United States Court of Appeals for the Federal Circuit ______________________
GUANGDONG ALISON HI-TECH CO., Appellant
v.
INTERNATIONAL TRADE COMMISSION, Appellee
ASPEN AEROGELS, INC., Intervenor ______________________
2018-2042 ______________________
Appeal from the United States International Trade Commission in Investigation No. 337-TA-1003. ______________________
Decided: August 27, 2019 ______________________
JONATHAN WEINBERG, King & Spalding LLP, Washing- ton, DC, argued for appellant. Also represented by PAUL WHITFIELD HUGHES, McDermott, Will & Emery LLP, Washington, DC; GARY HNATH, BRYAN NESE, Mayer Brown LLP, Washington, DC.
CATHY CHEN, Office of the General Counsel, United States International Trade Commission, Washington, DC, argued for appellee. Also represented by DOMINIC L. BIANCHI, WAYNE W. HERRINGTON. 2 GUANGDONG ALISON HI-TECH CO. v. ITC
PROSHANTO MUKHERJI, Fish & Richardson, PC, Boston, MA, argued for intervenor. Also represented by FRANK SCHERKENBACH, KURT LOUIS GLITZENSTEIN, ANDREW PEARSON, KEVIN SU; POONGUNRAN MUTHUKUMARAN, Aspen Aerogels, Inc., Northborough, MA. ______________________
Before WALLACH, HUGHES, and STOLL, Circuit Judges. STOLL, Circuit Judge. Guangdong Alison Hi-Tech Co. is a foreign manufac- turer of aerogel insulation products currently subject to a limited exclusion order entered by the U.S. International Trade Commission following an unfair competition investi- gation. The exclusion order is based in part on the Com- mission’s final determination that Alison’s products infringe U.S. Patent No. 7,078,359, owned by domestic manufacturer Aspen Aerogels, Inc. Alison appeals the Commission’s final determination that certain claims of the ’359 patent are not indefinite based on their use of the term “lofty . . . batting.” Alison also challenges the Com- mission’s final determination that certain claims of the ’359 patent are not invalid on anticipation and obviousness grounds. Because the written description of the ’359 patent informs the meaning of “lofty . . . batting” with reasonable certainty, we affirm the Commission on the indefiniteness ground. And because we conclude that the Commission’s factual findings are supported by substantial evidence, we also affirm the Commission on the anticipation ground without reaching the subsidiary obviousness ground. BACKGROUND Aspen filed a complaint with the Commission in 2016 alleging that Alison had violated section 337 of the Tariff Act of 1930, 19 U.S.C. § 1337, by importing certain compo- site aerogel insulation materials that infringe several of its patents, including the ’359 patent. In September 2017, the GUANGDONG ALISON HI-TECH CO. v. ITC 3
administrative law judge held that Alison had violated sec- tion 337 based, in relevant part, on her determination that certain claims of the ’359 patent were not invalid and were infringed by Alison’s importation of the accused products. In February 2018, the Commission affirmed the ALJ’s ini- tial determination. Relevant here, the Commission held that claims 1, 7, and 9 of the ’359 patent were not invalid and were infringed by Alison. The Commission entered a limited exclusion order barring importation of Alison’s in- fringing composite aerogel insulation materials. I The ’359 patent, titled “Aerogel Composite with Fi- brous Batting,” is directed to an improvement in aerogel composite products. ’359 patent col. 3 ll. 19–23. Aerogels, first created in the 1930s, are very light materials with ex- cellent insulating properties. To form an aerogel, the liquid component of a gel is replaced with a gas via a specialized drying process that extracts the liquid while keeping the remaining components of the gel intact. The resulting product is highly porous and has low density, but is also very fragile and brittle. To improve flexibility, aerogels can be combined with fibrous materials to form an aerogel com- posite. The mechanical properties of the resulting compo- site will vary depending on the fibrous materials used and how they are combined. The ’359 patent specifically discloses an aerogel compo- site that uses a “lofty fibrous structure,” or “lofty batting,” as the fibrous material. Id. at col. 3 ll. 19–30. The ’359 patent defines “lofty batting” as “a fibrous material that shows the properties of bulk and some resilience (with or without full bulk recovery).” Id. at col. 7 ll. 1–3. According to the ’359 patent, the lofty batting reinforces the aerogel in a way that maintains or improves the thermal properties of the aerogel while providing a “highly flexible, drapeable form.” Id. at col. 3 ll. 30–40. The ’359 patent represents this as an improvement over prior aerogel composites, 4 GUANGDONG ALISON HI-TECH CO. v. ITC
