Kaneka v. Xiamen Kingdomway Group: Implicit Order Read into Method Steps of Industrial Biotechnology Patent


Kaneka v. Xiamen Kingdomway Group: Implicit Order Read into Method Steps of Industrial Biotechnology Patent

The Federal Circuit’s recent decision in Kaneka Corp. v. Xiamen Kingdomway Group Co. (Fed. Cir. 2015) serves as a reminder that courts may implicitly read an order into a patent’s method claim steps, even if the applicant did not intend such order. On June 10, 2015, the Federal Circuit issued its opinion construing several claim terms in U.S. Patent No. 7,910,340, affirming-in-part, vacating-in-part, and remanding to the district court for further proceedings. In doing so, the Federal Circuit applied an implicit order to the method claims of an industrial biotechnology patent.

The technology in Kaneka relates to processes for bio-producing oxidized coenzyme Q10 on an industrial scale. Kaneka filed its complaint against the defendants for patent infringement in district court on March 22, 2011, and then filed a complaint in the International Trade Commission (“Commission”) on June 17, 2011. The district court stayed the proceedings until final determination by the Commission, after which it construed several terms and ruled on summary judgment that the defendants did not infringe. On appeal, the Federal Circuit applied the standard of review handed-down by the Supreme Court in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. (2015), reviewing the district court’s claim construction de novo except for subsidiary facts, which the Federal Circuit reviewed for “clear error.”

Please see full alert below for more information.

 Download PDF

The technology in Kaneka relates to processes for bio-producing oxidized coenzyme
Q10 on an industrial scale. Kaneka filed its complaint against the defendants for
patent infringement in district court on March 22, 2011, and then filed a complaint
in the International Trade Commission (“Commission”) on June 17, 2011. The
district court stayed the proceedings until final determination by the Commission,
after which it construed several terms and ruled on summary judgment that the
defendants did not infringe. On appeal, the Federal Circuit applied the standard
of review handed-down by the Supreme Court in Teva Pharmaceuticals USA, Inc. v.
Sandoz, Inc. (2015), reviewing the district court’s claim construction de novo except
for subsidiary facts, which the Federal Circuit reviewed for “clear error.”
The claims of the ’340 patent recite a process for producing oxidized coenzyme Q10
generally comprising culturing a microorganism and then extracting and oxidizing
the coenzyme. In several independent claims, the extracting and oxidizing occur
in a different order and under different conditions (i.e., in a sealed tank or not). The
claimed process is not numbered or otherwise explicitly ordered, but the Federal
Circuit found that the language of two claims requires that the steps be read with
implicit order, such that “some oxidation must occur before the extraction step”
in one of these claims, “or after the extraction step” in the other. The court noted
that “[w]here the steps of a method claim actually recite an order, we ordinarily
construe the claim to require order,” and “[a] method claim can also be construed
to require that steps be performed in order where the claim implicitly requires order,
for example, if the language of a claimed step refers to the completed results of
the prior step.” Here, for example, one of the claims referred to oxidizing the “thus-
obtained” coenzyme and “then extracting the oxidized coenzyme.”
The implicit ordering of method steps is not new. The court in Mantech
Environmental Corp. v. Hudson Environmental Services, Inc. (Fed. Cir. 1998) applied
an implicit order to “methods for remediating a hydrocarbon-contaminated region
of a subterranean body of groundwater.” The court held “that the sequential nature
of the claim steps is apparent from the plain meaning of the claim language and
nothing in the written description suggests otherwise.” In Loral Fairchild Corp. v. Sony
Corp. (Fed. Cir. 1999), the Federal Circuit applied an implicit order in semiconductor
technology method claims. Relying on the “literal language of the claim,”
supported by the specification and prosecution history, the Federal Circuit read into
the claim steps an implicit order even though the claims did not explicitly require
such strict compliance. In Altiris, Inc. v. Symantec Corp. (Fed. Cir. 2003), the Federal
Circuit described a two-part test for determining whether to apply an implicit
Kaneka v. Xiamen Kingdomway Group:
Implicit Order Read into Method Steps
of Industrial Biotechnology Patent
July 27, 2015
Jeremiah B. Frueauf
order to a claimed method, derived from earlier case law. First, the court looks to
the claim language to determine if the claim steps, by logic or grammar, require
performance in the order written. If the court finds that the claim language does
not require such order, then the court will next look to the specification to determine
whether the specification “directly or implicitly requires such a narrow construction.
If not, the sequence in which such steps are written is not a requirement.”
More recently, courts have read an implicit order in method claims related to
electronic credit card technology in E-Pass Techs., Inc. v. 3Com Corp. (Fed. Cir.
2007); to virtual private computer network technology in SSL Servs., LLC v. Citrix
Sys. (E.D. Tex. 2011); and to medical device technology in W.L. Gore & Assocs. v.
Medtronic, Inc. (E.D. Va. 2012).
Kaneka reiterates the importance of careful claim drafting when preparing and
prosecuting method claims for industrial biotechnology patent applications. To
ensure that an implicit order does not unnecessarily limit claim scope to a specific
order, it is important for applicants to precisely draft both the claim language and
the specification. Additionally, applicants must be mindful during prosecution to not
introduce arguments or amendments that may limit the order of method steps, if not
desired. Using strategic claim drafting and patent prosecution will help applicants
avoid unduly narrowing method claims to a specific implicit order.
For more information, please contact:
Jeremiah B. Frueauf, Director
jfrueauf@skgf.com
Summer Associate, Brenda Crabtree assisted in the research and drafting of this article.
© 2015 Sterne, Kessler, Goldstein & Fox P.L.L.C.
1100 New York Ave. NW, Washington, DC 20005
S K G F. C O M

Download PDF[144KB]
Email
Report

Note close

Firefox recommends the PDF Plugin for Mac OS X for viewing PDF documents in your browser.

We can also show you Legal Updates using the Google Viewer; however, you will need to be logged into Google Docs to view them.

Please choose one of the above to proceed!

LOADING PDF: If there are any problems, click here to download the file.

You may also like...

Leave a Reply

Your email address will not be published. Required fields are marked *