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When exclusion order based on multiple patents, failure to appeal under each may render appeal moot

August 06, 2008
Post by Blog Staff

In a decision last week, the Federal Circuit affirmed the United States International Trade Commission's finding of infringement and validity.

The claims were brought under three patents that all claimed priority to a common parent application, and thus would ordinarily all expire on the same day. However, one of the three patents was subject to a 108 day term extension under 35 U.S.C. § 154(b). The final determination was only appealed as to two patents, one of which was the one subject to the extension. As the exclusion order was supportable for the full term of both the non-extended patents based on infringement of the non-appealed patent, the determination regarding the non-extended patent was moot, given it would have no effect on the exclusion order. The extended patent, however, would extend the order beyond the expiration of the non-appealed patent, making the appeal as to that patent not moot.

Turning to the merits, the court affirmed the ITC's finding that the patents were not invalid under the written description requirement of § 112. The patentee substituted the generic word "clearance" for other terms in the claims, but the court held this insufficient to show lack of possession of the invention as of the parent application's filing date.

More detail on Yingbin-Nature Wood Indus. Co. v. Int'l Trade Comm'n after the jump.

The case involved the importation of laminated floor panels. The panels in question were for "floating floor" applications, meaning installation is done by coupling the panels to one another via a specially adapted groove and tongue joint along the panel edges. A profile view of the joint is shown below:

Figure 23

The panels have a special construction that prevents gaps from forming between panels after they are connected. The joint also has open spaces beneath the surface (designated 81 in the figure above) to accommodate dust and other construction debris which would otherwise prevent the coupling of the panels. Unilin Beheer holds three patents covering this type of floor panel. After finding a number of infringing panels were being imported, Unilin Beheer brought an action with the ITC to prevent further importation of the infringing panels. After a hearing, the ITC entered a general exclusion order barring importation of products infringing various claims of the three patents.

The key issues on appeal were the mootness of some of the issues on appeal and whether amendments to the specification were new matter. While all three patents at issue claimed priority from the same application (and would therefore ordinarily expire on the same day, 20 years from the parent application's filing date), one of the three patents was subject to a term extension of 108 days under 35 U.S.C. § 154(b). The appellants' products were found to have infringed all three patents, but the finding of infringement was only appealed for two, one of which had the term extension. The Federal Circuit only considered the claims in the patent with the term extension, reasoning that because the finding of infringement of the patent not at issue of the appeal would preclude importation of the accused products until the expiration of the unappealed patent, reversal of the finding regarding the patent that expires the same day would have no practical effect. However, the 108 day extension of the other patent gave the appellant an interest in the appeal, because the term of the exclusion would go beyond the expiration of the unappealed patent. The court was unpersuaded by the argument that the possibility of issue preclusion should prevent the controversy from being mooted, as issue preclusion would only apply if a new panel sought to be imported was "essentially the same" as the panels at issue in this case.

Turning to the merits, the court examined the ITC's determination that the claims were not invalid under the § 112 written description requirement. The appellants argued introduction of the term "clearances" into the specification and the claims to replace the terms "recesses," "chambers/dust chambers," and "spaces/intermediate spaces" in the original specification and the fact that the term "clearance" was used differently in different claims, incorporating unrelated concepts by covering the three different terms and that the addition demonstrated the inventor did not have possession of the invention at the time of filing, thereby running afoul of § 112.

The Federal Circuit held the ITC's determination was supported by substantial evidence. As stated by the court (internal citation omitted):

Like the Commission, we do not think that the patentee's various amendments to the specification—e.g., the introduction of the generic term "clearance" and addition of labels to certain figures—in prosecuting the '779 patent were of such significance as to demonstrate a prior lack of possession with respect to the subject matter claimed in claims 5 and 17.
Nor do we think that the patentee's attribution of two related meanings to the term "clearance" is problematic. It is the later-claimed subject matter that must be supported by adequate written description in the originally-filed disclosure. Here, there is no dispute with respect to the subject matter that is claimed in claims 5 and 17.

Based on this reasoning, the court affirmed the ITC's determinations of infringement and validity.

To read the full decision in Yingbin-Nature Wood Indus. Co. v. Int'l Trade Comm'n, click here.


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