BriarTek IP, Inc. Petitions for Writ of Certiorari − On February 10, 2016, BriarTek IP, Inc. filed a petition for writ of certiorari to review a judgment of the United States Court of Appeals for the Federal Circuit that affirmed a district court declaratory judgment ruling invalidating certain claims of its patent.  The case is BriarTek IP, Inc. v. DeLorme Publishing Co., Case No. 15-1025.  As discussed in the February 3, 2016 ITC Section 337 Update, in 2012, BriarTek filed a complaint with the International Trade Commission (“Commission”) alleging that DeLorme Publishing Company and DeLorme inReach LLC (“DeLorme”) imported “devices, systems, and components” that infringed its patent.  DeLorme proposed to terminate the investigation through a consent order because it was moving the manufacturing of its alleged infringing inReach device to Maine, and the Consent Order was approved over the objection of BriarTek.  After approval of the Order, BriarTek filed a complaint alleging that DeLorme had violated the Order, and shortly after the Commission began the enforcement proceeding, DeLorme filed its declaratory judgment action.

In its petition, BriarTek argues that the district court lacked subject matter jurisdiction because there was no case or controversy for Article III purposes, or “case of actual controversy” for purposes of the Declaratory Judgment Act.  Citing the Supreme Court’s decision in Already, LLC v. Nike, Inc., 133 S. Ct. 721 (2013), it claims that the Consent Order “obviates the dispute that gave rise to the original Commission investigation, and thereby eliminates the investigation or the consent order as the jurisdictional basis for a subsequent, new complaint in federal district court,”  which BriarTek says was an effort to undermine the Commission enforcement action.  BriarTek also argues that Delorme’s federal court complaint also expressly disclaimed any case or controversy, and that because BriarTek was not a party to the Consent Order, any dispute should have been directed at the Commission, not BriarTek.

Trade Facilitation And Trade Enforcement Act Provides Enhanced Import-Related Protection Of Intellectual Property Rights − On February 24, 2016, President Obama signed into law the Trade Facilitation And Trade Enforcement Act.  This comprehensive legislation addresses several key provisions, including enhanced, import-related protections  for copyrights, trademarks, and other intellectual property rights that are enforced by U.S. Customs and Border Protection (“CBP”) or Immigration and Customs Enforcement (“ICE”).  Among other things, the legislation empowers CBP to investigate merchandise suspected of infringing trademarks or copyrights by permitting rights holders to conduct examination and testing of the merchandise.  Importantly, this new level of coordination between CBP and rights holders is only available to trademarks and copyrights that are recorded with CBP.  Border enforcement of patent rights remains a function of the Commission under Section 337.  Other intellectual property measures include a requirement that CBP and ICE assign sufficient personnel with “responsibility for preventing the importation into the United States of merchandise that infringes intellectual property rights.”  ICE is also instructed to create a National Intellectual Property Rights Coordination Center, which must coordinate its efforts with several additional federal agencies and conduct outreach with the private sector.

ACI Holds Annual Conference on ITC Litigation and Enforcement − On February 22-23, the American Conference Institute held its 8th Annual Expert Forum on ITC Litigation & Enforcement in Washington, DC.  The conference was attended by practitioners from around the country, and focused on pressing matters facing Section 337 investigations and litigation today. 

The conference was co-chaired by Sarah Hamblin, a partner at Adduci Mastriani & Schaumberg LLP and President-Elect of the International Trade Commission Trial Lawyers Association, and David Killough, Assistant General Counsel, Patent Litigation, at Microsoft Corporation.  Commissioner Meredith Broadbent delivered the keynote address.  The event featured distinguished guests from the Commission, U.S. Customs and Border Protection, and the private sector. 

King & Spalding Partner Jeffrey Telep moderated a panel on interpreting the metrics behind cases at the Commission, and co-led a discussion on the implications of the recent Federal Circuit ruling in ClearCorrect v. ITC, which the Update reported on earlier this month.  Other event highlights included a discussion of the current standards for establishing a domestic industry for the purposes of a Section 337 case; a session on the practical implications of Suprema v. ITC on induced infringement method claims; a dialogue with U.S. Customs and Border Protection on enforcement; a panel on strategy for litigating at the Commission and/or the District Court; and a discussion of Inter Partes Review and litigation before the Commission.