On April 27, 2012, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 13 (dated February 14, 2012) in Certain Coenzyme Q10 Products and Methods of Making Same (Inv. No. 337-TA-790).  In the Order, ALJ Rogers denied a motion filed by Respondent Mitsubishi Gas Chemical Co., Ltd. (“MGC”) for summary determination.  Complainant Kaneka Corporation (“Kaneka”) and the Commission Investigative Staff (“OUII”) opposed the motion.

According to the Order, in its motion for summary determination, MGC originally sought a ruling on eight specified issues regarding claim construction, invalidity, and non-infringement. However, MGC’s reply brief conceded that for six of these eight issues, disputed facts precluded summary determination.  Thus, the ALJ determined to only address the two remaining issues: (1) MGC’s argument that prosecution history estoppel bars a finding of infringement under the doctrine of equivalents, and (2) MGC’s assertions regarding material undisputed facts.

As to the first issue, MGC argued that Kaneka’s infringement allegations under the doctrine of equivalents were barred due to Kaneka’s amendment during prosecution.  According to MGC, this amendment added the “inert gas atmosphere” and “sealed tank” limitations to the claims to overcome certain prior art.  In response, Kaneka argued that these claims were distinguished over the prior art based on other reasons, thus the rationale underlying the amendments bore no more than a tangential relation to the equivalent in question and prosecution history estoppel should not apply.  ALJ Rogers determined that this created a genuine issue of material fact between the parties regarding the patentee’s rationale behind the amendments, thus precluding a finding on summary determination.

MGC also sought an order adopting sixteen asserted material undisputed facts.  According to the Order, all but one of these assertions was disputed by Kaneka and/or OUII.  ALJ Rogers found no basis for adopting the fifteen disputed facts and therefore adopting the remaining one undisputed fact:  that “Kaneka’s Pre-2002 Process used  a culture medium containing a carbon source, a nitrogen source, a phosphorous source and a micronutrient.”