In an earlier post, we summarized ALJ McNamara’s recent Summary Determination in Certain UV Curable Coatings For Optical Fibers, Coated Optical Fibers, And Products Containing Same, Inv. No. 337-TA-1031, Order No. 33 (July 6, 2017). The ALJ invalidated claims 16-18, 21, and 30 of U.S. Patent No. 7,706,659, because the recited term “molecular weight” was indefinite. On August 7, 2017, the Commission reversed and vacated the determination. An opinion is forthcoming. We will provide an update when the Commission issues its public opinion.
Dispositive summary judgment in district court patent cases is somewhat common, but similar early dispositions of Section 337 investigations in the ITC are rare in comparison. One such outcome happened recently in Certain UV Curable Coatings For Optical Fibers, Coated Optical Fibers, And Products Containing Same, Inv. No. 337-TA-1031. Order No. 33 (July 6, 2017). Respondent Momentive UV Coatings (Shanghai) Co., Ltd. (“MUV”) moved for summary determination that asserted claims 16-18, 21, and 30 of U.S. Patent No. 7,706,659 (“the ’659 patent”) are invalid for claim indefiniteness under 35 U.S.C. §112, ¶2. ALJ McNamara concluded that there were no genuine disputes of material fact and granted the motion.
ALJ Shaw held that the “colorable difference” test established by the Federal Circuit in its en banc Tivo v. Echostar opinion was not the appropriate test to determine whether the CDO was violated.
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 not need to present an invalidity case, and they failed to take certain relevant discovery. When Judge Pender’s decision was reversed by the Commission, they tried to get that discovery. Judge Pender ruled that it was too late.
This month, in Certain Arrowheads with Deploying Blades and Components Thereof and Packaging Therefor, Inv. No. 337-TA-977, the Commission weighed in on the standard for obtaining a cease and desist order where the respondents default. The majority held that the ITC will only issue a cease and desist order against a defaulting respondent when evidence of domestic inventory of accused products is provided in the complaint. In such circumstances, the ITC will presume that the domestic inventory is commercially significant because the respondent defaulted.
Judge McNamara determined to reopen the record after the hearing and take judicial notice of two PTAB decisions denying institution of IPR challenges of the asserted patents in Certain Composite Aerogel Insulation Materials and Methods for Manufacturing the Same, Inv. No. 337-TA-1003. The ALJ’s decision raises interesting issues with respect to the effect of PTAB decisions on Section 337 investigations.