ALJ Cheney Finds No Violation Of Section 337 In Certain High-Potency Sweeteners (337-TA-1264)

• Published date: 13 January 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Oblon, McClelland, Maier & Neustadt, L.L.P
• Author: Mr John F. Presper

On January 11, 2022, ALJ Clark S. Cheney issued an initial determination ("ID") finding no violation of section 337 due to the invalidity of the asserted patents in Certain High-Potency Sweeteners, Processes for Making Same, and Products Containing Same (Inv. No. 337-TA-1264).

By way of background, this investigation is based on an April 8, 2021 complaint filed by Celanese International Corporation of Irving, Texas, Celanese (Malta) Company 2 Limited of Malta, and Celanese Sales U.S. Ltd. of Irving, Texas (collectively, "Celanese") alleging a violation of section 337 by 12 respondents in the unlawful importation/sale of certain high-potency sweeteners, processes for making same, and products containing same by reason of infringement of one or more claims of U.S. Patent No. 10,023,546 ("the '546 patent"); U.S. Patent No. 10,208,004 ("the '004 patent"); U.S. Patent No. 10,590,098 ("the '098 patent"); U.S. Patent No. 10,233,163 ("the '163 patent); and U.S. Patent No. 10,590,095 ("the '095 patent"). The asserted patents are all directed to improved processes for manufacturing the high-potency sweetener acesulfame potassium ("Ace-K"). See our May 19, 2021 post for more details regarding the complaint and Notice of Investigation.

According to the ID, Respondents Anhui Jinhe Industrial Co., Ltd. and Jinhe USA LLC (collectively, "Jinhe") moved for summary determination of no violation of section 337 on the grounds that Celanese sold products produced according to the asserted claims more than one year before the effective filing date of the asserted patents, triggering the on-sale bar provision of 35 U.S.C. ' 271(a)(1). The ID noted that only the '546, '004, and '095 patents remained in the investigation. The ID also stated that during prosecution, Celanese disclosed to the USPTO that the claimed process for making Ace-K had been in secret use in Europe and that Ace-K made using that process had been exported and sold in the U.S. more than one year before the asserted patents' effective filing date of September 21, 2015. Moreover, the ID observed that Celanese's method of making Ace-K has not changed in any material way since 2011.

ALJ Cheney further noted in the ID that ' 271(a)(1) currently defines the on-sale bar by referring to the "claimed invention" being patented, described in a printed publication, or in public use, on sale, "or otherwise available to the public" before the effective filing date, whereas the pre-AIA on-sale bar did not include the phrase...