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.
Last week, Judge Essex issued a notice updating his ground rules in active investigations pending before him.
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, 2017.
Before 2011, the ITC routinely found violations of Section 337 based on the infringement of method claims through a respondent’s own use of an article post-importation. This changed when the ITC issued its Opinion in Certain Electronic Devices with Image Processing Systems, Components Thereof and Associated, Inv. No. 337-TA-724 (“Electronic Devices”). In that case the ITC held that post-importation direct infringement of a method claim, without a showing of indirect infringement, could not substantiate a violation of Section 337. But the ITC has recently indicated that it is rethinking its Electronics Devices precedent.
We previously wrote about the uphill battle Respondent Eko Brands faced in an enforcement proceeding after it defaulted in the underlying investigation. The ALJ found during the proceedings that res judicata barred its defenses of non-infringement and invalidity. However, Judge Essex issued an interesting determination this month finding that the Commission’s remedial orders are not enforceable against Eko because Complainant Adrian Rivera and Adrian Rivera Maynez Enterprises (“ARM”) did not properly establish the domestic industry requirement in the underlying investigation. He further found that even if the remedial orders are enforceable, that they should be provisionally rescinded pending final resolution of a district court case.
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 opinion before it issues it to the public?