On September 26, 2011, ALJ E. James Gildea issued the public version of Order No. 21 (dated September 16, 2011), denying Complainant Schweitzer-Mauduit International Inc.’s (“SWM”) motion for summary determination that it satisfies the technical domestic industry requirement for U.S. Patent No. 6,725,867 (the ‘867 patent) in Certain Reduced Ignition Proclivity Cigarette Paper Wrappers and Products Containing Same (Inv. No. 337-TA-756).

According to the Order, SWM argued it was entitled to summary determination regarding the technical prong of the domestic industry requirement as to the ‘867 patent, because SWM purportedly provided unrebutted expert testimony, supported by detailed claim charts, showing that its alginate-banded LIP products produced in South Carolina practice claim 1 of the ‘867 patent.  SWM asserted that Respondents did not dispute that SWM’s products practiced claim 1 of the ‘867 patent, but rather Respondents only argued that the ‘867 patent was invalid and therefore could not be relied upon for purposes of domestic industry. 

The Order stated that Respondents, supported by the Staff Attorney, opposed SWM’s motion primarily on two grounds.  First, Respondents asserted that a material fact was in dispute, due to a different expert for SWM interpreting “film-forming composition” of claim 1 of the ‘867 patent to include only solutions – not slurries, suspensions, or compositions that form fibrous mats.  SWM’s own documents purportedly characterized its “film-forming composition” as an “alginate slurry,” which would be outside the above construction.  Second, Respondents argued that it was improper for SWM to rely upon claim 1 of the ‘867 patent for domestic industry purposes because this claim was not asserted for infringement, and furthermore, it was premature to rely on claim 1 for summary determination because Respondents will ultimately show claim 1 is invalid.  Although Respondents acknowledged Commission precedent supported relying on unasserted claims for purposes of establishing domestic industry, Respondents requested the Commission to overturn such precedent.

ALJ Gildea declined Respondents’ invitation to overturn Commission precedent and determined that it remained “sufficient to show that the domestic industry practices any claim of that patent, not necessarily an asserted claim of that patent.”  However, ALJ Gildea also determined that a dispute existed between SWM’s own experts as to whether the term “film-forming composition” is restricted to solutions, or also includes slurries or suspensions.  ALJ Gildea further determined that SWM failed to show an absence of a genuine issue of material fact, since determining whether a product satisfies a claim limitation is a question of fact, and SWM failed to explain how its products meet the “film-forming composition” of claim 1, particularly when SWM’s own documents describe its sodium alginates as powders that “can be used as water slurry or added directly to the recipe ingredients.”  Based on the above, ALJ Gildea denied SWM’s motion.