U.S. International Trade Commission

Publication 4139 April 2010

Washington, DC 20436

In the Matter of

Investigation No. 337-TA-604 

Volume 1 of 2 

Certain Sucralose, Sweeteners Containing 

Sucralose, and Related Intermediate 

Compounds Thereof 
U.S. International Trade Commission

COMMISSIONERS 

Shara L. Aranoff, Chairman 

Daniel R. Pearson, Vice Chairman 

Deanna Tanner Okun 

Charlotte R. Lane 

Irving A. Williamson 

Dean A. Pinkert 

Address all communications to 

Secretary to the Commission 

United States International Trade Commission 

Washington, DC 20436
U.S. International Trade Commission

Washington, DC 20436 

www.usitc.gov

Publication 4139 April 2010

In the Matter of

Investigation No. 337-TA-604 

Volume 1 of 2 

Certain Sucralose, Sweeteners Containing 

Sucralose, and Related Intermediate 

Compounds Thereof 

UNITED STATES INTERNATIONAL TRADE COM~IIS ION 

W .. bloo l'~ ., D.C, 2 ... U 

CERTAIN SUC RALOSE. SWEtt£.'1ERS 

CONTAINING SUCRALOSE, ASD 

RELATED INTER.'''IEDIA 11': 

COMPOUNDS THEREOF 

NOTICE OFCOMMISSIOS DtT ERMINATION TO REVIEW AnNA L I .... ITIAL 

DETERMINA TlOS OF TilE A.D~IIN STRA. TlVE LA. W J UDGE 

A.GENCY, U.S. ID1cmatiooa1 T .... Comm;..;OII. 

A.CTI0.'l, Noti<:c. 

SUMMA.RY, Noti<c i. badly 1i_1Iw Iho U.S. hllcrnahooaJ T .... Comm;";on bao 

deIennincd «> review Iho final initiaJ delermiDatiOll ("iDi ofdle presidinl! odmininrotiv. law 

judlll' ("AU; in Iho ~>pIioned investigation under """ion 331 oflho T.-irr A<I of 1930. 

II amen;Ied, 19 U.S.C. § 1331 (""=1ion 33T"). The AU found no violation or"""i"" )31 

except with rapcc. to an&in oon'fW'icipabng md dew..ltod ,espoOOClits. 

FOR I'URTIlER INFORMATIONCONTA.CT: J ...... A. Wonh. om .. oflhoGenenl 

CO<I!i!OoI. U.S. lnIemi!ional Tnode Commi.<ioo. 500 E Stree(. S.W .. WIt5bingIon. D.C. 20436, 

h:lephone (202) 205·)06S. Copi .. of oon-oonrKknlioI documents fikd in ........."i"" ",itb Ibi. 

itwestigolion .... or will be aV2ildole for inspection during omoial busi ..... houn (8" S L m. to 

5:1 5 p.m.) in the Offi<:c of the Se=wy. US. International T .... Commi",ion, SOO E SIr<>el. 

S.W . Washingtoo, D.C. 20436, tclepb>ne (202) 20.l-2000. Gaom.l infomwion CIlOCeming tho 

ConunissiOll mlOy al", be obWnod by ot=Ioi"ll ito Internet ocr.-or (hrw I/wlfl!" wilt" goil. The 

publio r..:ool for !hi. investigotion ""'y be vi ....... on tit. Commiooion· •• 100:troni.: docket (EDIS) 

at &urIlrJkw ilt" gw. Hcoring-i""";rod persons .... Idviood t"'" i.formatiOil on tlti. maner 0011 

be obl. ioed byconta::1i ng the Commitsio.!'1 TOD tenninaJ OIl (202) 205-1810. 

SUPPLEMEl'o"T ARY INFORMATION: The Commission iDSlilll10d this iDvestigalion 011 May 

10. 2001. baood upon • comploint filed 011 beltolf ofTOl. 4 Lyle Tedmology lid. ofLondoro. 

United Kingdom, and TOle 4 Lyle Sucnlooe. Inc. of Detantr. lIIinoi. (colieoti, .. Iy. "'Tate 8< 

Lyle;. The complaint alle"", violations of """ion )37(. )(1)(8) of the T.-irr Act of 19)0 (19 

U.S ,C. t 1331) in Iho i~ into !he United Sto .... the .... for intpOfl2lion. and the .... 

witlt in the United Stites after importation of ~ oweotero= "",,12ininlllUCniooe, and 

related imermcdiOle <;ornpOUIIds thertof by reaoon of inmngemetlt of voriouo c Lairno of United 

Sweo Potent Noo. 4,980,463 ( "'tho '463 patent'"); s.4N.969 ('"the ' 969 pata" '"), 5.0",551 ("'the 

' S51 patent;; 5.498.709; and 7,049,4)5. The notice ofinvati p tion nomed twenty-five 

........... 
On August 15,2007, the Commission issued notice of its determination not to review an 

ID allowing JK Sucralose, Inc. to intervene as a respondent to the investigation. On August 30, 

2007, the Commission issued notice of its determination not to review an ID terminating the 

investigation with respect to ProFood International Inc. on the basis of a consent order. On 

October 3,2007, the Commission issued notice of its determination not to review an ID adding 

Heartland Sweeteners, LLC as a respondent to the investigation. 

On September 22,2008, the presiding administrative law judge issued a final initial 

determination (“final ID”) finding no violation of section 337 in the above-identified 

investigation (with the exception of certain non-participating and defaulted respondents). 

On October 6,2008, Tate & Lyle, four sets of respondents, and the Commission 

investigative each filed a petition for review. On October 14,2008, each filed a response. 

Having examined the final ID, the petitions for review, the responses thereto, and the 

relevant portions of the record in this investigation, the Commission .has determined to review 

the final ID in its entirety. 

The Commission requests briefing based on the evidentiary record on the issues on 

review. The Commission is particularly interested in responses to the following questions: 

(1) Regarding the issue ofwhether 19 U.S.C. 0 1337(a)(l)(B)(ii) extends to the 

‘551, ‘969, and ‘463 patents: Is this issue a matter ofjurisdiction or does it go to 

the merits of whether there is a violation of section 337? Does the exclusion order 

in the investigation which was the subject of In re Northern Pigment Co., 7 1 F.2d 

447,22 CCPA 166 (1934) suggest that 0 1337(a)(l)(B)(ii) has the same scope as 

35 U.S.C. 0 271(g)? 

(2) Would a sucralose product containing the tin catalyst that is addressed by the 

process claimed in the ‘55 1 patent be safe for human consumption and otherwise 

salable as a commercial product? In your response, please include a discussion of 

the testimony of Dr. Fraser-Reid at page 1874 of the transcript. 

(3) Is there infringement of the asserted claims of the ‘463 patent under the doctrine of 

equivalents? 

(4) Was the presence of 1 ‘,6’-dichlorosucrose-6-ester necessary to distinguish the asserted 

claims of the ‘463 patent from the prior art? Is it necessary to interpret the phrase “in 

situ” in the Mufti reference in order to determine the validity of the ‘463 patent? 

(5) What proof would be necessary for Tate & Lyle to show infringement of the asserted 

claims of the ‘55 1 and ‘969 patents? 

2 
(6) Are the asserted claims of the ‘551 and ‘969 patents invalid for obviousness in light of 

the use of organic tin catalysts in the prior art? 

In connection with the final disposition of this investigation, the Commission may issue 

(1) an order that could result in the exclusion of the subject articles from entry into the United 

States, and/or (2) cease and desist orders that could result in respondents being required to cease 

and desist from engaging in unfair acts in the importation and sale of such articles. Accordingly, 

the Commission is interested in receiving written submissions that address the form of remedy, if 

any, that should be ordered. If a party seeks exclusion of an article from entry into the United 

States for purposes other than entry for consumption, the party should so indicate and provide 

information establishing that activities involving other types of entry either are adversely 

affecting it or are likely to do so. For background information, see the Commission Opinion, In 

the Mutter of Certain Devices for Connecting Computers via Telephone Lines, Inv. No. 337-TA360. 

If the Commission contemplates some form of remedy, it must consider the effects of that 

remedy upon the public interest. The factors the Commission will consider include the effect 

that an exclusion order and/or cease and desist orders would have on (1) the public health and 

welfare, (2) competitive conditions in the U.S. economy, (3) U.S. production of articles that are 

like or directly competitive with those that are subject to investigation, and (4) U.S. consumers. 

The Commission is therefore interested in receiving written submissions that address the 

aforementioned public interest factors in the context of this investigation. 

If the Commission orders some form of remedy, the President has 60 days to approve or 

disapprove the Commission’s action. During this period, the subject articles would be entitled to 

enter the United States under a bond, in an amount to be determined by the Commission and 

prescribed by the Secretary of the Treasury. The Commission is therefore interested in receiving 

submissions concerning the amount of the bond that should be imposed. 

WRITTEN SUBMISSIONS: The parties to the investigation are requested to file written 

submissions on the issues under review. The submissions should be concise and thoroughly 

referenced to the record in this investigation, including references to exhibits and testimony. 

Additionally, the parties to the investigation, interested government agencies, and any other 

interested persons are encouraged to file written submissions on the issues of remedy, the public 

interest, and bonding. Such submissions should address the ALJ’s recommended determination 

on remedy and bonding. Complainant and the Commission investigative attorney are also 

requested to submit proposed remedial orders for the Commission’s consideration. Complainant 

is requested to supply the expiration dates of the patents at issue and the HTSUS numbers under 

which the accused products are imported. The written submissions and proposed remedial orders 

must be filed no later than the close of business on December 5,2008. Reply submissions must 

be filed no later than the close of business on December 12,2008. No further submissions will 

be permitted unless otherwise ordered by the Commission. 

3 
Persons filing written submissions must file with the Office of the Secretary the original 

and 12 true copies thereof on or before the deadlines stated above. Any person desiring to submit 

a document (or portion thereof) to the Commission in confidence must request confidential 

treatment unless the information has already been granted such treatment during the proceedings. 

All such requests should be directed to the Secretary of the Commission and must include a full 

statement of the reasons why the Commission should grant such treatment. See 19 C.F.R 

0 201.6. Documents for which confidential treatment is granted by the Commission will be 

treated accordingly. All nonconfidential written submissions will be available for public 

inspection at the Office of the Secretary. 

This action is taken under the authority of section 337 of the Tariff Act of 1930, as 

amended (19 U.S.C. 0 1337), and under sections 210.42 - Commission’s Rules of 

Practice and Procedure (1 9 C.F.R. 00 2 10.42 - .46). / 

Acting Secretary to the Commission 

Issued: November 2 1,2008 

4 
Certificate of Service - Page 1 

CERTAIN SUCRALOSE, SWEETENERS CONTAINING 337-TA-604 

SUCRALOSE, AND COMPONENTS THEREOF 

CERTIFICATE OF SERVICE 

I, Marilyn R. Abbott, hereby certify that the attached NOTICE OF COMMISSION 

DETERMINATION TO REVIEW A FINIAL INITIAL DETERMINATION OF 

THE ADMINISTRATIVE LAW JUDGE has been served by hand upon the 

Commission Investigative Attorney, Christopher Q. Paulraj , Esq., and the following 

parties as indicated, on NOV 2 4 

U.S. International Trade Commission 

500 E Street, SW 

Washington, DC 20436 

ON BEHALF OF COMPLAINANTS TATE & LYLE 

TECHNOLOGY LIMITED AND TATE & LYLE 

SUCRALOSE, INC.: 

Thomas L. Jarvis, Esq. 

FINNEGAN HENDERSON 

FARABOW GARRETT & DUNNER 

901 New York, Avenue, NW 

Washington, DC 2000 1-44 13 

P-202-408-4000 

F-202-408-4400 

ON BEHALF OF RESPONDENTS CHANGZHOU 

NIUTANG CHEMICAL PLANT CO., LTD., 

GUANGDONG FOOD INDUSTRY INSTITUTE, 

GARUDA INTERNATIONAL CO., LTD., 

L & P FOOD INGREDIENT CO., LTD. 

AND U.S. NIUTANG CHEMICAL, INC. 

Gary M. Hnath, Esq. 

BINGHAM MCCUTCHEN LLP 

2020 K Street, NW 

Washington, DC 20006 

P-202-3 73 -6000 

F-202-373-600 1 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

(x) Via First Class Mail 

( )Other: 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

(,Q Via First Class Mail 

( )Other: 
Certificate of Service - Page 2 

ON BEHALF OF RESPONDENTS HEBEI SUKERUI 

SCIENCE AND TECHNOLOGY CO., LTD., BEIJING 

FORBEST CHEMICAL CO., LTD., BEIJING 

FORBEST TRADE CO., LTD., AND FORBEST 

INTERNATIONAL USA, LLC: 

Marcia H. Sundeen, Esq. 

KENYON & KENYON LLP 

1500 K Street, NW 

Suite 700 

Washington, DC 20005 

P-202-220-4200 

F-202-220-420 1 

ON BEHALF OF RESPONDENTS MTC 

INDUSTRIES, INC. AND NANTONG MOLECULAR 

TECHNOLOGY CO., LTD.: 

Kevin Tung, Esq. 

KEVIN KERVENG TUNG, PC 

33-70 Prince Street, CA-30 

Flushing, NY 11354 

P-718-939-4633 

F-718-939-4468 

ON BEHALF OF RESPONDENTS HEARTLAND 

PACKAGING CORPORATION AND HEARTLAND 

SWEETNER LLC: 

William L. O’Connor, Esq. 

DANN PECAR NEWMAN & KLEIMAN 

One America Tower 

One American Square, Suite 2300 

Indianapolis, IN 46282 

P-3 17-632-3232 

F-3 17-632-2962 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

Via First Class Mail 

( )Other: 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

Qo Via First Class Mail 

( )Other: 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

Via First Class Mail 

( )Other: 
Certificate of Service - Page 3 

ON BEHALF OF RESPONDENT JK SUCRALOSE, 

INCOROPRATED: 

Craig S. Smith, Esq. 

FISH & RICHARDSON PC 

225 Franklin Street 

Boston, MA 02 I 10 

P-617-542-7070 

F-617-542-8906 

RESPONDENTS: 

AIDP, Inc. 

17920 East Ajax Circle 

City of Industry, California 9 1748 

F-626-964-6739 ' 

P-626-964-6910 

CJ America, Inc. 

3470 Wilshire Blvd,. Suite 930 

Los Angeles, California 9001 0 

P-213-427-5566 

F-2 13-380-5433 

Fortune Bridge Co., Inc. 

137 Meacham Ave 

Elmont, New York 11003 

Nu-Scaan Nutraceuticals, Ltd. 

Waterside House, Waterside 

Macclesfield, Cheshire, SKI 1 7HG 

United Kingdom 

P-44- 1625 574430 

F-44-1625-57613 

Vivion, Inc. 

929 Bransten Road 

San Carolos, California 94070 

P-65 0-5 95 -3 600 

F-650-595-2094 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

oc> Via First Class Mail 

( )Other: 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

('& Via First Class Mail 

( ) Other: 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

o(> Via First Class Mail 

( ) Other: 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

Via First Class Mail 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

(8 Via First Class Mail 

( ) Other: 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

(xj Via First Class Mail 

( ) Other: 

PUBLIC VERSION 

TABLE OF CONTENTS 

I. BACKGROUND ........................................................... 4 

A. Procedural History ................................................... 4 

1. Addition of Parties, Termination of Parties, and Narrowing of the Issues 6 

2. Pertinent Motions .............................................. 6 

3. The ALJ's Final ID; Petitions for Review .......................... 8 

4. The Commission's Notice of Review; Briefing on Review ............ 10 

B. The Asserted Patents ................................................. 11 

II. STANDARD OF REVIEW ................................................. 12 

III. SECTION 337(a)(I)(B)(ii): WHETHER SUCRALOSE IS "MADE ... UNDER, OR BY 

MEANS OF" THE PROCESSES OF THE '463, '969, AND '551 PATENTS ..... 13 

A. The ALJ's ID ...................................................... 13 

B. The Issue on Review ................................................. 16 

C. Statutory Language ................................................. 17 

D. The History of the Legislation: Evolution from Predecessor Provisions and 

Related Judicial and Administrative Decisions ........................ 18 

1. Section 316 of the Tariff Act of 1922 .............................. 18 

2. Section 337 of the Tariff Act of 1930, As Originally Enacted .......... 20 

3. The Original Process Patent Provision (Section 337a) ............... 21 

4. Current Section 337(a)(I)(B)(ii) .................................. 22 

E. Construction of Section 337(a)(I)(B)(ii) ................................. 23 

F. Other Relevant Case Law ............................................ 27 

G. Application to the '463, '969, and '551 Patents ........................... 32 

IV. INFRINGEMENT, VALIDITY, AND DOMESTIC INDUSTRY ................. 36 

A. The '463 Patent ..................................................... 36 

1. Infringement ................................................. 36 

a. Claim Construction ...................................... 37 

b. Literal Infringement ..................................... 48 

c. Infringement under the Doctrine of Equivalents .............. 58 

2. Anticipation/Obviousness ....................................... 63 

3. Enablement .................................................. 67 

4. Written Description ........................................... 69 

5. Indefiniteness ................................................. 70 

6. Domestic Industry ............................................. 70 

B. The '969 and '551 patents ............................................ 71 

1. Infringement of the '969 and '551 patents ......................... 72 

a. Preliminary Issues ....................................... 74 

b. Literal Infringement ..................................... 79 

2. Anticipation and Obviousness ................................... 82 

2 
PUBLIC VERSION 

a. The '969 Patent: Anticipation and Obviousness .............. 82 

b. The '551 Patent: Anticipation and Obviousness .............. 86 

C. The '709 and '435 Patents ............................................ 88 

V. REMEDY, THE PUBLIC INTEREST, AND BONDING ........................ 94 

3 
PUBLIC VERSION 

On April 3, 2009, the Commission determined to tenninate the above-captioned 

investigation with a finding that there is no violation of section 337 of the Tariff Act of 1930, as 

amended, 19 U.S.C. § 1337 ("section 337") on the merits with respect to any of the asserted 

patents and that it had detennined to issue a limited exclusion order directed to certain products 

of defaulting and non-participating respondents with respect to U.S. Patent Nos. 5,470,969; 

5,498,709; and/or 7,049,435. This opinion sets forth the reasons for the Commission's final 

determination. The Commission hereby adopts the administrative law judge's conclusions and 

findings of fact set out in his final initial detennination ("final ID") to the extent not inconsistent 

with this opinion. 

I. BACKGROUND 

A. Procedural HistOlY 

This investigation was instituted on May 10, 2007, based upon a complaint filed on 

behalf of Tate & Lyle Technology Ltd. of London, United Kingdom and Tate & Lyle Sucralose, 

Inc. of Decatur, Illinois (collectively, "Tate & Lyle") on April 6, 2007, and supplemented on 

April 13, 18,23, and 25,2007. 72 Fed. Reg. 26,645 (May 10, 2007). The complaint alleged 

violations of subsection (a)(1)(B) of section 337 of the Tariff Act of 1930 (19 U.S.c. § 1337) in 

the importation into the United States, the sale for importation, and the sale within the United 

States after importation of certain sucralose, sweeteners containing sucralose, and related 

intermediate compounds thereof by reason of infringement of various claims of United States 

Patent Nos. 5,470,969 ("the '969 patent"); 5,034,551 ("the '551 patent"); 4,980,463 ("the '463 

patent"); 5,498,709 ("the '709 patent"); and 7,049,435 ("the '435 patent"). The notice of 

investigation named twenty-five firms as respondents. With additions and deletions, there were 

4 
PUBLIC VERSION 

twenty-six respondents at the time of the final ID. These respondents are divided into four 

groups: 

A. Participating manufacturing respondents: 

Changzhou Niutang Chemical Plant Co. ("Changzhou Niutang Chemical") 

Guangdong Food Industry Institute and L&P Food Ingredient Co., Ltd. ("GDFII") 

Hebei Sukerui Science and Technology Co., Ltd. ("Hebei Sukerui Science") 

JK Sucralose, Inc. ("JK Sucralose") (added by intervention) 

B. Participating non-manufacturing respondents: 

Beijing Forbest Chemical Co., Ltd. and Beijing Forbest Trade Co., Ltd. 

("Forbest Chemical/Forbest Trade") 

Forbest International USA, LLC ("Forbest USA") 

U.S. Niutang Chemical, Inc. ("U.S. Niutang") 

Garuda International, Inc. ("Garuda") 

Heartland Packaging Corporation ("Heartland Packaging") 

Heartland Sweeteners LLC ("Heartland Sweeteners") (added subsequently) 

MTC Industries, Inc. ("MTC") 

Nantong Molecular Technology Co., Ltd. ("Nantong MTC") 

C. Non-participating respondents (respondents who did not participate in the 

investigation but for which no default ruling was made) (see ID at 14-15): 

AIDP, Inc. ("AIDP") 

Fortune Bridge Co., Inc. ("Fortune Bridge") 

Nu-Scaan Nutraceuticals ("Nu-Scaan") 

CJ America, Inc. ("CJ America") 

Vivion, Inc. ("Vivion") 

ProFood International, Inc. ("ProFood") (tenninated via consent order) 

D. Defaulting respondents (Commission Notice Aug. 27, 2007): 

Gremount International Co., Ltd. ("Gremount") 

Hebei Province Chemical Industry Academe ("Hebei Academe") 

Hebei Research Institute of Chemical Industry ("Hebei Research") 

Lianyungang Natiprol (Int'l) Co., Ltd. ("Lianyungang Natiprol") 

Ruland Chemistry Co., Ltd. ("Ruland") 

Shanghai Aurisco International Trading Co., Ltd. ("Shanghai Aurisco") 

Zhongjin Phannaceutical (Hong Kong) Co. ("Zhongjin") 

5 
PUBLIC VERSION 

1. Addition of Parties, Termination of Parties, and Narrowing of the Issues 

On August 15,2007, the Commission issued notice of its detennination not to review an 

ID (Order No.7) allowing JK Sucralose to intervene as a respondent in the investigation. On 

August 30, 2007, the Commission issued notice of its detennination not to review an ID (Order 

No. 12) tenninating the investigation with respect to ProFood on the basis of a consent order. On 

October 3,2007, the Commission issued notice of its detennination not to review an ID (Order 

No. 17) adding Heartland Sweeteners, LLC ("Heartland Sweeteners") as a respondent in the 

investigation. 

On January 22,2008, the Commission issued notice of its detennination not to review an 

ID (Order No. 38) allowing Tate & Lyle to withdraw all asserted claims of the '709 patent with 

respect to respondents Changzhou Niutang Chemical, GDFII, Hebei Sukerui Science, Heartland 

Sweeteners, Heartland Packaging, MTC, Nantong Molecular, Garuda, Forbest Trade/Forbest 

Chemical, and Forbest USA, and to withdraw all asserted claims of the '435 patent with respect 

to Hebei Sukerui Science, Forbest Chemical/Forbest Trade, Heartland Sweeteners, Heartland 

Packaging, MTC, and Nantong MTC, and holding that the claims against JK Sucralose for 

infringement of the '969 and '551 patents are now moot. 

2. Pertinent Motions 

In its notice of investigation, the Commission stated: 

The Commission notes that some of the patents at issue may cover 

processes that produce chemical precursors or intennediates of sucralose or that 

recover certain chemical catalysts from the synthesis. In instituting this 

investigation, the Commission has not made any detennination as to the scope of 

[19] U.S.C. § 1337(a)(l)(B)(ii) or whether 337(a)(I)(B)(ii) is sufficiently broad as 

to encompass such processes. Accordingly, the presiding administrative law 

judge may wish to consider these fundamental issues at an early date. Any such 

6 
Id. 

PUBLIC VERSION 

decision should be issued in the fonn of an initial detennination (ID) under Rule 

21O.42(c), 19 C.F.R. § 210.42(c). The ID will become the Commission's final 

detennination 45 days after the date of service of the ID unless the Commission 

detennines to review the ID. Any such review will be conducted in accordance 

with Commission Rules 210.43, 210.44 and 210.45, 19 C.F.R. §§ 210.43, 210.44, 

and 210.45. 

On June 12,2007, certain respondents filed a motion to tenninate the investigation with 

respect to the '463, '969, and '551 patents, arguing that the Commission lacked jurisdiction over 

the asserted claims, stating that the claims did not fall within the scope of 19 U.S.C. § 

1337(a)(1)(B)(ii). On August 8, 2007, the AU issued Order No. 11, an ID denying the motion to 

tenninate. On September 24, 2007, the Commission issued notice of its detennination to review 

and vacate the ID and providing questions for the parties to brief and for the AU to rule on in his 

final ID. ID at 5. 

On February 4, 2008, the AU issued Order No. 48 granting a joint motion filed by certain 

respondents to preclude Tate & Lyle from relying on certain late-produced materials relating to 

testing of certain samples from plant inspections, e.g., the Crich Supplemental Report, portions 

of the Sands Supplemental Report, and certain testing from Bodycote and Ciba, finns engaged by 

Tate & Lyle. ID at 8. The late-filed materials which Tate & Lyle attempted to rely on related to 

the '463, '969, and '551 patents. On February 11, 2008, the AU denied reconsideration of this 

order in Order No. 56. ID at 8. 

On February 7,2008, the AU issued an order (Order No. 52), denying a motion by Tate 

& Lyle for a presumption under 35 U.S.C. § 295 that Changzhou Niutang Chemical, U.S. 

Niutang, and GDFII infringe the '969 and '551 patents. See ID at 8. 

7 
PUBLIC VERSION 

3. The ALJ's Final ID; Petitions for Review 

The ALJ held an evidentiary hearing on February 21-29,2008. ill at 9. On September 

22, 2008, the presiding administrative law judge issued a final initial detennination ("final ill") 

finding no violation of section 337 in the above-identified investigation (with the exception of 

certain non-participating and defaulted respondents). The ALJ also celiified the evidentiary 

record to the Commission.) 

As a preliminary matter, the ALJ held that the asserted claims of the '463 and '969 

patents covered a process for making the imported product (sucralose) within the contemplation 

of 19 U.S.C. § 1337(a)(1)(B)(ii), but that the asserted claims of the '551 patent did not, treating 

this issue as a matter of jurisdiction. 

With regard to those respondents who participated in the investigation and did not 

default, the ALJ found that there was no infringement of the asselied claims of any of the 

asserted patents. In addressing the question of infringement, the ALJ confinned his earlier 

decision to exclude certain late-produced evidence relating to the '463, '969, and '551 patents 

sought to be admitted by complainants and his earlier decision to deny complainants' motion for 

a presumption under 35 U.S.C. § 295 to demonstrate infringement of the '969 and '551 patents 

by four respondents. The ALJ did find that certain defaulting and non-participating respondents 

had infringed the asserted claims ofthe '463, '969, '551, '709 and/or '435 patents. 

