Search Team

Search by Last Name
A
B
C
D
E
F
G
H
I
J
K
L
M
N
O
P
Q
R
S
T
U
V
W
X
Y
Z

Ajinomoto Co. v. International Trade Commission

“Tangential Exception” to Prosecution History Estoppel Preserves ITC Violation Determination

Ajinomoto Co. v. International Trade Commission, __ F.3d __, 2019 WL 3558560 (Aug. 6, 2019) (Dyk (CIP/DIP), Moore, TARANTO) (ITC) (3 of 5 stars)

Fed Cir affirms ITC determination of a Tariff Act violation in connection with the importation of L-tryptophan products by the respondent DJ CheilJedang Corp. and its affiliates (“CJ”). Ajinomoto’s patent claimed E. coli bacteria genetically engineered to increase production of L-tryptophan, with methods of use. The ITC’s construction of a key term was correct, and the opinion describes how both the specification and prosecution history confirmed that the claim term “replacing” required removal of one element and insertion of a new one—it could not cover changing the element without removal. This was based in part on Ajinomoto’s amendment to the claim to add the word “replacing” and associated comments. Thus the ITC correctly determined that certain of CJ’s bacterial strains were non-infringing.

As to CJ’s cross-appeal, the ITC correctly rejected CJ’s proposed claim construction for a key term. The doctrine of prosecution history estoppel did not bar Ajinomoto from relying on the DOE to prove that CJ’s bacteria practiced a certain limitation due to the “tangential relation” exception to estoppel per Festo, 344 F.3d 1359 (Fed. Cir. 2003). The opinion gathers cases analyzing the exception and agrees with the ITC that an amendment cited by CJ was “tangential to the equivalent in question.” Op. at 21. “[T]he reason for the narrowing amendment—limiting the amino-acid makeup of the proteins included in [a claim]—is unrelated to differences among the several DNA sequences that encode a given protein [which was the Ajinomoto’s asserted equivalence basis].” Id. at 22.

Substantial evidence supported the ITC’s determination that a key protein in CJ’s bacteria was equivalent to a claimed protein. The opinion discusses the evidence and Ajinomoto’s application of the “function-way-result” equivalence test. Substantial evidence also supported the ITC’s finding as to another limitation.

Finally, substantial evidence supported the ITC’s findings relating to its rejection of CJ’s written description attack, and the ITC’s rejection of that attack was correct. The opinion discusses how Ajinomoto’s description both discloses a representative number of species in the relevant genus, and the presence of structure features common to the genus, per Ariad, 598 F.3d 1336 (Fed. Cir. 2010) (en banc).

Dissent-in-part/concurrence-in-part: Judge Dyk would have held that the tangential exception to prosecution history estoppel did not apply in this case, and thus would have reversed as to that aspect of the ITC’s violation determination. He otherwise joins the majority.

KEYWORDS: ITC; SECTION 337; INFRINGEMENT (YES); INFRINGEMENT (NO); PROSECUTION HISTORY ESTOPPEL; DOCTRINE OF EQUIVALENTS; CLAIM CONSTRUCTION; WRITTEN DESCRIPTION (YES)