Kaneka Corp. v. Xiamen Kingdomway Group Co.
790 F.3d 1298
| Fed. Cir. | 2015Background
- Kaneka sued Xiamen Kingdomway, Pacific Rainbow, and Shenzhou in the C.D. Cal. for infringement of U.S. Patent No. 7,910,340, which claims industrial processes to produce oxidized coenzyme Q10.
- Asserted independent claims recite culturing microorganisms to produce reduced coenzyme Q10, disrupting cells, an "oxidizing" step and an "extracting" step (order varies between claims); some claims specify extraction in a "sealed tank" and extraction under an "inert gas atmosphere."
- The district court stayed the case pending a parallel ITC Section 337 proceeding; the ITC found no infringement. After the ITC, the district court construed disputed claim terms and granted summary judgment of noninfringement based on that construction.
- Key disputed claim terms: "inert gas atmosphere," "sealed tank," and the scope/order/meaning of the claimed "oxidizing" step.
- On appeal, the Federal Circuit affirmed-in-part, vacated-in-part, and remanded: it affirmed summary judgment as to some claims, but vacated summary judgment for others because of erroneous claim construction and interpretation of step ordering/continuity.
Issues
| Issue | Kaneka's Argument | Defendants' Argument | Held |
|---|---|---|---|
| 1. Construction of "inert gas atmosphere" | Kaneka initially disputed district court construction but later withdrew challenge | Defendants relied on district court/ITC construction: atmosphere free or substantially free of oxygen/reactive gases | Kaneka withdrew; court affirmed summary judgment of noninfringement for claims 1 and 11 and associated dependent claims on this ground |
| 2. Construction of "sealed tank" | "Sealed tank" need only prevent exposure of contents to atmosphere (allow solvent flow in/out) based on specification (Fig.1, Ex.8) | Dictionary/ITC relied definition: airtight/closed to prevent entry or exit of materials | Court held "sealed tank" means a tank that prevents exposure of the tank’s contents to the atmosphere (rejecting an absolute "airtight" to all materials) |
| 3. Meaning and ordering of "oxidizing" step (claims 22 & 33) | Oxidation need not be "active" or convert "all or substantially all" in a single step; continuous/overlapping steps allowed | Defendants: claim steps are ordered and require active oxidation of all or substantially all in the recited oxidation step, performed separately | Court held oxidation requires an active step applied to the product of the prior step (disruption in claim 22; extraction in claim 33), but does not require oxidizing "all or substantially all," nor that steps be discrete; passive oxidation during other steps is not excluded |
| 4. Appropriateness of summary judgment of noninfringement | Kaneka: district court’s claim constructions were erroneous; genuine issues of fact could exist under correct construction | Defendants: accused process does not meet district court constructions; summary judgment appropriate | Court affirmed summary judgment as to claims 1 and 11 (and certain dependent claims) but vacated summary judgment as to claims 22 and 33 (and associated dependents) and remanded for further proceedings |
Key Cases Cited
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.) (en banc) (specification is primary guide to claim meaning)
- Gottschalk v. Benson, 409 U.S. 63 (U.S. 1972) (process defined as a series of acts)
- Teva Pharm. U.S.A. Inc. v. Sandoz, Inc., 135 S. Ct. 831 (U.S. 2015) (review of factual findings in claim construction)
- Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323 (Fed. Cir.) (method claim step order can be required when recited)
- E-Pass Techs., Inc. v. 3Com Corp., 473 F.3d 1213 (Fed. Cir.) (order may be implicit when a step references prior step results)
- O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351 (Fed. Cir.) (term may have more than one ordinary meaning)
- Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339 (Fed. Cir.) ("comprises" permits additional unrecited steps/results)
- MBO Labs., Inc. v. Becton, Dickinson & Co., 474 F.3d 1323 (Fed. Cir.) (claim construction that excludes a preferred embodiment is disfavored)
- Innovad Inc. v. Microsoft Corp., 260 F.3d 1326 (Fed. Cir.) (summary judgment based on erroneous claim construction is ordinarily vacated)