On July 24, 2012, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 42 (dated June 12, 2012) granting-in-part respondents Zhejiang Medicine Co., Ltd. and ZMC-USA LLC’s (“ZMC”) motion for summary determination of non-infringement of U.S. Patent No. 7,910,340 in Certain Coenzyme Q10 Products and Methods of Making Same (Inv. No. 337-TA-790).
According to the Order, ZMC argued that its accused process for manufacturing oxidized coenzyme Q10 does not infringe the ‘340 patent because ZMC does not extract coenzyme Q10 under an inert gas atmosphere or in a sealed tank as required by the asserted claims. Specifically, ZMC contended that (1) the term “inert gas atmosphere” recited in claims 1 and 11 should be construed to mean “an atmosphere of inert gas that is free or substantially free of oxygen,” and (2) the term “sealed tank” in claims 22 and 33 should be interpreted as “a tank that has been closed off to protect the contents of the tank from exposure to air and otherwise prevent the entry or escape of gases during the extraction process.” Kaneka responded that (1) “inert gas atmosphere” means “a gas atmosphere that is less readily reactive with the organic solvent,” and that ZMC’s process meets the “inert gas atmosphere” limitation under either party’s construction; and (2) “sealed tank” means “a tank that substantially prevents direct exposure of its contents to the atmosphere.”
ALJ Rogers found it premature to construe the disputed claim terms on an abbreviated summary determination record. The ALJ also found that even under ZMC’s constructions, a genuine factual dispute over whether the extraction atmosphere in the accused ZMC process is an “inert gas atmosphere” and whether ZMC’s process meets the “sealed tank” limitation precludes summary determination of literal infringement. With respect to doctrine of equivalents, ALJ Rogers noted genuine issues of material fact as to (1) whether the applicant’s rationale behind the amendments adding the claim language “under an inert gas atmosphere” and “in a sealed tank” gives rise to prosecution history estoppel that bars infringement under the doctrine of equivalents; and (2) whether the atmosphere of ZMC’s extraction tank is equivalent to a “sealed tank” and performs substantially the same function in substantially the same way to achieve substantially the same result as the claimed “inert gas atmosphere.”
However, ALJ Rogers granted ZMC’s motion with respect to claims 2, 5-8, 12, 16-19, 23, 26-28, 32, 34, 38-40 and 45 of the ‘340 patent on the grounds that the record showed that these claims were still a part of the investigation, ZMC cited Kaneka’s expert’s deposition testimony indicating that these claims were not infringed by ZMC, and Kaneka failed to respond to the substance of ZMC’s infringement assertions.