ITC Suspends Enforcement Of Remedial Orders Pending Appeal Of IPR Final Written Decision
On September 8, 2020, the United States International Trade Commission (“ITC”) issued an opinion suspending enforcement of remedial orders pending appeal of the Patent Trial and Appeals Board’s (“PTAB”) final written decision (“FWD”) of unpatentability in a parallel inter partes review (“IPR”) proceeding. Certain Unmanned Aerial Vehicles and Components Thereof, Inv. No. 337-TA-1133, Comm’n Op. (Sept. 8, 2020); Certain Unmanned Aerial Vehicles and Components Thereof, Inv. No. 337-TA-1133, Final Determination (Aug. 20, 2020). In its opinion, the ITC relied on its broad discretion in selecting a remedy, its recognition of the PTAB’s leading role in assessing the validity of patent claims, and Congress’s goal for IPRs to be a substitute for litigation on patent validity issues.
ITC ALJ Finds Inequitable Conduct In Patent Office Renders Patent Unenforceable
On April 7, 2020, the United States International Trade Commission (ITC) published the public version of an earlier final initial determination by an ITC administrative law judge (ALJ) finding that the applicants of the asserted patent, directed at harness-type child carriers, intentionally made false statements to the United States Patent Office (PTO) during examination. In re Certain Child Carriers and Components Thereof, Inv. No. 337-TA-1154. The ALJ ruled that this intentional misconduct was egregious misconduct rendering the patent unenforceable.
Federal Circuit Clarifies Test For Claim Scope Disavowal
On Thursday, December 12, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing a final determination and vacating exclusion orders from the International Trade Commission (ITC) against appellant garage door opener importers. Techtronic Indus. Co. v. Int’l Trade Comm’n, —F.3d— (Fed. Cir. Dec. 12, 2019). The CAFC held that the ITC erred in its claim construction, and confirmed that, where a patentee consistently describes an invention as having a particular feature, the patentee’s claims must be construed as including that feature.
ITC Affirms ALJ’s Determination That Patent Claims To An Automated Paving Machine Are Directed To Unpatentable Subject Matter
On Monday, July 15, 2019, the International Trade Commission (ITC) issued the public version of an opinion affirming in part an initial determination issued by Administrative Law Judge (ALJ) Dee Lord. In re Certain Road Construction Machines and Components Thereof, Investigation No. 337-TA-1088,—Fed. Reg.—(July 15, 2019). The ITC affirmed the ALJ’s determination that asserted patent claims directed to automated paving machines were directed to patent-ineligible subject matter and therefore invalid.
Federal Circuit Clarifies Secondary Meaning And Infringement Tests For Trade Dress
On October 30, 2018, the Court of Appeals for the Federal Circuit issued an opinion vacating an earlier decision from the International Trade Commission (“ITC”) regarding a shoe company’s (the “Company”) trademark in its All Star shoes trade dress. Converse, Inc. v. Int’l Trade Comm’n, —F.3d—, (Fed. Cir. October 20, 2018). The Court held that the presumption of secondary meaning that applies to registered marks does not apply before the registration. The Court also clarified the considerations to be assessed in determining whether a mark has acquired secondary meaning.
ITC Administrative Law Judge Rules That Staff Participation Can Avoid Estoppel Effect Of Respondent’s Earlier IPR
On Tuesday, October 2, 2018, the International Trade Commission (ITC) issued the public version of an initial determination issued by Administrative Law Judge (ALJ) Clark S. Cheney. In re Certain Magnetic Tape Cartridges and Components Thereof, Investigation No. 337-TA-1058,—Fed. Reg.— (October 2, 2018). The ALJ applied prior art to find asserted patent claims invalid, even though the respondents may have been estopped by statute from relying on that prior art.
ITC ALJ Permits Evidence Of Post-Complaint Domestic Industry
On April 5, 2018, the United States International Trade Commission (ITC) published the public version of an earlier order by an ITC administrative law judge (ALJ) denying a motion in limine
seeking to exclude evidence of the development of a domestic industry after the filing of the complaint. In re Certain Digital Cameras, Software, and Components Thereof
, Inv. No. 337-TA-1059, Order No. 52. The ALJ ruled that, while the filing date “may be the bench mark,” there is “no rigid rule that the Commission must consider only at [sic
] the investments in a domestic industry at the time of the filing of the complaint.”