The ALJ held that the asserted claims of the' 463 patent were not invalid for anticipation 

under 35 U.S.C. § 102 and/or obviousness under 35 U.S.C. § 103, and were not invalid for lack 

) Tate & Lyle argues on review that some of the exhibits it offered that were not admitted 

into evidence should have been. 

8 
PUBLIC VERSION 

of written description or indefiniteness under 35 U.S.C. § 112. However, the AU did find the 

asserted claims of the '463 patent invalid for lack of enablement under 35 U.S.c. § 112. The 

AU held that the asserted claims of the '969 patent and the '551 patent were not invalid for 

anticipation under 35 U.S.C. § 102 or obviousness under 35 U.S.C. § 103. None of the 

respondents argued that the '709 patent or '435 patent was invalid. 

The AU found that the economic prong of the domestic industry requirement was met for 

all of the patents. The AU found that the technical prong of the domestic industry requirement 

was met with respect to all patents except for the' 463 patent. 

In his recommended determination on remedy and bonding, the AU stated that a general 

exclusion order is not warranted. However, the ALl recommended cease and desist orders 

against certain respondents with a significant domestic inventory in the event that the 

Commission found these respondents in violation, and a bond in the amount of 100% of entered 

value in the event that the Commission issues a remedial order. ID at 226-28. 

Six petitions for review and contingent petitions for review were filed by, respectively: 

(1) Tate & Lyle, (2) Changzhou Niutang Chemical, GDFII, U.S. Niutang, and Garuda 

(collectively, "Changzhou Niutang"), (3) Hebei Sukerui Science, Beijing Forbest Chemical, 

Beijing Forbest Trade, and Forbest USA (collectively, "Hebei Sukerui"), (4) Heartland 

Packaging and Heartland Sweeteners (collectively, "Heartland"), (5) lK Sucralose, and (6) the 

Commission investigative attorney ("IA").2 

2 The petitions for review filed by respondents substantially overlapped. This was also 

true of the oppositions to Tate & Lyle's petition for review filed by those respondents. The 

petition for review and opposition of Changzhou Niutang provided the most detailed arguments 

of the several respondents and were usually representative of the arguments of the other 

9 
PUBLIC VERSION 

The petitions for review variously challenged (a) whether the COlmnission's authority 

under section 337 (a) (1 )(B)(ii) extends to process patents covering steps that do not directly yield 

the imported product, and in particular, whether the Commission's authority extends to the '463, 

'969, and '551 patents given that the end product of the asserted claims of these patents is not 

sucralose, but either an intennediate or a recovered catalyst, (b) the construction of the asserted 

claims of the '463 patent and whether the asserted claims of the '463 patent are infringed, 

literally or under the doctrine of equivalents, and whether they are invalid for anticipation, 

obviousness, failure to satisfy the written description requirement, failure to satisfy the 

enablement requirement, or indefiniteness, ( c) whether a domestic industry exists with respect to 

the asserted claims of the '463 patent, and (d) whether the asserted claims of the '969 and '551 

patents are infringed and whether they are invalid for anticipation or obviousness. 

4. The Commission's Notice of Review; Briefing on Review 

On November 21, 2008, the Cormnission issued notice of its detennination to review the 

final ID in its entirety. 73 Fed. Reg. 72526 (Nov. 28, 2008). The Cormnission requested briefing 

on the issues on review, as well as remedy, the public interest, and bonding, including responses 

to certain questions. Submissions and reply submissions were filed by, respectively: (1) Tate & 

Lyle, (2) Changzhou Niutang, (3) Hebei Sukerui, (4) Heartland, (5) JK Sucralose, (6) MTC and 

Nantong MTC, and (7) the IA.3 On January 14,2009, one group of respondents submitted a 

respondents. 

3 As with the petitions for review, the submissions filed by the four sets of respondents 

substantially overlapped. This was also true of the oppositions to Tate & Lyle's petition for 

review filed by those respondents. The submissions of Heartland and MTC and Nantong MTC 

rely on the submissions of the other respondents. The submissions of Changzhou Niutang 

provided the most detailed arguments of the several respondents and were usually representative 

10 
PUBLIC VERSION 

version of complainants' reply submission marked to indicate where complainants allegedly had 

attempted to rely on materials which had not been admitted into evidence by the ALl. 

B. The Asserted Patents 

The imported product is a sweetener which has the generic name sucralose, and which is 

sold by the complainants under the brand name Splenda®. The asserted patent claims at issue 

are process claims related to steps for the manufacture of sucralose.4 Sucralose is made from 

sucrose (table sugar) by chlorination, i.e., replacing three specific hydroxyl groups of sucrose 

with chlorine atoms.s Four of the patents teach distinct steps of a process for making sucralose, 

the individual steps consisting of: 

(1) "masking" the most reactive of the eight hydroxyl groups of sucrose with an 

ester group in the presence of a tin catalyst (esterification) so that this hydroxyl 

group does not react with chlorine in the next step (the '969 patent); 

(2) Replacing three of the remaining seven hydroxyl groups with chlorine (chlorination) 

(the '463 patent); 

(3) Removing the ester masking group (de-esterification) to produce a reaction 

mixture which includes sucralose (the '709 patent); and 

(4) Removing the impurities of the reaction mixture to produce purified sucralose 

(the '435 patent). 

The fifth patent teaches a liquid/liquid extraction to extract the tin compound used in the 

esterification step from the reaction mixture for eventual reuse (the '551 patent). 

of the arguments of the other respondents. 

4 The product patent on sucralose, also assigned to Tate & Lyle, expired on March 6, 

2001. U.S. Patent No. 4,435,440. 

S Hydroxyl (-OH) groups are also known as alcohol groups when attached to an organic 

molecule. In sucralose, three of the eight hydroxyl groups of sucrose are replaced with chlorine 

atoms. 

11 
PUBLIC VERSION 

II. STANDARD OF REVIEW 

Under the Administrative Procedure Act, upon review of the initial determination of the 

ALJ, "the agency has all of the powers which it would have in making the initial decision except 

as it may limit the issues on notice or by rule." 5 U.S.C. § 557(b) (quoted in Certain AcidWashed Garments and Accessories, Inv. No. 337-TA-324 (U.S.LT.C. Aug. 6, 1992)); 19 C.F.R. 

§ 210.45(c). In other words, once the Commission decides to review the decision of the ALl, 

the Commission may conduct a review of the findings of fact and conclusions of law presented 

by the record under a de novo standard. 

Claim construction is treated as a matter oflaw. Markman v. Westview Instruments, Inc., 

517 U.S. 370,372-74,116 S.Ct. 1384, 134 L.Ed.2d 577 (1996); Cybor Corp. v. FAS Techs., Inc., 

138 F.3d 1448, 1456,46 USPQ2d 1169, 1174 (Fed.Cir.1998) (en banc). Assessment ofliteral 

infringement, based upon claim construction, is an issue of fact. Mas-Hamilton Group v. 

LaGard, Inc., 156 F.3d 1206, 1211 (Fed. Cir. 1998). Infringement under the doctrine of 

equivalents is also an issue of fact. Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 

U.S. 17,38 (1997). Anticipation, based on claim construction, is an issue of fact. Seachange 

Int'l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1379 (Fed. Cir. 2005). Obviousness is a matter oflaw 

based on underlying factual findings. DyStar Textilfarben GMBH & Co. Deutschland KG v. 

c.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006). Satisfaction of the written description 

requirement is an issue of fact. Purdue Pharma L.P. v. Faulding Inc., 230 F.3d at 1320, 1323 

(Fed. Cir. 2000). Satisfaction of the enab1ement requirement is a matter of law based on 

underlying factual findings. In re Vaeck, 947 F.2d 488,495 (Fed. Cir. 1991). Definiteness is a 

12 
PUBLIC VERSION 

matter oflaw. Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 

1986). 

III. SECTION 337(a)(I)(B)(ii): WlJETHER SUCRALOSE IS "MADE ... UNDER, OR BY 

MEANS OF" THE PROCESSES OF THE '463, '969, AND '551 PATENTS 

As noted above, all of the asserted patents are process patents. The importation of 

articles made by a patented process is governed by section 337(a)(I)(B)(ii), which provides: 

(a)(1) Subject to paragraph (2), the following are unlawful, and when found by the 

Commission to exist shall be dealt with, in addition to any other provision of law, 

as provided in this section: 

19 U.S.C. § 1337. 

(B) The importation into the United States, the sale for 

importation, or the sale within the United States after importation 

by the owner, importer, or consignee, of articles that--

(ii) are made, produced, processed, or mined under, or by 

means of, a process covered by the claims of a valid and 

enforceable United States patent.... 

Respondents have argued that sucralose, the subject of this investigation, is not 

"made ... under, or by means of' the processes claimed in the '463, '969, or '551 patents. In 

keeping with the Federal Circuit's guidance in Amgen, Inc. v. lTC, we assume jurisdiction and 

consider this an issue that goes to the merits of whether there is a violation of section 337. 902 

F.2d 1532, 1536 (Fed. Cir. 1990) ("where a tribunal's subject matter jurisdiction is based on the 

same statute which gives rise to the federal right, ... the tribunal should assume jurisdiction and 

treat...the merits of the case.") 

A. The ALJ's ID 

The '463, '969, and '551 patents cover intennediates ofsucralose and the recovery ofa 

catalyst used in making an intennediate. The ALJ stated that the plain language of the statute 

13 
PUBLIC VERSION 

does not explicitly speak to the question of whether the Commission's authority under section 

337(a)(1)(B)(ii) extends to processes for making intennediates used to make the imported article 

or to processes for the recovery of catalysts used to make such intennediates. He therefore 

looked to the legislative history of section 337(a)(1)(B)(ii) and that of its predecessor statute, 

section 337a (fonner 19 U.S.C. § 1337a). ID at 42. 

Referring first to a statement by Senator Lautenberg, a sponsor of the bill that would 

amend section 337 to include section 337(a)(1)(B)(ii),6 the AU stated that it was the intent of 

Congress "to address the unfair acts of foreign companies who 'import products manufactured 

[abroad] using patented [] engineering technology. '" ID at 42 (quoting 134 Congo Rec. S 1 0711, 

S10714). He noted that respondents could not lawfully practice the claimed processes of the 

'463 and '969 patents in the United States. He concluded that "[t]herefore, if Respondents used 

Complainants' processes for production of sucralose, intennediate compounds of sucralose or 

catalysts used in the creation of sucralose, the use of the patented processes and the subsequent 

importation of products resulting from the use of such patented processes are the unlawful 

activities that Congress intended to address in enacting Section 337." ID at 43. 

He found that his interpretation "is further supported by the legislative history of the 

predecessor statute of § 337(a)(I)(B)(ii), namely Section 1337a." ID at 43. His analysis included 

a discussion of the CCPA's decision in In re Northern Pigment, 71 F.2d 449 (CCPA 1934), 

6 In 1988, Congress enacted the Omnibus Trade and Competitiveness Act (OTCA), 

which, inter alia, substantially amended section 337, including repealing section 337a and 

replacing it with section 337(a)(I)(B)(ii). The Federal Circuit has noted that the legislative 

history indicates that 19 U.S.c. § 1337(a)(1)(B)(ii) was meant to re-enact fonner section 337a 

and thus that section 337(a)(I)(B)(ii) has the same scope as fonner section 337a. Amgen, Inc. V. 

lTC, 902 F.2d 1532, 1538-1539 (Fed. Cir. 1990). 

14 
PUBLIC VERSION 

which fonned part of the backdrop to the enactment of the predecessor provision to section 

337(a)(1 )(B)(ii). He stated that in that case, the CCPA "found that the scope of original Section 

337 encompassed products that are other than those that are the direct result of the patented 

process." He noted that the exclusion order recommended by the Commission in the 

investigation underlying Northern Pigment encompassed not only yellow oxides of iron, but also 

oxides which had been "calcined or burned or processed in any other manner," specifically red 

oxides. ID at 43-44. 

The AU noted that in Amgen, Inc. v. lTC, 902 F.2d 1532, 1538-1539 (Fed. Cir. 1990), 

the Federal Circuit explained that § 1337(a)(1)(B)(ii) re-enacted § 1337a without a change in 

scope. In particular, he noted that § 1337a was intended to overrule the CCPA's decision in In re 

Amtorg, 75 F.2d 826, 22 CCPA 558 (1935), which in tum had overruled In re Northern Pigment 

Co., 71 F.2d 447,449,22 CCPA 166, 168 (1934), thus reinstating Northern Pigment. ID at 43-

45. The AU stated that "Since Northern Pigment involved products that were further processed 

from those that were the direct result of the process covered by the patent at issue, it is clear that 

an intennediate product would also be covered if it meets the other requirements of the statute." 

ID at 45. 

The AU held that the' 463 and '969 patents fell within the scope of section 

1337(a)(1)(B)(ii) because the direct products of the processes claimed in those patents "are 

chemical precursors of sucralose," and thus, according to the ALJ, can be considered 

"produced ... by means of a process covered by the claims." However, he held that the same is not 

the case for the' 551 patent because the' 551 patent does not yield a precursor of sucralose, but 

rather is directed to the recovery and reuse of a tin catalyst. ID at 46-49. He added that the tin 

15 
PUBLIC VERSION 

catalyst is not chemically related to sucralose and that the recovery step had not been shown 

necessary to make sucralose. In arriving at his conclusion, the ALJ rejected the lA's "nexus" 

test, whereby a "nexus" must exist between the imported article and the alleged unfair act to 

establish a violation under section 337(a)(I)(B)(ii). lD at 46.7 He examined the holdings in 

Kinik Co. v. lTC, 362 F.3d 1359 (Fed. Cir. 2004), and Microsoft Corp. v. AT&T, 550 U.S. 437, 

127 S. Ct. 1746 (2007), and stated that "the 'materially changed' defense of § 271(g) is irrelevant 

to the scope of relief available to a party under § 1337(a)(l)(B)(ii)" and that "no showing has 

been made that Section 271(f) would restrict this Commission's jurisdiction under Section 337." 

ID at 46-47. 

B. The Issue on Review 

As indicated above, the ALJ found that the Commission's process patent provision 

extends to the '463 and '969 patents, which relate to processes for intermediates used to produce 

sucralose, but found that it does not extend to the '551 patent, which relates to recovery of the 

organotin catalyst used in a process to produce one of those intennediates. Tate & Lyle has 

argued that the latter finding is erroneous; the respondents have argued that the former is 

7 The ALJ noted that an argument was raised as to whether trace amounts of the 

intennediates (the direct products of each ofthe patented processes which require further 

processing to become sucralose) contained in the imported sucralose can be a separate basis for 

jurisdiction. The ALJ held that this matter was more appropriately addressed under the 

infringement analysis for each patent. See ID at 48. However, he did not ultimately address that 

argument when discussing infringement or elsewhere in the ID. The issue was raised in the IA' s 

post-hearing brief at 22 and 117-19, and in Tate & Lyle's post-hearing brief at 38, but after the 

ALJ did not adjudicate the issue, Tate & Lyle did not raise the issue in its petition for review. 

Tate & Lyle has stated in a reply submission that the issue is now not properly before the 

Commission. Tate & Lyle Reply to Changzhou Niutang Submission at 188. The Commission 

concurs. See generally Commission Rule 210.43(b)(2). 

16 
PUBLIC VERSION 

erroneous. The IA agrees with the AU's conclusion, but argues that his basis for reaching it was 

erroneous. 

C. Statutory Language 

As noted above, the process patent provision of section 337 provides as follows: 

(a)(l) Subject to paragraph (2), the following are unlawful, and when found by the 

Commission to exist shall be dealt with, in addition to any other provision of law, as 

provided in this section: 

(B) The importation into the United States, the sale for importation, or the 

sale within the United States after importation by the owner, importer, or 

consignee, of articles that--

(ii) are made, produced, processed, or mined under, or by means 

of, a process covered by the claims of a valid and enforceable 

United States patent.... 

19 U.S.c. § 1337(a)(1)(B)(ii). 

In pertinent part, therefore, the statute makes unlawful the importation of "articles that are 

made, produced, processed, or mined under, or by means of, a [patented] process."s 

We first look to the words of the statute to determine whether a particular patent is within 

the scope of section 337(a)(1 )(B)(ii) with respect to the imported article under investigation.9 

The statute is ambiguous as to whether sucralose is "an article" that is "made ... under, or by 

means of' the patented processes at issue. On one hand, respondents argue that sucralose is not 

the "article" that is made by the patented process; rather, argue respondents, the "article" is an 

intennediate, or a catalyst. On the other hand, Tate and Lyle argues that the imported sucralose 

8 We will refer to this phrase as "made ... under, or by means of." 

9 Commissioner Lane does not join in the remainder of this paragraph because she views 

the statutory directive as clear but would nevertheless look to the legislative history to give 

further meaning to the words of the statute. 

17 
PUBLIC VERSION 

was "made, produced, [ or] processed" according to its patented processes in that the processes 

were used to make its precursor chemical products or to remove a catalyst from the reaction 

mixture. We, however, find no clear language in the statute that makes clear whether either of 

these competing interpretations of section 1337 (a)(1 )(B)(ii) is COlTect. In other words, the statute 

does not provide unambiguous guidance as to which steps are encompassed by the words "made 

... under, or by means of' where an article is made in a sequence of multiple steps. Therefore, 

we must tum to the legislative history to give further meaning to the words of the statute. 

D. The History of the Legislation: Evolution from Predecessor Provisions and Related 

Judicial and Administrative Decisions 

The Federal Circuit in Amgen explained that in enacting section 337(a)(I)(B)(ii), 

Congress intended to re-enact former section 337a. Congress had enacted section 337a to 

reinstate precedents under section 316 of the Tariff Act of 1922 and under section 337 of the 

Tariff Act of 1930 that had been overruled by In re Amtorg, 75 F.2d 826, 22 CCPA 558 (1935). 

In this section, we describe the history of the Tariff Act of 1922 and the Tariff Act of 1930 that 

led to the enactment of former section 337a and ultimately section 337(a)(1)(B)(ii). 

1. Section 316 of the Tariff Act of 1922 

The Commission's process patent provision has its origin in Commission and judicial 

precedent under section 316 of the Tariff Act of 1922, the predecessor to section 337. Section 

316(a) of the Tariff Act of 1922 provided as follows: 

(a) That unfair methods of competition and unfair acts in the importation of 

articles into the United States, or in their sale by the owner, importer, consignee, 

or agent of either, the effect or tendency of which is to destroy or substantially 

injure an industry, efficiently and economically operated, in the United States, or 

to prevent the establishment of such an industry, or to restrain or monopolize trade 

and commerce in the United States, are hereby declared unlawful, and when found 

18 
PUBLIC VERSION 

by the President to exist shall be dealt with, in addition to any other provisions of 

law, as hereinafter provided. 

42 Stat. 947, Pub. L. 67-318 (Sept. 21,1922) 

In Synthetic Phenolic Resin, Form C, and Articles Made Wholly or in Part Thereof the 

Commission found unfair methods of competition in the importation of synthetic phenolic resin, 

Form C/o and articles made wholly or in part thereof, such as cigar and cigarette holders and 

other molded products, made abroad using patented processes. 11 U.S. Tariff Commission, 

Report No.3, at 15 (1930). One of the patents (U.S. Patent No. 942,809) covered a method for 

making synthetic phenolic resin, Form C, by reacting a phenolic body with formaldehyde in the 

presence of a base. The second (U.S. Patent No.1 ,424,738) covered a method of fusing synthetic 

phenolic resin material, Form C, together with materials of different colors. In each case, the 

direct result of the patented process was a material which could then be used to make various 

articles, such as the imported products. The Commission recommended that the President issue 

an exclusion order, based in part on the recited process claims. 12 The Court of Customs and 

Patent Appeals subsequently affirmed the Commission. Frischer & Co. v. Bakelite COlporation, 

39 F.2d 247 (CCPA 1930), cert. denied sub nom. Frischer & Co. v. Tariff Commission & 

Bakelite Corporation, 282 U.S. 852 (1930). 

10 This material was trademarked "Bakelite" and was one of the first "plastics." Synthetic 

Phenolic Resin, Report at 16. 

11 A number of patents are mentioned in the Commission's report, but only two (U.S. 

Patent Nos. 942,809 and 1,424,738) were the subject of discussion in the Commission's report 

and the eventual remedial order. The '809 patent expired on December 6, 1926, prior to the 

Commission's final report, though it had, however, been the subject of a temporary remedial 

order published April 26, 1926. 

12 The Commission also found unfair methods of competition based on likelihood of 

confusion in violation of the trademark rights of the Bakelite Corporation, the complainant. 

19 
PUBLIC VERSION 

2. Section 337 of the Tariff Act of 1930, As Originally Enacted 

Section 316(a) of the Tariff Act of 1922 was reenacted as section 337 of the Tariff Act of 

1930. After the original enactment of section 337, the Commission conducted an investigation 

entitled Oxides of Iron Suitable for Pigment Pwposes, Inv. No.337-4 (Tariff Commission 1934). 

Original section 337(a) provided: 

Unfair methods of competition and unfair acts in the importation of articles into 

the United States, or in their sale by the owner, importer, consignee, or agent of 

either, the effect or tendency of which is to destroy or substantially injure an 

industry, efficiently and economically operated, in the United States, or to prevent 

the establishment of such an industry, or to restrain or monopolize trade and 

commerce in the United States, are hereby declared unlawful, and when found by 

the President to exist shall be dealt with, in addition to any other provisions of 

law, as hereinafter provided. 

Pub. L. 71-361,46 Stat. 703, 741 (1930). In Iron Oxides, the Commission found unfair methods 

of competition in the importation of iron oxide pigment made from iron ore using patented 

processes (reacting metallic iron with an oxidizing agent in the presence of a ferrous salt and heat 

and an improvement in which a colloidal ferric hydrate was added to the solution). The 

Commission recommended issuance of an exclusion order at the conclusion of the investigation 

covering the subject imports: a yellow pigment directly produced by the patented process and a 

red pigment which was a dehydrated form of the yellow pigment. The Court of Customs and 

Patent Appeals subsequently affirmed the Commission in In re Northern Pigment Co., 71 F .2d 

447,22 CCPA 166 (1934). 

The Commission followed Iron Oxides when it decided Phosphate Rock, Inv. No. 337-3. 

In that investigation, the Commission found unfair methods of competition based on the 

importation of phosphate rock or apatite which had been processed (concentrated) by a froth 

20 
PUBLIC VERSION 

flotation method covered by the claims of two patents. Tariff Commission 1 Th Annual Report at 

41 (1933) and 18th Annual Report at 41 (1934). The imported phosphate rock appears to have 

been the direct product of the patented process. The Court of Customs and Patent Appeals 

subsequently reversed the Commission's detennination in Phosphate Rock in In re Amtorg, 

holding that section 337 did not apply to articles made by patented processes. In so doing, the 

court also overruled Northern Pigment and Frischer. 

3. The Original Process Patent Provision (Section 337a) 

Reaction to Amtorg was unfavorable and an attempt was soon made to overrule it by 

legislation. After conducting hearings on the impact of In re Amtorg in 1938, Congress passed 

fonner section 337a (fonner 19 U.S.C. § 1337a) which provided as follows: 

The importation for use, sale, or exchange of a product made, produced, 

processed, or mined under or by means of a process covered by the claims of any 

unexpired valid United States letters patent, shall have the same status for 

purposes of section 1337 of this title as the importation of any product or article 

covered by the claims of any unexpired valid United States letters patent. 

54 Stat. 724 (July 2, 1940). The statute was intended to overrule In re Amtorg. There is little 

legislative history on section 337a and much of what exists is specific to imports of the 

phosphate rock that were the subject of Amtorg. "hnportation of Goods Covered by United 

States Patents (Process Patents on Phosphate Rock)," Hearings before the Committee on Patents, 

Subcommittee on Phosphate Rock Process Patents, H.R. 7851, H. Rep. (May 5, 1938); 

"Reference to Certain Mining Practices and Defming Unfair Trade Practices in Certain 

Instances," 76th Congo 2d Sess., H. Rep. No. 1781 (to accompany H.R. 8285) (March 13, 1940). 

21 
PUBLIC VERSION 

4. Current Section 337(a)(J)(B)(ii) 

In 1988, Congress enacted the OTCA, which, inter alia, substantially amended section 

337, including repealing section 337a and replacing it with section 337(a)(I)(B)(ii). The Federal 

Circuit has noted that the legislative history indicates that 19 U.S.C. § 1337(a)(1)(B)(ii) was 

meant to re-enact former section 337a and thus that section 337(a)(1)(B)(ii) has the same scope 

as fonner section 337a. Amgen, Inc. v. lTC, 902 F.2d 1532, 1538-1539 (Fed. Cir. 1990). Current 

19 U.S.C. § 1337(a)(1)(B)(ii) provides as follows: 

(a)(1) Subject to paragraph (2), the following are unlawful, and when found by the 

Commission to exist shall be dealt with, in addition to any other provision of law, 

as provided in this section: 

(B) The importation into the United States, the sale for importation, or the 

sale within the United States after importation by the owner, importer, or 

consignee, of articles that--

19 U.S.c. § 1337. 

(ii) are made, produced, processed, or mined under, or by means 

of, a process covered by the claims of a valid and enforceable 

United States patent.... 

Separately, the OTCA added section 271(g) to the patent law, which addressed process 

patents in the context of Title 35, the Patent Act. It provides as follows: 

(g) Whoever without authority imp011s into the United States or offers to sell, 

sells, or uses within the United States a product which is made by a process 

patented in the United States shall be liable as an infringer, if the importation, 

offer to sell, sale, or use of the product occurs during the term of such process 

patent. In an action for infringement of a process patent, no remedy may be 

granted for infringement on account of the noncommercial use or retail sale of a 

product unless there is no adequate remedy under this title for infringement on 

account of the importation or other use, offer to sell, or sale of that product. A 

product which is made by a patented process will, for purposes of this title, not be 

considered to be so made after--

22 
PUBLIC VERSION 

(1) it is materially changed by subsequent processes; or 

(2) it becomes a trivial and nonessential component of another product. 

35 U.S.C. § 271(g). 

A provision of the OTCA provides that § 271 (g) is not intended to alter any remedies 

under section 337: 

(c) RETENTION OF OTHER REMEDIES.-The amendments made by this 

subtitle shall not deprive a patent owner of any remedies available under 

subsections (a) through (f) of section 271 of title 35, United States Code, under 

section 337 of the Tariff Act of 1930, or under any other provision oflaw. 

Pub. L. 100-418 § 9006(c), 102 Stat. 1567 (Aug. 23, 1988), codified at 35 U.S.C. § 271 note. 

E. Construction of Section 337(a)(J)(B)(ii) 

The AU and the parties discussed the legislative history set out above and how, if at all, 

it provides guidance in interpreting the reach of the process patent provision of section 

337(a)(1)(B)(ii). We summarize their analyses before setting forth our own. 

