On July 24, 2012, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 40 (dated June 6, 2012) denying respondent Shenzhou Biology & Technology Co., Ltd’s (“Shenzhou”) motion for summary determination of invalidity of U.S. Patent No. 7,910,340 (the ‘340 patent) in Certain Coenzyme Q10 Products and Methods of Making Same (Inv. No. 337-TA-790). 

According to the Order, Shenzhou argued that the ‘340 patent would have been obvious over U.S. Patent No. 3,066,080 (“Folkers”) in view of U.S. Patent No. 3,769,170 (“Kondo”).  Specifically, Shenzhou asserted that (1) an industrial scale process for producing oxidized coenzyme Q10 and using a sealed tank in the extraction process as claimed in the ‘340 patent would have been obvious in view of Folkers and the knowledge of one of ordinary skill in the art; (2) Kondo inherently discloses culturing microbial cells containing reduced coenzyme Q10 at a ratio of not less than 70%; and (3) alternatively, the limitations directed to culturing microbial cells containing reduced coenzyme Q10 at a ratio of not less than 70% cannot be used to distinguish the claims of the ‘340 patent from the prior art because the limitations lack utility.  Shenzhou maintained that one of ordinary skill in the art would have reason or motivation to combine Folkers and Kondo because the latter lists the former as one of the “References Cited” and explains that the strains of fungi, yeast and/or bacteria disclosed in Kondo are capable of producing microbial cells with larger amounts of coenzyme Q10 when compared to the specific strain of microorganism addressed by Folkers.  Complainant Kaneka Corporation (“Kaneka”) countered that Shenzhou’s allegations are high level and fail to address each of the 45 claims it seeks to invalidate, that Shenzhou’s assertions regarding lack of utility are contrary to case law, and that a person of ordinary skill in the art would have no reason or motivation to combined Folkers with Kondo.

Based on the facts alleged by the parties, ALJ Rogers found a genuine issue of material fact as to whether the preambles of claims 1, 11, 22 and 33 of the ‘340 patent, which recite “a process for producing on an industrial scale the oxidized coenzyme Q10” and which Shenzhou agreed were limiting for purposes of its motion, would have been obvious.  In particular, the ALJ was not persuaded by Shenzhou’s “selectively cited and out of context quotation” from Kaneka’s expert’s deposition in which he purportedly admitted that Folkers would enable a person of ordinary skill in the art to scale-up to an industrial scale production process.  ALJ Rogers noted that Kaneka’s expert expressed doubts about whether Folkers enabled one of ordinary skill to carry out an industrial production elsewhere in his testimony, and that he stated in his expert report that an industrial scale production of coenzyme Q10 would not have been obvious in view of Folkers.  Accordingly, the ALJ found no clear and convincing evidence that the preambles of claims 1, 11, 22 and 33 of the ‘340 patent were obvious and denied the motion.