“Weight” a Minute – Those Claims Are Indefinite!

Initial Determination Granting MUV’s Motion for Summary Determination That Claims 16-18, 21, and 30 of U.S. Patent No. 7,076,659 are Invalid under 35 U.S.C. § 112, Certain UV Curable Coatings For Optical Fibers, and Products Containing the Same, ITC Inv. No. 337-TA-1031 (July 6, 2017) (ALJ MaryJoan McNamara)

In a rare move for the ITC, Administrative Law Judge (“ALJ”) MaryJoan McNamara granted a motion for summary determination by Respondent Momentive UV Coatings (Shanghai) Co., Ltd. (“MUV”) finding that several claims of U.S. Patent No. 7,706,659 (“the ’659 patent”) are indefinite under 35 U.S.C. § 112, ¶ 2 (pre-AIA). The ’659 patent is entitled “Coated Optical Fiber” and claims primary coating compositions and primary coatings.

This decision is significant because it is relatively unusual for ALJs to grant motions for summary determination on technical issues. Section 337 investigations move very quickly and motions for summary determination are often filed less than three months before the start of the hearing, so there is often little efficiency to be gained from granting such motions.

The ALJ noted that the patent claims use the term “molecular weight,” but the specification uses different molecular terms for measuring the relevant molecular weight without defining these terms or explaining why different measurements are used. The ALJ found that her construction of “molecular weight” did not resolve the ambiguity around this term. Therefore, she found the claim terms indefinite because “the claim scope leaves it unclear as to which measurement is defining the scope of the claims.”

Complainants DSM Desotech, Inc. and DSM IP Assets B.V. have petitioned the Commission to review the ALJ’s Initial Determination (“ID”); MUV and the Office of Unfair Import Investigations opposed the petition. The ALJ’s ID will not become final until the Commission has had an opportunity to review it but, as described below, the ID is significant and highlights important issues for complainants and respondents to consider in Section 337 investigations.

This initial determination is also important because ALJs place a premium on the development of a complete evidentiary record, so they will deny such motions when they believe the record would benefit from further development. ALJ McNamara disposed with the latter concern in her ID, saying “the facts are in” and she need only examine the specification to resolve the motion.

The ID also shows the potential power of a separate Markman proceeding in a Section 337 investigation. Had ALJ McNamara not construed the term “molecular weight” in a separate Markman proceeding, she may not have been willing to find the term indefinite in the context of a summary determination motion.

Bottom line: The ID teaches that complainants should invest time and effort in a privileged pre-suit analysis of the validity of candidate patents, especially § 112 issues, prior to filing a complaint under Section 337. Section 337 investigations require complainants to make a greater upfront investment of time and money and condense a litigation budget into a shorter time frame than patent litigation in most district courts, justifying additional pre-suit diligence.