Zhejiang Medicine Co., Ltd. v. Kaneka Corporation
676 F. App'x 962
| Fed. Cir. | 2017Background
- Kaneka sued Zhejiang Medicine Co., Ltd. and ZMC-USA LLC (ZMC) for infringing U.S. Patent No. 7,910,340, which claims a process that includes an "oxidizing" step converting reduced CoQ10 to oxidized CoQ10.
- The dispute centered on the construction of "oxidizing": whether it requires merely an "active step" causing oxidation (Kaneka's position per prior Federal Circuit guidance) or requires oxidation greater than passive ambient-air oxidation (ZMC and the district court's later interpretation).
- In a prior Federal Circuit decision (Kingdomway), the court construed "oxidizing" to require "some action resulting in oxidation" and held it need not involve an oxidizing agent.
- After Kingdomway, the district court interpreted that construction to require oxidation in excess of passive oxidation and excluded portions of Kaneka’s expert Dr. Sherman as irrelevant; it also denied Kaneka leave to supplement.
- ZMC moved for summary judgment of noninfringement; the district court granted it, finding no evidence that ZMC’s active steps caused oxidation beyond passive levels.
- The Federal Circuit vacated the grant of summary judgment and remanded: it held the district court misread Kingdomway (active step does not require greater-than-passive oxidation), affirmed exclusion of parts of Dr. Sherman’s report without deciding all relevance issues, and found genuine factual disputes exist based on ZMC process data.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Proper construction of "oxidizing" | Kingdomway requires only an "active step" that results in oxidation; no need to show increased oxidation versus passive levels | "Oxidizing" must mean oxidation in excess of passive ambient oxidation | Court: Kingdomway means "some action resulting in oxidation"; district court erred to require excess over passive oxidation |
| Exclusion of plaintiff's expert (Dr. Sherman) | Sherman's report already addresses activity that causes oxidation under Kingdomway and should remain | Sherman's opinions based on pre-Kingdomway construction are irrelevant and should be excluded | Court: affirmed exclusion of portions of the report under district court’s (misapplied) reasoning but declined to resolve relevance anew; left supplementation decision to district court on remand |
| Summary judgment of noninfringement | Evidence (ZMC process steps and studies) raises genuine dispute that ZMC’s active washing/drying steps result in oxidation as required | No evidence that any oxidation is due to ZMC's active steps rather than passive exposure; thus noninfringement | Court: vacated summary judgment — material factual dispute exists whether ZMC's active steps result in oxidation; remanded |
| Burden/evidence standard for proving "oxidizing" | Need only show some action resulted in oxidation; comparative increased rate evidence is persuasive but not required at summary judgment | Plaintiff must show oxidation beyond passive baseline; absence of such proof justifies judgment | Court: plaintiff need not prove increased oxidation vs passive; focus is whether a reasonable jury could find an active step resulted in oxidation |
Key Cases Cited
- Kaneka Corp. v. Xiamen Kingdomway Grp. Co., 790 F.3d 1298 (Fed. Cir. 2015) ("oxidizing" requires an active step — "some action resulting in oxidation" — and need not use an oxidizing agent)
- LaserDynamics, Inc. v. Quanta Comput., Inc., 694 F.3d 51 (Fed. Cir. 2012) (standard of review for evidentiary rulings and summary judgment principles in patent appeals)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (U.S. 1986) (summary judgment requires viewing evidence in the light most favorable to nonmovant; genuine dispute of material fact standard)