As a follow up to our October 20th post, Judge McNamara has issued an Initial Determination pursuant to the 100-day Pilot Program proceeding on domestic industry in Certain Silicon-On-Insulator Wafers, Inv. No. 337-TA-1025. Judge McNamara held that Complainant Silicon Genesis Corp. has contingently established the economic prong of domestic industry.
As we’ve previously reported here, 2016 saw a significant increase of ITC Section 337 investigations over prior years. The last complaint of the year was filed on December 30, 2016, by Lifetime Products, Inc. (“Lifetime” or “Complainant”) against Russell Brand LLC d/b/a Spalding (“Russell”) and Reliable Sports Equipment (Wujiang) Co. Ltd (“Reliable”) (collectively, “Respondents”). In the Matter of Certain Basketball Backboard Components and Products Containing the Same, Complaint 337-TA-____ (Dkt. 3191). Lifetime is asking ITC to issue a Limited Exclusion Order (LEO) and permanent cease and desist orders against the Respondents.
While 2016 saw numerous changes at the International Trade Commission (ITC), the number of asserted patents in an investigation was not one of them. In 2016, the vast majority of Complainants continued the trend of asserting five or fewer patents.
On January 13, Judge Lord issued the public version of Order 50 in Certain Semiconductor Devices, Semiconductor Device Packages, And Products Containing Same, Inv. 337-TA-1010, granting-in-part Respondents’ motion to compel production of factual materials underlying pre-suit testing.
Sixty new Section 337 related complaints were filed at the ITC in 2016—a 50% increase over the previous year. This marks a reversal of a trend that saw a reduction of complaints from seventy-two in 2011 to only forty in 2015. The sixty complaints in 2016 included fifty-four for new violation proceedings, one request each for an advisory opinion and modification of remedial orders, and four enforcement actions.
Certain Beverage Brewing Capsules, Components Thereof, And Products Containing the Same, Inv. 337-TA-929, is a cautionary tale of the risks of defaulting at the ITC. Eko Brands, LLC defaulted in the ITC’s original investigation. The Commission later concluded that Eko infringed two claims that depended from independent claims found to lack written description support. Separately, a district court found that Eko did not infringe the asserted claims. It is unclear whether Eko will succeed in fending off an enforcement proceeding filed against it relating to its activities since the Commission’s remedial orders were issued.