Kaneka Corp. v. Xiamen Kingdomway Grp. Co.

• Decision Date: 10 June 2015
• Docket Number: Nos. 2014–1373,2014–1399.,s. 2014–1373
• Citation: 115 U.S.P.Q.2d 1001,790 F.3d 1298
• Parties: KANEKA CORPORATION, a Japanese Corporation, Plaintiff–Appellant v. XIAMEN KINGDOMWAY GROUP COMPANY, a Chinese Corporation, Pacific Rainbow International Inc., a California Corporation, Shenzhou Biology and Technology Co., Ltd., a Chinese Corporation, Defendants–Appellees.
• Court: U.S. Court of Appeals — Federal Circuit

790 F.3d 1298

115 U.S.P.Q.2d 1001

KANEKA CORPORATION, a Japanese Corporation, Plaintiff–Appellant

v.XIAMEN KINGDOMWAY GROUP COMPANY, a Chinese Corporation, Pacific Rainbow International Inc., a California Corporation, Shenzhou Biology and Technology Co., Ltd., a Chinese Corporation, Defendants–Appellees.

Nos. 2014–1373

2014–1399.

United States Court of Appeals, Federal Circuit.

June 10, 2015.

Keith D. Nowak, Carter Ledyard & Milburn, LLP, New York, N.Y., argued for plaintiff-appellant. Also represented by Robert McGee Bowick, Jr., Raley & Bowick, LLP, Houston, TX.

Reece Werner Nienstadt, Mei & Mark LLP, Washington, DC, argued for defendants-appellees Xiamen Kingdomway Group Company, Pacific Rainbow International Inc. Also represented by Xiang Long, Lei Mei.

Timothy Paar Walker, K & L Gates LLP, San Francisco, CA, argued for defendant-appellee Shenzhou Biology and Technology Co., Ltd. Also represented by Lei Howard Chen, Harold H. Davis, Jr., Jas Singh Dhillon.

Gary Hnath, Mayer Brown LLP, Washington, DC, for amici curiae, Zhejiang Medicine Co., Ltd, ZMC–USA, LLC. Also represented by Paul Whitfield Hughes ; Trenton Menning, Henry M. Griffin IV, Charles Stephen Kelley, Houston, TX.

Before NEWMAN, REYNA, and HUGHES, Circuit Judges. REYNA, Circuit Judge.

Opinion

Kaneka Corporation sued Defendants Xiamen Kingdomway Group Company, Pacific Rainbow International Inc., and Shenzhou Biology and Technology Co., Ltd., in the Central District of California, alleging infringement of U.S. Patent No. 7,910,340 (the '340 Patent). The district court granted summary judgment of noninfringement based on the district court's claim construction. Kaneka appealed. For the reasons that follow, we affirm-in-part, vacate-in-part, and remand.

Background

Coenzyme Q₁₀exists in animal cells. Cells use coenzyme Q₁₀to produce adenosine triphosphate, which aids cellular respiration. Coenzyme Q₁₀assists adenosine triphosphate production through redox reactions, in which the coenzyme gives up and gains electrons. Both oxidized and reduced coenzyme Q₁₀are sold as dietary supplements.

Kaneka owns the '340 Patent, which describes processes for producing oxidized and reduced coenzyme Q₁₀. The claims at issue in this appeal describe processes for producing oxidized coenzyme Q₁₀. Independent claim 1 recites:

1. A process for producing on an industrial scale the oxidized coenzyme Q₁₀represented by the following formula:

which comprises culturing reduced coenzyme Q₁₀ producing microorganisms in a culture medium containing a carbon source, a nitrogen source, a phosphorus source and a micronutrient to obtain microbial cells containing reduced coenzyme Q₁₀at a ratio of not less than 70 mole % among the entire coenzymes Q₁₀,

disrupting the microbial cells to obtain reduced coenzyme Q₁₀; and

oxidizing thus-obtained reduced coenzyme Q₁₀to oxidized coenzyme Q₁₀and then extracting the oxidized coenzyme Q₁₀by an organic solvent under an inert gas atmosphere .

'340 Patent col. 23 l. 56–col. 24 l. 25; J.A. 80 (certificate of correction) (emphasis added to disputed language).

Claim 11 is identical to claim 1 except the extraction step is recited before the oxidation step. '340 Patent col. 24 l. 50–col. 25 l. 6 (“extracting the reduced coenzyme Q₁₀by an organic solvent under an inert gas atmosphere, and oxidizing the extracted reduced coenzyme Q₁₀to oxidized coenzyme Q₁₀”).

Independent claims 22 and 33 are identical to claims 1 and 11, respectively, except that the extraction step recited in claims 22 and 33 is carried out in a “sealed tank.” Claim 22, like claim 1, recites the oxidation step before the extraction step. Id. col. 25 ll. 32–54 (“oxidizing thus-obtained reduced coenzyme Q₁₀to oxidized coenzyme Q₁₀and then extracting the oxidized coenzyme Q₁₀by an organic solvent in a sealed tank ”) (emphasis added to disputed language). Claim 33 is identical to claim 22 except the extraction step is recited before the oxidation step. Id. col. 26 ll. 13–36 (“extracting the reduced coenzyme Q₁₀by an organic solvent in a sealed tank, and oxidizing the extracted reduced coenzyme Q₁₀to oxidized coenzyme Q₁₀”) (emphasis added to disputed language).

