04
May
By Eric Schweibenz
On April 30, 2010, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 39 (dated March 1, 2010) in Certain Bulk Welding Wire Containers and Components Thereof and Welding Wire (Inv. No. 337-TA-686), denying Respondent The ESAB Group, Inc.’s (“ESAB”) motion for summary determination that the asserted claims of U.S. Patent No. 6,708,864 (the ‘864 patent) were invalid under 35 U.S.C. §102(b) due to a prior public use or sale.   Respondent Sidergas SpA joined ESAB’s motion, while Complainants The Lincoln Electric Company and Lincoln Global, Inc. (collectively, “Lincoln”) and the Commission Investigative Staff opposed.

ALJ Rogers found genuine issues of material fact regarding two factual assertions underlying ESAB’s motion: namely, (1) that a particular wire currently manufactured by Lincoln meets all asserted claims of the ‘864 patent, and (2) that the wire sold by Lincoln prior to the critical date is the same product as the particular wire currently manufactured by Lincoln.

Although the Order was heavily redacted, it appears that ESAB relied upon Lincoln’s identification of the particular currently manufactured wire in response to an interrogatory requesting the product name of each “Product-at-Issue” with respect to each asserted claim of the then asserted “‘871 and ‘864 Patents,” and deposition testimony that “the development that’s described in the ‘864 patent…was what became known as” the particular wire currently made by Lincoln.  ALJ Rogers determined that neither ESAB’s motion nor the underlying discovery responses or deposition testimony provided a “detailed analysis comparing the asserted claims of the ‘864 patent to the” particular wire currently manufactured by Lincoln.

Even if ESAB had demonstrated that the particular wire currently made by Lincoln practiced all asserted claims of the ‘864 patent, ALJ Rogers determined that the “evidence submitted by Lincoln is sufficient to demonstrate a genuine dispute of material fact regarding whether or not the wire sold prior to the critical date is identical for purposes of the ‘864 patent to the” particular wire currently manufactured wire.  In particular, “Lincoln has offered evidence that the [product-at-issue] has been modified throughout the life of the product.”  ALJ Rogers determined that although the evidence does “not prove that the identified changes had any effect relating to ‘864 patent claims, the fact that the changes occurred raises a genuine issue of material fact regarding whether or not the wire sold prior to June 15, 2000 includes the same relevant features and characteristics” as the particular wire currently made by Lincoln.