ALJ Rogers Denies Motion For Summary Determination Of Invalidity In Certain Polyimide Films (337-TA-772)
On January 26, 2012, ALJ Robert K. Rogers, Jr. issued Order No. 24 denying Respondents SKC, Inc. and SKC Kolon PI, Inc.’s (collectively, “SKC”) motion for summary determination that claims 1, 2, 6-10 and 12-14 of U.S. Patent No. 7,691,961 (“the ‘961 patent”) are invalid as anticipated in Certain Polyimide Films, Products Containing Same, and Related Methods (Inv. No. 337-TA-772).
According to the Order, SKC argued that the asserted claims of the ‘961 patent were invalid in light of prior art polyimide films manufactured and sold by E.I. DuPont de Nemours and Company (“DuPont”) more than a year before the earliest priority date asserted by Complainant Kaneka Corporation (“Kaneka”). SKC pointed to Kaneka’s interrogatory responses indicating that the inventors of the ‘961 patent conceived of the inventions therein “in early 2003” and reduced the inventions to practice “in or about the Summer of 2003,” and contended that the undisputed facts show that some of DuPont’s Kapton® film products manufactured prior to September 2001 meet each limitation set forth in the asserted claims as construed by Kaneka. SKC relied on samples of Kapton® 200HN and Kapton® 200FPC that were tested using a protocol developed by SKC based on the ‘961 patent, and a report submitted by its expert witness.
Kaneka argued in response that genuine issues of material fact precluding summary determination exist with respect to the methods and results of the testing of the DuPont films, specifically regarding the calculation of the molecular orientation axis (MOA) and the coefficient of linear expansion (CLE) in claims 1, 2 and 6-8, and the calculation of the tear propagation resistance (TPR) in claims 9-10 and 12-14.
ALJ Rogers agreed with Kaneka that a genuine issue of fact exists as to whether the measurements for the MOA, CLE and TPR were correctly determined for the DuPont films, and therefore denied the motion.
