ITC Section 337 Case Requires Showing That Imports Threaten US Market for Articles Protected by Asserted Patent

OSRAM v. ITC (Fed. Cir. 2007) (non-precedential) 

Many patent litigators see the International Trade Commission (ITC) as the preferred forum for stopping imports of infringing products. In particular, when compared with district court litigation, Section 337 ITC actions move to conclusion much more quickly; offer a better chance of immediate preliminary relief; and allow for “general exclusion orders” to stop imports industry-wide (i.e., those injunctions cover particular accused infringers as well as other non-parties).  The ITC has no power to award damages — However, injunctive relief does not require that the patentee prove-up the eBay factors.

One limitation of Section 337 ITC actions is that they can only be pursued when the imports threaten a US industry for the protected article. (US industry must either exist or be “in the process of being established.”  19 USC 1337(a)(2). This ‘domestic industry test’ has been interpreted to require that the domestic product also infringe the patent. Alloc v. ITC, 342 F.3d 1361 (Fed. Cir. 2003).

In this case, the ITC’s original claim construction of a term limiting the size of luminous pigment grains resulted in a finding that OSRAM’s US sales were not covered by the patent. On appeal, the CAFC modified the claim construction holding — and consequently found that OSRAM’s products are covered by their own patent.

Judge Dyk dissented on the claim construction issue.

Notes:

• Prosecution thoughts: This case provides a concrete example of one reason why the most important claims in a patent are usually directed at covering the client’s actual (or expected) product.
• The claim construction issue here is actually quite interesting. The disputed limitation reads as follows: “a mean grain diameter d50 # 5 μm”. The appeal focused on whether the mean grain diameter should be calculated on a number-based average (average diameter) or a volume basis (diameter of grain with average volume). This analysis is complicated by the fact that the claimed d50 term generally indicates a median – not a mean.  Judge Dyk sided with the ITC holding that the volume based average should be used because that is the “commercial standard.” The majority chose the number based diameter calculation for reasons well-dissected by Judge Dyk.

Comments

[Luke Ueda-Sarson]

A very finely balanced argument. I think J. Dyk's dissent has many good points, but I am not at all convinced about his basic assumption that commercial users' usage should trump researchers' usage, and therefore it doesn't persuade me on the balance.

Patents may well protect commercial products, but it is researchers that make those products in the first place.

Cheers, Luke

[Mike G]

I think the opinions should have focused more on who the person of ordinary skill in the art is. If the person of ordinary skill is a buyer or seller of the commerical product, then I think Judge Dyk is correct that the volume method should be used. If the person of ordinary skill is a product developer, I think the majority is correct that the number method should be used.

Neither opinion really seems to provide much authority for whose understanding of the claims matters. Judge Dyk used the rather conclusory statement that: "Those who secure patents typically are describing devices and methods designed for commercial use, rather than devices designed only for research. It follows, I believe, that the patent should be interpreted to utilize this commercial measurement rather than the research measurement." That feels correct, but it seems like it should be supported by authority rather than just a feeling.

Maybe I'm confusing the obviousness standard of phosita with the claim interpretation guide of a person of ordinary skill. But it really does seem like more analysis was needed on whose understanding of the claims should control.

[Bill Blonigan]

Mike:

I agree that more analysis was needed. As you point out, Dyk's analysis pricked a nice hole in the majority's reasoning, but then performed its own logical leap by deciding that the commercial standard is more proper. This issue could go both ways and neither opinion convinces me of the soundness of its choice.

The patent must be read as a PHOSITA reads it, so it seems that the true question is W.W.P.D. (what would PHOSITA do?). However, the CAFC's interpretation of the SC's Markman opinion is that it deems claim construction a pure question of law.

Confusingly, the court in the present case interprets extrinsic expert testimony a la Phillips to support its views on the ambiguous mean/d(50) terms, which becomes crucial to its analysis. But note that the court does not rely solely on the expert to arrive at its construction. Instead, they put this into a package along with the two treatises cited. They then put the package into a flimsy legal (non-factual) basket--the Howmedica case--and pass the claim construction off in the basket as one based on law, not fact. Under their current regime, they executed the analysis properly, but it seems that the panel cited Markman, Phillips and Cybor Corp., but then avoided any question as to whether claim construction is a pure question of law or a mixed question of law and fact (like 103). In the CAFC's denial of en banc review of Amgen v. Hoechst (certiorari denied), the CAFC shows strong concerns with the status quo on this issue. See http://www.fedcirc.us/case-reviews/amgen-inc.-v.-hoechst-marion-roussel-inc-2.html.

If this question would have been presented squarely by the parties, perhaps this would be a much more meaningful opinion.

On another front, I find it interesting that although the court does not apply the APA on this issue, it essentially evaluates the reasonableness of the Commission's construction and reverses. First, the court states that the Commission "selected the volume-based method" over the number-based method (p.4). Then the court fell back on the only legal (non-factual) grounds for its position by stating that PHOSITA is "reasonably deemed to select the method that better measures the parameter relevant to the invention." (p. 9) (citing Howmedica). Finally, the court holds that:

"The Commission erred in construing the claims as requiring the volume-based method, contrary to the ordinary meaning of the term as reflected in the specification and the testimony, and at odds with the purposes of the invention. See Phillips."

It seems to me that this is just a reasonableness analysis couched in terms of Howmedica rather than the APA.

Re your confusion about obviousness, PHOSITA and the like, see: http://www.patentlyo.com/patent/2007/05/forgent_v_echos.html (and scroll to the second post by Posted by: MaxDrei | May 31, 2007 at 02:09 AM)