PUBLIC VERSION UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of CERTAIN ZERO-MERCURY-ADDED ALKALINE BATTERIES, PARTS THEREOF, AND PRODUCTS CONTAINING SAME Inv. No. 337-TA-4932 ~ , .IG, , , - -7 INITIAL DETERMINATION ON VIOLATION OF SECTION 337 AND RECOMMENDED DETERMINATION ON REMEDY AND BOND Administrative Law Judge Charles E. Bullock (June 2,2004) Appearances: For the Complainants Energizer Holdinas, Inc. and Evereadv Batterv Companv. Inc. : V. James Adduci, 11, Esq.; MaureenF. Browne, Esq.; Michael L. Doane, Esq.; David F. Nickel, Esq.; Sarah E. Hamblin, Esq.; S. Alex Lasher, Esq.; of Adduci, Mastriani & Schaumberg, L.L.P., Washington, D.C. Randall Litton, Esq.; Eugene J. Rath, 111, Esq.; Matthew J. Gipson, Esq.; of Price, Heneveld, Cooper, DeWitt & Litton, Grand Rapids, Michigan For Respondents Sichuan Changhong Electric Co., Ltd., Fujian Nanping Nanfu Battery Co., Golden Power Industries, Ltd., Guangdong Chaoan Zhenglong Enterprise Co., Ltd., Guangzhou Tiger Head Battery Group Co., Ltd., Hi- Watt Battery Industry Co., Ltd., Ningbo Baowang Battery Co., Ltd. Zheiiang 3-Turn Battery Co. Ltd. and Zhongyin (Ninabo) Battery Co., Ltd. : Steven P. Hollman, Esq.; Sten A. Jensen, Esq.; Lewis E. Leibowitz, Esq.; Christopher S. Stokes, Esq.; Susan M. Cook, Esq.; Robert B. Wolinsky, Esq.; Jessica L. Ellsworth, Esq.; of Hogan & Hartson L.L.P., Washington, D.C. William E. Thomson, Jr., Esq.; Wei-Ning Yang, Esq.; of Hogan & Hartson L.L.P., Los Angeles, California For Respondent PT International Chemical Industrv Co., Ltd. : Kent R. Stevens, Esq.; Washington, D.C.
Transcript
PUBLIC VERSION
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN ZERO-MERCURY-ADDED ALKALINE BATTERIES, PARTS THEREOF, AND PRODUCTS CONTAINING SAME
Inv. No. 337-TA-4932 ~ , .IG, , , - - 7
INITIAL DETERMINATION ON VIOLATION OF SECTION 337 AND RECOMMENDED DETERMINATION ON REMEDY AND BOND
Administrative Law Judge Charles E. Bullock
(June 2,2004)
Appearances:
For the Complainants Energizer Holdinas, Inc. and Evereadv Batterv Companv. Inc. : V. James Adduci, 11, Esq.; MaureenF. Browne, Esq.; Michael L. Doane, Esq.; David F. Nickel, Esq.; Sarah E. Hamblin, Esq.; S. Alex Lasher, Esq.; of Adduci, Mastriani & Schaumberg, L.L.P., Washington, D.C.
Randall Litton, Esq.; Eugene J. Rath, 111, Esq.; Matthew J. Gipson, Esq.; of Price, Heneveld, Cooper, DeWitt & Litton, Grand Rapids, Michigan
For Respondents Sichuan Changhong Electric Co., Ltd., Fujian Nanping Nanfu Battery Co., Golden Power Industries, Ltd., Guangdong Chaoan Zhenglong Enterprise Co., Ltd., Guangzhou Tiger Head Battery Group Co., Ltd., Hi- Watt Battery Industry Co., Ltd., Ningbo Baowang Battery Co., Ltd. Zheiiang 3-Turn Battery Co. Ltd. and Zhongyin (Ninabo) Battery Co., Ltd. : Steven P. Hollman, Esq.; Sten A. Jensen, Esq.; Lewis E. Leibowitz, Esq.; Christopher S. Stokes, Esq.; Susan M. Cook, Esq.; Robert B. Wolinsky, Esq.; Jessica L. Ellsworth, Esq.; of Hogan & Hartson L.L.P., Washington, D.C.
William E. Thomson, Jr., Esq.; Wei-Ning Yang, Esq.; of Hogan & Hartson L.L.P., Los Angeles, California
For Respondent PT International Chemical Industrv Co., Ltd. : Kent R. Stevens, Esq.; Washington, D.C.
For Respondent Chum Pak Battery Works: Gary M. Hnath, Esq.; Fei-Fei Chao, Esq.; of Venable, Baetjer, Howard & Civiletti, LLP, Washington, D.C.
For Respondent Winner International, L. L. C. : John F. Hornbostel, Jr., Esq., Sharon, Pennsylvania
For Respondents Maze1 Company d/b/a/ The Powerhouse Group and Universal Battery Corporation: Tywanda L. Harris, Esq.; Christopher P. Bussert, Esq.; Yoncha L. Kundupoglu, Esq.; of Kilpatrick Stockton LLP, Atlanta, Georgia
For the Commission Investizative StafE Lynn I. Levine, Esq., Director; Jeffrey Whieldon, Esq., Supervising Attorney; Benjamin Wood, Esq., Investigative Attorney; of the Office of Unfair Import Investigations, U.S. International Trade Commission, of Washington, D.C.
Battery Company, Ltd.; Pure Energy Battery, Inc.; Shark Eyes, Inc.; Supreme Technologies, Inc.; and
Wenzhou Sanjin Battery Company, Ltd. Order No. 16, issued on August 20, 2003, denied
Complainants’ request to add the last seven above named proposed Respondents. Order No. 17, an
initial determination, was issued on August 20,2003, granting Complainants’ request to add Hitachi
Maxell, Ltd. as a Respondent. On September 12, 2003, the Commission issued a Notice Not to
Review an Initial Determination Amending the Complaint and Notice of Investigation to Add a
Respondent to the Investigation, which was published in the Federal Register on September 19,
2003 .4
On September 5,2003, Complainants, Gold Peak Industries, Ltd.; GP Batteries International,
Ltd.; GP Industries, Ltd.; and Gold Peak Industries (North America), Inc. filed a joint motion (493-
029) to terminate the investigation with respect to Respondent GP Industries, Ltd., pursuant to
Commission Rule 210.21(a). The joint motion was based on EBC’s withdrawal of each allegation
with respect to GP Industries, Ltd. Order No. 24, an initial determination, was issued on September
10, 2003 terminating GP Industries, Ltd. from the investigation. On October 3, 2003, the
Commission issued a Notice Not to Review an Initial Determination Terminating the Investigation
See 68 Fed. Reg. 5 1303 (August 26,2003).
See 68 Fed. Reg. 54915 (September 19,2003).
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as to One Respondent.
On October 14, 2003, Complainants, FDK Corporation and FDK Energy Co., Inc. filed a
joint motion (493-037), pursuant to Commission Rule of Practice and Procedure 210.21(b) and (c),
to terminate the investigation as to FDK based upon a settlement agreement and consent order.
Order No. 36, an initial determination, was issued on November 5, 2003 granting the termination
based on the settlement agreement and dismissed the motion to terminate based on the consent order.
On November 10,2003, EBC filed a motion (493-044) for reconsideration of Order No. 36 only as
to the dismissal based on the consent order. The motion for reconsideration was granted by Order
No. 41, issued on December 1,2003, which terminated the investigation as to Respondents FDK
Corporation and FDK Energy Co., Inc. based on the consent order as well. On December 1 , 2003,
the Commission issued a Notice to Extend the Deadline for Determining Whether to Review an
Initial Determination Terminating the Investigation as to Two Respondents on the Basis of a
Settlement Agreement, which extended the deadline until December 22,2003. On January 6,2003,
the Commission issued a Notice Not to Review an Initial Determination Terminating the
Investigation with Respect to Two Respondents on the Basis of a Consent Order; Issuance of a
Consent Order, which was published in the Federal Register on January 12, 2004.5
On November 26,2003, Complainants and Respondent Monster Cable Products, Inc. filed
a joint motion (493-050) to terminate the investigation with respect to Monster pursuant to
Commission Rule 2 10.21 (b) and (c) based upon a settlement agreement and consent order. Order
No. 55, an initial determination, was issued on December 18, 2003 terminating Monster Cable
Products, Inc. from the investigation. On January 13,2004, the Commission issued a Notice Not
See 69 Fed. Reg. 1761 (January 12,2004).
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to Review an Initial Determination Terminating the Investigation With Respect to One Respondent
On the Basis of a Consent Order; Issuance of Consent Order, which was published in the Federal
Register on January 16, 2004.6
On January 15,2004, Complainants moved (493-097) pursuant to 19 C.F.R. fj 210.21(a) to
terminate this investigation in part based on the withdrawal of those portions of the complaint setting
forth the allegations of infringement of claims 8-12 of U.S. Patent No. 5,464,709. Complainant filed
a disclaimer of those claims pursuant to 37 C.F.R. fj 1.321(a) with the U.S. Patent and Trademark
Office. The motion was granted by Order No. 96, an initial determination, which issued on January
28,2004, terminating the investigation in part with regard to allegations of infringement of claims
8, 9, 10, 11 and 12 of the ‘709 patent. Pursuant to Commission Rule 210.42(h)(3), 19 C.F.R. 5
21 0.42(h)(3), this initial determination has become the determination of the Commission.
On January 30, 2004, Complainants and Respondents Hitachi Maxell, Ltd. and Maxell
Corporation of America filed a joint motion (493-1 19) to terminate the investigation with respect
to Maxell pursuant to Commission Rule 21 0.21 (b) and (c) based upon a settlement agreement. Order
No. 122, an initial determination, was issued on February 13,2004 terminating Hitachi Maxell, Ltd.
and Maxell Corporation of America from the investigation. Pursuant to Commission Rule
21 0.42(h)(3), 19 C.F.R. 5 210.42(h)(3), this initial determination has become the determination of
the Commission.
On January 30,2004, Complainants and Respondent Golden Million Enterprises, Inc., filed
a joint motion (493-123) to terminate the investigation with respect to Golden Million pursuant to
Commission Rule 210.21(b) and (c) based upon a settlement agreement and consent order. Order
See 69 Fed. Reg. 2619 (January 16,2004).
No. 123, an initial determination, was issued on February 17, 2004 terminating Golden Million
Enterprises, Inc. from the investigation. On March 17,2004, the Commission issued a Notice Not
to Review an Initial Determination Terminating the Investigation With Respect to One Respondent
On the Basis of a Consent Order; Issuance of Consent Order, which was published in the Federal
Register on March 23, 2004.7
On January 30,2004, Complainants and Respondents GP Batteries International, Ltd., GPI
International, Ltd. and Gold Peak Industries (North America), Inc. filed a joint motion (493-126) to
terminate the investigation with respect to GP pursuant to Commission Rule 2 10.21 (b) based upon
a settlement agreement. Order No. 125, an initial determination, was issued on March 3, 2004
terminating GP Batteries International, Ltd., GPI International, Ltd. and Gold Peak Industries (North
America), Inc. from the investigation. On March 30,2004, the Commission issued a Notice Not to
Review an Initial Determination Terminating the Investigation With Respect to Three Respondents
On the Basis of a Settlement Agreement, which was published in the Federal Register on April 5,
2004.'
On January 30,2004, Complainants and Respondents Atico International USA, Inc. filed a
joint motion (493-149) to terminate the investigation with respect to Atico pursuant to Commission
Rule 210.21(b) and (c) based upon a settlement agreement and consent order. Order No. 126, an
initial determination, was issued on March 22,2004 terminating Atico International USA, Inc. from
the investigation. On April 27, 2004, the Commission issued a Notice Not to Review an Initial
Determination Terminating the Investigation With Respect to One Respondent On the Basis of a
' S e e 69 Fed. Reg. 13581 (March 23,2004).
* See 69 Fed. Reg.17708 (April 5,2004).
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Consent Order; Issuance of Consent Order, which was published in the Federal Register on May 3,
2004.9
On May 20, 2004, Complainants and Respondent Dorcy International, Inc. filed a joint
motion (493-1 54) to terminate the investigation with respect to Dorcy pursuant to Commission Rule
210.21 (b) and (c) based upon a settlement/distributorship agreement and consent order. Order No.
134, an initial determination, was issued on June 2,2004 terminating Dorcy International, Inc. from
the investigation.
The parties have stipulated as to certain material facts.” Particular stipulated facts that are
relevant to this initial determination are cited accordingly.
A tutorial was conducted before the Administrative Law Judge on January 29, 2004. The
evidentiary hearing before the Administrative Law Judge was conducted in this investigation from
February 18,2004 through March 24,2004. After the hearing, post-hearing briefs and reply briefs,
together with proposed findings of fact, conclusions of law and rebuttals to the same, were filed on
April 5,2004 and April 13,2004, respectively. Closing arguments were heard on April 28,2004.
B. TheParties
1. Complainants
Complainant Energizer Holdings, Inc. (“EHI”) is a Missouri corporation with its principal
place of business located at 533 Maryville University Drive, St. Louis, Missouri, 63141.”
See 69 Fed. Reg. 24193 (May 3,2004).
l o See JX-SOC, JX-5 lC, JX-52C7 JX-53C, JX-54C, JX-55C7 JX-56C, JX-57C7 JX-58C, JX-59C, JX-60C7 JX-6 1 C, JX-62C, JX-63C, JX-64C, JX-65C, JX-66C, JX-67C, JX-68C, JX-82C, and JX-83 C .
l 1 See Amended Complaint 7 3 at 2.
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Complainant Eveready Battery Company, Inc. (“EBC”) is a wholly-owned subsidiary of EHI and
is a Delaware corporation with its principal place of business at 533 Maryville University Drive, St.
Louis, Missouri, 63 141 .12 EBC is the current owner by assignment of the ‘709 patent.13 As of April
1,2003, the operations of EBC were reorganized through the establishment of three new wholly-
owned subsidiaries, including the Energizer Manufacturing Company, Inc.; the Energizer Battery
Company, Inc.; and the Energizer Acquisition Company, Inc.14 EBC performs the marketing and
sales of battery and flashlight products, which are manufactured by Energizer Manufacturing
Company, Inc., which is not a Complainant in this in~estigation.’~
2. Respondents
a. China Battery Association (Nanfu, Golden Power, Zhenglong, Tiger Head, Hi-Watt, Ningbo Baowang, Sichuan Changhong, 3- Turn, ZY Ningbo)
Respondent Fujian Nanping Nanfu Battery Co., Ltd. (“Nanfu”) is a corporation organized
under the laws of the Peoples Republic of China (“P.R.C.”) with its principal place of business
located at 109 Industry Road, Nanping, Fujian 353000, P.R.C.16
Respondent Golden Power Industries, Ltd., (“Golden Power”) is a corporation organized
under the laws of the Peoples Republic of China with its principal place of business located at Flat
l 2 See Amended Complaint 7 4 at 2.
l 3 See Amended Complaint 7 4 at 2; Amended Complaint at Exhibit 2.
l4 See Amended Complaint 7 15 at 5.
l 5 See Amended Complaint 7 4 at 2; 7 15 at 5.
l 6 See Nanfu’s Response to Complaint and Notice of Investigation at 7 23.
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C, 20/F, Block 1, Tai Ping Industrial Centre, 57 Ting Kok Road, Tai Po, N.T., Hong Kong.”
Respondent Guangdong Chaoan Zhenglong Enterprise, Co., Ltd. (“Zhenglong”) is a
corporation organized under the laws of the Peoples Republic of China with its principal place of
business located at Huagiao Industrial Zone, Caitang Chaozhou City, Guangdong, 5 15644, P.R.C.’’
Zhenglong has also been known by the name Guangdong Zhenglong Company Limited.’’
Zhenglong’s predecessor was Ming Xing Enterprise Co., Ltd.20
Respondent Guangzhou Tiger Head Battery Group Co., Ltd. (“Tiger Head”) is a corporation
organized under the laws of the Peoples Republic of China with its principal place of business
located at 568 Huangpu Street, Middle Section, Guangzhou 510655, P.R.C.21 Tiger Head was
formerly known as Guangzhou Battery Factory.22
Respondent Hi- Watt Battery Industry Company, Ltd. (“Hi-Watt”) is a corporation organized
under the laws of the Peoples Republic of China with its principal place of business located at 21
Tung Yuen Street, Yao Tong Bay, Kowloon, Hong K ~ n g . ~ ~ Hi-Watt was formerly known as Honon
Manufacturing Limited.24
”See Golden Power’s Response to Complaint and Notice of Investigation at 7 25.
l8 See Zhenglong’s Response to Complaint and Notice of Investigation at 7 29.
I9 See JX-53C7 7 1.
2o See JX-53C7 1 2 .
2 1 See Tiger Head’s Response to Complaint and Notice of Investigation at 9 30.
22 See JX-59C7 7 1.
23 See Amended Complaint 7 32 at 9.
24 See JX-54C, 7 1.
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Respondent Ningbo Baowang Battery Co., Ltd. (“Ningbo Baowang”) is a corporation
organized under the laws of the Peoples Republic of China with its principal place of business
located at No. 66 Keji Road, Science Technological Industry Zone Ninghai, Ningbo 3 15600, P.R.C.25
Ningbo Baowang was formerly known as Ninghai Yaguang Batteries Co., Ltd. and Ninghai Yali
Batteries Co., Ltd.26
Respondent Sichuan Changhong Electric Company, Ltd. (“Sichuan Changhong”) is a
corporation organized under the laws of the P.R.C. with its principal place of business located at 35
East Mianxing Road, Hightech Park, Mianyang, Sichuan 321000, P.R.C.27
Respondent Zhejiang 3-Turn Battery Co., Ltd. (“3-Turn”) is a corporation organized under
the laws of the Peoples Republic of China with its principal place of business located at Huailu
Industrial Park of Dongyang, Zhejiang 322104, P.R.C.’*
Respondent Zhongyin Ningbo Battery Co., Ltd. (“ZY Ningbo”) is a corporation organized
under the laws of the Peoples Republic of China with its principal place of business located at No.
99, Dahetou St. Duantang, Ningbo Zhejiang, 3 1501 1, P.R.C.29 Ningbo General Battery Factory is
a predecessor of ZY Ningb~.~’ ZY Ningbo sometimes uses the name Ningbo Battery & Electrical
25 See Ningbo Baowang’s Response to Complaint and Notice of Investigation at 7 34.
26 See JX-51C, 71 1-2.
27 See Sichuan Changhong’s Response to Complaint and Notice of Investigation at 7 17.
28 See 3-Turn’s Response to Complaint and Notice of Investigation at 1 39.
29 See ZY Ningbo’s Response to Complaint and Notice of Investigation at 7 40.
30 See JX-57C, 7 1.
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Appliance Import & Export Co., Ltd. for invoicing purpose^.^'
b. ChungPak
Respondent Chung Pak Battery Works (“Chung Pak”) is a Hong Kong corporation with its
principal place of business located at 7/f Chung Pak Comm Building, 2 Cho Uyen Street, Yau Tong,
Kowloon, Hong K ~ n g . ~ * Chung Pak was originally incorporated as Hunceman Limited.33
C. Winner
Respondent Winner International, L.L.C. (“Winner”) is a Pennsylvania corporation with its
principal place of business located at 32 West State Street, Sharon, Pennsylvania 16146.34
d. PT
Respondent PT International Chemical Industrial Co., Ltd. (“PT”) is an Indonesian
corporation with its principal place of business located at J1. Daan Mogot Km. 9, Cengkareng,
Jakarta, 1 1470, Indonesia.35
e. Mazel & Universal
Respondent The Mazel Company d/b/a The Powerhouse Group (“Mazel”) is an Ohio
corporation with its principal place of business located at 3 1000 Aurora Road, Solon, Ohio, 441 39.36
31 See JX-64C, 7 8.
32 See Chung Pak’s Response to the Complaint and Notice of Investigation at 7 18; JX- 65C, 77 11-12.
33 See JX-65C, 7 12.
34 See Winner’s Response to Complaint and Notice of Investigation at 7 38; JX-61C, 77 1- 2.
35 See PT’s Response to Complaint and Notice of Investigation at 7 35; JX-62C, 77 13-14.
36 See Mazel’s Response to Complaint and Notice of Investigation at 7 36.
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Respondent Universal Battery Corporation (“Universal”) is a Texas corporation with its
principal place of business located at 4300 Wiley Post Road, Addison, Texas, 75001 .37
C. Overview of the Technology
At issue in this investigation are zero-mercury-added alkaline batteries. Alkaline batteries
are well known and widely used throughout the world. Alkaline batteries are not the only type of
batteries that are manufactured. There are also carbon zinc batteries, which are not at issue in this
investigation. Although alkaline batteries are more expensive than carbon zinc batteries, they last
longer, are capable of providing more power, and are more stable.38
Alkaline batteries use zinc as the active anode component.39 For years, this zinc was
amalgamated with mercury to minimize chemical reactions that would occur between the zinc and
other components of the battery anode resulting in the generation of unacceptable quantities of
hydrogen gas.40 Those reactions, in the absence of mercury, would very often produce sufficient
hydrogen, resulting in sufficient pressure, to cause the batteries to swell, leak, and coupled with a
malfunctioning vent, explode.41 More specifically, the addition of mercury to alkaline batteries
serves to inhibit the production of hydrogen gas when the zinc is contacted by the aqueous
ele~trolyte .~~ In the past, if mercury was not present, hydrogen gas would build up inside the cell and
37 See Universal’s Response to Complaint and Notice of Investigation at 7 37
38 See Amended Complaint 765 at 19.
39 See Amended Complaint 7 66 at 19.
40 See Amended Complaint 7 66 at 19.
41 See Amended Complaint 7 66 at 19.
42 Scarr, Tr. 33 1.
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eventually the gas would create sufficient pressure to distort the dimensions of the cell and force the
electrolyte out of the cell through pathways along the seam of the can or the seal, causing the cell to
leak.43
Beginning in the early 1980s, mercury became an environmental concern and it became
increasingly necessary to reduce the amount of mercury contained in batteries.44 By the early 1 9 9 0 ~ ~
much of Europe and the United States prohibited the addition of any mercury to battery produ~ts.~’
The battery industry responded to these pressures by developing alternative additives and
components which, by the late 1 9 8 0 ~ ~ permitted the amount of added mercury to be reduced from
a starting high point of about 0.5% weight or about 5000 parts per million (“ppm”) to approximately
250 ppm by weight of the battery.46
Commencing in about 1983, an effort was made at EBC to reduce the mercury content of the
alkaline batteries which it was marketing and selling.47 EBC was successful in gradually reducing
the mercury content by reducing the opportunities for a gassing reaction to take place. Between
1983 and 1988, mercury additions were reduced from 6% to 3%0, then to 1.5%, and ultimately to
what was called “ultra low mercury” in which the mercury level was 0.15%0, relative to the weight
43 Scarr, Tr. 331.
44 See Amended Complaint 7 67 at 19-20; Scarr, Tr. 332-333.
45 See The Mercury-Containing and Rechargeable Battery Management Act (Pub. L. 104- 142; 42 U.S.C. 6 14301 et seq.) (May 13, 1996).
46 See Amended Complaint 7 68 at 20. 1 % mercury equates to 1000 ppm. 0.15% mercury equates to 1500 ppm. Since the amount of zinc in the battery is about 1/6 of the total weight of the battery, one can divide the parts per million numbers by six and find the weight of mercury relative to the entire battery weight. In the case of .15%, that would be 250 ppm. Scarr, Tr. 368.
47 Scan-, Tr. 331.
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of the zinc in the anode.48
[ ]49 Dr. Robert F. Scarr
was one of the people called upon to work on this project at EBC.” Dr. Scan received a Ph.D. in
chemistry from the University of Illinois in 1960 and immediately thereafter went to work for the
Consumer Products Division at Union Carbide Corporation, which eventually became the Eveready
Battery Company.” Dr. Scarr worked at EBC or its predecessor for 37 years, retiring in 1997, and
spent his entire career at EBC working with batteries of one sort or another.52 He went to work in
the Alkaline Group at EBC in 4 982.53
c ]54 Shelf gassing is gassing that occurs before the cell has been discharged,
i.e. while being stored at the retail outlet or in a warehouse or even in the customer’s closet. It is the
gassing which occurs at a low rate from the zinc inside the battery. This gassing can lead, if it
continues long enough, to dimensional distortion of batteries and perhaps leakage.55
Post partial discharge gassing is gassing that occurs after the battery has been partially
48 Scarr, Tr. 332.
49 Scarr, Tr. 340-341,344-347,412.
50 Scarr, Tr. 333,342.
51 Scarr, Tr. 322-324.
52 Scarr, Tr. 325.
53 Scarr, Tr. 331.
54 Scarr, Tr. 348-349.
55 Scarr, Tr. 350.
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discharged, i.e. put into a product and turned on by the user. The gassing that occurs under these
conditions can occur at a higher rate than the gassing that occurs on the shelf. Although certain
additives and components were relatively successful in controlling shelf gassing, they were
unsuccessful in controlling post partial discharge gassing.56
[
1
1
56 Scan, Tr. 350.
57 Smith, Tr. 1123. David Smith is currently EBC's global quality manager. He has been with EBC for 38 years. Smith, Tr. 11 15-16.
