30
Mar
By Barry Herman
On April 3, 2009, the Federal Circuit is scheduled to hear oral argument in Erbe Elektromedizin GmbH v. ITC.

Erbe Elektromedizin GmbH (“Erbe”) filed a complaint with the ITC against Canady Technology, LLC et al. (“Canady”) on April 10, 2006 alleging violation of Section 337 by Canady’s importation and sale of certain endoscopic probes for use in argon plasma coagulation (“APC”) systems that coagulate bleeding tissue during electrosurgery.  After the Commission instituted an investigation (337-TA-569) and an evidentiary hearing was held, ALJ Bullock issued an initial determination (“ID”) on January 16, 2008 in which he construed the claim terms “predetermined minimum safety distance,” “working channel” and “sidewardly” of the patent-in-suit and concluded that Erbe failed to establish that (1) there was a domestic industry, (2) the asserted claims were directly infringed, and (3) Canady had induced or contributed to infringement even if the asserted claims were directly infringed.  On January 28, 2008, Erbe filed a petition for review of the ID which the Commission granted in part, but the ID was upheld on March 17, 2008.  Erbe filed its Notice of Appeal to the Federal Circuit on May 14, 2008.

According to Erbe’s opening and reply briefs, the issues on appeal are (1) whether the ITC erred by failing to find that Erbe established a domestic industry for the patent-in-suit, and (2) whether the ITC erred by failing to find that Canady violated Section 337 by importing and/or selling certain endoscopic probes for use in APC systems as claimed in the patent-in-suit.

Erbe argues that the Commission’s decision should be reversed and remanded because (1) the Commission incorrectly construed “predetermined minimum safety distance” so as to exclude from those probes “tubes” having temperature resistant extensions to the plastic tube, (2) the Commission should have properly construed “working channel” to mean “a channel of an endoscope through which work is performed,” where “work” includes visualization through an optical means, coagulation of tissue, irrigation, inflation and suction, (3) the Commission properly construed “sidewardly” but failed to apply that proper construction of the term in its infringement analysis, (4) the Commission’s failure to properly construe “predetermined minimum safety distance” and “working channel,” and its misapplication of the construction of “sidewardly,” was legal error that fatally infected its infringement analysis, and (5) the Commission’s failure to properly construe “predetermined minimum safety distance” and “working channel” was legal error that fatally infected its domestic industry analysis.

For its part, the Commission frames the issues in its brief as (1) whether it correctly construed the disputed claim terms, (2) whether its finding of no direct infringement is supported by substantial evidence because Erbe failed to show any specific instances in which the accused probes were used in an infringing manner, (3) whether its alternative findings of no contributory or induced infringement by Canady is supported by substantial evidence because Erbe failed to establish by a preponderance of the evidence that the accused probes are not suitable for substantially non-infringing uses, and (4) whether its finding of no domestic industry practicing the asserted claims is supported by substantial evidence because Erbe has not shown that any of the claims have been practiced in the U.S.  The Commission argues that it correctly construed the claim terms “working channel” and “sidewardly,” and properly applied its construction of these claims to find no contributory or induced infringement and no domestic industry that practices the asserted claims of the patent-in-suit.

In Canady’s (intervenor) brief, Canady argues that (1) the Commission properly considered the intrinsic evidence and construed the disputed claim terms in accordance with their ordinary meaning, (2) the Commission correctly concluded that Erbe failed to prove direct, contributory or induced infringement, and (3) the Commission correctly concluded that Erbe failed to satisfy the technical prong of the domestic industry requirement.
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