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Sinorgchem v. ITC & Flexsys America.

Posted in Opinion Commentary by Jake Ward on December 22, 2007

Range of “Controlled Amount” Narrowly Construed Based on Definition in the Specification; Majority Panel Ignores Contrary Disclosure and the Signal “For Example” in Relation to the Range.  

(Fed. Cir. 2007, 06-1633)


On appeal to the CAFC, Sinorgchem argued that a limited exclusion order by the International Trade Commission (“ITC”) and decision that Sinorgchem infringed four method claims of Flexys America’s U.S. Pat. Nos. 5,117,063 (“the ’063 patent”) and 5,608,111 (“the ’111 patent”) was improper.  A majority of a three-judge panel at the CAFC agreed with Sinorgchem and vacated the ITC decision.

The technology at issue relates to  a compound known as 6PPD, a rubber antidegradant used primarily in tires.  An intermediate compound, 4-aminodiphenylamine (4-ADPA) is used to make 6PPD.  Sinorgchem produces 4-ADPA and 6PPD in China and imports 6PPD for sale into the United States.

The process for making 4-ADPA includes a condensation reaction of aniline and nitrobenzene in the presence of a base and a  protic material (a proton donor, such as water).  Flexsys’ claimed process for producing 6PPD includes the step of: 

. . . reacting the aniline and nitrobenzene in a confined zone at suitable temperature, and in the presence of a suitable base and controlled amount of protic material to produce one or more 4-ADPA intermediates . . . . (Emphasis mine).

The central question was whether Sinorgchem’s method of producing 4-ADPA intermediates satisfied the above claim limitations and, in particular, whether the Sinorgchem’s methods used the controlled amount of protic material?  Sinorgchem argued that “controlled amount of protic material” should be construed to be “up to about 4% water”.  Under this construction, Sinorgchem would not infringe because Sinorgchem’s method employs more than 4% water.  Flexsys argued that “controlled amount” means “that the amount of protic material should be controlled between an upper limit and a lower limit,” where the upper limit was “that amount beyond which the reaction between nitrobenzene and aniline is inhibited,” and the lower limit was “that amount below which the desired selectivity for 4-ADPA intermediates is not maintained.” Under Flexsys’ claim construction, the Sinorgchem process would infringe.

The majority panel found that the ITC’s determination of infringement was based on an erroneous construction of the term “controlled amount”, and that Sinorgchem did not literally infringe under a correct construction.  The majority relied on Flexsys’ specifications, which state:

A “controlled amount” of protic material is an amount up to that which inhibits the reaction of aniline with nitrobenzene, e.g., up to about 4% H2O based on the volume of the reaction mixture when analine is utilized as the solvent.  (Emphasis mine).

The CAFC placed emphasis on the use of quotations marks around the term “controlled amount”, and use of the word “is”, as being indicative of the patentee acting as its own lexicographer in defining the term.  The majority disagreed with the ITC’s finding that the ” “up to about 4% H2O” language was used in the specification as an example and not a definition of the amount of water permitted,” stating that “a definition set forth in the specification governs the meaning of the claims.”  The majority also disagreed with the ITC’s reliance on a Flexsys example where more than 10% water in a reaction was described.  Specifically, the majority opined:

Where, as here, multiple embodiments are disclosed, we have previously interpreted claims to exclude embodiments where those embodiments are inconsistent with unambiguous language in the patent’s specification or prosecution history.

The majority panel of the CAFC also found it significant that the Flexsys example relied upon by the ITC does not expressly disclose the amount of water used in the reaction, and that the amount must instead be determined by a “complex calculation”.

Accordingly, the majority REVERSED AND REMANDED to the ITC to address doctrine of equivalents infringement in light of the holding that there was no literal infringement.

Circuit Judge Newman provided a strong DISSENT,  stating that the majority:

. . . made findings contrary to the detailed and unchallenged text of the patent specifications, and have construed the claims so that they exclude a major part of the invention described in the patents.

Specifically, Judge Newman recognized that:

. . . there was no disclaimer of the scope set forth in the patent specifications and claims; there is no prior art to limit the claims in the way selected by the panel majority; and there is no reason to insert an absolute numerical limit of “about 4%” protic material into the claims that do not contain a numerical limit, when the specifications of both patents demonstrate significantly higher percentages.

Nicely driving the absurdity of the majority decision home, Judge Newman further states:

It is not the judicial role to change the invention. Although the panel majority acknowledges that limits above 4% “could be found in the specification” and were so found by the Commission, the panel majority discards this undisputed fact. . . .

Thus my colleagues find “clear definitional language [of a 4% limit] set forth in the specification” although that number is in a sentence with the signal “for example,” and ignore the text and examples showing a higher range. These erroneous appellate findings of scientific fact directly contradict the findings of the Commission, made upon extensive and detailed evidence and argument on the content of the specifications, including the variables discussed and exemplified in the ‘063 and ‘111 patents. Instead, the panel majority selects the parts of the specifications that show water in the 4% range, and ignores the description and examples that show other amounts of water. . . .

Our appellate obligation is to impart consistency, predictability, and guidance to patent claiming, whereby the patent-user community can rely on a technologically correct and legally consistent interpretation of patent claims. The health of innovative technology requires confidence in objective rules of claim construction, and in uniform judicial application of the rules. The panel majority adds inconsistency and unpredictability by arbitrarily limiting the scope of the claimed invention in a way that conflicts with the teachings of the specifications and the knowledge in the field of the inventions. I respectfully dissent.

(Emphasis mine).

JW Note:  See also previous AT! discussions of Flexsys America v. Sinorgchem et al. here and here.