which suffer from low flexibility, low durability, and de- graded thermal performance. See id. at col. 1 l. 62–col. 3 l. 6. Independent claim 1 and dependent claims 7 and 9 of the ’359 patent are at issue on appeal. They recite: 1. A composite article to serve as a flexible, dura- ble, light-weight insulation product, said article comprising a lofty fibrous batting sheet and a con- tinuous aerogel through said batting. 7. The composite article of claim 1, further com- prising a dopant. 9. The composite article of claim 7, wherein the do- pant is present in an amount of about 1 to 20% by weight of the total weight of the composite. Id. at col. 14 ll. 36–39, 63–64, col. 15 ll. 3–5 (emphases added to disputed claim term). II During claim construction proceedings before the ALJ, Alison argued that the claim phrase “lofty . . . batting” is indefinite. The ALJ rejected Alison’s indefiniteness argu- ment and adopted the ’359 patent’s express definition of “lofty . . . batting” as “[a] fibrous material that shows the properties of bulk and some resilience (with or without full bulk recovery).” Certain Composite Aerogel Insulation Ma- terials & Methods for Mfg. the Same, Inv. No. 337-TA-1003, Order No. 35, EDIS No. 602687, App. A at 4–6 (Jan. 31, 2017) (Claim Construction Order). In doing so, the ALJ emphasized that the “bulk” and “resilience” components of the “lofty . . . batting” definition are further explained in the specification. Id. at 4. In particular, the ALJ pointed to the specification’s disclosure that bulk is “air” and that a lofty batting is “sufficiently resilient” if “after compres- sion for a few seconds it will return to at least 70% of its original thickness.” Id. (quoting ’359 patent col. 7 ll. 45– GUANGDONG ALISON HI-TECH CO. v. ITC 5
47, 49). Yet, in construing the term, the ALJ also declined Aspen’s invitation to limit “lofty . . . batting” to that exam- ple in the specification: a material that is “compressible by at least 50% of its natural thickness and is sufficiently re- silient that after compression for a few seconds it will re- turn to at least 70% of its original thickness.” Id. at 4–5; see also ’359 patent col. 7 ll. 40–48. Alison petitioned the Commission for review of the ALJ’s initial determination. The Commission affirmed the ALJ’s construction and de- clined to review the ALJ’s determination regarding indefi- niteness. Thus, the Commission incorporated the ALJ’s indefiniteness holding into its final determination without modification or further comment. III In the proceedings before the ALJ, Alison also chal- lenged the validity of the asserted claims of the ’359 patent in view of U.S. Patent No. 5,306,555 (“Ramamurthi”). Ti- tled “Aerogel Matrix Composites,” Ramamurthi discloses methods of manufacturing various aerogel matrix compo- sites that incorporate fibers. See Ramamurthi col. 3 l. 53– col. 4 l. 38. The specification describes a series of example composites with varying characteristics. See, e.g., id. at col. 6 l. 50–col. 9 l. 58 (Example 1-A). The ’359 patent specification acknowledges Rama- murthi as prior art and expressly distinguishes Rama- murthi’s composites as having a high elastic modulus (i.e., being very stiff) and a relatively high thermal conductivity as compared with the composites disclosed in the ’359 pa- tent. ’359 patent col. 1 l. 62–col. 2 l. 21. During prosecution of the ’359 patent, the examiner considered Ramamurthi and ultimately allowed the claims over Ramamurthi based on the “lofty . . . batting” limitation. Alison cited Rama- murthi in a petition for inter partes review of the ’359 pa- tent, but the Patent Trial and Appeal Board denied institution, holding that Alison had not shown that Rama- murthi discloses a “lofty fibrous batting sheet.” 6 GUANGDONG ALISON HI-TECH CO. v. ITC
Guangdong Alison Hi-Tech Co. v. Aspen Aerogels, Inc., No. IPR2017-00413, 2017 WL 2485089, at *4 (P.T.A.B. June 8, 2017). In view of this evidence, along with testimony from the parties’ experts, the ALJ rejected Alison’s anticipation and obviousness challenges based on Ramamurthi. The Com- mission affirmed the ALJ’s determination with only slight modifications not at issue here. DISCUSSION On appeal, Alison challenges the Commission’s indefi- niteness, anticipation, and obviousness determinations. We have jurisdiction under 28 U.S.C. § 1295(a)(6). We re- view the Commission’s final determinations under the standards of the Administrative Procedure Act. Ajinomoto Co. v. Int’l Trade Comm’n, 597 F.3d 1267, 1272 (Fed. Cir. 2010) (citing 19 U.S.C. § 