ALJ McNamara recently confirmed and tightened her previous order compelling depositions of certain Japanese witnesses in the United States. Certain Digital Cable And Satellite Products, Inv. No. 337-TA-1049, Order No....more
In a recent Order, ALJ McNamara clarified that while diagrams drawn by an expert depicting the interplay and hierarchy of relevant code modules, inputs, and outputs of source code are to be treated as confidential business...more
11/13/2017
/ Addendums ,
Administrative Law Judge (ALJ) ,
Confidential Business Information (CBI) ,
Discovery ,
Discovery Disputes ,
Expert Testimony ,
International Trade Commission (ITC) ,
Patent Infringement ,
Patents ,
Software Patents ,
Source Code
In a recent Order, the Commission held that an earlier-entered Consent Order should be vacated in view of a settlement agreement between the parties but that the Commission did not have the authority to vacate a civil penalty...more
In August 2016, Google petitioned for Inter Partes Review of U.S. Patent No. 7,552,124 (owned by IXI Mobile), asserting that claims 1–10 are unpatentable. In March 2017, the PTAB instituted the IPR as to claims 1–5, but...more
As we have previously discussed (on February 1, March 1, March 30, and May 19), reliance on secondary considerations of non-obviousness has been hit or miss for patent owners trying to convince PTAB panels that the secondary...more
ALJ Essex has retired from the ITC after a decade of service. News of his retirement was provided in notices issued this week by Chief ALJ Bullock in investigations previously assigned to ALJ Essex....more
In October 2016, we posted about a Federal Circuit decision addressing whether assignor estoppel bars a party from filing an inter partes review petition. In Athena Automation Ltd. v. Husky Injection Molding Systems Ltd., the...more
The ITC has dealt a significant blow to the use of Inter Partes Review as a defense to a Section 337 investigation. In an order issued this week, the Commission denied a request to stay remedial orders that are currently on...more
7/28/2017
/ Appeals ,
Cease and Desist Orders ,
Cisco ,
Exclusion Orders ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Patent Infringement ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Section 337 ,
USPTO
A recent ITC enforcement decision highlights the importance of redesigns as an effective strategy for Respondents at the ITC....more
7/25/2017
/ Administrative Law Judge (ALJ) ,
Cease and Desist Orders ,
Exclusion Orders ,
Initial Determination (ID) ,
Injunctions ,
International Trade Commission (ITC) ,
Patent Infringement ,
Patents ,
Redesigned Products ,
Reversal ,
Sanctions ,
Section 337
It is not always possible for a party seeking to challenge a patent in an IPR to find prior art patents or printed publications that the USPTO has not already considered. Often the best available prior art comes from the...more
ITC Commissioner F. Scott Kieff has announced that he is leaving the ITC to return to his previous academic position as a professor at the George Washington University Law School. Kieff’s last day at the ITC will be June 30,...more
Certain Access Control Systems and Components Thereof, Inv. No. 337-TA-1016 (May 31, 2017), is a good lesson in covering all your bases. Relying on a non-infringement decision by ALJ Pender, respondents assumed that they did...more
6/7/2017
/ Administrative Law Judge (ALJ) ,
Anticipatory Reference ,
Discovery ,
Evidence ,
International Trade Commission (ITC) ,
Noninfringement ,
Patent Infringement ,
Patents ,
Prior Art ,
Remand ,
Summary Judgment
We have previously reported (on February 1, on March 1, and on March 30) how patent owners have seen a mixed bag of results in trying to convince PTAB panels that secondary considerations of non-obviousness were sufficient to...more
For more than 60 years, Section 102(b) of the Patent Act precluded patentability when the invention was "in public use or on sale in this country [for] more than one year" before the filing of a patent application. That...more
In re Certain Network Devices, Related Software and Components Thereof (I), Inv. No. 337-TA-944 (ITC Comm’n Apr. 19, 2017), is a surprisingly rare opinion addressing a common issue: When should the ITC redact a portion of an...more
4/28/2017
/ Appeals ,
Burden of Proof ,
Confidential Information ,
Final Written Decisions ,
International Trade Commission (ITC) ,
Patent Infringement ,
Patents ,
Proprietary Information ,
Redaction ,
Remand ,
Section 337 ,
Trade Secrets
We previously wrote about the ITC’s determination in Certain Semiconductor Devices, Semiconductor Device Packages, and Products Containing the Same, Inv. No. 337-TA-1010 that renting accused products after importation does...more
If you are involved in an IPR and you are contemplating whether to rely on your own confidential information as part of a filing, you need to consider the risk that the Board will deny your motion to file under seal because...more
In SCA Hygiene Products v. First Quality Baby Products, decided on March 21, 2017, the U.S. Supreme Court significantly reduced the role of the laches defense in patent actions: "Laches cannot be interposed as a defense...more
3/25/2017
/ Appeals ,
Damages ,
Defense Strategies ,
Equitable Estoppel ,
Laches ,
Patent Act ,
Patent Infringement ,
Patents ,
Petrella v. MGM ,
SCA Hygiene Products Aktiebolag v First Quality Baby Products ,
SCOTUS ,
Separation of Powers ,
Statute of Limitations
Judge Pender issued Order No. 19 in Certain Access Control Systems and Components Thereof, Inv. No. 337-TA-1016, denying Complainant The Chamberlain Group’s (“CGI”) motion for summary determination that the accused products...more
As previously reported, the Commission recently granted U.S. Steel’s request for an oral hearing in Certain Carbon and Alloy Steel, Inv. No. 337-TA-1002. This was only the second oral argument granted in a Section 337 case in...more
As reported in our February 1, 2017 post, patent owners have had a difficult time convincing the PTAB that secondary considerations are sufficient to overcome a prima facie case of obviousness. The Crown Packaging decision,...more
Section 271(f)(1) of the Patent Act provides that a party infringes a patent claim when it "supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention...more
2/27/2017
/ Appeals ,
Component Parts Doctrine ,
Cross-Border Transactions ,
Exports ,
Extraterritoriality Rules ,
Life Technologies Corp v Promega Corp ,
Manufacturer Liability ,
Motion to Set Aside the Verdict ,
Patent Act ,
Patent Infringement ,
Patents ,
Reversal ,
SCOTUS