20
Sep
By Eric Schweibenz
Further to our August 2, 2010 post, on August 31, 2010, ALJ Robert K. Rogers, Jr. issued the public version of the Initial Determination on Violation and Recommended Determination on Remedy and Bond (“ID”) (dated July 29, 2010) in Certain Bulk Welding Wire Containers and Components Thereof and Welding Wire (Inv. No. 337-TA-686).

The Complainants in this investigation are The Lincoln Electric Company and Lincoln Global, Inc. (collectively, “Lincoln”).  The Respondents are The ESAB Group, Inc. (“ESAB”) and Sidergas SpA (“Sidergas”) (collectively “Respondents”).

In sum, ALJ Rogers determined in the ID that no violation of Section 337 had occurred by the Respondents in the importation into the United States, the sale for importation, or the sale within the United States after importation, of certain bulk welding wire containers and components thereof and welding wire by reason of infringement of asserted claims 3, 4, 6, 12, and 13 of U.S. Patent No. 6,708,864 (the ‘864 patent).  The ID held that claim 3 of the ‘864 patent was invalid, and that none of the asserted claims were infringed by Respondents.

Claim Construction

ALJ Rogers determined that the phrase “on the spool” in the asserted claims, to the extent considered part of a preamble, constituted a limitation, and means “on a cylindrical piece of material.”  This was consistent with the interpretation argued by Respondents and Commission Investigative Staff (“OUII”), and contrary to Lincoln’s arguments that the subject claims covered welding wire independent of any delivery system, such as a coil or stack of wire found in a box or drum container.  Specifically, the ID held the preamble was a limitation because it provided an antecedent basis for later portions of the claims, and it was not a mere statement of intended use.   According to the ID, ALJ Rogers based the term’s meaning on the specification’s recitation that the weld wire was wound “onto a reel, spool, container, or the like...,” yet the claims recited only one of these embodiments, meaning the claims must be interpreted as limited to the expressly claimed embodiments.

Similarly, ALJ Rogers determined that the phrase “prior to said weld wire being wound on said spool” should be given its plain meaning, which is “at a point in time before the wire is physically wound on said spool.”  ALJ Rogers rejected Lincoln’s argument that this term was merely a statement of intended use, and relied upon express statements during prosecution characterizing this term as a limitation.  ALJ Rogers also refused to adopt arguments further requiring that shape memory occur at any particular point prior to the wire being wound on the spool.

ALJ Rogers determined that the phrase “imparted shape memory” should have its plain and ordinary meaning, namely, “a specified shape or cast that is applied to the wire by plastic deformation so that the wire has a residual stress such that the wire reverts to substantially consistent memory shape when the wire is untensioned.”  According to the ID, ALJ Rogers declined to adopt the Respondent’s additional interpretation requiring the exclusion of wire that is “killed” (i.e., straightened) prior to spooling, on the grounds that such additional characterization would be redundant.

With regard to the terms, “substantially lying in a single plane,” and “substantially in one plane,” ALJ Rogers determined these phrases mean that “the weld wire, when laid upon a flat surface, rises above the flat surface less than about 6 inches.”  ALJ Rogers relied upon the specification to define these terms, and contrary to Lincoln’s assertions that this imported a limitation from the specification into the claims, ALJ Rogers determined that the specification merely clarified claim language to provide meaning to otherwise indefinite terms.

ALJ Rogers determined that “waveform” means “a recurring undulating curve,” rejecting Respondents’ arguments that the claim language “radius of curvature” additionally required “waveform” to have a substantially semi-circular shape.  ALJ Rogers determined that unasserted claim 1’s use of the language “generally fixed radius of curvature,” strongly implied that “radius of curvature” in the asserted claims does not require a generally fixed radius, i.e., a substantially semi-circular shape.  ALJ Rogers further determined that dependent claims specifically claiming semi-circular waveforms leads to a presumption under the doctrine of claim differentiation that the asserted independent claims do not include such a semi-circular limitation.

