Posts Tagged: "ITC"

On May 17, 2022, the Federal Trade Commission (FTC) submitted to Lisa Barton, Secretary of the International Trade Commission (ITC), a statement they believed was relevant to the public interest considerations before the Commission in a matter involving certain UMTS and LTE cellular communication modules (337-TA-1240). The ITC in many cases will invite statements on the Public Interest, and the FTC is often invited to make a submission. It should be noted, however,  “Public Interest” in the ITC is a matter of statute, and there are four public interest factors which are statutory. Any statement in the Public Interest must address one or more of those factors. Other matters not within the statute are not public interest factors.

On April 21, 2022, LG Electronics Inc. filed suit against Chinese television manufacturer, TCL, through several of its affiliates and related entities, in the Eastern District of Texas for patent infringement. See LG Electronics, Inc. v. TCL Electronics Holding Ltd. et al, Case: 2:22-cv-00122 (EDTX). The patents relate to display hardware, wireless transmission technology, and user interface controls. Several of TCL’s 4-Series, 5-Series, and 6-Series TVs are accused of infringement. The patents asserted by LG are U.S. Patent Nos. 7,982,803, 9,080,740, 9,788,346, 10,334,311 and 10,499,431. LG requests a jury trial, seeks a permanent injunction, and a finding that the infringement is willful (for enhancement purposes) and exceptional (for the awarding of attorneys’ fees).

The chaotic state of the world today makes it increasingly difficult for American companies to compete. Russian hostility has the democratic world on edge, U.S. inflation is at a 40-year high and hitting consumers hard, and China continues its aggressive push for economic and technological dominance.  To stay on top, the United States must out-innovate our competitors. America needs to lead the world in cutting-edge products and new technologies, and those are made possible by policies that support the innovation economy. The Ukraine crisis makes it clear that energy and cyber policy is crucial. Recently, the U.S. Trade Representative told Congress that supporting and protecting the full range of our innovators from China’s distortive practices is critical to our nation’s future.

On March 1, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the U.S. International Trade Commission (ITC)’s determination that the civil penalty imposed on DBN Holding, Inc. and BDN LLC did not require modification or rescission following the subsequent invalidation of the asserted claims. The ITC imposed this civil penalty against DBN for violating a consent order that prohibited unfair trade acts of infringement involving the now invalidated claims.

Over the past decade, the Patent Trial and Appeal Board (PTAB) has emerged as a critical and much-relied-upon tool for those facing patent infringement allegations. Some say that’s exactly what Congress intended with the America Invents Act—a defendant can file a validity challenge at the PTAB and get an expedited ruling on invalidity in a forum with specialized technical expertise and before judges with relevant technical backgrounds, at a lower cost than litigating validity issues in district court. And in fact, district courts will often stay infringement actions pending PTAB review of a patent at issue in a particular case.But the district courts and the PTAB are not the only fora in which patent issues are adjudicated. The United States International Trade Commission (ITC)—an independent, quasi-judicial federal agency based in Washington, DC—has become a forum of choice for patent owners seeking fast and effective relief for patent infringement.

This has been a year full of ups and downs, including at the International Trade Commisison (ITC). The ITC has stayed open for business, instituting a near-record number of investigations and holding hearings, albeit virtually. There have been a number of ITC decisions with interesting holdings, all of which have been covered well here and in other blogs. However, there have been a number of ITC-related happenings in 2021 which, though they received less coverage, may, like the proverbial butterfly, have important ramifications for years to come.

In 2001, six years before the iPhone appeared, a futurist named Ray Kurzweil wrote that humankind would cram 20,000 years of technological progress into the century that had just begun. There were skeptics, but today any of the world’s six billion smartphone subscribers can read his essay on their devices practically any time, any place they choose. As we move into an era of Artificial Intelligence (AI), quantum computing, and 5G telecommunications that supports Kurzweil’s vision, we must make sure that our laws and federal agencies match the pace of invention and protect innovators from trolls who would game the legal system and government functions for their ill-gained profit. 

