In an earlier post, we summarized ALJ McNamara’s recent Summary Determination in Certain UV Curable Coatings For Optical Fibers, Coated Optical Fibers, And Products Containing Same, Inv. No. 337-TA-1031, Order No. 33 (July 6, 2017).  The ALJ invalidated claims 16-18, 21, and 30 of U.S. Patent No. 7,706,659, because the recited term “molecular weight” was indefinite.

On August 7, 2017, the Commission reversed and vacated the determination.  An opinion is forthcoming.  We will provide an update when the Commission issues its public opinion.

Takeaway

The Commission’s decision to overturn summary determination highlights that such victories may be short lived.  Respondents who obtain summary determination on some but not all of the asserted claims should continue to seek discovery or risk being precluded from doing so on remand.