Blog March 23, 2020
Ordered Method Claim Does Not Bar Partly-Simultaneous Performance of Steps
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Kaneka Corp. v. Xiamen Kingdomway Grp. Co., ___F.3d ___ (Fed. Cir. June 10, 2015) (Newman, REYNA, Hughes) (C.D. Cal.: Pfaelzer) (2 of 5 stars)
Federal Circuit reverses summary judgment of noninfringement for certain claims, and affirms for others, on claim construction grounds.
The patent addressed processes for producing oxidized coenzyme Q10 at an industrial scale. The claims generally included steps of obtaining reduced coenzyme from microbial cells, "oxidizing" the reduced coenzyme, and extracting the oxidized coenzyme. The patentee had preserved its claim construction issues for appeal by arguing them in its opening summary judgment brief below, even though it had not specifically identified what the disputed factual issues would be under that construction.
On the first term—"inert gas atmosphere"—the Federal Circuit affirmed because the patentee had withdrawn its claim construction arguments after another district court had also construed the term against it.
On the second term—which required the claimed extraction step occur in a "sealed tank"—the district court erred in interpreting that term to exclude the possibility of any materials entering or exiting the tank. This construction would have excluded all the disclosed embodiments, as they showed solvent flowing in and out of the tank. Although the specification did not explicitly define the term (or even use the term "sealed"), it was possible to discern that it referred simply to "a tank that prevents exposure of the tank's contents to the atmosphere." Extrinsic dictionaries with narrower definitions could not trump the intrinsic evidence.
On the third term—"oxidizing"—the district court properly concluded that this required an active step, i.e., the claim did not address "doing nothing, or to simply allow oxidation to occur on its own." Id. at 10. Interpreting the claim to cover passive oxidation, as Kaneka urged, would mean that the patentee's inclusion of a separate oxidation step would have, in some embodiments, no significance. This "active" oxidation step did not require use of an oxidizing agent, however, as this would import the preferred embodiment into the claims. The various claims imposed an order requirement—i.e., at least some oxidation had to occur before extraction in one claim, and after extraction in another claim. But this did not mean that the claims barred passive oxidation during other steps. "The claims do not exclude a continuous process, in which later steps are initiated as soon as at least some product from the previous step forms, while previous steps are still ongoing." Id. at 12. Finally, the district erred in requiring oxidation of "all or substantially all" of the Q10 in a single step. Neither the claims nor the specification impose a yield requirement.
The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.
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