58 Smith, Tr. 1123.
59 Smith, Tr. 1400.
6o Smith, Tr. 1 128.
61 Smith, Tr. 1400.
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The ‘ 709 patent discloses and claims this commercially feasible alkaline battery which has
zero added mercury. The battery is manufactured using a zinc anode powder that would pass a
specific gassing test. The use of this zinc powder, which is referred to as “low expansion zinc,”
enables construction of the battery without added mercury.
62 Smith, Tr. 1401-1402.
63 Smith, Tr. 1123-1 124.
64 Smith, Tr. 1124.
65 Scarr, Tr. 372-373; Smith, Tr. 1127; CX-l565C, Dallenbach dep. 13-14.
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D. The Patent at Issue
The ‘709 patent is entitled “Alkaline Cells That are Substantially Free of Mercury” which
was issued on November 7, 1995, based on an application (Application Serial No. 349,164) filed on
December 2,1994, that was a continuation of Application Serial No. 255,158, filed on June 7,1994,
whichissued asU.S. Patent No. 5,395,714, which is acontinuationofApplication SerialNo. 82,147,
filed on June 24, 1993, which issued as U.S. Patent No. 5,364,715, which is a continuation of
Application Serial No. 566,925, filed on August 14, 1990, which was abandoned.66 The named
inventor is Robert F. EBC is the owner of the ‘709 patent by assignment.68 The ‘709 patent
has a total of twelve claims.69 Claims 8 through 12 have been disclaimed by EBC.70 Of the
remaining claims, one independent claim of the ‘709 patent, Claim 1, is at issue here.71 Also at issue
are dependent claims 2 through 7.72
E. The Products at Issue
1. Alkaline Batteries In General
The products at issue are zero-mercury-added alkaline batteries, which include both primary
66 See CX-1.
67 See CX- 1 , CX-2.
“ See CX-1.
69 See CX-1.
70 See Order No. 96 (January 28,2004); Rx-2766.
71 See CX-1.
7 2 See CX-1.
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and rechargeable batteries. Batteries come in many shapes and sizes. Most of the alkaline batteries
Size
AAA
AA
C
D
9-volt
are cylindrically shaped, with various diameters and heights.73 Prismatically shaped alkaline
De~ignat ion~~
LR3
LR6
LR14
LR20
6LR6 1
batteries are also available, such as 6-volt, 7.5-volt and 9-volt batteries, which are battery packs
I
l EBC Designation
E92
E9 1
E93
containing multiple cylindrical batteries, many of which are cylindrical button cells.74 The external
shapes and sizes of batteries are made to U.S. (AmericanNational Standards Institute [“ANSI”]) and
International (International Electrotechnical Commission [“IEC”]) standards which carry the
appropriate standard The more popular battery sizes also have common names, including
M A , AA, C, D and 9V, which also have the following designations:
E95
Cylindrical alkaline batteries are produced with a high surface areazinc anode, a high-density
73 See Amended Complaint 7 5 1 at 13.
74 See Amended Complaint 7 5 1 at 13.
7s See Amended Complaint 7 52 at 13.
76 Batteries that are made in accordance with the International Electrotechnical Commission (IEC) standards with the designation “LR’ are electrochemical cells that contain an alkaline electrolyte, a cathode comprising manganese dioxide as the active component, and an anode comprised of zinc as the active anode component. O’Keefe, Tr. 1506-07, 1613-14; see also CX-727C.
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manganese dioxide cathode and a potassium hydroxide electr~lyte.’~ A cutaway of a typical
cylindrical alkaline battery is illustrated in the following diagram:78
Cathodes are a mixture of high purity electrolyte manganese dioxide and carbon conductor. Anodes
are a gelled mixture of zinc powder and electrolyte. The zinc powder is manufactured specifically
for the alkaline industry and is formulated with other ingredients to make the anode. Separators of
specially selected materials provide electrochemical separation between the electrodes and prevent
migration of any solid particles in the battery. The steel can confines active materials and serves as
the cathode collector and the brass pin serves as the anode collector. Top and bottom covers provide
77 See Amended Complaint 7 52 at 13.
78 CDX-14.
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contact surfaces of nickel-plated steel. A non-conductive plastic film label electronically insulates
the battery and the molded nylon seal provides a safety venting mechanism.79
2. Rechargeable Batteries
Primary batteries can only be discharged once, whereas rechargeable batteries can be
discharged, recharged, redischarged, and so on. Rechargeable batteries are more complex products
than primary batteries and are more difficult to manufacture."
3. Downstream Products
Many products are imported or sold with alkaline batteries included. These alkaline batteries
are often incorporated directly into products made by original equipment manufacturers ("OEM')
or shipped along with a consumer electronic product for installation by the user. Examples of these
products, which may contain zero-mercury-added alkaline batteries, include: digital cameras, VCRs,
stereos and televisions."
Other products include batteries that are already pre-packed within the device, but include
a battery compartment that can be accessed in order to replace the batteries, if necessary.'2 Examples
of popular pre-packed items include children's toys and games, toothbrushes and flashlight^.'^ Other
products include batteries that are integral to the product and cannot be replaced. Examples of these
integral-battery devices include certain types of flashlights (penlights, squeeze lights, etc.), small toys
79 See Amended Complaint fi 54 at 14.
8o Newman, Tr. 4553.
8' See Amended Complaint fi 56 at 15.
82 See Amended Complaint 7 57 at 15.
83 Anderson, Tr. 2484,2486-2487,2492.
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and novelty items These integral-battery devices are often offered as promotional items and many
can also be found at convenience, drug and warehouse stores.84
11. Jurisdiction and Importation
Section 337 confers subject matter jurisdiction on the International Trade Commission to
investigate, and if appropriate, to provide a remedy for, unfair acts and unfair methods of
competition in the importation of articles into the United States.8s In order to have the power to
decide a case, a court or agency must have both subject matter jurisdiction, and jurisdiction over
either the parties or the property involved.86
A. Subject Matter Jurisdiction
The complaint alleges that the Respondents have violated Subsection 337(a)( 1)(A) and (B)
in the importation and sale of products that infringe the patent at issue. All Respondents have either
imported, sold for importation into the United States, and/or sold after importation into the United
States, zero-mercury-added alkaline batteries, detailed as follows. Accordingly, the Commission has
subject matter jurisdiction over these Respondents in this in~estigation.’~
84 See Amended Complaint 7 57 at 15.
85 19 U.S.C. 4 1337; also see Certain Steel Rod Treating Apparatus and Components ThereoL Inv. No. 337-TA-97, Commission Memorandum Opinion, 215 U.S.P.Q. 229,231 (1981) (“Steel Rod”).
86 Id.
87 See Amgen, Inc. v. US. Int ’1 Trade Comm., 902 F.2d 1532, 1536 (Fed. Cir. 1990) (“Amgen”).
-23-
1. Manufacturers
a. Nanfu
Nanfu has sold zero-mercury-added alkaline batteries for importation into the United States
since about 1 998 .88 Nanfu manufactures zero-mercury-added alkaline batteries for the following
companies: [
]89 Accordingly, the Commission has subject matter jurisdiction over Nanfu.
b. Zhenglong
Zhenglong has imported approximately [ 3 AAA, AA and C size zero-mercury-added
19’ Zhenglong contends that,
] that the Commission lacks subject
alkaline batteries to the United States [
because [
matter jurisdiction over it.9’
In Certain Trolley Wheel A ~ s e m b l i e s , ~ ~ the Commission stated that the number of accused
articles that are imported by a respondent is irrelevant to the issue of whether the Commission has
jurisdiction over the respondent’s alleged unfair acts.” Therefore, the Commission has jurisdiction
over a respondent who, for the purpose of taking sales orders, had imported only one article which
Universal has imported into the United States, and sold after importation, alkaline batteries
that comply with the Mercury-Containing and Rechargeable Battery Management Act since 200 1. 126
Universal has sold its zero-mercury-added alkaline batteries to various United States c ~ s t o m e r s . ’ ~ ~
Accordingly, the Commission has subject matter jurisdiction over Universal.
B. Personal Jurisdiction
Each Respondent has responded to the complaint and notice of investigation, participated in
the investigation, including participating in discovery, made an appearance at the hearing, and/or
submitted post-hearing briefs, thereby submitting to the personal jurisdiction of the Commission.’28
111. Claim Construction
A. Relevant Law
Analyzing whether a patent is infringed “entails two steps. The first step is determining the
meaning and scope of the patent claims asserted to be infringed. The second step is comparing the
properly construed claims to the device or process accused of infringing.”129 The first step is a
l Z 6 See JX-68C7 77 1-2.
Iz7See JX-68C, 7 17.
See Certain Miniature Hacksaws, Inv. No. 337-TA-237, U.S.I.T.C. Pub. No. 1948, Initial Determination (unreviewed by Commission in relevant part) at 4, 1986 WL 379287 (U.S.I.T.C., October 15, 1986) (“Miniature Hacksaws”).
129 Dow Chem. Co. v. United States, 226 F.3d 1334, 1338 (Fed. Cir. 2000) (“Dow Chemical”), citing Markman v. Westview Instruments, Inc. , 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), affd, 517 U.S. 370 (1996) (“Markman”).
question of law, whereas the second step is a factual determinati~n.’~’ To prevail, the patentee must
establish by a preponderance of the evidence that the accused device infringes one or more claims
of the patent either literally or under the doctrine of equivalents.’31
Concerning the first step of claim construction, “[i] t is well-settled that, in interpreting an
asserted claim, the court should look first to the intrinsic evidence of record, i. e. , the patent itself,
including the claims, the specification and, if in evidence, the prosecution history . . . . Such intrinsic
evidence is the most significant source of the legally operative meaning of disputed claim
language.
“In construing claims, the analytical focus must begin and remain centered on the language
of the claims themselves, for it is that language that the patentee chose to use to ‘particularly point
[J out and distinctly claim [I the subject matter which the patentee regards as his in~ent ion .””~~
Thereafter, if the claim language is not clear on its face, “[tlhen we look to the rest of the intrinsic
evidence, beginning with the specification and concluding with the prosecution history, if in
evidence” for the purpose of “resolving, if possible, the lack of clarity.”’34
The specification is considered “always highly relevant” to claim construction and “[u]sually,
130 Markman, supra.
1 3 ’ Buyer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir.), cert. denied, 53 1 U.S. 993 (2000) (“Buyer”).
132 Bell Atlantic Network Serv., Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001) (“Bell Atlantic”).
133 Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (“Interactive G$t Express”), citing 35 U.S.C. 0 112,y 2.
134 Id.
-32-
it is dispositive; it is the single best guide to the meaning of a disputed term.”’35 The prosecution
history is also examined for a claim’s scope and meaning “to determine whether the patentee has
relinquished a potential claim construction in an amendment to the claim or in an argument to
overcome or distinguish a referen~e.’”~~
There is a “heavy presumption” that claim terms are to be given “their ordinary and
accustomed meaning as understood by one of ordinary skill in the art,” and in aid of this
interpretation, “[d]ictionaries and technical treatises, which are extrinsic evidence, hold a ‘special
place’ and may sometimes be considered along with the intrinsic evidence when determining the
ordinary meaning of claim terms.”’37 Caution must be used, however, when referring to non-
scientific dictionaries “lest dictionary definitions . . . be converted into technical terms of art having
legal, not linguistic ~ignificance.”’~~
The presumption in favor of according a claim term its ordinary meaning is overcome “( 1)
where the patentee has chosen to be his own lexicographer, or (2) where a claim term deprives the
claim of clarity such that there is ‘no means by which the scope of the claim may be ascertained from
the language used.””39 In this regard, “[tlhe specification acts as a dictionary ‘when it expressly
defines terms used in the claims or when it defines terms by impli~at ion.””~~
135 Bell Atlantic, 262 F.3d at 1268.
136 Id.
137 Id. at 1267-68.
13’ Id. at 1267 (internal quotation marks omitted).
139 Id. at 1268.
I 4O Id.
-33-
“[Ilf the meaning of the claim limitation is apparent from the intrinsic evidence alone, it is
improper to rely on extrinsic evidence other than that used to ascertain the ordinary meaning of the
claim limitation. [citation omitted] However, in the rare circumstance that the court is unable to
determine the meaning of the asserted claims after assessing the intrinsic evidence, it may look to
additional evidence that is extrinsic to the complete document record to help resolve any lack of
“Extrinsic evidence consists of all evidence external to the patent and prosecution history
. . . . It includes “such evidence as expert testimony, articles, and inventor te~t imony.”’~~ But,
“[ilf the intrinsic evidence resolves any ambiguity in a disputed claim, extrinsic evidence cannot be
used to contradict the established meaning of the claim language.”*44 “What is disapproved of is an
attempt to use extrinsic evidence to arrive at a claim construction that is clearly at odds with the
claim construction mandated by the claims themselves, the written description, and the prosecution
history, in other words, with the written record of the patent.”145
7,142
In interpreting particular limitations within each claim, “adding limitations to claims not
required by the claim terms themselves, or unambiguously required by the specification or
prosecution history, is impermi~sible.”’~~ Further, a patent is not limited to its preferred
I4l Id. at 1268-69.
142 Markman, 52 F.3d at 980.
143 Bell Atlantic, 262 F.3d at 1269.
144 DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 1314, 1322-23 (Fed. Cir. 2001) (“DeMar ini”) .
145 Murkman, 52 F.3d at 979.
146 Duyco Prod., Inc. v. Total Containment, Inc., 258 F.3d 1317, 1327 (Fed. Cir. 2001) (“Duyco Products”), citing Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1347 (Fed. Cir. 1998) (“Laitrum”) (“a court may not import limitations from the written description into the claims”).
-34-
embodiments in the face of evidence of broader coverage by the claim~.’~’ “[Tlhere is sometimes
‘a fine line between reading a claim in light of the specification, and reading a limitation into the
claim from the specification.””48 On the other hand, a claim construction that excludes the preferred
embodiment in the specification of a patent is “rarely, if ever,
Claims amenable to more than one construction should, when it is reasonably possible to do
so, be construed to preserve their ~a1idity.I~’ A claim cannot, however, be construed contrary to its
plain lang~age.‘~’ Claims cannot be judicially rewritten in order to fulfill the axiom of preserving
their validity; “if the only claim construction that is consistent with the claim’s language and the
written description renders the claim invalid, then the axiom does not apply and the claim is simply
B. Claims 1-7 of the ‘709 Patent
All the claims of the ‘709 patent are at issue this in~estigation,’~~ which includes independent
147 Acromed Corp. v. Sofamor Danek Group, Inc., 253 F.3d 1371, 1382-83 (Fed. Cir. 2001) (“Acromed”); Electro Med. Sys. S.A. v. Cooper Life Sci., Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994) (“Electro Med. 77)(“[P]articular embodiments appearing in a specification will not be read into the claims when the claim language is broader than such embodiments.”).
14’ Bell Atlantic, 262 F.3d at 1270.
14’ See Vitronics Corp. v. Conceptronic, Inc. 90 F.3d 1576, 1583-34 (Fed. Cir. 1996) (“ Vitronics”).
1 5 ’ See Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999) (“Rhine”).
‘j2 Id.
‘j3 As noted above, claims 8 through 12 of the ‘709 patent have been disclaimed by EBC. Order No. 96, issued on January 28,2004, terminated the investigation in part with regard to allegations of infringement of these claims of the ‘709 patent.
-35-
claim 1, with the principal terms in dispute in bold print for emphasis, as follows:
An electrochemical cell comprising an alkaline electrolyte, a cathode comprising manganese dioxide as an active cathode component, and an anode gel comprised of zinc as the active anode component, wherein the cell contains less than 50 parts of mercury per million parts by weight of the cell and said zinc anode has a gel expansion of less than 25% after being discharged for 161 minutes to 15% depth of discharge at 2.88A.'54
Also at issue are dependent claims 2 through 7. Claim 2 reads:
The electrochemical cell of claim 1, wherein the cell contains less than 2 parts of mercury per million parts by weight of the cell.'55
Claim 3 reads:
The electrochemical cell of claim 2, wherein the cell contains less than 1 part of mercury per million parts by weight of the cell.'56
Claim 4 reads:
The electrochemical cell of claim 2, wherein the zinc anode has a gel expansion of less than 20%.157
Claim 5 reads:
The electrochemical cell of claim 4, wherein the zinc anode has a gel expansion of less than 15%.'58
Claim 6 reads:
The electrochemical cell of claim 1 wherein the cell contains less than 25 parts of
154 CX-1: col. 10: 57-64 (emphasis added).
CX-1: C O ~ . 10: 65-67.
156 CX-1: C O ~ . 11: 1-3.
15' cx-1: col. 11 : 4-5.
15* CX-1: C O ~ . 11 6-7.
-3 6-
mercury per million parts by weight of the cell.159
Claim 7 reads:
The electrochemical cell of claim 1 wherein the cell contains less than 20 parts of mercury per million parts by weight of the
C. The Prosecution History
Application No. 566,925 (“the ‘925 application”),’61 which was abandoned, eventually led
to the issuance of three patents. First, Application No. 82,147 (“the ‘147 application”)’62 was a
continuation of the ‘925 application, which led to the issuance of U.S. Patent No. 5,364,715 (“the
‘71 5 patent”).’63 Second, Application No. 255,158 (“the ‘1 58 appli~ation”)’~~ was a continuation
ofthe ‘ 147 application, which led to the issuance 0fU.S. PatentNo. 5,395,714 (“the ‘714 ~atent”),’~’
which was eventually disclaimed.’66 Finally, Application No. 349,164 (“the ‘ 164 appli~ation”)’~~
was a continuation of the ‘ 158 application, which led to the issuance of the patent at issue, the ‘709
patent.
159 cx-1: col. 11: 8-10.
I6OCX-1: C O ~ . 11: 11-13.
I 6 l See RX-8.
See RX-8.
163 See RX-7.
164 See RX-6.
165 See RX-6 at GH5 1-0074 through GH5 1-0078.
166 See RX-6 at GH5 1-0071.
16’See RX-2; CX-607.
-37-
1. Original Claim 14
a. ‘925 Application
Claim 1 of the ‘709 patent stems from original Claim 14 of the ‘925 application, which had
a total of 44 claims. Mr. Welsh, the current vice-president and chief patent counsel for EBC, was
the patent attorney who prosecuted the patent application.
Claim 14 of the ‘925 application read as follows:
An electrochemical cell that is substantially free of mercury, comprising an alkaline electrolyte, a cathode and an anode arranged in a sealed container in a manner effective to produce electrochemical energy, wherein the anode is comprised of low expansion zinc as the active anode mate1-ia1.l~’
On May 22, 1992, the Examiner rejected all 44 claims.’70 The Examiner rejected Claim 14 on
several grounds, including:
1)
2)
8 1 12, second paragraph, because the terms “low expansion” and “substantially free” were indefinite; and obvious over Miura,I7’ Pa ten~ i t i ’~~ and JA 60-43634173.’74
EBC discussed Claim 14 with the Examiner on June 16,1992. The Examiner’s comments included
the statement of a possible “amendment of claims 1 & 14 to clarify ‘low expansion zinc’ and to
RX-8 at GP 50-0040; Welsh, Tr. 3123:5-10.
169 RX-8 at GP50-0034.
I7O RX-8 at GP50-0145.
U.S. Patent No. 4,735,876.
1 7 * U.S. Patent No. 3,847,669.
173 Japanese Laid-Open Patent Application No. 61 -203564 by Toshiba Corp.
174 RX-8 at GP50-0146 through GP50-0150.
-3 8-
differentiate over the batteries of the references. Applicant will provide comparative data.”175 No
comparative data was ever provided. Instead, on November 6, 1992, EBC canceled Claim 14 and
added Claim 53, which reads as follows:
An electrochemical cell comprising an alkaline electrolyte, a cathode comprising a metal oxide as the active cathode component, and an anode gel comprised of low expansion zinc which expands less than 25% after being discharged for 161 minutes to 15% depth of discharge at 2.88 A, wherein the components are arranged in a sealed container in a manner effective to provide electrochemical energy.’76
The Examiner rejected Claim 53 on December 24, 1992 as being obvious under Miura & Paterniti
in view of JA 60-43634.’77 On June 29, 1993, EBC abandoned the ‘925 application in favor of a
continuing app1i~ation.I~~
b. ‘147 Application
In a supplementary preliminary amendment filed August 16, 1993, EBC amended claim 53
as follows (with deletions in brackets and struck out, and additions underlined):
An electrochemical cell comprising an alkaline electrolyte, a cathode comprising [ameta3 t~xide] manganese dioxide as the active cathode component, and an anode gel comprised of low expansion zinc which expands less than 25% after being discharged for 161 minutes to 15% depth of discharge at 2.88 A [y ~ 1 . 1 7 9
This claim was rejected in an Office Action dated October 20, 1993.I8O Specifically, Claim 53 was
175 RX-8 at GP50-0153.
176 RX-8 at GP50-0159.
177 RX-8 at GP50-0164 through GP50-0167.
17* RX-8 at GP50-0170.
179 RX-8 at GP 50-0191.
180 RX-8 at GP50-0195.
-39-
rejected under tj 112, second paragraph, as being
indefinite because a process limitation is improperly present in an article claim. Applicant should delete the reference to arranging the components. Further it is not clear whether it is the anode gel or the zinc which expands.'"
Claim 53 was also rejected under 5 103 as being unpatentable over Miura or Paterniti.lg2 The
Examiner stated that
absent a showing of unexpected results with the instantly claimed zinc, it would be prima facie obvious to a person of ordinary skill in the art to use any zinc in a zinc-alkaline cell, including that claimed.Ig3
On February 2 1,1994, EBC amended Claim 53 as follows (with deletions in brackets and struck out,
and additions underlined):
An electrochemical cell comprising an alkaline electrolyte, a cathode comprising [d exi-ete] manganese dioxide as the active cathode component, and an anode gel comprised of low expansion zinc which expands less than 25% after being discharged for 161 minutes to 15% depth of discharge at 2.88 A [A ] a sealed container containing said electrolyte, cathode and anode gel in a manner effective to provide electrochemical energy.
In the remarks, EBC specifically asked that the rejection of Claim 53 as obvious be re~0nsidered.l~~
After a telephone interview with the Examiner, EBC canceled Claim 53 in favor of a continuing
application.'g6 A notice of allowability issued on April 5, 1994 for the other ~ 1 a i m s . l ~ ~
1 8 1 RX-8 at GP50-0197.
Is* RX-8 at GP50-0 199.
RX-8 at GP50-0199 throughGP50-0200.
184 RX-8 at GP50-0204.
RX-8 at GP50-0205.
186 RX-8 at GP50-0207 and GP50-0216.
RX-8 at GP50-208.
-40-
C. ‘158 Application
In a preliminary amendment filed June 7, 1994, EBC amended claim 53 as follows (with
deletions in brackets and struck out, and additions underlined):
An electrochemical cell comprising an alkaline electrolyte, a cathode comprising manganese dioxide as the active cathode component, and an anode gel comprised of low expansion zinc [dl which [expan&] has a gel expansion of less than 25% after being discharged for 161 minutes to 15% depth of discharge at 2.88 A and a sealed container containing said electrolyte, cathode and anode gel [a
The numbering of the claims was discussed in a telephone interview on September 16, 1994, which
renumbered Claim 53 to Claim 45.lS9 Claim 45 was allowed on September 20, 1994.190 The ‘714
18* RX-6 at GH5 1-0043.
lS9 RX-6 at GH5 1-0044.
190 RX-6 at GH5 1-0045. Note that Claim 45 was essentially original claim 14 from the parent application, except that claim 14 referenced “low expansion zinc” rather than the test used
3 measure low expansion zinc:
Claim 14 (RX-8 at GP50-0034)
An electrochemical cell that is substantially free of mercury, comprising
an alkaline electrolyte, a cathode
and an anode
arranged in a sealed container in a manner effective to produce electrochemical energy,
wherein the anode is comprised of low expansion zinc as the active anode material.
Claim 45 (CX-607 at ITCEBC210085; RX-2 at GP-001300.
An electrochemical cell comprising
an alkaline electrolyte, a cathode comprising manganese dioxide as
an active cathode component, and an anode gel comprised of zinc as the
active anode component, wherein the cell contains less than 50 parts
of mercury per million parts by weight of the cell
and said zinc anode gel has a gel expansion of less than 25% after being discharged for 161 minutes to 15% depth of discharge at 2.88A.
The Examiner rejected Claim 14 on March 6, 1995 under several grounds, including
-41-
patent issued on March 7, 1995.19’ EBC disclaimed this patent on August 23, 2002.’92
d. ‘164 Application
As part of its request for a continuation application of the ‘ 158 application, in a preliminary
amendment filed December 2, 1994, EBC added the following new Claim 45:
An electrochemical cell comprising an alkaline electrolyte, a cathode comprising manganese dioxide as an active cathode component, and an anode gel comprised of zinc as the active anode component, wherein the cell contains less than 50 parts of mercury per million parts by weight of the cell and said zinc anode gel has a gel expansion of less than 25% after being discharged for 161 minutes to 15% depth of discharge at 2.88A.’93
The Examiner rejected Claim 45 on March 6, 1995 under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claims 1, 3, 4, 8 and 9 of the ‘7 15
1)
2)
3)
the judicially created doctrine of obviousness-type double patenting as being unpatentable over claim 1 of the ‘71 5 patent and claim 1 of the ‘714 patent; 0 1 12, second paragraph, because the terms “low expansion” and “substantially free” were indefinite; and obvious over Paterniti, Miura, Larsen, Nardi, Hunter, EP 205,783 and Fr 88.1 001 6.
