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Exceptions in 35 U.S.C. § 271(g)(1) and (2) Do Not Apply as Defenses to ITC Actions

March 25, 2004

Decision icon Decision

Last Month at the Federal Circuit - April 2004

Judges: Newman (author), Bryson, and Linn

In Kinik Co. v. International Trade Commission, No. 02-1550 (Fed. Cir. Mar. 25, 2004), the Federal Circuit reversed a decision by the ITC, concluding that on the correct claim construction, the process of U.S. Patent No. 5,620,489 (“the ‘489 patent”) was not practiced in Taiwan to produce certain abrasive articles what were imported by the Kinik Company (“Kinik”) into the United States.

The ‘489 patent is directed to a method for the manufacture of an abrasive article by first making a soft and flexible preform from a mixture containing a liquid binder, powdered matrix material, and abrasive particles, and then sintering the preform. Kinik argued that the claims, correctly construed, are limited to preform mixtures that contain a larger volume of liquid binder composition than powdered matrix material. The Federal Circuit reviewed the patent specification and the prosecution history, and concluded that the claims were limited as suggested by Kinik. The word “mixture” in the claims has the scope given in the specification, for it is clear that no broader scope was contemplated or intended, according to the Federal Circuit. Because Kinik’s preform process uses a volume of liquid binder that is significantly lower than the volume of matrix powder, the Federal Circuit found no infringement.

The Federal Circuit also affirmed the ITC’s ruling that the defenses available under 35 U.S.C. § 271(g) do not apply to ITC actions under § 1337. The Court reviewed the ITC’s interpretation of the statute, the legislative history, and certain precedent and concluded that the defenses of 35 U.S.C. § 271(g)(1) and (2) were not intended to and should not apply as defenses to § 1337(a) actions.