By Eric Schweibenz and Alex Englehart
On August 11, 2017, the International Trade Commission (“Commission”) issued an opinion in Certain UV Curable Coatings for Optical Fibers, Coated Optical Fibers, and Products Containing Same (Inv. No. 337-TA-1031). In the opinion, the Commission determined to review ALJ MaryJoan McNamara’s initial determination (“ID”) finding certain claims of U.S. Patent No. 7,706,659 (the ’659 patent) invalid for indefiniteness under 35 U.S.C. § 112, ¶ 2, and, on review, to reverse and vacate the ID.

By way of background, this investigation is based on an October 31, 2016 complaint filed by DSM Desotech, Inc. of Elgin, Illinois and DSM IP Assets B.V. of the Netherlands (collectively, “DSM”) alleging violation of Section 337 by way of unlawful importation into the U.S., selling for importation, and/or selling within the U.S. after importation certain UV curable optical fiber coatings, coated optical fibers, and products containing same that infringe one or more claims of the ’659 patent and other patents. See our November 1, 2016 and December 5, 2016 posts for more details on the complaint and Notice of Investigation, respectively. On May 10, 2017, ALJ McNamara issued an order construing certain terms of the asserted claims. In that order, the ALJ construed the ’659 term “molecular weight” as “the sum of the atomic weights of the atoms in the molecule.” On May 22, 2017, Respondent Momentive UV Coatings (Shanghai) Co., Ltd. (“MUV”) filed a motion for summary determination that claims 16-18, 21, and 30 of the ’659 patent are invalid as indefinite because they include the term “molecular weight.” On July 6, 2017, the ALJ issued her ID granting MUV’s motion. DSM then filed a petition for Commission review of the ID.

In its opinion, the Commission found that ALJ McNamara’s construction of “molecular weight” was incorrect and thus that her determination that the ’659 claims that include that term are indefinite was also incorrect. In particular, the Commission found that ALJ McNamara had improperly applied “the common dictionary definition” of “molecular weight” and had not adequately considered the relevant intrinsic and extrinsic evidence. According to the Commission, the ’659 claims and specification (as well as other evidence) indicate that “molecular weight” and “average molecular weight” are used interchangeably in the art. Moreover, since the only method of calculating the average molecular weight disclosed in the specification was to determine a “number average molecular weight,” the Commission determined that “molecular weight” should be construed as “number average molecular weight” rather than “the sum of the atomic weights of the atoms in the molecule.” And, since there was no dispute that “molecular weight” would not be indefinite if construed as “number average molecular weight,” the Commission found that the ’659 claims addressed in the ID were not indefinite.

Accordingly, the Commission determined to review the ID and on review, to reverse and vacate the ID.