Oral Argument Fails To Shed Light On The Outcome Of Anticipated En Banc Federal Circuit Decision In Suprema – On February 8, oral argument was held before the en banc Federal Circuit in Suprema v. Int’l Trade Comm’n, Case No. 2012-1170. The panel decision in Suprema v. ITC, 742 F.3d 1353, which previously had been vacated by the en banc panel, held "an exclusion order based on a violation of 19 U.S.C. §1337(a)(1)(B)(i) may not be predicated upon a theory of induced infringement where no direct infringement occurs until post-importation." In argument that collectively exceeded the allotted time usually permitted by the Court, counsel for Appellants Suprema and Mentalix argued in support of the vacated panel decision followed by arguments opposing that decision by the Office of General Counsel for Appellee International Trade Commission, counsel for Intervenor Cross Match, and the U.S. Department of Justice. The en banc panel consisted of only 10 Judges, as Judge Moore recused herself because her husband’s law firm is counsel for one of the parties. Questions posed by several of the Judges appeared to show that the en banc court is divided on whether Section 337 covers inducing infringement. Questions signaling the view that Section 337 covers inducing infringement included inquiries into whether Section 337 is a trade statute and whether 35 U.S.C. §271(a) also requires conduct, i.e., importing, making, using, or selling an article, to determine direct infringement. Questions signaling the view that Section 337 does not cover inducing infringement included inquiries as to whether it is important that Section 337 does not mention "use," unlike 35 U.S.C. §271.

Macronix Sanctioned For Discovery Violations In 893 Investigation – In Certain Flash Memory Chips (Inv. No. 337-TA-893), Chief ALJ Bullock issued Order No. 76, dated January 13, 2015, sanctioning respondents Macronix International Co., Ltd., Macronix America, Inc., Macronix Asia Ltd., and Macronix (Hong Kong) Co., Ltd. ("Macronix") under Commission Rule 210.27(g) for providing a misleading and improper response to a request for production. Macronix’s response stated that "no non-privileged, non-immune, relevant documents responsive to [the request] exist," but responsive documents later were produced in another investigation. Macronix was ordered to show cause why it should not be sanctioned. ALJ Bullock noted that Macronix failed to "comprehend the objective impact and unreasonableness of its discovery response saying that no such documents exist" when it argued that Petitioner Spansion LLC "should have known from what materials Macronix did choose to produce that [Spansion] needed to compel the documents . . . that Macronix did not produce." Macronix also argued that its response was accurate because the request sought documents describing two features of certain memory cells, using the term "and," but none of the documents showed both features. ALJ Bullock found this interpretation objectively unreasonable in light of a definition in the request stating that the terms "and" and "or" shall be construed conjunctively. Macronix was ordered to pay the reasonable costs and attorney fees incurred by Spansion in bringing the motion to compel and re-deposing witnesses, and the Staff’s reasonable costs for responding to the motion and attending the depositions.

Barnes & Noble Moves To Dismiss District Court Action Based On ITC Final Determination Of Non-Infringement – On February 4, 2015, Barnes & Noble filed a Motion to Dismiss a patent infringement action filed by Technology Property Limited ("TPL") in the U.S. District Court for the Northern District of California because the ITC already ruled that Barnes & Noble did not infringe the same patent in Certain Wireless Consumer Electronics and Components Thereof, Inv. No. 337-TA-853. TPL initiated the district court and ITC actions simultaneously but stayed the district court action pending the outcome of the ITC investigation. The ALJ found, and the Commission affirmed, non-infringement on multiple grounds. TPL did not appeal the ITC decision to the Federal Circuit, rendering the ITC judgment final. The Federal Circuit previously has declined to give ITC decisions res judicata or preclusive effect, holding that other tribunals are entitled to adjudicate issues such as infringement, validity, and unenforceability under their original and exclusive jurisdiction found in 28 U.S.C. § 1338. See, e.g., Texas Instruments v. Cypress Semiconductor, 90 F.3d 1558 (Fed. Cir. 1996). Barnes & Noble argues that TPL’s district court action is barred by the doctrine of Kessler v. Eldred, 206 U.S. 287 (1907), which Barnes & Noble argues "instructs that a finding of non-infringement precludes relitigation even where that finding would not be the basis for res judicata or collateral estoppel." Barnes & Noble notes that the doctrine allows "‘an adjudged non-infringer to avoid repeated harassment for continuing its business as usual postfinal judgment in a patent action where circumstances justify that result,’" citing, Brain Life v. Elekta, 746 F.3d 1045, 1056 (Fed. Cir. 2014). ITC Section 337 Update will monitor the outcome of Barnes & Nobles’ motion.

Commission Issues Final Determination In Multiple Mode Outdoor Grills Finding Violation Against Certain Respondents And Exonerating Others – On February 3, 2015, the Commission issued its final determination in Certain Multiple Mode Outdoor Grills, Inv. No. 337-TA-895, in which it found a violation of Section 337 as to Respondents Brinkmann Corporation ("Brinkmann"); Outdoor Leisure Products, Inc. ("OLP"); Dongguan Kingsun Enterprises Co., Ltd. ("Kingsun"); Academy, Ltd. ("Academy"); and Ningbo Huige Outdoor Products, Co., Ltd. ("Huige"). The Commission, however, found that respondents Char-Broil LLC ("Char-Broil") and Zhejiang Fudeer Electric Appliance Company ("Fudeer") did not violate Section 337. (In the interests of full disclosure, King & Spalding represented respondents Char-Broil and Fudeer in the -895 investigation). The Complainants, A&J Manufacturing Co., LLC and A&J Manufacturing, Inc., initially alleged that respondents’ combination gas and charcoal barbecue grills infringed three patents -- a utility patent (directed to a "Simultaneous Multiple Cooking Mode Barbecue Grill") and two design patents (directed to a "Pair of Lids for a Dual Grill" and a "Set of Smoke Stacks for a Dual Grill"). Complainants withdrew the design patent claims prior to the evidentiary hearing, which was held during the week of July 14, 2014. At the conclusion of the hearing, the ALJ found that respondents Brinkmann, OLP, Kingsun, Academy, and Huige had infringed the utility patent in violation of Section 337, but that respondents Char-Broil and Fudeer had not infringed the utility patent. The Commission affirmed the ALJ’s Initial Determination and issued limited exclusion orders and cease and desist orders against Brinkmann, OLP, Kingsun, Academy, and Huige, but not Char-Broil or Fudeer. The Commission declined to issue a general exclusion order. The Commission’s final determination starts the 60-day period of Presidential Review of the orders.