Published 04/09/2019 by CIONCA Team Member
On August 27, 2019, the United States Court of Appeals for the Federal Circuit made decision in Guangdong Alison Hi-Tech Co. v. International Trade Commission. In 2016, domestic manufacturer Aspen Aerogels, Inc. filed a complaint with the International Trade Commission alleging that Guangdong Alison Hi-Tech Co., a foreign manufacturer of aerogel insulation products, had violated section 337 of the Tariff Act of 1930. Aspen posited that the importation of certain composite aerogel insulation materials infringed their U.S. Patent No. 7,078,359, thereby violating section 337. In September 2017, the administrative law judge (“ALJ”) held that Alison had indeed violated section 337, citing that Alison infringed the ‘359 patent protecting Aspen’s insulation materials. The Commission affirmed the ALJ’s initial determination, holding that Alison had infringed on the claims 1, 7, and 9 of the ‘359 patent, which can be found below.
Claim 1: A composite article to serve as a flexible, durable, light-weight insulation product, said article comprising a lofty fibrous batting sheet and a continuous aerogel through said batting.
Claim 7: The composite article of claim 1, further comprising a dopant.
Claim 9: The composite article of claim 7, wherein the dopant is present in an amount of about 1 to 20% by weight of the total weight of the composite.
The Commission placed an importation band on Alison’s composite aerogel insulation materials, prompting Alison to petition the Commission for review of the ALJ’s initial determination. Alison challenged the validity of the claims mentioned above, citing prior art belonging to Ramamurthi (U.S. Patent No. 5,306,555), on the basis of indefiniteness, anticipation, and obviousness. The Commission affirmed the ALJ’s claim construction order, rejecting Alison’s challenges. Alison appealed the decision. The Federal Circuit affirms the Commission’s final determinations on all grounds.
Naturally, the Federal Circuit performed an analysis of all the Commission’s final determinations, as described below:
1. Terms of Degree: Indefiniteness. In the appeal before the Federal Circuit, Alison challenges the Commission’s determination that the phrase “lofty … batting” in claim 1 of the ‘359 patent is not indefinite. Patents with claims involving terms of degree, such as the term “lofty” in this particular case, must provide “objective boundaries” in the context of the invention. These objective boundaries can be identified by “claims, figures, written description, prosecution history of a patent,” as well as extrinsic evidence. Alison argues that the phrase “lofty … batting” is an indefinite term of degree without a precise objective boundary. However, the Federal Circuit rules that the written description for the ‘359 patent provides objective boundaries in the following ways:
a. Express definitions. Upon analysis of the ‘359 patent, the Federal Circuit finds that the written description “provides express definitions for the phrase and its components.” “Lofty batting” is expressly defined as a “fibrous material that shows the properties of bulk and some resilience.”
b. Examples. The written description also includes numerous examples and measurement metrics that further inform the meaning of the phrase. The Federal Circuit cites examples of commercial products that can qualify as lofty batting. Metrics for the fineness of fibers, thermal conductivity of the batting, and density of the batting qualify as well.
In addition to the written description, the prosecution history of the ‘359 patent supports the conclusion. In the Statement of Reasons for Allowance, the patent examiner emphasized that the specification “defined ‘lofty fibrous batting’ as a ‘fibrous material that shows the properties of bulk and some resilience,’ which distinguishes the prior art based on this term.” Finally, extrinsic evidence provides further support for the objective boundaries of the phrase. The technical definitions of “batting” and “loft” confirm that they are “terms of art that have meanings consistent with their use in the ‘359 patent.”
2. Anticipation. The Commission affirmed that the ‘359 patent’s claims 1, 7, and 9 are not anticipated by prior art in the form of Ramamurthi. Alison challenges this determination by appealing to the Federal Circuit on the basis that “the Commission’s determination is unsupported by substantial evidence.” A patent claim is invalid on the basis of anticipation only if “each and every element of the claim is expressly or inherently disclosed in a single prior art reference.” Alison argues that an example in Ramamurthi demonstrates the same properties of “bulk and some resilience” as the construction of “lofty … batting,” while another example “has the same low density and thermal characteristics as the aerogel composites disclosed in the ‘359 patent.” The Federal Circuit affirms the Commission’s conclusion that “fiber glass” and “glass wool” each describe broad categories of materials that are not inherently “lofty.”’ Additionally, low-density fiber, according to expert testimony, is not inherently lofty, so the second example in Ramamurthi provides little support for Alison’s inherency argument. The Federal Circuit holds that “substantial evidence supports the Commission’s final determination of no anticipation.”
3. Obviousness. Regarding obviousness, claim 9 recites a specific range of dopant that the Commission determined not to be expressly disclosed in Ramamurthi. On appeal, Alison argues that the specific range mentioned in claim 9 “is inherently disclosed by or would have been obvious over Ramamurthi’s disclosure.” However, because the Federal Circuit affirms the Commission’s determination that the “lofty … batting” limitation of claim 1 is not inherently disclosed by Ramamurthi, the Federal Circuit holds that there is no need to reach the separate ground for claim 9.