1. The ALJ's ID 

As noted above, the AU construed section 337(a)(1)(B)(ii) to extend to imports of 

products made by patented processes even if those products are not the direct products of those 

processes so long as the direct products of those processes were the precursors of the imported 

products. He then found the '463 and '969 patents carne within this definition, but that the '551 

patent did not. 

23 
PUBLIC VERSION 

2. Changzhou Niutang's Submissions13 

In arguing that section 337(a)(1)(B)(ii) does not cover the asserted patents, Changzhou 

Niutang argues that the tenn "articles" does not include intennediates made by a patented process 

even if those intenuediates are precursors in the manufacture of the articles that are actually 

imported. Changzhou Niutang Petition at 8. Changzhou Niutang states that the words of a statute 

are given their ordinary meaning, citing FDIC v. Meyer, 510 U.S. 471, 476 (1994), and submits 

that the statute only prohibits the importation of "atiicles" made by a patented process. 

Changzhou Niutang Petition at 7-8. Changzhou Niutang argues that Northern Pigment is not 

relevant because it had nothing to do with intennediate articles. Changzhou Niutang Submission 

3. Tate & Lyle's Submissions 

In arguing that section 337(a)(1)(B)(ii) does cover all of the asserted patents, Tate & Lyle 

states that the statutory language "made, produced, processed, or mined under, or by means of a 

process covered by the claims of a valid and enforceable United States patent" applies to 

processes to make or produce intenuediates because the ultimate articles are made and produced 

by means of these processes. Tate & Lyle Response to Changzhou Niutang at 4. Tate & Lyle 

argues that the plain language of § 1337(a)(1)(B)(ii) is unambiguous. Tate & Lyle Response to 

Changzhou Niutang at 4. Tate & Lyle believes that the plain language of 19 U.S.C. § 

13 Much of the discussion in the parties' submission on the reach of section 

337(a)(1)(B)(ii) is intenuixed with discussion of whether that provision, properly understood, 

applies to the '463 and '969 patents in the case. 

14 The other three groups of respondents make similar arguments to those of Changzhou 

Niutang. Hebei Sukerui Petition at 30; JK Sucralose Petition at 37; Heartland Petition at 3. 

24 
PUBLIC VERSION 

1337(a)(1)(B)(ii) supports their position that the statute's authority covers articles which are 

further processed after the patented process, because the articles are still made by a patented 

process. Tate & Lyle Submission at 19-27. 

Tate & Lyle further argues that the legislative history of 19 U.S.C. § 1337(a)(1)(B)(ii) and 

related precedent encompass intermediate processes used to make an imported product. Tate & 

Lyle Response to Changzhou Niutang at 5-15. Tate & Lyle also cites as precedent three 

Commission determinations in which it states the Commission exercised authority under section 

337(a)(1)(B)(ii) and, in the latter two cases, found a violation. Tate & Lyle Response to 

Changzhou Niutang at 15-16 and Tate & Lyle Submission at 40-41 (citing Certain 

Anisotropically Etched One Megabit and Greater DRAMs and Products Containing Such 

DRAMs ("DRAMs"), Inv. No. 337-TA-345; Certain Methodsfor Extruding Plastic Tubing 

("Plastic Tubing"), Inv. No. 337-TA-llO; and Certain Rubber Antidegradants, Components 

Thereof, and Products Containing Same ("Rubber Antidegradants"), Inv. No. 337-TA-533).15 

4. The lA's Submissions 

The IA proposes the use of a "nexus" test in interpreting the scope of section 

337(a)(1)(B)(ii). The IA states that although the words of the statute do not contain the word 

"nexus," the agency may find a nexus requirement based upon the legislative history, and argues 

there is deference under Chevron to an agency's interpretation of an ambiguous statute. IA 

15 We note that the Commission deemed any issue related to the scope of section 

337(a)(1 )(B)(ii) to be waived in Rubber Antidegradants. The investigation in DRAMs was 

terminated pursuant to a settlement agreement. Notice (March 9, 1994). In Plastic Tubing, the 

question of applicability of section 33 7( a)(1 )(B)(ii) was not discussed in the Commission's 

opmlOn. 

25 
PUBLIC VERSION 

Petition at 7 (refening to Chevron U.S.A. v. Natural Resources Defense Council, 467 U.S. 837 

(1984)). The IA points to various ALJ opinions and to a plurality opinion by three 

Commissioners in Certain Welded Stainless Steel Pipe and Tube which states that "[i]t therefore 

becomes crucial to discern some nexus between unfair methods or acts and importation before 

this Commission has power to act." IA Petition at 11 (quoting Certain Welded Stainless Steel 

Pipe and Tube, Inv. No. 337-TA-29, USITC Pub. No. 863 (1978), Opinion of Commissioners 

Minchew, Moore, and Alberger at 11-12). The IA's main concern is that if the ALJ's approach 

to 19 U.S.C. § 1337(a)(1)(B)(ii) were adopted, a violation of section 337 could be found by 

reason of a process for making a component of an imported article, where the product of the 

process is far removed from the imported article. See IA Petition at 6; IA Reply Submission at 

17-18. The IA states that Northern Pigment covered "imported articles beyond the immediate 

product of an asserted patented process." IA Submission at 10. However, the IA states that the 

Commission and CCP A did not define the metes and bounds of the statute in that case and that 

the issue was not discussed in tenns of "material change," which are the words of35 U.S.C. § 

271(g). IA Submission at 10-11. 

5. Discussion 

The legislative history of section 337(a)(I)(B)(ii) indicates that it was meant to reenact 

fonner section 337a without change. In tum, section 337a was enacted to overturn In re Amtorg 

which had reversed Phosphate Rock and overruled Northern Pigment and Frischer. We 

therefore understand fonner section 337a, re-enacted as current section 337(a)(1)(B)(ii), to have 

reinstated the holdings of Northern Pigment and Frischer, as well as Iron Oxides, Phosphate 

26 
PUBLIC VERSION 

Rock, and Synthetic Phenolic Resin, which we discussed earlier in section II.D.3. In these cases, 

the Commission recommended the exclusion of articles made by patented processes, including 

articles which were further processed. We recognize that apparently no party disputed the 

Commission's authority to recommend the exclusion of these further processed articles during 

the proceedings before the agency or on appeal. Nevertheless, because the agency and court 

opinions indicated that the imported articles underwent further processing prior to importation, it 

appears that Congress had no objection to the Commission's conduct under the law when it 

subsequently reinstated these holdings through legislation. That view is consistent with the 

legislative history of the OTCA, which included amendments intended to strengthen the 

protection of process patents. See, e.g., S. Rep. 100-83 at 29-31 (1987). We also observe that 

while these cases indicate that further processing of a certain extent does not remove an article 

from the scope of section 337(a)(1 )(B)(ii), they do not, however, necessarily represent the 

maximum further processing that may be performed on an article without removing it from the 

reach of the statute. 

F. Other Relevant Case Law 

In Kinik Co. v. lTC, 362 F.3d 1359 (Fed. Cir. 2004), the Federal Circuit addressed, among 

other issues, whether defenses provided in 35 U.S.C. § 271 (g) were applicable in an action 

brought under 19 U.S.C. § 1337(a)(1)(B)(ii). These defenses limit infringement of process 

patents under § 271(g) to situations in which the product of the process has not been materially 

transfonned or which has been made a minor component of a larger article. Because of strong 

27 
PUBLIC VERSION 

disagreement among the ALJ and the parties on whether Kinik decided the extent of the process 

patent provision of section 1337 (a)(1 )(B)(ii), a closer examination ofthe decision is warranted. 16 

In the agency proceeding from which the Kinik litigation arose, the Commission affinned 

an order of the ALJ that the defenses to infringement contained in 35 U.S.C. § 271(g), i.e., 

section 271(g)(I) and (2), were not available in a case based on section 337(a)(1)(B)(ii) and that 

those defenses had not been timely raised. Certain Abrasive Products Made Using a Process for 

Powder Preforms, and Products Containing Same, Inv. No. 337-TA-449 (Commission Opinion 

Affinning AU Order No. 40). In making its decision, the Commission noted that section 9003 

of the Process Patent Amendments Act added section 271(g) to the patent law. The Commission 

also found that section 9006( c) of the Process Patent Amendments Act made it clear that the 

defenses of section 271 (g)(1) and (2) would not apply to section 337 cases, given that section 

9006(c) provides that "[t]he amendments made by this subtitle shall not deprive a patent owner 

of any remedies available ... under section 337 of the Tariff Act of 1930, or under any other 

provision oflaw." Additionally, the Commission found that section 271(g) explicitly restricted 

its application to cases under Title 35 because it expressly stated that the exceptions to 

16 Citing Kinik, The AU found that the "materially changed" defense of35 U.S.C. § 

271(g) "is irrelevant to the scope of relief available to a party under § 1337(a)(1 )(B)(ii)." ID at 

47. Tate & Lyle states that in Kinik the Federal Circuit affinned the "Commission's ruling that 

the defenses established in § 271(g), covering process patents, are not available in 19 U.S.C. § 

1337(a)(I)(B)(ii) actions." Tate & Lyle Response to Changzhou Niutang at 14 (quoting 362 F.3d 

1359, 1363 (Fed. Cir. 2004)); Tate & Lyle Submission at 39. Changzhou Niutang states that 

Kinik is not relevant because the defenses of35 U.S.C. § 271(g) are not at issue and because 

Kinik did not construe 19 U.S.C. § 1337(a)(I)(B)(ii). Changzhou Niutang Submission at 9 n.3. 

The IA argues that Kinik stands for the proposition that 35 U.S.C. § 271(g) and 19 U.S.C. § 

1337(a)(I)(B)(ii) are not coextensive. IA Submission at 10-11. 

28 
PUBLIC VERSION 

infringement in sections 271 (g)(1) and (2) were "for purposes of this title [Title 35]" and thus 

that those defenses do not apply to cases brought under section 337, which is pati of Title 19. On 

these bases, the Commission concluded that defenses enumerated in 35 U.S.c. § 271(g) were not 

available to respondents in an action brought under 19 U.S.C. § 1337(a)(1)(B)(ii). 

The accused infringer in the Abrasives case, Kinik Co., appealed the Commission's final 

detennination to the Federal Circuit, arguing numerous points, including that the Commission 

erred in holding that Kinik could not rely on the defenses in section 271(g)(1) and (2). On 

appeal, the Federal Circuit agreed with the Commission's interpretation of the statutory 

provisions and the legislative history with respect to the inapplicability of the section 271(g) 

defenses. Kinik, 362 F.'3d at 1362 ("We affinn the Commission's ruling that the defenses 

established in § 271(g) are not available in § 1337(a)(1)(B)(ii) actions."). However, the Court 

reversed the Commission's finding 6finfringement on an unrelated basis because it disagreed 

with the Commission's claim construction. Id. 

Tate & Lyle argues that Kinik stands for the proposition that the authority of the 

Commission under section 337(a)(1)(B)(ii) extends to products made abroad by a process 

patented in the United States, no matter how much further they are processed. Tate & Lyle 

Response to Changzhou Niutang at 14 (quoting 362 F.3d 1359, 1363 (Fed. Cir. 2004)); Tate & 

Lyle Submission at 39. We cannot agree with Tate & Lyle's interpretation of the Court's holding 

in that case. Based on the holding that § 271(g) defenses are inapplicable in actions under § 

1337(a)(I)(B)(ii), Tate & Lyle infers that the court also reached a holding on the extent of the 

process patent provision of § 337(a)(1)(B)(ii). That leap is unwarranted, however, because the 

29 
PUBLIC VERSION 

issue of the reach of the process patent provision at issue here was not addressed by the court in 

Kinik. In other words, there remains the distinct question of the extent to which the statutory 

language "articles ... made ... under, or by means of, a [patented] process" encompasses 

articles that are further processed prior to importation. We understand the Federal Circuit's 

statement that § 271(g) defenses do not apply to section 337(a)(1)(B)(ii) to mean that 35 U.S.c. 

§ 271(g) does not infonn the analysis of 19 U.S.C. § 1337(a)(1)(B)(ii), and therefore that 19 

U.S.C. § 1337(a)(1)(B)(ii) must be analyzed independently.17 18 

Respondents argue that Microsoft Corp. v. AT&T, 550 U.S. 437,127 S. Ct. 1746 (2007), 

is also pertinent to our inquiry. In Microsoft, the Supreme Court had before it an AT&T patent 

on a computer capable of digitally encoding and compressing recorded speech. Microsoft 

Windows operating system incorporated software code that, when installed in a computer, 

enabled that computer to process speech in a manner claimed by AT&T's patent. AT&T brought 

an action for infringement of its patent under 35 U.S.C. § 271(f). The Court held that the export 

of Microsoft's Windows on a disk which would be duplicated abroad and the copies installed on 

computers sold abroad did not constitute infringement of AT&T's patent under 35 U.S.C. § 

271(f). Microsoft Corp., 127 S. Ct. at 1752. 

The Court first found that a copy of Windows, not Windows in the abstract, qualified as a 

component under § 271(f). Next, the Court found that the absence of anything addressing 

17 We note that in both Abrasives and Kinik, the statements that § 271 (g) defenses do not 

apply to section 337(a)(1 )(B)(ii) cases were dicta, though for different reasons in the two cases. 

18 We also note that the argument that Kinik would have raised, had the § 271(g) defense 

applied, was that the additional heating step in its process put it within that defense. Thus it 

appears that only limited further processing would have been involved. Further, there would 

have been no issue regarding an intermediate or recovery of a catalyst. 

30 
PUBLIC VERSION 

copying in the text weighed against a judicial detennination that replication abroad of a master 

disk dispatched from the United States "supplies" the foreign-made copies from the United 

States within the intent of § 271. 

Microsoft cautions that statutes should be interpreted to limit the extraterritorial 

application of United States law in the absence of a clear statement by Congress. Microsoft 

derives this canon from notions of national sovereignty and deference to the policy judgments of 

foreign law. See Microsoft, 127 S.Ct. at 1746, 1759 ("As a principle of general application, 

moreover, we have stated that courts should 'assume that legislators take account of the 

legitimate sovereign interests of other nations when they write American laws.' Thus, the United 

States accurately conveyed in this case: 'Foreign conduct is [generally] the domain of foreign 

law,' and in the area here involved, in particular, foreign law 'may embody different policy 

judgments about the relative rights of inventors, competitors, and the public in patented 

inventions. '''). An additional principle was also enunciated in Microsoft. Like section 

337(a)(1)(B)(ii), § 271(t) was enacted to overrule a specific case. In such a circumstance, 

Microsoft cautions that when Congress addresses a gap in the statute, the court should avoid 

stretching that statutory language "beyond the text Congress composed" in order to address 

another arguable gap. Microsoft, 127 S. Ct. at 1757, 1759-60. The Supreme Court 

acknowledged, however, that the text of § 271(t) did, in at least one respect, "reach past the 

facts" of the case being overruled. 127 S. Ct. at 1760 n.l8. 

The Federal Circuit used a similar approach in Amgen, where it was urged to construe 

section 337(a)(1)(B)(ii). In that case, Amgen argued that the importation of erythropoietin made 

31 
PUBLIC VERSION 

abroad by using host cells alleged to be covered by Amgen's patent constituted impOliation of a 

product made by a process covered by the claims of that patent within the meaning of section 

337(a)(1)(B)(ii). The Federal Circuit noted that section 337a was specifically enacted to overrule 

In re Amtorg and that nothing in the legislative history supported the appellant's position that the 

statute was intended, contrary to its plain meaning, to prohibit the importation of goods made by 

a process which merely used abroad a product, apparatus, or material patented in this country. 

Amgen, 902 F.2d 1532, 1539-40 (Fed. Cir. 1990). 

G. Application to the '463, '969, and '551 Patents 

Tate & Lyle contends that sucralose is produced "by means of' the '463 and '969 patents, 

according to the general definition of the word "means" and further argues that the legislative 

history and precedent support jurisdiction over the '463 and '969 patents. Tate & Lyle 

Submission at 24-26,30-41. Changzhou Niutang argues that under the ordinary meaning of the 

word "article," sucralose is not an article produced by means of the '463 or '969 patents and 

submits that the legislative history, including Northern Pigment, supports its position. 

Changzhou Niutang Submission at 136-39. The IA argues that the '463 and '969 patents are 

within the scope of section 337(a)(1 )(B)(ii) because there is a nexus between the alleged 

infringement of the patents and the importation of sucralose. IA Submission at 26. The IA states 

that the intennediates resulting from the claimed processes are chemically very close to the 

imported sucralose, that the complete process for the conversion of sucrose to sucralose is not a 

lengthy process, and that the specifications of the '463 and '969 patents "posit the use of the 

resultant chemical intennediates in the eventual synthesis of sucralose." IA Submission at 26. 

32 
PUBLIC VERSION 

Based on our analysis of the statutory language, the history of the legislation, and other 

relevant case law, we find no disapproval of agency reconunendations that articles made by a 

patented process be excluded from importation notwithstanding that they underwent at least 

some further processing prior to importation. While we do not understand the further processing 

described in past investigations necessarily to represent the maximum permitted under the 

statute, we also bear in mind the cautionary principles set out in Microsoft regarding the 

interpretation of statutes with extraterritorial effect and those enacted to overturn a specific case. 

We find these sources of guidance sufficient to allow us to decide the dispute before us. While 

an articulation of additional considerations relevant to the application of the statute may be 

required by a future dispute, the pertinent record facts here represent a straightforward case for 

both the '463 and '969 patents on the one hand, and the '551 patent on the other. 

Specifically, as to the '463 and '969 patents, neither process directly results in sucralose, 

but each produces intennediates in the chain of production for sucralose in close proximity to the 

final product. The intennediates produced by the processes in the' 463 and '969 patents, 1 ',4,6'-

trichlorosucrose-6-ester and sucrose-6-ester, are further processed, but the record does not show 

uses for these intennediates other than for making sucralose. Indeed, the specifications of the 

'463 and '969 patents (in the Background of the Invention section) indicate that these 

intennediates are intennediates for the production of sucralose. '463 patent, col. 1, lines 18-20 

('It is a major synthesis problem to direct the chlorination of sucrose only to the desired 6', 4, and 

l' positions to produce sucra]ose. 19,,); '969 patent, col. 1, lines 29-34 ("A number of different 

19 Sucralose is 1 ',4,6'-trichlorosucrose. 

33 
PUBLIC VERSION 

synthetic routes for the preparation of sucralose have been developed in which the reactive 

hydroxyl in the 6 position is first blocked, as by an ester group, prior to the chlorination of the 

. hydroxyls in the 4, 1', and 6' positions, followed by hydrolysis to remove the ester substituent to 

produce sucralose.") Moreover, there is a short chain of steps from these intennediates to 

sucralose. The Commission finds that, under these facts, the '463 and '969 patents cover 

processes by means of which sucralose is made within the meaning of section 337(a)(I)(B)(ii). 

This finding that importation of sucralose constitutes a violation of section 

337(a)(I)(B)(ii) if it was "made, produced, or processed" under or by means of the processes 

claimed in the '463 and '969 patents is consistent with the two principles set forth in Microsoft. 

Where, as here, a statute presupposes some degree of extraterritorial application of U.S. law, that 

application must be reasonably limited in scope; the close interdependence between the patented 

processes and the production of sucralose makes it reasonable for the Commission to find that 

sucralose was "made, produced, or processed" under or by means of the processes claimed in the 

'463 and '969 patents. In addition, this finding does not attribute to "made, produced, or 

processed" an unreasonable scope of application, nor stretch it in an effort to address a problem 

of which Congress evinced no recognition when it overruled In re Amtorg by means of section 

337a. 

The ALJ held that the asserted claims of the '551 patent (recovery of the tin catalyst) do 

not fall within the Commission's jurisdiction because the product of the process of the '551 

patent is a tin catalyst, and sucralose is not produced by this process. ID at 46. Tate & Lyle, 

inter alia, submits that the' 5 51 patent does teach a process for producing a precursor of 

34 
PUBLIC VERSION 

sucralose, i.e., sucrose 6-ester, that the ALl mistakenly focused on the recovery of the tin 

catalyst because of the title of the pateneo and failed to give the claims their proper scope, since 

the claims, according to Tate & Lyle, provide that the separation of the tin catalyst from the 

reaction mixture yields sucrose-6-ester. Tate & Lyle Petition at 7-10; Tate & Lyle Submission at 

46-47 (citing, inter alia, Certain Recombinant Erythropoietin, 337-TA-281, Commission 

Decision, USITC Pub. No. 2186 (Apr. 10, 1989)). Changzhou Niutang contends that the '551 

patent is essentially about extraction of a tin compound and not about production of sucralose, 

arguing that the ALJ's construction ofthe scope of the asserted claims of the '551 patent was 

well supported by the patent and the claim language. Changzhou Niutang Response at 94-95. 

The IA argues that it is inaccurate for complainants to characterize the '551 patent as generating 

the sucrose-6-ester because a reaction mixture containing the sucrose-6-ester in the '551 patent 

claims is a starting material for that claimed process and the sucrose-6-ester remains chemically 

unchanged by the '551 process, even though the tin is being removed. IA Response at 4. 

As to the '551 patent, we agree with the ALl that sucralose is not produced "by means of' 

this process for recovering tin. In keeping with Microsoft, we have applied section 

337(a)(1)(B)(ii) according to its tenns, but have not extended it to cover the process of the '551 

patent. The direct product of the process of the '551 patent is a (recovered) tin catalyst which is 

not sucralose and cannot be processed to produce sucralose. The tin catalyst is neither a 

precursor of sucralose nor is it the imported article. As the IA pointed out, sucrose-6-ester, the 

building block which later becomes sucralose, is unchanged by the process of the '551 patent. 

20 The title of the patent is "Process for Recovery of Organotin Esters from Reaction 

Mixtures Containing the Same and Re-Use of the Recovered Organotin Compounds." 

35 
PUBLIC VERSION 

The purpose of the patent is to recycle the catalyst. Thus, sucralose is not processed by means of 

the '551 patent and the asserted claims of the '551 patent are not for processes for making 

sucralose within the meaning of section 337(a)(1)(B)(ii). 

IV. INFRINGEMENT, VALIDITY, AND DOMESTIC INDUSTRY 

A. The '463 Patent 

As of the date of the final ID, the complainant accused GDFII, Changzhou Niutang 

Chemical, Hebei Sukerui Science, JK Sucralose, CJ America, AIDP, Hebei Research, Forbest 

ChemicallForbest Trade, Forbest USA, Garuda, Heartland Sweeteners, MTC, Nantong MTC,. 

U.S. Niutang, Fortune Bridge, Gremount, Hebei Academe, Lianyungang Natiprol, Nu-Scaan, 

Ruland, Shanghai Aurisco, Vivion, and Zhongjin of infringing the asserted claims of the' 463 

patent via their importation and sale of sucralose. 

1. Infringement 

Detennining infringement is a two-step process which consists of detennining the scope 

of the asserted claim (claim construction) and then comparing the accused product or process to 

the claim as construed. An accused device literally infringes a patent claim if it contains every 

limitation recited in the claim. See, e.g., Litton Sys., Inc. v. Honeywell, Inc., 140 F.3d 1449, 1454 

(Fed. Cir. 1998). 

Even where an accused process does not literally infringe an asserted patent claim, it may 

nevertheless infringe under the doctrine of equivalents, if it perfonns the same function in the 

same way to produce the same result, or if the differences between the accused process and the 

patented process are insubstantial, for each limitation of the claim. Voda v. Cordis Corp., 536 

F.3d 1311, 1326-27 (Fed. Cir. 2008). 

36 
PUBLIC VERSION 

The claim construction for the analysis of infringement is the same claim construction 

used for the analysis of validity and the technical prong of the domestic industry requirement. 

a. Claim Construction 

Claim tenns are interpreted as they would be understood by a person of ordinary skill in 

the art in the context of the intrinsic evidence, consisting of the claims, the specification, and the 

prosecution history, if in evidence, and relevant extrinsic evidence. See, e.g., Phillips v. A WH 

Corp., 415 F.3d 1303, 1316-17 (citations omitted). 

The '463 patent teaches a method for replacing certain hydroxyl groups on the sucrose 

rings with chlorine at the 1',4, and 6' positions. The inventors of the '463 patent aimed to achieve 

selective chlorination using a Vilsmeier-type reagene 1 in a process that begins the reaction at a 

lower temperature (below about 85°C) and later proceeds at a higher temperature (at least 100°C). 

This process first selectively adds one or two chlorines at the lower temperature at the 1', 4, or 6' 

positions, and then, after the temperature is raised to at least 100°C, adds a third chlorine at the I', 

4, or 6' positions. The goal is to achieve selective chlorination (at the 1',4, and 6' positions) based 

on the order of reactivity of the unprotected hydroxyls: 

(position) 6' > 4 > I' > 2,3,3' 

and minimizing chlorination at the 2,3, and 3' positions, which are not chlorinated in the desired 

product. Thus, the patentees sought to first fonn monochloro-sucrose-6-ester, 4,6'-

dichlorosucrose-6-ester, and I',6'-dichlorosucrose-6-ester at the lower temperature before 

fonning I',4,6'-trichlorosucrose-6-ester at the higher temperature. The '463 patent also adds all 

21 A Vilsmeier-type reagent may be fonned by the reaction of an acid chloride and a 

tertiary amide. 

37 
PUBLIC VERSION 

of the reagents at the same time, rather than fonning the Vilsmeier-type reagent in advance, 

though the parties dispute whether adding all reagents at the same time is novel. 

Independent claim 1, from which the other claims depend, reads as follows: 

1. A process for the chlorination of sucrose-6-esters to produce 6', 

4,1 '-trichloro-sucrose-6-esters which comprises the steps of: 

( a) adding at least seven molar equivalents of an acid chloride to a 

reaction mixture containing a sucrose-6-ester and a tertiary amide 

to fonn a chlorofonniminium chloride salt in the presence of said 

sucrose-6-ester, whereby the chlorofonniminium salt fonns an 

O-alkylfonniminium chloride adduct with the hydroxyl groups of 

the sucrose-6-ester; 

(b) subjecting the reaction mixture product of step (a) to an 

elevated temperature not higher than about 85°C for a period of 

time sufficient to produce a mixture of chlorinated sucrose-6-ester 

products consisting essentially of monochlorosucrose-6-ester, 

4,6' -dichlorosucrose-6-ester, and 1',6' -dichlorosucrose-6-ester; and 

(c) subjecting the reaction mixture product of step (b) to an 

elevated temperature of at least about 100°C but not higher than 

about 130°C for a period of time sufficient to produce a chlorinated 

product comprising predominantly 1 ',4,6'-trichlorosucrose-6-ester. 

