ITC Section 337 Update – November 18, 2013

by King & Spalding
Contact

Commission To Review FRAND Issues In 837 Investigation – In one of the Commission’s first reviews of whether to issue an exclusion order involving a standard essential patent (“SEP”) since the President’s disapproval in the 794 Investigation on August 3rd, the Commission issued a Notice on October 23 that it has determined to review in its entirety an Initial Determination that Funai’s accused products infringe one non-essential LSI patent and do not infringe three LSI SEPs in Certain Audiovisual Components, Inv. No. 337-TA-837 (“the 837 Investigation”).  The Commission requested the parties (also including respondent Realtek) to brief, inter alia, the public interest factors, including the FRAND-encumbered nature of the declared SEPs, the obligations between LSI and standard-setting organizations, the history of the license negotiations between LSI and Funai/Realtek, a summary of all licenses to the SEPs, the value of each SEP, the specific licensing terms for the SEPS that each party believes is fair and non-discriminatory and any evidence of any party constructively refusing to negotiate a license.  In the August 3rd Letter addressing the 794 Investigation, USTR underscored that the White House “will look for these elements in any future decisions involving FRAND-encumbered SEPs.”  Whether the Commission ultimately issues an exclusion order in the 837 Investigation is also of interest in view of a May 20 Order in Realtek  v. LSI, C-12-03451 (N.D. Cal.), barring LSI from enforcing any Commission import ban as an improper “attempt to gain leverage in future licensing negotiations.”

Denial Of Petition For Rehearing En Banc To Address Change In Law Of Induced Infringement – On October 25, a sharply divided Federal Circuit denied a combined petition for panel rehearing and rehearing en banc of a split panel Opinion vacating and remanding a district court’s finding of inducement to infringe in Commil USA v. Cisco Systems, 2012-1045.  The original Federal Circuit panel determined that the district court erroneously precluded Cisco from presenting evidence of its good-faith belief of invalidity to show that it lacked the requisite intent to induce infringement.  The panel found that “[i]t is axiomatic that one cannot infringe an invalid patent” and that “there is no principled distinction between a good faith belief of invalidity and a good faith belief of non-infringement for the purpose of whether a defendant possessed the specific intent to induce infringement.”  In a First Dissenting Opinion, Judge Reyna, joined by Chief Judge Rader, and Judges Newman, Lourie, and Wallach, argued that the original panel “established a substantive, precedential change in patent law” by holding that an accused inducer’s good-faith belief of invalidity may negate the requisite intent for induced infringement.  In a Second Dissenting Opinion, Judge Newman, joined by Chief Judge Rader, and Judges Reyna, and Wallach, argued the “new rule of law whereby an adjudged inducer of infringement is absolved of liability” based on a “good faith belief” of patent invalidity, is contrary to Federal Circuit precedent that can only be changed by an en banc court. 

Commission Announces Addition Of New Commissioner, General Counsel And OUII Director – On October 18, F. Scott Kieff was sworn in as a Commissioner for a term extending through June 16, 2020.  An Illinois Republican, Kieff has held professorships at the George Washington University Law School in Washington, DC and Washington University in Saint Louis; was a visiting professor in the law schools at Northwestern, Chicago, and Stanford; was a faculty member of the Munich Intellectual Property Law Center at the Max Planck Institute; and was a faculty fellow in the Olin Program on Law and Economics at Harvard.  Commissioner Kieff also served in multiple capacities at the Stanford University Hoover Institution.  Before entering academia, Commissioner Kieff practiced law for over six years as a trial lawyer and patent lawyer and was Law Clerk to U.S. Circuit Judge Giles S. Rich.  The Commission also announced the appointment of Dominic L. Bianchi as General Counsel and Margaret D. Macdonald as Director of the Office of Unfair Import Investigations (“OUII”).  Mr. Bianchi previously served as Acting General Counsel and several other roles at the ITC and in the Office of U.S. Trade Representative, and practiced trade law in private practice.  Prior to joining the ITC, Ms. Macdonald represented clients in intellectual property matters in both U.S. District Court and the ITC.

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
Contact
more
less

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):
hide

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.

Security

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 info@jdsupra.com. 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: info@jdsupra.com.

- 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.