CX-607 at ITCEBC210087 through ITCEBC210090; RX-2 at GPO01303 through GP001305. Specifically, the Examiner stated that although the prior art references were silent regarding “low expansion zinc,” it was the “position of the Examiner that the thrust of each reference is to a low or essentially Hg-free battery and it is not clear what is meant b[y] (sic) “low expansion zinc”. The burden of proof is upon applicant to show a material difference between the batteries of the references and that of the instant claims with regards to the selection of a particular zinc.” CX- 607 at ITCEBC210090; RX-2 at GP001305. EBC canceled Claim 14 in an Amendment dated May 22,1995. CX-607 at ITCEBC210099; RX-2 at GP001370.
1 9 ’ See RX-6 at GH5 1-0074.
1 9 ’ RX-6 at GH5 1-007 1
193 CX-607 at ITCEBC210085; Rx-2 at GP-001300.
-42-
patent.194
In response to the Examiner’s Office Action, EBC requested the following amendment of
Claim 45 on May 22, 1995:
After “zinc anode” delete
In the remarks, EBC states that Claim 45 has “been amended to correct a grammatical error. It is the
zinc which is to be tested, as set forth in the spe~ification.”’~~
EBC filed a terminal disclaimer on May 25, 1995.’97 The Examiner issued a Notice of
Allowability for Claims 45 through 56 on July 6, 1995.198 The ‘709 patent issued of November 7,
1995.’99 EBC filed a petition for correction of inventorship on November 21, 1995.200 EBC filed
a letter calling attention to the error in the patent on November 2 1, 1 995.201 On April 19, 1996, the
PTO entered a decision on the petition to correct inventorship, granting the petition.202
194 CX-607 at ITCEBC2 10087 through ITCEBC210090; RX-2 at GPOOl 303 through GPOOl 305.
195 CX-607 at ITCEBC210099; RX-2 at GPOO1370.
196 CX-607 at ITCEBC210101; RX-2 at GP001372.
19’ CX-607 at ITCEBC2 101 02 through ITCEBC2 101 03; RX-2 at GPOO 1374 through GPOO 1375.
19’ CX-607 at ITCEBC210104; RX-2 at GP001378.
lg9 See CX-1
2oo CX-607 at ITCEBC210116; RX-2 at GPOO1395.
201 CX-607 at ITCEBC210119; RX-2 at GPOO1397.
*02 CX-607 at ITCEBC210122; RX-2 at GP001400; See CX-2.
-43 -
2. Original Claim 1
The purpose of this section is to set forth the prosecution history of the ‘7 15 patent, which
is part of the overall history of the ‘709 patent.
a. ‘925 Application
Claim 1 of the ’925 application reads as follows:
An electrochemical cell that is substantially free of mercury, comprising an alkaline electrolyte, a cathode comprising a metal oxide as the active cathode component, and an anode comprised of zinc as the active anode component, wherein the components are arranged in a sealed container in a manner effective to provide electrochemical energy; and wherein after the cell is partially discharged through an electrical resistor to about 1.2 volts, the cell does not exhibit leakage of the cell components when stored under storage conditions of 21 degrees C for ninety days.2o3
Claim 1 was rejected on May 22, 1992 as being indefinite because it is not clear what “substantially
free” means.2o4 Claim 1 was also rejected as being obvious over Miura in view of Paterniti, and
further in view of JA 60-43634.205 EBC discussed Claim 1 with the Examiner on June 16,1992. The
Examiner’s comments included the statement of a possible “amendment of claims 1 & 14 to clarify
‘low expansion zinc’ and to differentiate over the batteries of the references. Applicant will provide
comparative data.”206 No comparative data was ever provided.
On November 6, 1992, EBC requested that Claim 1 be amended as follows (with deletions
in brackets and struck out, and additions underlined):
An electrochemical cell [- uf meretrpp- ,] comprising an alkaline
203 RX-8 atGP50-0032.
204 RX-8 at GP50-0145 and GP50-0146.
205 RX-8 at GP50-0147 through GP50-0150.
206 RX-8 at GP50-0153.
-44-
electrolyte, a cathode comprising a metal oxide as the active cathode component, and an anode geJ comprised of zinc as the active anode component, wherein the components are arranged in a sealed container in a manner effective to provide electrochemical energy; and wherein [e 1.2
of21 db -3 the cell contains less than 50 parts of mercury per million parts bv weight of the cell, and the anode ne1 expands less than 25% after being discharged at 2.88 A for 161 minutes to 15% depth of discharge.207
The Examiner rejected Claim 1 on December 24, 1992 as being obvious over Miura and Paterniti
in view of JA 60-43634.208 On June 29, 1993, EBC abandoned the ‘925 application in favor of a
continuing appli~ation.~”
b. ‘147 Application
In a supplementary preliminary amendment filed August 16, 1993, EB’C amended claim 1
as follows (with deletions in brackets and struck out, and additions underlined):
An electrochemical cell comprising an alkaline electrolyte, a cathode comprising [d oxi-ck] manganese dioxide as the active cathode component, [and] an anode gel comprised of zinc as the active anode component, and a burnished brass anode current collector
-,,,,,I wherein the cell contains less than 50 parts of mercury per million parts by weight of the cell, and the anode gel expands less than 25% after being discharged at 2.88 A for 161 minutes to 15% depth of discharge.210
[[
The Examiner allowed Claim 1 on October 20, 1993 .2” A Notice of Allowability was issued on
April 5, 1994.212
207 RX-8 at GP50-0155.
208 RX-8 at GP50-0160 through GP50-0163.
*09 RX-8 at GP50-0 170.
210 RX-8 at GP50-0190.
2 1 1 RX-8 at GP50-0195.
212 RX-8 at GP50-0208 through GP50-0210.
-45-
On May 2, 1994, EBC sent a facsimile to the Examiner proposing the following change to
Claim 1, which would bring the claim back to the meaning it had when filed as original claims 14
and 15 (with deletions in brackets and struck out, and additions underlined):
An electrochemical cell comprising an alkaline electrolyte, a cathode comprising manganese dioxide as the active cathode component, and an anode gel comprised of zinc as the active anode component, wherein the components are arranged in a sealed container in a manner effective to provide electrochemical energy; and wherein the cell contains less than 50 parts of mercury per million parts by weight of the cell, and -1 said zinc has a gel expansion of less than 25% after being discharged at 2.88 A for 161 minutes to 15% depth of discharge.213
On May 18,1994, EBC requested amendment of Claim 1 as follows (with deletions in brackets and
struck out, and additions underlined):
An electrochemical cell comprising an alkaline electrolyte, a cathode comprising manganese dioxide as the active cathode component, an anode gel comprised of zinc as the active anode component, and a burnished brass anode current collector wherein the cell contains less than 50 parts of mercury per million parts by weight of the cell, and -1 said zinc has a gel expansion of less than 25% after being discharged at 2.88 A for 161 minutes to 15% depth of discharge.*14
The amendment was entered on May 26, 1994.215 The ‘715 patent issued on November 15, 1994.216
D. The Undisputed Claims
1. “An Alkaline Electrolyte”
Complainants propose that the term “an alkaline electrolyte” be construed as an aqueous
alkaline solution that provides ionic conductivity. CIB 66. Respondents and Staff do not contest
*13 RX-8 at GP50-0214.
214 RX-8 at GP50-0215.
215 RX-8 at GP50-0218.
* 1 6 See RX-7.
-46-
Complainants’ construction. Therefore, Complainants’ construction is hereby adopted.
2. “A Cathode Comprising Manganese Dioxide As An Active Cathode Component”
Complainants propose that the term “a cathode comprising manganese dioxide as an active
cathode component” be construed as a positive electrode capable of accepting electrons, wherein
manganese dioxide provides electrochemical activity. CIB 67. Respondents and Staff do not contest
Complainants’ construction. Therefore, Complainants’ construction is hereby adopted.
3. “An Anode Gel Comprised Of Zinc As The Active Anode Component”
Complainants propose that the term “an anode gel comprised of zinc as the active anode
component” be construed as a gelled negative electrode capable of losing electrons, wherein zinc
powder provides electrochemical activity. CIB 68. Respondents and Staff do not contest
Complainants’ construction. Therefore, Complainants’ construction is hereby adopted.
4. “Wherein The Cell Contains Less Than 50 Parts Of Mercury Per Million Parts By Weight Of The Cell”
Complainants propose that the term “wherein the cell contains less than 50 parts of mercury
per million parts by weight of the cell” be construed as an electrochemical cell that has less than 50
parts per million of mercury by weight of the entire cell. CIB 68. Respondents and Staff do not
contest Complainants’ construction. Therefore, Complainants’ construction is hereby adopted.
5. “Has a Gel Expansion of Less Than 25% ”
Complainants propose that the term “has a gel expansion of less than 25%” be construed as
zinc powder having a characteristic of less than 25% gel expansion. CIB 69. Respondents and Staff
do not contest Complainants’ construction. Therefore, Complainants’ construction is hereby
adopted.
-47-
6. “Mercury Amount Limitations” in Claims 2 ,3 ,6 and 7
Complainants propose that claims 2 ,3 ,6 and 7 merely lower the mercury amount limitation
of claim 1 to 2 parts per million, 1 part per million, 25 parts per million, and 20 parts per million,
respectively. CIB 70. Respondents and Staff do not contest Complainants’ construction. Therefore,
Complainants’ construction is hereby adopted.
7 . “Gel Expansion Limitations” in Claims 4 and 5
Complainants propose that claims 4 and 5 merely lower the gel expansion limitation of claim
1 to 20% and 15%, respectively. CIB 70. Respondents and Staff do not contest Complainants’
construction. Therefore, Complainants’ construction is hereby adopted.
8. Corrosion Inhibitor Limitations of Claims 8 through 12
These claims are not longer at issue in this investigation. See Order No. 96, issued on
January 28,2004.
E. The Disputed Claims
Claim terms are to be given “their ordinary and accustomed meaning as understood by one
of ordinary skill in the There is no dispute among the parties that, on or about August 14,
1990, a person of ordinary skill in the art is a person with a bachelors degree in one of the sciences,
including materials science, physics, chemistry, or chemical engineering, and at least two years of
experience in the battery As such, the disputed claims will be construed based on the above
definition of one of ordinary skill in the art.
Bell Atlantic, 262 F.3d at 1267-68.
O’Keefe, Tr. 1494; Whittingham, Tr. 3986-3987; Newman, Tr. 4384.
-48-
1. “An Electrochemical Cell Comprising”
The main dispute among the parties regarding the term “an electrochemical cell comprising”
is whether it refers to a sealed battery or whether it refers to the test cell detailed in the specification,
which is not sealed. Complainants construe the term “an electrochemical cell comprising” as a
device containing a cathode, an anode and an electrolyte that is in a sealed container and capable of
providing electrochemical energy, or in other words, a battery. CIB 58. In the Staffs view, even
though the test cell detailed in the specification falls within the ordinary meaning of the term
“electrochemical cell,” the test cell is not an electrochemical cell as that term is used in the ‘709
patent because the test cell is not sealed, cannot provide electricity to a circuit, and does not have
a cathode comprised of manganese dioxide as the active cathode component. SIB 26-27, SRB 15.
In the Respondents’ view,219 even though a battery falls within the ordinary meaning of the term
“electrochemical cell,” a battery is not an electrochemical cell as that term is used in the ‘709 patent
because it does not contain 63 grams of zinc, and that only the test cell detailed in the specification
meets the ‘709 patent’s “electrochemical cell” parameters. RIB 72.
Complainants cite to the ordinary meaning of the word “cell” in support of their claim
construction. Random House Dictionary defines “cell” as “also called battery, electric cell, galvanic
cell, voltaic Complainants also cite to the summary of the invention in the specification,
which states that:
*I9 The claim constructions of Respondents PT and Chung Pak are consistent with the China Battery Association Respondents; therefore, they will not be separately addressed unless otherwise noted.
220 Random House Dictionary of The English Language, 2d Ed., p. 333, Random House, Inc. (1 987).
-49-
This invention is an electrochemical cell that is substantially free of mercury. The cell comprises an alkaline electrolyte, a cathode comprising a metal oxide as the active cathode component, and an anode comprised of zinc as the active anode component. The cell components are arranged in a sealed container in a manner effective to provide electrochemical energy.** ’
Complainants urge that the language “arranged in a sealed container” makes it clear that the
invention is for a conventional battery and not the test cell described in the specification, which is
not sealed. CRB 20.
The Staff also cites to this same language in the specification as support for its contention
that the inventor consistently used the term “electrochemical cell” in a more narrow manner than its
ordinary meaning to one of ordinary skill in the art. SIB 26-27. The Staff also argues that the
specification limits electrochemical cells to those arranged in a sealed container because it states that
the “electrochemical cells of this invention comprise an alkaline electrolyte, a cathode and an anode
arranged in a sealed container in a manner effective to provide electrochemical energy.”222 In the
Staffs view, this statement is strong evidence that the patentee intended to limit the scope of the
term to that which is arranged in a sealed container. SIB 28.
Complainants and Staff have also made the argument that the test cell cannot be “an
electrochemical cell” because of the further requirement in claim 1 that the electrochemical cell have
“a cathode comprising manganese dioxide as an active cathode component.” CRB 20-2 1 ; SRB 1 5.
The test cell, or measurement cell, is described in the specification as a cell which is used to test the
gel expansion of gelled zinc powders, which is comprised of a cathode collector that is made of a
221 CX-1, C O ~ . 1: 63 - 212.
222 CX-1, C O ~ . 3: 12-16, 18-20.
-50-
sheet of zinc.223
Respondents argue that Complainants’ citation to the Random House Dictionary, which is
a non-scientific dictionary, should not be adopted in light of the availability of a technical dictionary,
such as Hawley’s Condensed Chemical Dictionary. RRB 44. Respondents contend that the
electrochemical cell claimed in Claim 1 must include the test cell that is detailed in the specification.
Respondent’s contention is based on the following: Claim 1 requires that the anode of the
electrochemical cell be discharged. The anode must contain 63 grams of zinc. The test cell is the
only cell in the specification that contains 63 grams of zinc. Therefore, in the Respondents’ view,
the electrochemical cell that is claimed is the test cell. RIB 72.
The parties also cite to various extrinsic evidence in support of their argument. Because the
undersigned has determined that “an electrochemical cell comprising” can clearly be construed based
solely on the intrinsic evidence, the undersigned will not address any of the parties citations to
extrinsic evidence, including the foreign prosecution history with the European Patent
Although the Federal Circuit has stated that it is permissible to use dictionary definitions,
which are extrinsic evidence, along with intrinsic evidence when determining the ordinary meaning
of claims, caution is to be used when using non-scientific dictionaries in interpreting technical terms
223 CX-1, C O ~ . 4138-67.
224 See Bell Atlantic, 262 F.3d at 1268-69; see also Certain Sortation Systems, Inv. No. 337-TA-460, Order No. 36 (June 3,2002) (noting that the use of statements made to foreign patent offices in determining the scope of infringement under the doctrine of equivalents has been established by the Federal Circuit and that their use as extrinsic evidence for claim construction purposes is also well-recognized by trial courts, even though the Federal Circuit has not yet ruled on the issue).
-51-
of art.225 Therefore, the undersigned finds that it is inappropriate to rely on Complainants’ common
dictionary definition of “cell” because it does not specifically refer to an electrochemical cell which
has a clear ordinary meaning to one of ordinary skill in the art, that being any device with an anode,
cathode and electrolyte.226
Although the specification is relevant when construing claims, a “cardinal sin” of claim
construction is to import limitations from the written description into the claims.227 It is equally
impermissible to construe a claim that excludes the preferred embodiment.228 Because the language
of the claim itself does not limit an electrochemical cell to one that is in a sealed container and
because construing the claim without the “sealed container” limitation does not exclude the preferred
embodiments (Examples 1 and 2 of the ‘709 patent), no such limitation will be read into the claim.
In addition, the prosecution history shows that the inventor previously included the phrase “arranged
in a sealed container”229 in the claims and the absence of this language from Claim 1 supports a
wider view of the term “electrochemical cell” than is advocated by the Complainants and Staff.
~~ ~
22s See Bell Atlantic, 262 F.3d at 1267-68.
226 Whittingham, Tr. 4281.
227 Teleflex, 299 F.3d at 1324.
228 Vitronics, 90 F.3d at 1583-34.
229 As noted above, claim 1 of the ‘709 patent stems from original Claim 14 of the ‘925 application, which read as follows:
An electrochemical cell that is substantially free of mercury, comprising an alkaline electrolyte, a cathode and an anode arranged in a sealed container in a manner effective to produce electrochemical energy, wherein the anode is comprised of low expansion zinc as the active anode material.
RX-8 at GP50-0034 (emphasis added).
-52-
The undersigned finds that, although it is clear that 63 grams of zinc are needed to properly
perform the gel expansion test, there is nothing in the specification that requires that all 63 grams
of zinc must be acquired from a single battery, especially in light of the fact that all parties are in
agreement that no single alkaline battery contains 63 grams of zinc.230
Although the undersigned has not adopted Complainants’ and Staffs claim construction, the
Respondents’ claim construction will not be adopted either. Respondents have a valid argument that
the electrochemical cell is not limited to a sealed battery, but their contention that the claimed
electrochemical cell must only be the test cell goes too far and cannot be adopted because it
improperly excludes the preferred embodiments of the ‘709 patent (see examples 1 and 2 of the ‘709
patent). In addition, it is clear that the test cell does not meet all the requirements in Claim 1, and
therefore cannot be the electrochemical cell that is claimed. The test cell, as described in the
specification, is not comprised of a cathode comprised of manganese dioxide as the active cathode
component; rather, it is comprised of a cathode collector that is made of a sheet of zinc.231
Therefore, the term “an electrochemical cell comprising” is construed as a device with an
anode, cathode and electrolyte to provide electrochemical energy.
2. “Zinc”
The main dispute among the parties regarding the term “zinc” is whether the battery grade
zinc powder can be alloyed or not. There is no dispute among the parties that an alloy is a mixture
Whittingham, Tr. 391 1; see RFF 119, CORFF 1 19 (objection based on relevance and mischaracterizing the record, but no contrary evidence presented), CFU3 23-24 (“EBC admits that each of Respondents’ AAA, AA, C, D and 9-volt batteries do not contain 63 grams of zinc.”), SORFF 119 (no objection).
*jl CX-1, C O ~ . 4: 54-65.
-53-
of two or more metals that, at high concentrations, form a solid solution and, at low concentrations,
form small, inseparable particulates.232 Complainants construe the term “zinc” as zinc powder which
may or may not be alloyed with other elements. CIB 62. The Staff agrees, stating that this issue has
already been decided by Order No. 67, issued on January 8,2004. SIB 24-26. Respondents construe
the term “zinc” as zinc that has not been alloyed with corrosion inhibitors and has not been treated
with corrosion inhibitors as additives, in other words, “elemental” zinc, which is denoted by the
chemical symbol “Zn.” RIB 60; RRB 36.
Respondents contend that, because the specification criticizes prior art zinc alloys as not
reliably permitting the total removal of mercury from the cell, that low expansion zinc must be
different from prior art zinc alloys. RIB 64. Respondents next contention is that the use of the term
“pure zinc” in the specification, makes clear that the claimed invention is for zinc that is not alloyed
with any corrosion inhibitors. RIB 65. Respondents also contend that Complainants, during the
RRB 39. Respondents also cite to various extrinsic evidence in support of their argument. Because
the undersigned has determined that “zinc” can clearly be construed based solely on the intrinsic
evidence, the undersigned will not address any citations to extrinsic evidence, including the foreign
prosecution history with the European Patent
232 Whittingham, Tr. 3801; see RFF 130, CORFF 130 (objection based on relevance and not being supported by the cited evidence, but no contrary definition was provided), SORFF 130 (no objection).
233 See Bell Atlantic, 262 F.3d at 1268-69; see also Certain Sortation Systems, Inv. No. 337-TA-460, Order No. 36 (June 3,2002) (noting that the use of statements made to foreign patent offices in determining the scope of infringement under the doctrine of equivalents has been established by the Federal Circuit and that their use as extrinsic evidence for claim construction purposes is also well-recognized by trial courts, even though the Federal Circuit has
-54-
The specification states that the prior art zinc alloys, by themselves, are insufficient in solving
the problem of moving towards zero-mercury because the alloyed zinc only worked as intended
some of the time. This does not necessarily mean that prior art zinc alloys are mutually exclusive
from low expansion zincs.
Commercially available “pure zinc” is described in the specification as zinc that contains
about 20 parts of mercury per billion parts of weight of zinc, and often contains much less than 20
parts per billion.234 The definition of “pure zinc” only refers to the amount of mercury, and not other
alloys, such as lead, in the zinc, therefore it is not entirely clear that the inventor intended the term
“pure zinc” to describe anything other than the level of mercury in the zinc. A “cardinal sin” of
claim construction is to import limitations from the written description into the claims.235 Because
the inventor did not specifically put the term “pure zinc” in the claim, there is no reason to limit the
claim to “pure zinc.”
Disclaimers made during the prosecution history must be clear and unambiguous.236 A close
look at the prosecution history does not support Respondents’ argument that EBC disclaimed zinc
alloys because, although EBC distinguished its invention over the prior art alloyed zincs, it
specifically argued that the prior art patents do not disclose low expansion This does not
not yet ruled on the issue).
234 CX-1, C O ~ . 3: 2-5.
235 Telefex, 299 F.3d at 1324.
236 Inverness Medical Switzerland GmbH v. Princeton Biomeditech Corp., 309 F.3d 1365, 1372 (Fed. Cir. 2002).
237 See RX-8 at GP 50-0162.
-55-
amount to a clear and unambiguous disclaimer of alloyed zincs.
In Order No. 67 the undersigned stated that “Claim 1 of the ‘709 patent does not use the
words ‘pure,’ ‘low expansion,’ or ‘alloyed’ in relation to the zinc that makes up the active anode
component.’’ The undersigned found that there was no support in the claims, specification,
prosecution history, or even the European prosecution history, to justify importing a negative
limitation, that is, zinc that is alloyed with corrosion inhibitors, into Claim 1 of the ‘709 patent.238
No evidence presented during the hearing in this investigation contradicts the undersigned’s earlier
ruling. In fact, the evidence presented during the hearing lends further support to the undersigned’s
previous finding. For instance, one of ordinary skill in the art would find it customary to use alloyed
zinc powder (i. e. zinc alloyed with lead) in manufacturing alkaline batteries.239 And examples 1 and
2 of the ‘709 patent refer to zinc powder that is alloyed with lead.240
Accordingly, consistent with the undersigned’s previous ruling, the term “zinc” is construed
to include both alloyed and non-alloyed battery grade zinc powders.
3. “Said Zinc Anode”
The main dispute among the parties is whether the term “said zinc anode” refers to the
“anode” previously mentioned in the claim or to the “zinc as the active anode component.”
Complainants construe the term “said zinc anode” as referring to zinc powder, which may or may
not be alloyed with other elements, used to prepare the anode gel of the electrochemical cell. CIB
~~
238 See Order No. 67 (January 8,2004).
239 Welsh, Tr. 3499-3500; Smith, Tr. 4630-463 1 ; Whittingham, Tr. 4080-408 1,4264- 4265.
240 Welsh, Tr. 3499; Whittingham, Tr. 3826-3827; 41 14-41 15.
-56-
59-60. The Staff agrees. SIB 23. Respondents construe “said zinc anode” as referring to the anode
of the electrochemical cell. RIB 53.
There is no dispute among the parties that the term “said” is a legal term that means “before
ment i~ned .”~~’ There is also no dispute among the parties that the term “said zinc anode” lacks an
antecedent basis in the claim. CRB 1 5; SIB 2 1 ; RIB 53. Specifically, the word “zinc” is referenced
once previously in the claim as part of the phrase “zinc as the active anode component.” The word
“anode” is referenced twice previously in the claim as part of the phrases “an anode gel comprised
of” and “zinc as the active anode component.” But the term “zinc anode” is never used previously
in the claim. Because there is no antecedent basis for the term “said zinc anode,” the term is not
clear on its face. Therefore, one must look towards the other claims, specification, and prosecution
history (i.e. intrinsic evidence) for clarification.242 If the term is still not clear after looking at the
intrinsic evidence, then it is necessary to turn to extrinsic evidence, such as expert and inventor
testimony.243 The undersigned has determined that the term “said zinc anode” can be determined
using the intrinsic evidence in the record. Therefore, it is unnecessary to resort to extrinsic evidence
in construing this claim, including the foreign prosecution history with the European Patent Office.244
241 See Black’s Law Dictionary 1336 (6‘h ed. 1990).
242 Interactive Gift Express, 256 F.3d at 1331
243 Bell Atlantic, 262 F.3d at 1268-69.
244 Respondents also rely on the prosecution history of the European counterpart to the ‘709 patent in support of its claim construction. The European prosecution history is clearly extrinsic evidence. See Certain Sortation Systems, Inv. No. 337-TA-460, Order No. 36 (June 3, 2002) (noting that the use of statements made to foreign patent offices in determining the scope of infringement under the doctrine of equivalents has been established by the Federal Circuit and that their use as extrinsic evidence for claim construction purposes is also well-recognized by trial courts, even though the Federal Circuit has not yet ruled on the issue).