1337(c)). We review the Commis- sion’s factual findings for substantial evidence and its legal determinations de novo. Id. (citing 5 U.S.C. § 706(2)). A finding is supported by substantial evidence if a “‘reasonable mind might accept’ a particular evidentiary record as ‘adequate to support a conclusion.’” Dickinson v. Zurko, 527 U.S. 150, 162 (1999) (quoting Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938)). Substantial evi- dence must be sufficient “to justify, if the trial were to a jury, a refusal to direct a verdict when the conclusion sought to be drawn from it is one of fact for the jury.” Nor- gren Inc. v. Int’l Trade Comm’n, 699 F.3d 1317, 1321 (Fed. Cir. 2012) (quoting Universal Camera Corp. v. NLRB, 340 U.S. 474, 477 (1951)). Thus, “[s]ubstantial evidence is not a fixed quantum of evidence,” and “may only be deter- mined with respect to the burden of proof that the litigant bore” in the trial proceedings. Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1363 (Fed. Cir. 2004). Substantial evidence must also “take into account whatever in the rec- ord fairly detracts from its weight.” Jacobs v. Dep’t of GUANGDONG ALISON HI-TECH CO. v. ITC 7
Justice, 35 F.3d 1543, 1546 (Fed. Cir. 1994) (quoting Uni- versal Camera, 340 U.S. at 488). Because patents are presumed valid, 35 U.S.C. § 282, a challenger at the ITC must prove invalidity by clear and convincing evidence, One-E-Way, Inc. v. Int’l Trade Comm’n, 859 F.3d 1059, 1062 (Fed. Cir. 2017). Accord- ingly, we review the factual findings underlying the Com- mission’s invalidity determinations for “substantial evidence” by ascertaining whether those findings “were es- tablished by evidence that a reasonable person might find clear and convincing,” and whether those findings “form an adequate predicate for the legal determination of invalid- ity.” Checkpoint Sys., Inc. v. U.S. Int’l Trade Comm’n, 54 F.3d 756, 761 n.5 (Fed. Cir. 1995). I We first address the ALJ’s initial determination that the challenged claims are not indefinite, a decision that the Commission declined to review. In her claim construction order, the ALJ specifically held that the phrase “lofty . . . batting,” as used in the challenged claims of the ’359 patent, is not indefinite in view of certain disclosures in the specification. For the reasons that follow, we agree, and accordingly, we affirm. A A patent’s specification must “conclude with one or more claims particularly pointing out and distinctly claim- ing the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112, ¶ 2 (2006). 1 This statutory
1 Because the ’359 patent does not contain any claim with an effective filing date on or after September 16, 2012, the applicable version of 35 U.S.C. § 112 is the one preced- ing the changes made by the America Invents Act. See 8 GUANGDONG ALISON HI-TECH CO. v. ITC
provision requires that “a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with rea- sonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014). Indefiniteness is a question of law that we review de novo, subject to a determination of underlying facts, which we review for substantial evi- dence. One-E-Way, 859 F.3d at 1062; Osram GmbH v. Int’l Trade Comm’n, 505 F.3d 1351, 1355 (Fed. Cir. 2007). The “reasonable certainty” standard established in Nautilus reflects a “delicate balance” between “the inher- ent limitations of language” and providing “clear notice of what is claimed.” 572 U.S. at 909 (first quoting Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 731 (2002)). It “mandates clarity, while recognizing that absolute precision is unattainable.” Id. at 910. It also ac- commodates the fact that “[s]ome modicum of uncer- tainty . . . is the ‘price of ensuring the appropriate incentives for innovation.’” Id. at 909 (quoting Festo, 535 U.S. at 732). Consistent with these principles, we have explained that “a patentee need not define his invention with mathematical precision in order to comply with the definiteness requirement.” Sonix Tech. Co. v. Publ’ns Int’l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017) (quoting Invitro- gen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1384 (Fed. Cir. 2005)). Instead, “[t]he degree of precision neces- sary for adequate claims is a function of the nature of the subject matter.” Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374, 1382 (Fed. Cir. 2015) (alteration in original) (quoting Miles Labs., Inc. v. Shandon, Inc., 997 F.2d 870, 875 (Fed. Cir. 1993)). Indeed, “[d]escriptive words like ‘co- pious’ are commonly used in patent claims, to ‘avoid[ ] a strict numerical boundary to the specified parameter.’”
