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Aarti Shah is a Member in the firm’s Washington, DC office whose practice focuses on patent litigation. Prior to joining Mintz Levin, she served as a senior investigative attorney in the US International Trade Commission and as lead counsel for the federal government in trials and investigations covering trade secrets, trademarks, and electrical, computer, mechanical, and chemical patents. In addition, Aarti has litigated cases in district court and before the Court of Appeals for the Federal Circuit. She also has experience providing counsel on patent portfolios and infringement opinions.

The Patent Trial and Appeal Board (“PTAB”) issued Final Written Decisions regarding Cisco’s U.S. Patent Nos. 6,377,577 (the “’577 Patent”) and 7,023,853 (the “’853 Patent”) on May 25, 2017 and U.S. Patent No. 7,224,668 (the “’668 Patent”) on June 1, 2017.  The PTAB found the ’577 and ’668 Patents invalid but upheld the validity of the ’853 Patent.  The Inter Partes Review (“IPR”) proceedings were brought by Arista Networks in retaliation to Cisco’s accusations of infringement brought in multiple venues, including at the U.S. International Trade Commission (“ITC”), which had just a few weeks earlier upheld the validity of these very same patents and determined that Arista infringed the ’577 and ’668 Patents, and issued exclusion and cease and desist orders accordingly.  Since the IPR decisions issued Arista has filed a petition asking the ITC to suspend its limited exclusion order regarding the ’577 Patent based on the PTAB’s decision and is expected to file a similar request with respect to the ’668 Patent.  On the other side, Cisco plans to appeal the PTAB’s decisions to the Federal Circuit.  The uncertainty created by these inconsistent outcomes is an issue for patent owners, and it will be interesting to see how these cases are resolved.  In addition, this case shows that even though the ITC does not stay its investigations for IPRs, IPRs may still impact ITC proceedings.

Continue Reading PTAB Invalidates Two Cisco Patents Found Valid and Infringed at the ITC

In a newly issued statement, the U.S. International Trade Commission once again made it clear that standard-essential patents may be asserted at the ITC and will be treated no differently than other patents asserted in a Section 337 investigation. Issues of standard essentiality will be addressed – under commission’s statutory obligation to assess an exclusion order’s impact on the public interest – only after it has been determined that a violation of the statute has occurred. Such issues, therefore, are not appropriate for resolution through the ITC’s Early Disposition Pilot Program.

Read more on the team’s insights into the SEPs at the ITC issue in this Law 360 article (republished with permission).

The owners of popular brands, trademarks, and designs have been confronted with a rising tide of counterfeits and knockoffs. The products may be straight counterfeits – products using the trademarked brand names and identical to the legitimate product – or knockoffs, which copy a designer or brand’s style, trade dress, or patented designs without containing logos or brand names but are still so confusingly similar that consumers assume that they are branded products. To fight this, brand and trademark owners are turning to new strategies such as actions under the Racketeer Influenced and Corrupt Organizations Act and the Lanham Act, and pulling products from Amazon and other websites.

Read more on the team’s insights into using the ITC to fight counterfeits and knockoffs in this Law 360 article (republished with permission).

The October 2016 issue of Financier Worldwide features our article discussing the ITC’s general exclusion order procedure and how it impacts fighting counterfeit goods.  Though the US International Trade Commission (ITC) is most often thought of in terms of high stakes patent litigation, the issuance of a general exclusion order (GEO) by the ITC has always been a powerful tool for intellectual property owners to fight counterfeits and knockoffs. Word of the benefits of obtaining a GEO seems to have spread as in recent years the numbers of these orders, and the parties seeking them, have been increasing rapidly.

Companies seeking to stop a tide of imported knockoffs often find themselves playing legal whack-a-mole – they spend a great deal of money and time filing repeated cases in the US district courts against the sellers they can identify, but after it all find that the orders they worked so hard to obtain are difficult to enforce against small overseas companies which simply cease their official operations then re-emerge having changed their names, locations or channel of importation.

To read the entire article, please click here.

The deadline has come and gone for the ITC and patentee Align to file petitions for certiorari seeking review by the Supreme Court of the Federal Circuit’s decision in ClearCorrect. On November 10, 2015, a panel of the Federal Circuit found that the ITC does not have jurisdiction to bar digital downloads or imports where there was no physical article to bar from importation.  After the panel decision, the ITC and the patentee Align submitted a petition for rehearing en banc, which was denied on March 31, 2016.  The deadline for further appeal was August 26 and neither the ITC nor Align filed for certiorari.

Continue Reading ITC Declines to File Petition for Certiorari – CAFC Holding that ITC Does Not Have Jurisdiction over Digital Imports Stands

On March 31, 2016, in a blow to the software and entertainment industries, the Federal Circuit denied the International Trade Commission’s (“ITC”) request for a rehearing en banc of the Federal Circuit’s November 10, 2015 decision in ClearCorrect Operating, LLC v. ITC, in which the Federal Circuit found that the ITC’s jurisdiction was limited to “material things” and did not include the ability to bar digital imports.  No. 2014-1527, Slip Op. at 3 (Fed. Cir. Nov. 10, 2015).

