Commission to Weigh in on IPR Estoppel

Commission to Weigh in on IPR Estoppel

The Commission has determined to review an initial determination finding that Respondent Ford is estopped under 35 U.S.C. § 315(e)(2) from asserting certain invalidity defenses previously adjudicated by the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) proceeding.  Certain Hybrid Electric Vehicles And Components Thereof, Inv. No. 337-TA-1042, Notice (Dec. 8, 2017).  The underlying initial determination raises nuanced issues regarding the application of IPR estoppel in Section 337 investigations.

ITC Remains Unpersuaded by Final PTAB Rulings

ITC Remains Unpersuaded by Final PTAB Rulings

This week the ITC stood firm in its position that final PTAB rulings of unpatentability in IPR proceedings are not grounds to modify, suspend, or rescind remedial orders.  In Certain Foam Footwear, Inv. No. 337-TA-567, the ITC issued a short order denying a petition for such relief.  In the Order, the ITC cited its precedent in Certain Network Devices, Related Software and Components (II), Inv. No. 337-TA-945, Order (Sept. 11, 2017) which we discussed here.

Is A Respondent’s Own Post-Importation Infringement A Violation Of Section 337?

Is A Respondent’s Own Post-Importation Infringement A Violation Of Section 337?

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.