The AU construed limitations for all three steps, but eventually found noninfringement 

solely on the basis of the limitations of step (b), not reaching the question of whether the 

limitations of steps (a) or (c) were met.22 

22 As discussed infra, the ALJ also used this approach to find noninfringement of the '969 

and' 551 patents. Tate & Lyle challenges the ALJ's ID on the ground that, by not making 

findings on whether the accused processes met each of the claim limitations, the AU violated the 

Administrative Procedure Act (APA) and the Commission's decision in Certain Stringed 

Musical Instruments and Components Thereof ("Stringed Instruments"), Inv. No. 337-TA-586, 

that the Commission expects the ALJ to reach all issues. See Stringed Instruments Comm'n Op. 

at 1 ("The Commission's rules of practice and procedure provide that the initial detennination of 

the ALJ shall include' ... conclusions and the reasons or bases therefor necessary for the 

disposition of all material issues of fact, law, or discretion presented in the record .... ' 19 C.F .R. § 

210.42(d). Thus, although the Commission may elect in a final detennination of no violation not 

to take a position on other issues, Beloit Corp. v. Valmet Oy, 742F.2d 1421, 1423 (Fed. Cir. 

38 
PUBLIC VERSION 

h. The ALI's ID 

The AU construed the disputed claim terms for step (a) as follows: 

"adding" as not requiring any particular order of addition 

"at least seven molar equivalents" as "seven moles of acid chloride are added for each 

mole of sucrose-6-ester" 

"acid chloride" as "a substance in which one or more hydroxyl (-OR) groups of an acid is 

replaced by chlorine." 

"sucrose-6-ester" as "a mono-ester of the sucrose molecule where the ester group is on 

the 6 position, which does not include a sucrose-penta-ester." 

"tertiary amide" by its ordinary meaning, which includes DMF.23 

"to form a chlorofonniminium chloride salt in the presence of said sucrose-6-ester" to 

require the acid chloride to react with the tertiary amide in the presence of the 

sucrose-6-ester to form a chloroformiminium chloride salt 

1984), the Commission generally anticipates that the AUs will adjudicate all issues presented in 

the record."). The AU explained that it was not necessary to make factual findings on all claim 

limitations because he found that the accused processes did not meet one of the limitations, 

which he found to be dispositive. The complainants argue that it was "legally erroneous" for the 

AU to have failed to address the construction of each claim limitation. Tate & Lyle Submission 

at 170-71 (citing Commission Rule 210.42(d); 5 U.S.C. § 557(c)(3); Checkosky v. SEC, 139 F.3d 

221,226 (D.C. Cir. 1998) ("[A]n agency violates the APA when it fails to include in its 

adjudicatory decision a meaningful statement of findings and conclusions, and the reasons or 

basis thereof, on all material issues of fact, law, or discretion presented on the record.") The 

respondents counter that Tate & Lyle has not provided any authority for its argument that the 

AU must rule on every argument when a single argument is dispositive. Changzhou Niutang 

Reply Submission at 115. Respondents further submit that the AU was consistent with the 

Commission's statement in Stringed Instruments because the ALJ has ruled on every "issue" 

presented in the record, and points out that the Commission did not reverse the AU in Stringed 

Instruments. Id. The IA also argues that Stringed Instruments allows the AU to follow the same 

procedure as the Commission because the Commission did not remand the investigation to the 

AU. IA Reply Submission at 59-60. Since the claim limitations relied on by the AU are not 

met, the issue is moot. Nevertheless, we reiterate our statement in Stringed Instruments that we 

generally expect the AU to adjudicate all issues presented by record. 

23 An amide has a nitrogen bound to the "alpha" carbon of an organic acid. A tertiary 

amide has a total of three non-hydrogen atoms bound to the nitrogen. 

39 
PUBLIC VERSION 

"whereby the chlorofonniminium salt fonns an O-alkylformiminium chloride adduct with 

the hydroxyl groups of the sucrose-6-ester" as not requiring the fonnation of 0-

alkylfonniminium chloride adducts on all seven of the available hydroxyl groups 

of the sucrose-6-ester. 

ID at 73-74. 

Only some of the ALl's rulings construing the limitations of step (a) are the subject of 

Commission review. These are discussed below. 

Step (a): "to form a chloroformiminium chloride salt in the presence of said sucrose-6-ester" 

As noted above, the ALl construed this phrase to require the acid chloride to react with 

the tertiary amide in the presence of sucrose-6-ester to fonn a chlorofonniminium salt. Although 

the ALl held that the reagents do not need to be added in any particular order, he held that 

sucrose-6-ester must be present when the acid chloride is added to the tertiary amide (DMF). 

Compare ID at 68 with ID at 75-76. This construction was unfavorable to complainants, who 

argue that it is erroneous. 

Tate & Lyle's Submissions 

Tate & Lyle contends that sucrose-6-ester need not be present at the time that the acid 

chloride and tertiary amide are combined in step (a), as called for by the ALl's construction. 

Tate & Lyle argues that the ALl misconstrued "to fonn a chlorofonniminium chloride salt in the 

presence of said sucrose-6-ester" in step (a) by inappropriately importing limitations from certain 

examples of the specification into the claims to require that the chloroformiminium chloride salt 

fonn from the direct reaction of a tertiary amide and the acid chloride. Tate & Lyle Petition at 

30,32 (discussing the reaction scheme of figure 2 ofthe '463 patent); Tate & Lyle Submission at 

49-54. According to Tate & Lyle, the ALl construed the limitation to require the direct reaction 

40 
PUBLIC VERSION 

of a tertiary amide and the acid chloride. Tate & Lyle Petition at 30. This is significant 

according to Tate & Lyle because [[ 

]]. Tate & Lyle Petition 

at 31. Tate & Lyle submits that nothing in the claim language supports the ALl's construction, 

that the AU's construction would improperly exclude multiple examples of the invention 

disclosed in the patent from the scope of the claims, and that neither the specification nor the 

prosecution history supports the AU's construction. Tate & Lyle Petition at 31-33. 

The Respondents' Submissions 

Changzhou Niutang argues that Tate & Lyle makes a false distinction between a direct 

and indirect reaction because the AU did not require a direct reaction, but merely that an acid 

chloride react with a tertiary amide in the presence of sucrose-6-ester. Changzhou Niutang 

Response at 23-24,26. Changzhou Niutang states that the patentees made clear in the 

prosecution history that a key feature of the invention was the fonnation of chlorofonniminium 

chloride salt by the reaction of a tertiary amide and an acid chloride. Changzhou Niutang 

Submission at 26 (citing JX-6 at 320). Hebei Sukerui points to the plain language of the claim, 

"adding ... an acid chloride to a reaction mixture containing a sucrose-6-ester and a tertiary amide" 

to reach the same conclusion as Changzhou Niutang. Hebei Sukerui Submission at 12. 

The lA's Submissions 

The IA points to statements in the specification that it was a major discovery of this 

invention that an acid chloride will react with a tertiary amide even when sucrose-6-ester is also 

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PUBLIC VERSION 

in the solution. IA Response to Petitions at 21 (citing the' 463 patent, col. 4, lines 40-50); see 

also IA Review Submission at 17. 

Discussioll 

We agree that an important aspect of the invention in the specification and as argued to 

the PTO is the direct reaction of the acid chloride and the tertiary amide when sucrose-6-ester is 

also present, which is what the claim language calls for when it states that the 

chlorofonniminium chloride salt is fonned (from its acid chloride and tertiary amide precursors) 

"in the presence of said sucrose-6-ester." We therefore agree with the AU's claim construction 

of this tenn. See '463 patent, col. 4, lines 38-50; JX-6 (Response of July 18, 1989 at 4-5). 

Step (aJ: "whereby the chloroformimillium salt forms all O-alkylformimillium chloride adduct 

with the hydroxyl groups of the sucrose-6-ester" 

As noted above, the AU construed this limitation as not requiring the fonnation of 0-

alkylfonniminium chloride adducts on all seven of the available hydroxyl groups of the sucrose6-ester. This construction was unfavorable to respondents, who argue that it is erroneous. 

The Respondents' Submissions 

Respondents argue that this limitation means that there must be an O-alkylfonniminium 

chloride adduct fonned with each of the seven available hydroxyl groups of the sucrose-6-ester, 

in contrast to the ALl's construction. Changzhou Niutang states that neither example 13 nor any 

of the examples support the ALl's broad construction because the claim requires "adding at least 

seven molar equivalents of an acid chloride to a reaction mixture containing a sucrose-6-ester 

and a tertiary amide to fonn a chlorofonniminium chloride salt in the presence of said sucrose-6-

ester." Changzhou Niutang Response at 26-28. Changzhou Niutang argues that the antecedent 

42 
PUBLIC VERSION 

basis for "the hydroxyl groups" must be the groups that exist on sucrose-6-ester and states that 

the word "the" in the phrase "the hydroxyl groups" refers to all seven hydroxyl groups. 

Changzhou Niutang Submission at 27-33. 

Tate & Lyle's Submissions 

Tate & Lyle responds that just because seven molar equivalents of acid chloride are added 

does not mean that the acid chloride necessarily forms adducts with all seven of the available 

hydroxyls of the sucrose-6-ester. Tate & Lyle Response to Petitions at 1-2. Tate & Lyle states 

that Example 13 demonstrates this. Tate & Lyle Reply Submission at 37. 

The fA's Submissions 

The IA agrees with Tate & Lyle that it is not essential to the invention that all seven 

hydroxyl groups react with the acid chloride tofonn adducts. IA Response to Petitions at 51-58. 

Discussion 

Respondents' claim construction would result in prefened embodiments not being 

covered by the claims. There is a presumption against a claim construction that reads prefened 

embodiments out of a claim, Vitronics Corp. v. Conceptronic, Inc., 90 F .3d 1576, 1583 (Fed. Cir. 

1996). While this presumption is rebuttable, in our view, respondents have not sufficiently 

demonstrated that the presumption has been rebutted. We therefore agree with this aspect of the 

AU's claim construction. 

Steps (b) and (c) 

Steps (b) and (c) are best analyzed together. The AU construed the disputed claim terms 

for steps (b) and (c) as follows: 

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PUBLIC VERSION 

Step (b) 

"subjecting the reaction mixture product of step (a) to an elevated temperature not higher 

than about 85°C" as not requiring a discrete heating step that is separate and distinct from 

the heating in step ( c). 

"a mixture of chlorinated sucrose-6-ester products consisting essentially of 

monochorosucrose-6-ester, 4,6'-dichlorosucrose-6-ester, and 1', 6'-dichlorosucrose-6-

ester" as requiring substantially all of the sucrose-6-ester to be converted into a mixture 

of monochlorinated sucrose-6-esters, 4,6'-dichlorosucrose-6-ester, and 1',6'-

dichlorosucrose-6-ester, where little or no trichlorination or higher chlorination has 

occurred. 

Step (c) 

"subjecting the reaction mixture product of step (b) to an elevated temperature of at least 

about lOO°C but not higher than about l30°C for a period of time sufficient to produce a 

chlorinated product comprising predominantly I',4,6'-trichlorosucrose-6-ester" as 

requiring I',4,6'-trichlorosucrose-6-ester to be the most predominant chlorinated sucrose6-ester product at the end of step (c). 

Of these disputed limitations, the following are on review: 

Step (b): "subjecting the reaction mixture product of step (a) to an elevated temperature not 

higher than about 85°C. " 

The first issue is whether the claims cover a heating process which steadily raises the 

temperature from below 85°C to above 100°C or whether the heating must be conducted stepwise 

such that the temperature is first held below 85°C and then quickly raised above 100°C where it 

is held. As noted above, the ALl held that the reaction does not require a stepwise heating with 

discrete heating phases. This construction is unfavorable to respondents, who argue that it is 

erroneous. 

Respondents'Submissions 

Changzhou Niutang argues that the claim requires a stepped heating process with one 

heating step below 85°C and a second heating step at 1 OO-I30°C, pointing to the prosecution 

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PUBLIC VERSION 

history in which the patentee distinguished the claimed invention from the prior art by arguing to 

the PTO that: 

the two cited [prior art] patents do not teach the phased reaction whereby the 

chlorination reaction mixture is maintained at a temperature below about 85°C for 

a period of time sufficient to produce [the mixture of mono and dichlorosucrose 

produced by step (b)], followed by subjecting the reaction mixture product of the 

previous step to an elevated temperature not higher than about 125°C for a period 

of time sufficient to produce [the mixture consisting predominantly 1',4,6'-

trichlorosucrose-6-ester produced by step ( c)]. It is this discre[te] separation of 

the two steps, the first being carried out below about 85°C and the second below 

about 125°C, that is important for the success of the subject claimed invention, 

and it is this separation of the chlorination reaction into two discrete steps that the 

cited patents fail to teach 

Changzhou Niutang Petition for Review at 27 (quoting JX-6 at 321); Changzhou Niutang 

Submission at 37. 

Tate & Lyle's Submissions 

Tate & Lyle argues that the specification states that either a steadily increasing or a 

stepwise heating process may be used, that the steadily increasing method is identified in the 

specification as a preferred embodiment, and that there is no advantage of one over the other. 

Tate & Lyle Reply to Changzhou Niutang Petition at 25 (quoting '463 patent, col. 7, lines 9-17) 

("Preferably, the temperature gradient is conducted over a 20-30 min. period, which is sufficient 

to convert all of the sucrose-6-ester to a mixture of mono- and dichlorinated sucrose-6-esters 

prior to submission to the harsher trichlorination temperature conditions. Alternatively, discrete 

incremental heating steps may be employed to effect sequential chlorination stages, however no 

particular advantages are attendant thereto over a steeper temperature gradient."). 

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PUBLIC VERSION 

The lA's Submissions 

The IA submits that the ALJ correctly construed the claims to include a steadily 

increasing heating process (a "ramped" process) and not just a stepped process. See IA Response 

to Petitions at 58; IA Reply Submission at 48. 

Discussion 

We agree with Tate & Lyle that the specification indicates that the heating may be either 

steadily increasing or stepwise/incremental. This is not inconsistent with the explanation in the 

prosecution history because in either case the reaction is first below 85°C and then is taken above 

100°C. It should not matter whether the reaction is 84°C and then quickly heated to 101°C, or 

whether the reaction is 80°C, then 81,82,83,84, ...... 100, 101, 102°C. The reaction may be at a 

variety of temperatures as long as the temperature is below 85°C and then above 100°C. The key 

to the invention is that the chlorination proceeds below 85°C to achieve mono- and dichlorination 

before being raised above 100°C to achieve trichlorination. Further, while the prosecution 

history is an important part of the "intrinsic evidence" for claim construction, and may govern if 

there is a disclaimer of claim scope in the prosecution history, no disclaimer has been argued in 

this case. Moreover, the Federal Circuit has stated that the specification is the single best guide 

to the interpretation of the claims. Phillips, 415 F.3d at 1315. We therefore agree with the ALJ's 

claim construction. 

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PUBLIC VERSION 

Step (c): "produc[esJ a chlorinated product comprising predominantly 1 ',4,6'-

trichlorosucrose-6-ester" 

As noted above, the AU construed this limitation as requiring I',4,6'-trichlorosucrose-6-

ester to be the predominant24 chlorinated sucrose-6-ester product at the end of step (c). This 

construction is unfavorable to respondents, who argue that it is elToneous. 

Respondents' Submissions 

Changzhou Niutang argues that when step (c) "produce [ s] a chlorinated product 

comprising predominantly 1 i,4,6'-trichlorosucrose-6-ester," that I' ,4,6'-trichlorosucrose-6-ester 

must be greater than 50% of all chlorinated products. Changzhou Niutang Brief at 29. 

Tate & Lyle's Submissions 

Tate & Lyle points to expert testimony and dictionary definitions to argue that 

"predominantly" means more than the other products, i. e., a plurality, but does not have to be 

more than 50% of the total, i.e., does not have to be a majority. Tate & Lyle Reply to Changzhou 

Niutang Petition at 32 (citing Hanessian Dep. at Tr. 99; CX-621C Rat Q/A 201; CX-77 at 1078). 

Tate & Lyle also points out that the l',4,6'-trichlorosucrose-6-ester would be the predominant 

chlorinated sucrose-6-ester, and that the claim does not require that the desired trichlorinated 

species predominates over all chlorinated products in the reaction mixture, because the starting 

point for step (c) is the "reaction mixture product of step (b)." Tate & Lyle Reply to Changzhou 

Niutang Petition at 31. 

24 By predominant, the AU meant present in a greater quantity than any other single 

species. See ID at 86. 

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PUBLIC VERSION 

The lA's Submissions 

The IA understands "predominantly" to mean present in an amount greater than other 

products. IA Response to Petitions at 59. 

Discussion 

The specification does not suggest a definition of "predominantly" in numerical terms. 

The purpose of the reaction is to favor chlorination at the positions that will be chlorinated in the 

final product and to disfavor chlorination at other positions which will result in wasted product. 

We therefore agree with the ALl's definition of "predominantly" as a plurality rather than a 

majority because expert testimony explains that relevant examples in the patent have yields of 

less than 50%. Tr. at 1493. Indeed, the overall yield for the conversion of sucrose to sucralose 

was 26% in the first generation of technology and is 42% in the second generation. See Tr. at 

434-435. 

b. Literal Infringement 

The ALJ's ID 

Allegations Against GDFII, Changzhou Niutang Chemical, Hebei Sukerui 

Science, and JK Sucralose 

In the ID at 87-101, the ALl found that "none of the four manufacturing Respondents 

infringe step (b) of claim 1 of the '463 patent." ID at 100. He also found that "[a]s each and 

every limitation of a claim is required in order to prove infringement, the undersigned does not 

find it necessary to address all of the other parties' arguments as to infringement under claim I." 

ID at 100. 

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PUBLIC VERSION 

The AU found that claim 1 was not infringed because claim step (b) requires "subjecting 

the reaction mixture product of step (a) to an elevated temperature not higher than about 85°C [to 

produce] a mixture of chlorinated sucrose-6-ester products consisting essentially of 

monochlorosucrose-6-ester, 4,6'-dichlorosucrose-6-ester, and 1 ',6'-dichlorosucrose-6-ester," but 

that Tate & Lyle had not proven the formation of l',6'-dichlorosucrose-6-ester in the accused 

methods below 85°C. ID at 98. There is no dispute that fonnation of 1 ',6'-dichlorosucrose-6-

ester is a limitation of the claim which must be met for infringement to have occurred. To show 

formation of 1 ',6'-dichlorosucrose-6-ester, Tate & Lyle (according to the IA) relied on HPLC 

tests conducted for Tate & Lyle by Ciba Specialty Chemicals on samples obtained from 

Changzhou Niutang's and JK Sucralose's chlorination vessels when the reaction temperature was 

below 85°C. ID at 94-95. 

The AU rejected Tate & Lyle's HPLC25 test data, inter alia, because the testing entity, 

Ciba, did not determine whether the specifications it obtained from Tate & Lyle were reasonable 

and did not use an adequate standard, but rather used a mixed standard. ID at 99. The HPLC 

data showed one peak for dichlorosucrose-6-ester which Tate & Lyle asserted shows the presence 

of both 4,6'-dichlorosucrose-6-ester and 1 ',6'-dichlorosucrose-6-ester. It appears to be undisputed 

that this peak shows the presence of 4,6'-dichlorosucrose-6-ester, but the respondents disputed 

that this peak also shows the presence of 1 ',6'-dichlorosucrose-6-ester. The AU agreed with the 

respondents. ID at 98-99. The ALJ also rejected Tate & Lyle's use of JK Sucralose's samples as 

evidence relevant to show infringement by the other manufacturing respondents, i.e., Hebei 

25High Performance Liquid Chromatography 

49 
PUBLIC VERSION 

Sukerui Science, GDFII, and Changzhou Niutang Chemical. ID at 99-100. The ALl also found 

that the mass spectroscopy data relied on by Tate & Lyle based on samples from Hebei Sukerui 

Science's plant did not establish the presence of 1 ',6'-dichlorosucrose-6-ester. ID at 100. Finally, 

the ALl rejected Tate & Lyle's attempted use of chemical kinetic theory to infer that 1',6'-

dichlorosucrose-6-ester necessarily fonns below 85°C, given that the theory as relied on by Tate 

& Lyle was not supported by the scientific literature, as no reference discussed chlorination of the 

l' position before the 4 position for any sucrose derivative under any reaction condition. ID at 

100. As the ALJ's finding oflack of proof of the fonnation of 1 ',6'-dichlorosucrose-6-ester was 

dispositive for a finding of non-infringement, the ALl did not find it necessary to analyze 

whether the other claim limitations were met. ID at 100. The finding of non-infringement of 

independent claim 1 also resulted in a finding of non-infringement of the other asserted claims 

which depend from claim 1. ID at 101; see also ID at 107, 115-16, 124. 

Other Respondents 

CJ America is a non-participating respondent, but was not found in default. The ALJ 

noted that Tate & Lyle had asserted that CJ America admitted infringement. He then stated: "As 

there is no dispute regarding CJ America's infringement, the undersigned finds that CJ America 

infringes the asserted claims of the '463 patent." ID at 125. As discussed below, this finding 

conflicts with a subsequent finding by the ALl that CJ America does not infringe. 

AIDP is a non-participating respondent, but was not found in default. As to AIDP, the 

ALl found "that the pre-suit testing does not affinnatively show that AIDP meets each and every 

50 
PUBLIC VERSION 

limitation of claim 1 for the same reasons infringement was not proven against the four 

participating manufacturing Respondents." ID at 126. 

Hebei Research was found in default. The ALJ stated that "As Hebei Research has 

already defaulted in this investigation, the undersigned finds that there is no need to address 

whether Complainants have affirmatively proved that Hebei infringes the '463 patent." ID at 

127. He therefore did not adjudicate whether Hebei Research infringes the asserted claims of the 

'463 patent on the merits. He did state it was his "understanding that Complainants are 

attempting to affirmatively prove that certain non-participating Respondents are infringing the 

patents at issue to support their request for a general exclusion order, which the undersigned does 

not find to be warranted in the circumstances of this case." ID at 127. 

[[ 

[[ 

As to certain non-manufacturing participating respondents, specifically [[ 

]], [[ 

]], and [[ 

]], [[ ]], [[ ]], [[ 

]], who are alleged to obtain their sucralose from 

]], 

]], the ALJ found them not 

to infringe because they obtain their sucralose from the four manufacturing respondents whom he 

found not to infringe. ID at 127. [[ 

]] 

As to the remaining non-participating and defaulting respondents, specifically, CJ 

America, Fortune Bridge, Gremount (default), Hebei Academe (default), Lianyungang Natiprol 

(default), Nu-Scaan, Ruland (default), Shanghai Aurisco (default), Vivion, and Zhongjin 

51 
PUBLIC VERSION 

(default), whose sucralose Tate & Lyle states is obtained from Changzhou Niutang, GDFII, 

Hebei Sukerui, andlor JK Sucralose, the AU stated that because he found the four manufacturing 

respondents not to infringe, the above-named respondents do not infringe either. ID at 128. The 

AU's finding of non-infringement by CJ America conflicts with his earlier finding that CJ 

America does infringe because it has admitted infringement. 

Tate & Lyle's Submissions 

Tate & Lyle has a three-fold argument that it has proven that 1',6'-dichlorosucrose-6-ester 

fonns in the respondents' processes: (1) Tate & Lyle argues that if a desired compound fonns at a 

higher temperature, then it must also fonn at a lower temperature, with the difference that the 

reaction to fonn the desired compound would simply proceed more slowly at the lower 

temperature. Thus, according to Tate & Lyle, since 1',6'-dichlorosucrose-6-ester was shown to 

fonn at temperatures above 85°C, it must also fonn, though more slowly, at temperatures below 

85°C.26 (2) Tate & Lyle argues that respondents have accepted this theory and admitted that 1',6'-

dichlorosucrose-6-ester fonns based on this theory because respondents and respondents' experts 

originally stated that 1',6'-dichlorosucrose-6-ester was present in the prior art based on this 

theory, in support of their argument that the asserted claims of the '463 patent were anticipated or 

obvious. Tate & Lyle Petition at 46-49; Tate & Lyle Submission at 58-65. (3) Although the 

HPLC analyses of samples taken from respondents' factories do not show separate peaks for 4,6'-

dichlorosucrose-6-ester and 1',6'-dichlorosucrose-6-ester, Tate & Lyle argues that an HPLC 

analysis of a [[ ]] sample which shows separate peaks for 4,6'-dichlorosucrose and 

26 We will refer to this argument in our discussion as the kinetic theory. 

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PUBLIC VERSION 

1 ',6'-dichlorosucrose (not 4,6'-dichlorosucrose-6-ester and 1 ',6'-dichlorosucrose-6-ester) 

demonstrates that 1',6'-dichlorosucrose-6-ester fonned in all of the samples. Tate & Lyle Petition 

at 49-52. 

The foregoing arguments apply specifically to the four manufacturing respondents. 

However, Tate & Lyle argues that certain defaulting and non-participating respondents also 

infringe the asserted patents. For the '463 patent, Tate & Lyle asserts that CJ America has 

admitted that it infringes the asserted claims, that pre-suit testing of AIDP's sucralose samples 

indicates infringement, and that Hebei Research infringes and has defaulted. ID at 125-27. Tate 

& Lyle also asserts that several respondents have admitted that they sell for importation, import, 

or sell after importation sucralose manufactured by Changzhou Niutang, GDFII, Hebei Sukerui 

and/or JK Sucralose, and that these respondents are [[ 

]]. ID at 127-28. Tate & Lyle also asserts that Heartland 

Packaging has distributed in the United States sucralose manufactured by at least Changzhou 

Niutang and Hebei Sukerui. ID at 127. 

Respondents' Submissions 

Changzhou Niutang responds that the scientific theory relied on by Tate & Lyle does not 

support Tate & Lyle's position because the 4-position in sucrose-6-ester is more reactive than the 

I-position, so 4,6'-dichlorosucrose-6-ester would fonn before 1 ',6'-dichlorosucrose-6-ester, and 

there is no evidence that any 1 ',6'-dichlorosucrose-6-ester would fonn. Changzhou Niutang 

53 
PUBLIC VERSION 

argues that according to the order of reactivity of the hydroxyls, sucrose-6-ester would first be 

chlorinated to fonn 6'-monochlorosucrose-6-ester, which would in tum be chlorinated to fonn 

4,6'-dichlorosucrose-6-ester, which would in tum be chlorinated to fonn 1 ',4,6'-trichlorosucrose6-ester. See Changzhou Niutang Reply to Tate & Lyle Petition at 43-44. Moreover, Changzhou 

Niutang also submits that just because a chemical reaction might occur does not mean that it does 

occur. Changzhou Niutang Reply to Tate & Lyle Petition at 45. 

