By: Spencer Beall and Vishal Khatri – In a recent Initial Determination (“ID”), ALJ McNamara indicated that the inclusion of a certification provision in the Limited Exclusion Order (“LEO”) was warranted to allow the respondent to import non-infringing redesigns. In re Certain Digital Video Receivers and Related Hardware and Software Components, Inv. No. 337-TA-1103 (Jun. 4, 2019) (“Initial Determination”).  We previously wrote about this investigation (here).

In this investigation, ALJ McNamara determined that Comcast Corp. (“Comcast”) violated Section 337(b) by improperly importing for sale and selling products.  Complainant, Rovi Corp. (“Rovi”) asked the ITC to issue a broad LEO with no certification provision to bar importation of all accused products that were found to infringe the asserted patents.  Comcast, by contrast, requested a narrower LEO that would include (among other things) a carve-out allowing importation of redesigned set-top boxes which did not infringe the asserted patents.

U.S. Customs and Border Protection (“CBP”) is tasked with enforcing ITC exclusion orders.  In some instances, CBP might be required to test incoming products to see whether the products violate the exclusion order.  However, testing is not always feasible, especially in instances involving method claims.  When testing is impractical, it is not readily apparent whether an incoming product violates the exclusion order.  As a result, CBP may inadvertently deny entry of non-infringing products.  To prevent these problems, depending on the facts of a particular investigation, the ITC may incorporate a “certification provision” into the exclusion order.  A certification provision requires the respondent to certify “that they are familiar with the terms of the [exclusion] order, that they have made appropriate inquiry, and thereupon state that, to the best of their knowledge and belief, the products being imported are not excluded from entry under the order.”  False certifications can lead to sanctions.

Here, the ALJ McNamara decided that a certification provision was necessary to prevent exclusion of non-infringing products (including Comcast’s proposed redesigns) because it is not immediately apparent upon inspection of the products whether the set-top boxes are infringing.

Takeaway

This decision highlights the difficulties that can arise with the enforcement of ITC exclusion orders.  Parties at the ITC should not assume that exclusion orders will automatically prevent importation of infringing products only.  Complainants and respondents alike need to be familiar with the enforcement process to ensure that CBP can properly enforce any remedy issued by the ITC, and should be prepared to assist CBP with identifying infringing and non-infringement products.  In some situations, the Commission may include a certification provision to assist with the enforcement process.

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Vishal Khatri is an intellectual property lawyer with more than 15 years of experience representing clients in high stakes, bet-the-company patent litigation and procurement matters around the world. He routinely represents clients in matters before U.S. district courts, the United States International Trade Commission (ITC), and the United States Patent and Trademark Office (USPTO), including Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB).