10
May
By Eric Schweibenz
Further to our April 6, 2009 post, on May 3, 2010, Chief ALJ Paul J. Luckern issued the public version of the Remand Determination (“RD”) (dated April 1, 2009) in Certain R-134a Coolant (Otherwise Known as 1,1,1,2-Tetrafluoroethane) (Inv. No. 337-TA-623).  Prior to the issuance of the public version of the RD, the Commission determined to review the RD in its entirety on June 1, 2009.  See our June 3, 2009 post for more details.  Subsequently on September 21, 2009, the Commission issued the public version of its opinion reversing the RD’s finding that claim 1 of U.S. Patent No. 5,559,276 (the ‘276 patent) is not obvious.  See our September 23, 2009 post for further details.

By way of background, this investigation was instituted in December 2007 based on a complaint filed by INEOS Fluor Holdings Ltd., INEOS Fluor Ltd. and INEOS Fluor Americas LLC (“INEOS”).  INEOS’ complaint alleged violations of Section 337 by Respondents Sinochem Modern Environmental Protection Chemicals (Xi’an) Co. Ltd., Sinochem Ningbo Ltd., Sinochem Environmental Protection Chemicals (Taicang) Co., Ltd., and Sinochem (U.S.A.) Inc. (collectively, “Sinochem”) in the importation into the U.S., the sale for importation, and the sale within the U.S. after importation of certain R-134a coolant (otherwise known as 1,1,1,2-tetrafluorothane) by reason of infringement of certain patents, including the ‘276 patent.  On December 1, 2008, ALJ Luckern issued a final initial and determination (“ID”) finding a violation of Section 337.  On January 30, 2009, the Commission issued a notice determining to review-in-part the ID finding a violation of Section 337 and remanding a portion of the investigation “for a remand determination addressing issues related to anticipation and obviousness [of claim 1 of the ‘276 patent] with respect to certain references” identified by the Commission.

In the RD, ALJ Luckern held that (1) Sinochem failed to sufficiently raise the issues identified by the Commission and (2) the issues, even if properly raised, had no merit.  In addressing the first issue, whether Sinochem sufficiently raised the issues identified by the Commission, ALJ Luckern examined eleven arguments regarding anticipation and/or obviousness made by Sinochem in its pre-hearing statement.  Regarding Sinochem’s pre-hearing statement arguments on anticipation, ALJ Luckern determined that they did not sufficiently raise the issues identified by the Commission because ground rules 9(vi) and (viii) that govern the requirements of pre-hearing statements were not complied with.  In particular, ALJ Luckern did not find any “allegation that the Marangoni reference anticipates claim 1 of the ‘276 patent” under 35 U.S.C. § 102.   As for Sinochem’s pre-hearing statement arguments on obviousness, ALJ Luckern found that they did not sufficiently raise the issues identified by the Commission because they either (i) used vague and ambiguous language such as “secondary references,” “above discussions,” and “anticipation” to reference prior art, and thus did not comply with the aforementioned ground rules, (ii) were irrelevant to the extent they related to references not identified by the Commission, and/or (iii) were related to references that were not prior art.

ALJ Luckern also determined that Sinochem failed to present a prima facie case of anticipation or obviousness of claim 1 of the ‘276 patent.  In particular, as to the issue of anticipation, ALJ Luckern found that it was undisputed that the Marangoni reference failed to disclose at least three limitations of claim 1, i.e., the recycle limitation, the relative temperature difference limitations, and the separate reaction zone limitation.  Further in this regard, ALJ Luckern rejected Sinochem’s arguments that the recycle limitation was inherently taught by Marangoni or that the burden had shifted to INEOS with respect to the temperature limitations “to show how the temperature ranges of claim 1 are critical and inventive over the temperatures disclosed in Marangoni.”  ALJ Luckern also rejected Sinochem’s argument regarding the separate reaction zone limitation finding that Sinochem was improperly “applying elements of an obviousness analysis to their anticipation argument.”  Regarding obviousness, ALJ Luckern found that claim 1 of the ‘276 patent was not obvious over Marangoni either alone, or in combination with other references that were not prior art.  Further, with respect to the remaining references identified by the Commission, ALJ Luckern found that claim 1 of the ‘276 patent was not rendered obvious over certain references that failed to disclose particular limitations of claim 1.  Additionally, ALJ Luckern found that claim 1 was not rendered obvious over certain other primary references that “disclose nothing more than the fluorination of 1,1,1-trifluoro-2-chloroethane” in combination with other secondary references that “do not disclose two separate reaction zones, do not disclose the relative temperature limitations, and in some cases . . . do not disclose a temperature range for the fluorination of trichloroethylene.”

Lastly, ALJ Luckern recommended issuance of a limited exclusion order in the event the Commission finds a violation of Section 337.  ALJ Luckern also recommended that a bond be set in the amount of 100 percent of entered value of any products made from the infringing process during the Presidential review period.
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