Invalidity

ALJ Rogers first determined that asserted claims 3, 4, 6, 12, and 13 were not entitled to the priority date of a provisional application.  ALJ Rogers determined that Claims 3 and 6 contained radius of curvature limitations of “about 15 inches” to infinity, and “about 5 inches” to infinity, respectively, which were not supported by the provisional application’s disclosures “in the range of 15-20 inches,” or that “the maximum amplitude of each half cycle of cut wire is less than 50 inches,” or a figure with a radius of about 35 inches.  ALJ Rogers further determined that the provisional application, which disclosed a cut wire rising above a flat surface less than about 5 inches, did not support his interpretation of “substantially in one plane,” which required a wire rising less than about 6 inches.

Anticipation by ESAB’s products

ALJ Rogers determined that the ‘864 patent was not invalid due to ESAB’s prior art products, primarily due to the fact that ALJ Rogers also determined that ESAB’s products do not infringe the ‘864 patent.  Even assuming arguendo that ESAB’s accused products did infringe the ‘864 patent, ALJ Rogers determined ESAB had not sufficiently proven that its products manufactured prior to the critical date were materially identical to its current products, due to alleged differences in product specifications, different machines and operators used, and changes made to the relevant machines throughout the years.

Anticipation by Lincoln’s products

Although heavily redacted, it appears Respondents argued that Lincoln’s sales or use of at least the Exact-Trak Wire sold in the United States prior to June 15, 2000, invalidated claims 3, 4, 6, 12, and 13 under 35 U.S.C. §§ 102(b).  ALJ Rogers determined that claim 3 of the ‘864 patent was indeed invalid due to Lincoln’s Exact-Track product used and sold in the United States prior to the March 26, 2001 critical date.  This prior use, however, was determined by ALJ Rogers not to invalidate claim 4, due to the insufficiency of evidence proving that the Exact-Trak wire sold prior to the critical period had “substantially the same maximum amplitude for each half-cycle of a full waveform.”  ALJ Rogers similarly determined that claims 6, 12, and 13 were not invalidated due to the failure of clear and convincing evidence that the prior Exact-Trak wire included the limitation that shape memory be “at least partially retained on said weld wire after said weld wire is unwound from said spool.”

U.S. Patent No. 6,301,944 (the ‘944 patent)

ALJ Rogers determined that Sidergas failed to present clear and convincing evidence that the ‘944 patent anticipated the asserted claims, because the ‘944 patent did not disclose “shape memory substantially lying in a single plane” as required by claims 3 and 4, and “shape memory imparted substantially in one plane along a longitudinal length of said weld wire,” as required by claims 6, 12, and 13.

Prostar Brochure

ALJ Rogers determined that Sidergas failed to present clear and convincing evidence that the Prostar Brochure anticipated the asserted claims.  ALJ Rogers determined that the asserted claims are not product-by-process claims as asserted by Respondents, but rather product claims.  Accordingly, the claimed limitation that shape memory be imparted prior to the wire being wound on the spool must be included in the elements of the prior art to anticipate the asserted claims of the ‘864 patent.  ALJ Rogers determined that the Prostar Brochure failed to disclose this limitation, and indeed, failed to generally disclose weld wire with shape memory.

Best Mode

ALJ Rogers determined that Respondents were precluded from asserting a best mode argument, based on their failure to identify the defense during discovery.  In particular, ALJ Rogers determined that Respondents were foreclosed when, in response to an interrogatory seeking Respondents’ invalidity contentions,  Respondents made only general reference to 35 U.S.C. § 112 ¶ 1, and specific references to lack of written description or enablement, without specifically identifying the best mode defense.  ALJ Rogers further determined that assuming, arguendo, that best mode were part of the investigation, Respondents failed to offer evidence to support a finding that the inventors possessed a best mode of practicing the claimed invention at the time of filing.

