Kinik Company v. International Trade Commission

United States Court of Appeals, Federal Circuit
362 F.3d 1359 (2004)

ELI5:

Rule of Law:

The statutory defenses to process patent infringement under 35 U.S.C. § 271(g), which excuse infringement if the product is 'materially changed' by subsequent processes or becomes a 'trivial and nonessential component' of another product, are not available in exclusion actions before the U.S. International Trade Commission under 19 U.S.C. § 1337.

Facts:

Minnesota Mining and Manufacturing Company (3M) owns U.S. Patent No. 5,620,489 ('489 patent) for a method of making an abrasive article.
The patented method involves creating a 'soft, easily deformable and flexible preform' from a mixture of liquid binder, powdered matrix material, and abrasive particles.
The patent's specification repeatedly describes the invention as requiring that the volume of the liquid binder 'substantially exceeds' the volume of the powdered matrix material in the mixture.
During the patent's prosecution, 3M distinguished its invention from prior art by emphasizing this high ratio of liquid binder to powder.
The Kinik Company manufactures abrasive articles in Taiwan using a process.
In Kinik's process, the volume of liquid binder used is significantly less than the volume of powdered matrix material.
Kinik imports the abrasive articles made by its process into the United States.

Procedural Posture:

Minnesota Mining and Manufacturing Company (3M) filed a complaint with the U.S. International Trade Commission (ITC), initiating an exclusion action under 19 U.S.C. § 1337.
3M alleged that the Kinik Company imported abrasive articles made by a process that infringed 3M's U.S. Patent No. 5,620,489.
An Administrative Law Judge (ALJ) issued an Initial Determination finding that Kinik infringed the patent.
The full Commission affirmed the infringement finding and also ruled that the defenses available under 35 U.S.C. § 271(g) do not apply in § 1337 proceedings.
The Commission issued a Final Determination and an exclusion order against Kinik's products.
Kinik Company, as appellant, appealed the Commission's Final Determination to the U.S. Court of Appeals for the Federal Circuit.

Premium Content

Subscribe to Lexplug to view the complete brief

You're viewing a preview with Rule of Law, Facts, and Procedural Posture

Issue:

Do the statutory defenses to process patent infringement found in 35 U.S.C. § 271(g) apply in exclusion actions before the International Trade Commission under 19 U.S.C. § 1337?

Opinions:

Majority - Pauline Newman

No. The defenses to process patent infringement established in 35 U.S.C. § 271(g) are not available in exclusion actions before the International Trade Commission (ITC) under 19 U.S.C. § 1337. The court affirmed the Commission's statutory interpretation but reversed its finding of infringement. On the statutory issue, the court found that the Process Patent Amendments Act of 1988, which enacted § 271(g), explicitly states that the amendments 'shall not deprive a patent owner of any remedies available ... under section 337 of the Tariff Act.' Legislative history confirms Congress's intent to preserve the full scope of ITC remedies, not diminish them by introducing new defenses. Furthermore, § 271(g) specifies that the defenses are 'for purposes of this title' (Title 35), indicating they do not extend to actions under the Tariff Act (Title 19). On the infringement issue, the court held that patent claims must be interpreted in light of the specification and prosecution history. The '489 patent's specification and prosecution history repeatedly and explicitly define the invention as requiring a mixture where the volume of liquid binder substantially exceeds the volume of powdered matrix. Because Kinik's process undisputedly uses a mixture with less binder than powder, it does not practice the claimed invention, and the Commission's finding of infringement was not supported by substantial evidence.

Analysis:

This decision solidifies the International Trade Commission (ITC) as a powerful and distinct forum for patent holders seeking to block infringing imports, particularly for process patents. By ruling that the 'materially changed' defense of § 271(g) does not apply at the ITC, the court confirmed that the ITC offers a broader scope of protection against infringing imports than federal district courts. This creates a strategic incentive for process patent owners to pursue exclusion orders at the ITC, as importers have fewer available defenses. The case also serves as a strong affirmation of the principle that claim scope is ultimately defined by the patent's own disclosure and prosecution history, limiting patentees from asserting a broad claim interpretation that contradicts their own statements about the invention.

Gunnerbot

AI-powered case assistant

Loaded: Kinik Company v. International Trade Commission (2004)

Try: "What was the holding?" or "Explain the dissent"

Premium Feature