Changzhou Niutang disputes that its experts conceded the presence of 1 ',6'-

dichlorosucrose-6-ester below 85°C. Changzhou Niutang Reply to Tate & Lyle Petition at 47 

(citing Hanessian Tr. 1545:15-1546:16 ("my opinion, has been and always is, that there is no 

factual confirmatory or unambiguous evidence that the 1 ',6'-dichlorosucrose-ester is fonned or is 

present in these reactions"); Frasier-Reid Tr. 1905:4-11 ("maybe if we go up to 85 I mean, up 

to some temperature higher than 85, rather, then it may form, that l' position is very, very, very 

obstinate."). 

As to the HPLC of the [[ ]] sample, Changzhou Niutang agrees with the ALI 

that the [[ ]J sample was not relevant to other respondents such as Changzhou 

Niutang Chemical and that Tate & Lyle did not demonstrate a reliable methodology, adding that 

l',6'-dichlorosucrose is not l',6'-dichlorosucrose-6-ester, that l',6'-dichlorosucrose was not 

present in any quantifiable amount, that it did not appear as a "fully resolved peak," and that Tate 

& Lyle's chromatogram [[ ]] was not in evidence 

because it was struck by the ALI. Changzhou Niutang Reply to Tate & Lyle Petition at 36-42; 

Changzhou Niutang Submission at 45-52 (stating, inter alia, that CDX-1.115 was not moved into 

54 
PUBLIC VERSION 

evidence, and Tate & Lyle used a graph which was part ofCX-621P which was proferred but not 

admitted). Changzhou Niutang also points out that Tate & Lyle's alternate mass spectroscopy 

analytical method could not differentiate between different dichlorosucrose-6-esters because each 

dichlorosucrose-6-ester has the same mass. Changzhou Niutang Reply to Tate & Lyle Petition at 

39. 

The lA's Submissions 

The IA submits that the ALJ was correct that Tate & Lyle has not met its burden of 

showing the existence of 1 ',6'-dichlorosucrose-6-ester by a preponderance of the evidence, and 

agrees that much of Tate & Lyle's proferred evidence was unreliable and much of the testimony 

was not credible. IA Response to Petitions at 26-34; IA Submission at 15 (discussing literal 

infringement and infringement under the doctrine of equivalents). 

Discussion 

We agree with respondents and the ALJ that Tate & Lyle's reliance on kinetic theory does 

not overcome its failure to provide direct evidence in this investigation of actual infringement. 

With regard to 1 ',6'-dichlorosucrose-6-ester, we have only competing expert testimony as to 

whether the peak for 4,6'-dichlorosucrose-6-ester also contains 1 ',6'-dichlorosucrose-6-ester, or 

whether the 1 ',6'-dichlorosucrose in the [[ ]] sample comes from 1 ',6'-

dichlorosucrose-6-ester formed below 85°C. To prevail on infringement before the Commission, 

the complainants must show a preponderance ofthe evidence, i.e., that it is more likely than not, 

that l',6'-dichlorosucrose-6-ester fonns below 85°C in the reactions in question. In our view 

complainants have not met their burden. We therefore agree with the ALJ's finding that Tate & 

Lyle has not met its burden of proving infringement of the asserted claims of the '463 patent. 

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PUBLIC VERSION 

Further, read in context of the full trial transcripts, the experts for the various respondents did not 

admit that 1 ',6'-dichlorosucrose-6-ester is formed during the chlorination step of the accused 

processes. See Hanessian Tr. 1545: 15-1546: 16; Frasier-Reid Tr. 1905:4-11.27 Other than its 

scientific theory, and respondents' contradictory assertions, the only evidence relied on by Tate & 

Lyle to show the presence of 1 ',6'-dichlorosucrose-6-ester below 85°C is the HPLC of a [[ 

]] sample showing 1',6'-dichlorosucrose. But 1',6'-dichlorosucrose is not 1',6'-

dichlorosucrose-6-ester. Thus, Tate & Lyle has not shown that 1 ',6'-dichlorosucrose-6-ester 

forms below 85°C, and therefore has not proven infringement of the asserted claims of the '463 

patent. Of course, even if conclusions could be drawn about the [[ ]] sample, those 

conclusions would not be evidence of what occurs in the processes of other respondents. 

We agree with the ALl that Tate & Lyle has not shown that Hebei Sukerui Science 

infringes the asserted claims of the '463 patent because it has not shown that the peak for 

dichlorosucrose-6-esters on mass spectroscopy can be attributed to 1 ',6'-dichlorosucrose-6-ester, 

especially given the conflicting views of experts Dr. Crich and Dr. Baker. ID at 113-14. Thus, 

we determine that Tate & Lyle has not shown that any of the four manufacturing respondents has 

infringed the asserted claims of the '463 patent. 

27 Tate & Lyle's petition for review and Tate & Lyle's review submission state that 

respondent GDFII allegedly admitted that 1 ',6'-dichlorosucrose-6-ester fonns in the chlorination 

step of its process: GDFII's Supplemental Response to Interrogatory No. 32 (discussed in CX621RC at 264-65). An examination of the interrogatory response shows that GDFII made the 

statement in arguing for invalidity of the asserted claims of the '463 patent, but Tate & Lyle is 

using this admission to argue for infringement of these claims. We note that any admission in an 

interrogatory response by GDFII cannot be used against other parties. Second, a tribunal is not 

required to treat an admission in an interrogatory response as fact, even against the patiy making 

the interrogatory response, in this case GDFII. Wright & Miller, FEDERAL PRACTICE AND 

PROCEDURE § 2180-81. 

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PUBLIC VERSION 

We also detennine that Tate & Lyle has failed to show (on the merits) that certain nonmanufacturing respondents infringe the asserted claims of the '463 patent based on the AU's 

finding that the manufacturing respondents who are said to supply the non-manufacturing 

respondents do not employ the patented process in their manufacture. These include [[ 

]]. [[ 

]] See ID at 13, 127. We also 

include CJ America in this group because, in our view, any admission that it infringes is 

overcome by a finding on the merits that it does not. We further agree with the AU's finding 

. that AIDP does not infringe, a finding that appears to be based on his general rejection of Tate & 

Lyle's reliance on kinetic theory to demonstrate the presence of l',6'-dichlorosucrose-6-ester. 

Finally, even though the ALl did not rule on whether Hebei Research infringes on the merits, we 

find no infringement on the basis of lack of proof, as it appears that Tate & Lyle is relying on 

kinetic theory to demonstrate the presence of 1 ',6'-dichlorosucrose-6-ester, an approach we find 

to be insufficient, as noted above. 

In its petition for review, Tate & Lyle argued that certain defaulting and non-participating 

respondents should be found to infringe the '463 patent. Tate & Lyle Petition at 12-15 (relying 

on alleged admissions of infringement (CJ America and Vivion); Commission Rule 210.16 

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PUBLIC VERSION 

(certain defaulting respondents28); and Commission Rule 210.17 and Certain Electrical 

Connectors and Products Containing Same, Inv. No. 337-TA-374, Order No. 24 (AIDP, Fortune 

Bridge, and Nu-Scaan)). In its submissions on review, Tate & Lyle repeats these arguments. As 

discussed above, we have found that Cl America has not been shown to infringe the asserted 

claims. As to Vivion, we note that Tate & Lyle did not argue in its post-hearing brief that Vivion 

had admitted infringement and thus has waived this issue. As to AIDP, as discussed above, we 

have found that the ALl was correct in finding non-infringement. In its post-hearing brief, Tate 

& Lyle argued: "Further, each of those Non-Participating and Defaulting Respondents has not 

participated in this Investigation, did not submit a pre-hearing brief, and did not participate in the 

hearing thereby depriving Tate & Lyle from obtaining discovery into other sources of their 

sucralose and waiving their right to contest that they infringed the Asserted Claims of the '463 

patent." Tate & Lyle Post-Hearing Brief at 88 (as revised per Order No. 59 on August 13,2008). 

There was no request for adverse inferences under Commission Rule 210.17. The ALl therefore 

did not err in not making such a finding. In any event, such a ruling would not constitute an 

affinnative finding of infringement, as is also the case for a finding of default under Commission 

Rule 210.16. Of course, parties who are declared in default under Commission Rule 210.16 may, 

as a general rule, be subject to a limited exclusion order. See also 19 U.S.C. § 1337(g)(I). 

c. Infringement under the Doctrine of Equivalents 

The ALl found that the four manufacturing respondents did not infringe the asserted 

claims under the doctrine of equivalents, relying specifically on step (b) and its requirement of 

28 Hebei Research, Gremount, Hebei Academe, Lianyungang Natiprol, Ruland, Shanghai 

Aurisco, and Zhongjin. . 

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PUBLIC VERSION 

production of 1 ',6'-dichlorosucrose-6-ester during the chlorination steps of the respective accused 

processes, finding that Tate & Lyle had not shown the presence of an equivalent to the presence 

of a l',6'-dichlorosucrose-6-ester being formed below 85°C. ID at 102, 108, 117, 125. He did 

not separately address equivalents with respect to the remaining respondents. 

The Federal Circuit has two articulations of the test for determining infringement under 

the doctrine of equivalents: 

This court applies two articulations of the test for equivalence. See 

Warner-Jenkinson, 520 U.S. at 40, 117 S.Ct. 1040 (explaining that different 

phrasings of the test for equivalence may be "more suitable to different cases, 

depending on their particular facts"). Under the insubstantial differences test, 

"[a]n element in the accused device is equivalent to a claim limitation if the only 

differences between the two are insubstantial." Honeywell Int'l Inc. v. Hamilton 

Sundstrand Corp., 370 F.3d 1131, 1139 (Fed.Cir.2004). Alternatively, under the 

function-way-result test, an element in the accused device is equivalent to a claim 

limitation if it "perfonns substantially the same function in substantially the same 

way to obtain substantially the same result." Schoell v. Regal Marine Indus., Inc., 

247 F.3d 1202, 1209-10 (Fed.Cir.2001). 

Voda v. Cordis Corp., 536 F.3d 1311, 1326-27 (Fed. Cir. 2008). Under either articulation ofthe 

test, equivalence must be determined for each limitation. See id. 

In response to the Commission's request for briefing on the doctrine of equivalents, Tate 

& Lyle argues that respondents combine the same reagents, just in a different order. See Tate & 

Lyle Submission at 80-83. Changzhou Niutang argues that Tate & Lyle cannot show equivalence 

because it has not shown the presence of 1 ',6'-dichlorosucrose-6-ester, and further that Tate & 

Lyle never submitted evidence on the issue of equivalence and would in any case be barred from 

arguing for infringement under the doctrine of equivalents under principles of argument-based 

prosecution history estoppel because the patentee told the PTO that the 1 ',6'-dichlorosucrose-6-

59 
PUBLIC VERSION 

ester contributed to the novelty of the invention. Changzhou Niutang Submission at 13-15; see 

also Hebei Sukerui Submission at 8-12; JK Sucralose Submission at 7-11. JK Sucralose argues 

that Tate & Lyle has not identified any equivalent for 1',6'-dichlorosucrose-6-ester. JK Sucralose 

Submission at 16. As to legal bars to the application of the doctrine of equivalents, respondents 

assert waiver and prosecution history estoppel. The IA agrees that Tate & Lyle has not shown 

the existence of 1',6'-dichlorosucrose-6-ester and that assertion of infringement under the 

doctrine of equivalents is barred under principles of prosecution history estoppel. 

As discussed above, infringement under the doctrine of equivalents is assessed on a 

limitation by limitation basis. We affinn the AU's conclusion that Tate & Lyle has not 

demonstrated the formation of a 1',6'-dichlorosucrose-6-ester in the accused processes. 

Moreover, we agree with respondent JK Sucralose that Tate & Lyle has not identified anything 

that would be equivalent to 1',6'-dichlorosucrose-6-ester in the accused processes. Thus, under 

the all elements rule, there would be no infringement under the doctrine of equivalents, [[ 

]]. Voda v. Cordis Corp., 536 F.3d 

1311, 1326-27 (Fed. Cir. 2008) (equivalence must be detennined on a limitation by limitation 

basis). 

We do not believe the issue of infringement by equivalents has been waived as it was 

addressed in the ID at 101 and in Tate & Lyle's petition for review at 58. As to respondents' 

assertion that infringement under the doctrine of equivalents is barred by prosecution history 

estoppel, the Federal Circuit has explained that "[A]mendment of a claim in light of a prior art 

reference, however, is not the sine qua non to establish prosecution history estoppel. 

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PUBLIC VERSION 

Unmistakable assertions made by the applicant to the Patent and Trademark Office (PTO) in 

support of patentability, whether or not required to secure allowance of the claim, also may 

operate to preclude the patentee from asserting equivalency between a limitation of the claim and 

a substituted structure or process step." Texas Instruments Inc. v. lTC, 988 F.2d 1158, 1165 (Fed. 

Cir. 1993). In our view, the patentee's assertion to the PTO that 1',6'-dichlorosucrose-6-ester 

contributes to the novelty of the invention does give rise to prosecution history estoppel. See JX6 (Response oOuly 18, 1989 at 5). 

Exclusion of Evidence 

Tate & Lyle's Submissions 

In connection with his analysis of infringement of the' 463 patent, the ALl excluded 

certain late-produced evidence which Tate & Lyle sought to have admitted to show the presence 

of dichlorosucrose-6-esters in the process of the manufacturing respondents below 85°C. Tate & 

Lyle Submission at 156. Specifically, this evidence includes an HPLC of a [[ ]] 

sample, which shows separate peaks for 1 ',6'-dichlorosucrose and 4,6'-dichlorosucrose. Tate & 

Lyle Reply Submission at 59-60. Tate & Lyle argues that this evidence should have been 

admitted, and that the 1 ',6'-dichlorosucrose is evidence of the fonnation of 1',6'-dichlorosucrose6-ester, and "validates the kinetic model." Tate & Lyle Reply Submission at 60. Tate & Lyle 

further claims that Dr. Crich's expert report would have included data showing fully resolved 

peaks for 1',6'-dichlorosucrose-6-ester. Tate & Lyle Submission at 163-64. Tate & Lyle 

explains, that as with the evidence prof erred to show infringement of the '969 and '551 patents, 

the ALl's sole reason for excluding the evidence was that it was produced after the date for 

expert reports in this Investigation. Tate & Lyle Submission at 157. Tate & Lyle asserts that it 

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PUBLIC VERSION 

was diligent in its efforts to obtain these samples in a timely manner. Tate & Lyle Submission at 

160-162. Tate & Lyle argues that the AU's refusal to admit the proferred evidence was an abuse 

of discretion because Tate & Lyle produced the test results to respondents within 24 hours of 

receiving them, the start of the hearing was still weeks away, Tate & Lyle offered their testifying 

experts for additional depositions, the individuals who performed the testing were also available 

for deposition, and the AU failed to consider the probative value of the evidence. Tate & Lyle 

Submission at 167-68. Tate & Lyle further argues that the exclusion of this evidence undermines 

Commission policy as it will encourage respondents not to cooperate with discovery requests in 

future investigations. Tate & Lyle Submission at 169-170. 

Respondents'Submissions 

Respondents reply that the AU properly excluded the late-produced evidence because it 

was submitted less than a month before the hearing was to begin. Changzhou Niutang Reply 

Submission at 14. Respondents submit that if complainants had been permitted to introduce this 

evidence, respondents would have needed an opportunity to conduct their own tests, and would 

have required further expert reports and depositions. Id. 

The IA 's Submissions 

The lA argues that the AU properly excluded late-produced evidence, lA Reply 

Submission at 75 n.17, and states that "Complainants blatantly mischaracterize the excluded 

evidence." lA Reply Submission at 85 n.25. The lA also states that the proferred evidence 

shows a distinct peak for 1 ',6'-dichlorosucrose and for 4,6'-dichlorosucrose, but does not show a 

distinct peak for 1 ',6'-dichlorosucrose-6-ester. 

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PUBLIC VERSION 

Discussion 

In our view, the AU did not abuse his discretion in refusing to accept evidence produced 

less than a month before trial. We note that, even if the excluded evidence were considered, the 

result would not change, since none of the excluded samples demonstrated the presence of 1',6'-

dichlorosucrose-6-ester or an equivalent. 

2. Anticipation/Obviousness 

Anticipation occurs if a single prior art reference contains all of the limitations of the 

asserted claim. Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002). "[A] 

prior art reference may anticipate without disclosing a feature of the claimed invention if that 

missing characteristic is necessarily present, or inherent, in the single anticipating reference. 

[I]nherent anticipation does not require that a person of ordinary skill in the art at the time would 

have recognized the inherent disclosure." Abbott Labs. v. Baxter Pharmaceutical Prods., Inc. 

471 F.3d 1363, 1368 (Fed. Cir. 2006). 

As to obviousness/9 the Supreme Court in Graham explained that one ascertains whether 

an invention would have been obvious to a person of ordinary skill in the art by examining the 

29 The Patent Statute provides that an invention may be obvious as follows: 

A patent may not be obtained though the invention is not identically disclosed or 

described as set forth in section 102 of this title, if the differences between the 

subject matter sought to be patented and the prior art are such that the subject 

matter as a whole would have been obvious at the time the invention was made to 

a person having ordinary skill in the art to which said subject matter pertains. 

Patentability shall not be negatived by the manner in which the invention was 

made. 

35 U.S.C. § 103 (a). 

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PUBLIC VERSION 

scope and content of the prior art, differences between the prior art and the claims at issue, and 

the level of ordinary skill in the pertinent art, keeping in mind such secondary considerations as 

commercial success, long felt but unsolved needs, and failure of others. Graham v. John Deere, 

383 U.S. 1, 17 (1966). A prima facie case of obviousness may be shown where all of the claimed 

elements occur in the prior art, and there is a showing that it would have been "obvious" to 

combine them. Prior to KSR, the Federal Circuit required a teaching, suggestion, or motivation 

to combine the elements found in the prior art. Under the Supreme Court's teaching in KSR, a 

teaching, suggestion, or motivation to combine elements need not come from a prior art 

reference. KSR International Co. v. Telejlex Inc., 127 S. Ct. 1727,1741 (2007). 

The AU considered whether the prior art references of Jenner, Mufti, Rathbone, and 

Ballard anticipated or rendered obvious the asserted claims of the '463 patent. The Jenner 

reference, U.S. Patent No. 4,362,869, protects all five hydroxyl groups which are not replaced 

with chlorine atoms in the final product. The Mufti reference, U.S. Patent No. 4,380,476, 

protects only the hydroxyl group at the 6 position to fonn sucrose-6-ester using a Vilsmeier 

reaction. 30 The Rathbone reference, U.S. Patent No. 4,617,269, used discrete h~ating steps for 

chlorination. The Ballard reference, RX-589, also teaches the use of discrete heating steps. ID at 

135-37. 

Respondents relied on Mufti and Rathbone for anticipation. However, the ALJ found no 

anticipation because "neither of these references disclose the fonnation of the 

30 One issue in this case is whether Mufti combined the acid chloride and tertiary amide in 

the presence of sucrose-6-ester, as in the '463 patent, or whether Mufti combined the acid 

chloride and the tertiary amide before adding sucrose-6-ester. 

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PUBLIC VERSION 

chlorofonniminium chloride sale [sic, salt] in the presence of the sucrose-6-ester or the formation 

of a mixture of chlorinated sucrose-6-ester products consisting essentially of monochlorosucrose6-ester, 4,6'-dichlorosucrose-6-ester, and 1 ',6'-dichlorosucrose-6-ester below 85°C." ID at 143-

44. As to obviousness, the ALJ found that "none of the additional prior art references cure the 

defect above because the additional prior art references do not disclose the fonnation of a 

mixture of chlorinated sucrose-6-ester products consisting essentially of monochlorosucrose-6-

ester, 4,6'-dichlorosucrose-6-ester, a 1',6'-dichlorosucrose-6-ester at below 85°C." ill at 144. 

The AU stated that he found it "unnecessary to detennine whether there are secondary 

considerations of non-obviousness as the unaersigned did not find that the '463 patent is obvious 

above." ill at 147. 

Changzhou Niutang argues that if Tate & Lyle's arguments on claim construction and 

infringement are accepted, then the asserted claims of the '463 patent would be invalid for 

anticipation or obviousness. Specifically, respondents argue that if the Commission finds 1',6'-

dichlorosucrose-6-ester in the accused processes then the Commission must also find it present in 

Mufti which would result in the invalidation of the asserted claims of the' 463 patent by reason 

of anticipation or obviousness. ID at 143-44, 147. Changzhou Niutang notes that prior art 

previously considered by the PTO can still invalidate and that the alleged secondary 

considerations of obviousness are irrelevant because there is no nexus between the commercial 

success of sucralose and the claimed invention. 

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PUBLIC VERSION 

Tate & Lyle's Submissions 

Tate & Lyle submits that Mufti does not anticipate the asserted claims of the '463 patent 

because it fails to disclose the fomlation of a chlorofonniminium chloride salt in the presence of 

sucrose-6-ester. Tate & Lyle further argue Jenner would not cure the defect in Mufti and render 

the '463 patent obvious because Jenner involved a penta-ester, in which all of the hydroxyls not 

being chlorinated are protected by ester groups. Tate & Lyle states that it is hindsight to say that 

the acid chloride and the tertiary amide could be directly reacted in the presence of a mono-ester 

(sucrose-6-ester) rather than a penta-ester (as in Jenner). Tate & Lyle Reply Submission at 122-

23. 

The lA's Submissions 

The IA argues that none of the prior art anticipates or renders obvious the asserted claims 

of the' 463 patent because no one has proven that 1 ',6'-dichlorosucrose-6-ester fonns in the prior 

art processes, as required by the claims. IA Reply Submission at 70. The IA further states that 

neither Mufti nor Rathbone teaches the fonnation of a chlorofonniminium salt in the presence of 

sucrose-6-ester. The IA explains that respondents have not proven that the fonnation of the 

Vilsmeier reagent in Mufti "in situ" necessarily means that that the Vilsmeier reagent was fonned 

in the presence of sucrose-6-ester, i.e., respondents have not proven that "in situ" means anything 

more than that the Vilsmeier reagent is fonned in the same reaction vessel before the addition of 

sucrose-6-ester. IA Reply Submission at 70-71. 

Discussion 

In our view, respondents have not demonstrated the presence of 1',6'-dichlorosucrose-6-

ester, actually or inherently, in the prior art processes for the same reason that Tate & Lyle has 

66 
PUBLIC VERSION 

not shown the presence of l',6'-dichlorosucrose-6-ester in the accused processes. In addition, 

none of the references show the fonnation of the chlorofonniminium chloride salt in the presence 

of the sucrose-6-ester. We therefore agree with the AU's finding that the asserted claims of the 

'463 patent are not invalid for anticipation. Since none of the references show the presence of 

the l',6'-dichlorosucrose-6-ester, we also agree with the conclusion of the AU that the asserted 

claims of the '463 patent are not invalid for obviousness. This is because even if there were 

some reason to combine these references, the combination would not result in the claimed 

invention. 

3. Enablement 

To satisfY the enablement requirement of 35 U.S.C. § 112, the specification must teach 

those of ordinary skill in the art how to practice the claimed invention without undue 

experimentation. See, e.g., In re Vaeck, 947 F.2d 488,495 (Fed. Cir. 1991). In the words of the 

statute, "[t]he specification shall contain a written description of the invention, and of the manner 

and process of making and using it, in such full, clear, concise, and exact tenns as to enable any 

person skilled in the art to which it pertains, or with which it is most nearly connected, to make 

and use the same." 35 U.S.c. § 112. 

The AU held that the asserted claims of the '463 patent were invalid for failure to satisfy 

the enablement requirement because there is no direct evidence that the inventors ever confinned 

that l',6'-dichlorosucrose-6-ester fonns below 85 DC in the claimed process. ID at 150-51. The 

AU noted that the examples of the '463 patent do not mention that l',6'-dichlorosucrose-6-ester 

was detected below 85 D

C, that the only reference to that ester in the specification is in the brief 

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PUBLIC VERSION 

summary of the invention where the inventors state they "believe" the chlorination step mixture 

included the ester. He rejected Tate & Lyle's argument that the "literature," theories of "basic 

chemistry," and "kinetics" demonstrate that 1 ',6'-dichlorosucrose-6-ester fonus below 85°C, and 

stated that if the matter were truly one of basic chemistry and kinetics, it would have been simple 

to show the presence of the ester, but no such test was disclosed or shown to be readily available. 

Tate & Lyle argues that the ALl erred in placing the burden on Tate & Lyle to 

demonstrate the fonnation of 1 ',6'-dichlorosucrose-6-ester, rather than on respondents to prove 

that the patent is invalid. Tate & Lyle Submission at 94; Tate & Lyle Petition at 60. Tate & Lyle 

argues that it is also unnecessary to show the fonnation of 1 ',6'-dichlorosucrose-6-ester because it 

is sufficient to follow the steps in examples 7 or 13, but argues that 1 ',6'-dichlorosucrose-6-ester 

did fonn, [[ 

]]. Tate & Lyle Submission at 93-

95; Petition at 59-61. Tate & Lyle also argues that a deacylated standard is sufficient. Tate & 

Lyle Submission at 95-96; Petition at 60. Tate & Lyle further states that peer reviewed literature 

"supports the presence of the claimed intennediates." Tate & Lyle Petition at 61; see also Tate & 

Lyle Submission at 96. 

Respondents counter that there is no indication that the ALl shifted the burden, and that 

the ALl was merely summarizing the parties' arguments. Changzhou Niutang Reply Submission 

at 73 . Respondents argue that it is not sufficient to practice an example, if the patentee does not 

practice the claims. Changzhou Niutang Reply Submission at 73 (citing Engel Indus., Inc. v. 

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PUBLIC VERSION 

Lockformer Co., 946 F.2d 1528, 1533 (Fed. Cir. 1991); Morton Int'l, Inc. v. Cardinal Chem. Co., 

5 F.3d 1464, 1469-70 (Fed. Cir. 1993)). Respondents argue that there was no appropriate 

standard available at the time of the invention in 1989 which would have allowed the inventors 

to distinguish 1',6'-dichlorosucrose-6-ester from 4,6'-dichlorosucrose-6-ester on HPLC. 

Changzhou Niutang Reply Submission at 75. Respondents also argue that the kinetic theory 

arguments fail for the same reason that they did for infringement, anticipation, and obviousness. 

Changzhou Niutang Reply Submission at 75. 

The IA agreed with the ALJ's finding that the patent was not enabled, pointing, inter alia, 

to the testimony of one of the inventors, [[ 

]]. 

In light of these arguments, we agree with the ALJ that the evidence indicates that the 

ester has not been shown to be fonned in the claimed process below 85°C as claimed. Therefore, 

the patent cannot disclose how a person of ordinary skill in the art could fonn the ester under 

these conditions. We therefore uphold the ALl's finding that the asserted claims are invalid for 

lack of enablement. 

