News & Analysis as of

International Trade Commission (ITC) Patents Intellectual Property Litigation

Sterne, Kessler, Goldstein & Fox P.L.L.C.

The Federal Circuit Expands IP Enforcement Opportunities at the ITC

Last month the Federal Circuit issued a decision in the Lashify case that significantly broadens the opportunity for companies to bring a lawsuit before the U.S. International Trade Commission (“ITC”). The ITC is known for...more

Mintz - Intellectual Property Viewpoints

Regulation, Enforcement, and Associated Challenges: Part II

Given the continued challenges in policing the burgeoning ENDS marketplace, as previously discussed in Part I of this article, in mid-2024 FDA and DOJ announced the establishment of a federal multi-agency task force to combat...more

Pillsbury Winthrop Shaw Pittman LLP

Lashify v ITC: The Federal Circuit Redefines the Domestic Industry Requirement

The Federal Circuit has overturned the U.S. International Trade Commission’s longstanding interpretation of section 337(a)(3)(B). Complainant Lashify, Inc. appealed an adverse decision by the U.S. International Trade...more

McDermott Will & Emery

Fintiv Guidelines for Post-Grant Proceedings Involving Parallel District Court Litigation

On March 24, 2025, the US Patent & Trademark Office (PTO) released new guidance that clarifies application of the Fintiv factors when reviewing validity challenges simultaneously asserted at the Patent Trial & Appeal Board...more

Foley & Lardner LLP

How Should a Licensing Commitment Affect the Availability of Injunctions at the ITC?

Foley & Lardner LLP on

Governed by 19 U.S.C. § 337, the U.S. International Trade Commission (“ITC”) is empowered to investigate unfair acts in the importation of articles into the United States. The ITC can be a powerful forum for owners of U.S....more

Foley & Lardner LLP

Federal Circuit Opens the Door to Additional Domestic Industry Investment: “Ordinary Importer” No Longer

Foley & Lardner LLP on

In its recent decision in Lashify, Inc. v. International Trade Commission, the Federal Circuit opened the door for patent owners to include expanded categories of domestic investment to satisfy the economic prong of the...more

Knobbe Martens

Federal Circuit’s Lashify Decision Expands “Domestic Industry” at the International Trade Commission

Knobbe Martens on

Lashify, Inc. v. International Trade Commission Before: Prost, Taranto, and Chen. Appeal from ITC Investigation. The Federal Circuit expands the economic prong of the domestic-industry analysis to include domestic spending on...more

Vorys, Sater, Seymour and Pease LLP

The Precedent: Federal Circuit Emphasizes that Dollar Amount Spent is Not Determinative of § 337’s Domestic Industry Requirement...

In this edition of The Precedent, we outline the decision in Wuhan Healthgen Biotechnology Corp. v. Int’l Trade Comm’n. The United States Court of Appeals for the Federal Circuit recently emphasized that Section 337’s...more

ArentFox Schiff

Federal Circuit Expands Scope of Activities That Can Establish a ‘Domestic Industry’ Under Section 337

ArentFox Schiff on

On March 5, the US Court of Appeals for the Federal Circuit issued a decision in Lashify, Inc. v. International Trade Commission, No. 23-1245, vacating in part the International Trade Commission’s (ITC) determination that...more

Ropes & Gray LLP

[Podcast] Talkin’ Trade: Section 337 Domestic Industry Shake-Up—Exploring the Lashify Decision

Ropes & Gray LLP on

On this episode of Ropes & Gray's ITC-focused podcast series, Talkin' Trade, IP litigators Matt Rizzolo, Matt Shapiro, and Patrick Lavery discuss a groundbreaking Federal Circuit decision in Lashify v. ITC. This pivotal...more

ArentFox Schiff

USPTO Rescinds Vidal’s 2022 Guidance on PTAB Discretionary Denials

ArentFox Schiff on

On February 28, the US Patent and Trademark Office (USPTO) rescinded former Director Kathi Vidal’s 2022 memorandum on discretionary denials in Patent Trial and Appeal Board (PTAB) post-grant proceedings running parallel to...more

BakerHostetler

Federal Circuit Concludes Sales and Marketing Expenses Are To Be Included In Economic Prong Analysis At The ITC

BakerHostetler on

Last week, the U.S. Court of Appeals for the Federal Circuit lowered barriers that one must overcome to enforce patents at the U.S. International Trade Commission (ITC). The ITC often proves to be an effective forum to...more

Mintz - Intellectual Property Viewpoints

Has There Been A Sea Change in Eligible Domestic Industries at the ITC That Will Last?

