By: Alex Li and Ryan McCrum – The ITC recently issued an order denying Respondents’ request to use the Early Disposition Program.  Certain Wireless Communication Devices and Related Components Thereof, Inv. 337‑TA‑1180 (October 10, 2019).  The Commission concluded that the issues raised in the request would require third party discovery and were too complex to be resolved within 100 days.

The Respondents, Resideo Technologies, Inc., HTC Corporation, and HTC America, Inc., argued that the Complainant Innovation Sciences LLC does not own all substantial rights in the asserted patents, U.S. Patent Nos. 10,136,179 and 10,104,425.  Specifically, the Respondents argued that a named inventor, Ronald Wang, previously assigned his rights to the patents in an employment agreement with his former employer RF Micro Devices, Inc. in 2005.  The Respondents asked the Commission to use the Early Disposition Program to resolve the issue of patent ownership.

The Commission’s Early Disposition Program is codified under 19 C.F.R. § 210.10(b)(3), which provides for rulings within 100 days of institution on certain dispositive issues in order to limit unnecessary litigation, saving time and costs for the parties.  Prior to its codification in June 2018, the ITC utilized a pilot program to provide rulings on dispositive issues within 100 days and we previously wrote about its applicability to inventorship and importation.  In the Commission’s order, it reasoned that the patent ownership issue would require discovery from RF Micro Devices, Inc., which is not a party to the investigation.  The Commission therefore concluded that the issue was too complicated to be resolved within 100 days.

Takeaway

The ITC’s use of the Early Disposition Program remains rare.  To convince the ITC to utilize the Program, Respondents need to demonstrate that the issue to be addressed is dispositive of the entire investigation, and that it is not too complex to decide in 100 days. In this case, the Commission determined that third party discovery made the ownership issue too complicated to be resolved within 100 days.

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Ryan McCrum, who co-chairs the Firm's intellectual property ITC practice, has nearly 20 years of experience handling high-stakes patent litigation. He has led teams from the initial filing of a complaint all the way through jury and bench trials. He has extensive experience examining witnesses of all types at trial, arguing claim construction and summary judgment hearings, and handling matters through appeal.