By Eric Schweibenz
On November 17, 2009 ALJ Robert K. Rogers, Jr. issued Order No. 13: Denying Respondent Sidergas SpA’s (“Sidergas”) Motion for Summary Determination of Invalidity of Claims 3, 4, 6, 12, & 13 of U.S. Patent No. 6,708,864 (the ‘864 patent) in Certain Bulk Welding Wire Containers and Components Thereof and Welding Wire (Inv. No. 337-TA-686).

According to the Order, Sidergas filed its summary determination motion on October 27, 2009.  Further, Complainants Lincoln Electric Company and Lincoln Global, Inc. (collectively “Lincoln”) as well as the Commission Investigative Staff filed responses on November 6, 2009 opposing the motion.  In addition, Respondents Atlantic China Welding Consumables, Inc., ESAB AB, Hyundai Welding Co., Ltd., and Kiswel Ltd. filed a joint response on November 6, 2009 in support of Sidergas’ motion.

In the Order, ALJ Rogers determined that “[b]ecause the parties failed to identify the claim terms in dispute or offer any proposed claim constructions, I find that granting summary determination based on anticipation would be improper.”  ALJ Rogers also rejected Sidergas’ argument that it was accepting Lincoln’s proposed claim constructions.  Specifically, ALJ Rogers determined that “Lincoln merely provided infringement charts as part of its complaint” and “[t]he charts do not propose constructions for any of the terms, but instead provide a comparison between the claims and the accused Sidergas products.”

In addition, ALJ Rogers determined in the Order that there was a genuine factual dispute regarding whether or not the three alleged prior art brochures relied upon by Sidergas in its motion are § 102(b) prior art.  Specifically, ALJ Rogers determined that “there is a genuine dispute of material fact between the parties concerning the dates that the brochures became publicly accessible.”

Lastly, ALJ Rogers found that the ‘864 patent requires a wire having a “shape memory” and that “there is a genuine dispute of material fact regarding whether or not the brochures disclose the ‘shaped memory’ limitation.”