Leahy-Smith America Invents Act, Pub. L. No. 112-29 § 4(e), 125 Stat. 284, 297 (2011). GUANGDONG ALISON HI-TECH CO. v. ITC 9
Braintree Labs., Inc. v. Novel Labs., Inc., 749 F.3d 1349, 1360 (Fed. Cir. 2014) (second alteration in original) (quot- ing Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1217 (Fed. Cir. 1995)). To be sure, patents with claims involving terms of de- gree “must provide objective boundaries for those of skill in the art” in the context of the invention. One-E-Way, 859 F.3d at 1068 (quoting Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014)). Intrinsic evi- dence—such as the claims, figures, written description, or prosecution history of a patent—can provide the necessary objective boundaries. See, e.g., id. at 1064–67 (ruling that consistent use of a disputed term in the claims, specifica- tion, and prosecution history informed claim scope); Sonix, 844 F.3d at 1378–79 (ruling that specific examples in the written description provided “points of comparison” in- forming claim scope); Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332–36 (Fed. Cir. 2010) (ruling that de- pendent claims, examples, criteria, and test results in spec- ification and prosecution history informed claim scope). 2 Extrinsic evidence can also help identify objective bounda- ries. See, e.g., BASF Corp. v. Johnson Matthey Inc., 875 F.3d 1360, 1368 (Fed. Cir. 2017) (considering expert testimony); Sonix, 844 F.3d at 1380 (considering expert testimony and prior litigation positions regarding meaning of disputed term); DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1260–61 (Fed. Cir. 2014) (considering ad- vertising for prior art system).
2 Although Enzo was decided before the introduction of the “reasonable certainty” standard, we have repeatedly cited it in our post-Nautilus decisions. See, e.g., Sonix, 844 F.3d at 1376–79; Interval Licensing, 766 F.3d at 1373. 10 GUANGDONG ALISON HI-TECH CO. v. ITC
B On appeal, Alison challenges the Commission’s deter- mination that claims 1, 7, and 9 of the ’359 patent are not indefinite. Alison argues that the challenged claims are invalid because “lofty . . . batting” is an indefinite term of degree without a precise boundary. While we agree that “lofty . . . batting” is a term of degree, Alison seeks a level of “mathematical precision” beyond what the law requires. Sonix, 844 F.3d at 1377. For the reasons that follow, we hold that the challenged claims are not indefinite because the written description of the ’359 patent provides objective boundaries for the claim term “lofty . . . batting.” To start, the written description of the ’359 patent pro- vides express definitions for the phrase “lofty . . . batting” and its components. According to the ’359 patent, a “bat- ting” is commonly understood to be “a fibrous material com- monly used for lining quilts or for stuffing or packaging or as a blanket of thermal insulation.” ’359 patent col. 7 ll. 21–23. A “lofty batting” is expressly defined as “a fibrous material that shows the properties of bulk and some resili- ence (with or without full bulk recovery).” Id. at col. 7 ll. 1– 3 (emphases added). The specification explains that “bulk” refers to the air or openness created by the web of fibers in a lofty batting. Id. at col. 7 ll. 48–50, col. 8 ll. 8–13. It further explains that a batting is “sufficiently resilient” if it “can be compressed to remove the air (bulk) yet spring back to substantially its original size and shape.” Id. at col. 7 ll. 40–50. A batting is also “lofty” if it “contains sufficiently few individual filaments (or fibers) [such] that it does not significantly alter the thermal properties of the reinforced composite as compared to a non-reinforced aer- ogel body of the same material.” Id. at col. 7 ll. 28–32. The ’359 patent also details the functional characteris- tics of a “lofty . . . batting.” The written description ex- plains that using a lofty batting as reinforcement in an aerogel composite “minimizes the volume of unsupported GUANGDONG ALISON HI-TECH CO. v. ITC 11
