Introduction

On August 27, 2019, the United States Court of Appeals for the Federal Circuit made decision in Guangdong Alison Hi-Tech Co. v. International Trade Commission. In 2016, domestic manufacturer Aspen Aerogels, Inc. filed a complaint with the International Trade Commission alleging that Guangdong Alison Hi-Tech Co., a foreign manufacturer of aerogel insulation products, had violated section 337 of the Tariff Act of 1930. Aspen posited that the importation of certain composite aerogel insulation materials infringed their U.S. Patent No. 7,078,359, thereby violating section 337. In September 2017, the administrative law judge (“ALJ”) held that Alison had indeed violated section 337, citing that Alison infringed the ‘359 patent protecting Aspen’s insulation materials. The Commission affirmed the ALJ’s initial determination, holding that Alison had infringed on the claims 1, 7, and 9 of the ‘359 patent, which can be found below.

Claim 1: A composite article to serve as a flexible, durable, light-weight insulation product, said article comprising a lofty fibrous batting sheet and a continuous aerogel through said batting.

Claim 7: The composite article of claim 1, further comprising a dopant.

Claim 9: The composite article of claim 7, wherein the dopant is present in an amount of about 1 to 20% by weight of the total weight of the composite.

The Commission placed an importation band on Alison’s composite aerogel insulation materials, prompting Alison to petition the Commission for review of the ALJ’s initial determination. Alison challenged the validity of the claims mentioned above, citing prior art belonging to Ramamurthi (U.S. Patent No. 5,306,555), on the basis of indefiniteness, anticipation, and obviousness. The Commission affirmed the ALJ’s claim construction order, rejecting Alison’s challenges. Alison appealed the decision. The Federal Circuit affirms the Commission’s final determinations on all grounds.

Decision

Naturally, the Federal Circuit performed an analysis of all the Commission’s final determinations, as described below:

1.     Terms of Degree: Indefiniteness. In the appeal before the Federal Circuit, Alison challenges the Commission’s determination that the phrase “lofty … batting” in claim 1 of the ‘359 patent is not indefinite. Patents with claims involving terms of degree, such as the term “lofty” in this particular case, must provide “objective boundaries” in the context of the invention. These objective boundaries can be identified by “claims, figures, written description, prosecution history of a patent,” as well as extrinsic evidence. Alison argues that the phrase “lofty … batting” is an indefinite term of degree without a precise objective boundary. However, the Federal Circuit rules that the written description for the ‘359 patent provides objective boundaries in the following ways:

a.     Express definitions. Upon analysis of the ‘359 patent, the Federal Circuit finds that the written description “provides express definitions for the phrase and its components.” “Lofty batting” is expressly defined as a “fibrous material that shows the properties of bulk and some resilience.”

b.     Examples. The written description also includes numerous examples and measurement metrics that further inform the meaning of the phrase. The Federal Circuit cites examples of commercial products that can qualify as lofty batting. Metrics for the fineness of fibers, thermal conductivity of the batting, and density of the batting qualify as well.

In addition to the written description, the prosecution history of the ‘359 patent supports the conclusion. In the Statement of Reasons for Allowance, the patent examiner emphasized that the specification “defined ‘lofty fibrous batting’ as a ‘fibrous material that shows the properties of bulk and some resilience,’ which distinguishes the prior art based on this term.” Finally, extrinsic evidence provides further support for the objective boundaries of the phrase. The technical definitions of “batting” and “loft” confirm that they are “terms of art that have meanings consistent with their use in the ‘359 patent.”

2.     Anticipation. The Commission affirmed that the ‘359 patent’s claims 1, 7, and 9 are not anticipated by prior art in the form of Ramamurthi. Alison challenges this determination by appealing to the Federal Circuit on the basis that “the Commission’s determination is unsupported by substantial evidence.” A patent claim is invalid on the basis of anticipation only if “each and every element of the claim is expressly or inherently disclosed in a single prior art reference.” Alison argues that an example in Ramamurthi demonstrates the same properties of “bulk and some resilience” as the construction of “lofty … batting,” while another example “has the same low density and thermal characteristics as the aerogel composites disclosed in the ‘359 patent.” The Federal Circuit affirms the Commission’s conclusion that “fiber glass” and “glass wool” each describe broad categories of materials that are not inherently “lofty.”’ Additionally, low-density fiber, according to expert testimony, is not inherently lofty, so the second example in Ramamurthi provides little support for Alison’s inherency argument. The Federal Circuit holds that “substantial evidence supports the Commission’s final determination of no anticipation.”

3.     Obviousness. Regarding obviousness, claim 9 recites a specific range of dopant that the Commission determined not to be expressly disclosed in Ramamurthi. On appeal, Alison argues that the specific range mentioned in claim 9 “is inherently disclosed by or would have been obvious over Ramamurthi’s disclosure.” However, because the Federal Circuit affirms the Commission’s determination that the “lofty … batting” limitation of claim 1 is not inherently disclosed by Ramamurthi, the Federal Circuit holds that there is no need to reach the separate ground for claim 9.

For the reasons above, the Federal Circuit affirms the Commission’s final determination that claims 1, 7, and 9 of the ‘359 patent are not invalid.

Conclusion

When applying for a patent, it is crucial that the applicant can clearly provide objective boundaries for claims involving terms of degree in the context of the invention. Objective boundaries – which can be identified by claims, figures, written description, prosecution history of a patent, or extrinsic evidence – help to satisfy the reasonable certainty standard that reflects a delicate balance between the inherent limitations of language and providing clear notice of what is claimed.   

Full Guangdong Alison Hi-Tech Co. v. International Trade Commission decision can be read here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-2042.Opinion.8-27-2019.pdf

Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C.

 

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