For the reasons above, the Federal Circuit affirms the Commission’s final determination that claims 1, 7, and 9 of the ‘359 patent are not invalid.
When applying for a patent, it is crucial that the applicant can clearly provide objective boundaries for claims involving terms of degree in the context of the invention. Objective boundaries – which can be identified by claims, figures, written description, prosecution history of a patent, or extrinsic evidence – help to satisfy the reasonable certainty standard that reflects a delicate balance between the inherent limitations of language and providing clear notice of what is claimed.
Full Guangdong Alison Hi-Tech Co. v. International Trade Commission decision can be read here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-2042.Opinion.8-27-2019.pdf
Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C.
Marin11/18/2015 6:11:11 PM
PTAB Decisions Give Examples of Patent Eligible Subject Matter
Marin11/18/2015 6:15:40 PM
Covered Business Method Claims Are Not Required to Particularly Target Financial Industry
Marin11/18/2015 7:31:35 PM
When Is a Thesis Prior Art?
Marin11/19/2015 2:13:05 PM
An Innovator’s Dilemma: Design or Utility Patent?
Marin1/28/2016 9:10:56 PM
How Unpredictability Can Affect Obviousness Challenges
Marin1/28/2016 9:15:16 PM
The Patent Trial and Appeal Board Designates Two Decisions as Precedential
M. Cionca and I. Kim2/4/2016 5:55:16 PM
Software Inventions Are Still Patentable!
Marin Cionca2/16/2016 6:34:53 PM
In IPRs, patentees have to show that substitute patent claims are patentable
I. Kim PhD2/26/2016 8:47:51 PM
The U.S. Supreme Court Will Review Claim Construction Standards and Institution Decision Reviewability.
Iris Kim, PhD3/25/2016 8:34:14 PM
Challenging a Claim’s Validity with Different Standards of Claim Construction
Marin Cionca5/17/2016 8:57:23 PM
Patent Claims Rejection Based on Inherency
Iris Kim, PhD6/1/2016 7:04:50 PM
The Patent Trial and Appeal Board Designates Five More Decisions as Precedential
Marin Cionca9/6/2016 9:26:12 PM
Patent Case Law: New Example of Software as Patentable Subject Matter
Marin Cionca9/15/2016 9:47:39 PM
Patent Law Alert: Federal Circuit Opens Door for More Software Patents
Marin Cionca2/21/2017 12:30:52 AM
Software Patent Law Update: Federal Circuit Finds Graphical User Interface Patentable
Marin Cionca4/25/2017 9:48:49 PM
Monetization of Patents: How to Make Money with Patents
CIONCA - Staff6/15/2017 5:32:14 PM
Patent Law: Challenging the Patent Claim Definiteness Requirement
CIONCA - Staff6/28/2017 8:26:07 PM
Patent Law: Conditions Precedent May Expose Method Claim to Broad Interpretation During Prosecution
CIONCA - Staff8/9/2017 5:39:58 PM
Patent Case Study: The Novelty Of An “Invention” Is NOT Enough To Make It Patentable
CIONCA Staff8/20/2017 3:16:11 PM
CIONCA on Patents: Think Twice Before Suing for Patent Infringement and Fight Back when Unreasonably Sued
staff9/15/2017 9:33:30 PM
staff9/27/2017 5:00:12 PM
Claim Indefiniteness During Patent Pre-Issuance: Define Your Invention, Not Just Your Audience
staff9/27/2017 5:12:07 PM
CIONCA - Patent and Trademark Law Attorney
Staff9/28/2017 7:27:22 PM
Staff11/3/2017 4:20:04 PM
An Introduction to Provisional Patent Applications
11/10/2017 6:47:44 PM
An Introduction to Design Patent Applications
11/17/2017 1:24:20 PM
An Introduction to Patent Searches
12/1/2017 8:01:27 PM
An Introduction to Patent Cooperation Treaty Applications
12/26/2017 6:04:25 PM
CIONCA Sets Foot in San Francisco
1/2/2018 7:47:09 PM
The Lanham Act: Disparagement Provision Violates the First Amendment
CIONCA Team1/17/2018 8:12:06 PM
A Fork in the Road: Production or Protection?
CIONCA Team2/16/2018 4:07:48 PM
Fashion and Intellectual Property
3/8/2018 1:25:46 PM
Proceed with Caution: Consider Carefully when Narrowing Claims for Allowance
3/20/2018 12:50:05 PM
Andrei Iancu - New Director of the USPTO
CIONCA Staff4/13/2018 9:10:04 PM
It Take Two to Tango: Knowles v. Iancu, a Standing Dispute in a PTAB Decision
CIONCA Staff4/20/2018 5:25:25 PM
USPTO Changes Examination Procedure Pertaining to Subject Matter Eligibility in View of Berkheimer v. HP, Inc.
