European Court of Justice Ruling Adds to Challenges that U.S. Standard-Essential Patent Holders Face on Enforcement

BartkowskiGuest Commentary

by Paul M. Bartkowski, a partner with Adduci, Mastriani & Schaumberg, LLP, with Mike Doman, an associate with the firm.

On July 16, 2015, the European Court of Justice (“ECJ”), in Huawei v. ZTE, clarified the circumstances under which an owner of a standard essential patent (SEP) that is required to license the SEP on fair, reasonable, and non-discriminatory terms (FRAND) can bring a claim for injunctive relief against an alleged infringer. The ruling was highly anticipated because the nature of a SEP holder’s right to enjoin alleged infringers has been a recent topic of debate in both the U.S. and in Europe. A review of the decision reveals that European and American courts analyze FRAND-related issues quite differently. Continue reading

Federal Circuit Reaffirms International Trade Commission’s Authority Over Induced Patent Infringement

Kaminski_Jeffri_LRFeatured Expert Contributor – Intellectual Property (Patents)

Jeffri A. Kaminski, Venable LLP

The U.S. Court of Appeals for the Federal Circuit sitting en banc has reaffirmed the International Trade Commission’s (ITC) longstanding authority for remedying inducement infringement. The ITC authority was called into question, and in fact overruled, by an earlier panel decision in the same case. The court sitting en banc in Suprema v. ITC voted 6-4 to overturn the panel’s decision limiting the circumstances under which the ITC could issue an exclusion order for induced infringement. The en banc decision closes a loophole for induced infringement and provides certainty on the issue.

By way of background, Suprema is company that manufactures fingerprint scanners in Korea. The fingerprint scanners are imported and sold to Mentalix in the U.S. Mentalix writes custom software for controlling the scanners. It then bundles its software with the scanners and resells the bundled product within the U.S. Continue reading

A Case with Teeth?: Federal Circuit to Review International Trade Commission’s Jurisdiction over Digital “Articles”

ITCNext Tuesday, August 11, the U.S. Court of Appeals for the Federal Circuit will hear oral argument in ClearCorrect Operating, LLC v. International Trade Commission, a case that nominally involves a cease-and-desist order the International Trade Commission (ITC) imposed on a data file that contained a digital model of crooked teeth. As numerous amici in the case assert, however, the court’s ultimate decision could have significance well beyond digital teeth images; it could establish standards for the Commission’s jurisdiction over international trade in digitalized goods.

The case followed a routine path from ITC to the Federal Circuit. Align Technology complained to ITC that ClearCorrect was importing goods into the United States that infringed Align’s patents. Both companies create patient-specific “aligners” to correct crooked teeth. ClearCorrect’s facility in Texas would download data of a model created in Pakistan from a foreign-based server, and then use that data to create the aligner. Align alleged that the data “imported” from the foreign server constituted an “article,” under 19 U.S.C. § 1337, over which ITC had jurisdiction. Continue reading

First Use of ITC Pilot Program Leads to Stay of Sec. 337 Case for Lack of Domestic Industry

204Guest Commentary

by Alexander W. Koff, a partner in the Baltimore office of the law firm Whiteford, Taylor & Preston, LLP whose practice includes representing complainants and respondents before the ITC in Section 337 investigations.

Section 337 is codified at 19 U.S.C. § 1337.  It provides a powerful trade remedy that helps to prevent, among other things, the infringement of a valid U.S. patent right.  Recognizing this, companies are flocking to file Section 337 cases at the U.S. International Trade Commission (“USITC” or “Commission”).

The rise in Section 337 cases is due in no small part to the distinct advantages it offers.  Compared to federal district court, Section 337 cases are decided by judges who specialize in intellectual property and unfair competition matters.  Exclusion orders preventing the importation of infringing products into the United States, a key Section 337 remedy, is enforced directly by U.S. Customs and Border Protection.  By contrast a winning plaintiff in federal court must enforce the award herself.

Perhaps most important, however, is that results can be obtained in relatively quick fashion.  A Section 337 case typically may take 14 to 16 months, whereas a similar federal court case takes two to three years.  In short, the USITC works hard to be an expeditious forum for parties.  The recent decision in Inv. No. 337-TA-874, Certain Products Having Laminated Packaging, Laminated Packaging, and Components Thereof (“the 874 investigation”) underscores this effort.

On February 20, 2013, Lamina Packaging Innovations, LLC of Longview, Texas (a popular patent-licensing company outpost) filed a Section 337 complaint with the ITC.  Lamina’s complaint alleges that some 15 respondents who  make or use products with laminated packaging, including certain alcoholic beverages, electronics, personal healthcare products and toy products, are infringing two patents that provide for more environmentally-friendly packaging.  Continue reading

Federal Circuit Affirms ITC’s Determination on Sec. 337 Domestic Industry Litigation Expenses

ItoGuest Commentary

by Emi Ito Ortiz, Adduci, Mastriani & Schaumberg, L.L.P.

On May 13, 2013, in Motiva, LLC v. U.S. Int’l Trade Comm’n, No. 12-1252 (Fed. Cir. May 13, 2013), the Federal Circuit affirmed the International Trade Commission’s determination that a complainant failed to satisfy the domestic industry requirement of Section 337 based on litigation expenses allegedly related to licensing.  The case was an appeal from ITC Investigation No. 337-TA-743, Certain Video Game Systems and Controllers.  Section 337 requires a complainant to prove it has “an industry in the United States, relating to the articles protected by the patent . . .  [that] exists or is in the process of being established.”  19 U.S.C. § 1337(a)(2).  Such an industry can be based, inter alia, on a substantial investment in exploitation of the patent through licensing.  See 19 U.S.C. § 1337(a)(3)(C).  In Motiva, the Federal Circuit agreed with the ITC that litigation expenses can count towards the establishment of a domestic industry only if the litigation encourages the adoption and development of articles that incorporate the asserted patents.

Underlying Investigation.  In the underlying investigation, Motiva accused Nintendo of violating Section 337 by importing, selling for importation, or selling after importation its Wii game system, which allegedly violated two Motiva patents.  Nintendo asserted that Motiva had no domestic industry because it did not have commercialized products incorporating the asserted patents nor activities aimed at creating such products.  Instead, Motiva’s sole activity relating to the patents at issue was litigation against Nintendo, which was insufficient to establish a domestic industry.  The ITC sided with Nintendo, finding no domestic industry. Continue reading