4. Written Description 

The written description requirement is satisfied if the disclosure conveys with reasonable 

clarity to those skilled in the art that the inventor was in possession of the claimed invention. 

Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). 

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PUBLIC VERSION 

The ALl held that the asserted claims of the '463 patent satisfy the written description 

requirement "because it is clear what 1',6'-dichlorosucrose-6-ester is, whereas, with the 

enablement requirement, there was no direct evidence that 1',6'-dichlorosucrose-6-ester was 

formed, or could be detected, below 85°C." ID at 153. h1 our view, the ALl's conclusion is 

cOlTect, but for the reason that the specification refers to the (supposed) fonnation of 1',6'-

dichlorosucrose ester during the chlorination step, as called for by the claims. 

5. Indefiniteness 

Claims must be sufficiently definite "to pennit a potential infringer to determine whether 

or not he is infringing" and to permit a court to determine whether "novelty and invention are 

genuine." Exxon Research and Eng 'g. Co. v. United States, 265 F.3d 1371, 1378 (Fed. Cir. 

2001) (citations omitted). Claims are definite if they are capable of construction. See id. 

The ALl found that respondents had failed to demonstrate that the claims were invalid for 

indefiniteness because "the undersigned [the ALl] was able to construe all of the disputed claim 

limitations above." We agree with the ALl. As noted above, we also agree with the ALJ's 

construction of the disputed limitations. 

6. Domestic Industry 

Under the definitions of section 337(a), an industry exists if there is "significant 

investment in plant and equipment," "significant employment of labor or capital," or "substantial 

investment in [the patent's] exploitation, including engineering, research and development, or 

licensing." Section 337(a)(3)(A),(B),(C). With respect to section 337(a)(3)(A) and (B), the 

technical prong is the requirement that the investments in plant or equipment and employment of 

labor or capital are actually related to "articles protected by" the intellectual property right which 

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PUBLIC VERSION 

forms the basis of the complaint. Section 337(a)(3); see Certain Variable Speed Wind Turbines 

and Components Thereof, Inv. No. 337-TA-376, USITC Pub. 3003 (Nov. 1996), Comm'n Op. at 

14-17. With respect to section 337(a)(3)(C), the technical prong is the requirement that the 

activities of engineering, research and development, and licensing are actually related to the 

asserted intellectual property right. Certain Stringed Musical Instruments, Inv. No. 337-TA-586, 

Comm'n Op. at 13-14. 

The AU held that Tate & Lyle did not satisfy the technical prong of the domestic industry 

requirement with respect to the asserted claims of the '463 patent because Tate & Lyle did not 

meet its burden of proving that 1 ',6'-dichlorosucrose-6-ester forms in its process as required by 

the claims. ID at 133. He found that [[ 

]]. As discussed above, 

Tate & Lyle's reliance on kinetic theory is insufficient to show that this limitation is met. We 

therefore agree with the AU's finding that Tate & Lyle did not meet the technical prong of the 

domestic industry requirement with respect to the asserted claims of the '463 patent. 

B. The '969 and '551 patents31 

As of the date of the final ID, complainants asserted the '969 and '551 patents against 

Changzhou Niutang Chemical and GDFII, as well as certain non-manufacturing participating 

respondents, and certain non-participating and defaulted respondents, i.e., CJ America, AIDP, 

31 There is no dispute as to certain issues, such as whether there is a domestic industry 

that satisfies the asserted '969 and '551 patents. 

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PUBLIC VERSION 

Garuda, Heartland Sweeteners, [[ ]], [[ ]], U.S. Niutang, Nu-Scaan, Shanghai 

Aurisco, and Zhongjin. We have found that sucralose is not produced "under, or by means of' 

the process of the '551 patent. Supra, section II.D.6. Nevertheless, we have chosen to examine 

both the '969 and '551 with respect to the issues of infringement and validity as presented to us 

by the petitions for review. 

1. Inji'ingement of the '969 and '551 patents 

The '969 patent is directed to the use or presence of a DSDE catalyst to add an ester 

group to sucrose to make sucrose-6-ester which is then ready for the steps of the '463 patent, 

while the '551 patent is directed to a liquid-liquid extraction to recover the DSDE catalyst from a 

reaction mixture which includes sucrose-6-ester. Independent claim 20 of the '969 patent, from 

which the other asserted claims of the '969 patent depend, and independent claim 1 of the '551 

patent, from which all of the other asserted claims of the '551 patent depend, call for the use or 

presence of a DSDE catalyst, specifically a 1 ,3-diacyloxy-l, 1,3,3-tetra(hydrocarbyl)distannoxane. 

Thus all of the asserted claims of the '969 and '551 patents require the use or presence of a 

DSDE catalyst. 

The ALJ's ID 

The ALI construed disputed limitations of the '969 and '551 patents,32 but found noninfringement solely on the basis that Tate & Lyle failed to prove that the two manufacturing 

respondents (Changzhou Niutang Chemical and GDFII) use a DSDE (tin diester) catalyse3 in 

32 The ALI's claim construction was not the subject of any petition for review. 

33 distannoxane diester (which is a catalyst with two tin atoms and two ester groups, one 

off of each tin atom). 

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PUBLIC VERSION 

their processes. The AU found that the evidence showed that manufacturing respondents 

Changzhou Niutang Chemical and GDFII use [[ 

]]. ID at 

170. He rejected the allegation that the presence of tin in Changzhou Niutang Chemical's and 

GDFII's bulk sucralose and plant inspection samples indicated that the plant inspection did not 

accurately reflect the processes used by those two respondents. ID at 171. 

The AU found that AIDP does not infringe, stating that he "agrees with Respondents that 

the evidence based on the pre-suit testing does not aftinnatively show that AIDP infringes either 

the '969 or '551 patents for the same reasons infringement was not proven against Changzhou 

Niutang or GDFII, namely because the presence of organic butyl tin was not continued in 

AIDP's pre-suit sample." ID at 173. 

The AU found that CJ America infringes because "there is no dispute regarding CJ 

America's infringement," noting Tate & Lyle's assertion that CJ America has admitted 

infringement. ID at 173. 

[[ 

]] Since he found that neither Changzhou Niutang Chemical nor GDFII infringed, he also 

found that these respondents did not infringe. ID at 174. 

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PUBLIC VERSION 

As to non-participating respondent Nu-Scaan and defaulting respondents Shanghai 

Aurisco and Zhongjin, the ALl, noting that liability of these respondents was premised on 

infringement by Changzhou Niutang Chemical and GDFII, also found that these respondents did 

not infringe. The ALJ's findings related to whether infringement had been shown on the merits. 

Under section 337(g) and Commission Rule 210.16, defaulting respondents may be the subject of 

limited exclusion orders even in the absence of an affirmative showing of infringement. 

a. Preliminary Issues 

Before addressing the ALJ's findings regarding infringement, it is necessary to address 

two preliminary issues, i.e., whether the ALJ was correct in refusing to accord Tate & Lyle a 

presumption of infringement under 35 U.S.c. § 295, and whether the ALl properly excluded 

certain late-produced evidence sought to be admitted by Tate & Lyle. 

Whether the ALJ was Correct that Tate & Lyle is Not Entitled to a Presumption Under 

35 U.S.c. § 295 that Respondents Infringed the Asserted Claims of the '969 and '551 

Patents 

In connection with the issue of infringement of the '969 and '551 patents, the ALl 

refused to accord Tate & Lyle a presumption under 35 U.S.c. § 295 that Changzhou Niutang 

Chemical, U.S. Niutang, and GDFII infringe "since there is no evidence that Respondents failed 

to participate in discovery or hindered Complainants from being able to make a reasonable effort 

to determine their manufacturing processes." ID at 172-73. 

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PUBLIC VERSION 

Tate & Lyle's Submissions 

Tate & Lyle first argues that it is entitled to a presumption under 35 U.S.C. § 29535 that 

the imported articles were made by an infringing method. Tate & Lyle explains that under the 

statute, an accused product shall be presumed to be made by the patented process if (1) there is a 

substantial likelihood that the product was made by the patented process and (2) the plaintiff has 

made a reasonable effort to determine the process actually used and was unable to so determine. 

Tate & Lyle Petition at 88 (discussing 35 U.S.C. § 295). Tate & Lyle cites the legislative history 

and Federal Circuit law which explains that less than a preponderance36 of evidence is required 

where the defendant has been non-cooperative. Tate & Lyle Petition at 89 (relying on S. Rep. 

35 The statute provides: 

In actions alleging infringement of a process patent based on the importation, sale, 

offer for sale, or use of a product which is made from a process patented in the 

United States, if the court finds--

(1) that a substantial likelihood exists that the product was made by the patented 

process, and 

(2) that the plaintiff has made a reasonable effort to determine the process actually 

used in the production of the product and was unable to so determine, 

the product shall be presumed to have been so made, and the burden of 

establishing that the product was not made by the process shall be on the party 

asserting that it was not so made. 

35 U.S.C. § 295. 

36 Although a party must demonstrate facts by a preponderance of the evidence in most 

civil cases, i.e., that it is more likely than not that a fact is true, the laws of evidence do provide 

for various kinds of evidentiary presumptions which may be used to satisfy a burden of 

production, or in this case, a burden of proof, if certain predicate conditions are established for 

using the presumption. Under 35 U.S.C. § 295, the predicate conditions are establishing a 

"substantial likelihood" of infringement and inability to detennine what process was actually 

used after making a reasonable effort to do so. 

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No. 100-83 (1987) at 45 and Nutrinova Nutrition Specialties & Food Ingredients GmbH v. Us. 

International Trade Comm 'n, 224 F.3d 1356, 1359-60 (Fed. Cir. 2000)). 

Respondents'Submissions 

Changzhou Niutang states that to shift the burden of proof through a presumption under 

35 U.S.C. § 295 is a drastic measure tantamount to a sanction and was created for the situation 

where importers and manufacturers reside outside the reach of United States discovery 

mechanisms, but that no such sanction would be warranted here because respondents have 

provided thousands of pages of documents regarding their processes, including batch records, 

notebooks, operation manuals and other materials, as well as deposition testimony. Changzhou 

Niutang Response at 80-83. Changzhou Niutang contends that complainants have not shown that 

they could not detennine the processes used by respondents, that they are merely rehashing old 

discovery disputes, and that they have received all relevant discovery regarding respondents' 

processes which is sufficient as a matter of law. Changzhou Niutang Response to Petition at 87-

94. Moreover, Changzhou Niutang argues that complainants cannot show that there is a 

substantial likelihood that respondents' sucralose was ever made according to the claims of the 

'969 or '551 patents. Changzhou Niutang Response to Petition at 83. Changzhou Niutang 

analogizes the case here to the Aventis case in which a court did not find the presence of a 

chemical compound sufficient grounds for a presumption under 35 U.S.C. § 295 of infringement 

of a process patent. Changzhou Niutang Petition at 83-87 (discussing Aventis Pharms., Inc. v. 

Barr Labs., 411 F.Supp.2d 490,514 (D.N.J. 2006) ("In the absence of evidence about how many 

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possible fexofenadine production processes exist, Plaintiffs cannot establish a substantial 

likelihood that the [patented] process was used by showing that one other process was not used"). 

The lA's Submissions 

The lA agrees with the ALJ that Tate & Lyle has not satisfied the two-pronged test for 

obtaining a presumption of infringement under 35 U.S.C. § 295. The lA explains that Tate & 

Lyle has not demonstrated a substantial likelihood that the infringing process is used because the 

presence of dibutyl tin does not necessarily indicate the use of DSDE. lA Reply Submission at 

81 (discussing Aventis, 411 F.Supp.2d at 510-512). The IA explains that Tate & Lyle has not 

demonstrated inability to conduct discovery, noting that Tate & Lyle did not make any 

allegations that respondents' discovery responses were inadequate and that Tate & Lyle did not 

seek any sanctions pursuant to Commission Rule 210.33. lA Reply Submission at 84. 

Discussion 

The ALJ properly found that Tate & Lyle did not meet the test for obtaining a 

presumption of infringement, as it did not show an inability to access the factories nor did it 

show a substantial likelihood that respondents' sucralose is made using the processes of the '969 

or '551 patents since the presence of dibutyl tin does not necessarily indicate the use of DSDE. 

See RX-828C at 41-42; RX-829 at 29-30; RX-832 at l3. We therefore we agree with the 

conclusion of the ALJ on this point. 

Exclusion of Evidence 

In connection with his analysis of infringement of the '969 and '551 patents, the ALJ 

excluded certain late-produced evidence which Tate & Lyle sought to have admitted. Tate & 

Lyle argues that this evidence should have been admitted. 

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Tate & Lyle's Submissions 

As it did before the AU, Tate & Lyle argues that the presence of inorganic tin and dibutyl 

tin in samples taken from respondents' factories indicates the presence ofDSDE. Tate & Lyle 

Submission at 104-133. Tate & Lyle submits expert testimony that the presence of dibutyl tin 

could indicate that DSDE was present because dibutyl tin can be a decomposition product of 

DSDE. Some of the samples showing dibutyl tin and certain expeli testimony interpreting these 

samples that Tate & Lyle seeks to rely on in making this argument were excluded by the AU as 

having been submitted late. Tate & Lyle argues that the AU erred in excluding this evidence, 

blaming the late nature of the reports on respondents' insistence that Tate & Lyle ship the 

samples themselves. 

Respondents'Submissions 

Respondents state that Tate & Lyle received adequate discovery and that respondents 

were not the cause of Tate & Lyle's lateness. Respondents explain that they allowed full access 

to their facilities, which Tate & Lyle toured, but that they would not ship samples in the first 

instance because they did not know how to ship internationally samples containing corrosive 

chemicals. Changzhou Niutang Reply to Tate & Lyle Petition at 3-4; see also Changzhou 

Niutang Reply Submission at 114-115. 

The lA's Submissions 

The IA states that the ALl did not abuse his discretion in excluding the late evidence. IA 

Response to Petitions at 11-17. 

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Discussion 

The issue is reviewed de novo by the Commission, 5 U.S.c. § 557(b) (quoted in Certain 

Acid-Washed Garments and Accessories, Inv. No. 337-TA-324 (U.S.I.T.C. Aug. 6, 1992)); 

Commission Rule 21O.45(c). In our view, the AU properly precluded this evidence because 

Tate & Lyle was aware of the deadline for production of evidence and could itself have arranged 

for transport of the samples rather than relying on respondents to transport the samples. Further, 

as discussed below, even if the evidence had been admitted, it would not have changed the result. 

b. Literal Infringement 

Tate & Lyle's Submissions 

Tate & Lyle argues that the presence of dibutyl tin in respondents' factories indicates the 

use ofDSDE. Petition for Review at 67-68 (DSDE can degrade into dibutyl tin). 

Respondents'Submissions 

Respondents state that Tate & Lyle has not provided evidence of the use ofDSDE in their 

process. Changzhou Niutang Reply Submission at 77-86. Respondents argue that the presence 

of dibutyl tin does not necessarily mean that DSDE was present. 

The lA's Submissions 

The IA submits that Tate & Lyle has not shown the presence ofDSDE, even with the 

laboratory evidence of other forms of tin. IA Reply Submission at 74-78. The IA agrees with the 

AU that there were also credibility problems with the interpretation of the data, specifically that 

the experts did not adequately supervise the testing and that the testing was inconsistent. IA 

Reply Submission at 75-76. 

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Discussion 

As noted above, the AU's ruling on infringement with regard to the manufacturing 

respondents rests on his finding that Tate & Lyle's failed to demonstrate that DSDE was used in 

the accused processes. We agree with the AU that the presence of inorganic or dibutyl tin does 

not prove that DSDE was used. We therefore agree with the ALI's finding that the asselied 

claims of the '969 and '551 patents are not literally infringed by Changzhou Niutang Chemical or 

GDFII. We note that, even if the excluded evidence were considered, the result would not 

change, since none of the excluded samples contained DSDE and the presence of dibutyl tin does 

not prove the use of DSDE. See IA Response Submission at 75 n.17 ("The Bodycote 

testing ... only shows the detection of organic tins, which the ID finds to be plausibly explained by 

other reasons explained below.") 

As to the non-manufacturing respondents, we make the following determinations: 

With respect to AIDP, we agree with the AU that AIDP does not infringe since the 

presence of organic butyl tin was not confinned in the AIDP sample. ID at 173. We note that 

while AIDP was a so-called non-participating respondent, it was not found in default under 

Commission Rule 210.16. 

As to CJ America, it is a so-called non-participating respondent, but has not been found 

in default. It has admitted infringement of the '969 and '551 patents. 37 Unlike the situation with 

regard to the '463 patent, there is no conflicting finding of non-infringement for the '969 patent 

by CJ America. 

37 The '551 patent is not within the scope of section 337(a)(1)(B)(ii). 

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With respect to the non-manufacturing participating respondents, and the nonparticipating and defaulted respondents, their liability is dependent on that of their suppliers, the 

manufacturing respondents. Since the latter were found not to infringe, the AU correctly found 

that the fonner do not infringe either. We note that while Tate & Lyle argued infringement by 

Heatiland Packaging in its post-hearing brief, it did not allege infringement by Heatiland 

Packaging in its complaint. 

In its petition for review, Tate & Lyle stated as follows: 

... Like CJ America, Vivion also filed a response to the Complaint admitting 

infringement of the '969 and '551 patents. (See Vivion Response to Complaint 

(Sept. 23,2008).) For the same reasons as CJ America, Vivion should be found to 

infringe the '969 and '551 patents based on its admissions of such infringement. 

But, for the same reasons discussed with respect to the '463 patent, the ID was 

incorrect when it did not find that defaulting and non-participating Respondents 

AIDP, Nu-Scaan, Shanghai Aurisco, and Zhongjin infringe the '969 and '551 

patents. 

In light of Commission Rules 210.16(b)(3) and 210.17, Commission 

precedent as expressed in Electrical Connectors, as well as law of the case set 

forth in the Commission's Notice Not to Review the Initial Detennination Finding 

Seven Respondents in Default, and in light of the reasoning set forth above, each 

of AIDP, Nu-Scaan, Shanghai Aurisco, and Zhongjin should be found to infringe 

the '969 and '551 patents. The ID's failure to do so was an erroneous conclusion 

oflaw. 

Tate & Lyle Petition at 15. 

However, in its submission on review, Tate & Lyle simply stated: 

The AU improperly declined to find infringement of certain associated 

patents by certain defaulting Respondents. Tate & Lyle fully addresses and 

incorporates the arguments and evidence referenced regarding this issue in Section 

II(A)(3)( a) of its Brief on Remedy, the Public Interest and Bond. Indeed, the 

AU's failure to properly find infringement by the defaulting and non-participating 

Respondents was a legal error that detrimentally impedes the Commission 

decision on the appropriate scope of relief. 

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Tate & Lyle Submission at 155. The cited pOliion of Tate & Lyle's remedy brief is identical to 

the conesponding section of its petition for review. In its post-hearing brief to the ALJ however, 

Tate & Lyle did not rely on these arguments, but rather on CJ America's admission, AIDP's presuit sample, and for the non-manufacturing participating respondents, as well as Nu-Scaan, 

Shanghai Aurisco, and Zhongjin, the derivative liability from Changzhou Niutang Chemical 

and/or GDFII. In addition, with regard to Nu-Scaan, Shanghai Aurisco, and Zhongjin, Tate & 

Lyle stated that these respondents have "not participated in the Investigation, did not submit a 

pre-hearing brief, and did not participate in the hearing ... " Tate & Lyle Post-Hearing Brief at 

136. 

As to Vivion, notwithstanding any alleged admission, Tate & Lyle did not argue that 

Vivion infringed the '969 and '551 patents in its post-hearing brief and the AU did not address 

such infringement. As noted above, the liability of non-manufacturing participating respondents 

and the non-participating and defaulting respondents (except for AIDP and CJ America) is based 

on the liability of the manufacturing respondents. Since the latter do not infringe, the former do 

not infringe either. As to Nu-Scaan, it was a non-participating respondent which was not found 

in default. There was no express request for a finding of adverse inferences under Commission 

Rule 210.17 against Nu-Scaan. Shanghai Aurisco and Zhongjin were found to be in default 

under Commission Rule 210.16. A ruling of default under Commission Rule 210.16 does not 

constitute a finding of infringement on the merits, though it may form the basis of a limited 

exclusion order under section 337(g).38 

38 Tate & Lyle did not raise the issue of infringement by equivalents in its post-hearing 

brief, and the AU did not address it. Tate & Lyle did not raise the issue of doctrine of 

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2. Anticipation and Obviousness 

a. The '969 Patent: Anticipation and Obviousness 

The '969 patent uses DSDE as a catalyst to effect esterification of sucrose. This catalyst 

may be recovered from the reaction mixture by using the '551 method: 

DSDE -> DBBS -> DSDE (begin again) 

(DSDE is the catalyst and DBBS is the combination ofDSDE with sucrose) 

The prior art for the '969 patent includes the Navia '746 patent, the Otera reference, the 

Wagner reference, the David reference, and the '551 patent.39 According to its abstract, Navia 

discloses the reaction of sucrose with a 1 ,3-di(hydrocarbyloxy)-I, 1 ,3,3-

tetra(hydrocarbyl)distannoxane to produce a 1 ,3-di( 6-0-sucrose )-1,1,3,3-

tetra(hydrocarbyl)distannoxane, which can be acylated to produce a sucrose-6-ester. The Navia 

'746 patent used a DHTO-type tin catalyst. The Otera reference describes how solvent polarity 

affects tetrabutyl tin esterification of such substrates as benzyl alcohol and methyl butyrate. The 

Wagner reference, RX-397, teaches the use of a dibutyl tin catalyst to esterify certain simple 

sugars. The David reference is a review article which describes the esterification of sugar 

equivalents in its petition for review of the final ID, which had decided infringement adversely to 

it. Thus, the issue of equivalents of the '969 and' 551 patents is waived because it was not 

before the AU and is waived at least under Commission Rule 21O.43(b)(2) ("Any issue not 

raised in a petition for review will be deemed to have been abandoned by the petitioning party 

and may be disregarded by the Commission in reviewing the initial detennination (unless the 

Commission chooses to review the issue on its own initiative under § 210.44)."). See also 

Broadcom v. lTC, 542 F.3d 894, 901 (Fed. Cir. 2008). 

39 The '551 patent is assigned to Tate & Lyle but the invention claimed therein was 

invented by a different group of inventors (a different so-called "inventive entity"). Thus the 

'551 patent can serve as a means of invalidating the '969 patent. 

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derivatives at specific positions using tributyl tin. As noted above, the '551 patent teaches the 

removal of DSDE from a reaction mixture containing DSDE, a sucrose-6-ester, and a polar 

aprotic solvent. 

The ALJ's ID 

Anticipation 

The AU noted that the respondents did not make a separate argument regarding 

anticipation in their post-hearing briefs, ill at 182, and therefore limited his analysis to 

obviousness. 

Obviousness 

The AU held that the asserted claims of the '969 patent are not invalid for obviousness, 

giving the following as his reasons: "First, Respondents only made general arguments that a 

certain combination of references render the '969 patent obvious without arguing any specific 

references in combinations. Second, even taking these references in combination, the references 

do not disclose the specific process using DSDE for acylation, as required by the '969 patent." 

ill at 185. 

Respondents'Submissions 

Changzhou Niutang argues that, contrary to the AU, the '969 patent is invalid in light of 

prior art, specifically that the organic tin catalysts of the '969 patent would have been obvious in 

light of the Navia '746 patent, which forms DSDE. Changzhou Niutang Petition at 83-84. 

Changzhou Niutang asserts that the Navia reference can also be combined with other references, 

including the Vernon reference and various scientific articles which discuss how the organic tin 

catalysts can fonn complexes with sucrose derivatives. Changzhou Niutang Petition at 85-90. 

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Changzhou Niutang argues that the disclosure in the Navia '746 reference would have provided 

the motivation to use DSDE as a catalyst. Changzhou Niutang Submission at 129. 

The other respondents do not address these patents in their petitions for review or 

submissions. 

Tate & Lyle's Submissions 

Tate & Lyle argues that the AU was correct that the asserted claims of the '969 patent 

would not have been considered obvious over the asserted prior art. Tate & Lyle Response to 

Changzhou Niutang's Petition at 82. Tate & Lyle submits, inter alia, that the DB TO organic tin 

in the Navia '746 reference is different than the DSDE organic tin in the '969 patent, and that the 

DSDE fonned in the Navia process is fonned as an unwanted byproduct. Tate & Lyle Response 

to Changzhou Niutang's Petition at 82-89. Tate & Lyle states that the DSDE did not participate 

in the acetylation process in the prior art. Tate & Lyle Reply Submission at 163. 

The fA's Submissions 

The IA agrees that the asserted claims of the '969 patent were not obvious, explaining 

that the organic tin compound used in the Navia '764 reference is very different from the organic 

tin catalyst used in the process of the '969 patent. IA Response at 68-69. 

Discussion 

We agree with the AU that the '969 patent is not invalid for obviousness. The method of 

the Navia '746 patent was to use a DHTO tin catalyst which fonned DSDE as a byproduct of the 

reaction. Navia did not use DSDE as a catalyst. The disclosure in the '551 patent, which is 

argued to show how to modify the Navia '746 patent to recover DSDE, does not render the '969 

patent obvious because the '551 patent and Navia do not teach that DSDE may be used as a . 

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catalyst. Thus, even if there was a reason to combine the references, the combination would not 

result in the claimed invention. 

b. The '551 Patent: Anticipation and Obviousness 

The prior art for the '551 patent included the Navia '746 patent, which taught a process 

for making sucrose-6-ester using an organotin catalyst, the Moore reference, which taught an 

extraction across a liquid-liquid partition (a so-called "liquid-liquid extraction"), and the Wagner 

reference, which taught the use of a dibutyl tin catalyst to esterifY the simple sugars which are 

part of the building blocks of RNA. 

TheALJ'sID 

With regard to anticipation, respondents relied only on the Navia '746 patent. The ALJ 

held that the Navia '746 patent does not anticipate the '551 patent because the Navia '746 patent 

does not teach the extraction process of the '551 patent. IO at 189. 

With regard to obviousness, the respondents relied on the Navia '746 patent in 

combination with the Moore and/or Wagner references. The ALJ found that respondents had 

failed to meet their burden to show by clear and convincing evidence that the prior art references 

rendered the patent obvious because the references do not show a liquid/liquid extraction, or the 

use of a small amount of water. ill at 191. 

Respondents' Submissions 

As to anticipation, Changzhou Niutang states that the asserted claims of the '551 patent 

are anticipated by Navia '746 because that reference teaches the use of "recovery procedures that 

are known in the art." Changzhou Niutang Petition for Review at 81 (citing RX-168, col. 5, lines 

47-49). 