On March 22, 2011, Kaneka filed suit in the Central District of California, asserting independent claims 1, 11, 22, and 33, along with respective dependent claims. In June, Kaneka filed a Section 337 Petition in the U.S. International Trade Commission (“Commission”) involving the same claims. The district court stayed the lawsuit pending resolution of the Commission proceeding. The Commission issued a decision finding no infringement by any of the respondents.

Following the conclusion of the Commission proceeding, the district court lifted the stay and construed the asserted claims. The court construed the term “inert gas atmosphere” to mean “a gas atmosphere that is free or substantially free of oxygen and reactive gases.” J.A. 3578. The “culturing” step was construed such that the mole ratio of reduced coenzyme Q₁₀ relative to all the coenzyme Q₁₀in the process would be measured at a certain point in the process according to a particular assay described in the '340 Patent. J.A. 14051. The court construed the term “sealed tank” to mean “a tank that is closed to prevent the entry or exit of materials.” J.A. 3579. The “oxidizing” step of claims 1 and 22 was construed to mean “actively converting all or substantially all of the reduced coenzyme Q₁₀obtained from the disruption step to oxidized coenzyme Q₁₀in a step before beginning the extraction step,” while the “oxidizing” step of claims 11 and 33 was construed to mean “actively converting all or substantially all of the extracted reduced coenzyme Q₁₀obtained from the disruption step to oxidized coenzyme Q₁₀in a separate step after the extraction step has been performed.” J.A. 3585–86.

Based on the district court's claim construction, Defendants moved for summary judgment of noninfringement with respect to claims 1, 11, 22, 33, and associated dependent claims. The district court found an absence of a genuine issue of material fact that Defendants' accused process does not infringe on the basis of the court's construction of three claim terms: “inert gas atmosphere,” “sealed tank,” and the “oxidizing” step. Kaneka appealed from the district court's summary judgment, challenging the district court's claim construction. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

Discussion

We first address whether Kaneka waived the right to challenge certain arguments regarding the district court's grant of summary judgment. Shenzhou contends that although Kaneka argued claim construction in its opening brief, Kaneka failed to identify a genuine issue of material fact as to whether Appellees would infringe the asserted claims under Kaneka's proposed construction.

We disagree. For the reasons that follow, the district court's grant of summary judgment of noninfringement rests on an erroneous claim construction. Hence, a genuine issue of material fact concerning infringement may exist under the proper construction. See Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 1326 (Fed.Cir.2006) (“[T]he legal function of giving meaning to claim terms always takes place in the context of a specific accused infringing device or process.”). Summary judgment should ordinarily be vacated or reversed if the district court bases summary judgment on an erroneous claim construction. Innovad Inc. v. Microsoft Corp., 260 F.3d 1326, 1335 (Fed.Cir.2001).

We review a district court's grant of summary judgment according to the law of the regional circuit, here the Ninth Circuit, where summary judgment is reviewed de novo. Halo Elecs., Inc. v. Pulse Elecs., Inc., 769 F.3d 1371, 1377 (Fed.Cir.2014) (citing Humane Soc'y of U.S. v. Locke, 626 F.3d 1040, 1047 (9th Cir.2010) ). Accordingly, we reapply the standard applied by the district court. See Bos. Scientific Corp. v. Johnson & Johnson, 647 F.3d 1353, 1361 (Fed.Cir.2011). In the Ninth Circuit, summary judgment is appropriate when, drawing reasonable inferences in favor of the non-moving party, there is no genuine issue of material fact. Comite de Jornaleros de Redondo Beach v. City of Redondo Beach, 657 F.3d 936, 942 (9th Cir.2011). We review claim construction de novo except for subsidiary facts that are based on the extrinsic record, which we review for clear error. Teva Pharm. U.S.A. Inc. v. Sandoz, Inc., ––– U.S. ––––, 135 S.Ct. 831, 841–42, ––– L.Ed.2d –––– (2015) ; Info–Hold, Inc. v. Applied Media Techs. Corp., 783 F.3d 1262, 1265–66 (Fed.Cir.2015).

I. “Inert Gas Atmosphere”

The district court construed the term “inert gas atmosphere” to mean “a gas atmosphere that is free or substantially free of oxygen and reactive gases.” J.A. 3578. While Kaneka made claim construction arguments challenging the district court's construction of this claim term in its opening brief, Kaneka later withdrew its arguments in light of another unfavorable claim construction of this term in a related case pending in the Southern District of Texas. Letter of Appellant Kaneka at 2, Kaneka Corp. v. Xiamen Kingdomway, Nos. 14–1373,–1399 (Fed.Cir. Oct. 16, 2014), ECF No. 103. As a result, we affirm the district court's grant of summary judgment of noninfringement of independent claims 1 and 11 and dependent claims 8–9 and 19–20.

II. “Sealed Tank”

In construing the term “sealed tank,” the district court adopted “in its entirety” the reasoning of the Commission in the related proceeding that involved the same claim term. In that proceeding, the Commission consulted a dictionary definition that defined “seal” as “a tight and perfect closure (as against the passage of gas or water)” because the term “sealed” is not defined in the specification. J.A. 5347 (citing Merriam–Webster's Collegiate Dictionary, 10th ed. (2001)). An expert testifying before the Commission agreed with this meaning, explaining that the plain meaning of “sealed” is “airtight.” Id. On that basis, the district court construed the...