Docket No. 2014-1373, -1399
NEWMAN, REYNA, HUGHES
June 10, 2015
Brief Summary: DC claim construction correct on some points but incorrect on others (“inconsistent with the intrinsic record”, steps of claims not limited to particular order, preamble “comprises” does not eliminate other steps, “no mention in the specification of a yield requirement” (“all or substantially all” in DC definition)).
Summary: Kaneka appealed DC grant of SJ of noninfringement of US 7,910,340 related to process for producing oxidized coenzyme Q10 (oxidized and reduced forms are sold as dietary supplements), based on its claim construction. Kaneka had filed suit in the CD of CA and also a Section 337 Petition in the US ITC on the same claims. The DC stayed the litigation until the ITC decision, which ultimately concluded no infringement. The DC then lifted the stay and construed the claims, construing the terms “inert gas atmosphere”, “culturing”, “sealed tank”, and the “oxidizing” step (construed to mean “actively converting all or substantially all of the reduced coenzyme Q10 obtained from the disruption step to oxidized coenzyme Q10 in a step before beginning the extraction step” in claims 1 and 22 but to mean “actively converting all or substantially all of the extracted reduced coenzyme Q10 obtained from the disruption step to oxidized coenzyme Q10 in a separate step after the extraction step has been performed” in claims 11 and 33). The FC affirmed the construction of “inert gas atmosphere” (“Kaneka withdrew its arguments in light of another unfavorable claim construction of this term in a related case”). It also found the DC construction of “sealed tank”, which relied upon the ITC dictionary definition and related testimony, to be inconsistent with the intrinsic record (e.g., “the specification indicates that the ‘sealed tank’ is not sealed to prevent entry or exit of all materials”, DC construction would exclude ‘340 Figure 1 and Example 8 (MBO Labs., FC 2007 (claim construction that excludes a preferred embodiment is “rarely, if ever, correct”); term does not necessarily have “one plain and ordinary meaning that governs” if patentee did not define it (O2 Micro Int’l, FC 2008)). The FC further concluded the “oxidizing” step was misconstrued because “the claimed order” of the steps in the claim does not “exclude passive oxidation during other process steps” (and each step may be carried out separately or independently of any other step; Interative Gift, FC 2001 (Where the steps of a method claim actually recite an order, we ordinarily construe the claim to require order.); E-Pass, FC 2007 (order may be require “if the language…refers to the completed results of the prior step”); “preamble term ‘comprises’ indicated that additional oxidation steps of results are not excluded” (citing Boehringer, FC 2003)), and “there is no mention in the specification of a yield requirement” (“all or substantially all” in DC definition). Based on these conclusions, the DC decision was affirmed as to some claims but vacated and remanded as to others.