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As to obviousness, Changzhou Niutang asserts that, contrary to the ALl, the elements of 

the asserted claims '551 are disclosed in the prior art: use ofa liquid-liquid extraction (Moore), 

use of water to increase the efficiency of a liquid-liquid extraction (standard laboratory 

knowledge), use of tin catalysts (Navia), use of an organic solvent that is not soluble in water 

(Navia), and use ofDMF (Navia). Changzhou Niutang Petition at 78-83. Thus, Changzhou 

Niutang disagrees with the ALJ and asserts that the addition of water to facilitate a liquid-liquid 

organic extraction is standard laboratory knowledge known in the art. 

The other respondents do not address these patents. 

Tate & Lyle's Submissions 

Tate & Lyle argues that claims 1-4 and 11-22 of the' 551 patent are not anticipated by the 

asserted prior art because Navia does not teach the formation of sucrose-6-ester, only the 

formation of an intermediate which can be reacted with an acylating agent to fonn sucrose-6-

ester, and because Navia teaches the recovery of sucrose-6-ester using evaporation and filtering 

techniques, rather than the liquid-liquid extraction of the '551 patent. Tate & Lyle Response to 

Changzhou Niutang's Petition for Review at 75. As to obviousness, Tate & Lyle argues that 

claims 1-4 and 11-22 of the' 551 patent would not have been considered obvious over the 

asserted prior art because Navia taught away from dissolving both the sucrose-6-ester and the tin 

compound, thereby teaching away from the use of a liquid-liquid extraction. Tate & Lyle 

Response to Changzhou Niutang's Petition at 79. Moreover, Tate & Lyle argues that it would 

not have been obvious to add a small amount of water to the liquid-liquid extraction, citing the 

testimony of Dr. Sands that a person of ordinary skill would not have been motivated to add 

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water because it would have to be removed before the chlorination step. Tate & Lyle Response 

to Changzhou Niutang's Petition at 79. 

The fA's Submissions 

The IA agrees with the ALJ that the asserted claims of the '551 patent were not 

anticipated or obvious, explaining that the organic tin compound used in the Navia '764 

reference is very different from the organic tin catalyst used in the process of the' 5 51 patent. IA 

Response at 68-69. 

Discussion 

We agree with the AU that the asserted claims of the '551 patent are not invalid for 

anticipation or obviousness. We agree with the ALJ that the Navia '746 patent does not 

anticipate the '551 patent because it does not teach the use ofa liquid-liquid extraction. We also 

agree with the AU that the asserted claims of the '551 patent are not invalid for obviousness, 

since Moore does not cure the defect in Navia because Moore does not teach the use of a small 

amount of water to improve the liquid-liquid extraction. The Wagner reference does not teach 

the use of water with a liquid-liquid extraction. Moreover, we agree with Tate & Lyle that Navia 

taught away from the use of water because Navia taught away from dissolving the sucrose-6-ester 

and tin catalyst in water. 

C. The '709 and '435 Patents 

As of the date of the final ID, complaints asserted the '709 and the '435 patents against 

certain defaulting and non-participating entities.40 41 Specifically, Tate & Lyle asserted the '709 

40 Independent claim 8 of the '709 patent recites: 

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patent against AIDP, CJ America, Hebei Research, Fortune Bridge, Nu-Scaan, Vivion, 

Gremount, Hebei Academe, Lianyungang Natiprol, Ruland, Shanghai Aurisco, and Zhongjin. 

Tate & Lyle asserted the '435 patent against Hebei Research, Fortune Bridge, Vivion, Gremount, 

8. A process for producing sucralose from a feed mixture of (a) 

6-0-acyl-4, 1 ',6'-trichloro-4, 1 ',6'-trideoxygalactosucrose, (b) salt including alkali 

metal or alkaline earth metal chloride, (c) water, and (d) other chlorinated sucrose 

by-products, in a reaction medium comprising a tertiary amide, wherein said 

process compnses: 

(i) removing said tertiary amide to produce an aqueous solution of (a), (b) and (d) 

from which a major proportion of the tertiary amide in said feed mixture has been 

removed; 

(ii) deacylating the 6-0-acyl-4, 1 ',6'-trichloro-4, 1 ',6'-trideoxygalactosucrose by 

raising the pH of the aqueous solution product of step (i) to a pH of at least about 

11 (±) at a temperature and for a period of time sufficient to effect said 

deacylation, to produce an aqueous solution comprising sucralose, salt including 

alkali metal or alkaline earth metal chloride, and other chlorinated sucrose 

by-products; and 

(iii) recovering sucralose from the product of step (ii). 

41 Claim 1 ofthe '435 patent recites: 

1. A method for removing impurities from a starting composition including 

sucralose; first and second impurities, each of said first and second impurities 

comprising one or more related halogenated sucrose derivatives; and a first 

solvent; the method comprising the steps of: (a) extracting the starting 

composition with a second solvent at least partially immiscible with the first 

solvent to transfer the first impurities into said second solvent, thereby converting 

the starting composition to a partially purified composition comprising the 

sucralose, the second impurities, and the first solvent; (b) extracting the partially 

purified composition with a third solvent at least partially immiscible with the 

first solvent to transfer the sucralose into said third solvent while retaining the 

second impurities in said first solvent; and (c) recovering said sucralose from the 

third solvent via crystallizing said sucralose; wherein the first impurities comprise 

tetrachlorosucrose, and wherein in step (a) at least half of the tetrachlorosucrose is 

transferred to the second solvent while at least half of the sucralose is retained in 

the first solvent. 

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Hebei Academe, Lianyungang Natiprol, and Ruland. None ofthese are manufacturers. Tate & 

Lyle had previously alleged infringement of these patents by manufacturing respondents 

Changzhou Niutang Chemical, GDFII, and Hebei Sukerui Science, but later withdrew those 

allegations. The AU made separate infringement findings for each of the defaulting and nonparticipating respondents, as discussed below. 

The '709 Patent - Infringement 

AIDP was a non-participating respondent, but was not found to be in default. Tate & 

Lyle relied on the testimony of one of its chemists to show infringement by AIDP. The AU 

found that testimony "insufficient to affirmatively prove that AIDP infringes the asserted claims 

of the '709 patent. Dr. Flora did not perform or oversee any of the tests regarding AIDP. In 

addition, no one who conducted the tests was called to testify regarding the methodology used or 

the reliability of the results. Even if the tests were reliable, however, the tests which show the 

mere presence of detected impurities is not conclusive that AIDP infringes the deacylation 

process disclosed in the '709 patent." ID at 194. 

CJ America was a non-participating respondent, but was not found in default. As to CJ 

America, the AU, noting that Tate & Lyle had asserted that CJ America had admitted 

infringement, stated: "As there is no dispute regarding CJ America's infringement, the 

undersigned finds that CJ America infringes the asserted claims of the '709 patent." ID at 194. 

Fortune Bridge was a non-participating respondent, but was not found in default. As to 

Fortune Bridge, the AU stated: "As there is no dispute regarding Fortune Bridge's infringement, 

the undersigned finds that Fortune Bridge infringes the asserted claims of the '709 patent." ID at 

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195. The ALJ treated non-participating respondents Nu-Scaan and Vivion similarly. The AU 

also treated defaulting respondents Gremount, Hebei Academe, Lianyungang Natiprol, Ruland, 

Shanghai Aurisco, and Zhongjin similarly. 

Hebei Research was found in default. As to Hebei Research, the AU stated: "As Hebei 

Research has already defaulted in this investigation, the undersigned finds that there is no need to 

address whether complainants have affirmatively proved that Hebei Research infringes the '709 

patent." By way of explanation, the AU stated in a footnote: "It is the undersigned's 

understanding that Complainants are attempting to affinnatively prove that certain nonparticipating Respondents are infringing the patents at issue to support their request for a general 

exclusion order, which the undersigned does not find to be warranted in the circumstances of this 

case." ill at 197 n.ll. 

The '435 Patent - Infringement 

CJ America was a non-participating respondent, but was not found in default. As to CJ 

America, the AU, noting that Tate & Lyle had asserted that CJ America had admitted 

infringement, stated: "As there is no dispute regarding CJ America's infringement, the 

undersigned finds that CJ America infringes the asserted claims of the '435 patent." ill at 204. 

Fortune Bridge was a non-participating respondent, but was not found in default. As to 

Fortune Bridge, the AU stated: "As there is no dispute regarding Fortune Bridge's infringement, 

the undersigned finds that Fortune Bridge infringes the asserted claims of the '435 patent." ill at 

195. The AU treated non-participating respondent Vivion similarly. The AU also treated 

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defaulting respondents Gremount, Hebei Academe, Liangyungang Natiprol, and Ruland 

similarly. 

Hebei Research was found in default. As to Hebei Research, the AU stated: "As Hebei 

Research has already defaulted in this investigation, the undersigned finds that there is no need to 

address whether complainants have affinnatively proved that Hebei Research infringes the '435 

patent." By way of explanation, the AU stated in a footnote: "It is the undersigned's 

understanding that Complainants are attempting to affinnatively prove that certain nonpaliicipating Respondents are infringing the patents at issue to support their request for a general 

exclusion order, which the undersigned does not find to be warranted in the circumstances of this 

case." ID at 207 n.11. 

Tate & Lyle's Submissions 

In its petition for review, Tate & Lyle argued that AIDP should be found to infringe the 

'709 patent. Specifically, Tate & Lyle argued that in light of Commission Rule 210.17, 

Electrical Connectors, and "in light of the reasoning set forth with respect to the '463 patent, 

AIDP should be found to infringe the '709 patent." Tate & Lyle Petition at 15. In its submission 

on the issues on review, Tate & Lyle stated: 

The AU improperly declined to find infringement of certain associated patents by 

certain defaulting Respondents. Tate & Lyle fully addresses and incorporates the 

arguments and evidence referenced regarding this issue in Section ll(A)(3)(a) of 

its Brief on Remedy, the Public Interest, and Bond. Indeed, the ALl's failure to 

properly find infringement by the defaulting and non-participating Respondents 

was a legal error that detrimentally impedes the Commission decision on the 

appropriate scope of relief. 

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Tate & Lyle Submission at 155. Tate & Lyle's submission on remedy on this point is identical to 

its petition for review. In its post-hearing brief, however, Tate & Lyle relied solely on alleged 

record evidence of infringement by AIDP. Tate & Lyle Post-Hearing Brief at 146-47. 

The Respondents' Submissions 

The Respondents do not appear to have petitioned or briefed the issue of infringement of 

the '709 and '435 patents. 

The fA's Submissions 

The IA has objected to the ALl's ultimate finding that respondent CJ America infringed 

the asserted claims of the '435 patent because Tate & Lyle did not assert the '435 patent against 

CJ America in its Complaint. IA Response to Petitions at 2. 

Discussion 

With respect to AIDP, the AU's finding of non-infringement of the '709 patent is 

correct. Tate &Lyle's attempt to rely on Commission Rule 210.17 comes too late, as it is an 

argument that it could have made but failed to make before the AU. While the AU found that 

CJ America infringes the '709 patent, there is no conflicting finding of non-infringement, as with 

the '463 patent, and thus its admission stands. The AU's findings that Fortune Bridge, 

Gremount, Hebei Academe, Lianyungang Natiprol, Nu-Scaan, Ruland, Shanghai Aurisco, 

Vivion, and Zhongjin infringed the '709 patent on the merits are inadequate as no reasons are 

given for the findings. Similarly, the ALJ's findings that Fortune Bridge, Gremount, Hebei 

Academe, Lianyungang, Natiprol, Ruland, and Vivion infringe the '435 patent on the merits is 

inadequate as no reasons are given for the findings. As to Hebei Research, the ALJ did not make 

a ruling on the merits, but Tate & Lyle has not petitioned on this issue. As the IA points out, 

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PUBLIC VERSION 

Tate & Lyle did not accuse CJ America of infringement ofthe '435 patent in its complaint. As 

noted previously, respondents defaulted under Commission Rule 210.16 (Gremount, Hebei 

Academe, Hebei Research, Lianyungang Natiprol, Ruland, Shanghai Aurisco, and Zhongjin) may 

still be the subject of a limited exclusion order even if infringement is not found on the merits. 

Compare 19 U.S.c. § 1337(g)(1) (limited exclusion order may be entered against defaulting 

respondent) with id. § 1337(g)(2) (general exclusion order may be entered in case of defaulters 

only upon showing of substantial, reliable, and probative evidence of violation, and where other 

criteria for a general exclusion order are met). Nu-Scaan, Vivion, and Fortune Bridge were not 

found in default, but could be the subject of adverse inferences under Commission Rule 210.17, 

as requested by Tate & Lyle before the AU, which can include a finding of violation. 

V. REMEDY, THE PUBLIC INTEREST, AND BONDING 

The ALJ's Recommended Determination 

The AU stated that a general exclusion order is not warranted in this investigation 

because complainants failed to prove affirmative infringement of the asserted patents by any of 

the respondents in the investigation, as well as any other non-named respondents. ID at 226. 

With regard to cease and desist orders, the AU noted that according to the IA, there is 

unrebutted evidence that [[ ]], Garuda, U.S. Niutang, [[ ]], 

Forbest USA, and MTC Industries each maintain commercial quantities of sucralose within the 

United States. ID at 227. He thus found that in the event the Commission finds a violation by 

any of the "domestic Respondents," complainants have shown that cease and desist orders are 

warranted against them. 

94 
PUBLIC VERSION 

The ALl recommended a bond in the amount of 100% of the entered value of the 

infringed imported products to pennit impOliation during the Presidential review period pursuant 

to section 337(;). 

Tate & Lyle's Submissions 

Tate & Lyle submits that a general exclusion order is necessary under both 19 U.S.C. § 

1337(d)(2)(A) and (B). Tate & Lyle argues that a general exclusion order is necessary under 19 

U.S.C. § 1337(d)(2)(A) to prevent circumvention of an exclusion order limited to respondents' 

products. Tate & Lyle further argues that certain companies doctor documents, altering their 

certificates of analysis to disguise the source of their sucralose. Tate & Lyle Submission on 

Remedy at 6-7. Tate & Lyle also argues that certain manufacturers conceal their identities, 

pointing out that manufacturers rarely, if ever, identifY themselves on their product packaging 

and labeling, making it impossible for Customs to detennine the source of their manufacture. 

Tate & Lyle Submission on Remedy at 7. Tate & Lyle also describes rapidly evolving 

distribution networks in which subsidiaries are created and renamed, and sucralose changes 

hands making it difficult to trace and establish the identity ofthe manufacturer. Tate & Lyle 

Submission on Remedy at 7-17 (including diagrams of complex relationships among entities). 

Tate & Lyle argues that a general exclusion order is necessary under 19 U.S.C. § 

1337(d)(2)(B) because there is a widespread pattern of violation of section 337, it is difficult to 

identifY the source of infringing products, and there are significant incentives for foreign 

competitors to enter the U.S. market. Tate & Lyle argues that it established the sucralose market, 

its sucralose is profitable, it has established consumer demand and products, there are profitable 

95 
PUBLIC VERSION 

retail distribution channels, there are profitable industrial distribution channels, and there are 

available distributors. Tate & Lyle Submission on Remedy at 18-25. Tate & Lyle submits that 

"business conditions are such that (a) there is a history of unauthorized use ofthe accused 

products, (b) there is established demand for the accused products in the United States, ( c) there 

are economic incentives for foreign manufacturers to target the U.S. market, (d) there are 

additional foreign manufacturers capable of importing accused products, and (e) there are low 

barriers to entry into the United States of new foreign manufacturers of accused products." Tate 

& Lyle Submission on Remedy at 17-18. In addition, Tate & Lyle argues that they meet the 

Spray Pumps factors which they submit support the issuance of a general exclusion order in this 

case. Tate & Lyle Submission on Remedy at 25 (citing Certain Airless Paint Spray Pumps and 

Components Thereof, Inv. No. 337-TA-90, USITC Pub. No. 1199, Comm'n Op. At 17 (1981)). 

Tate & Lyle further submits that the AU erred in concluding that the defaulting 

respondents and non-participating respondents did not justifY the issuance of a general exclusion 

order. Tate & Lyle submits that the ID's conclusion that certain defaulting and non-participating 

respondents do not infringe the asserted patents depends upon legal error. Tate & Lyle contends 

that certain defaulting and non-participating respondents should be found to infringe the' 463 

patent, arguing that AIDP deprived Tate & Lyle of any discovery and any opportunity to obtain 

the full range of its products for laboratory testing. Tate & Lyle argues that AIDP should 

similarly be found to infringe the '709 patent. Tate & Lyle Submission on Remedy at 32. Tate 

& Lyle Submission on Remedy at 28-31. Tate & Lyle also contends that certain defaulting and 

non-participating respondents should be found to infringe the '969 and '551 patents, noting that 

96 
PUBLIC VERSION 

CJ America admitted infringement in its response to the complaint, citing ID at 173, and arguing 

that Vivion did the same. Tate & Lyle Submission on Remedy at 31. Tate & Lyle argues that 

Commission precedent justifies issuance of a general exclusion order based on the defaulting and 

non-participating respondents. Tate & Lyle Submission on Remedy at 31-34. 

Tate & Lyle also requests cease and desist orders against respondents JK Sucralose, 

Garuda, U.S. Niutang, Heartland Sweeteners, Forbest USA, and MTC in the event that the 

Commission finds a violation of section 337. Tate & Lyle Submission on Remedy at 36. Tate & 

Lyle contends that these companies possess U.S. inventories. 

Tate & Lyle submits that its production capacity is such that U.S. consumers would not 

be adversely affected by an exclusion of infringing sucralose, and that it is unaware of any other 

public interest issue that would militate against the entry of the proposed relief. Tate & Lyle 

Submission on Remedy at 37-38. Tate & Lyle contends that there is a public interest in the 

protection of its intellectual property rights. Tate & Lyle Submission on Remedy at38. 

As to bonding, Tate & Lyle argues for a bond set at 100 percent of the entered value of 

infringing imported merchandise because it argues that there is no way to detennine a reasonable 

royalty rate and there is no price differential upon which to base the amount of any bond. 

Respondents' Submissions 

Changzhou Niutang submits that any remedial orders issued by the Commission should 

exempt sucralose imported or sold by GDFII and the Niutang Respondents. Changzhou Niutang 

Reply Submission at 117. Changzhou Niutang submits that its entities do not infringe the 

asserted patent claims and therefore, any exclusion order, general or limited, that the 

97 
PUBLIC VERSION 

Commission might issue should have a provision that: "This Order does not apply to any 

sucralose, sweeteners containing sucralose, or related intermediate compounds thereof that are 

manufactured, imported or sold by any of the following entities: Changzhou Niutang Chemical 

Plant Co., Ltd., U.S. Niutang Chemical, Inc., Guangdong Food Industry Institute, L&P Food 

Ingredient Co., Ltd. or Garuda International Co., Ltd." Changzhou Niutang Reply Submission at 

117. Changzhou Niutang submits that a certification provision is not necessary, and that their 

products should simply be exempted from any remedial order that might issue. Changzhou 

Niutang Reply Submission at 118-120. Changzhou Niutang further states that U.S. Niutang and 

Garuda should not be subject to any cease and desist orders. Changzhou Niutang Reply 

Submission at 121. JK Sucralose argues that it should not be subject to any cease and desist 

order because it does not use an infringing process and Tate & Lyle has not demonstrated 

significant U.S. inventories. JK Sucralose Reply Submission at 20. Respondents do not appear 

to have briefed the issues of public interest or bonding. 

The lA's Submissions 

The IA submits that a general exclusion order is not appropriate in this investigation, and 

argues that a limited exclusion order and cease and desist orders should be directed to 

respondents found to be in violation and respondents found to be in default. IA Submission at 

27-31. The IA contends that Tate & Lyle has not satisfied the Spray Pumps factors which require 

showing "numerous" foreign manufacturers and widespread infringement, stating that Tate & 

Lyle has not presented any evidence concerning the pendency of foreign infringement suits based 

upon foreign patents which correspond to the domestic patents at issue, or any other evidence 

98 
PUBLIC VERSION 

which demonstrates a history of unauthorized use of the patented invention. IA Submission at 

29. The IA states that Tate & Lyle has shown demand in the U.S. market for the product. IA 

Submission at 29. The IA submits that his recommended remedy of a limited exclusion order is 

not contrary to the public interest, and does not implicate any particular public interest or health 

concerns. IA Submission at 32. The IA recommended bonding at 100% of the entered value if a 

violation is found. IA Submission at 34. 

Discussion 

As discussed above, the' 463 patent was not shown to be infringed on the merits. 

Further, it is invalid and Tate & Lyle was found to have failed to meet the domestic industry 

requirement with respect to that patent. Thus, there is no violation of section 337 and no remedy 

is appropriate even against defaulters. The' 551 patent is not for a process for making sucralose 

within the meaning of section 337(a)(1 )(B)(ii) and thus cannot be the basis of a violation in this 

case. In our view, this situation is similar to that where a patent is found invalid, in which case 

no relief issues, even against defaulters. Thus, relief in this case can only be issued with respect 

to the '969, '709, and '435 patents. As to the '969 patent, CJ America has admitted infringement 

and Shanghai Aurisco and Zhongjin have defaulted. For the '709 and '435 patents, CJ America 

has admitted infringement of the '709 patent; respondents Gremount, Hebei Academe, 

Lianyungang Natiprol, Ruland, and Hebei Research have defaulted with respect to both patents; 

Shanghai Aurisco and Zhongjin have defaulted with respect to the '709 patent; non-participating 

respondents Vivion and Fortune Bridge are subject to adverse inferences with respect to the '709 

and '435 patents under Commission Rule 210.17; and non-participating respondent Nu-Scaan is 

99 
PUBLIC VERSION 

subject to adverse inferences with respect to the '709 patent under Commission Rule 210.17. 

This is essentially a default case with respect to the '969, '709 and '435 patents. A general 

exclusion order can issue in a default case only if the criteria of section 337(g)(2) are met: 

(2) In addition to the authority of the Commission to issue a general exclusion 

from entry of articles when a respondent appears to contest an investigation 

concerning a violation of the provisions of this section, a general exclusion from 

entry of articles, regardless of the source or importer of the articles, may be issued 

if--

(A) no person appears to contest an investigation concerning a violation ofthe 

provisions of this section, 

(B) such a violation is establIshed by substantial, reliable, and probative evidence, 

and 

(C) the requirements of subsection (d)(2) of this section are met. 

19 U.S.C. § 1337(g)(2). Thus, a general exclusion order in a default case can issue only if there 

is substantial, reliable, and probative evidence of infringement and violation. See, e.g., Certain 

Sildenafil or any Pharmaceutically Acceptable Salt Thereof, such as Sildenafil Citrate, and 

Products Containing Same, Inv. No. 337-TA-489, Comm'n Op. at 5.42 Establishment ofa 

violation by substantial, reliable, and probative evidence is required in any case in order to obtain 

a general exclusion order. This criterion is not met here. We therefore detennine that the 

42 In addition, issuance of a general exclusion order under section 337(g) also requires 

that the criteria for a general exclusion order under section 337 (d) are met: 

(d)(2) The authority of the Commission to order an exclusion from entry of 

articles shall be limited to persons detennined by the Commission to be violating 

this section unless the Commission detennines that--

(A) a general exclusion from entry of articles is necessary to prevent 

circumvention of an exclusion order limited to products of named persons; or 

(B) there is a pattern of violation of this section and it is difficult to identify the 

source of infringing products. 

19 U.S.C. § 1337(d)(2). 

100 
PUBLIC VERSION 

appropriate fonn of relief in this investigation is a limited exclusion order directed to the 

respondents listed above, with the caveat that the order not apply to sucralose supplied to these 

respondents by the manufacturing respondents who were found to either not infringe or against 

whom infringement allegations were withdrawn as to the asselied patents. A certification 

provision is appropriate in this case. The respondents against whom a cease and desist order was 

sought were not found to infringe the '969, '709, and '435 patents and were not found in default. 

Before issuing an order, the Commission also considers the "public health and welfare, 

competitive conditions in the United States economy, the production of like or directly 

competitive articles in the United States, and United States consumers." 19 U.S.C. § 1337(g)(I). 

No party argues that the public interest would preclude issuance of a remedy here, and there is no 

evidence indicating any such public interest concerning the imported product. 

As to bonding, during the 60-day period of Presidential review for exclusion orders, 

respondents are "entitled to entry under bond prescribed by the Secretary in an amount 

detennined by the Commission to be sufficient to protect the complainant from any injury." 19 

U.S.C. § 1337(j)(3). In view of the lack of adequate pricing data, we agree with the ALJ that 

bonding should be in the amount of 100% of entered value, which is the Commission's practice 

in such circumstances. See, e.g., Certain Flash Memory Circuits and Products Containing Same, 

Inv. No. 337-TA-382, USITC Pub. No. 3046, Commission Op. at 26-27 (July 1997). 

101 
PUBLIC VERSION 

By order of the Commission. 

Issued 'I j .11/ 0 9 

102 
Certificate of Service - Page 1 

CERTAIN SUCRALOSE, SWEETENERS CONTAINING 

SUCRALOSE, AND COMPONENTS THEREOF 

337-TA-604 

CERTIFICATE OF SERVICE 

I, Marilyn R. Abbott, hereby certify that the attached COMMISSION OPINION 

Investigative Attorney, Christopher G. Paulraj, Esq., and the following parties as 

indicated, on April 29, 2009 

Ma . yn R Abbott, Secretary 

U.S. International Trade Commission 

500 E Street, SW 

Washington, DC 20436 

ON BEHALF OF COMPLAINANTS TATE & LYLE 

TECHNOLOGY LIMITED AND TATE & LYLE 

SUCRALOSE, INC.: 

Thomas L. Jarvis, Esq. 

FINNEGAN HENDERSON 

FARABOW GARRETT & DUNNER 

901 New York, Avenue, NW 

Washington, DC 20001-4413 

P-202-408-4000 

F-202-408-4400 

ON BEHALF OF RESPONDENTS CHANGZHOU 

NIUTANG CHEMICAL PLANT CO., LTD., 

GUANGDONG FOOD INDUSTRY INSTITUTE, 

GARUDA INTERNATIONAL CO., LTD., 

L & P FOOD INGREDIENT CO., LTD. 

AND U.S. NIUTANG CHEMICAL, INC. 

Gary M. Hnath, Esq. 

BINGHAM MCCUTCHEN LLP 

2020 K Street, NW 

Washington, DC 20006 

P-202-373-6000 

F-202-373-6001 

( ) Via Hand Delivery 

oy Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: ___ _ 

( ) Via Hand Delivery 

()() Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: __ _ 
Certificate of Service - Page 2 

ON BEHALF OF RESPONDENTS HEBEl SUKERUI 

SCIENCE AND TECHNOLOGY CO., LTD. , BEIJING 

FORBEST CHEMICAL CO., LTD. , BEIJING 

FORBEST TRADE CO., LTD., AND FORBEST 

INTERNATIONAL USA, LLC: 

Marcia H. Sundeen, Esq. 

