ITC Section 337 Update - April 15, 2013

by King & Spalding

Commission Notice In 874 Investigation Directing Early Determination Whether NPE Complainant Satisfied Domestic Industry Requirement – On March 22, 2013, the Commission issued a Notice instituting Certain Products Having Laminated Packaging, Laminated Packaging, And Components Thereof, Inv. No. 337-TA-874 (“the 874 Investigation”).  Unlike the typical Notice of Investigation, the Notice in the 874 Investigation directed the Administrative Law Judge (“ALJ”) to issue an early decision on whether the Complainant has satisfied the economic prong of the domestic industry requirement by initial determination (“ID”) “within 100 days of institution”, subject to a limited extension of the ID for good cause.”  Because the Complainant in this investigation is a nonpracticing entity (“NPE”), there has been speculation that the Commission may be taking a hardline now with all NPEs who file a Section 337 Complaint and requiring them to prove their domestic industry before addressing the remaining merits of the investigation.  However, this may alternatively simply be a more limited reaction by the Commission to the Amended Complaint that initially did not allege that the asserted domestic industry was based on money spent on a licensing program in the United States, and subsequently was amended after considering OUII’s comments during the 30-day preinstitution period.  This is not the first time the Commission has directed the ALJ to consider an early motion for summary determination based on allegations in a Complaint.  See, e.g., Certain Products And Pharmaceutical Compositions Containing Recombinant Human Erythropoietin, Inv. No. 337-TA-568 (Notice of Investigation). 

U.S. Court Of International Trade Expands Role Of Customs’ Enforcement Of Section 337 Exclusion Orders And Renders Substantive Decision On Patent Claim Construction And Infringement; Customs Appeals Decision To The Federal Circuit – The recent Decision of the U.S. Court of International Trade (“CIT”) in Corning Gilbert Inc. v. United States could mark a watershed for the enforcement of exclusion orders issued by the U.S. International Trade Commission (“ITC”) under Section 337 of the Tariff Act of 1930.  If affirmed on appeal, the decision will significantly expand the role of U.S. Customs and Border Protection (“CBP”) in the enforcement of exclusion orders issued by the ITC.  The decision also will confirm that the CIT provides importers with an avenue for judicial review of such enforcement decisions, including making substantive patent claim construction and infringement determinations.  Customs appealed the decision to the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) on March 29, 2013, and a final decision from the Federal Circuit is expected early next year.  Click Here for an analysis of the case.

Commission Target Date Extended For FRAND Determination In 794 Investigation Until May 31, 2013 – On March 13, 2013, the Commission issued a Notice extending for the second time the target date until May 31, 2013 for its Determination in Certain Electronic Devices, Including Wireless Communication Devices, Portable Music And Data Processing Devices, And Tablet Computers, Inv. No. 337-TA-794 (“the ’794 Investigation”).  The Commission reviewed the final initial determination of the Administrative Law Judge finding no violation of Section 337 in its entirety, including, inter alia, on the assertion of FRAND-encumbered patents.  The Commission’s Notice included a request for additional briefing due by April 3, 2013 and Reply submissions due by April 10, 2013 on remedy and public interest issues.  We note that in its Response filed on April 3, OUII informed the Commission that an import ban on certain models of Apple’s iPhone and iPad based on alleged infringement of Samsung’s ’348 patent would not harm the public interest.  OUII further proposed that the Commission could limit the impacts on U.S. consumers by delaying the effective date of the exclusion order.  In addition, we further note that Commissioner Shara L. Aranoff issued a Dissenting Memorandum on March 13, 2013 with respect to the Commission’s request for additional written submissions on the public interest issues, asserting that the parties, and the public, have already been afforded the opportunity to present evidence and argument on such issues.  We shall keep you apprised of further developments in this investigation. 

Administrative Law Judges Pender And Rogers Issue Ground Rules Requiring Mandatory Disclosures – Administrative Law Judge (“ALJ”) Pender was the first ALJ to require certain Mandatory Disclosures in his Ground Rules in Certain Electronic Devices, Including Mobile Phones and Tablet Computers, and Components Thereof, Inv. No. 337-TA-847, Order. No. 4, issued on September 4, 2012.  The Mandatory Disclosures, which have been issued in all of ALJ Pender’s Ground Rules following the -847 investigation, are similar to the Initial Disclosure requirement of Federal Rule of Civil Procedure 26 and infringement and validity contentions requirements of Local Rules of many federal district courts.  ALJ Rogers is now following suit; the Ground Rules issued in Certain Radio Frequency Identification Products and Components Thereof, Inv. No. 337-TA-875, Order No. 2 (March 26, 2013) contain Mandatory Disclosures identical to those in ALJ Pender’s Ground Rules.  The Ground Rules of ALJs Pender and Rogers now require, inter alia, the following Mandatory Disclosures, each requiring accompanying supporting documentation, by dates set forth in the procedural schedule:  (i) priority date and dates of conception/reduction to practice for each asserted patent; (ii) identification of products within the scope of the Notice of Investigation; (iii) domestic industry contentions; (iv) identification of asserted claims and infringement contentions; and (v) invalidity contentions.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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