By John Presper

On January 21, 2022, the U.S. Court of Appeals for the Federal Circuit issued its opinion vacating and remanding the ITC’s finding of a violation of section 337 in Certain Gas Spring Nailer Products and Components Thereof (Inv. No. 337-TA-1082).

By way of background, this investigation was originally instituted in November 2017 based on a complaint by Kyocera Senco Brands Inc. of Cincinnati, Ohio (“Kyocera”) alleging a violation of section 337 in the unlawful importation/sale of certain gas spring nailer products and components thereof by Respondent Hitachi Koki U.S.A., Ltd., now known as Koki Holdings America Ltd. (“Koki”) that infringe one or more claims of five patents, including U.S. Patent No. 8,387,718 (“the ’718 patent”).  See our November 16, 2017 post for more details regarding the complaint and Notice of Investigation.  During claim construction, Chief ALJ Charles E. Bullock excluded testimony from Dr. John Pratt, Kyocera’s technical expert on infringement under the doctrine of equivalents, on the ground that he did not was not a person of ordinary skill in the art because he lacked experience in power nailer design.  Following an evidentiary hearing, the Chief ALJ issued an initial determination finding that Koki’s products did not infringe claims 1, 10, and 16 of the ’718 patent.  The Commission remanded, however, and directed the Chief ALJ to address whether the accused products met certain unaddressed claim limitations and whether Koki induced its customers to infringe.  On remand, Chief ALJ Bullock found the accused products met all but two of the other limitations in the asserted claims, and that Kyocera failed to prove the intent required for inducement.  In analyzing the claim limitations, the Chief ALJ cited the testimony of Dr. Pratt on literal infringement.  On review again, the Commission reversed Chief ALJ Bullock’s non-infringement findings, and issued a limited exclusion order and a cease-and-desist order directed to Koki regarding gas spring nailer products and components thereof that infringe claims 1, 10, and 16 of the ’718 patent.  Kyocera and Koki separately appealed to the Federal Circuit.

According to the opinion, both Kyocera and Koki appealed the partial exclusion of Dr. Pratt’s testimony.  The court stated that “Dr. Pratt does not have ordinary skill in the art,” which “requires experience in power nailer design.”  Accordingly, the court found that the Chief ALJ “abused his discretion by admitting Dr. Pratt’s testimony on any issue that is analyzed through the lens of an ordinarily skilled artisan.”

Regarding claim construction, the court found that the patentees acted as their own lexicographers with respect to the term “driven position,” which was defined in the patent as “at the bottom-most travel position.”  The court agreed with Koki, however, that the Chief ALJ (and the Commission) erred by not applying 35 U.S.C. § 112 ¶ 6 to the “lifter member” term even though this limitation does not use the word “means,” because the claim term does not recite sufficiently definite structure and thus the presumption against § 112 ¶ 6 has been overcome.  The court also found that the Chief ALJ and the Commission erred in the application of the plain and ordinary meaning of “initiating a drive cycle,” which the Commission determined would not be met by pressing the claimed “safety contact element” (rather than the claimed “exit end of the mechanism”) against a workpiece.  Specifically, the court construed the “safety contact element” and “fastener driving mechanism” as separate components, and reasoned that the “exit end of the mechanism” therefore cannot be the exit end of the safety contact element, and thus the “initiating a driving cycle” limitation cannot be met by pressing the exit end of a safety contact element against a workpiece.  Finally, the court found that Chief ALJ Bullock’s (and the Commission’s) analysis of the Pedicini reference—which the Chief ALJ found does not disclose the claimed “main storage chamber” because the reference does not disclose a distinct main storage chamber since it only disclosed one component (air chamber 13)—is supported by substantial evidence and is consistent with the parties’ agreed-upon construction of this term.