Digest of Kaneka Corp. v. Xiamen Kingdomway Group Co. Nos. 2014-1373, 2014-1399 (Fed. Cir. June 10, 2015) (precedential). On appeal from C.D. Cal. Before Newman,Reyna, and Hughes.
Procedural Posture: Plaintiff patent owner appeals summary judgment of noninfringment based on the district court’s claim constructions of three claim terms. The Federal Circuit affirmed-in-part, vacated-in-part, and remanded.
- Waiver / Claim Construction: Kaneka did not waive its right to challenge certain arguments regarding the district court’s grant of summary judgment even though it did not identify a genuine issue of material fact regarding infringement under Kaneka’s proposed construction. Since the district court’s grant of summary judgment of noninfringement rests on an erroneous claim construction (as determined by the Federal Circuit), a genuine issue of material fact may exist concerning infringement.
- Claim Construction: The Federal Circuit affirmed the construction of the “inert gas atmosphere” term and the corresponding grant of summary judgment of noninfringement because the patentee withdrew its arguments in light of another unfavorable claim construction in a related case.
- Claim Construction: The Federal Circuit held that construction of the term “sealed tank” should be construed from the intrinsic record before consulting a conflicting dictionary definition, and vacated the district court’s construction. Although the specification does not specifically define the term, the appropriate definition can be ascertained from the specification, and word-for-word alignment of disclosed embodiments with claim language is unnecessary to ascertain a claim term from the intrinsic record.
- Claim Construction: The Federal Circuit affirmed the district court’s finding that “oxidizing” must be an active, and not a passive, process because it necessarily requires some action but that it does not require the use of an oxidizing agent, which is only a preferred embodiment.
- Claim Construction–Method Claims: Where the steps of a method claim actually recite an order, the claim is ordinarily construed to require order, but not necessarily that each step occur independently or separately, if the written description contemplates continuous process steps. The Federal Circuit disagreed that the claimed order excluded passive oxidation during other process steps.
- Claim Construction: The Federal Circuit disagreed with the district court’s construction that “all or substantially all” of the reduced coenzyme Q10 must be oxidized, as there is no yield requirement in the patent specification.
Note: Special thanks to Na Kyung Lee, a 2015 Kenyon summer law clerk.