By: Yury Kalish and Vishal Khatri – Chairman Rhonda Schmidtlein announced that Judge Clark S. Cheney has joined the U.S. International Trade Commission (“ITC”) as an Administrative Law Judge (“ALJ”). ALJ Cheney joins ALJs Bullock, Pender, Shaw, Lord, and McNamara. He is the first new ALJ to join ITC since the retirement of ALJ Essex in August 2017.
Complainants often must rely on indirect infringement to prove a violation of Section 337. Indirect infringement may be in the form of induced or contributory infringement. In a recent opinion, the Commission clarified issues relating to post-importation inducement and distinctions between induced and contributory infringement. Certain Digital Video Receivers And Hardware And Software Components Thereof, Inv. No. 337-TA-1001, Commission Opinion (December 6, 2017).
As we have previously posted, the ITC currently has two open Commissioner positions after the exits of Commissioners Kieff and Pinkert earlier this year. On September 28, 2017, President Trump announced his nomination of Dennis M. Devaney and Randolph J. Stayin to fill these vacancies. These nominations come with the ITC operating with only four out of six Commissioners and a historically high Section 337 caseload.
ALJ Essex has retired from the ITC after a decade of service. News of his retirement was provided in notices issued by Chief ALJ Bullock in investigations previously assigned to ALJ Essex.
The Commission issued an Opinion finding a violation of Section 337 in Certain Air Mattress Systems, Components Thereof, and Methods of Using Same, Inv. No. 337-TA-971. Of note, the Commission reversed a part of ALJ Bullock’s initial determination (ID) which had found that Complainant did not satisfy the economic prong of the domestic industry requirement.
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 appeal after the asserted claims were found unpatentable by the USPTO Patent Trial and Appeal Board in IPR proceedings.