Osram Gmbh v. International Trade Com'n

• Decision Date: 31 October 2007
• Docket Number: No. 2006-1282.,2006-1282.
• Citation: 505 F.3d 1351
• Parties: OSRAM GMBH, and Osram Opto Semiconductors GmbH, Appellants, v. INTERNATIONAL TRADE COMMISSION, Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

505 F.3d 1351

OSRAM GMBH, and Osram Opto Semiconductors GmbH, Appellants, v. INTERNATIONAL TRADE COMMISSION, Appellee.

No. 2006-1282.

United States Court of Appeals, Federal Circuit.

October 31, 2007.

Alan D. Smith, Fish & Richardson P.C., of Boston, MA, argued for appellant. With him on the brief were Charles H. Sanders and Christopher D. Agnew.

Michelle Walters, Attorney, Office of the General Counsel, United States International Trade Commission, of Washington, DC, argued for appellee. With her on the brief were James M. Lyons, General Counsel, and Wayne W. Herrington, Acting Assistant General Counsel.

Before NEWMAN, RADER, and DYK, Circuit Judges.

Opinion for the court filed by Circuit Judge NEWMAN. Dissenting opinion filed by Circuit Judge DYK.

NEWMAN, Circuit Judge.

OSRAM GmbH and OSRAM Opto Semiconductors GmbH (collectively OSRAM) appeal certain portions of the Final Determination of the United States International Trade Commission (ITC or Commission) in an investigation conducted under Section 337 of the Tariff Act of 1930 as amended, 19 U.S.C. § 1337.¹ The patents subject of this appeal are for a wavelength-converting composition wherein luminous phosphor particles convert the emitted light of light-emitting diodes (LEDs) to light of a different wavelength in order to produce the desired white light. At OSRAM's request the ITC initiated an investigation charging Dominant Semiconductors Sdn. Bhd. (and two other respondents no longer in the case) with violating Section 337 by importing and selling compositions that infringe one or more claims of OSRAM's patents called the "Particle Size Patents."

The Commission construed the claims of the Particle Size Patents, applied that construction both to Dominant's accused products and OSRAM's domestic industry products, and concluded that some of Dominant's imported products and all of OSRAM's domestic products were not within the scope of the claims as construed. On this basis, the ITC held that Section 337 was not violated.

We conclude that the ITC erred in its claim construction, and that on the correct claim construction the Particle Size Patent claims are infringed and the domestic industry prong of Section 337 is satisfied. The Commission's decision is reversed.

BACKGROUND

The Particle Size Patents are U.S. Patents No. 6,066,861 (the '861 patent); No. 6,277,301 (the '301 patent); No. 6,613,247 (the '247 patent); No. 6,245,259 (the '259 patent); and No. 6,592,780 (the '780 patent). The patents are directed to compositions, methods, and uses wherein luminous pigment powders contain phosphors that produce a spectral shift in the light emitted by electroluminescent components such as LEDs. The phosphors absorb wavelengths in the ultraviolet, blue, or green ranges, and convert some of the radiation to a higher wavelength, particularly in the yellow spectral range, whereby the ensuing combination of complementary wavelengths appears white to observers.

Light-emitting diodes are described as lasting longer than and using less energy than traditional light sources, and the patented subject matter is described as overcoming several disadvantages of prior products. The aspect of the claims relevant to this suit is the grain size² of the pigment powders, claimed as having a maximum size of 20 micrometers and a mean grain diameter of no more than 5 micrometers (µm)³. The meaning and the measurement of this limitation are determinative of infringement. Claim 1 of the '861 patent is representative, with the term at issue shown in boldface:

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 A₃B₅ X₁₂: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.

Dominant conceded that its imported powders meet all of the claim limitations except for the "mean grain diameter d₅₀ ≤ 5 Sm." Whether that limitation is met depends on how the grain diameter is measured.