-57-
Complainants admit that, because “said zinc anode” lacks any antecedent basis, there is
ambiguity within the claim language as to what “said zinc anode” is referring. Complainants
acknowledge that it even appears that “said zinc anode” is referring to the anode gel of the
electrochemical cell. CIB 60. Complainants argue, however, that although there is an ambiguity,
the remaining intrinsic evidence makes clear what “said zinc anode” is referring to. For instance,
in the context of the claim and the entire patent, Complainants argue that gel expansion is a
characteristic of the zinc powder, which is used as the active anode material.245
Respondents argue that Complainants are attempting to have this tribunal rewrite Claim 1
of the ‘709 patent by interpreting “said zinc anode” to mean zinc powder. Respondents argue that
ChefAmerica, Znc. v. Lamb- Weston, Znc.246 prohibits this. RIB 58. ChefAmerica states that when
a claim uses ordinary, simple English words whose meaning is clear and unquestionable, the proper
construction is that they mean exactly what they say, even if this literal interpretation results in a
nonsensical construction of the claim as a whole.
Respondent PT also argues that Claim 8 of the ‘709 patent, which refers to “said anode
component” is relevant in interpreting the term “said zinc anode.” PTIB 12-1 3. Complainants argue
that the terms “said zinc anode” and “said anode component’’ are significantly different because it
is clear that “said anode component” refers to the anode gel. CRB 16-17.
245 See CX-1, col. 4: 12-14,27-3 1 (Zinc is used as the active anode material in the cells of this invention. Preferably, the zinc is low expansion zinc, and is in powder form). The undersigned is in agreement, discussed infra, that gel expansion is a characteristic of zinc powder that is used as the active anode component and that the gel expansion test is a test for zinc powders with a particular gel expansion characteristic, which is made clear in the specification. CX-1, C O ~ . 4112-22,25-31.
246 ChefAmerica, Inc. v. Lamb-Weston, Znc., 358 F.3d 1371 (Fed. Cir. 2004).
-5 8-
The prosecution history shows that, on May 22, 1995, the applicant made a deletion from
claim 45. Claim 45 read as follows:
An electrochemical cell comprising an alkaline electrolyte, a cathode comprising manganese dioxide as an active cathode component, and an anode gel comprised of zinc as the active anode component, wherein the cell contains less than 50 parts of mercury per million parts by weight of the cell and said zinc anode gel has a gel expansion of less than 25% after being discharged for 161 minutes to 15% depth of discharge at 2.88A.247
The May 22, 1995 amendment requested that:
After “zinc anode” delete “gel.”248
The applicant explained the correction as follows:
Claims 45,48 and 49 have been amended to correct a grammatical error. It is the zinc which is to be tested, as set forth in the spe~if icat ion.”~~~
This amendment shows that the applicant clearly did not intend “said zinc anode” to refer to the zinc
anode gel, and that his intention was that the “said zinc anode” refer to the zinc.
The sole issue in Chef America was the meaning of the term “heating the resulting batter-
coated dough to a temperature in the range of about 400F to 850F.”250 The question is whether the
dough itself is to be heated to that temperature, or whether the claim only specifies the temperature
at which the dough it to be heated. Taking the word “to” literally, results in burning the dough to
a crisp, which was not the intended result. But, because the word “to” is an ordinary, simple English
word whose meaning is clear and unquestionable, the Federal Circuit held that it would be
247 CX-607 at ITCEBC210085; RX-2 at GP-001300.
248 CX-607 at ITCEBC210099; RX-2 at GP001370.
249 CX-607 at ITCEBC2 10 10 1 ; RX-2 at GPO0 1 372.
250 ChefAmerica, 358 F.3d at 1371 (emphasis added).
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impermissible for a court to redraft the claims in order for the patent to be operable and to make
sense.25’ Although the Respondents are advocating that any clarification of the term “said zinc
anode” to mean zinc powder would be paramount to rewriting the claims, which is impermissible
when a term is clear on its face, it is clear that, in this instance, the term is not clear on its face.
Therefore, Chef America is clearly distinguishable, because the parties are in agreement that “said
zinc anode” lacks an antecedent basis in the claim, which makes the term unclear on its face.
The undersigned finds that interpreting “said zinc anode” in claim 1 as referring to the zinc
as the active anode component is consistent with the other claims in the patent. “Said anode
component” in Claim 8 has a proper antecedent basis in Claim 1, which clearly refers to the anode
gel (“an anode gel comprised of zinc as the active anode component”). This is clearly not the case
with “said zinc anode,” so there is no inconsistency in interpreting the two phrases differently.
Accordingly, the term “said zinc anode” is construed as referring to the zinc as the active
anode component.
4. “After Being Discharged For 161 Minutes to 15% Depth of Discharge at 2.88A”
The main dispute among the parties regarding the term “after being discharged for 161
minutes to 15% depth of discharge at 2.88A” is whether this is a product-by-process claim or not.
Complainants construe the term “after being discharged for 16 1 minutes to 15% depth of discharge
at 2.88A” as zinc powder that has a characteristic, if tested, of less than 25% gel expansion after
being discharged for 161 minutes to 15% depth of discharge at 2.88A. CIB 58,69. Complainants
contend that the term “after being discharged” provides a definition of discharge parameters under
25‘ Id. at 1374.
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which the zinc is to be tested to determine the gel expansion, and that it is not necessary that an
infringing battery contains zinc powder that has been subjected to the test prior to incorporation into
the battery. Rather, it is only necessary that the zinc powder be capable of scoring a gel expansion
of less than 25% if tested. CIB 58. The Staff agrees. SIB 17-1 8. Respondents contend that the term
“after being discharged . . . ” precludes infringement when an accused infringer has never used the
gel expansion test. RIB 44-45.
First, Respondents argue that there is a disconnect between the test cell anode and the battery
anode. RIB 57. Respondents’ position is that the specification does not support a claim to a zero-
mercury-added battery where the zinc anode of that battery has a gel expansion of less than 25% after
being discharged for 161 minutes to 15% depth of discharge at 2.88AY because only the test cell
contains such a features. RIB 57.
Second, Respondents argue that the “after being discharged . . .” limitation is a process step
because the term “after” imposes a sequential limitation that means “subsequent to” and cite to CD-
ROM Controllers252 for support. RIB 46, 50. Respondents state that Complainants’ “when, if
tested” claim construction effectively changes the word “after” to “if and when.” RIB 50-5 I .
Third, Respondents argue that, because the term “after being discharged . . .” is in the past
it requires that the cell be discharged prior to the manufacture of alkaline batteries that
utilizes that particular zinc. RIB 46.
Fourth, Respondents argue that, in order to get the ‘709 patent issued, “Complainants
252 Certain CD-ROM Controllers, Inv. No. 337-TA-409, Commission Opinion (October 18, 1999), aff’d sub nom, Oak Tech., Inc. v. US. Int ’ I Trade Comm ’n, 248 F.3d 13 16 (Fed. Cir. 2001).
253 See Whittingham, Tr. 3834.
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surrendered all of the claims that did not expressly include the running of the gel expansion test.”
RIB 48. Respondents specifically point to the cancellation of original Claim 14 of the ‘925
Finally, Respondents argue that the gel expansion test did more than merely define the “low
expansion” characteristic of zinc because the test was the limitation that overcame the obviousness
rejection. RIB 45. Respondents cite to Toro Co. v. Deere & C0.255 for support, where the Federal
Circuit held that the “discovery of a previously unappreciated property of a prior art composition,
or of a scientific explanation for the prior art’s functioning, does not render the old composition
patentably new to the discoverer.” RIB 45,50. Respondents argue that the test has to be carried out
to impart novelty to the claims and that Complainants are improperly attempting to read this
limitation out of the claims. RIB 45.
The parties also cite to various extrinsic evidence in support of their argument. Because the
undersigned has determined that “after being discharged for 16 1 minutes to 15% depth of discharge
at 2.88A” can clearly be construed based solely on the intrinsic evidence, the undersigned will not
address any of the parties citations to extrinsic evidence, including the foreign prosecution history
256 See Bell Atlantic, 262 F.3d at 1268-69; see also Certain Sortation Systems, Inv. No. 337-TA-460, Order No. 36 (June 3,2002) (noting that the use of statements made to foreign patent offices in determining the scope of infringement under the doctrine of equivalents has been established by the Federal Circuit and that their use as extrinsic evidence for claim construction purposes is also well-recognized by trial courts, even though the Federal Circuit has not yet ruled on the issue).
-62-
The written description of the ‘709 patent states that the invention is a substantially mercury-
free, non-leaking alkaline electrochemical cell that utilizes “low expansion zinc” as the active anode
component.257 “Low expansion zinc” refers to zinc that when made into a gel and tested in the
manner disclosed in the patent, expands less than other The written description of the ‘709
patent discloses the “gel expansion test” (“GET”), which is a specific test used to measure the
expansion rate of a zinc powder, in order to identify a low-expansion zinc. Specifically, 63 grams
of zinc powder is mixed with 36.5 grams of potassium hydroxide electrolyte and 0.5 grams of a
binder to equal 100 grams of The gel is placed in a measurement cell cup, which is made from
a 500 mL beaker. Below the gel is an anode current collector, while above the gel is a separator and
cathode current collector.260 The anode and cathode current collectors are connected to a power
supply that discharges the anode gel in the beaker to 15% depth of discharge at 2.88A for 161
minutes.26’ After discharge, approximately 17 grams of mix is measured in 4 different 10 mL
graduated cylinders. A small amount of oil is placed over the mix and the graduated cylinders are
stored in a 71 degree C oven for 24 hours.262 The mix and oil levels are then read and the relative
volume expansion rate (SRVER) can be determined with the following formula:
257 CX-1, ~01.1: 63 - 2113.
258 CX-I, C O ~ . 4:30-37.
259 CX-1, C O ~ . 4:40-43,50-51
260 CX-I, C O ~ . 4~46-67.
26’ CX-I, C O ~ . 5:1-3.
262 CX-I, C O ~ . 5: 17-24.
-63-
vol.of - expansion-of-mix (mL) SRVER = x 100
Original-vol .of-mix (mL)
“Low expansion zinc” is zinc that has a SRVER of less than 40%, 25%, 20% or 1 5%.264 Therefore,
the specification makes clear that “gel expansion” refers to SRVER, so that gel expansion is
determined in the same manner that SRVER is.
Based on the above description, the gel expansion test, which is performed in a “test” or
“measurement” cell, is used to determine whether the “said zinc anode has a gel expansion of less
than 25%.” Therefore, the term “after being discharged . . .,, must be read in the context of the entire
claim.
Respondents’ argument that there is a disconnect between the test cell and the battery is
largely based on Respondents’ previous argument regarding the claim term “said zinc anode,” which
was rejected. Adopting the Respondents’ argument would require putting discharged zinc into
batteries before they are manufactured. Respondents’ own expert, Dr. Whittingham,265 testified that
one of ordinary skill in the art in the late 1980’s and early 1990’s would not use discharged zinc to
make alkaline batteries.266
In CD-ROM Controllers, the Commission construed the following claim language, a
263 CX-1, col. 5:3-34.
264 CX-1, C O ~ . 5: 41-45.
265 Dr. Whittingham is currently a Professor of Chemistry and Material Science at the State University of New York (SUNY) in Binghamton. Whittingham, Tr. 3778-79. He received a Bachelors of Science degree in Chemistry in 1964, and a doctorate in Chemistry in 1968, both from Oxford University. Whittingham, Tr. 3785-86.
266 Whittingham, Tr. 4264.
-64-
“compact disk drive controller. . . comprising . . . a cyclic redundancy check checker for detecting
errors in assembled data after correction of said data” as requiring a clear sequence.267 The
Commission made clear that the word “after” required that the circuitry of the already-manufactured
CD-ROM controller check data after the data is correct and did not interpret the word “after” as
giving rise to a process step in the manufacture of a CD-ROM controller. Therefore, CD-ROM
Controllers does not support Respondents’ claim construction.
The phrase “after being discharged . . .” is not in the past tense because it is not being used
as a verb. It is a preposition followed by a participle phrase which is modifying the phrase “said zinc
anode has a gel expansion of less than 25%” before it. In the context of the entire claim, the term
“after” is merely describing the type of discharge that is being tested, i.e. post partial discharge
gassing vs. shelf gassing. In the context of this claim, the term “after” does not mean that the gel
expansion test is a sequential process step for the manufacture of the claimed product.
Respondents’ argument that Complainants’ claim construction, in effect, changes “after” to
“if and when” is based in part, on Respondents’ view that an anode that has not been discharged does
not have a gel expansion. RRB 18. The undersigned disagrees. An analogy that was made is that gel
expansion is similar to an object’s melting point.268 The object has a melting point, but the melting
point of the object can’t be determined unless a thermometer, or similar device, is used. In this
instance, the gel expansion is equivalent to the melting point, and the gel expansion test procedure
is equivalent to the thermometer test. Therefore, the zinc has a particular gel expansion
267 Certain CD-ROM Controllers, Inv. No. 337-TA-409, Commission Opinion at 10- 13 (emphasis in original).
268 Litton, Tr. 4980. An analogy was also made that gel expansion is similar to a person’s weight. See CRB 11.
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characteristic that is determined by the gel expansion test procedure. The “after being discharged”
language, therefore, is merely describing a characteristic of the zinc. Even though the gel expansion
is not run, the zinc still has a particular gel expansion characteristic, so it is possible for there to be
infringement even though the gel expansion value is not known by the infringer when the zinc is
used in the manufacturing of a battery. This is entirely consistent with the case law that states that
an accused infringer need not know that its products infringe in order for a court to find
infringement .269
In addition, the word “has” in the phrase “has a gel expansion value of less than 25% after
being discharged . . . ” supports construing gel expansion as a characteristic of the zinc. According
to the Respondents’ own expert, Dr. Reddy, the ordinary meaning of the word “has” is “possesses”
which suggests that gel expansion is an intrinsic characteristic of zinc; once again, similar to the
melting point of an object.270
The undersigned notes that the prosecution history discussion above indicates that claim 14
of the ‘925 application was rejected by the Examiner as being indefinite because, at that time, it was
not clear to the Examiner what was meant by “low expansion zinc.”271 The fact that this ambiguity
was made clear to the Examiner by substituting the test results for the words “low expansion zinc”
is indicative that the test results identify a definitive characteristic of the zinc, not a process step that
the zinc goes through.
269 Florida Prepaid Post Secondary Education Expense Board v. College Savings Bank, 527 U.S. 627,645 (1999) (it is elementary that an infringement may be entirely inadvertent and unintentional and without knowledge of the patent).
270 Rx-2763C, Reddy, Dep. 116.
271 RX-8 at GP50-0146 through GP50-0150.
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While the discovery of a previously unappreciated property of a prior art composition does
not render the old composition patentably new, the claims of the ‘709 patent do not claim any
particular composition of zinc. As the Federal Circuit has noted, a property limitation can have
meaning in a claim, especially when structure alone may be inadequate to define the invention.272
The ‘709 patent does not define the composition of low expansion zinc because many different
compositions of zinc can be considered to have a low gel expansion. Rather, the ‘709 patent defines
a class of zincs that, when used in a battery, have the characteristic of “low expansion” and are
substantially mercury-free. Therefore, Respondents’ citation to Tor0 is not on point. Composition
alone cannot define low expansion zinc, which is why low expansion is defined in terms of the gel
expansion test results.
In sum, Claim 1 does not refer to a process. It refers to a product, which is an electrochemical
cell comprised of certain elements with certain characteristics. Therefore, the term “after being
discharged for 161 minutes to 15% depth of discharge at 2.88A” is not construed as being aproduct-
by-process claim. Rather, gel expansion is a characteristic of zinc that is determined by the gel
expansion test. Furthermore, the term “after being discharged” is not construed as requiring the test
to be run before the electrochemical cell is manufactured.
several limitations, including applying the doctrine to individual elements of a claim and not to the
invention as a whole.278 The court acknowledged that the commonly used “function-way-result” test
is suitable in some instances, including analyzing mechanical devices.279
3. Prosecution History Estoppel
Although infringement can be demonstrated under the doctrine of equivalents in the absence
of literal infringement, the doctrine of prosecution history estoppel “can prevent a patentee from
relying on the doctrine of equivalents when the patentee relinquishes subject matter during the
prosecution of the patent, either by amendment or argument.”280 Prosecution history estoppel is a
legal question for the court.281
According to the rule of “amendment-based estoppel,” “when an applicant narrows a claim
element in the face of an examiner’s rejection based on the prior art, the doctrine estops the applicant
fiom later asserting that the claim covers, through the doctrine of equivalents, features that the
applicant amended his claim to avoid. A patentee is also estopped to assert equivalence to ‘trivial’
variations of such prior art features.”282 Under the rule of “argument-based estoppel,” “[cllear
278 Warner-Jenkinson, 520 U.S. at 29.
279 See Hilton Davis, 62 F.3d at 15 18 ( “In applying the doctrine of equivalents, it is often enough to assess whether the claimed and accused products or processes include substantially the same function, way, and result”).
assertions made during prosecution in support of patentability, whether or not actually required to
secure allowance of the claim, may also create an In determining whether estoppel
exists, “[tlhe legal standard for determining what subject matter was relinquished is an objective one,
measured from the vantage point of what a competitor was reasonably entitled to conclude, from the
prosecution history, that the applicant gave up to procure issuance of the patent.”284
In Warner-Jenkinson, supra, the Supreme Court ruled that the reason for an amendment is
relevant to prosecution history estoppel, particularly when it is “tied to amendments made to avoid
the prior art, or otherwise to address a specific concern -- such as obviousness -- that arguably would
have rendered the claimed subject matter unpatentable.”28s The Supreme Court further held that
where the reason for an amendment is unclear, there is a presumption that prosecution history
estoppel applies but is rebuttable “if an appropriate reason for a required amendment is
established.”286
In Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.,287 the Supreme Court
elaborated on its prosecution history estoppel ruling in Warner-Jenkinson. Concerning the kinds of
amendments that may give rise to estoppel, the Supreme Court decided that “a narrowing
283 Southwall Tech., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1583 (Fed. Cir.), cert. denied, 5 16 U.S. 987 (1995) (“Southwall Technologies ”); see also Canton Bio-Med., Inc. v. Integrated Liner Tech., Inc., 216 F.3d 1367, 1371 (Fed. Cir. 2000) (“Canton Bio-Medical”).
284 Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 952 (Fed. Cir. 1993) (“Hoganas”).
285 Warner-Jenkinson, 520 U.S. at 30-3 1.
286 Id. at 33.
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722 (2002) (“Festo”).
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amendment made to satisfy any requirement of the Patent Act may give rise to an Thus,
estoppel may arise not only from narrowing amendments to avoid prior art, but also from narrowing
amendments to satisfy the statutory requirements of usefulness, novelty and non-obviousness (3 5
U.S.C. $6 101-103) as well as the statutory requirements of adequate descriptiveness in the
specification and claims, enablement, and setting forth the best mode of carrying out the invention
(35 U.S.C. $ 1 12).289 While some Section 112 amendments may, according to the Supreme Court,
be “truly cosmetic” and therefore would not narrow the patent’s scope or raise an estoppel,
nevertheless “if a 0 1 12 amendment is necessary and narrows the patent’s scope - even if only for
the purpose of better description - estoppel may apply.”29o
The Supreme Court in Festo also addressed whether prosecution history estoppel bars the
inventor from asserting infringement against any equivalent to the narrowed element, or whether
some equivalents might still infringe.291 In reversing the Federal Circuit’s ruling below that a
complete bar applies, the Supreme Court instead ruled in favor of a “flexible bar” that “requires an
examination of the subject matter surrendered by the narrowing amendment.”292 Recognizing the
inherent limitation of words to describe an invention, the Supreme Court held:
The narrowing amendment may demonstrate what the claim is not; but it may still fail to capture precisely what the claim is. There is no reason why a narrowing amendment should be deemed to relinquish equivalents unforeseeable at the time of
288 Id. at 736.
289 Id.
290 Id. at 736-737.
291 Id. at 737-738.
292 Id.
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the amendment and beyond a fair interpretation of what was surrendered. Nor is there any call to foreclose claims of equivalence for aspects of the invention that have only a peripheral relation to the reason the amendment was submitted. The amendment does not show that the inventor suddenly had more foresight in the drafting of claims than an inventor whose application was granted without amendments having been submitted. It shows only that he was familiar with the broader text and with the difference between the two. As a result, there is no more reason for holding the patentee to the literal terms of an amended claim than there is for abolishing the doctrine of equivalents altogether and holding every patentee to the literal terms of the patent.293
The Supreme Court in Festo went on to hold that there is a rebuttable presumption that a
narrowing amendment creates an estoppel, and that the patentee bears the burden of rebutting the
presumption by proving that the amendment does not surrender the particular equivalent in
question.294 “The equivalent may have been unforeseeable at the time of the application; the rationale
underlying the amendment may bear no more than a tangential relation to the equivalent in question;
or there may be some other reason suggesting that the patentee could not reasonably be expected to
have described the insubstantial substitute in To rebut the presumption, “[t] he patentee
must show that at the time of the amendment one skilled in the art could not reasonably be expected
to have drafted a claim that would have literally encompassed the alleged equivalent.”296
B. Literal Infringement
Complainants performed two sets of infringement tests: “initial testing” in March/April2003,
293 Id. at 738.
294 Id. at 740-741
295 Id.
296 Id. at 741.
-72-
which took place before this Investigation was instituted297 and “subsequent testing” in October
2003, which took place after this Investigation was instituted. The initial testing involved use of
the “Battery Gel Expansion Test” (“BGET”), while subsequent testing involved use of both the
BGET298 and the “Gel Expansion Test” (“GET”).299 As set forth in more detail below, the results
from initial testing are used to prove infringement for respondents Chung Pak, Mazel and Universal,
while results from the subsequent testing are used to prove infringement for all remaining
respondents.
Both sets of tests were performed under the supervision of Complainants’ expert, Dr.
O’Keefe. Dr. O’Keefe is currently an Emeritus Professor of Metallurgical Engineering and Senior
Investigator of the Materials Research Center at the University of Missouri, Rolla. He received a
Bachelor of Science degree in metallurgical engineering in 1958 from the Missouri School of Mines
and received a PhD in metallurgical engineering in 1965 from the University of Missouri, R ~ l l a . ~ ”
1. Initial Testing
The initial tests were performed using the BGET on zinc harvested from what Complainants
297 Initial testing was also performed in July 2003 for purposes of the Amended Complaint.
298 The BGET was performed during subsequent testing only for batteries from distributors who purchased their batteries from non-Respondent manufacturers, specifically, Mazel, Universal & Winner. CRB 26.
299 O’Keefe, Tr. 1530; CX-1564C.
300 O’Keefe, Tr. 1442-43.
-73-
maintain are Respondents’ batterie~.~” Mr. Anderson,jo2 the Director of Information and Intelligence
(I2) at EBC, testified regarding how EBC obtained the batteries for initial testing.
Mr. Anderson explained that the primary mission of I2 [
1303
Mr. Anderson testified that I2 was tasked to: identify companies that were either importing
or selling foreign-manufactured zero-mercury-added alkaline batteries after importation into the
United States; identify wholesalers and distributors that were either importing or selling foreign-
manufactured zero-mercury-added alkaline batteries in the United States; and to document the
manufacturer of the foreign-manufactured zero-mercury-added alkaline batteries that were imported
into the United States.304 Mr. Anderson hired two independent consulting companies to assist with
the above tasks. He hired [ ] to identifj distributors and wholesalers of foreign-made zero-
mercury-added alkaline batteries, and he hired [ ] to identify manufacturers of foreign-made
301 O’Keefe, Tr. 1471, 1522.
302 Mr. Anderson received a Bachelors of Arts degree from American University in 1978 and received an MBA from Myers University in 2002. After graduating from American University, Mr. Anderson was commissioned in the Marine Corps until 1983, and then went to work for the Central Intelligence Agency until 1988, when he began working for EBC. Anderson, Tr.23 72-74.
jo3 Anderson, Tr. 2376-77.
304 Anderson, Tr. 2380,2389.
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zero-mercury-added alkaline batteries.”’
Once [ ] purchased zero-mercury-added alkaline batteries from distributors, wholesalers
] sealed the batteries in boxes and sent the batteries, along or retailers in the United States, [
with their respective invoices, to Mr. Anderson. Likewise, once [
mercury-added alkaline batteries from Chinese manufacturers in China, [
] purchased zero-
] sealed the
batteries in boxes and sent the batteries, along with their respective invoices, to Mr. Anderson.306
When Mr. Anderson received the batteries, he had either Rachel Devereaux or Bob Beckwith
inventory and take receipt of the batteries. Ms. Devereaux or Mr. Beckwith would then assign each
size of battery for each proposed respondent with a LOT number, which was then delivered to Dr.