aerogel while avoiding substantial degradation of the ther- mal performance of the aerogel.” Id. at col. 7 ll. 4–7. Be- cause “highly aligned (straight) fibers” in the x-y horizontal plane can make the resulting composite stiff, the ’359 pa- tent explains that it is better to have the reinforcing fibers run along all three axes. Id. at col. 8 ll. 13–16. But because heat is typically transferred via fibers running along the z-axis, a suitably lofty batting must have “a high enough quantity of fibers oriented along the z axis to maintain loft, yet not so great a quantity that the insulating properties of the resulting composite are compromised by these fibers.” Id. at col. 8 ll. 16–23. The specification thus distinguishes a lofty batting from the “fibrous mat” of the prior art—i.e., a “densely woven or thickly tangled mass” that has mini- mal open space, a higher density, and lacks the resilience of a lofty batting. Id. at col. 7 l. 60–col. 8 l. 5. The written description of the ’359 patent is replete with examples and metrics that further inform the mean- ing of “lofty . . . batting.” It identifies specific examples of commercial products that can qualify as a lofty batting, in- cluding “Primaloft” (id. at col. 7 ll. 15–20), “Holofil” (id. at col. 7 ll. 50–56), “Thinsulate Lite Loft” (id. at col. 11 ll. 30–32), and “Quartzel” (id. at col. 12 ll. 6–9). It includes a list of nearly twenty “particularly suitable” fibrous mate- rials for forming lofty batting, including commercial prod- ucts like “Nomex,” “Kevlar,” “Spectra,” and “Kynol.” Id. at col. 9 ll. 25–40. It provides metrics for the fineness of fibers (id. at col. 7 ll. 23–25), the cross-sectional area of the fibers (id. at col. 7 ll. 32–36), the thermal conductivity of the batting (id. at col. 7 ll. 36–39), the compressibility and resilience of the batting (id. at col. 7 ll. 42–59), and the den- sity of the batting (id. at col. 7 l. 64–col. 8 l. 1). The written description of the ’359 patent concludes with a detailed dis- cussion of seven examples of aerogel composites manufac- tured in accordance with the claimed invention, along with corresponding test results. See id. at col. 11 l. 21–col. 14 l. 34 (Examples 1–7). 12 GUANGDONG ALISON HI-TECH CO. v. ITC
Because “the written description is key to determining whether a term of degree is indefinite,” Sonix, 844 F.3d at 1378 (emphasis added), we conclude that the evidence above is sufficient to dispose of this issue. But we note that the prosecution history also supports our conclusion. In the Statement of Reasons for Allowance, the patent exam- iner emphasized that the specification defined “lofty fi- brous batting” as “a fibrous material that shows the properties of bulk and some resilience (with or without full bulk recovery)” and distinguished the prior art based on this term. J.A. 13203. Similarly, in its decision denying institution of IPR, the Board noted that “both parties agree that [“lofty fibrous batting”] indicates a fibrous material with both bulk and ‘resilience,’ which is the ability to re- gain at least some portion of its original shape and size af- ter being compressed.” Alison, 2017 WL 2485089, at *3. The extrinsic evidence provides further support for the objective boundaries of “lofty . . . batting.” A technical dic- tionary confirms that “batting” and “loft” are terms of art that have meanings consistent with their use in the ’359 patent. See J.A. 12520–24. Before the Commission, both parties’ experts could explain the meaning of “bulk” and “some resilience,” the two defining characteristics of a “lofty . . . batting.” While not dispositive, the application of these terms by the parties’ experts, along with the exam- iner and Board at the Patent Office, further supports our conclusion that the challenged claim term is not indefinite. See Sonix, 844 F.3d at 1380 (“Although . . . application by the examiner and an expert do not, on their own, establish an objective standard, they nevertheless provide evidence that a skilled artisan did understand the scope of this in- vention with reasonable certainty.”). In sum, the written description of the ’359 patent pro- vides sufficient detail to inform a person of ordinary skill in the art about the meaning of “lofty . . . batting.” That puts this case in the same class as cases like Sonix and Enzo, where we held that examples and procedures in the GUANGDONG ALISON HI-TECH CO. v. ITC 13
