Posts Tagged: "International Trade Commission"

“It seems self-evident that the same patent contested in different tribunals should have its meaning – its boundaries – determined using the same standard,” Director Iancu said when discussing the final rules implementing the Phillips standard at the PTAB… Those few who were not pleased by the change have cited a believe that the change to the Phillips standard would usher in a return to lower quality patents. With a bit of a confrontational tone, Director Iancu took issue with that, finding the argument without merit.

Despite finding patent infringement under Section 337 and upholding the validity of Qualcomm’s asserted patents, ALJ Pender found that the statutory public interest factors weighed against issuing a limited exclusion order in this case. This turns the victory for Qualcomm into nothing more than a pyrrhic victory at best given that the only remedy the ITC can hand out are exclusion orders and cease and desist orders. The ITC does not have any jurisdiction to hand out monetary damages. So what exactly would Qualcomm receive for Apple’s infringement? What exactly would Apple be required to pay or change as the result of engaging in infringing behavior? It would seem that there will be no remedy for Qualcomm under ALJ Pender’s decision, and no consequences for Apple infringing the patent claims that have been confirmed valid. 

Perhaps Rovi will take the opportunity to test the waters with the newly created Precedential Opinion Panel (POP), which is intended to bring uniformity between examination procedures and the PTAB at the USPTO. USPTO Director Andrei Iancu has promulgated new Standard Operating Procedures (SOPs), and new claim interpretations rules will soon be in effect at the PTAB. A patent litigator by training, Director Iancu seems very interested in the PTAB giving other tribunals that have previously considered validity matters due consideration, something the PTAB has rarely, if ever, done. With the creation of the POP, and new SOPs that give the Director the authority to make decisions of the PTAB precedential at his discretion, this string of Rovi cases could present a very interesting test case on whether the PTAB actually will provide deference to tribunals that have previously considered validity issues, or whether the PTAB with its lower threshold for invalidity will continue to be the court of last resort for infringers who have lost elsewhere. 

On Friday, October 5th, the U.S. International Trade Commission (ITC) issued a notice of institution of a Section 337 patent infringement investigation requested by New Zealand-based appliance manufacturer Fisher & Paykel against San Diego, CA-based medical equipment firm ResMed. The ITC instituted the Section 337 investigation after Fisher & Paykel alleged that certain sleep apnea products imported for sale by ResMed infringe upon U.S. patents held by the New Zealand firm.

Previously, the ITC instituted an investigation of Instradentdental implants based on a complaint filed by Nobel alleging violations of 19 U.S.C. § 1337 by reason of importation of an implant product infringing the ’977 patent and another patent. The ITC’s Administrative Law Judge issued an Initial Determination finding claims 1–5 and 19 anticipated by the ABT catalog but the ITC later issued a Commission Opinion finding that Instradent failed to show by clear and convincing evidence, the standard applied by the ITC, that the ABT catalog is prior art under § 102(b). A Federal Circuit panel affirmed the ITC’s decision without opinion. Subsequently, Instradent petitioned for IPR of claims 1–7, 9, and 13–20 of the ’977 patent, and Nobel filed a statutory disclaimer of claims 9 and 13–18.

The result of the ITC investigation was a win for AMD with the issuance of a cease and desist order against Respondent VIZIO, a cease and desist order against Respondent SDI, and a limited exclusion order against Respondents VIZIO, SDI and MediaTek. Rather surprisingly AMD has not issued a press release touting the win and is also not otherwise taking a victory lap. Generally, when a company scores a win of this magnitude, with either a limited exclusion order or a cease and desist order, it is news that is shared far and wide. In this case both a limited exclusion order and two cease and desist orders were obtained, and there hasn’t been as much as a peep from AMD. The fact that AMD has chosen to remain silent suggests negotiations are ongoing and an omnibus settlement may be announced in the coming days or weeks.

On Monday, August 6th, Santa Clara, CA-based computer networking Arista Networks filed a Form 8-K with the U.S. Securities and Exchange Commission (SEC) announcing the firm had entered into an agreement with San Jose, CA-based networking rival Cisco Systems that dismisses all pending litigation between the two firms in both U.S. district courts and at the U.S. International Trade Commission (ITC). Under the terms of the agreement, Arista will pay Cisco $400 million this month in return for Cisco dropping all patent infringement claims which it has filed against Arista. In addition to Cisco dropping its patent infringement claims, Arista also agreed to drop all antitrust claims which it has filed against its rival.

