ITC’s claim construction reversed, revised construction leads to Section 337 violationNovember 1, 2007

In a decision yesterday, the Federal Circuit reversed a decision of the U.S. International Trade Commission that a violation of § 337 of the 1930 Tarriff Act had not occurred. The court reversed the ITC's claim construction, and based on the revised claim construction, found the accused products infringed. This modified claim construction also resulted in the plaintiff's U.S. product falling within the scope of the claims, thereby meeting the "domestic industry" requirement of § 337. As a result, the court held a § 337 violation was made out, and remanded the case to the ITC for further proceedings.More detail of Osram GmbH v. Int'l Trade Comm'n after the jump.The patents at issue relate to a wavelength converting composition where in luminous phosphor particles convert light from an LED to a different wavelength to produce a white light. Representative claim language reads (emphasis added):

1. A wavelength-converting casting composition, for converting a wavelength of ultraviolet, blue or green light emitted by an electroluminescent component, comprising: a transparent epoxy casting resin; an inorganic luminous substance pigment powder dispersed in said transparent epoxy resin, said pigment powder comprising luminous substance pigments from a phosphorus [sic: phosphor] group having the general formula A3B5X12:M, where A is an element selected from the group consisting of Y, Ca, Sr; B is an element selected from the group consisting of Al, Ga, Si; X is an element selected from the group consisting of O and S; M is an element selected from the group consisting of Ce and Tb; said luminous substance pigments having grain sizes # 20 μm and a mean grain diameter d50 # 5 μm.

The issue was how to measure the mean particle size, by number or by volume. The ALJ concluded that size should be determined based on the number method. The Commission reached the opposite conclusion, that size should be based on the volume method. Using this method, the patentee's product was not covered by its patent, nor were some of the accused products covered by the patent. Therefore, there was no violation of § 337.The Federal Circuit reversed. The court explained that the patentee had 3 experts and the importer had one expert, all of whom agreed that size should be measured by the number method, at least until the importer's expert changed his mind. The briefs were also consistent in urging the number method, as was the patent specification. Therefore, the Federal Circuit concluded that the correct claim interpretation required use of the number method for determining particle size. Based on this claim construction, the imported products literally infringed. Also, when this construction was considered, Osram's product was covered by the claim, thereby meeting the "domestic industry" requirement of § 337. As a result, a § 337 violation existed, and the court reversed the ITC decision.Judge Dyk dissented. He argued for the ITC's conclusion on claim interpretation, noting the patent specification does not describe how to measure particle size, and that the experts did not agree on the methodology, nor did the importer's expert change his mind. Judge Dyk also pointed out that the number method is used for R&D, while the volume method is used for commercial sales. Since the patent describes the commercial invention, the dissent argued that the volume method is correct, and therefore would have affirmed the ITC decision.To read the full decision in Osram GmbH v. Int'l Trade Comm'n, click here.

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