O’Keefe for initial testing.307
The initial tests were supervised by Dr. O’Keefe and his research assistant, Dr. Paul Yu. All
of the initial testing was performed at EBC’s Westlake facility using EBC equipment by EBC
technical personnel.308 A strict chain of custody was maintained using an analytical The
tests that were performed during the initial testing included:
1) determining the level of mercury in the batteries through Inductively Coupled Plasma Mass Spectrometry
2) determining whether each battery contained an alkaline electrolyte by visual examination and
305 Anderson, Tr. 2383-84,2457-58,2547.
306 Anderson, Tr. 25 16,2547-48.
307 Anderson, Tr. 25 17-1 8.
308 O’Keefe, Tr. 1471-72.
309 O’Keefe, Tr. 1480, 1523-26; see also RX-2701-8(G)C.
3’0 O’Keefe, Tr. 1528-30.
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pH test;3“
3) determining whether each battery contained a cathode comprised of manganese dioxide as the active cathode component by visual e~aminat ion;~’~
4) determining whether each battery contained an anode gel comprised of zinc as the active anode component by visual e~amination;”~ and
5) running the battery gel expansion test.314
The BGET, rather than the GET, was performed during initial testing because the raw zinc
powders used in Respondents’ batteries were not available.315 The BGET differs from the GET
because performance of the BGET requires that the zinc powder must be “harvested” from the
batteries after opening the batteries up.316 The zinc powder needs to be washed, dried and
reconstituted before the test is In Dr. O’Keefe’s opinion, the BGET procedure is substantially
the same as the GET procedure set forth in the ‘709 patent.318
Complainants assert that the gel expansion values for zinc powder recovered from batteries
are higher than the gel expansion results of the raw zinc powder used to manufacture those same
311 O’Keefe, Tr. 1472.
3 1 2 O’Keefe, Tr. 1472.
313 O’Keefe, Tr. 1472-73.
314 O’Keefe, Tr. 1471.
315 O’Keefe, Tr. 1471, 1522.
316 O’Keefe, Tr. 1475-77; see also CX-722C.
317 O’Keefe, Tr. 1473,2172-73; see also CX-722C.
3 1 x O’Keefe, Tr. 1612-13.
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batteries, based in part on a comparative study performed by Dr. O’Keefe.319 Complainants also
assert that the addition of indium hydroxide to the anode gel of a battery causes the gel expansion
of the harvested zinc powder to be higher than that of the raw zinc powder, which is also based on
the same comparative
The results of the initial testing are found in RX-2701-8(F)C.321 Dr. O’Keefe concluded that
1) all batteries tested had less than 1 ppm of mercury by weight of the
2) all batteries tested contained an alkaline electrolyte;323
3) all batteries tested had a cathode comprising manganese dioxide as an active cathode component;324
4) all batteries tested had an anode gel comprised of zinc as the active anode component;325 and,
5) all batteries tested had a gel expansion of [ 3 with the exception of GME’s (V Everich battery, which had a gel expansion of [ 1326
Dr. O’Keefe concluded, based on the initial testing, that all of the Respondents’ batteries, as
well as the batteries of non-Respondents that were tested, infringe at least claim 1 of the ‘709
319 O’Keefe, Tr. 1477-78; see also CX-731C, CX-112OC.
320 O’Keefe, Tr. 2229-30; see also CX-73 1 C.
321 O’Keefe, Tr. 1528-30.
322 O’Keefe, Tr. 1528-30.
323 O’Keefe, Tr. 1472.
324 O’Keefe, Tr. 1472.
325 O’Keefe, 1472-73.
326 See RX-2701-8(G)C.
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patent.327 Dr. O’Keefe also concluded, based on the initial testing, that all batteries tested, with the
exception of GME’s 9V Everich battery, had a gel expansion of [ 3 and therefore
infringed claims 1 through 7 of the ‘709 patent.328
Respondents have numerous objections to the initial testing performed by Complainants,
including that:
1) Complainants have not established that batteries they tested are connected to any Respondent or that they are relevant to this Investigation;
2) the batteries were tested using the BGET, which is not substantially the same as the test in the ‘709 patent; and
3) intra-lot and inter-lot variability preclude generalizations about Respondents’ batteries based on initial testing. RRB 56.
First, Respondents oppose all of Dr. O’Keefe’s conclusions based on initial testing because
they contend that the evidence does not support that the batteries tested were actually batteries sold
by the Respondents. RIB 84’98- 100; RRB 56-6 1. Respondents point to three supposed “invoices”
that are mere handwritten notes that are not on any company letterhead.329
Second, Respondents argue that the BGET is not substantially the same test as that described
in the ‘709 patent because it contains many additional steps and materials that are not described in
the ‘709 patent, and that the BGET does not correlate with gel expansion results on control zinc
powder samples. RIB 10 1 - 102; RRB 6 1-65. Respondents dispute the results of Complainants’
comparative study that concludes that (1) gel expansion values for zinc powder recovered from
327 O’Keefe, Tr. 1528-30; see also RX-2701-8(G)C.
328 See RX-2701-8(G)C.
329 See CX-478(T)C, CX-478(W)C and CX-478(Y)C.
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batteries are higher than the gel expansion results of the raw zinc powder used to manufacture those
same batteries, and (2) the addition of indium hydroxide to the anode gel of a battery causes the gel
expansion of the harvested zinc powder to be higher than that of the raw zinc powder. RRE3 61.
Respondents specifically contend that, when zinc is harvested from batteries that has corrosion
inhibitor additives, the additives don’t wash away fully and affect the gel expansion test results. RIB
84,94-98. Respondents contend that the comparative study is flawed because there is no way of
reliably comparing the results of the BGET with the results of the GET because it is impossible to
test the exact same zinc powder with the BGET and GET because once zinc powder is used to
perform the GET, it is not suitable to use to construct a battery. RRB 61.
Third, Respondents dispute all of Dr. O’Keefe’s findings based on intra-lot and inter-lot
variability, which will be discussed in the subsequent testing section below.
The undersigned finds that the three suspect “invoices” of ZY Ningbo, Tiger Head and Hi-
Watt lack persuasiveness as true invoices because they are handwritten.330 In addition, there were
other handwritten “invoices” for M ~ e l ~ ~ ’ and Chung Pak.332 The handwritten documents appear to
be more of an inventory of the batteries ordered and received from particular companies, rather than
official invoices. Accordingly, they shall not be considered in the determination of infringement
herein.
However, Mr. Anderson testified in detail about the procedure used by Complainants in
330 See CX-478(T)C, CX-478(W)C and CX-478(Y)C.
331 See CX-478(P)C.
332 See CX-478(V)C.
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obtaining the batteries, which was discussed above.333 Also, as noted below, Complainants are
asserting infringement based on gel expansion percentages from initial testing only for those non-
manufacturing respondents where zinc powder was not available for subsequent testing, i. e. Chung
Pak, Maze1 and Universal. Respondents’ concerns for the invoices for Universal is unwarranted as
they are on company letterhead.334 In any event, Complainants have adequately shown that the
batteries tested were from the named respondents based on the testimony set forth above from Mr.
Anderson regarding the chain of custody in procuring the sample batteries.335
Complainants performed two comparative studies. The first is detailed in CX-112OC [
3 There is no dispute among the parties that it is inappropriate to use zinc powder that has
been discharged by the GET in the manufacture of a battery.336 Therefore, it is reasonable to use zinc
from the same lot for comparison purposes as representative of the zinc used to manufacture the
battery in question. Respondents’ argument that the comparative study be discredited on this basis
is not persuasive.
The other comparative study was performed by Dr. O’Keefe, detailed in CX-73 1 C. Dr.
333 Anderson, Tr. 2383-84,2457-58,2516-18,2547-48.
334 See CX-478(S)C.
335 Anderson, Tr. 2383-84,2457-58,2516-18,2547-48.
336 Whittingham, Tr. 4264; CFF 3.101; ROCFF 3.101 (objection based on being misleading and incomplete, but no contradictory evidence cited).
-80-
O’Keefe tested five different samples of zinc powder, including one from an Eveready battery anode,
one from a Panasonic battery anode, and three control zinc samples. The evidence shows that, when
performing the BGET, if indium hydroxide were added to the gel of the battery, which was then
“harvested” for the BGET, the indium hydroxide would remain on the zinc powder after washing,
which would affect the results of the test.337 Any effect, however, would be in the Respondents’
favor, because the comparative study shows that the residual indium hydroxide on the zinc powder
would raise the gel expansion of the zinc powder, rather than lower it.338
The gel expansion percentages from initial testing will only be discussed in detail below for
certain non-manufacturing respondents (i. e. Chung Pak, Mazel & Universal) because the gel
expansion test was not run during subsequent testing for these respondents because there was no zinc
powder sample to test. As detailed below, the undersigned finds that, when infringement is based
on initial testing, Complainants have shown, by a preponderance of the evidence, that the batteries
indicated below for respondents Chung Pak, Mazel and Universal infringe the ‘709 patent.
2. Subsequent Testing
The subsequent tests were performed by an independent laboratory, Chemir Laboratories,
located in St. Louis, Missouri, that was chosen by Dr. 0’Keefe.339 Dr. O’Keefe provided Chemir
with the equipment to run the gel expansion test.340 A strict chain of custody was maintained to
337 O’Keefe, Tr. 2229-30.
33g Although Respondents argue that Dr. O’Keefe testified that indium hydroxide can cause the gel expansion results to be lower (see RRB 63), they provide no citation to the record for this proposition.
339 O’Keefe, Tr. 1481-1485; CX-723.
340 O’Keefe, Tr. 1492- 1493.
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ensure that the batteries and zinc powders produced by Respondents during discovery were the ones
tested by Chemir.34’ Dr. O’Keefe provided Chemir with the GET procedure detailed in CX-72 1 C
and the BGET procedure detailed in CX-722C.342 In Dr. O’Keefe’s opinion, the procedures in CX-
72 1 C and CX-722C are substantially the same as the GET procedure set forth in the ‘709 patent.343
In the subsequent testing, seven types of tests were run in four different test arrays.344 Each
Respondent was assigned a testing number in order to have “blind” testing.345 The seven different
tests were:
1) determining the weight of the battery, using a standard laboratory electronic balance, in case the weight was needed to determined the parts per million of mercury by weight of the cell (“weight”);
2) determining the open circuit voltage by using a volt-meter to show that the battery was an electrochemical cell (“OCV”);
3) determining the pH of the electrolyte using pH paper to determine whether the electrolyte was alkaline (“pH”);
4) determining whether the active cathode material was manganese dioxide by using x-ray diffraction (“XRD”);
5) performing a metal analysis of the zinc powder using ICP analysis (“ICP”);
6) determining the level of mercury in the zinc powder using cold vapor atomic absorption; and
7) running either the GET in accordance with CX-722C, or the BGET in accordance with CX-
341 O’Keefe, Tr. 1485-86,2216-24,2226; see also CX-724C.
342 O’Keefe, Tr. 1531-32, 1533-36, 1612-13.
343 O’Keefe, Tr. 1531-36, 1612-13.
344 O’Keefe, Tr. 1486-92, 1500, 1611-1612; see also CX-716C, CX-717C, CX-721C, CX- 722C.
345 O’Keefe, Tr. 1490-91; see also CX-717C.
-82-
72 1 C to determine the gel expansion percentage of the zinc (“GET” & “BGET”).
The four different arrays were:
A) array used on batteries supplied by respondent that was a manufacturer;
B) array used on raw zinc powder supplied by respondent;
C) array used on batteries supplied by non-manufacturing respondent who purchased batteries from a respondent manufacturer; or
D) array used on batteries supplied by non-manufacturing respondent who purchased batteries from a non-respondent manufacturer.
The type of tests performed on each array is summarized
The results of the subsequent testing are found in CX-712C.347 Dr. O’Keefe concluded, based on
the subsequent testing, that most of the Respondents’ batteries infringe at least claim 1 of the ‘709
patent.
In addition, Complainants state that the gel expansion test was communicated to the
following zinc manufacturers: Big River Zinc; ZCA; Noranda; Union Miniere (aka “Umi~ore”) ;~~*
Grillo; and Mitsui Japan, which represent at least 70% ofthe world supply of commercially available
346 See CX-716C.
347 O’Keefe, Tr. 1497.
348 Smith, Tr. 1157-58.
-83-
battery-grade zinc Complainants assert that Respondents are supplied with zinc [
1350
Complainants also assert that these companies have had access to and run the gel expansion test,
which Respondents dispute.
Respondents have numerous infringement arguments. Many arguments, however, are based
on their erroneous claim construction and will not be addressed. Respondents’ additional arguments
are as follows. First, Respondents contest Dr. O’Keefe’s conclusions from his initial testing and
subsequent testing because they contend that the BGET procedure in CX-722C and the GET
procedure in CX-72 1 C, which are the procedures that Chemir Laboratories were provided, are not
the same as the GET described in the ‘709 patent. RIB 83-84, 100. In addition to Respondents’
arguments regarding how unreliable the BGET its, Respondents also argue that Complainants’ tests
are unreliable because they didn’t test the actual batteries that Respondents produced during
discovery. RIB 100, RRB 55.
Second, Respondents dispute all of Dr. O’Keefe’s findings because there is significant
variability in test results from zinc containers or samples drawn fiom the same lot, or even from the
same container, so called “intra-lot variability.” RIB 83,85-94; RRB 65-68. Because of this intra-
lot variability, Respondents assert that any test results are insufficient to prove that a larger set of
349 Smith, Tr. 1138; see also CX-l223C, CX-12246, CX-l225C, CX-1226C’ CX-l228C, cx- 133 3 c .
350 Whittingham, Tr. 4096-41 08; O’Keefe, Tr. 1574-75; Smith, Tr. 4623-26, see a2so RX- 1356.16C, RX-1356.17C, RX-1356.19C, RX-1356.20C, RX-1356.21C, RX-1356.23C, RX- 1356.26C, RX-1356.3 l(ii)C, CX-675C, CX-695C.
Respondents also receive zinc from suppliers such as [ ] RX-l02C, Chen Dep., 37;
JX-56C at lfi 2 1-22.
-84-
batteries infringe because there is no way to prove that the sample tested is “representative” of the
zinc that was used in the manufacture of any other batteries. RIB 83-84. Complainants counter that
Respondents stipulated that the samples of batteries and zinc powders are “representative”
The undersigned notes that Respondents’ concern with the BGET procedure was discussed
above. In addition, Respondents’ argument that Complainants did not use zinc powder harvested
from the batteries produced during discovery completely lacks merit because it was not necessary
to perform the BGET when raw zinc powder was available. As already mentioned, Complainants
only relied on initial testing results, which used harvested zinc from Respondents’ batteries, when
raw zinc powder samples were not available.
Regarding Respondents’ concern regarding the GET outlined in CX-72 1 C, they point to the
statement in step 6.1, not disclosed in the ‘709 patent, that “[blefore testing, the sample must be
rendered uniform by riffling or rolling in such a way as to remove all segregation of particles by size
in the full body of materials.” This step ensures that the sample is uniform, which would be standard
laboratory operating procedure. The fact that step 6.1 is specifically included in CX-721C7 but not
in the ‘709 patent, does not render the two procedures to be essentially different because a person
of ordinary skill in the art would have recognized the importance of having a uniform sample.
There is certainly evidence that intra-lot variability exists. RIB 88-90. Before the gel
expansion test, EBC had numerous problems with both intra and inter-lot variability, which is part
351 Complainants cite to Websters Ninth New Collegiate Dictionary (1 989) and the American Heritage Dictionary (Fourth Edition 2002), which defines “sample” as a representative part from a larger whole or group. CRB 25.
-85-
of the reason why Dr. Scarr’s gel expansion test was so crucial to EBC.jS2 Respondents assert that,
because of intra and inter-lot variability, the results of the gel expansion test during subsequent
testing cannot be extrapolated to any other lots of zinc powder. RIB 92. Respondents contend that
there is a 78% variance between BGET test results on EBCs batteries (6.5%) and a control zinc
powder sample (3.69%).353 RIB 102. This example is not persuasive because the test results are
within 3 percentage points of each other and within the range of Claim 1 of the ‘709 patent (less than
25%). Looking at the issue more broadly, although there is some degree of intra-lot variation,
Respondents overstate the extent of variability and the evidence in the record shows that most of the
lots sampled show reasonable consistency in their gel expansion characteristics. SRE3 17.3s4 In
addition, the data that Respondents rely upon is based on EBC’s own internal testing and not on any
testing that is being used for infringement purposes. Based on the evidence, the undersigned finds
that there is not sufficient evidence that the intra and inter-lot variability that existed in the early
1990’s still exists today. As the in-depth discussion and tables on infringement as to individual
respondents set forth below indicates, any intra-lot variability used in Complainants’ infringement
testing is within reason. Therefore, Respondents’ position cannot be adopted.
Respondents provided Complainants with samples of batteries and zinc powder used to
manufacture batteries that are imported into the United States during discovery. Complainants have
352 Smith, Tr. 1244; Welsh, Tr. 322 1.
353 RX-2763C, Reddy, Dep. 5 1.
354 See CX-155OC (lots P21-Ml95, P21-213, P21-M339, and P21-M375); CX-1551C (lots 965,975); CX-1552C (lots P21-Ml86, P21-M189, and P21-M192); CX-1554C (lots 10378,10379, 10380, 10381, 10382, 10383, 10384, 10385, 10387, 10388, and 10389); CX- 1555C (lots 10053, 10056, 10057, and 10058); and CX-1556C (lots 205,208,209,211,212, and 214).
-86-
shown that each respondent infringes the ‘709 patent, based on the samples provided. Complainant
only needs to prove infringement of a single battery to show a violation of Section 337.355
As detailed below, the undersigned finds that, based on the subsequent testing, Complainants
have shown, by a preponderance of the evidence, that Respondents’ batteries infringe the ‘709
patent.
3. Manufacturers
a. Nanfu
Nanfu manufactures, or has manufactured alkaline batteries with the brand name E x ~ e 1 1 . ~ ~ ~
Nanfu has sold for importation into the United States batteries comprising an alkaline electrolyte,
a cathode comprising manganese dioxide as an active anode component, and containing less than
one to fifty parts of mercury per million parts by weight of the cell since about November 21,
2001 .357 In addition, Nanfu has sold for importation into the United States batteries with an anode
l- ]358 Nanfu has used the
following zinc grade powders in the manufacture of its zero-mercury-added alkaline batteries: [
355 Certain Condensers, Parts Thereof and Products Containing Same, Including Air Conditioners for Automobiles, Inv. No. 337-TA-334, Initial Determination (April 23, 1993) and Recommended Determination (December 16, 1996).
356 See JX-60C 73.
357 See JX-GOC, 77 24-30, CX-71C, CX-72C, CX-73C, CX-74C, CX-75C, O’Keefe, Tr. 1506-07, 1536-40.
358 See JX-60C 7 3 1
-87-
[
mercury-added alkaline batteries.360
Nanfu uses zinc powder [ ] to manufacture its zero-
Specifically at issue are Nanfu’s AAA, AA, C, D and 9V size batteries. CIB 88. Nanfu has
stipulated that the batteries produced during discovery were samples ofNanfu’s zero-mercury-added
alkaline batteries imported, exported, sold or offered for sale importation into the United States, or
sold or offered for sale after importation into the United States since November 7,1995. Nanfu has
also stipulated that the zinc powder produced during discovery were samples of zinc used in each
of Nanfu’s zero-mercury-added alkaline batteries imported, exported, sold or offered for sale
importation into the United States, or sold or offered for sale after importation into the United States
since November 7, 1 995.361
Nanfu has stipulated to all claim elements, except the gel expansion values. Nanfu was
designated as Respondent 5.362 Test arrays A & B were performed on Nanfu, which found gel
expansion percentages of [ 1363
an alkaline electrolyte
a cathode comprising manganese dioxide as an active cathode component, and
1 Term (Claim 1, unless otherwise noted) 1 Accused Products of Nanfu I
See JX-6OC, 124.
See JX-6OC, 1 25.
I An electrochemical cell comprising I See JX-GOC, 1 1. I
~~
359 See JX-60C 7 32.
360 See JX-GOC, 1 35.
361 CX- 1564C; O’Keefe, Tr. 22 16-26.
362 cx-717c.
363 CX-712C at ITCEBC210730-33.
-88-
I
' See JX-6OC, 7 27.
an anode gel comprised of zinc as the active anode component I at ITCEBC210730-32
See JX-60C fi 35 & ICP analysis on CX-712C
Claim 4: The electrochemical cell of claim 2, wherein the zinc anode has a gel expansion of less than 20%.
wherein the cell contains less than 50 parts of mercury per million parts by weight of the cell and
[ ]365 (See CX-712C at ITCEBC2 10733)
See JX-GOC, fi 26.
Claim 6: The electrochemical cell of claim 1 wherein the cell contains less than 25 parts of mercury per million parts by weight of the cell.
Claim 7: The electrochemical cell of claim 1 wherein the cell contains less than 20 parts of mercury per million parts by weight of the cell.
See JX-GOC, 7 28.
Claim 2: The electrochemical cell of claim 1, wherein the cell contains less than 2 parts of mercury per million parts by weight of the cell.
See JX-6OC, fi 29.
Claim 3: The electrochemical cell of claim 2, wherein the cell contains less than 1 part of mercury per million parts by weight of the cell.
See JX-GOC, 7 30.
said zinc anode has a gel expansion of less than 25% after being discharged for 161 minutes to 15% depth of discharge at 2.88A.
[ ]364 (See CX-712C at ITCEBC2 1 0733)
364 As stated above, Complainant only needs to prove infringement of a single battery to show a violation of Section 337; therefore, a gel expansion percentage greater than 25% does not preclude a finding of infringement. Certain Condensers, Parts Thereof and Products Containing Same, Including Air Conditioners for Automobiles, Inv. No. 337-TA-334, Initial Determination (April 23, 1993) and Recommended Determination (December 16, 1996).
365 Id.
-89-
Claim 5: The electrochemical cell of claim 4, wherein the zinc anode has a gel expansion of less than 15%.
366 Id.
36’See JX-53C’ 11 3, 5.
368 See JX-53C7 7 4.
369 CX-l77C, CX-183C7 CX-184C7 cx-1531c.
370 CX-177C7 CX-183C7 CX-l84C, cx-1531c.
-90-
[ ITCEBC2 10733)
]366 (See CX-7 12C at
[ ]37’ Zhenglong uses zinc powder [
Term (Claim 1, unless otherwise noted)
An electrochemical cell comprising
manufacture its zero-mercury-added alkaline batteries.372
Specifically at issue are Zhenglong’s AAA and AA size batteries. CIB 93. Zhenglong has
stipulated that the batteries produced during discovery were samples of Zhenglong’s zero-mercury-
added alkaline batteries imported, exported, sold or offered for sale importation into the United
States, or sold or offered for sale after importation into the United States since November 7, 1995.
Zhenglong has also stipulated that the zinc powder produced during discovery were samples of zinc
used in each of Zhenglong’s zero-mercury-added alkaline batteries imported, exported, sold or
offered for sale importation into the United States, or sold or offered for sale after importation into
the United States since November 7, 1 995.373
Zhenglong has stipulated to all claim elements, except the gel expansion values. Zhenglong
was designated as Respondent 9.374 Test arrays A & B were performed on Zhenglong, showing a gel
expansion characteristic of [ 1 ~ 7 ~
Accused Products of Zhenglong
See JX-53C
an alkaline electrolyte
a cathode comprising manganese dioxide as an active cathode component, and
See CX-l83C, CX-184C
See CX-l83C, CX-184C
371 See JX-53C, 17 13-14.
372 See JX-53C, 7 17.
373 CX-l564C, 7 111.
374 CX-717C.
375 CX-712C at ITCEBC2 10740-42.
-91-
an anode gel comprised of zinc as the active anode component
wherein the cell contains less than 50 parts of mercury per million parts by weight of the cell and
Claim 6: The electrochemical cell of claim 1 wherein the cell contains less than 25 parts of mercury per million parts by weight of the cell.
See JX-53C7 7 17, CX-l83C, CX-184C
See CX-l83C, CX-184C
Claim 2: The electrochemical cell of claim 1, wherein the cell contains less than 2 parts of mercury per million parts by weight of the cell.
See CX-l83C, CX-184C
See CX-l83C, CX-184C
Claim 7: The electrochemical cell of claim 1 wherein the cell contains less than 20 parts of mercury per million parts by weight of the cell.
Claim 3: The electrochemical cell of claim 2, wherein the cell contains less than 1 part of mercury per million parts by weight of the cell.
See CX-l83C, CX-184C
See CX-183C7 CX-184C
said zinc anode has a gel expansion of less than 25% after being discharged for 161 minutes to 15% depth of discharge at 2.88A.
[ ](see CX-7 12C at ITCEBC2 10742)
Claim 4: The electrochemical cell of claim 2, wherein the zinc anode has a gel expansion of less than 20%.
[ ](see CX-7 12C at ITCEBC2 10742)
Claim 5: The electrochemical cell of claim 4, wherein the zinc anode has a gel expansion of less than 15%.