For decades, the ITC’s jurisdictional requirement – known as the domestic industry requirement – effectively shut out innovators from availing themselves of the powerful remedies of the forum, in the form of an exclusion...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Section 337 Now Viable for “Mere Importers” After Federal Circuit’s Lashify Decision

For years, the U.S. International Trade Commission maintained that the potent remedies available under Section 337 were unavailable to intellectual property owners considered to be nothing more than “mere importers.” That...more

American Conference Institute (ACI)

[Event] 17th Annual Practitioners' Think Tank on ITC Litigation & Enforcement - March 31st - April 1st, Washington, DC

Examine real-world strategies for tackling the most pressing challenges in ITC practice at ACI’s 17th Annual Practitioners' Think Tank on ITC Litigation & Enforcement. Be in the same room with leading in-house counsel,...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

USPTO Rescinds Memo Addressing PTAB Discretionary Denial Procedures

On Friday, the USPTO rescinded its June 21, 2022, memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (“Fintiv memo”). The USPTO notice makes...more

Fish & Richardson

USPTO Rescinds 2022 Guidance on Discretionary Denials

Fish & Richardson on

On February 28, 2025, the United States Patent and Trademark Office announced that it has rescinded the June 21, 2022, memorandum about discretionary denials in Patent Trial and Appeal Board (PTAB) post-grant proceedings with...more

McDermott Will & Emery

Federal Circuit Polishes § 101’s Abstract Idea Test

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit reversed and remanded a determination by the US International Trade Commission regarding subject matter ineligibility under 35 U.S.C. § 101. The Court concluded that the...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Case: Kroy IP Holdings, LLC v. Groupon Inc.

After an inter partes review finds certain claims of a patent unpatentable, may the patentee assert other claims, immaterially different, in district court without being collaterally estopped? This was the question presented...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2024 Federal Circuit IP Appeals: Summaries of Key 2024 Decisions

2024 brought exciting developments at the Federal Circuit. The court issued its first en banc decision in a patent case in five years in LKQ, which significantly altered the standard for proving obviousness of a design...more

Axinn, Veltrop & Harkrider LLP

Federal Circuit Clarifies That “Quantitatively Small” Investments Can Establish Significant and Substantial Investment in Domestic...

On Friday, Feb. 7, 2025, the Federal Circuit issued a precedential opinion in Wuhan Healthgen Biotech. Corp. v. U.S. Int’l Trade Comm’n, No. 23-1389, 2025 WL 420819 (Fed. Cir. 2025). The three-judge panel, consisting of Chief...more

Pillsbury Winthrop Shaw Pittman LLP

Navigating the PREVAIL Act: Key Impacts on Litigants as It Advances in the Senate

The PREVAIL Act is now subject to debate before the full Senate. The Act will require petitioners to certify standing, two new categories of which were recently added via a manager’s amendment....more

Axinn, Veltrop & Harkrider LLP

Three Takeaways from the Initial Determination at the ITC Regarding Standard Essential Patents in the 1380 Investigation

On January 8, 2025, Administrative Law Judge (ALJ) Cameron Elliot issued a public version of the Initial Determination (ID) in Certain Video Capable Electronic Devices, Inv. No. 337-TA-1380 brought by Complainant Nokia. While...more

Arnall Golden Gregory LLP

AGG Talks: Cross-Border Business Podcast - Episode 20: Mastering ITC Section 337 Investigations

In this episode, Mike Burke, AGG Corporate partner and co-chair of the firm’s International practice, is joined by Andrew Beverina, AGG Litigation & Dispute Resolution and Intellectual Property of counsel and former...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Design Patent Trends at the ITC – Mid-Year Update

Ten Section 337 Investigations were terminated in the first half of 2024. Of those ten investigations, two involved design patents. Although those investigations ended with the Commission issuing no remedial orders (including...more

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