Align Technology instituted an ITC investigation in April 2012 claiming that Respondents ClearCorrect Pakistan and ClearCorrect Operating LLC infringed patents relating to technology for repositioning teeth. ClearCorrect made models of the U.S. patients’ teeth which were then scanned and converted into digital data sets, which were then transmitted to Pakistan. In Pakistan the data sets were manipulated and adjusted data sets were sent back to ClearCorrect in the United States.  No physical articles were imported – only a digital data set. In April 2014, the ITC found that ClearCorrect infringed the patents, and issued exclusion and cease and desist orders barring ClearCorrect from importing the data sets.

The case was appealed to the Federal Circuit, and (as we previously discussed here) the panel overturned the Commission’s decision that it had jurisdiction to exclude digital transmissions and items imported digitally. The ITC then petitioned for an en banc rehearing of the case.

Continue Reading Federal Circuit Decides Not to Rehear ClearCorrect Operating, LLC v. ITC, Finding the ITC Does Not Have Jurisdiction over Digital Imports

Apple v SamsungThis week, in Samsung Electronics Co. v. Apple Inc., No. 15-777, the Supreme Court granted Samsung’s petition for certiorari and agreed to hear the case about Apple’s smartphone design patents in its upcoming term.  This will be the first time in over a century that the Supreme Court will hear a design patent case, the most recent case being Dunlap v. Schofield, 152 U.S. 244 (1894), involving certain rugs bearing a patented design.  The Supreme Court’s decision in Samsung v. Apple has the potential to cause a significant shift in the law of damages, reigning in the potential amount of damages for successful patent-owners.  The only question on which the Court granted review is:

Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?

Continue Reading Supreme Court Decides to Hear Samsung v. Apple, Appears Ready to Weigh-In on Patent Damage Calculations

IP_GlobalOn January 27, 2016, the International Trade Commission (ITC) formally requested a rehearing en banc of a November 10, 2015, Federal Circuit panel decision in ClearCorrect Operating, LLC v. ITC. The Federal Circuit’s panel opinion struck a blow to both the ITC and the entertainment and software industries by overturning the ITC’s opinion and finding that the ITC’s jurisdiction was limited to “material things” and did not include the ability to bar digital imports. No. 2014-1527, Slip Op. at 3 (Fed. Cir. Nov. 10, 2015).

In an ITC investigation instituted in April 2012, Align Technology claimed that Respondents ClearCorrect Pakistan and ClearCorrect Operating LLC infringed claims of seven patents relating to a system and methods for repositioning teeth. ClearCorrect made models of the U.S. patients’ teeth which were then scanned and converted into digital data sets, which were then transmitted to Pakistan. In Pakistan the data sets were manipulated, and the adjusted data sets were sent back to ClearCorrect in the United States, where they were used to create the aligners used by the patents via 3D printing. Thus, no physical articles were imported – the only item imported was a digital data set. In April 2014, the ITC found that ClearCorrect infringed the patents, and issued exclusion and cease and desist orders barring ClearCorrect from importing the data sets.

Continue Reading ClearCorrect: ITC and Patentee Align Submit Petitions for Rehearing En Banc, Asking Federal Circuit to Reconsider Whether the ITC Has Jurisdiction Over Digital Imports

On November 10, 2015, the Federal Circuit issued its opinion in ClearCorrect Operating, LLC v. ITC, and struck a blow to both the ITC and the entertainment and software industries by overturning the ITC’s opinion and finding that “[t]he Commission’s decision to expand the scope of its jurisdiction to include electronic transmissions of digital data runs counter to the ‘unambiguously expressed intent of Congress’” and stating that the ITC’s jurisdiction is limited to “material things.” No. 2014-1527, Slip Op. at 3 (Fed. Cir. Nov. 10, 2015).

In an ITC investigation instituted in April 2012, Align Technology claimed that Respondents ClearCorrect Pakistan and ClearCorrect Operating LLC infringed claims of seven patents relating to a system and methods for repositioning teeth.  ClearCorrect made models of the U.S. patients’ teeth which were then scanned and converted into digital data sets, which were then transmitted to Pakistan.  In Pakistan the data sets were manipulated, and the adjusted data sets were sent back to ClearCorrect in the United States, where they were used to create the aligners used by the patents via 3D printing.  Thus, no physical articles were imported – the only item imported was a digital data set.  In April 2014, the ITC found that ClearCorrect infringed the patents, and issued exclusion and cease and desist orders barring ClearCorrect from importing the data sets. The case received a great deal of attention because of its potential implications for the breadth of the ITC’s jurisdiction and the entertainment and software industries. As much of music, software, and film piracy occurs via transmission or download rather than physical importation, the Commission decision gave the entertainment and software industries a powerful tool to fight piracy.  In addition, the opinion reassured patentees that infringers could not bypass ITC jurisdiction by using 3D printing to create products in the United States.  The decision was appealed to the Federal Circuit. Continue Reading Federal Circuit Rules That ITC Does Not Have Jurisdiction Over Digital Imports

