435 F.3d 1366 (Fed. Cir. 2006), 05-1018, Energizer Holdings, Inc. v. International Trade Com'n

Docket Nº:05-1018.
Citation:435 F.3d 1366
Party Name:77 U.S.P.Q.2d 1625 ENERGIZER HOLDINGS, Inc. and EVEREADY BATTERY COMPANY, Inc., Appellants, v. INTERNATIONAL TRADE COMMISSION, Appellee, and Pt International Chemical Industrial Co. Ltd., Intervenor, and Golden Power Industries, Ltd., Guangdong Chaoan Zhenglong Enterprise Co., Ltd., Guangzhou Tiger Head Battery Group Co., Ltd., Fujian Nanping Nanfu
Case Date:January 25, 2006
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

Page 1366

435 F.3d 1366 (Fed. Cir. 2006)

77 U.S.P.Q.2d 1625

ENERGIZER HOLDINGS, Inc. and EVEREADY BATTERY COMPANY, Inc., Appellants,

v.

INTERNATIONAL TRADE COMMISSION, Appellee,

and

Pt International Chemical Industrial Co. Ltd., Intervenor,

and

Golden Power Industries, Ltd., Guangdong Chaoan Zhenglong Enterprise Co., Ltd., Guangzhou Tiger Head Battery Group Co., Ltd., Fujian Nanping Nanfu Battery Co., Ltd., Hi-Watt Battery Industry Co., Ltd., Ningbo Baowang Battery Co., Ltd., Sichuan Changhong Electric Co., Ltd., Zhejiang 3-Turn Battery Co., Ltd., and Zhongyin (Ningbo) Battery Co., Ltd., Intervenors.

No. 05-1018.

United States Court of Appeals, Federal Circuit.

Jan. 25, 2006

Appealed from: United States International Trade Commission.

Page 1367

Randall G. Litton, Price, Heneveld, Cooper, DeWitt & Litton, LLP, of Grand Rapids, Michigan, argued for appellants. With him on the brief were Eugene J. Rath III and Matthew J. Gipson; Of counsel on the brief were V. James Adduci II and Maureen F. Browne, Adduci, Mastriani & Schaumberg, L.L.P., of Washington, DC. Of counsel were Michael L. Doane, David F. Nickel, Sarah E. Hamblin and S. Alex Lasher .

Wayne W. Herrington, Attorney, Office of the General Counsel, United States International Trade Commission, of Washington, DC, argued for appellee. With him on the brief was James M. Lyons, General Counsel. Of counsel was Neal J. Reynolds, Attorney.

Kent R. Stevens, of Washington, DC, argued for intervenor PT International Chemical Industrial Co., Ltd.

Steven P. Hollman, Hogan & Hartson L.L.P., of Washington, DC, argued for intervenors Golden Power Industries, Ltd., et al. With him on the brief were Christopher T. Handman, Susan M. Cook and Jessica L. Ellsworth; Of counsel on the brief were William E. Thomson, Jr., Wei-Ning Yang, Yoncha L. Kundupoglu and Olga Berson, of Los Angeles, California. Of counsel was Robert B. Wolinsky .

Before NEWMAN, Circuit Judge, ARCHER, Senior Circuit Judge, and SCHALL, Circuit Judge .

PAULINE NEWMAN, Circuit Judge.

Energizer Holdings, Inc. and Eveready Battery Company, Inc. (collectively "

Page 1368

;EBC") appeal the ruling of the International Trade Commission in an action under section 337 of the Tariff Act of 1930 as amended (19 U.S.C. §1337), holding all of the claims of EBC's United States Patent No. 5,464,709 ("the '709 Patent") invalid for failure to comply with 35 U.S.C. §112 ¶ 2.1 We reverse the holding of invalidity and remand for further proceedings.

The Invention

The '709 patent is for an electrolytic alkaline battery cell that is substantially free of mercury. Alkaline battery cells typically contain an electrolyte such as potassium hydroxide, a metal oxide cathode such as manganese dioxide, and a zinc anode. A detrimental characteristic of alkaline cells has been corrosion of the zinc after partial discharge, producing hydrogen gas which exerts internal pressure, causing the cell to leak. A widely used corrosion inhibitor in such cells is mercury, which amalgamates with the zinc and inhibits hydrogen formation. Mercury, however, is an environmental pollutant, and extensive effort has been devoted to reducing or eliminating the mercury content in alkaline batteries.

The '709 patent describes the discovery that a cause of gas-producing corrosion is the presence of trace impurities in the zinc used in the anode, and that upon identification and elimination of these impurities, the addition of mercury can be eliminated or substantially reduced. The electrolytic cells at issue are described as "zero-mercury-added" batteries. EBC charged the respondents/Intervenors with violation of 19 U.S.C. §1337 based on their importation into the United States, sale for importation, and sale within the United States, of batteries asserted to infringe the '709 patent.

In the Commission proceedings, the Administrative Law Judge construed the patent claims and held them valid and infringed. The Commission rejected the ALJ's claim construction and held all of the claims invalid for indefiniteness under 35 U.S.C. §112 ¶2, on the ground that the claim term "said zinc anode" lacks antecedent basis in the claim, and that the claims are unclear or ambiguous. EBC challenges this ruling, arguing that the meaning of "said zinc anode" and other usages in the claims, viewed in light of the specification, would be readily understood by persons of ordinary skill in the field of the invention, and that the absence of antecedent basis is not an invalidating flaw.

Standard of Review

We review the Commission's decision on the criteria established by 19 U.S.C. §1337(c) and the Administrative Procedure Act. In accordance with the APA, agency factual findings are sustained unless they are arbitrary, capricious, or unsupported by substantial evidence, and agency rulings of law are reviewed for correctness. 5 U.S.C. §706(2)(E). See Jazz Photo Corp. v. Int'l Trade Comm'n, 264 F.3d 1094, 1099 (Fed. Cir. 2001) (applying the APA to review of decisions of the International Trade Commission).

An analysis of claim indefiniteness under §112 1J2 is "inextricably intertwined with claim construction." Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1379 (Fed. Cir. 1999). See Datamize v. Plumtree Software, Inc., 417 F.3d 1342, 1347-48 (Fed. Cir. 2005)

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(" 'By finding claims indefinite only if reasonable efforts at claim construction prove futile, we accord respect to the statutory presumption of validity and we protect the inventive contribution of patentees, even when the drafting of their patents has been less than ideal.' ") (quoting Exxon Research & Eng'g Co. v United States, 265 F.3d at 1371, 1375 (Fed Cir 2001)); Oakley, Inc. v. Sunglass Hut Int'l, 316 F.3d 1331, 1340-41 (Fed. Cir. 2003) (determination of claim definiteness "requires a construction of the claims according to the familiar canons of claim construction"). Accordingly, we give de novo review to the...

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