Infringement

With respect to claim 3, ALJ Rogers determined Respondents did not literally infringe, because claim 3 required weld wire stored or wound on a spool, while ESAB’s accused wire is packaged in drums and never wound on a cylindrical piece of material.  Similarly, Sidergas deposits its wire in a bulk storage container, and its wire products are not wound on a spool.  ALJ Rogers further determined that Lincoln is precluded as a matter of law from asserting that Respondents’ containers are equivalent to a spool, because the specification clearly disclosed other storage means such as containers, which were not claimed, and such containers cannot be recaptured through the doctrine of equivalents.  Additionally, ALJ Rogers determined that use of a container instead of a spool was a foreseeable alternative that could have been claimed, but was not, such that the doctrine of equivalents cannot be used to cover such an alternative.  Even if a physical spool were not required, ALJ Rogers determined that Respondents’ products would not meet claim 3’s limitation that the “shape memory imparted on said weld wire [occur] at least partially prior to said weld wire being wound on said spool,” because Respondents’ wire passed through straightening rolls prior to being placed into a container, which effectively, straightened or “killed” the wire.  Since claim 4 depends from claim 3, ALJ Rogers found that Respondents similarly did not infringe claim 4.  However, if claim 3 were infringed, ALJ Rogers determined that claim 4’s additional limitation of a waveform with “substantially the same maximum amplitude for each half cycle of a full waveform” would be also be infringed by Respondents’ accused products.

Since independent claims 6 and 12 contain the same or similar “spool” limitations as found in claim 3, ALJ Rogers similarly found that claims 6 and 12 were not infringed.  Since claim 13 depends from claim 12, ALJ Rogers found that Respondents similarly did not infringe claim 13.  However, if claim 12 were infringed, ALJ Rogers determined that the claim 13’s additional limitation of a weld wire with “deviation of said maximum amplitude of each half cycle within one cycle is less than about 4 inches” would be also be infringed by Respondents’ accused products.

Other Products

Lincoln’s experts performed detailed analyses on one product each from ESAB and Sidergas, and Lincoln argued that those single products were representative of several other products from Respondents.  With respect to ESAB, ALJ Rogers determined that Lincoln failed to offer sufficient evidence that its single analyzed product was representative, because the ESAB interrogatory response primarily relied upon for that purpose stated there were no material differences in the procedures for packaging ESAB’s bulk wire in its container, but this statement said nothing regarding the physical properties of the other wires.  With respect to Sidergas, however, ALJ Rogers determined that Lincoln’s analysis of one product was sufficiently representative, because Sidergas’s own expert tested only one Sidergas product for purposes of determining non-infringement, and he testified that the other Sidergas products were manufactured “the same for infringement purposes.”

Domestic Industry

With respect to the technical prong of the domestic industry requirement, ALJ Rogers determined that Lincoln satisfied this requirement with its Exact-Trak product.  With respect to the economic prong of the domestic industry requirement, ALJ Rogers determined that Lincoln met the requirement, at least in part, through investments in equipment used to manufacture Lincoln’s Exact-Trak product.  Despite Respondents’ arguments that there was no credible testimony that Exact-Trak products were manufactured or sold in 2009, the year Lincoln filed its complaint, ALJ Rogers found that Lincoln’s investment in equipment to manufacture the Exact-Trak product was not limited to prior to 2009, and found credible testimony by Lincoln that its Exact-Trak product was sold in 2009 and 2010.  ALJ Rogers further determined that the ITC has not expressly limited the time period for examining the domestic industry requirement to the filing date of the complaint, and that such time period is determined “on a case-by-case basis in light of the realities of the marketplace.”

Remedy and Bonding

ALJ Rogers determined that if a violation of Section 337 is found by the ITC, he recommends the ITC to issue a limited exclusion order, not limited to specific product names or model numbers found to infringe the ‘864 patent.  ALJ Rogers further recommended that if a violation is found, that the ITC issue no cease and desist order.  Lincoln sought a cease and desist order only against ESAB, but according to the ID, Lincoln did not provide sufficient evidence that ESAB currently holds a “commercially significant” amount of accused product.  Finally, ALJ Rogers recommended that in the event of a violation, no bond be set during the Presidential review period, because there was no “credible evidence of an appropriate bond amount in the record.”
Share
www.xxx-clips-online.com