written description provided sufficient guidance and points of comparison to render claim terms not indefinite. See So- nix, 844 F.3d at 1376–81; Enzo, 599 F.3d at 1332–36. We therefore conclude that claims 1, 7, and 9 are not indefinite because the ’359 patent informs a person of ordinary skill in the art about the scope of “lofty . . . batting” with “rea- sonable certainty.” Nautilus, 572 U.S. at 901. Alison advances several arguments in support of its in- definiteness challenge, but we do not find them persuasive. First, Alison argues that “lofty . . . batting” is indefinite be- cause the ’359 patent provides no objective boundary be- tween “some resilience,” which would infringe, and “little [to no] resilience,” which would not. Appellant’s Br. 27–29; see also ’359 patent col. 8 ll. 1–2 (fibrous mats “show little to no resilience”). 3 In other words, in Alison’s view, the ’359 patent fails to disclose precisely how much resilience is enough to satisfy the claim. With this argument, Alison seeks a level of numerical precision beyond that required when using a term of degree. See Enzo, 599 F.3d at 1335; see also Nautilus, 572 U.S. at 909 (“Some modicum of un- certainty . . . is the ‘price of ensuring the appropriate incen- tives for innovation.’” (quoting Festo, 535 U.S. at 732)). Because “[t]he degree of precision necessary . . . is a func- tion of the nature of the subject matter,” Biosig, 783 F.3d at 1382 (first alteration in original) (quoting Miles, 997 F.2d at 875), we agree with Aspen that a person of or- dinary skill in this field “can tell when a material has zero or a negligible amount of resilience without needing a mathematical definition.” Intervenor’s Br. 24.
3 The Commission and Aspen contend that Alison waived this argument, but we disagree. See J.A. 12189 (“[T]he intrinsic record fails to specify how to demarcate the line between a fibrous material that has ‘some resili- ence’ and one that does not.”). 14 GUANGDONG ALISON HI-TECH CO. v. ITC
Next, Alison argues that “lofty . . . batting” is indefinite because the ’359 patent offers two independent ways to as- sess loftiness, without indicating which approach to use. According to Alison, the ’359 patent provides a “thermal properties” approach at column 7, lines 28–36, and a “com- pressibility and resilience” approach at column 7, lines 40– 48. Alison contends that the existence of two approaches makes this case like Dow Chemical Co. v. Nova Chemicals Corp. (Canada) and Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., in which we held certain claims indefinite be- cause there were competing ways to measure the limitation at issue, and the patents did not specify which measure to use. See Dow Chem., 803 F.3d 620, 631–35 (Fed. Cir. 2015); Teva Pharm., 789 F.3d 1335, 1340–45 (Fed. Cir. 2015). We disagree. At the outset, we hold this argument waived because Alison did not make this specific argument in its brief to the Commission. See 19 C.F.R. § 210.43(b)(2); Finnigan Corp. v. Int’l Trade Comm’n, 180 F.3d 1354, 1362–63 (Fed. Cir. 1999). But Alison’s argument also fails on the merits. The Dow Chemical and Teva Pharmaceuti- cals cases are distinguishable because in those cases there were “multiple methods leading to different results without guidance in the patent or the prosecution history as to which method should be used.” Dow Chem., 803 F.3d at 634; see also Teva Pharm., 789 F.3d at 1344–45. Here, in contrast, the ’359 patent identifies the applicable meth- ods of measurement and demonstrates their application via examples. Alison has not provided any evidence, more- over, that the different methods of measurement described in the ’359 patent lead to different results. Nor do we ex- pect there to be any such incongruity. Because “lofty . . . batting” is expressly defined by the ’359 patent based on two properties, bulk and resilience, we find it un- remarkable that the specification discloses two methods of measuring loftiness. GUANGDONG ALISON HI-TECH CO. v. ITC 15
Lastly, Alison asserts that the Commission’s indefi- niteness analysis is improper because it rests on an “irrec- oncilable contradiction” with its claim construction. Appellant’s Br. 19. According to Alison, the ALJ provided a single reason for holding the claim term not indefinite: the specification states that “a lofty batting is ‘sufficiently resilient’ if ‘after compression for a few seconds it will re- turn to at least 70% of its original thickness.” Id. at 22 (quoting Claim Construction Order, App. A at 4). Yet, in construing the term, the ALJ declined to limit “lofty . . . batting” to this specific example of “resilience” in the specification: a material that is