ITC Section 337 Update - May 2014

by King & Spalding

Federal Circuit Holds That There Is No Per Se Rule That Injunctions Are Not Available For Standard Essential Patents – In an Opinion by Circuit Judge Reyna on April 25, 2014 in Apple Inc. v. Motorola Mobility Inc., Appeal Nos. 12-1548, 12-1549, a Federal Circuit panel comprising Chief Judge Rader and Circuit Judges Prost and Reyna reversed and remanded for trial the summary judgment decisions, following a Daubert hearing, of U.S. Circuit Judge Posner (sitting by designation in the Northern District of Illinois) finding the testimony of both parties’ damages experts was inadmissible and cancelling a planned trial in 2012 on the ground that neither side could prove it was entitled to damages.  The Federal Circuit panel found it was the duty of the jury, not the judge, “to weigh facts, evaluate the correctness of conclusions, impose its own preferred methodology, or judge credibility, including the credibility of one expert over another.”  Id. at 40.  The majority panel also affirmed Judge Posner’s summary judgment decision to bar Motorola from seeking an injunction on a standard essential patent.  However, in a notable part of the majority panel’s Opinion,  the majority panel found that “To the extent that the district court applied a per se rule that injunctions are unavailable for SEPs, it erred.  While Motorola’s FRAND commitments are certainly criteria relevant to its entitlement to an injunction, we see no reason to create, as some amici urge, a separate rule or analytical framework for addressing injunctions for FRAND-committed patents. The framework laid out by the Supreme Court in eBay, as interpreted by subsequent decisions of this court, provides ample strength and flexibility for addressing the unique aspects of FRAND committed patents and industry standards in general.”  Id. at 71.  Chief Judge Rader dissented only on this issue, asserting that there was evidence that Apple may have been unwilling to pay a FRAND rate and Motorola should have been given an opportunity to prove that at trial.  

Respondents Request Sanctions In 892 Investigation Based On Complainant’s Last-Minute Withdrawal Of Complaint – In Certain Point-To-Point Network Communications Devices And Products Containing Same, Inv. No. 337-TA-892, Respondents Toshiba and LG filed a Submission in response to Complainant's motion to withdraw its complaint asking the Commission to sanction Complainant, Straightpath, for its last-minute motion to withdraw.  Toshiba and LG contend that Straighpath is seeking to withdraw its complaint on the eve of trial after forcing them and other third parties to incur substantial defense costs and after coming to the realization that its patents were likely invalid.  In particular, Toshiba and LG ask the ALJ to “state in a precedential termination order that, should Straight Path file a new complaint against Respondents in the future concerning either the same devices accused or the Netflix provided functionality accused, its misconduct in the termination here should be investigated by the commission prior to the institution of any complaint.”  Toshiba and LG also invite the ALJ to consider other sanctions. 

Federal Circuit Grants Rehearing En Banc In Suprema – On April 13, 2014, the Federal Circuit granted the petitions for rehearing en banc filed by the U.S. International Trade Commission and Cross Match Technologies, Inc. in Suprema, Inc. and Mentalix, Inc. v. U.S. Int'l Trade Comm'n et al., Court No. 2012-1170.  As previously reported in prior ITC Section 337 Updates, the Federal Circuit issued a split panel Opinion in Suprema v. ITC, 2013 WL 6510929, Appeal No. 12-1170 (Fed. Cir. December 13, 2013), holding that "an exclusion order based on a violation of 19 U.S.C. §1337(a)(1)(B)(i) may not be predicated on a theory of induced infringement under 35 U.S.C. §271(b) where direct infringement does not occur until after importation of the articles the exclusion order would bar."  We expect that the Federal Circuit will address this issue on en banc review.  The Federal Circuit also denied the petitioners request for panel rehearing, vacated the panel's December 13, 2013 opinion and judgment, and ordered that an en banc briefing schedule will be issued at a later date.

Rhonda Schmidtlein Sworn In As New ITC Commissioner – On April 28, 2014, Rhonda K. Schmidtlein was sworn in as the most recent Commissioner on the U.S. International Trade Commission for the term expiring December 16, 2021.  According to her official biography, Commissioner Schmidtlein served as an expert consultant to the World Bank for the two years immediately prior to her appointment.  From 2005-2011, she served as the Director of the Public Company Accounting Oversight Board.  Before that, Commissioner Schmidtlein served in the General Counsel's office of the United States Trade Representative and as a trial attorney at the United States Department of Justice.  Commissioner Schmidtlein succeeds Commissioner Shara L. Aranoff.

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.

© King & Spalding | Attorney Advertising

Written by:

King & Spalding

King & Spalding on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.