By: Levent Hergüner, Vishal Khatri, and Rita Yoon – In an dispute involving garage door openers, Respondent successfully utilized a Modification Proceeding pursuant to 19 U.S.C. § 1337(k) to obtain a determination from the ITC that its redesigned product did not infringe the asserted patent.  After an evidentiary hearing, the ITC held that Respondent’s redesign did not infringe the asserted patent and thus were not covered by the previously issued limited exclusion order (“LEO”) and cease and desist order (“CDO”).  Certain Access Control Systems and Components Thereof, Inv. No. 337-TA-1016, Comm’n Op. (Oct. 1, 2019) (citing Comm’n Op. (Mar. 23, 2018)).

The underlying investigation was instituted on August 9, 2016 based on a complaint filed by Complainant The Chamberlain Group against garage door manufacturers including Techtronic Industries.  The ITC concluded that Techtronic and other respondents’ garage door openers, which relied on a wired connection, infringed U.S. Patent No. 7,161,319 (“the ’319 patent”) and issued an LEO and CDO prohibiting their further importation and sale.

In March 2018, Techtronic completed a redesign of its garage door openers with a battery-powered wireless keypad that used radio waves to communicate with a receiver connected to the motor drive unit.  The redesign was not completed in time to be included in the underlying investigation so Techtronic petitioned the ITC to institute a Modification Proceeding pursuant to 19 U.S.C. § 1337(k).  As we previously discussed, another option that may have been available to Techtronic was to seek a ruling from Customs clearing the redesigned product – the route another respondent in the investigation took.

In the Modification Proceedings, Chief ALJ Bullock issued a procedural schedule that included about 7 weeks of fact and expert discovery, one month of pre-hearing briefing, and an evidentiary hearing scheduled for less than three months after institution.  After the evidentiary hearing, Chief ALJ Bullock issued a Recommended Determination finding that the redesigned garage door openers no longer infringed the ’319 patent and the determination was affirmed by the Commission.

Takeaway

This decision is a reminder that there are mechanisms available to respondents at the ITC to allow them to have redesigned products considered after an LEO and CDO are issued.  In some instances a Modification Proceeding discussed in this post may be appropriate but in other instances, an enforcement proceeding at the ITC or a ruling by Customs may be appropriate.  Parties should also be reminded rulings by Customs may also be appealed to the Court of International Trade (“CIT”).  However, depending on the specific circumstances of the case, the most efficient process may be to seek inclusion of the redesign in the original investigation.

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Rita Yoon focuses her practice on high-stakes intellectual property litigation and has won numerous jury verdicts and appeals for clients. She has successfully represented plaintiffs and defendants across various technologies, including the smartphone, headset, wireless communications, digital entertainment, LED television, and pharmaceutical industries.

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