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 He further found that even if the remedial orders are enforceable, that they should be provisionally rescinded pending final resolution of a district court case.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.
Increasing use of Inter Partes Reviews (IPRs) by patent stakeholders and an increase in the number of ITC complaints heighten the importance of an interplay between IPRs and ITC proceedings. We have previously noted that the ITC does not stay their proceedings in view of IPR institution. Recent decisions by the Patent Trial and Appeal Board (PTAB) bring to light another distinguishing feature of taking a patent dispute to the ITC – it will not start a one-year clock to file an IPR request.
2016 was a banner year for Section 337 proceedings at the ITC. Sixty new Section 337 related complaints were filed at the ITC—a 50% increase over the previous year. 2016’s tally exceeds the number of complaints in each of the previous four years (2012-2015), and only lags behind the 2011 numbers—the height of the so-called ‘smartphone wars.’
As a follow up to our October 20th post, Judge McNamara has issued an Initial Determination pursuant to the 100-day Pilot Program proceeding on domestic industry in Certain Silicon-On-Insulator Wafers, Inv. No. 337-TA-1025. Judge McNamara held that Complainant Silicon Genesis Corp. has contingently established the economic prong of domestic industry.
As we’ve previously reported here, 2016 saw a significant increase of ITC Section 337 investigations over prior years. The last complaint of the year was filed on December 30, 2016, by Lifetime Products, Inc. (“Lifetime” or “Complainant”) against Russell Brand LLC d/b/a Spalding (“Russell”) and Reliable Sports Equipment (Wujiang) Co. Ltd (“Reliable”) (collectively, “Respondents”). In the Matter of Certain Basketball Backboard Components and Products Containing the Same, Complaint 337-TA-____ (Dkt. 3191). Lifetime is asking ITC to issue a Limited Exclusion Order (LEO) and permanent cease and desist orders against the Respondents.