25
Nov
By Barry Herman
On December 10, 2009, the Federal Circuit is scheduled to hear oral argument in Tillotson Corporation v. ITC (2009-1196).  Tillotson filed a complaint with the ITC against thirty-one respondents on May 30, 2007, and another complaint against seven additional respondents on July 19, 2007.  Both complaints alleged violation of Section 337 in the importation and sale of nitrile gloves that allegedly infringed U.S. Reissue Patent No. 35,616 (the ‘616 patent).  Among the many respondents were intervenors Smart Glove Holdings, SDN.BHD., Smart Glove Corporation, Henry Schein, Inc., and HSI Gloves, Inc. (the “Smart Glove/Henry Schein Intervenors”).  The Commission instituted a first investigation (337-TA-608) on July 6, 2007 and a second investigation (337-TA-612) on August 22, 2007.  The two investigations were consolidated on September 19, 2007.

The patent at issue is a reissue patent.  All of the claims depend from claim 1.  Claim 1, as originally issued, was directed to “a glove” having certain characteristics, including “having elastic properties such that when stretched from the initial configuration to fit about the hand, the elastomeric material conforms to the configuration of the hand, initially exerting a predetermined pressure on the hand…”  In reissue, claim 1 was amended.  For convenience, elements below added to the claim in reissue are indicated by underlining, with deleted elements indicated by striking through the words.  As amended, claim 1 is directed to “a closely fitting glove . . . having a thickness and elastic properties such that the glove is capable of being stretched to fit closely about the hand and when stretched from the initial configuration to fit closely about the hand, the elastomeric material conforms to the configuration of the hand, initially exerting an initial a predetermined pressure on the hand…”

A claim construction hearing was held on December 13, 2007.  Of particular interest was the change of the term “predetermined pressure” to “initial pressure.”  The ALJ issued an order on March 14, 2008, construing the terms in dispute.  The ALJ determined that “predetermined pressure” meant “the amount of pressure decided in advance that will be exerted on the hand of the glove after the glove is donned.”

After denying all motions for summary determination, the ALJ held an evidentiary hearing from May 19 to May 27, 2008.  On August 25, 2008, the ALJ issued an initial determination concluding that certain of the claims of the ‘616 patent were infringed.  The ALJ rejected respondents’ arguments that the claims were invalid for anticipation, obviousness, failure to disclose the best mode, lack of enablement, and indefiniteness.  The ALJ also rejected respondents’ arguments that the claims were unenforceable due to inequitable conduct.  The ALJ found the claims invalid, however, under 35 U.S.C. § 251 as having been impermissibly broadened during reissue, and due to a defective reissue declaration.

Tillotson filed its petition for review on September 8, 2008.  The Commission reviewed the construction of the term “predetermined pressure,” invalidity under 35 U.S.C. § 251, invalidity due to a defective reissue declaration, no invalidity due to failure to disclose the best mode, and no invalidity due to lack of enablement.  The Commission affirmed the ALJ’s findings on December 22, 2008.

According to Tillotson’s opening brief, the first issue on appeal is whether the Commission incorrectly defined the term “predetermined” in the product claim to require a mental step in contradiction to the intrinsic evidence.  Further, Tillotson asserts that the Commission further erred in finding the ‘616 claims broadened during reissue, absent any evidence that any product or structure would not infringe the claims before the reissue amendments but would infringe them after the reissue amendments.  A related second issue, according to Tillotson, is whether the ITC erred in holding the reissue declarations defective.

In its brief, Tillotson alleges that the Commission’s definition of “predetermined pressure” is legally improper because it conflicts with the intrinsic record.  According to Tillotson, the ITC-determined definition -- “the amount of pressure decided in advance that will be exerted on the hand of the glove after the glove is donned”-- is inconsistent with the ‘616 patent’s specification because the specification does not require that the first pressure be known before the glove is donned.  Further, Tillotson asserts that the requirement that pressure be decided in advance was alleged to be an improper “cognitive step” for a product claim.  Instead, Tillotson argues that the specification only requires that the first pressure be known in advance of a later pressure measurement, and requires no mental step.  With this interpretation, changing the term “predetermined pressure” to “initial pressure” does not change the scope of the claim.  Accordingly, there was no impermissible broadening of the claim during reissue.  Tillotson also asserts that its reissue declarations were, in fact, proper, as the substitution of terms was well-explained in the declarations.

The Commission, in its brief, asserts that the construction of the term “predeterrmined” by the ALJ was proper.  Further, the Commission argues that the patentees did improperly broaden the claims of the ‘616 patent during reissue because a glove that exerts an initial pressure would not meet the “predetermined pressure” limitation in the original claims if the initial pressure was not, in fact, predetermined.  Thus, the reissued claim is broader in scope.  The Commission further asserts that the amendment during the reissue was not sufficiently explained in the reissue declarations.

The Smart Glove/Henry Schein Intervenors, in their brief, assert that the ITC properly defined the term “predetermined pressure.”  They further assert that the ITC correctly found that the claims of the ‘616 patent were improperly broadened in the reissue, and that the ITC correctly found the reissue declarations improper.  In addition, they assert that the ITC erred in finding that the ‘616 patent was not invalid due to Tillotson’s failure to disclose the best mode for practicing its invention.

In its reply brief, Tillotson emphasizes that the claim as a whole was not broadened by the reissue application, even if the Commission’s claim construction is correct.  It asserts that there is no evidence that any glove would infringe the reissue claims that would not also infringe the original claims.  In addition, Tillotson argues that the ALJ’s rejection of the respondent’s best mode defense was correct, and further that the intervenors’ best mode argument is an improper issue for appeal because the Commission did not rely on the ALJ’s rejection of the best mode defense.
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