compressible by 50% and will return to 70% of its original thickness after a few seconds. Citing no authority, Alison contends that if the 70% example does not limit the scope of the claim, then it must be “irrelevant to indefiniteness.” Id. at 23. If it is used at all, the 70% example must be a limitation “for all purposes, including infringement.” Id. Again, this argument is waived for failure to raise it before the Commission. See 19 C.F.R. § 210.43(b)(2); Fin- nigan, 180 F.3d at 1362–63. Alison did not contend that there was any contradiction, or any inadequacy, in the ALJ’s indefiniteness analysis based on her reliance on the 70% example. On the merits, furthermore, Alison’s argu- ment finds no support in our case law. Nor should it, be- cause there is no “fundamental[] incompatib[ility]” here. Appellant’s Br. 23. Under our case law, examples in the specification may be used to inform those skilled in the art of the scope of the invention with reasonable certainty— thus demonstrating that the term is not indefinite—with- out being directly construed into the claim. See, e.g., Sonix, 844 F.3d at 1379; Enzo, 599 F.3d at 1334–35. For the above reasons, we hold that claims 1, 7, and 9 of the ’359 patent are not indefinite, and we affirm the Commission’s final determination on this ground. 16 GUANGDONG ALISON HI-TECH CO. v. ITC
II We now turn to the Commission’s anticipation and ob- viousness determinations. The Commission affirmed the ALJ’s initial determination that claims 1, 7, and 9 of the ’359 patent are not anticipated by Ramamurthi. The Com- mission also affirmed the ALJ’s separate determination that claim 9 is not anticipated by and would not have been obvious over Ramamurthi. We affirm the Commission on the anticipation ground without reaching the subsidiary obviousness ground. A A patent claim is invalid as anticipated only if each and every element of the claim is expressly or inherently dis- closed in a single prior art reference. See 35 U.S.C. § 102 (2006); 4 SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1192 (Fed. Cir. 2008). An element may be inherently disclosed only if it “is ‘necessarily present,’ not merely prob- ably or possibly present, in the prior art.” Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373, 1380 (Fed. Cir. 2002) (quot- ing Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002)). Anticipation is a question of fact that we review for substantial evidence. Vizio, Inc. v. Int’l Trade Comm’n, 605 F.3d 1330, 1342 (Fed. Cir. 2010). B The Commission affirmed the ALJ’s determination that Ramamurthi does not anticipate claims 1, 7, and 9 of the ’359 patent because Ramamurthi does not expressly or inherently disclose the “lofty . . . batting” limitation of the
4 Because the ’359 patent does not contain any claim with an effective filing date on or after March 16, 2013, the applicable version of 35 U.S.C. § 102 is the one preceding the changes made by the America Invents Act. See Leahy- Smith America Invents Act § 3(n), 125 Stat. at 293. GUANGDONG ALISON HI-TECH CO. v. ITC 17
challenged claims. Alison relies on the doctrine of inherent disclosure to establish the presence of the “lofty . . . bat- ting” limitation in Ramamurthi. According to Alison, ex- ample 1-B of Ramamurthi demonstrates the same properties of “bulk and some resilience” as the ALJ’s con- struction of “lofty . . . batting.” Alison also contends that example 2 of Ramamurthi has the same low density and thermal characteristics as the aerogel composites disclosed in the ’359 patent. Alison further asserts that a person of ordinary skill in the art would have understood “glass wool,” discussed as a preferred fiber in Ramamurthi, to be synonymous with the “fiberglass” expressly identified as a lofty batting in the ’359 patent. In view of these disclo- sures, Alison argues that a person of ordinary skill in the art would have recognized the “glass wool” disclosed in Ramamurthi as a type of “lofty . . . batting” recited in the challenged claims of the ’359 patent. The Commission rejected Alison’s arguments in favor of Aspen’s detailed expert testimony, which demonstrated that “fiberglass” and “glass wool” each describe broad cate- gories of materials that are not inherently “lofty.” With re- gard to example 1-B, the Commission credited Aspen’s expert testimony that the recited properties of bulk and re- silience in Ramamurthi