On Monday, October 19, 2015, the U.S. Supreme Court granted certiorari to hear two patent infringement cases on the issue of willfulness.  The first case is Stryker Corp. v. Zimmer Inc. and the second one is Halo Elecs., Inc. v. Pulse Elecs., Inc.

The issue of willful patent infringement, which occurs when an infringer acts deliberately and intentionally with knowledge of the patent, is important because a finding of willfulness may lead to an enhanced award of damages. Under 35 U.S.C. § 284 court may award treble damages in a finding of willful infringement.  In deciding whether infringement is willful, the Federal Circuit has established a two-part test that asks whether a patent infringer acted despite “an objectively high likelihood” of infringement while being “subjectively aware of that risk.”  In re Seagate Tech. LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc).  The Supreme Court’s review of these two patent cases may lead to a change of the legal standard in reviewing willfulness, and if the standard is relaxed accused infringers may face the threat of treble damages for patent infringement more often.

The Stryker case involves portable pulsed lavage devices which deliver pressurized irrigation for cleaning wounds and tissue during orthopedic surgery.  In 2010, Stryker asserted three patents against its major competitor Zimmer in the United States District for the Western District of Michigan.  Zimmer was found to willfully infringe all three patents  and the jury awarded $70 million in damages.  The district court then entered a final judgment awarding treble damages for willful infringement for a final judgement of $210 million.  Stryker Corp. v. Zimmer Inc., 2013 U.S. Dist. LEXIS 171817 (W.D. Mich.).  The Federal Circuit reversed the judgment on willfulness in December 2014, finding that the non-infringement and invalidity defenses asserted by Zimmer were not “unreasonable” and thus that the “objective recklessness” prong of the Seagate’s two-part was not satisfied.  Stryker Corp. v. Zimmer, Inc., 774 F.3d 1349 (Fed. Cir. 2014). In Octane Fitness, the Supreme Court held that judges can award attorney’s fees in a case that merely “stands out from others” and rejected the Federal Circuit’s rule that sanctions are warranted only when a case is “objectively baseless” and “brought in subjective bad faith.”  Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749, 1756-57 (2014).  Stryker petitioned the Supreme Court seeking review of the appropriateness of Federal Circuit’s two-part Seagate test in view of the Supreme Court’s decision in Octane Fitness, and the Supreme Court granted certiorari to review this question.  Stryker Corp. v. Zimmer, Inc., 2015 U.S. LEXIS 6727 (U.S. Oct. 19, 2015).

The Halo case involves electronic components used in circuit boards.  Halo owns three patents  that cover surface mount electronic packages containing transformers for mounting on a printed circuit boards.  Pulse designs, manufactures, and sells surface mount electronic packages overseas but its products are incorporated into downstream products of electronics manufacturers like Cisco which are then distributed throughout the world.  Halo asserted patent infringement against Pulse in the United States District Court for the District of Nevada and prevailed in a jury trial with a $1.5 million award.  Halo Elecs., Inc. v. Pulse Eng’g, Inc., 810 F. Supp. 2d 1173, 1205-08 (D. Nev. 2011).  In response to Pulse’s post-trial motion, the district court found that Pulse’s infringement was not willful.  Halo Elecs., Inc. v. Pulse Elecs., Inc., No. 2:07-CV-00331, 2013 WL 2319145, at *14–16 (D. Nev. May 28, 2013).  On appeal, the Federal Circuit affirmed all of the district court’s holdings.  On the willfulness issue, the Federal Circuit reasoned that the objective prong of the Seagate inquiry was not satisfied because Pulse raised a substantial question of the patents’ obviousness and the obviousness defense was not objectively unreasonable. Halo Elecs, Inc. v. Pulse Elecs, Inc., 769 F.3d 1371, 1382-83 (Fed. Cir. 2014).    Halo petitioned the Supreme Court urging the Court to relax the “rigid” test on willfulness in view of the Court’s decision in Octane Fitness.  The Supreme Court granted certiorari in part to review this question and consolidated it with the Stryker petition.  Halo Elecs., Inc. v. Pulse Elecs., Inc., 2015 U.S. LEXIS 6634 (U.S. Oct. 19, 2015).

The issue of what standard should apply to willful infringement is hotly debated and a change in the law could have a large impact on accused infringers.  We will continue to monitor the Supreme Court’s movement on these patent cases.