“Weight” a Minute – Upon Further Review Those Claims Are Not Indefinite

Commission Opinion, Certain UV Curable Coatings For Optical Fibers, and Products Containing the Same, Inv. No. 337-TA-1031 (August 11, 2017) (ITC)

We previously posted – “Weight” a Minute- Those Claims Are Indefinite – about Administrative Law Judge (“ALJ”) MaryJoan McNamara’s Initial Determination (“ID”), finding claims of U.S. Patent No. 7,706,659 (“the ’659 patent”) indefinite under 35 U.S.C. § 112, ¶ 2 (pre-AIA).  The United States International Trade Commission (“ITC”) recently reversed and vacated that ID.  The ’659 patent is entitled “Coated Optical Fiber” and claims primary coating compositions and primary coatings.

Complainants DSM Desotech, Inc. and DSM IP Assets B.V. petitioned the Commission to review the ID; Respondent Momentive UV Coatings (Shanghai) Co., Ltd. (“MUV”) and the Office of Unfair Import Investigations opposed the petition.  In its petition for review, DSM argued that the ALJ’s construction of the disputed claim term referred to an “average molecular weight” and that term was not indefinite.

The ITC found that the ID erred by applying a common dictionary definition of “molecular weight” instead of relying on the record evidence that demonstrated that “molecular weight” and “average molecular weight” are used interchangeably in the context of the ‘659 patent specification and this interchangeable use would be consistent to a person having ordinary skill in the art.  The ITC rejected DSM’s argument that “molecular weight” could refer to “actual molecular weight.”

Bottom Line: This shows that litigants should not rest on an ID granting summary determination until the ITC determines not to review it.  Further, the Opinion shows the importance that is placed on the intrinsic evidence in interpreting patent claims over dictionary definitions and other forms of extrinsic evidence.  As the Federal Circuit emphasized in Phillips the specification is “the single best guide to the meaning of the disputed term.”  Patent practitioners could have avoided any ambiguity through more careful drafting of the application by consistent use of terms in the specification and claims.