Further to our June 15, 2012 post, on July 13, 2012, the International Trade Commission (the “Commission”) issued the public version of its opinion finding no violation of Section 337 in Certain Reduced Ignition Proclivity Cigarette Paper Wrappers and Products Containing Same (Inv. No. 337-TA-756).
By way of background, the Complainant in this investigation is Schweitzer-Mauduit International, Inc. (“Schweitzer”) and the remaining Respondents are Julius Glatz GmbH, LIPtec GmbH, and KneX Worldwide LLC (collectively, “Glatz”). In the Initial Determination (“ID”), ALJ E. James Gildea determined that no violation of Section 337 had occurred by Glatz in the importation into the U.S., sale for importation, or sale within the U.S. after importation of certain reduced ignition proclivity cigarette paper wrappers and products containing the same that allegedly infringe U.S. Patent Nos. 5,878,753 (the ‘753 patent) and 6,725,867 (the ‘867 patent). See our February 29, 2012 post for more details. On April 2, 2012, the Commission issued a notice determining to review the ID in part. See our April 4, 2012 post for more details.
The ‘753 and ‘867 patents are both directed to lower ignition proclivity (“LIP”) cigarettes and related products that are designed to reduce the likelihood of accidental fire if a cigarette is left or dropped on a surface such as upholstery or bedding. The ‘753 patent had 15 asserted claims and the ‘867 patent had three asserted claims. Ten different Glatz LIP paper products were accused of infringing the patents.
The ‘753 Patent
With respect to the ‘753 patent, the Commission determined to review the construction of the terms “gradually” and “ramp-shaped profile” and the issues of direct and indirect infringement, obviousness, definiteness, utility, and the technical prong of the domestic industry requirement.
As to the term “gradually,” the Commission adopted the ALJ’s construction of “incrementally” with the clarification that, in the context of the claims, “gradually means an increase or decrease in the permeability that occurs in small steps or degrees and that is not abrupt or sudden.” In adopting this construction, the Commission rejected Glatz’s argument that the term “gradually” is insolubly ambiguous, finding that a person of ordinary skill in the art can “ascertain whether a permeability change is gradual or abrupt, based on the specification and figures in the specification.” As to the term “ramp-shaped profile,” the Commission affirmed the ALJ’s determination that the term defines the physical shape of the cigarette bands and not their permeability characteristics.
Regarding direct infringement, the Commission affirmed the ALJ’s finding that Schweitzer’s method of testing the accused products was unreliable and, thus, that Schweitzer did not meet its burden of proof that the accused products’ permeability characteristics change “gradually,” as recited by claims 12-18 and 25. The Commission also affirmed ALJ Gildea’s finding that the accused cigarette papers do not have a “ramp-shaped profile,” as that term was construed by the ALJ. Because Schweitzer failed to prove a single instance of direct infringement, Glatz could not, as a matter of law, indirectly infringe the asserted claims.
As to validity, the Commission first analyzed Glatz’s argument that the asserted claims lack utility under 35 U.S.C. § 101 because the claimed invention does not accomplish the stated purpose of diminishing discernable changes in taste and smoke delivery of LIP cigarettes. The Commission rejected Glatz’s narrow articulation of the invention’s purpose and affirmed the ALJ’s finding that the invention is useful, based on the ignition characteristics of the cigarette paper. Regarding obviousness, the Commission affirmed the ALJ’s determination that a person of ordinary skill in the art would not have combined the asserted references because the prior art taught away from Schweitzer’s invention.
As to the domestic industry requirement, the Commission affirmed the ALJ’s finding that Schweitzer failed to establish that an industry within the U.S. exists with respect to the ‘753 patent. Specifically, the Commission determined that the products Schweitzer alleged to practice claim 12 of the ‘753 patent were not shown to have the required gradually changing permeability profiles.
The ‘867 Patent
With respect to the ‘867 patent, the Commission determined to review the construction of the term “film forming composition” and the issues of direct and indirect infringement, anticipation, statutory bar under 35 U.S.C. § 102(b), obviousness, written description, enablement, and the technical prong of the domestic industry requirement.
As to the term “film forming composition,” the Commission construed the term to mean any composition that dries as a film (including both solutions and fibrous slurries), which is consistent with the parties’ stipulation that the term carries a consistent meaning in both the ‘753 and ‘867 patents. Under this construction, the Commission determined that the accused products directly infringe claims 36 and 43. Glatz did not contest liability for contributory infringement of claim 45 of the ‘867 patent.
As to anticipation, the Commission affirmed the ALJ’s finding that none of the four references cited by Glatz disclosed the claim elements “permeability” and “Burn Mode Index” by clear and convincing evidence. With respect to an “on sale” bar under 35 U.S.C. § 102(b), the Commission determined that certain “PaperSelect” cigarette wrappers were on sale more than one year before the critical date, thus invalidating claim 36. As to claims 43 and 45, they were invalidated as obvious in view of two different combinations of references. Lastly, the Commission determined that the asserted claims of the ‘867 patent are not invalid for failure to satisfy the written description and enablement requirements of 35 U.S.C. § 112.
As to the domestic industry requirement, the Commission affirmed the ALJ’s determination that Schweitzer’s alginate papers satisfy the technical prong of the inquiry, based on the Commission’s construction of “film forming composition,” noted above.