reflected that of the composite, not its fibers, and one cannot necessarily attribute the bulk and resilience of the composite to the fibers contained therein. With regard to example 2, the Commission pointed out that both parties’ experts agreed that low density alone “does not inherently create a lofty batting.” Certain Composite Aerogel Insulation Materials, Inv. No. 337-TA-1003, Comm’n Op., EDIS No. 637154, at 24 (Feb. 22, 2018). The Commission concluded that “[e]ven if some types of glass wool . . . exhibit properties of bulk and resilience, this is not sufficient to demonstrate the inherency of bulk and resili- ency in the glass wool . . . disclosed in Ramamurthi.” Id. at 22. 18 GUANGDONG ALISON HI-TECH CO. v. ITC
We are not persuaded that the Commission’s determi- nation is unsupported by substantial evidence. Substan- tial evidence review must be guided by the applicable substantive evidentiary standard. See Checkpoint Sys., 54 F.3d at 761 n.5. Here, Alison bore the elevated burden of clearly and convincingly proving that the “glass wool” or another fiber of Ramamurthi necessarily presents the prop- erties of a “lofty . . . batting.” See Rosco, 304 F.3d at 1380; see also Motorola Mobility, LLC v. Int’l Trade Comm’n, 737 F.3d 1345, 1350 (Fed. Cir. 2013) (holding that “sub- stantial evidence supports the Commission’s conclusion that Motorola did not present clear and convincing evi- dence that the operating system necessarily required any additional capacity”). The ’359 patent itself expressly dis- cusses and distinguishes Ramamurthi, which was also con- sidered by the patent examiner during prosecution and later by the Board in denying Alison’s IPR petition. Argu- ments and references already considered by the Patent Of- fice may carry less weight with the fact finder. Sciele Pharma Inc. v. Lupin Ltd., 684 F.3d 1253, 1260 (Fed. Cir. 2012). Aspen’s expert, furthermore, rebutted Alison’s ex- pert testimony with detailed testimony supported by indus- try references. 5 Alison’s expert, for his part, merely presented a photo of glass wool pulled from a Wikipedia article, which he identified as lofty without any supporting analysis or testing. While Alison’s expert provided a more detailed analysis when seeking to establish the low density of Ramamurthi’s fibers, both experts agreed that a low-
5 In support of his testimony, Aspen’s expert relied in part on an industry handbook that postdated the Rama- murthi reference. The Commission identified this as harm- less error because Alison failed to establish its prima facie case of anticipation, and Alison did not contend that the nature of fiberglass and glass wool products had changed since Ramamurthi issued. We agree with the Commis- sion’s assessment. GUANGDONG ALISON HI-TECH CO. v. ITC 19
density fiber is not inherently lofty, so this evidence pro- vides little support for Alison’s inherency argument. Alison essentially asks us to reweigh the evidence, which we may not do on substantial evidence review. See AC Techs. S.A. v. Amazon.com, Inc., 912 F.3d 1358, 1367 (Fed. Cir. 2019). Considering the evidentiary record as a whole in light of the elevated burden Alison faced, we con- clude that the Commission could reasonably find that claims 1, 7, and 9 of the ’359 patent are not anticipated by Ramamurthi. See Checkpoint Sys., 54 F.3d at 761 n.5. Ac- cordingly, we hold that substantial evidence supports the Commission’s final determination of no anticipation on this ground, and we affirm. The Commission also affirmed the ALJ’s separate de- termination that claim 9 is not anticipated by and would not have been obvious over Ramamurthi. Claim 9 depends from claim 1 and additionally recites a specific range of do- pant that the parties agree is not expressly disclosed in Ramamurthi. On appeal, Alison asserts that the recited range is inherently disclosed by or would have been obvious over Ramamurthi’s disclosure. Because we affirm the Commission’s determination that the “lofty . . . batting” limitation of claim 1 is not expressly or inherently disclosed by Ramamurthi, we need not reach this separate ground for claim 9. CONCLUSION We have considered the parties’ other arguments, and we do not find them persuasive. For the foregoing reasons, we affirm the Commission’s final determination that claims 1, 7, and 9 of the ’359 patent are not invalid. AFFIRMED COSTS No costs.