Based on the above, all elements of Claims 1 through 7 of the ‘709 patent are contained in
[ 3 (see CX-712C at ITCEBC210742)
Zhenglong’s AAA and AA size batteries. Accordingly, Zhenglong’s M A and AA size batteries
literally possesses all elements of Claims 1 through 7 of the ‘709 patent. Inasmuch as Zhenglong’s
AAA and AA size batteries literally infringe Claims 1 through 7 of the ‘709 patent, it is not
-92-
necessary to reach separately the issue of whether they also infringe under the doctrine of
equivalents.
c. TigerHead
Tiger Head manufactures, or has manufactured alkaline batteries with the brand names 555,
Allflex and Tiger Head [ ]376 Tiger Head’s
“Tiger Head” brand batteries have been manufactured in sizes AA and AAA.377 Tiger Head’s Allflex
brand batteries have been manufactured in sizes AA and C.378 Tiger Head’s 555 brand batteries have
been manufactured in size AA.379
Tiger Head has sold for importation into the United States batteries comprising an alkaline
electrolyte, a cathode comprising manganese dioxide as an active anode component, and containing
less than one to fifty parts of mercury per million parts by weight of the cell since about November
2 1,2001 .380 In addition, Tiger Head has sold for importation into the United States batteries with
an anode [ ]j8* Tiger
Head has used the following zinc grade powders in the manufacture of its zero-mercury-added
alkaline batteries: [
1
376 See JX-58C, 77 1-2; See JX-59C, 7 2.
377 See JX-59C7 7 5.
378 See JX-59C7 7 6.
379 See JX-59C, 7 7.
380 See JX-59C, 77 20-26, CX-201C7 CX-202C.
381 See JX-59C, 7 27.
-93-
]382 Tiger Head uses zinc powder [ 1 to
manufacture its zero-mercury-added alkaline batteries.383
Specifically at issue are Tiger Head’s “Tiger Head” brand M A , AA and C size batteries;
Tiger Head’s “Allflex” brand AA and C size batteries; and Tiger Head’s “555” AA size batteries.
CIB 95. Tiger Head has stipulated that the batteries produced during discovery were samples of
Tiger Head’s zero-mercury-added alkaline batteries imported, exported, sold or offered for sale
importation into the United States, or sold or offered for sale after importation into the United States
since November 7 , 1995. Tiger Head has also stipulated that the zinc powder produced during
discovery were samples of zinc used in each of Tiger Head’s zero-mercury-added alkaline batteries
imported, exported, sold or offered for sale importation into the United States, or sold or offered for
sale after importation into the United States since November 7, 1 995.384
Tiger Head has stipulated to all claim elements, except the gel expansion values. Tiger Head
was designated as Respondent 1 0.385 Test arrays A & B were performed on Tiger Head, showing a
gel expansion characteristic ofI 1386
382 See JX-59C, 77 30-33.
383 See JX-59C, 7 35.
384 CX-l564C, 7 IV.
385 cx-717c.
386 CX-712C at ITCEBC210742-45.
-94-
Term (Claim 1 , unless otherwise noted) I Accused Products of Tiger Head
a cathode comprising manganese dioxide as an active cathode component, and
an anode gel comprised of zinc as the active anode component
An electrochemical cell comprising I See JX-59C, 7 4.
~~
See JX-59C7 7 21.
See JX-59C, 7 35 & ICP analysis on CX- 712C at ITCEBC210743-45.
an alkaline electrolyte I See JX-59C, 7 20.
Claim 5: The electrochemical cell of claim 4, wherein the zinc anode has a gel expansion of less than 15%.
[ ](see CX-712C at ITCEBC210745)
wherein the cell contains less than 50 parts of mercury per million parts by weight of the cell and
See JX-59C7 7 22.
Claim 6: The electrochemical cell of claim 1 wherein the cell contains less than 25 parts of mercury per million parts by weight of the cell.
Claim 7: The electrochemical cell of claim 1 wherein the cell contains less than 20 parts of mercury per million parts by weight of the cell.
Claim 2: The electrochemical cell of claim 1 , wherein the cell contains less than 2 parts of mercury per million parts by weight of the cell.
See JX-59C, 7 23.
See JX-59C7 7 24.
See JX-59C7 7 25.
Claim 3: The electrochemical cell of claim 2, wherein the cell contains less than 1 part of mercury per million parts by weight of the cell.
said zinc anode has a gel expansion of less than 25% after being discharged for 161 minutes to 15% depth of discharge at 2.88A.
See JX-59C7 7 26.
[ ] (see CX-712C at ITCEBC2 10745)
Claim 4: The electrochemical cell of claim 2, wherein the zinc anode has a gel expansion of less than 20%.
[ ] (see CX-712C at ITCEBC2 10745)
-95-
Based on the above, all elements of Claims 1 through 7 of the ‘709 patent are contained in
Tiger Head’s AAA, AA and C size batteries. Accordingly, Tiger Head’s AAA, AA and C size
batteries literally possesses all elements of Claims 1 through 7 of the ‘709 patent. Inasmuch as Tiger
Head’s AAA, AA and C size batteries literally infringe Claims 1 through 7 of the ‘709 patent, it is
not necessary to reach separately the issue of whether they also infringe under the doctrine of
equivalents.
d. Hi-Watt
Hi-Watt manufactures, or has manufactured C, D, 9V and 6V size alkaline batteries with the
[
]387 Hi-Watt [
13” Hi-Watt also
1389
Hi-Watt has sold for importation into the United States batteries comprising an alkaline
electrolyte, a cathode comprising manganese dioxide as an active anode component, and containing
less than one to fifty parts of mercury per million parts by weight of the cell since about 2000.390 In
addition, Hi-Watt has sold for importation into the United States batteries with an anode [ 1
387 See JX-54C7 17 2-4.
388 See JX-54C, 11 18-1 9.
389 See JX-54C, 7 20.
390 See JX-54CY 1726-32; CX-221C7 CX-222C.
-96-
]39’ Hi-Watt uses [
1 ]392 Hi-Watt uses zinc powder [
to manufacture its zero-mercury-added alkaline batteries.393
Specifically at issue are Hi-Watt’s AAA, AA, C, D, 6V and 9V size batteries. CIB 97. Hi-
Watt has stipulated that the batteries produced during discovery were samples of Hi-Watt’s zero-
mercury-added alkaline batteries imported, exported, sold or offered for sale importation into the
United States, or sold or offered for sale after importation into the United States since November 7,
1995. Hi-Watt has also stipulated that the zinc powder produced during discovery were samples of
zinc used in each of Hi-Watt’s zero-mercury-added alkaline batteries imported, exported, sold or
offered for sale importation into the United States, or sold or offered for sale after importation into
the United States since November 7, 1 995.394
Hi-Watt has stipulated to all claim elements, except the gel expansion values. Hi-Watt was
designated as Respondent 12.395 Test arrays A & B were performed on Hi-Watt, showing a gel
expansion characteristic of[ 1396
391 See JX-54CY 7 33.
392 See JX-54C, 7 34.
393 See JX-54C, 7 36.
394 CX-l564C, v. 395 cx-717c.
396 CX-7 12C at ITCEBC2 10749-52.
-97-
Term (Claim 1, unless otherwise noted)
An electrochemical cell comprising
an alkaline electrolyte
a cathode comprising manganese dioxide as an active cathode component, and
an anode gel comprised of zinc as the active anode component
wherein the cell contains less than 50 parts of mercury per million parts by weight of the cell and
Claim 6: The electrochemical cell of claim 1 wherein the cell contains less than 25 parts of mercury per million parts by weight of the cell.
~~ ~
Claim 7: The electrochemical cell of claim 1 wherein the cell contains less than 20 parts of mercury per million parts by weight of the cell.
Claim 2: The electrochemical cell of claim 1, wherein the cell contains less than 2 parts of mercury per million parts by weight of the cell.
Claim 3: The electrochemical cell of claim 2, wherein the cell contains less than 1 part of mercury per million parts by weight of the cell.
said zinc anode has a gel expansion of less than 25% after being discharged for 161 minutes to 15% depth of discharge at 2.88A.
Claim 4: The electrochemical cell of claim 2, wherein the zinc anode has a gel expansion of less than 20%.
Claim 5: The electrochemical cell of claim 4, wherein the zinc anode has a gel expansion of less than 15%.
Accused Products of Hi-Watt
See JX-54C7 7 6.
See JX-54C, 726.
See JX-54C, 7 27.
See JX-54C7 7 3 6 & ICP analysis on CX- 7 12C at ITCEBC2 10749-5 1.
See JX-54C, 7 28.
See JX-54C, 7 29.
See JX-54C, 7 30.
See JX-54C, 7 3 1.
See JX-54C, 7 32.
[ ] (see CX-712C at ITCEBC210752)
[ ] (see CX-712C at ITCEBC210752)
[ ] (see CX-712C at ITCEBC210752)
-98-
Based on the above, all elements of Claims 1 through 7 of the ‘709 patent are contained in
manufacture its zero-mercury-added alkaline batteries.403
Specifically at issue are Ningbo Baowang’s AAA, AA, C, D and 9V size batteries. CIB 99.
Ningbo Baowang has stipulated that the batteries produced during discovery were samples of Ningbo
Baowang’s zero-mercury-added alkaline batteries imported, exported, sold or offered for sale
importation into the United States, or sold or offered for sale after importation into the United States
since November 7,1995. Ningbo Baowang has also stipulated that the zinc powder produced during
discovery were samples of zinc used in each of Ningbo Baowang’s zero-mercury-added alkaline
batteries imported, exported, sold or offered for sale importation into the United States, or sold or
offered for sale after importation into the United States since November 7, 1995.404
Ningbo Baowang has stipulated to all claim elements, except the gel expansion values.
Ningbo Baowang was designated as Respondent 1 5.40s Test arrays A & B were performed on Ningbo
Baowang, showing a gel expansion characteristic of [ I 4 O 6
40’ See JX-5 1 C, 7 39.
402 See JX-SIC, 7 49.
403 See JX-5 1 C, 7 52.
404 CX-l564C, 7 VI.
405 CX-717C.
406 CX-712C at ITCEBC210754-57.
-100-
an alkaline electrolyte
a cathode comprising manganese dioxide as an active cathode component, and
an anode gel comprised of zinc as the active anode component
wherein the cell contains less than 50 parts of mercury per million parts by weight of the cell and
Claim 6: The electrochemical cell of claim 1 wherein the cell contains less than 25 parts of mercury per million parts by weight of the cell.
Claim 7: The electrochemical cell of claim 1 wherein the cell contains less than 20 parts of mercury per million parts by weight of the cell.
Claim 2: The electrochemical cell of claim 1, wherein the cell contains less than 2 parts of mercury per million parts by weight of the cell.
Claim 3: The electrochemical cell of claim 2, wherein the cell contains less than 1 part of mercury per million parts by weight of the cell.
said zinc anode has a gel expansion of less than 25% after being discharged for 161 minutes to 15% depth of discharge at 2.88A.
Claim 4: The electrochemical cell of claim 2, wherein the zinc anode has a gel expansion of less than 20%.
Claim 5: The electrochemical cell of claim 4, wherein the zinc anode has a gel expansion of less than 15%.
Accused Products of Ningbo Baowang
See JX-SIC, 7 3.
See JX-5 1 C, 7 32.
See JX-SIC, 733.
See JX-SIC, 7 52 & ICP analysis on CX- 712C at ITCEBC210754-56.
See JX-5 lC, 7 34.
See JX-SIC, 7 35.
See JX-5 1 C, 7 36.
See JX-5 1 C, 7 37.
See JX-5 1 C, 7 38.
[ ] (see CX-712C at ITCEBC210757)
[ ] (see CX-712C at ITCEBC210757)
[ 3 (see CX-712C at ITCEBC210757)
-101-
Based on the above, all elements of Claims 1 through 7 of the '709 patent are contained in
Ningbo Baowang 's AAA, AA, C, D and 9V size batteries. Accordingly, Ningbo Baowang 's AAA,
AA, C, D and 9V size batteries literally possesses all elements of Claims 1 through 7 of the '709
patent. Inasmuch as Ningbo Baowang 's AAA, AA, C, D and 9V size batteries literally infringe
Claims 1 through 7 of the '709 patent, it is not necessary to reach separately the issue of whether they
also infringe under the doctrine of equivalents.
f. Sichuan Changhong
Sichuan Changhong has sold for importation into the United States consumer electronic
devices, some of which include batteries comprising an alkaline electrolyte, a cathode comprising
manganese dioxide as an active anode component, and containing less than one to fifty parts of
mercury per million parts by weight of the cell since January 2 1, 2000.407 In addition, Sichuan
Changhong has sold for importation into the United States consumer electronic devices, some of
which include batteries with an anode [
I 4 O 8 Sichuan Changhong has used zinc powder[
]in the manufacture of
its zero-mercury-added alkaline batteries.409 Sichuan Changhong uses zinc powder [
] to manufacture its zero-mercury-added alkaline batterie~.~" Sichuan
Changhong has[ I
407 See JX-56C, 77 13-19; CX-383C; CX-384C; CX-676C; CX-727C; CX-l534C.
408 See JX-56C7 7 20.
409 See JX-56C, 77 21-22.
410 See JX-56C, 7 25.
-102-
Specifically at issue are Sichuan Changhong’s “Black” AAA size batteries and “Gold” AAA
and AA size batteries. CIB 82. Sichuan Changhong has stipulated that the batteries produced during
discovery were samples of Sichuan Changhong’s zero-mercury-added alkaline batteries imported,
exported, sold or offered for sale importation into the United States, or sold or offered for sale after
importation into the United States since November 7,1995. Sichuan Changhong has also stipulated
that the zinc powder produced during discovery were samples of zinc used in each of Sichuan
Changhong’s zero-mercury-added alkaline batteries imported, exported, sold or offered for sale
importation into the United States, or sold or offered for sale after importation into the United States
since November 7 , 1 995.412
Sichuan Changhong has stipulated to all claim elements, except the gel expansion values.
Sichuan Changhong was designated as Respondent 17.413 Test arrays A & B were performed on
Sichuan Changhong, showing a gel expansion characteristic of [ ] 414
1 Term (Claim 1, unless otherwise noted) 1 Accused Products of Sichuan Changhong I I An electrochemical cell comprising I See JX-56C, 7 3. I I an alkaline electrolyte I See JX-56C, 7 13. I I a cathode comprising manganese dioxide as I See JX-56C, 7 14. I I an active cathode component, and I I
4’1 See JX-56C, 7 6.
412 CX-l564C, 7 VII.
4’3 cx-717c.
414 CX-712C at ITCEBC210759-61.
-103-
I an anode gel comprised of zinc as the active anode component
wherein the cell contains less than 50 parts of mercury per million parts by weight of the cell and
Claim 6: The electrochemical cell of claim 1 wherein the cell contains less than 25 parts of mercury per million parts by weight of the cell.
Claim 7: The electrochemical cell of claim 1 wherein the cell contains less than 20 parts of mercury per million
See JX-56C, fT 25 & ICP analysis on CX- 71 2C at ITCEBC2 10759-6 1.
See JX-56C7 7 15.
See JX-56C7 7 16.
See JX-56C7 7 17.
parts by weight of the cell. I Claim 2: The electrochemical cell of claim 1 , wherein the cell contains less than 2 parts of mercury per million parts by weight of the cell.
See JX-56C7 7 18.
Claim 3: The electrochemical cell of claim 2, wherein the cell contains less than 1 part of mercury per million parts by weight of the cell.
said zinc anode has a gel expansion of less than 25% after being discharged for 161 minutes to 15% depth of discharge at 2.88A.
Claim 4: The electrochemical cell of claim 2, wherein the zinc anode has a gel expansion of less than 20%.
Claim 5: The electrochemical cell of claim 4, wherein the zinc anode has a gel expansion of less than 15%.
Based on the above, all elements of Claims 1 through 7 of the '709 patent are contained in
See JX-56C, 7 19.
[ ](see CX-712C at ITCEBC210761)
[ ] (see CX-712C at ITCEBC210761)
[ ] (see CX-7 12C at ITCEBC2 1076 1)
Sichuan Changhong 's AAA and AA size batteries. Accordingly, Sichuan Changhong 's AAA and
AA size batteries literally possesses all elements of Claims 1 through 7 of the '709 patent. Inasmuch
as Sichuan Changhong 's AAA and AA size batteries literally infringe Claims 1 through 7 of the
- 104-
‘709 patent, it is not necessary to reach separately the issue of whether they also infringe under the
doctrine of equivalents.
g. 3-Turn
Three-Turn manufactures, or has manufactured alkaline batteries [
I 4 l 5 Prior to September
2003,
1 416
Three-Turn has sold for importation into the United States batteries comprising an alkaline
electrolyte, a cathode comprising manganese dioxide as an active anode component, and containing
less than one to fifty parts of mercury per million parts by weight of the cell since the year 2000.417
In addition, 3-Turn has sold for importation into the United States batteries with an anode [
] 418 Three-Turn has [
3 419 Three-turn uses zinc powder [ ] to manufacture
~~~~~
415 See JX-52C, 77 1-2.
416 See JX-52C, 7 21.
417 See JX-52C, 11 23-29; CX-43 lC, CX-432C, CX-439C7 CX-44OC.
418 See JX-52C, 7 30.
419 See JX-52C, 1 7 3 1-34.
-105-
its zero-mercury-added alkaline batteries.420
Specifically at issue are 3-Turn’s AAA, AA, C, D and 9V size batteries. CIB 109. Three-
Turn has stipulated that the batteries produced during discovery were samples of 3-Turn ’s zero-
mercury-added alkaline batteries imported, exported, sold or offered for sale importation into the
United States, or sold or offered for sale after importation into the United States since November 7,
1995. Three-Turn has also stipulated that the zinc powder produced during discovery were samples
of zinc used in each of 3-Turn’s zero-mercury-added alkaline batteries imported, exported, sold or
offered for sale importation into the United States, or sold or offered for sale after importation into
the United States since November 7, 1995.421
Three-Turn has stipulated to all claim elements, except the gel expansion values. Three-Turn
was designated as Respondent 21 .422 Test arrays A & B were performed on 3-Turn, showing a gel
expansion characteristic of [ 1423
Term (Claim 1 , unless otherwise noted)
An electrochemical cell comprising
an alkaline electrolyte
a cathode comprising manganese dioxide as an active cathode component, and
an anode gel comprised of zinc as the active anode component
420 See JX-52C, 7 36.
421 CX-l564C, 7 VIII.
422 c x - 7 17c.
423 CX-712C at ITCEBC210767-70.
Accused Products of 3-Turn I See JX-52C7 7 3.
See JX-52C7 7 23.
See JX-52C7 724.
See JX-52C, 7 36 & ICP analysis on CX- 712C at ITCEBC210767-70.
-106-
wherein the cell contains less than 50 parts of mercury per million parts by weight of the cell and
Claim 4: The electrochemical cell of claim 2, wherein the zinc anode has a gel expansion of less than 20%.
Claim 5: The electrochemical cell of claim 4, wherein the zinc anode has a gel expansion of less than 15%.
Claim 6: The electrochemical cell of claim 1 wherein the cell contains less than 25 parts of mercury per million parts by weight of the cell.
~~~
[ ] (see CX-712C at ITCEBC210770)
[ ] (see CX-712C at ITCEBC210770)
Claim 7: The electrochemical cell of claim 1 wherein the cell contains less than 20 parts of mercury per million parts by weight of the cell.
~ ~~
Claim 2: The electrochemical cell of claim 1, wherein the cell contains less than 2 parts of mercury per million parts by weight of the cell.
~ ~~~
Claim 3: The electrochemical cell of claim 2, wherein the cell contains less than 1 part of mercury per million parts by weight of the cell.
~~ ____ ____
said zinc anode has a gel expansion of less than 25% after being discharged for 16 1 minutes to 15% depth of discharge at 2.88A.
See JX-52C, 7 25.
~
See JX-52C, 7 26.
See JX-52C, 7 27.
See JX-52C, 7 28.
See JX-52C, 7 29.
[ 3 (see CX-712C at ITCEBC2 10770)
Based on the above, all elements of Claims 1 through 7 of the '709 patent are contained 3-
Turn 's AAA, AA, C, D and 9V size batteries. Accordingly, 3-Turn 's AAA, AA, C, D and 9V size
batteries literally possesses all elements of Claims 1 through 7 of the '709 patent. Inasmuch as 3-
Turn 's AAA, AA, C, D and 9V size batteries literally infringe Claims 1 through 7 ofthe '709 patent,
it is not necessary to reach separately the issue of whether they also infringe under the doctrine of
-107-
equivalents.
h. ZYNingbo
ZY Ningbo manufactures, or has manufactured alkaline batteries [
3 424 ZY Ningbo has [
1 425
ZY Ningbo has sold for importation into the United States batteries comprising an alkaline
electrolyte, a cathode comprising manganese dioxide as an active anode component, and containing
less than one to fifty parts of mercury per million parts by weight of the cell since about 1 996.426 In
addition, ZY Ningbo has sold for importation into the United States C and D size batteries with an
anode [ ]427 ZY Ningbo
has used the following zinc grade powders in the manufacture of its zero-mercury-added alkaline
] to manufacture its zero-mercury-added alkaline batteries.429
Term (Claim 1, unless otherwise noted)
An electrochemical cell comprising
an alkaline electrolyte
Specifically at issue are ZY Ningbo’s AAA, AA, C, D and 9V size batteries. CIB 1 1 1. ZY
Accused Products of ZY Ningbo
See JX-57C, 11 3-4.
See JX-57C, 7 29.
Ningbo has stipulated that the batteries produced during discovery were samples of ZY Ningbo’s
a cathode comprising manganese dioxide as an active cathode component, and
an anode gel comprised of zinc as the active anode component
zero-mercury-added alkaline batteries imported, exported, sold or offered for sale importation into
See JX-57C, 7 30.
See JX-57C, 7 42 & ICP analysis on CX- 7 12C at ITCEBC2 1077 1-73.
the United States, or sold or offered for sale after importation into the United States since November
7, 1995. ZY Ningbo has also stipulated that the zinc powder produced during discovery were
samples of zinc used in each of ZY Ningbo’s zero-mercury-added alkaline batteries imported,
exported, sold or offered for sale importation into the United States, or sold or offered for sale after
importation into the United States since November 7, 1 995.430
ZY Ningbo has stipulated to all claim elements, except the gel expansion values. ZY Ningbo
was designated as Respondent 22.431 Test arrays A & B were performed on ZY Ningbo, showing a
gel expansion characteristic of [ 1 432
429 See JX-57C, 7 42.
430 CX- 1564C, 1 IX.
431 cx-717c.
432 CX-7 12C at ITCEBC2 10770-73.
- 109-
wherein the cell contains less than 50 parts of mercury per million parts by weight of the cell and
Claim 6: The electrochemical cell of claim 1 wherein the cell contains less than 25 parts of mercury per million parts by weight of the cell.
Claim 7: The electrochemical cell of claim 1 wherein the cell contains less than 20 parts of mercury per million parts by weight of the cell.
~ See JX-57C, 7 31.
Claim 2: The electrochemical cell of claim 1, wherein the cell contains less than 2 parts of mercury per million parts by weight of the cell.
said zinc anode has a gel expansion of less than 25% after being discharged for 161 minutes to 15% depth of discharge at 2.88A.
Claim 4: The electrochemical cell of claim 2, wherein the zinc anode has a gel expansion of less than 20%.
Claim 5: The electrochemical cell of claim 4, wherein the zinc anode has a gel expansion of less than 15%.
~
[ ](see CX-712C at ITCEBC210773)
[ 3 (see CX-712C at ITCEBC210773)
[ ] (see CX-712C at ITCEBC210773)
See JX-57C, fi 32.
See JX-57C, fi 33.
See JX-57C, fi 34.
Claim 3: The electrochemical cell of claim 2, wherein the cell contains less than 1 part of mercury per million parts by weight of the cell.
See JX-57C, 7 35.
Based on the above, all elements of Claims 1 through 7 of the ‘709 patent are contained in
ZY Ningbo’s M A , AA, C, D and 9V size batteries. Accordingly, ZY Ningbo’s AAA, AA, C, D and
9V size batteries literally possesses all elements of Claims 1 through 7 of the ‘709 patent. Inasmuch
as ZY Ningbo’s AAA, AA, C, D and 9V size batteries literally infringe Claims 1 through 7 of the
‘709 patent, it is not necessary to reach separately the issue of whether they also infringe under the
-1 10-
doctrine of equivalents.
1. PT
PT manufactures, or has manufactured alkaline batteries with the [
1434
Specifically at issue are PT’s AAA and AA size batteries. CIB 102. PT has stipulated that
the batteries produced during discovery were samples of PT’s zero-mercury-added alkaline batteries
imported, exported, sold or offered for sale importation into the United States, or sold or offered for
sale after importation into the United States since [ ] PT has also stipulated that
the zinc powder produced during discovery were samples of zinc used in each of PT’s zero-mercury-
added alkaline batteries imported, exported, sold or offered for sale importation into the United
States, or sold or offered for sale after importation into the United States since [ 1435
PT has admitted that the batteries produced during discovery have an alkaline electrolyte, a cathode
comprising manganese dioxide as an active anode component, and an anode with zinc as the active
component.436 PT also produced analyses of its alkaline battery products which show that its
433 See JX-62CY 77 1-2.
434 See JX-62C, 7 10.
435 JX-82C.
436 cx-344c.
