By: Vishal Khatri and Blaney Harper The U.S. International Trade Commission (“ITC”) terminated Investigation No. 337-TA-1094 based on actual expiration of the asserted patent at issue. Upon a review of the Initial Determination (“ID”), the Commission determined that the ID’s good cause (the imminent expiration of the patent) is moot since the patent is now actually expired. Certain IOT Devices and Components Thereof (IOT, the Internet of Things) – Web Applications Displayed on a Web Browser, Inv. 337-TA-1094.

As we recently reported (here), ALJ Bullock issued an ID on February 27, 2018 terminating this Investigation because the patent at issue was set to expire before the ITC would be able to issue a final determination. In response to the ID, the complainants filed a Motion for Rehearing and Reinstating the Investigation which the Commission treated as a petition for Commission review of the ID under 19 C.F.R. § 210.43.

The March 23, 2018 Notice acknowledged the ITC can only issue an exclusion order or a cease and desist order barring future importation or conduct and that neither, an exclusion order or a cease and desist order can issue based on an expired patent. Texas Instruments Inc. v. U.S. Int’l Trade Comm’n, 851 F.2d 342, 344 (Fed. Cir. 1988). Because the patent at issue actually expired by the time the Commission began its review, the ID’s good cause (the imminent expiration of the patent) was moot. Accordingly, the Commission decided to review the ID, and, on review, affirmed the termination based upon the actual expiration of the patent.

Takeaway

While the Commission affirmed the ALJ’s decision to terminate the investigation, they made the point of noting that the termination was based on the actual expiration of the patent, not merely the impending expiration of the patent. Complainants and respondents alike should continue to be mindful that the expiration date of an asserted patent can impact the ITC’s ability to issue an exclusion order.

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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.