24 Nov, 2008 - The long-running trade dispute in which Tate & Lyle has alleged infringement of several of its sucralose patents has taken another twist after the US International Trade Commission (ITC) announced it is to review an earlier decision that no breach had taken place.
The ITC said it would re-look at its 22 September judgement effectively rejecting a complaint filed by Tate & Lyle in May 2007 alleging violations of section 337of the Tariff Act of 1930 involving the importation and sale in the US of “sucralose, sweeteners containing sucralose, and related intermediate compounds”.
However, following Tate & Lyle’s appeal submitted on 6 October, 2008, the ITC said: “Having examined the final Initial Determination, 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.”
Sucralose, the generic version of the sweetener Splenda, is a major product for Tate & Lyle, accounting for one fifth of its operating profit in the year ending 30 March 2008. The sweetener generated GBP 148 million of sales for Tate & Lyle and an operating profit of 66 million during that same period.
Tate & Lyle has welcomed the review. A company spokesman told FLEXNEWS: “We are pleased to note the ITC’s decision to review the administrative law judge’s final Initial Determination. This is part of an on-going process and we cannot comment any further.”
In a detailed statement the ITC listed the terms of its review: “The Commission is particularly interested in responses to the following questions:
(1) Regarding the issue of whether 19 U.S.C. § 1337(a)(1)(B)(ii) extends to the ‘551, ‘969, and ‘463 patents: Is this issue a matter of jurisdiction 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., 71 F.2d 447, 22 CCPA 166 (1934) suggest that § 1337(a)(1)(B)(ii) has the same scope as 35 U.S.C. § 271(g)?
(2) Would a sucralose product containing the tin catalyst that is addressed by the process claimed in the '551 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 ‘551 and ‘969 patents?
(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?