5/4/2018 7:37:51 PM
The Hague System for Protection of International Designs
CIONCA IP5/17/2018 9:54:58 PM
Marin Cionca Presents at OCIPLA May 2018 Luncheon
7/3/2018 7:44:33 PM
Impax Laboratories Inc. v Lannett Holdings Inc. on Claim Invalidation
Marin Cionca7/31/2018 6:50:05 PM
My patent expired? Can I still sue for patent infringement?
Staff8/16/2018 4:24:01 PM
Correcting or Changing a Patent After Issue Through the Central Reexamination Unit
Staff8/31/2018 7:26:58 PM
Patent Claim Interpretation By Federal Circuit's on Facebook's Contiguous Image Layout
CIONCA Team Member9/17/2018 4:33:20 PM
Trademarks and Likelihood of Confusion: Federal Circuit’s Decision in In re: Detroit Athletic Co.
Marin Cionca10/1/2018 7:42:12 PM
Can I Register a Color as a Trademark or Service Mark?
CIONCA Team Member10/16/2018 6:50:31 PM
A Double-Edged Sword: Benefit of Priority or Longer Patent Term
CIONCA Team Member11/19/2018 1:07:51 PM
The Appeals Process
Marin Cionca12/8/2018 8:35:06 PM
IP Assets - Procurement, Enforcement, Monetization
CIONCA Team Member12/18/2018 6:12:48 PM
Schlafly v. The Saint Louis Brewery: The Registration of Merely a Surname
CIONCA Team Member1/4/2019 4:12:21 PM
In re: Tropp: New Matter in a Continuation Can Be Relevant to Written Description Requirement
Marin Cionca1/23/2019 9:45:30 PM
Patent Law Alert: All Sales of the Invention, Including Secret Sales May Invalidate a Patent
CIONCA Team Member2/5/2019 7:22:27 PM
TiVo Puts Tivoli on Pause: TTAB’s Decision in TiVo Brands LLC v. Tivoli, LLC
CIONCA Team Member2/19/2019 7:12:46 PM
Revised Guidance by USPTO on Patent Subject Matter Eligibility and Examining Computer-Implemented Functional Claims
Marin Cionca3/1/2019 9:36:50 PM
USPTO Director Andrei Iancu Visits Orange County!
CIONCA Team Member3/21/2019 3:49:43 PM
Defining Inherency: A Decision in Personal Web Technologies, LLC v. Apple, Inc.
CIONCA Team Member4/3/2019 7:25:37 PM
The Patent Trial and Appeal Board (PTAB) Designates Three Decisions Precedential
Marin Cionca4/17/2019 3:48:33 PM
What Qualifies as Proper Use in Commerce Claim in a USPTO Trademark Application?
CIONCA Team Member5/7/2019 7:13:41 PM
The Federal Circuit Defines a Technological Invention
CIONCA Team Member5/20/2019 8:25:57 PM
PTAB Designates Cases as Precedential
Marin Cionca6/11/2019 8:43:17 PM
Can I Successfully License My Invention?
CIONCA Team Member6/27/2019 7:41:52 PM
Obviousness in a Single Prior Art Instance: Game and Technology Co., LTD., v. Activision Blizzard INC., Riot Games, INC.
CIONCA Team Member7/5/2019 2:22:42 PM
In re: Global IP Holdings LLC: Broadening Claims Through Reissue Applications
CIONCA Team Member8/5/2019 2:29:33 PM
Is Speculation Enough Evidence for an Appeal?: General Electric Company v. United Technologies Corporation
CIONCA Team Member8/19/2019 7:46:17 PM
In re Yarnell Ice Cream, LLC: Trademark Descriptiveness and Acquired Distinction
CIONCA Team Member9/4/2019 7:20:46 PM
Guangdong Alison Hi-Tech Co. v. International Trade Commission: Objective Boundaries
Marin Cionca9/27/2019 9:32:48 PM
Can an Online Patent Attorney File My Patent?
CIONCA IP10/7/2019 5:44:50 PM
A Decision in Henny Penny Corporation v. Frymaster LLC
CIONCA IP10/16/2019 1:28:13 PM
To Use or Not to Use: The Statutory Period of Trademark Nonuse Prior to Presumed Abandonment
Marin Cionca, Esq.
Registered Patent Attorney
USPTO Reg. No. 63899
About CIONCA® IP Law firm: We are an Orange County, CA based boutique intellectual property firm with a focus on patent and trademark application, prosecution, opinion, licensing and IP enforcement services, offering its IP services primarily at flat fee rates. We serve local OC clients, as well as clients throughout US and international clients.
We’d love to hear from you…we just need a little info
about your plans to take over the world!
P.S…Feel free to call us! (800)985-9198
Thank you for your message. We will respond within 24-72 hours. Thank you.