-1 11-
batteries have less than one part per million of mercury by weight of the cell.437
PT was designated as Respondent 1 6.438 Test arrays A & B were performed on PT, showing
a gel expansion characteristic of [ 1 439
I Term (Claim 1, unless otherwise noted)
1 An electrochemical cell comprising
I an alkaline electrolyte
a cathode comprising manganese dioxide as an active cathode component, and
an anode gel comprised of zinc as the active anode component
wherein the cell contains less than 50 parts of mercury per million parts by weight of the cell and
Claim 6: The electrochemical cell of claim 1 wherein the cell contains less than 25 parts of mercury per million parts by weight of the cell.
Claim 7: The electrochemical cell of claim 1 wherein the cell contains less than 20 parts of mercury per million parts by weight of the cell.
Claim 2: The electrochemical cell of claim 1, wherein the cell contains less than 2 parts of mercury per million parts by weight of the cell.
Accused Products of PT ~~
See JX-62C, TI 3. ~
See CX-344C. ~~
See CX-344C.
See CX-344C.
See CX-374C.
See CX-374C.
See CX-374C.
See CX-374C.
437 CX-374C, O’Keefe, Tr. 1569-70.
43s c x - 7 17c.
439 CX-712C at ITCEBC210757-59.
-1 12-
Claim 3: The electrochemical cell of claim 2, wherein the cell contains less than 1 part of mercury per million parts by weight of the cell.
I See CX-374~.
____
1 said zinc anode has a gel expansion of less than 25% after being discharged for 161 minutes to 15% depth of discharge at 2.88A.
Claim 4: The electrochemical cell of claim 2, wherein the zinc anode has a gel expansion of less than 20%.
Claim 5: The electrochemical cell of claim 4, wherein the zinc anode has a gel expansion of less than 15%.
[ 3 (see CX-7 12C at ITCEBC2 10759)
[ ] (see CX-712C at ITCEBC210759)
~
[ ] (see CX-712C at ITCEBC210759)
Based on the above, all elements of Claims 1 through 7 of the ‘709 patent are contained in
PT’s AAA and AA size batteries. Accordingly, PT’s AAA and AA size batteries literally possesses
all elements of Claims 1 through 7 of the ‘709 patent. Inasmuch as PT’s AAA and AA size batteries
literally infringe Claims 1 through 7 of the ‘709 patent, it is not necessary to reach separately the
issue of whether they also infringe under the doctrine of equivalents.
j. GP
Although GP was terminated from this Investigation by Order No. 125 (March 3,2004), [
1
GP was designated as Respondent 6.440 Test arrays A & B were performed on GP, showing
a gel expansion characteristic of [ ]441 In addition, Dr. O’Keefe testified that[
440 CX-717C.
441 CX-712C at ITCEBC210733-38.
-1 13-
3 specifically that its an electrochemical cell based on OCV; that there’s an
alkaline electrolyte based on pH; that there’s a cathode comprising manganese dioxide as an active
cathode component based on XRD; and that there’s an anode gel comprised of zinc as the active
anode component based on ICP.442
Term (Claim 1, unless otherwise noted)
An electrochemical cell comprising
an alkaline electrolyte
a cathode comprising manganese dioxide as an active cathode component, and
an anode gel comprised of zinc as the active anode component
wherein the cell contains less than 50 parts of mercury per million parts by weight of the cell and
Claim 6: The electrochemical cell of claim 1 wherein the cell contains less than 25 parts of mercury per million parts by weight of the cell.
Claim 7: The electrochemical cell of claim 1 wherein the cell contains less than 20 parts of mercury per million parts by weight of the cell.
Claim 2: The electrochemical cell of claim 1, wherein the cell contains less than 2 parts of mercury per million parts by weight of the cell.
Claim 3: The electrochemical cell of claim 2, wherein the cell contains less than 1 part of mercury per million parts by weight of the cell.
Accused Products of GP
See OCV on CX-712C at ITCEBC210734
See pH on CX-712C at ITCEBC210734
See XRD on CX-712C at ITCEBC210734-37
See ICP CX-712C at ITCEBC210733-38
CX-712C at ITCEBC210733
CX-712C at ITCEBC210733
CX-712C at ITCEBC2 10733
CX-7 12C at ITCEBC2 10733
CX-7 12C at ITCEBC2 10733
442 O’Keefe, Tr. 1501-03; CX-712C at ITCEBC210733-38.
-1 14-
said zinc anode has a gel expansion of less than 25% after being discharged for 16 1 minutes to 15% depth of discharge at 2.88A.
Claim 4: The electrochemical cell of claim 2, wherein the zinc anode has a gel expansion of less than 20%.
[ 3 (see CX-712C at ITCEBC210738)
[ ] (see CX-712C at ITCEBC210738)
Claim 5: The electrochemical cell of claim 4, wherein the zinc anode has a gel expansion of less than 15%.
[ 1 (see CX-712C at ITCEBC210738)
~~ ~
4. Resellers
a. Golden Power
Prior to 1998, Golden Power [
]443 Since
1998, Golden Power [
1 444
Golden Power has sold for importation into the United States batteries comprising an alkaline
electrolyte, a cathode comprising manganese dioxide as an active anode component, and containing
less than one to fifty parts of mercury per million parts by weight of the cell since about February
1997.445 In addition, Golden Power has sold for importation into the United States batteries with an
anode [ 1 446
Specifically at issue are Golden Power’s AAA, AA, C, D and 9V size batteries. CIB 90.
443 See JX-55C, 77 3-4.
444 See JX-55C, 7 6.
445 See JX-55C, 77 8-14; CX-87C; CX-103C.
446 See JX-55C, 7 15.
-1 15-
Golden Power has stipulated that the batteries produced during discovery were samples of Golden
Power’s zero-mercury-added alkaline batteries imported, exported, sold or offered for sale
importation into the United States, or sold or offered for sale after importation into the United States
since November 7, 1995. Golden Power has also stipulated that the zinc powder produced during
discovery were samples of zinc used in each of Golden Power’s zero-mercury-added alkaline
batteries imported, exported, sold or offered for sale importation into the United States, or sold or
offered for sale after importation into the United States since November 7, 1995.447
Golden Power has stipulated to all claim elements, except the gel expansion values. Golden
Power was designated as Respondent 8.448 Test arrays B, C & D were performed on Golden Power,
an alkaline electrolyte
a cathode comprising manganese dioxide as an active cathode component, and
showing a gel expansion characteristic of [
3 449
See JX-55C, 7 8. See JX-55C7 7 9.
1 Term (Claim 1 , unless otherwise noted) 1 Accused Products of Golden Power
an anode gel comprised of zinc as the active anode component
wherein the cell contains less than 50 parts of mercury per million parts by weight of the cell and
I An electrochemical cell comprising I See JX-55C, 7 1.
See JX-55C7 7 15 & ICP analysis on CX- 712C at ITCEBC210739-40.
See JX-55C7 7 10.
447 CX-l564C, 7 11.
448 c x - 7 17c.
449 CX-712C at ITCEBC2 10739-40.
-1 16-
~
Claim 6: The electrochemical cell of claim 1 wherein the cell contains less than 25 parts of mercury per million parts by weight of the cell.
Claim 7: The electrochemical cell of claim 1 wherein the cell contains less than 20 parts of mercury per million parts by weight of the cell.
Claim 2: The electrochemical cell of claim 1, wherein the cell contains less than 2 parts of mercury per million parts by weight of the cell.
Claim 3: The electrochemical cell of claim 2, wherein the cell contains less than 1 part of mercury per million parts by weight of the cell.
1 See JX-55C, 7 12.
said zinc anode has a gel expansion of less than 25% after being discharged for 16 1 minutes to 15% depth of discharge at 2.88A.
Claim 5: The electrochemical cell of claim 4, wherein the zinc anode has a gel expansion of less than 15%.
See JX-55C, 7 11.
[ ITCEBC210739-40)
] (see CX-7 12C at
See JX-55C, 7 13.
See JX-55C, 7 14.
[ ] (see CX-712C at ITCEBC2 10739-40)
Claim 4: The electrochemical cell of claim 2, wherein the zinc anode has a gel expansion of less than 20%.
[ ] (see CX-712C at ITCEBC2 10739-40)
Golden Power’s AAA, AA, Cy D and 9V size batteries. Accordingly, Golden Power’s AAA, AA,
C, D and 9V size batteries literally possesses all elements of Claims 1 through 7 of the ‘709 patent.
Inasmuch as Golden Power’s AAA, AA, C, D and 9V size batteries literally infringe Claims 1
through 7 of the ‘709 patent, it is not necessary to reach separately the issue of whether they also
infringe under the doctrine of equivalents.
-1 17-
b. ChungPak
Chung Pak manufactures, or has manufactured, alkaline batteries with the brand name Vinnic
since about July 1 998.4s0 Chung Pak has purchased zero-mercury-added alkaline batteries from the
following companies: [ 1 ~ ~ 1
Chung Pak warrants that all 9V size alkaline batteries sold by Chung Pak for importation into
the United States have added mercury and specifically, that those 9V size alkaline batteries [
] 452 EBC, relying on this
warranty, acknowledges that Chung Pak’s 9V batteries do not infringe any claims of the ‘709 patent
and will not pursue any relief in this investigation related to Chung Pak’s 9V batteries.453
Specifically at issue are Chung Pak’s AAA and AA size batteries. CIB 84. Chung Pak has
stipulated that the batteries produced during discovery were samples of Chung Pak ’s zero-mercury-
added alkaline batteries imported, exported, sold or offered for sale importation into the United
States, or sold or offered for sale after importation into the United States since November 7, 1995.
Chung Pak has also stipulated that the zinc powder produced during discovery were samples of zinc
used in each of Chung Pak ’s zero-mercury-added alkaline batteries imported, exported, sold or
offered for sale importation into the United States, or sold or offered for sale after importation into
the United States since November 7, 1 995.454 Chung Pak has produced specifications which show
450 See JX-63C7 7 1.
451 See JX-64CY 78.
452 See JX-63C, 76 .
453 See JX-63C7 7 7.
454 JX-83C.
-1 18-
that its batteries have an alkaline electrolyte, a cathode comprising manganese dioxide as an active
anode component, an anode with zinc as the active component, and less than one part per million
Term (Claim 1, unless otherwise noted)
An electrochemical cell comprising
an alkaline electrolyte
a cathode comprising manganese dioxide as an active cathode component, and
of mercury by weight of the cell.4s5
Chung Pak has stipulated to all claim elements, except the gel expansion values. Chung Pak
was designated as Respondent 2.4s6 Test array C was performed on Chung Pak, which did not include
any gel expansion testing.457 Gel expansion testing was performed, however, on Chung Pak’s
[
Accused Products of Chung Pak
See JX-63C, 7 1.
CX-24C through CX-27C, CX-34C, CX-35C, JX-65C
CX-24C through CX-27C, CX-34C, CX-332, JX-65C
1
In further support, Complainant’s initial testing showed that [ 3 purchased Vinnic
brand batteries from Chung Pak.4s8 Dr. O’Keefe tested Chung Pak’s Vinnic AA size batteries (LOT
264a), which had a gel expansion characteristic of [ 3 .4s9
455 CX-24C through CX-27C, CX-34C, CX-35C, JX-632, O’Keefe, Tr. 1585-87.
456 cx-717c.
457 CX-7 12C at ITCEBC2 10729.
-1 19-
an anode gel comprised of zinc as the active anode component
CX-24C through CX-27C, CX-34C, CX-35C, JX-65C
wherein the cell contains less than 50 parts of
cell and mercury per million parts by weight of the
CX-24C through CX-27C, CX-34C, CX-35C, JX-65C
Claim 6: The electrochemical cell of claim 1 wherein the cell contains less than 25 parts of mercury per million parts by weight of the cell.
CX-24C through CX-27C7 CX-34C, CX-35C, JX-65C
Claim 7: The electrochemical cell of claim 1 wherein the cell contains less than 20 parts of mercury per million parts by weight of the cell.
CX-24C through CX-27C, CX-34C, CX-35C, JX-65C
~
Claim 2: The electrochemical cell of claim 1, wherein the cell contains less than 2 parts of mercury per million parts by weight of the cell.
CX-24C through CX-27C, CX-34C7 CX-35C, JX-65C
~
Claim 3: The electrochemical cell of claim 2, wherein the cell contains less than 1 part of mercury per million parts by weight of the cell.
CX-24C through CX-27C, CX-34C, CX-35C, JX-65C
said zinc anode has a gel expansion of less than 25% after being discharged for 16 1 minutes to 15% depth of discharge at 2.88A.
Claim 4: The electrochemical cell of claim 2, wherein the zinc anode has a gel expansion of less than 20%.
[
] (see RX-2701.8(F))
[
] (see RX- 2701.8(F))
Claim 5: The electrochemical cell of claim 4, wherein the zinc anode has a gel expansion of less than 15%.
[
] (see Rx-2701.8(F))
Chung Pak ’s AAA and AA size batteries. Accordingly, Chung Pak ’s AAA and AA size batteries
literally possesses all elements of Claims 1 through 7 of the ‘709 patent. Inasmuch as Chung Pak ’s
AAA and AA size batteries literally infringe Claims 1 through 7 of the ‘709 patent, it is not
necessary to reach separately the issue of whether they also infringe under the doctrine of
equivalents.
C. Winner
Winner’s President, Brent Meikle, and Executive Vice President, David Percy participated
in the 2003 Consumer Electronics Winner distributed brochures at the electronics show
advertising rechargeable alkaline batteries under the brand name Juice Refresh.461 Winner advertised
Juice Reresh rechargeable alkaline batteries on the internet at www.juicebattery.~om.~~~ On May 22,
2003, Winner entered into a purchase order with Pure Energy Battery, Inc. Of Canada for the
purchase of rechargeable alkaline batteries.463 On November 13,2003, Pure Energy Battery, Inc.
shipped rechargeable alkaline batteries pursuant to the May 22,2003 purchase order from Canada
to Winner.464 Winner’s Juice Refresh rechargeable batteries are manufactured by Pure Energy
Battery, Inc.465
Specifically at issue are Winner’s AAA and AA size batteries. CIB 108. Winner has
460 See JX-61C, 77 10.
461 See JX-61C, 717.
462 See JX-61C, 7 17.
463 See JX-6 1 C, 7 3.
464 See JX-6 1 C, 7 5.
465 See JX-61C7 7 18.
-121-
stipulated that the batteries produced during discovery were samples of Winner’s zero-mercury-
a cathode comprising manganese dioxide as an active cathode component, and
added alkaline batteries imported, exported, sold or offered for sale importation into the United
States, or sold or offered for sale after importation into the United States since November 7, 1995.
Winner has also stipulated that the zinc powder produced during discovery were samples of zinc
used in each of Winner’s zero-mercury-added alkaline batteries imported, exported, sold or offered
for sale importation into the United States, or sold or offered for sale after importation into the
United States since November 7, 1995.466
Winner was designated as Respondent 20.467 Test array D was performed on Winner,
showing a gel expansion characteristic of 16.7% ( M A ) & 18.1 % (AA).468 In addition, Dr. O’Keefe
testified that all other claim 1 elements were met, specifically that its an electrochemical cell based
on OCV; that there’s an alkaline electrolyte based on pH; that there’s a cathode comprising
manganese dioxide as an active cathode component based on XRD; that there’s an anode gel
comprised of zinc as the active anode component based on ICP, and that all batteries had less than
one part per million of mercury by weight of the cell.469
See XRD on CX-712C at ITCEBC210767
I Term (Claim 1, unless otherwise noted) 1 Accused Products of Winner I I An electrochemical cell comprising I See OCV on CX-712C at ITCEBC210766 1 I an alkaline electrolyte I See pH on CX-712C at ITCEBC210766 1
466 CX-l564C.
467 c x - 7 17c.
468 CX-712C at ITCEBC210765-67.
469 O’Keefe, Tr. 1637-38; CX-712C at ITCEBC210765-67.
- 122-
an anode gel comprised of zinc as the active anode component
See ICP on CX-712C at ITCEBC210766
wherein the cell contains less than 50 parts of mercury per million parts by weight of the cell and
parts by weight of the cell. I
See CX-712C at ITCEBC210766
Claim 6: The electrochemical cell of claim 1 wherein the cell contains less than 25 parts of mercury per million parts by weight of the cell.
Claim 7: The electrochemical cell of claim 1 wherein the cell contains less than 20 parts of mercury per million parts by weight of the cell.
Claim 2: The electrochemical cell of claim 1, wherein the cell contains less than 2 parts of mercury per million parts by weight of the cell.
Claim 3: The electrochemical cell of claim 2, wherein the cell contains less than 1 part of mercury per million
See CX-712C at ITCEBC210766
See CX-712C at ITCEBC210766
See CX-712C at ITCEBC210766
See CX-712C at ITCEBC210766
said zinc anode has a gel expansion of less than 25% after being discharged for 16 1 minutes to 15% depth of discharge at 2.88A.
Based on the above, all elements of Claims 1, 2, 3, 4, 6 and 7 of the ‘709 patent are
contained in Winner’s AAA and AA size batteries. Accordingly, Winner’s AAA and AA size
batteries literally possess all elements of Claims 1,2, 3 ,4 ,6 and 7 of the ‘709 patent. Inasmuch as
Winner’s AAA and AA size batteries literally infringe Claims 1,2,3,4,6 and 7 of the ‘709 patent,
-123-
16.7% and 18.1% (see CX-712C at ITCEBC2 10766)
Claim 4: The electrochemical cell of claim 2, wherein the zinc anode has a gel expansion of less than 20%.
16.7% and 18.1% (see CX-712C at ITCEBC2 10766)
Claim 5: The electrochemical cell of claim 4, wherein the zinc anode has a gel expansion of less than 15%.
16.7% and 18.1% (see CX-712C at ITCEBC2 10766)
it is not necessary to reach separately the issue of whether they also infringe under the doctrine of
equivalents.
Based on the above, all elements of Claim 5 of the ‘709 patent are not contained in Winner’s
AAA and AA size batteries. Accordingly, Winner’s AAA and AA size batteries do not literally
possess all elements of Claim 5 of the ‘709 patent and therefore, do not infringe the ‘709 patent.
d. Mazel
Mazel purchases zero-mercury-added alkaline batteries from [
3 470 Mazel has admitted that its batteries contain less than 0.025 parts per
million of mercury by weight of the cell.471
Specifically at issue are Mazel’s AA, C, D and 9V size batteries. CIB 104. Mazel has
stipulated that the batteries produced during discovery were samples of Mazel’ s zero-mercury-added
alkaline batteries imported, exported, sold or offered for sale importation into the United States, or
sold or offered for sale after importation into the United States since November 7, 1 995.472
Mazel was designated as Respondent 1 8.473 Test array D was performed on Mazel, showing
a gel expansion characteristic of 77.7% (AAA), 5.6% (AA), 11.0% (for C), 12.0% (D), and 9.4%
470 See JX-67C, 7 8.
471 CX-297C. The Staff notes that Dr. O’Keefe’s test shows that, for Mazel’s AA batteries, there is >I ppm of mercury by weight of the cell (SIB 45,47), and therefore, Mazel’s AA batteries do not infiinge claim 3 of the ‘709 patent. Mazel, however, has already admitted this claim element, and Mazel’s AA batteries are deemed to infringe the ‘709 patent.
472 JX-96C.
473 CX-717C.
- 124-
(9V).474 In addition, Dr. O’Keefe testified that all other claim 1 elements were met, specifically that
its an electrochemical cell based on OCV; that there’s an alkaline electrolyte based on pH; that
there’s a cathode comprising manganese dioxide as an active cathode component based on XRD;
and that there’s an anode gel comprised of zinc as the active anode component based on
In further support, Complainant’s initial testing showed that [ ] purchased Polaroid
brand batteries from Mazel that were offered for sale in the United States.476 Dr. O’Keefe tested
Mazel’s “Polaroid” C size batteries (LOT 208a), which had a gel expansion of 2.41%.477
Term (Claim 1, unless otherwise noted)
An electrochemical cell comprising
an alkaline electrolyte
a cathode comprising manganese dioxide as an active cathode component, and
an anode gel comprised of zinc as the active anode component
wherein the cell contains less than 50 parts of mercury per million parts by weight of the cell and
Claim 6: The electrochemical cell of claim 1 wherein the cell contains less than 25 parts of mercury per million parts by weight of the cell.
Accused Products of Mazel
See JX-67C, fl7 1-2.
See pH on CX-712C at ITCEBC210762
See XRD on CX-7 12C at ITCEBC2 10762
~~ ~~
See ICP on CX-712C at ITCEBC210761
See CX-297C.
See CX-297C.
474 CX-712C at ITCEBC210761-62.
475 O’Keefe, Tr. 1625; CX-7 12C at ITCEBC2 1076 1-62.
476 Anderson, Tr. 2408-09; CX-478(P)C; CX-478(Q)C.
477 O’Keefe, Tr. 1472-73, 1528-30; RX-2701.8(F).
-125-
Claim 7: The electrochemical cell of claim 1 wherein the cell contains less than 20 parts of mercury per million parts by weight of the cell.
Claim 2: The electrochemical cell of claim 1, wherein the cell contains less than 2 parts of mercury per million parts by weight of the cell.
Claim 3: The electrochemical cell of claim 2, wherein the cell contains less than 1 part of mercury per million parts by weight of the cell.
said zinc anode has a gel expansion of less than 25% after being discharged for 161 minutes to 15% depth of discharge at 2.88A.
Claim 4: The electrochemical cell of claim 2, wherein the zinc anode has a gel expansion of less than 20%.
Claim 5: The electrochemical cell of claim 4, wherein the zinc anode has a gel expansion of less than 15%.
See CX-297C.
See CX-297C.
See CX-297C, v’I[ 19-23.
77.7% for AAA 5.6% for AA 11.0% for C 12.0% for D 9.4% for 9 v (see CX-7 12C at ITCEBC2 10762) 2.41% for Initial Testing (see RX-2701.8(F))
77.7% for AAA 5.6% for AA 1 1 .O% for C 12.0% for D 9.4% for 9V (see CX-7 12C at ITCEBC2 10762) 2.41% for Initial Testing (see RX-2701.8(F))
77.7% for AAA 5.6% for AA 1 1 .O% for C 12.0% for D 9.4% for 9V (see CX-7 12C at ITCEBC2 10762) 2.41% for Initial Testing (see RX-2701.8(F))
Based on the above, all elements of Claims 1 through 7 of the ‘709 patent are contained in
Mazel’s AA, C, D and 9V size batteries. Accordingly, Mazel’s AA, C, D and 9V size batteries
literally possesses all elements of Claims 1 through 7 of the ‘709 patent. Inasmuch as Mazel’s AA,
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C, D and 9V size batteries literally infringe Claims 1 through 7 of the ‘709 patent, it is not necessary
to reach separately the issue of whether they also infringe under the doctrine of equivalents.
Based on the above, all elements of Claims 1 through 7 of the ‘709 patent are not contained
in Mazel’s AAA size batteries.478 Accordingly, Mazel’s AAA size batteries do not literally possess
all elements of Claims 1 through 7 of the ‘709 patent and therefore, do not infringe the ‘709 patent.
e. Universal
Universal purchases zero-mercury-added alkaline batteries from [
1 ~ 7 ~
Universal has also admitted that its batteries contain less than 0.025 parts per million of mercury by
weight of the cell.480
Specifically at issue are Universal’s AAA, AA, C, D and 9V size batteries. CIB 106.
Universal has stipulated that the batteries produced during discovery were samples of Universal’s
zero-mercury-added alkaline batteries imported, exported, sold or offered for sale importation into
the United States, or sold or offered for sale after importation into the United States since November
7, 1995.48’
Universal was designated as Respondent 19.482 Test array D was performed on Universal,
showing a gel expansion characteristic of 9.8% ( M A ) , 12.0% (AA), 2.2% (for C), 10.0% (D) and
- ~~~
478 O’Keefe, Tr., 1624.
479 See JX-68C, 17 8-1 0.
480 cx-4ooc.
481 JX-79C.
482 c x - 7 17c.
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8.1 % (9V).483 In addition, Dr. O’Keefe testified that all other claim 1 elements were met, specifically
that its an electrochemical cell based on OCV; that there’s an alkaline electrolyte based on pH; that
there’s a cathode comprising manganese dioxide as an active cathode component based on XRD;
and that there’s an anode gel comprised of zinc as the active anode component based on ICP.484
In further support, Complainant’s initial testing showed that [ ] purchased batteries from
Universal.485 Dr. O’Keefe tested Universal’s D size batteries (LOT 2 1 sa), which had a gel expansion
~
a cathode comprising manganese dioxide as an active cathode component, and
an anode gel comprised of zinc as the active anode component
of 2.72%.486
~
See XRD on CX-712C at ITCEBC2 10764-65
See ICP on CX-7 12C at ITCEBC2 10763
Term (Claim 1, unless otherwise noted) ~ ~ ~~
An electrochemical cell comprising
Accused Products of Universal
~~ ~ ~
an alkaline electrolyte ~~ I See pH on CX-712C at ITCEBC21OG
wherein the cell contains less than 50 parts of mercury per million parts by weight of the cell and
Claim 6: The electrochemical cell of claim 1 wherein the cell contains less than 25 parts of mercury per million parts by weight of the cell.
