status:
The Federal Circuit affirmed the Commission’s decision that a certain claim limitation was not indefinite and that the asserted patent was not invalid as anticipated.
Aspen Aerogels filed a Section 337 complaint in 2016 alleging that Guangdong Alison Hi-Tech infringed an asserted patent related to aerogel insulation materials. In September 2017, the ALJ determined that Alison had violated Section 337 and recommended an exclusion order. Alison filed a petition for review with the Commission, but the Commission agreed with the ALJ. Thus, in February 2018, a limited exclusion order was entered.
Notable Disputed Issues and Related Points of Law:
Standard of Review: Perhaps because it affected the Panel’s view on anticipation, the Panel laid out the Federal Circuit’s standard for reviewing ITC decisions nicely. Particularly, the opinion explains that the Commission’s factual findings are reviewed for “substantial evidence” while legal holdings are reviewed, not surprisingly, de novo. A finding is supported by substantial evidence “if a reasonable mind might accept a particular evidentiary record as adequate to support a conclusion.”
Indefiniteness: A majority of the opinion analyzes Alison’s arguments that the claim phrase “lofty…batting” was indefinite. The Federal Circuit acknowledged that this term was one of degree that did not include numerical precision. However, the Federal Circuit reiterated that this is not problematic. Particularly, the panel explained that a term is not indefinite if it informs those of skill in the art with reasonable certainty as to its meaning. With respect to “reasonable certainty,” the opinion clarifies that is a “delicate balance between the inherent limitations of language and providing clear notice of what is claimed.” Quoting its own precedent, the Panel even acknowledged that “some modicum of uncertainty is the price of ensuring the appropriate incentives for innovation.” When it comes to terms of degree, like the one here, the opinion clarifies that the specification provides objective boundaries to those of skill in the art, then the term is not indefinite
As to the term “lofty…batting” the Panel found that the specification was “replete with examples and metrics that further inform [its] meaning.” Notably, the panel also looked to extrinsic evidence to help understand how a person of skill in the art would understand the term. Thus, it was not shown to be indefinite. Notably, Alison raised two arguments on appeal that the panel addressed, but also noted were waived because they were not raised at the Commission level. See 19 C.F.R. § 210.43(b)(2).
Anticipation: The Panel analyzed whether a prior art reference was anticipatory. Particularly, Alison argued that a reference cited in and distinguished by the asserted patent inherently disclosed the “lofty…batting” limitation. The Panel emphasized that “arguments and references already considered by the Patent Office may carry less weight with the fact finder.” Additionally, the Panel deferred to the factual findings of the Commission under the substantial evidence standard because “anticipation is a question of fact that we review for substantial evidence.” The Commission’s finding that the patent was not anticipated was affirmed.
Modifying a Prior Ruling on The Preclusive Effect of Commission Trademark Rulings
Swagway, LLC v. Int’l Trade Comm’n, No. 2018-1672, (Fed. Cir. Aug. 14, 2019) (on appeal from Inv. Nos. 337-TA-1007 and 337-TA-1021) (Modifying Opinion from May 9, 2019)
Before: Federal Circuit (Clevenger, Dyk, Mayer)
In our Q2 Newsletter we reported on the May 9, 2019 ruling from the CAFC that potentially confused the framework for analyzing whether ITC trademark rulings have preclusive effect in District Court. That opinion has now been modified to particular remove reference to statements related to ITC trademark rulings not having preclusive effect at the District Court. Thus, it is likely that such trademark rulings should be preclusive though the Panel decision here did not update the opinion in a way that addresses the issue. Instead, the opinion balanced the relevant interests and found that it was within the ALJ’s discretion to not rule on a consent order motion to terminate that Swagway filed on the eve of trial.