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.
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.
In Certain Carbon Spine Board Devices, Inv. No. 337-TA-1008, the ITC investigated Complainant Laerdal’s allegations of section 337 violations based on the infringement of certain U.S. patents, copyrights, trade dresses and trademarks. The ITC determined to issue a limited exclusion order to some, but not all of the respondents, and a cease and desist order to one respondent. But the Commission also found that certain of Laerdal’s allegations relating to trade dress and copyright infringement were not adequately plead to support a violation of Section 337 which reduced the scope of the granted remedy.
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.
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 He further found that even if the remedial orders are enforceable, that they should be provisionally rescinded pending final resolution of a district court case.
We previously wrote about the ITC’s determination in Certain Semiconductor Devices, Semiconductor Device Packages, and Products Containing the Same, Inv. No. 337-TA-1010 that renting accused products after importation does not violate Section 337. This week the ITC issued Commissioner Kieff’s concurring additional views which cast doubt on the precedential value of the ITC’s determination.