Dispositive summary judgment in district court patent cases is somewhat common, but similar early dispositions of Section 337 investigations in the ITC are rare in comparison. One such outcome happened recently in Certain UV Curable Coatings For Optical Fibers, Coated Optical Fibers, And Products Containing Same, Inv. No. 337-TA-1031. Order No. 33 (July 6, 2017). Respondent Momentive UV Coatings (Shanghai) Co., Ltd. (“MUV”) moved for summary determination that asserted claims 16-18, 21, and 30 of U.S. Patent No. 7,706,659 (“the ’659 patent”) are invalid for claim indefiniteness under 35 U.S.C. §112, ¶2. ALJ McNamara concluded that there were no genuine disputes of material fact and granted the motion. Order No. 33 at 1-2 (July 6, 2017).
MUV asserted that the ’659 patent specification is ambiguous with respect to the term “molecular weight,” which is present in all claims included in the motion. Id. at 2. The specification uses multiple terms to refer to the relevant physical property: “number average molecular weight,” “average molecular weight,” and “theoretical molecular weight of an individual molecule in the oligomer.” Id. at 3-4. In a Markman hearing previously conducted in this Investigation, “molecular weight” was construed as “the sum of the atomic weights of the atoms in a molecule.” Id. at 4. Nevertheless, as noted by Staff, there are “at least two vastly different possible meanings” for the claim term “molecular weight” even given its construction: (1) a reference to the actual molecular weight of the individual oligomer molecules; or (2) an average molecular weight for the oligomer taken as a whole (e.g., number average molecular weight). Id. If this fact pattern rings a bell, there is a reason for it – “molecular weight” was a term recently discussed in Teva Pharmaceuticals USA, Inc. v. Sandoz Inc., 789 F.3d 1335 (Fed. Cir. 2015).
A patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014). Here, MUV and Staff argued that the claims are indefinite because their scope “depends on a given measurement but the patent specification does not specify which measurement to use, which, in turn, leads to inconsistent results.” Id. at 7.
ALJ McNamara agreed explaining that “[i]f the patent claim specification, as it does here, and as the Teva court found, gives a variety of different measurement terms in the same specification without stating whether the measurement is the ‘average’ of the oligomer or co-polymer, or the weight that is not an ‘average,’ there is uncertainty.” Id. at 9. The ALJ concluded “that the facts are in,” and “[h]ere, as in Teva, the claim scopes leave it unclear as to which measurement is defining the scope of the claims.” Id. at 8-9. Therefore, the ALJ held that asserted claims 16-18, 21, and 30 of U.S. Patent No. 7,076,659 are invalid for claim indefiniteness under 35 U.S.C. §112, ¶2 and granted MUV’s motion. Id. at 9.
Although summary determination of no violation at the ITC is somewhat rare, ALJs can be receptive to arguments based on §112 or §101 issues. Therefore, a motion for summary determination may be a low risk, high reward option for a respondent. Even if only some of the asserted claims get invalidated (as was the case in this investigation), the scope and corresponding costs of the case may be substantially affected. That said, respondents should be aware that the Commission may overturn the ALJ’s decision and they should still pursue invalidity discovery or risk being precluded from doing so on remand as discussed here.