By John Presper

On January 11, 2022, ALJ Clark S. Cheney issued an initial determination (“ID”) finding no violation of section 337 due to the invalidity of the asserted patents in Certain High-Potency Sweeteners, Processes for Making Same, and Products Containing Same (Inv. No. 337-TA-1264).

By way of background, this investigation is based on an April 8, 2021 complaint filed by Celanese International Corporation of Irving, Texas, Celanese (Malta) Company 2 Limited of Malta, and Celanese Sales U.S. Ltd. of Irving, Texas (collectively, “Celanese”) alleging a violation of section 337 by 12 respondents in the unlawful importation/sale of certain high-potency sweeteners, processes for making same, and products containing same by reason of infringement of one or more claims of U.S. Patent No. 10,023,546 (“the ’546 patent”); U.S. Patent No. 10,208,004 (“the ’004 patent”); U.S. Patent No. 10,590,098 (“the ’098 patent”); U.S. Patent No. 10,233,163 (“the ’163 patent); and U.S. Patent No. 10,590,095 (“the ’095 patent”).  The asserted patents are all directed to improved processes for manufacturing the high-potency sweetener acesulfame potassium (“Ace-K”). See our May 19, 2021 post for more details regarding the complaint and Notice of Investigation.

According to the ID, Respondents Anhui Jinhe Industrial Co., Ltd. and Jinhe USA LLC (collectively, “Jinhe”) moved for summary determination of no violation of section 337 on the grounds that Celanese sold products produced according to the asserted claims more than one year before the effective filing date of the asserted patents, triggering the on-sale bar provision of 35 U.S.C. § 271(a)(1).  The ID noted that only the ’546, ’004, and ’095 patents remained in the investigation.  The ID also stated that during prosecution, Celanese disclosed to the USPTO that the claimed process for making Ace-K had been in secret use in Europe and that Ace-K made using that process had been exported and sold in the U.S. more than one year before the asserted patents’ effective filing date of September 21, 2015.  Moreover, the ID observed that Celanese’s method of making Ace-K has not changed in any material way since 2011.

ALJ Cheney further noted in the ID that § 271(a)(1) currently defines the on-sale bar by referring to the “claimed invention” being patented, described in a printed publication, or in public use, on sale, “or otherwise available to the public” before the effective filing date, whereas the pre-AIA on-sale bar did not include the phrase “claimed invention” or the phrase “or otherwise available to the public.”  Under the pre-AIA statute, it was well settled that a patentee’s sale of an unpatented product made according to a secret method triggered the on-sale bar to patentability.  Celanese, however, argued in opposition to the motion that when Congress changed the statute by adding the word “claimed” as a modifier of “invention” (in contrast to the pre-AIA version’s use of the standalone word “invention”) and making other amendments, it intended to change existing law and allow patent protection for products made by the patentee using a secret process.  The motion thus turned on whether the AIA changed the meaning of the on-sale bar provision such that Celanese’s pre-2015 sales of Ace-K do not invalidate the asserted patents.  The ALJ found that Celanese’s position is contrary to, inter alia, the Supreme Court’s decision in Helsinn Healthcare S.A. v. Teva Pharmas. USA, Inc., 139 S. Ct. 628 (2019), where the Court held that Congress did not alter the meaning of the on-sale bar provision when it enacted the AIA.  Accordingly, ALJ Cheney determined that asserted claims 11 and 12 of the ’546 patent, claims 7, 28, and 33 of the ’004 patent, and claims 1, 19, and 34 of the ’095 patent invalid pursuant to the on-sale bar of § 271(a)(1).

In addition, ALJ Cheney noted that Celanese asserted claim 15 of the ’546 patent and claim 11 of the ’004 patent against Jinhe, which have not been shown to have been practiced more than one year before the effective filing date; however, Celanese did not contend that its current production of Ace-K satisfies the technical prong of the domestic industry requirement by practicing either of these two claims, and the parties agreed that the ALJ could decide in the context of the pending motion whether the technical prong has been satisfied on the current record.  Therefore, ALJ Cheney found that Celanese does not practice any valid claim of the asserted patents and thus has not met its burden to show satisfaction of the technical prong of the domestic industry requirement.  Accordingly, the ALJ determined that no violation of section 337 can be proved based on the undisputed facts and summary determination to that effect is therefore appropriate.