In late June, medical technology firm Masimo Corporation and its consumer device subsidiary Cercacor Laboratories filed a complaint with the U.S. International Trade Commission (ITC) asking the agency to institute a Section 337 investigation into several versions of the Apple Watch. Masimo’s allegations, which also include trade secret litigation ongoing in U.S. district court, follow an increasingly familiar narrative in which a Big Tech player, in this case Apple, engages in licensing negotiations with a small tech developer, only to poach employees and ideas from the smaller firm without paying the original developers.

Since the Supreme Court restricted access to permanent injunctions in eBay v. MercExchange, LLC, more and more patent owners have flocked to the International Trade Commission (ITC) to pursue a Section 337 investigation in hopes of obtaining a coveted and comparable exclusion order. These investigations address unfair practices in import trade—many of which involve allegations of patent infringement—and often lead to exclusion orders preventing infringers from importing their goods into the United States. The ITC’s statutory duty compels prompt completion of these investigations, with matters often proceeding to a full evidentiary hearing less than a year after the complaint is filed. However, with the rapid rise of disputes in the ITC, the agency is under relentless pressure to develop new approaches to facilitate efficient resolution of its investigations.

In September, the International Trade Commission (ITC) decided to review an initial final determination (FID) in the Matter of “Certain Botulinum Toxin Products, Processes for Manufacturing or Relating to Same and Certain Products Containing Same,” Investigation No. 337-TA-1145, a complaint filed by Allergan against Botox products made by Daewoong and its partner, Evolus, a “performance beauty company”. On Wednesday, the ITC issued a Final Determination in the case, finding that the sale and importation of the products into the United States violated Section 337 of the U.S. Tariff Act. The Commission issued a Limited Exclusion Order (LEO) prohibiting importation of the products by Daewoong and Evolus for a period of 21 months, as well as a cease and desist order against Evolus preventing the Company from selling, marketing, or promoting the products in the United States for a period of 21 months. However, the Commission reversed the FID’s finding that a trade secret exists with respect to Medytox’s bacterial strain.

Last week, the United States International Trade Commission (ITC) issued a notice in the Matter of “Certain Botulinum Toxin Products, Processes for Manufacturing or Relating to Same and Certain Products Containing Same,” Investigation No. 337-TA-1145, stating that the ITC has “determined to review in part a final initial determination (FID) of the presiding administrative law judge (ALJ) finding a violation of section 337 of the Tariff Act of 1930.”Last year, Allergan, the U.S. manufacturer of Botox, and Medytox, the Korean manufacturer of a similar product, filed a joint complaint against Daewoong, a Korean drug maker, under Section 337 of the Tariff Act of 1930, alleging that Daewoong had stolen Medytox’s botox strain trade secret in Korea and introduced it to the U.S. market. The FID was issued on July 6, 2020, wherein the ALJ found that certain products sold by the Korean drug maker Daewoong and its partner Evolus, Inc. violated section 337 through their importation and sale in the United States of a botulinum neurotoxin product “by reason of the misappropriation of trade secrets.”

In late July, water bottle maker Hydro Flask and parent company Helen of Troy Limited filed a complaint with the U.S. International Trade Commission (ITC) asking the agency to institute a Section 337 investigation against a series of 25 respondents, most of which are located in China, over their alleged infringement of Hydro Flask’s trademarks and design patents. The legal action highlights the difficulties being faced by many American brand owners during the COVID-19 pandemic and how Congressional action could help to ensure that these small businesses are able to effectively enforce their IP to prevent counterfeit imports.

Last week, the U.S. Court of Appeals for the Federal Circuit affirmed a decision of the U.S. International Trade Commission in Mayborn Group, Ltd. v. ITC, wherein the U.S. International Trade Commission (the Commission) denied Mayborn’s petition for rescission of a general exclusion order that prohibited the importation of products that infringe U.S. Patent 8,028,850 (the ’850 patent).  The CAFC held that, while Mayborn had standing to appeal, the Commission lacked the authority to adjudicate its patent invalidity claim and an assertion of patent invalidity was insufficient grounds to support a petition to rescind or modify an exclusion order.

District court patent filings are up again this week, demonstrating that even a good lockdown can’t keep patent lawyers down; indeed, it appears there’s no sleep for the weary, given the spike in non-practicing entity (NPE) assertions and a fair amount of medium-sized company-to-company litigation, as well as a brewing dispute between Philips and Fitbit on wireless fitness trackers.