PopSockets filed its Section 337 complaint with the ITC last April, naming 14 respondents, with 13 based in China and one operating in Hong Kong. This February, the administrative law judge (ALJ) assigned to the case found that not only did the accused products infringe PopSockets’ ‘031 patent, but the infringement was widespread, going beyond the 14 named respondents, such that a general exclusion order was warranted, barring the import of infringing products into the United States by anyone, not just the named respondents.

If Qualcomm’s allegations are true, Apple will apparently stop at nothing to avoid paying licensing fees for Qualcomm’s patented technologies. Qualcomm’s tortious interference suit against Apple alleges that the consumer tech titan misrepresented both Qualcomm’s business model and the performance of Qualcomm’s mobile chipsets in order to encourage foreign trade regulators to levy fines against Qualcomm totalling hundreds of millions of dollars. Most recently, Apple has decided to avail itself of an old friend, the Patent Trial and Appeal Board (PTAB), in the hopes of rendering Qualcomm patents invalid to continue practicing technologies for which it has no interest in paying licensing fees.Apple has shown that it will stop at nothing to avoid paying licensing fees for Qualcomm’s patented technologies. Qualcomm’s tortious interference suit against Apple alleges that the consumer tech titan misrepresented both Qualcomm’s business model and the performance of Qualcomm’s mobile chipsets in order to encourage foreign trade regulators to levy fines against Qualcomm totalling hundreds of millions of dollars. Most recently, Apple has decided to avail itself of an old friend, the Patent Trial and Appeal Board (PTAB), in the hopes of rendering Qualcomm patents invalid to continue practicing technologies for which it has no interest in paying licensing fees.

On Thursday, June 7th, the U.S. International Trade Commission (ITC) announced that it was instituting a Section 337 patent infringement investigation of automobile infotainment systems being imported into the U.S. based on infringement claims asserted by major semiconductor maker Broadcom. Broadcom is alleging that a group of Japanese automakers and tech companies, including Toyota, Panasonic and Denso Ten, over the sale of head units, rear seat entertainment units, units for displaying information or entertainment, as well as cameras and other processing components used in those units and the automobiles containing such units.

TiVo files patent lawsuits, the latest steps TiVo has taken in the hopes of resolving the renewal of a long-term licensing agreement that TiVo has already has already finalized with other major pay-television providers in the United States… TiVo’s recent litigation campaign against Comcast stems back to an unresolved licensing agreement that expired in April 2016 and which TiVo has attempted to renew with the major American pay-TV provider. Rovi first signed licensing agreements with the top pay-TV providers in the U.S., including Comcast, Dish Network, DirecTV and Time Warner, back in 2003 and 2004 with each deal lasting for a period of 12 years. In 2015 and 2016, around the same time that Rovi acquired TiVo for about $1.1 billion, the company began proactively engaging in licensing talks, again striking long-term deals like 10-year agreements with both AT&T and Dish. Of the top 10 pay-TV providers in the United States, Comcast is the last holdout who has not signed a licensing deal with TiVo.

Barcode reading solutions provider Code Corporation of Salt Lake City, UT, announced that it had filed antitrust actions against engineering conglomerate Honeywell International (NYSE:HON) at both the U.S. International Trade Commission and in the Eastern District of Texas. Code, which is seeking an injunction on the importation and sale of barcode readers marketed by Honeywell for the healthcare industry, alleges that Honeywell engaged in a campaign to mislead distributors about the legitimacy of Code’s barcode reader products as part of an effort to monopolize that market.

Trial lawyers Benjamin Levi and Rett Snotherly recently announced the formation of Levi & Snotherly, PLLC, a new law firm focused on Section 337 practice before the U.S. International Trade Commission. The two combine decades of experience in ITC matters, including five years together in the ITC’s Office of Unfair Import Investigations.

With venue for patent infringement actions under § 1400(b) narrowed after TC Heartland and In re Cray, patent owners could use declaratory judgment (DJ) actions to secure their desired venue because venue in DJ actions is governed by § 1391. The Declaratory Judgment Act provides federal courts with the authority to “declare the rights and other legal relations of any interested party” where an “actual controversy” exists. 28 U.S.C. §§ 2201–02… The ITC offers patent owners yet another venue option outside of § 1400(b).

In late November, the legal dispute between San Diego, CA-based semiconductor developer Qualcomm Inc. (NASDAQ:QCOM) and Cupertino, CA-based consumer tech giant Apple Inc. (NASDAQ:AAPL) over patents covering various electronic device components and features. A series of actions taking place in the Southern District of California shifts the focus of what has been an international squabble over patent infringement and antitrust claims back to American soil.