See CX-4OOC.
See CX-4OOC.
483 CX-712C at ITCEBC210762-65.
484 O’Keefe, Tr. 1629-30; CX-712C at ITCEBC210762-65.
485 CX-477(Y)C, CX-477(Z)C, CX-478(S)C.
486 O’Keefe, Tr. 1472-73, 1528-30; Rx-2701.8(F).
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Claim 7: The electrochemical cell of claim 1 wherein the cell contains less than 20 parts of mercury per million parts by weight of the cell.
Claim 2: The electrochemical cell of claim 1 , wherein the cell contains less than 2 parts of mercury per million parts by weight of the cell.
Claim 3: The electrochemical cell of claim 2, wherein the cell contains less than 1 part of mercury per million parts by weight of the cell.
said zinc anode has a gel expansion of less than 25% after being discharged for 161 minutes to 15% depth of discharge at 2.88A.
Claim 4: The electrochemical cell of claim 2, wherein the zinc anode has a gel expansion of less than 20%.
Claim 5: The electrochemical cell of claim 4, wherein the zinc anode has a gel expansion of less than 15%.
See CX-4OOC.
See CX-4OOC.
See CX-4OOC.
9.8% for AAA 12.0% for AA 2.2% for C 10.0% for D 8.1% for 9V (see CX-7 12C at ITCEBC2 10763-64) 2.72% for Initial Testing (see RX-2701.8(F))
9.8% for AAA 12.0% for AA 2.2% for C 10.0% for D 8.1% for 9V (see CX-7 12C at ITCEBC2 10763-64) 2.72% for Initial Testing (see RX-2701.8(F))
9.8% for AAA 12.0% for AA 2.2% for C 10.0% for D 8.1% for 9V (see CX-7 12C at ITCEBC2 10763-64) 2.72% for Initial Testing (see Rx-2701.8(F))
Based on the above, all elements of Claims 1 through 7 of the ‘709 patent are contained in
Universal’s AAA, AA, C, D and 9V size batteries. Accordingly, Universal’s AAA, AA, C, D and
9V size batteries literally possesses all elements of Claims 1 through 7 of the ‘709 patent. Inasmuch
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as Universal’s AAA, AA, C, D and 9V size batteries literally infringe Claims 1 through 7 of the ‘709
patent, it is not necessary to reach separately the issue of whether they also infringe under the
doctrine of equivalents.
C.
Inasmuch as the undersigned has ruled that Respondents’ batteries literally infringe claims
1 through 7 of the ‘709 patent, it is not necessary to reach separately the issue of whether they also
infringe the ‘709 patent under the doctrine of equivalents.
Infringement Under the Doctrine of Equivalents
V. Domestic Industry
A. Relevant Law
In a patent-based complaint, a violation of Section 337 can be found “only if an industry in
the United States, relating to the articles protected by the patent . . . concerned, exists or is in the
process of being established.”487 This “domestic industry requirement” has an “economic” prong and
a “technical” prong.
The term “domestic industry” in Section 337 is not defined by the statute, but the
Commission has interpreted the intent of Section 337 to be “the protection of domestic manufacture
of The Commission has further stated that “[tlhe scope ofthe domestic industry in patent-
based investigations has been determined on a case by case basis in light of the realities of the
marketplace and encompasses not only the manufacturing operations but may include, in addition,
487 19 U.S.C. 5 1337(a)(2).
488 Certain Dynamic Random Access Memories, Components Thereof and Products Containing Same, Inv. No. 337-TA-242, U.S.I.T.C. Pub. No. 2034 (November 1987), Commission Opinion at 61, 1987 WL 450856 (U.S.I.T.C., September 21, 1987) (“DUM.”).
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distribution, research and development and sales.”489
In making this determination, Section 337(a)(2) provides that for investigations based on
patent infringement, a violation can be found “only if an industry in the United States, relating to the
articles protected by the patent . . . concerned, exists or is in the process of being established.” 19
U.S.C. 0 1337(a)(2). Section 337(a)(3) sets forth the following economic criteria for determining
the existence of a domestic industry in such investigations:
an industry in the United States shall be considered to exist if there is in the United States, with respect to the articles protected by the . . . patent . . . concerned -
(A) significant investment in plant and equipment;
(B) significant employment of labor or capital; or
(C) substantial investment in its exploitation, including engineering, research and development, or li~ensing.4~’
As the statute uses the disjunctive term “or,” a complainant can demonstrate this so-called
“economic prong” of the domestic industry requirement by satisfying any one of the three tests set
forth in Section 337(a)(3).491 The complainant bears the burden of establishing that the domestic
industry requirement is satisfied.492
489 Id. at 62 (footnotes omitted).
490 19 U.S.C. 5 1337(a)(3).
49‘ See Certain Plastic Encapsulated Integrated Circuits, Inv. No. 337-TA-3 15, U.S.I.T.C. Pub. No. 2574 (November 1992), Initial Determination at 83, 1992 WL 813952 (U.S.I.T.C., October 15, 1991) (unreviewed by Commission in relevant part) (“Encapsulated Circuits”).
492 See Certain Set-Top Boxes and Components Thereof, Inv. No. 337-TA-454, U.S.I.T.C. Pub. No. 3564 (November 2002), Initial Determination at 294,2002 WL 3 1556392 (U.S.I.T.C., June 2 1,2002), unreviewed by Commission in relevant part, Commission Opinion at 2 (August 29, 2002) (“Set-Top Boxes”).
-13 1-
In addition to meeting the economic criteria of the domestic industry requirement, a
complainant in a patent-based Section 337 investigation must also demonstrate that it is practicing
or exploiting the patents at issue.493 In order to find the existence of a domestic industry exploiting
a patent at issue, it is sufficient to show that the domestic industry practices any claim of that patent,
not necessarily an asserted claim of that patent.494 Fulfillment of this so-called “technical prong” of
the domestic industry requirement is not determined by a rigid formula, but rather by the articles of
commerce and the realities of the marketplace.”’
The test for claim coverage for the purposes of the technical prong of the domestic industry
requirement is the same as that for infringement.496 “First, the claims of the patent are construed.
Second, the complainant’s article or process is examined to determine whether it falls within the
scope of the claims.”497 As with infringement, the first step of claim construction is a question of
493 See 19 U.S.C. 5 1337(a)(2) and (3); also see Certain Microsphere Adhesives, Process for Making Sume, and Products Containing Same, Including Self-stick Repositionable Notes, Inv. No. 337-TA-366, Commission Opinion at 8, 1996 WL 1056095 (U.S.I.T.C., January 16, 1996) (“Microsphere Adhesives”), affd sub nom. Minnesota Mining & Mfg. Co. v. US. Int’l Trade Comm ‘n, 91 F.3d 171 (Fed. Cir. 1996) (Table); Certain Plastic Encapsulated Integrated Circuits, Inv. No. 337-TA-3 15, U.S.I.T.C. Pub. No. 2574 (November 1992), Commission Opinion at 16, 1992 WL 8 13959 (“Encapsulated Circuits”).
494 Microsphere Adhesives, Commission Opinion at 7- 16.
Certain Diltiazem Hydrochloride and Diltiazem Preparations, Inv. No. 337-TA-349, U.S.I.T.C. Pub. No. 2902, Initial Determination at 138, 1995 WL 945191 (U.S.I.T.C., February 1, 1995) (unreviewed in relevant part) (“Diltiazem”); Certain Double-Sided Floppy Disk Drives and Components ThereoJ; Inv. No. 337-TA-215,227 U.S.P.Q. 982, 989 (Commission Opinion 1985) (“Floppy Disk Drives”).
496 Certain Doxorubicin and Preparations Containing Same, Inv. No. 337-TA-300, Initial Determination at 109, 1990 WL 710463 (U.S.I.T.C., May 21, 1990) (“Doxorubicin”), a f d , Views of the Commission at 22 (October 31, 1990).
J97 Id
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law, whereas the second step of comparing the article to the claims is a factual de t e rmina t i~n .~~~ To
prevail, the patentee must establish by a preponderance of the evidence that the domestic product
practices one or more claims of the patent either literally or under the doctrine of equivalents.499
B. Technical Prong
1. Adverse Inference
In Order No. 97, issued on January 28,2004, the undersigned imposed a discovery sanction
on Complainants in the form of an adverse inference that “no EBC facility uses the alleged invention
of the ‘709 patent in conjunction with making zero-mercury-added alkaline batteries.’y500 This
sanction was imposed after EBC failed to identify a “representative manufacturing facility that EBC
stipulates uses the invention of the ‘709 patent in conjunction with making zero-mercury-added
alkaline batteries, or state that there is no such facility.” Complainants filed a motion for
reconsideration while the Staff filed a motion for clarification, both of which were addressed at the
pre-hearing conference. At the pre-hearing conference, the undersigned informed the parties that the
motion for reconsideration was denied and that the adverse inference would stand. The undersigned
also stated that the parties would be free to argue how the adverse inference affects their respective
cases, considering the parties’ differing claim constructions and whether the gel expansion test was
part of the manufacturing process or not.501
The adverse inference that was found was that “no EBC facility uses the alleged invention
498 Markman, 52 F.3d at 976.
499 See Bayer, 212 F.3d at 1247.
”‘See Order No. 97 at 2.
50’ Bullock, Tr. 154-55.
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of the ‘709 patent in conjunction with making zero-mercury-added alkaline batteries.” The question
arises as to what the proper interpretation of this adverse inference should be in light of the claim
construction adopted herein. If the undersigned had adopted Respondents’ claim construction that
the claim language “has a gel expansion of less than 25% after being discharged” is a product-by-
process step, the adverse inference would be operable and Complainants would not meet the
technical prong of domestic industry. The undersigned, however, has adopted the complainants’
claim construction that the claim language “has a gel expansion of less than 25% after being
discharged” is not a product-by-process step, and that the proper claim construction of Claim 1 of
the ‘709 patent is towards an electrochemical cell which is a product having a particular
characteristic, not a process. To hold that no EBC facility uses theproduct (i. e., the electrochemical
cell) in conjunction with making the product would be nonsensical. Therefore, in light of the
undersigned’s adoption of Complainants’ claim construction, the adverse inference is in~perable.’’~
2. Dr. O’Keefe’s Testing
Dr. O’Keefe performed tests on some of Complainants’ D-size batteries to determine if they
502 Complainants argue that, regardless of the adverse inference, under the proper claim construction, EBC does not need to run the gel expansion test. CIB 116. [
] Smith, Tr. 1138-62, 1169, 1183, 1392-1403; see also CX-l223C, CX-l224C, CX-l225C, CX-l226C, CX-l228C, CX-1235C at ITCEBC031848, CX- 1333C. [
] Smith, Tr. 1183-86; see also CX-1235, CX- 1232C. Staff agrees. Respondents contend that Complainants have not supported their assertion. In light of the ruling above, there is no need to resolve this issue.
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contained all the required elements of Claims 1-7 of the ‘709 patent.503 Based on these tests, Dr.
O’Keefe concluded that the batteries that were tested contained all the elements of Claims 1-7 of the
‘709 patent.
Term (Claim 1, unless otherwise noted)
An electrochemical cell comprising
an alkaline electrolyte
a cathode comprising manganese dioxide as an active cathode component, and
an anode gel comprised of zinc as the active anode component
wherein the cell contains less than 50 parts of mercury per million parts by weight of the cell and
Claim 6: The electrochemical cell of claim 1 wherein the cell contains less than 25 parts of mercury per million parts by weight of the cell.
~~
Claim 7: The electrochemical cell of claim 1 wherein the cell contains less than 20 parts of mercury per million parts by weight of the cell.
Claim 2: The electrochemical cell of claim I , wherein the cell contains less than 2 parts of mercury per million parts by weight of the cell.
Claim 3: The electrochemical cell of claim 2, wherein the cell contains less than 1 part of mercury per million parts by weight of the cell.
Complainants’ Product
See CX-7 13C
See CX-713C
See CX-7 13C
See CX-696C, CX-7 13C
See CX-713C
See CX-713C
See CX-713C
See CX-7 13C
See CX-713C
503 O’Keefe, Tr. 1645-47; CX-713C.
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said zinc anode has a gel expansion of less than 25% after being discharged for 16 1 minutes to 15% depth of discharge at 2.88A.
Claim 4: The electrochemical cell of claim 2, wherein the zinc anode has a gel expansion of less than 20%.
~ ~
Claim 5: The electrochemical cell of claim 4, wherein the zinc anode has a gel expansion of less than 15%.
[ ] (see CX-7 13C at ITCEBC2 10774)
[ ](see CX-713C at ITCEBC210774)
[ ] (see CX-713C at ITCEBC210774)
In addition, Complainants’ [ ] support the above test results. [
I5O4 Complainants maintain that all of its
alkaline batteries sold [ I5O5 And
Complainants have [ 1 506
The dispute among the parties regarding the technical prong is whether complainants must
conduct the gel expansion test to practice the claims of the ‘709 patent. The Staff argues that, when
the claims of the ‘709 are properly construed, it does not require the performance of the gel
expansion test in conjunction with the manufacture of the batteries at issue; rather, the ‘709 patent
only requires that the claimed electrochemical cell be made with zinc that has a gel expansion
characteristic of less than 25%. SRB 22. The Staff further argues that, when the claims of the ‘709
patent are so construed, the adverse inference imposed by Order No. 97 does not preclude a finding
that Complainants have satisfied the technical prong of the domestic industry requirement. SRB 22.
504 Smith, Tr. 1169, 1187; see also CX-1235C.
505 Smith, Tr. 1169, 1187-88; see also CX-1235C.
506 Smith, Tr. 1168-70, 1182; see also CX-1235C.
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Respondents argue that no one uses the ‘709 patent, and that the sole use that anyone makes
of the gel expansion test is for patent infringement purposes. RIB 105-06. This is based largely on
Respondents’ claim construction that the ‘709 patent is a product-by-process claim, which has been
rejected earlier in this Initial Determination.
The undersigned has construed Claim 1 of the ‘709 patent as a product claim, not a product-
by-process claim. Therefore, it is not necessary for EBC to conduct the gel expansion test in order
to practice the claims of the ‘709 patent. As Dr. O’Keefe’s testing shows, Complainants’ batteries
all had a gel expansion score of less than 15% when tested.
Based on the claim construction adopted above, Complainants’ batteries practice claims 1
through 7 of the ‘709 patent because they have all of the required elements as the disputed claims
have been construed, even in light of the undersigned’s previous ruling in Order No. 97. The
technical prong of the domestic industry requirement of Section 337, therefore, is literally satisfied.
As such, it is not necessary to reach separately the issue of whether they also practice under the
doctrine of equivalents.
C. Economic Prong
1. Investment in Plant and Equipment
Complainants argue that they have made significant investments in plant and equipment in
the United States. CIB 120. The President and Chief Executive Officer of Global Energizer
Batteries, Joseph McClanathan, gave testimony via de bene esse deposition regarding Complainants’
investments. Specifically, Complainants have two [ ]facilities (one in Asheboro, North
Carolina; the other in Maryville, Missouri) in the United States that are exclusively dedicated to the
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production of zero-mercury-added alkaline batteries.507 The total production area of EBC's
Asheboro facility is [ l and[ 3 in Mary~ille.~" Complainants
have invested approximately[
facility, and [
] in their Asheboro, North Carolina [
] facility.5o9
1
] in their Maryville, Missouri [
Complainants also have other facilities in the United States that are [
3 such as in Garrettsville, Ohio and
Marietta, Ohio. Approximately [ ] of the facility at Garrettsville
I5l0 Approximately [ ] of the facility at Marietta [
i511
Approximately [
range of activities related to its batteries,[
] of the facility at Westlake, Ohio is used to perform a broad
i512
The net book value of Complainants' total assets located at Asheboro, Maryville,
I5 l3 The net book value of Garrettsville, Marietta and Westlake as of January 2003 is [
507 CX-l545C, McClanathan Dep., at 23; CX-5 1 OC.
508 c x - 5 1 oc. 509 c x - 5 1 oc, c x - 5 1 1 c. 'lo CX-l545C, McClanathan Dep., at 23; CX-5 1 OC.
511 CX-l545C, McClanathan Dep., at 23; CX-5 1 OC.
512 CX-1545CY McClanathan Dep., at 24-25; CX-5 1OC.
513 CX-l545C, McClanathan Dep., at 24-25; CX-511C. Note that the information in CX- 5 1 1 C was provided by EBC's financial department, which keeps such information as part of
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the Complainants’ [ ] in the United States is [ 1 5‘4
The Staff agrees that Complainants have demonstrated that they have made a substantial
investment in plant and equipment. SIB 58.
Respondents do not dispute that two of Complainants’ facilities are dedicated exclusively to
the production of zero-mercury-added alkaline batteries. Respondents dispute that these facilities
utilize the ‘709 patent to do so, especially in light of the adverse inference in Order No. 97. RIB
104. This is based largely on Respondents’ claim construction that the ‘709 patent is a product-by-
process claim, which has been rejected earlier in this Initial Determination.
2. Employment of Labor or Capital
Complainants argue that they have also made significant investments in labor and capital
related to zero-mercury-added alkaline batteries in the United States. CIB 12 1. Complainants
currently employ [ ] people in the United States that are involved in the production of zero-
mercury-added alkaline batteries, including [ ] people at their Asheboro, North Carolina
[ ] The total weekly payroll for Complainants’ personnel that are either
partially or fully dedicated to [
1 516
The Staff agrees that Complainants have demonstrated that they have made a substantial
investment in labor or capital. SIB 58. Respondents, however, argue that no EBC facility is
EBC’s asset valuations in the ordinary course of business. CX-l545C, McClanathan Dep., at 26.
514 CX-5 1 1 C.
5’5 c x - 5 12c.
516 c x - 5 12c.
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involved in the manufacture of zero-mercury-added alkaline batteries that uses the gel expansion test
in the ‘709 patent. This is based largely on Respondents’ claim construction that the ‘709 patent is
a product-by-process claim, which has been rejected earlier in this Initial Determination.
3. Whether a Nexus Exists Between any Investment and Employment and the ‘709 Patent
Complainants argue the ‘709 patent claims a zero-mercury-added alkaline battery. CIB 122.
Complainants argue that all of the investment in plant, equipment, labor and capital is directly related
to the manufacture of zero-mercury-added alkaline batteries that are covered by the ‘709 patent. CIB
122. In addition, Complainants state that [
1 5’7
The Staff agrees that Complainants have adequately demonstrated that the batteries they
manufacture, in connection with their substantial investments in plant, equipment and labor, practice
at least one claim of the ‘709 patent, and that a sufficient nexus has been shown. SIB 59.
Respondents argue that no EBC facility is involved in the manufacture of zero-mercury-
added alkaline batteries that uses the gel expansion test in the ‘709 patent and that Complainants did
not present testimony of anyone that could say that they had first-hand knowledge that the gel
expansion test of the ‘709 patent was performed in connection with the manufacture of zero-
mercury-added alkaline batteries. This is based largely on Respondents’ claim construction that the
‘709 patent is a product-by-process claim, which has been rejected earlier in this Initial
Determination.
517 Smith, Tr. 1182-84; CX-1232, CX-1235.
- 140-
Accordingly, Complainants have adequately demonstrated that its domestic investment in
exploitation of the ‘709 patent, including plant and equipment, and employment of labor or capital
satisfy criteria A and B of the economic prong of the domestic industry requirement.
4. Whether Complainants Have Substantial Investment in the Exploitation of the ‘709 Patent through Engineering, Research and Development, and Licensing Activities
a. Engineering and Research and Development
Complainants argue that they have made and continue to make substantial investments in the
United States in the exploitation of the ‘709 patent. CIB 123. Complainants have [
] with over [
I 5 l 8 The total number of full time equivalent personnel (FTEs) for R&D related to zero-
mercury-added alkaline batteries has [
] 5 ’9 Complainants’ R&D expenditures has[
1520
The Staff does not take any position as to whether Complainants have adequately shown a
substantial investment in the exploitation of the ‘709 patent through engineering, research and
development, and licensing. SIB 59. Respondents, however, argue that no EBC facility is involved
in the manufacture of zero-mercury-added alkaline batteries that uses the gel expansion test in the
518 Audebert, Tr. 4715.
519 CX-l545C, McClanathan Dep., at 15-29; CX-5 13C. Note that the information in CX- 5 13C was provided by EBC’s financial and human resources departments, which keeps such information in the ordinary course of business. CX-1545C7 McClanathan Dep., at 29.
520 CX-l545C, McClanathan Dep., at 30; CX-514C. Note that the information in CX- 514C was provided by EBC’s human resources departments, which keeps such information in the ordinary course of business. CX-l545C, McClanathan Dep., at 3 1.
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‘709 patent. This is based largely on Respondents’ claim construction that the ‘709 patent is a
product-by-process claim, which has been rejected earlier in this Initial Determination.
Accordingly, Complainants have adequately demonstrated that its domestic investment in
exploitation of the ‘709 patent, including R&D and engineering, satisfy criteria C of the economic
prong of the domestic industry requirement.
b. Licensing
Complainants argue that their licensing activities alone are sufficient to establish the
existence of a domestic industry, citing to various Commission opinions.521 CIB 124; CRB 39.
Specifically, Complainants allege that they own over 200 active patents in addition to the ‘709
patent.522 [ ] senior officers of EBC have been involved in developing licensing strategies for the
‘709 patent and [ ] individuals are directly involved in licensing negotiations for the ‘709 patent.s23
Complainants have spent [ ] in licensing the ‘709 patent, which include [ 1
[
c licensed the ‘709 patent to Duracell [
] to protect its patent rights under the ‘709 patent.s24 Complainants have also received
3 in payments for licenses of the ‘709 patent. Specifically, Complainant has
] to Rayovac for [
1, and to Matsushita for [ ]525 In addition,
s2’ See Certain Semiconductor Chips with Minimized Chip Package Size, Inv. No. 337- TA-432, Order No. 13 at 7-9, 11 (Unreviewed Initial Determination) (January 24,2001); ‘Certain Digital Satellite System (DSS) Receivers, Inv. No. 337-TA-392, USITC Pub. 341 8, Initial Determination at 10- 1 1 (April 200 1).
s22 CX-l545C, McClanathan Dep., 33.
523 CX-l545C, McClanathan Dep., 34-35.
524 CX-l545C, McClanathan Dep., 36-37.
525 CX-l545C, McClanathan Dep., 41-44; see also CX-531C, CX-532C, CX-533C.
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Complainants have also licensed the ‘709 patent to former respondents (i. e. FDK Corporation, Gold
Peak, Hitachi Maxell, Ltd., and Monster Cable Products, Inc.) in this in~es t iga t ion .~~~
The Staff does not take any position as to whether Complainants have adequately shown a
substantial investment in the exploitation of the ‘709 patent through engineering, research and
development, and licensing. SIB 59.
Respondents argue that Complainants’ licensing activities cannot be the basis for domestic
industry because EBC’s licensees did not pay enough for their licenses. For example, of [
1527 [
1528 [
]529 Respondents speculate that
EBC’s licensees did a cost-benefit analysis and settled these lawsuits based on nuisance value and
perceived risk of associated with the la~suit .’~’ RIB 103, 110-1 1.
Respondents also contend that, even if Complainants were spending [ 1 Per Year
on licensing the ‘709 patent, the amount is nothing in comparison to what the spend per year-$100
526 CX-l545C, McClanathan Dep. 44; see also Order Nos. 36,55, 122 and 125.
527 CX-531C at ITCEBC052434-35.
528 CX-532C at ITCEBC052447-48.
529 CX-533C at ITCEBC052470.
530 [
] CX-l545C, McClanathan Dep., 69-74.
j3’ Respondents define “nuisance value” as a fraction of the cost that it would take to defend the case.
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million-on advertising the Energizer Bunny.532 RIB 109.
Without any direct evidence from EBC’s licensees, the undersigned cannot speculate on the
reason these licensees entered into licensing agreements with EBC. As to the amount EBC spends
on licensing, compared to advertising, it is the amount, not necessarily the percentage, that is
significant.
Accordingly, Complainants have adequately demonstrated that its domestic investment in
exploitation of the ‘709 patent through licensing satisfies criteria C of the economic prong of the
domestic industry requirement.
VI. Validity
A patent is presumed valid.533 The party challenging a patent’s validity has the burden of
overcoming this presumption by clear and convincing evidence.534 Since the claims of a patent
measure the invention at issue, the claims must be interpreted and given the same meaning for
purposes of both validity and infringement analyses. As with an infringement analysis, an analysis
of invalidity involves two steps: the claim scope is first determined, and then the properly construed
claim is compared with the prior art to determine whether the claimed invention is anticipated and/or
rendered obvious.535
j3* CX- 1545C, McClanathan Dep., at 46-48; CX-5 17 at ITCEBO 16794.
j3’ 35 U.S.C. 5 282; Richardson-Vich Inc. v. Upjohn Co., 122 F.3d 1476, 1480 (Fed. Cir. 1997) (“Richardson- Vicks”).
534 Richardson- Vicks Inc., supra; Uniroyal, Inc. v. Rudkin- Wiley Corp. , 837 F.2d 1044 (Fed. Cir.) (“Uniroyal”), cert. denied, 488 U.S. 825 (1988).
535 Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) (“Amazon. com”).
