By: Daniel Kazhdan, Ph.D. and Blaney Harper – In re Certain Color Intraoral Scanners & Related Software, Inv. No. 337-TA-1091, Order 34 (ITC Sept. 6, 2018) presents an interesting factual scenario. The schedule adopted by the ALJ had the Commission issuing a final decision a few days after the expiration of the patents at issue, so, if the case proceeded as scheduled, the final decision would come too late to be helpful to the patentee. The respondent therefore asked that the proceedings be terminated. ALJ Cheney, however, was not willing to terminate an investigation based on his prediction of what the Commission would do. He therefore denied the motion.

The Decision

Align Technology alleged that 3Shape infringed six patents, including U.S. Patents 6,685,470 and 6,948,931. The parties jointly submitted a proposed procedural schedule that set January 2019, as the date for the Initial Determination and May 20, 2019, as a Target Date for Completion of Investigation. The ALJ adopted the proposed schedule. Order 7 (Feb. 6, 2018). The quirk of the case is that the jointly-proposed May 20, 2019 Target Date for Completion of Investigation is six days after the ’470 and ’931 patents expire.

On August 2, 2018, 3Shape asked the ALJ to terminate the proceedings on the ’470 and ’931 patents. It argued that Align had no realistic chance of getting any relief before the patents expired: the deadline for filing motions for summary determination had passed and the possibility that the commission would expedite the case was too speculative.

ALJ Cheney refused. He indicated that it was unlikely that he would issue an initial determination before the scheduled deadline for his decision, but he did not want to speculate as to what the Commission would due. “[T]heoretically,” the Commission might abbreviate the timeline and issue a ruling before the patents expired. And given that Align seems to want to pursue the ’470 and ’931 patents—notwithstanding the likelihood that those patents would expire before the Commission’s review—he let the case proceed.

Takeaway

This case is a reminder to Complainants that they may be able to utilize patents with limited remaining patent term at the ITC. In situations where patents with limited patent term are part of an investigation, Complainants and Respondents alike should be mindful that the procedural schedule may be a strategic mechanism to influence whether the ALJ will terminate an investigation early.

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Blaney Harper, who co-chairs the Firms intellectual property ITC practice, focuses on strategic patent litigation representing electronics, software, and information technology companies in matters such as patent enforcement in United States District Courts and the International Trade Commission (ITC). Blaney also represents and counsels clients concerning patent portfolio development and patent prosecution and appeal, including Inter Partes Review, in the USPTO. Blaney co-chairs the Firm's ITC practice and is the IP Practice Coordinator for the Washington Office.