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Fish Wins ITC Ruling in Patent Case for Mitsubishi Gas Chemical

December 4, 2012

Fish Wins ITC Ruling in Patent Case for Mitsubishi Gas Chemical

December 4, 2012

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Mitsubishi Gas Chemical found not to infringe Kaneka Corp’s patent relating to Coenzyme Q10, a popular dietary supplement

Washington, D.C., December 4, 2012 – Fish & Richardson today announced that it has won an International Trade Commission (ITC) ruling for Japan-based Mitsubishi Gas Chemical (MGC), one of the world’s largest manufacturers of Coenzyme Q10, in a patent infringement case brought by Japanese company Kaneka Corporation.  On November 29, 2012, the ITC issued Notice of its Final Determination that MGC does not infringe the patent asserted by Kaneka.

Fish senior principal John Pegram and principal John Goetz served as lead counsel at trial for Mitsubishi Gas Chemical, with pre-trial assistance from principal Joseph Colaianni and Jennifer Scarpati.

“This was a big win for our client and we are very pleased with the ITC Commission’s decision,” said John Pegram, principal at Fish & Richardson.  “This final Notice not only affirms the Initial Determination of no violation, but it goes further in supporting and strengthening the arguments we made on behalf of Mitsubishi Gas Chemical.”

The case dates back to March 22, 2011 when Kaneka was issued a U.S. patent (U.S. 7,910,340) for processes related to making the dietary supplement Coenzyme Q10 by fermentation and other steps.  Kaneka filed its patent application in Japan in 2001 and in the U.S. in 2002.

On the same day its U.S. patent issued, Kaneka sued MGC and other companies for patent infringement in the U.S. District Court in Los Angeles.  On June 17, 2011, Kaneka filed a petition with the ITC, and the district court case was later stayed pending an ITC decision.  The ITC’s Initial Determination of no violation was issued on September 27, 2012.

The case turned primarily on the construction of key claim limitations.  ITC Judge Robert K. Rogers, Jr. adopted substantially the constructions suggested by the Respondents and determined that neither MGC nor any of the other Respondents infringed Kaneka’s patent.  He also found that Kaneka did not satisfy the domestic industry requirement for finding a Section 337 violation, because Kaneka’s U.S. subsidiary was not using the claimed invention.

Kaneka petitioned for a review by the ITC Commissioners.  The Commission’s November 29, 2012 Notice confirms the Initial Determination of no violation and expands on Judge Roger’s findings.  In particular, the Commissioners reviewed and confirmed a finding that MGC’s process does not infringe a key limitation, found in all of the claims, and also essentially determined that approximately half of the asserted claims were invalid for addition of new matter to those claims during prosecution of the patent application.

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