In the first Initial Determination, the ALJ observed that the claims use the word "mean," but with the symbol d₅₀ whose conventional meaning is "median." Mean and median do not always produce the same result, for "mean" is the average diameter, while "median" is the diameter at which 50% of the particles are smaller and 50% of the particles are larger. On this ground the ALJ held all of the claims invalid for indefiniteness. The full Commission did not accept this ruling, and held that the claims can reasonably be construed by application of the general rule that words prevail over symbols and that the patentee can be its own lexicographer. The Commission explained that d₅₀ is "a variable defined by the words `mean grain diameter' directly preceding it," and that the word "mean" is used throughout the specifications and claims, whereas "median" does not appear in the patents. Thus the full Commission concluded that "mean grain diameter d₅₀" means the mathematical average diameter of the grains, and rejected the ALJ's holding of invalidity on the ground of indefiniteness.

The full Commission also deemed it unclear whether the mean grain diameter is measured as the average diameter based on the number of grains, or the average diameter based on the volume of the grains. This aspect of the claim construction had evolved during the trial, as it became apparent that its resolution could be dispositive of infringement. The Commission observed that the patent specifications did not state how the mean diameter is determined, and selected the volume-based method; this is a principal focus of this appeal. On this construction, the Commission remanded to the ALJ for application to the products at issue. Applying the volume-based method, the ALJ found that Dominant's "Fine Series LED" phosphors are within the claim limitation of having a mean diameter of ≤ 5µm, but that Dominant's "Normal Series LED" phosphors have a volume-based mean diameter higher than 5µm. Thus the ALJ found that the Fine Series products infringe the patents, but the Normal Series do not.

The ALJ also determined that OSRAM's own products of the domestic industry are outside this claim limitation when measured by the volume-based method. The ALJ concluded that OSRAM did not meet the "technical prong" of the domestic industry requirement of Section 337, 19 U.S.C. § 1337(a)(2). On this ground the ALJ ruled that Section 337 was not violated as to any of the imported products. The full Commission affirmed, and this appeal followed.

DISCUSSION

Rulings of the International Trade Commission are reviewed on the standard of the Administrative Procedure Act, 5 U.S.C. § 706(2)(E). 19 U.S.C. § 1337(c). Rulings of law by the ITC are reviewed for correctness, and findings of fact are reviewed to ascertain whether they were supported by substantial evidence on the record as a whole. See Jazz Photo Corp. v. International Trade Comm'n, 264 F.3d 1094, 1099 (Fed.Cir. 2001). Substantial evidence is "such relevant evidence as a reasonable mind might accept as adequate to support a conclusion." Consolidated Edison Co. v. N.L.R.B., 305 U.S. 197, 217, 59 S.Ct. 206, 83 L.Ed. 126 (1938). Claim construction is reviewed as a matter of law. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.Cir.1995) (en banc), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996); Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1451 (Fed.Cir. 1998) (en banc).

I

No appeal is taken from the Commission's determinations that the claims are not invalid for indefiniteness, or that the "mean grain diameter d₅₀" is the arithmetic average diameter. The issues on appeal flow from the ruling that the average or mean grain diameter of the phosphor grains is based on the volume, not the number, of grains. OSRAM states that the mean or average diameter of the grains as set forth in the patents would be readily understood by persons of experience in this field as the number-based average, and that the Commission erred in choosing the volume-based average.

The number-based average is calculated as the sum of the diameters of all the grains, divided by the number of grains. The volume-based average is calculated by multiplying the diameter of each grain by its volume, summing the products thereof, and dividing that sum by the sum of the volumes of the grains. These methods can produce divergent results; OSRAM gives the example that by the number method the mean diameter of a 1 µm grain and a 10 µm grain is 5.5 µm, whereas the mean diameter calculated by the volume method is 9.99 µm⁴.

The Commission states that its choice of the volume method was "art-specific", and thereby distinguished from the "general understanding" of how to describe the average diameter of particles. The Commission cited two technical treatises: the Phosphor Handbook and Perry's Chemical Engineers Handbook. The Phosphor Handbook discusses the number-based method as generally used for phosphors, stating that the number-based method "is easy to use, but both `area-based' (volume-based) and weight-based methods are frequently adopted to express the characteristics of actual powders." Perry's Chemical Engineers Handbook states, in a general section for particle size designation, that "[i]t is common to use a weight basis for percentage of frequency but surface or number may, in some cases, be more relevant." The Commission placed primary...