On June 22, 2009, ALJ Robert K. Rogers, Jr. issued Order No. 20 in Certain Non-Shellfish Derived Glucosamine and Products Containing Same (337-TA-668).  In the Order, ALJ Rogers denied respondent Nantong Foreign Medicines & Health Product Co., Ltd.’s (NFT) motion for summary determination of invalidity.

According to the Order, complainant Cargill, Inc. asserts that NFT infringes claims 1-10 of U.S. Patent No. 7,049,433 (the ‘433 patent), which are directed to a method of making glucosamine.  Claim 1 is an independent claim, and claims 2-10 depend from claim 1.

NFT filed its summary determination motion of invalidity and asserted that claims 1-6 were invalid as anticipated by the Chen reference; claims 7-9 were invalid as obvious over Chen in combination with Novikov; and claim 10 was invalid as obvious over Chen in combination with Yang.  NFT submitted an expert declaration of Dr. Robertson in support of its motion.

The Commission Investigative Staff supported NFT’s motion in part, agreeing that Chen anticipates claims 1-6.  The Staff opposed NFT’s motion with respect to the obviousness of claims 7-10.

Cargill opposed the motion in its entirety, asserting that Chen fails to disclose three limitations of claim 1.  With regard to claims 7-10, Cargill argued that there was no apparent reason to combine the references identified by NFT, and that the art of producing glucosamine was unpredictable.  Cargill submitted an expert declaration of Dr. Hudson in support of its opposition.

ALJ Rogers denied NFT’s motion in its entirety.  He found that there was a genuine issue of material fact as to whether Chen disclosed two limitations of claim 1 of the ‘433 patent “[b]ased on the competing views of the parties and their experts.”  ALJ Rogers noted that the parties “clearly dispute the facts regarding what Chen teaches,” which precluded summary determination of anticipation of claims 1-6.  With respect to claims 7-10, ALJ Rogers found that since “there are genuine issues of material fact that preclude a finding that Chen discloses all elements of claim 1, summary determination of obviousness for claims 7-10 is not proper.”