KENYON & KENYON LLP 

1500 K Street, NW 

Suite 700 

Washington, DC 20005 

P-202-220-4200 

F-202-220-4201 

ON BEHALF OF RESPONDENTS MTC 

INDUSTRIES, INC. AND NANTONG MOLECULAR 

TECHNOLOGY CO., LTD.: 

Kevin Tung, Esq. 

KEVIN KERVENG TUNG, PC 

33-70 Prince Street, CA-30 

Flushing, NY 11354 

P-718-939-4633 

F-718-939-4468 

ON BEHALF OF RESPONDENTS HEARTLAND 

PACKAGING CORPORATION AND HEARTLAND 

SWEETNER LLC: 

William L. O'Connor, Esq. 

DANN PECAR NEWMAN & KLEIMAN 

One America Tower 

One American Square, Suite 2300 

Indianapolis, IN 46282 

P-317-632-3232 

F-317-632-2962 

( ) Via Hand Delivery 

(X) Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: __ _ 

( ) Via Hand Delivery 

0Q Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: _' _~_ 

( ) Via Hand Delivery 

(X) Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: ___ _ 
Certificate of Service - Page 3 

ON BEHALF OF RESPONDENT JK SUCRALOSE, 

INCOROPRATED: 

Craig S. Smith, Esq. 

FISH & RICHARDSON PC 

225 Franklin Street 

Boston, MA 02110 

P-617-542-7070 

F-617-542-8906 

RESPONDENTS: 

AIDP, Inc. 

17920 East Ajax Circle 

City ofIndustry, California 91748 

P-626-964-6910 

F-626-964-6739 

CJ America, Inc. 

3470 Wilshire Blvd,. Suite 930 

Los Angeles, California 90010 

P-213-427 -5566 

F-213-380-5433 

Fortune Bridge Co., Inc. 

137 Meacham Ave 

Elmont, New York 11003 

Nu-Scaan Nutraceuticals, Ltd. 

Waterside House, Waterside 

Macclesfield, Cheshire, SK11 7HG 

United Kingdom 

P-44-1625574430 

F-44-1625-57613 

Vivion, Inc. 

929 Bransten Road 

San Carolos, California 94070 

P-650-595-3600 

F-650-595-2094 

( ) Via Hand Delivery 

(X) Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: ___ _ 

( ) Via Hand Delivery 

GO Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: ___ _ 

( ) Via Hand Delivery 

eX) Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: ___ _ 

( ) Via Hand Delivery 

(X) Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: ___ _ 

( ) Via Hand Delivery 

(~) Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: __ _ 

( ) Via Hand Delivery 

(y) Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: ___ _ 
Certificate of Service - Page 4 

Heather Hall 

LEXIS-NEXIS 

9443 Springboro Pike 

Dayton, OH 45342 

Kenneth Clair 

West Group 

901 Fifteenth Street, NW 

Suite 230 

Washington, DC 20005 

( ) Via Hand Delivery 

C9 Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: ___ _ 

( ) Via Hand Delivery 

(X) Via Overnight Mail 

( ) Via First Class Mail 

( ) Other: ___ _ 

UNITED STATES INTERNATIONAL TRADE COMMISSION 

W .. 'IIo" •• , D.C 

I. Ibo 101." ... of 

CERTAIN SUCRALOSE, SWEETENERS 

CONTAINING SUCRALOSE, ~D 

RELATED INTERM£DIATE 

COMI'OUNDS TIIER£OF 

NOTICE OF COMMISSION ISSUANCE OF A LIMITED r.xCLUSION ORDER: 

n: ItI>IIN A TlON OF INVJ;;STIGA TlON 

AGENCY: U.S. lotomationoi Tndo Coounisaioo. 

AenON: Notice. 

SlIMMA)l.Y: Notico I\<rdI~ gi .... ilia Ibo U.S. Irmnational T ..... Commi_ Iw issued. 

limitod .,,,Juoj,,,, onIa ' !I' i"" <Ieven .......... odc: . .. in iho . b< .... ~onod invesliptioo und ... 

section B1.ftho Tariff Act of 1930 •• anaodc:d. 19 U.S.C. f Ill1 r_ll1j, ODd bas 

1emIiJw<d .... invuiption. 

FOR F1JRTHER INFOR11UTlON COST ACT: 10m'" A. Worm. om.,. ofiho Geo>etll 

C_I. U.S. IntmIahonal T!Ode eom"';soioo, 500 E SITOOt. S.W .• W .. h,ngIOn. D.C. :!(loll", 

iCkphono (2(12) 20!1·3065. Copi<I ofOOll-<>Qlifidmtial dooum<nts fila! in .......... Iion widt this 

",>esripion ..... will be "";!Mole fur inspec.iot. dwiD;l offici. 1 bu,ineoo boon (1:41 '.m. to 

1:11 p .... ) in tho O/li"" of\he Secmary. U.S. IrxemaIiotIoI Tndo Commission, 500 E SITOOt. 

SW .• aohi n~, D.C. 20436, telq>boo< (200) 2<lS·lOOO. General inbrnalion ~O>: (I,. 

C_on"..y lloo be ...... ·inal by or", .. ;., i .. 1niCmet ........ Wm;/!\o,ww "';k" WI Tho: 

l"'.1i< _ for this inveot;iOtiorl""'r be ...... «1 on iho Conlmi .... •• <loc:troo.i. oIo<k<i (EDIS) 

.. """ ,""W' !!1i" ggy. H<Orioa-iInpaim petiMd ............. ~ information on this mati .. c., 

be oI><aiDed by<OIliai:Iini \he Cormnission', TOD Lemiinal <JII (2(12) 205·1810. 

SUPPLUtll.NTARY lNFOR.\lATION: Tho Coouni...". inotiM<>l <hi. invesIill:O'ion on May 

10.2007, bued iipO!l.oomplaiDt filod "" belWf ofT .. .t. Lyle Tocbmloijl Lid. ofl.ondoo, 

Unitod KiJ>illonc ODd Tote.t. Lyle $ucroko ... Ii>c. of Do<;arur, Ill;"";, (coll<ctively, -rOle &: 

Lyle,. The oompWnl ollejl<d ....,_ of =<ion 1)7(0)(I)(B) ofiho Toriff Aet.r 1910 (19 

S.C.~JJ7) in iho ;'''po.Uhon into , .. U,,'l«l Sial.., 1tu: .. 1e for ',....,.,.wion. ODd tho oak 

"ithiu Unilcd SIal", oller imp<>rUlli"" of _. , w<><l<Di:t> ...... Iliinin¥ __ . .... 
related intermediate compounds thereof by reason of infringement of various claims of United 

States Patent Nos. 4,980,463 ("the '463 patent"); 5,470,969 ("the '969 patent"); 5,034,551 ("the 

'551 patent"); 5,498,709 ("the '709 patent"); and 7,049,435 ("the '435 patent"). The notice of 

investigation named twenty-five respondents. 

On August 15,2007, the Commission issued notice of its determination not to review an 

ID allowing JK Sucralose, Inc. ("JK Sucralose") to intervene as a respondent in the investigation. 

On August 30, 2007, the Commission issued notice of its determination not to review an ID 

terminating the investigation with respect to ProFood International Inc. on the basis of a consent 

order. On October 3, 2007, the Commission issued notice of its determination not to review an 

ID adding Heartland Sweeteners, LLC ("Heartland Sweeteners") as a respondent in the 

investigation. The respondents who remain parties to the investigation are therefore: Changzhou 

Niutang Chemical Plant Co. ("Changzhou Niutang Chemical"); Guangdong Food Industry 

Institute and L&P Food Ingredient Co., Ltd. ("GDFII"); Hebei Sukerui Science and Technology 

Co., Ltd. ("Hebei Sukerui Science"); JK Sucralose; Beijing Forbest Chemical Co., Ltd.; Beijing 

Forbest Trade Co., Ltd.; Forbest Internationill USA, LLC; U.S. Niutang Chemical, Inc.; Garuda 

International, Inc.; Heartland Packaging Corporation; Heartland Sweeteners; MTC Industries, 

Inc.; Nantong Molecular Technology Co., Ltd.; AIDP, Inc.; Fortune Bridge Co., Inc. ("Fortune 

Bridge"); Nu-Scaan Nutraceuticals ("Nu-Scaan"); CJ America, Inc. ("CJ America"); Vivion, Inc. 

("Vivion"); Gremount International Co., Ltd. ("Gremount"); Hebei Province Chemical Industry 

Academe ("Hebei Academe"); Hebei Research Institute of Chemical Industry ("Hebei 

Research"); Lianyungang Natiprol (Int'l) Co., Ltd. ("Lianyungang Natiprol"); Ruland Chemistry 

Co., Ltd. ("Ruland"); Shanghai Aurisco Trading Co., Ltd. ("Shanghai Aurisco"); and Zhongjin 

Pharmaceutical (Hong Kong) Co. ("Zhongjin"). Some of these respondents have been found in 

default. : 

On September 22, 2008, the presiding administrative law judge issued a final initial 

determination ("final ID") finding no violation of section 337 (with the exception of certain nonparticipating and defaulted respondents). On October 6,2008, Tate & Lyle, four sets of 

respondents, and the Commission investigative attorney ("IA") each filed petitions for review. 

On November 21, 2008, the Commission issued notice of its determination to review the final ID 

in its entirety and requested briefing on the issues on review and on remedy, the public interest, 

and bonding, including responses to certain questions. 

On review, the Commission found no violation on the merits with respect to the '463, 

'969, and '551 patents, for the reasons set forth in the Commission opinion. As to the '969 

patent, respondents Shanghai Aurisco and Zhongjin were previously found to have defaulted. 

Additionally, the Commission found CJ America, Inc. to have admitted infringement and to have 

agreed to the entry of an exclusion order as to the '969 patent. As to the '709 and '435 patents, 

respondents Gremount, Hebei Academe, Lianyungang Natiprol, Ruland, and Hebei Research 

were previously found to have defaulted with respect to the '709 and '435 patents, and Shanghai 

Aurisco and Zhongjin were previously found to have defaulted with respect to the '709 patent. 

Additionally, the Commission found CJ America to have admitted infringement and to have 

agreed to the entry of a remedial order as to the '709 patent, that non-participating respondents 

2 
Vivion and Fortune Bridge were subject to adverse inferences with respect to the '709 and '435 

patents under Commission Rule 210.17, and that non-participating respondent Nu-Scaan was 

subject to adverse inferences with respect to the '709 patent under Commission Rule 210.17. 

The Commission has determined that the appropriate form of relief in this investigation is 

a limited exclusion order prohibiting the unlicensed entry of certain sucralose and sweeteners 

containing sucralose by reason of infringement of one or more of claims 20, 21-26, 28, and 29 of 

the '969 patent by Shanghai Aurisco, Zhongjin, and CJ America; of claims 8, 9, and 13 ofthe 

'709 patent by Gremount, Hebei Academe, Lianyungang Natiprol, Hebei Research, Ruland, 

Shanghai Aurisco, Zhongjin, CJ America, Nu-Scaan, Vivion, and Fortune Bridge; and of claim 1 

of the '435 patent by Gremount, Hebei Academe, Lianyungang Natiprol, Ruland, Hebei 

Research, Vivion, and Fortune Bridge, with the caveat that the order not apply to sucralose 

supplied to these respondents by the manufacturing respondents who were found to either not 

infringe or against whom infringement allegations were withdrawn as to the patents asserted in 

the investigation. These manufacturing respondents are Changzhou Niutang Chemical, GDFII, 

Hebei Sukerui Science, and JK Sucralose. The Commission further determined that the public 

interest factors enumerated in section 337(d)(1),(g)(1), 19 U.S.c. § 1337(d)(1),(g)(1), do not 

preclude issuance of the limited exclusion order. Finally, the Commission determined that the 

bond under the limited exclusion order during the Presidential review period shall be in the 

amount of 100 percent of the entered value of the imported articles. The Commission's orders 

were delivered to the President and the United States Trade Representative on the day of their 

issuance. 

The Commission has therefore terminated this investigation. The authority for the 

Commission's determination is contained in section 337 ofthe Tariff Act of 1930, as amended 

(19 U.S.c. § 1337), and sections 210.16(c) and 210.41-.42, 210.50 of the Commission's Rules of 

Practice and Procedure (19 CFR § 210.16(c) and § 210.41-.42, 210.50). 

By order of the Commission. 

~T~ Maril . Abbott 

Secretary to the Commission 

Issued: April 6, 2009 

3 
UNITED STATES INTERNATIONAL TRADE COMMISSION 

Washington, D.C. 

In the Matter of 

CERTAIN SUCRALOSE, SWEETENERS 

CONTAINING SUCRALOSE, AND 

RELATED INTERMEDIATE 

COMPOUNDS THEREOF 

LIMITED EXCLUSION ORDER 

Inv. No. 337-TA-604 

Respondents Shanghai Aurisco Trading Co., Ltd. ("Shanghai Aurisco") 

and Zhongjin Pharmaceutical (Hong Kong) Co. ("Zhongjin") were previously 

found to have defaulted with respect to U.S. Patent No. 5,470,969 ("the '969 

patent"). Additionally, the Commission found CJ America, Inc. ("CJ America") 

to have admitted infringement and to have agreed to the entry of an exclusion 

order as to the '969 patent. Respondents Gremount International Co., Ltd. 

("Gremount"), Hebei Province Chemical Industry Academe ("Hebei Academe"), 

Hebei Research Institute of Chemical Industry ("Hebei Research"), Lianyungang 

Natiprol (Int'l) Co., Ltd. ("Lianyungang Natiprol"), and Ruland Chemistry Co., 

Ltd. ("Ruland") were previously found to have defaulted with respect to U.S. 

Patent No. 5,498,'709 ("the '709 patent") and U.S. Patent 7,049,435 ("the '435 

patent"), and Shanghai Aurisco and Zhongjin were previously found to have 

defaulted with respect to the '709 patent. Additionally, the Commission found CJ 

America to have admitted infringement and to have agreed to the entry of an 
2 

exclusion order as to the '709 patent, that non-participating respondents Vivion, 

Inc. ("Vivion") and Fortune Bridge Co., Inc. ("Fortune Bridge") were subject to 

adverse inferences with respect to the '709 and '435 patents under Commission 

Rule 210.17, and that non-participating respondent Nu-Scaan Nutraceuticals 

("Nu-Scaan") was subject to adverse inferences with respect to the '709 patent 

under Commission Rule 210.17. 

The Commission has determined that the appropriate form of relief in this 

investigation is a limited exclusion order prohibiting the unlicensed entry of 

certain sucralose and sweeteners containing sucralose by reason of infringement 

of one or more of claims 20, 21-26, 28, and 29 of the '969 by Shanghai Aurisco, 

Zhongjin, and CJ America; of claims 8, 9, and 13 ofthe '709 patent by Gremount, 

Hebei Academe, Lianyungang Natiprol, Hebei Research, Ruland, Shanghai 

Aurisco, Zhongjin, CJ America, Nu-Scaan, Vivion, and Fortune Bridge; and of 

claim 1 of the '435 patent by Gremount, Hebei Academe, Lianyungang Natiprol, 

Ruland, Hebei Research, Vivion, and Fortune Bridge, with the caveat that the 

order not apply to sucralose supplied to these respondents by the manufacturing 

respondents who were found to either not infringe or against whom infringement 

allegations were withdrawn as to the patents asserted in the investigation. These 

manufacturing respondents are Changzhou Niutang Chemical Plant Co. 

("Changzhou Niutang Chemical"), Guangdong Food Industry Institute and L&P 

Food Ingredient Co., Ltd. ("GDFII"), Hebei Sukerui Science and Technology Co., 
3 

Ltd. ("Hebei Sukerui Science"), and JK Sucralose, Inc. ("JK Sucralose"). 

The Commission has further detennined that the public interest factors 

enumerated in 19 U.S.c. § 1337(d)(1),(g)(1) do not preclude issuance ofthe 

limited exclusion order, and that the bond during the Presidential review period 

shall be in the amount of 100% of entered value of the sucralose and sweeteners 

containing sucralose that are subject to this Order. 

Accordingly, the Commission hereby ORDERS that: 

1. The Commission has detennined that sucralose and sweeteners 

containing sucralose of or obtained from Shanghai Aurisco, Zhongjin, CJ 

America, or any of their affiliated companies, parents, subsidiaries, or other 

related business entities, or any of their successors or assigns, that is made by a 

process covered by one or more of claims 20, 21-26, 28, and 29 of U.S. Patent No. 

5,470,969 shall be excluded from entry for consumption into the United States, 

entry for consumption from a foreign trade zone, or withdrawal from a warehouse 

for consumption, for the remaining tenn of the patent, except under license of the 

patent owner or as provided by law, with the caveat that this exclusion shall not 

apply to sucralose supplied to these respondents by Changzhou Niutang Chemical, 

GDFII, Hebei Sukerui Science, and JK Sucralose. 

2. The Commission has detennined that sucralose and sweeteners 

containing sucralose of or obtained from Gremount, Hebei Academe, 

Lianyungang Natiprol, Hebei Research, Ruland, Shanghai Aurisco, Zhongjin, CJ 
4 

America, Nu-Scaan, Vivion, and Fortune Bridge, or any of their affiliated 

companies, parents, subsidiaries, or other related business entities, or any oftheir 

successors or assigns, that is made by a process covered by one or more of claims 

8, 9, and 13 of U.S. Patent No. 5,498,709 shall be excluded from entry for 

consumption into the United States, entry for consumption from a foreign trade 

zone, or withdrawal from a warehouse for consumption, for the remaining term of 

the patent, except under license of the patent owner or as provided by law, with 

the caveat that this exclusion shall not apply to sucralose supplied to these 

respondents by Changzhou Niutang Chemical, GDFII, Hebei Sukerui Science, and 

JK Sucralose. 

3. The Commission has determined that sucralose and sweeteners 

containing sucralose of or obtained from Gremount, Hebei Academe, 

Lianyungang Natiprol, Ruland, Hebei Research, Vivion, and Fortune Bridge, or 

any of their affiliated companies, parents, subsidiaries, or other related business 

entities, or any of their successors or assigns, that is made by a process covered by 

claim 1 of U.S. Patent 7,049,435 shall be excluded from entry for consumption 

into the United States, entry for consumption from a foreign trade zone, or 

withdrawal from a warehouse for consumption, for the remaining term of the 

patent, except under license ofthe patent owner or as provided by law, with the 

caveat that this exclusion shall not apply to sucralose supplied to these 

respondents by Changzhou Niutang Chemical, GDFII, Hebei Sukerui Science, and 
5 

JK Sucralose. 

4. Sucralose and sweeteners containing sucralose that are excluded by 

paragraphs 1-3 ofthis Order are entitled to entry for consumption into the United 

States, entry for consumption from a foreign trade zone, or withdrawal from a 

warehouse for consumption, under bond in the amount of 100% of entered value 

pursuant to subsection (j) of section 337 of the Tariff Act of 1930, as amended, 19 

U.S.c. § 1337(j), and the Presidential Memorandum for the United States Trade 

Representative of July 21, 2005 (70 Fed. Reg. 43251), from the day after this 

Order is received by the United States Trade Representative until such time as the 

United States Trade Representative notifies the Commission that this action is 

approved or disapproved but, in any event, not later than 60 days after the date of 

receipt of this action. 

5. At the discretion of U.S. Customs and Border Protection ("CBP") 

and pursuant to procedures it establishes, persons seeking to import sucralose and 

sweeteners containing sucralose containing same that are potentially subject to 

this Order may be required to certify that they are familiar with the terms of this 

Order, that they have made appropriate inquiry, and thereupon state that, to the 

best of their knowledge and belief, the products being imported are not excluded 

from entry under paragraphs 1 through 9 of this Order. At its discretion, Customs 

may require persons who have provided the certification described in this 

paragraph to furnish such records or analyses as are necessary to substantiate the 
certification. 

6. In accordance with 19 U.S.C. § 1337(1), the provisions ofthis 

Order shall not apply to sucralose and sweeteners containing sucralose that are 

imported by and for the use ofthe United States, or imported for, and to be used 

for, the United States with the authorization or consent of the Government. 

7. The Commission may modify this Order in accordance with the 

procedures described in section 210.76 ofthe Commission's Rules of Practice and 

Procedure, 19 C.F.R. § 210.76. 

8. The Secretary shall serve copies ofthis Order upon each party of 

record in this investigation and upon the Department of Health and Human 

Services, the Department of Justice, the Federal Trade Commission, and the U.S. 

Bureau of Customs and Border Protection. 

9. Notice ofthis Order shall be published in the Federal Register. 

By Order of the Commission. 

ldc~~~ M~:bott Secretary 

Issued: April 6, 2009 
Certificate of Service - Page 1 

CERTAIN SUCRALOSE, SWEETENERS CONTAINING 

SUCRALOSE, AND COMPONENTS THEREOF 

337-TA-604 

CERTIFICATE OF SERVICE 

I, Marilyn R. Abbott, hereby certify that the attached NOTICE OF COMMISSION 

ISSUANCE OF A LIMITED EXCLUSION ORDER; TERMINATION OF 

INVESTIGATION Investigative Attorney, Christopher G. Paulraj, Esq., and the 

following parties as indicated, on April 7th~2 ....... QQLJ;9 __ -

~ott1:Cr~ U.S. International Trade Commission 

500 E Street, SW 

Washington, DC 20436 

ON BEHALF OF COMPLAINANTS TATE & LYLE 

TECHNOLOGY LIMITED AND TATE & LYLE 

SUCRALOSE, INC.: 

Thomas L. Jarvis, Esq. 

FINNEGAN HENDERSON 

FARABOW GARRETT & DUNNER 

901 New York, Avenue, NW 

Washington, DC 20001-4413 

P-202-408-4000 

F-202-408-4400 

ON BEHALF OF RESPONDENTS CHANGZHOU 

NIUTANG CHEMICAL PLANT CO., LTD., 

GUANGDONG FOOD INDUSTRY INSTITUTE, 

GARUDA INTERNATIONAL CO., LTD., 

L & P FOOD INGREDIENT CO., LTD. 

AND U.S. NIUTANG CHEMICAL, INC. 

Gary M. Hnath, Esq. 

BINGHAM MCCUTCHEN LLP 

2020 K Street, NW 

Washington, DC 20006 

P-202-373-6000 

F-202-373-6001 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

00 Via First Class Mail 

( ) Other: ___ _ 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

Qe) Via First Class Mail 

( ) Other: __ _ 
Certificate of Service - Page 2 

ON BEHALF OF RESPONDENTS HEBEl SUKERUI 

SCIENCE AND TECHNOLOGY CO., LTD. , BEIJING 

FORBEST CHEMICAL CO., LTD. , BEIJING 

FORBEST TRADE CO., LTD., AND FORBEST 

INTERNATIONAL USA, LLC: 

Marcia H. Sundeen, Esq. 

KENYON & KENYON LLP 

1500 K Street, NW 

Suite 700 

Washington, DC 20005 

P-202-220-4200 

F-202-220-4201 

ON BEHALF OF RESPONDENTS MTC 

INDUSTRIES, INC. AND NANTONG MOLECULAR 

TECHNOLOGY CO., LTD.: 

Kevin Tung, Esq. 

KEVIN KERVENG TUNG, PC 

33-70 Prince Street, CA-30 

Flushing, NY 11354 

P-718-939-4633 

F -718-93 9-4468 

ON BEHALF OF RESPONDENTS HEARTLAND 

PACKAGING CORPORATION AND HEARTLAND 

SWEETNER LLC: 

William L. O'Connor, Esq. 

DANN PECAR NEWMAN & KLEIMAN 

One America Tower 

One American Square, Suite 2300 

Indianapolis, IN 46282 

P-317 -632-3232 

F-317-632-2962 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

00 Via First Class Mail 

( ) Other: ___ _ 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

00 Via First Class Mail 

( ) Other: ___ _ 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

W Via First Class Mail 

( ) Other: __ _ 
Certificate of Service - Page 3 

ON BEHALF OF RESPONDENT JK SUCRALOSE, 

INCOROPRATED: 

Craig S. Smith, Esq. 

FISH & RICHARDSON PC 

225 Franklin Street 

Boston, MA 02110 

P-617 -542-7070 

F-617-542-8906 

RESPONDENTS: 

AIDP, Inc. 

17920 East Ajax Circle 

City oflndustry, California 91748 

P-626-964-6910 

F-626-964-6739 

CJ America, Inc. 

3470 Wilshire Blvd,. Suite 930 

Los Angeles, California 90010 

P-213-427 -5566 

F-213-380-5433 

Fortune Bridge Co., Inc. 

137 Meacham Ave 

Elmont, New York 11003 

Nu-Scaan Nutraceuticals, Ltd. 

Waterside House, Waterside 

Macclesfield, Cheshire, SKII 7HG 

United Kingdom 

P-44-1625574430 

F-44-1625-57613 

Vivion, Inc. 

929 Bransten Road 

San Carolos, California 94070 

P-650-595-3600 

F -650-595-2094 

GOVERNMENT AGENCIES: 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

(I-.) Via First Class Mail 

( ) Other: __ _ 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

W Via First Class Mail 

( ) Other: ___ _ 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

(x) Via First Class Mail 

( ) Other: ___ _ 

( ) Via Hand Delivery 

( ) Via Overnight Mail ex) Via First Class Mail 

( ) Other: ___ _ 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

(:x) Via First Class Mail 

( ) Other: ___ _ 

( ) Via Hand Delivery 

( ) Via Overnight Mail 

(A. Via First Class Mail 

( ) Other: ___ _ 
Certificate of Service - Page 4 

Edward T. Hand, Chief 

Foreign Commerce Section 

Antitrust Division 

U.S. Department of Justice 

450 5th Street NW - Room 11000 

Washington, DC 20530 

P-202-514-2464 

George F. McCray 

U.S. Bureau of Customs and Border Protection 

Intellectual Property Rights Branch 

Mint Annex Building 

799 9th Street, NW 

Washington, DC 20001 

202-325-0082 

Elizabeth Kraus, Deputy Director 

International Antitrust, Office of 

International Affairs 

Federal Trade Commission 

600 Pennsylvania Avenue, Room 498 

Washington, DC 20580 

P-202-326-2649 

Richard Lambert, Esq. 

Office of Technology Development Services 

Dept. of Health & Human Services 

National Institutes of Health 

6610 Rockledge Drive - Room 2800 

MSC 6606 

Bethesda, MD 20892 

P-301-496-2644 

( ) Via Hand Delivery 

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tV Via First Class Mail 

( ) Other: ___ _ 

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(x:) Via First Class Mail 

( ) Other: ___ _ 

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(.() Via First Class Mail 

( ) Other: ___ _ 

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(~ Via First Class Mail 

( ) Other: ___ _