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Daniel Weinger is an Associate in the firm and is based in our Boston office. His practice involves all phases of patent litigation in Federal District Courts and the International Trade Commission, where he has been actively engaged in evidentiary hearings. He has experience in a variety of technology areas, including computer software, software architecture, GPS, network devices, semiconductors, converged devices, and LED lighting.

On May 17, 2017, the International Trade Commission (ITC) reversed an ALJ’s ruling and found a violation of Section 337 in Certain Air Mattress Systems, Components Thereof and Methods of using the Same (“Certain Air Mattress Systems”), Inv. No. 337-TA-971, due to the importation of certain air mattresses, and components of air mattresses, by the named respondents.  The public version of the Commission opinion has been released and provides future ITC litigants  with guidance regarding the proper allocation of expenses for domestic industry purposes, and how the Commission  views certain types of products for public interest consideration.

Continue Reading ITC Issues Public Commission Opinion Clarifying Methodology for Allocating Domestic Industry Expenses and Issuing Exclusion Order against Product with Medical Applications

Bruno Mars RecordOne living member and the estates of the 1980s funk group, Collage, have filed suit against musicians Mark Ronson and Bruno Mars claiming the duo copied the bass line, guitar riff, and various other elements of Collage’s 1980s work “Young Girls.”  This lawsuit comes on the heels of last year’s controversial verdict out of the Central District of California where a jury found that Pharrell Williams and Robin Thicke’s “Blurred Lines” copied key elements from Marvin Gaye’s “Got to Give It Up.”

See Mintz Levin’s Trademark & Copyright Matters blog for our full write-up on the “Uptown Funk” case and how the “Blurred Line” decision may impact it.

On October 19, 2016, the ITC instituted Investigation No. 1025, based on a complaint filed on May 26, 2016, by Silicon Genesis Corporation (SiGen), against Soitec, S.A. (Soitec).  As part of the institution, the ITC ordered that the ALJ issue an early initial determination regarding whether SiGen “has satisfied the economic prong of the domestic industry requirement.”  See 81 F.R. 73419 (Notice of Institution of Inv. No. 1025) (Oct. 25, 2016).  This is now the fourth time the ITC has ordered the 100-Day program in an investigation, and in this case it appears that previous behavior by the complainant SiGen contributed to the order.

Continue Reading ITC Institutes “Certain Silicon-on-Insulator Wafers” Investigation – Only the Fourth 100-Day Pilot Program Ordered

Several months ago, we were struck with the question of whether, as counsel for a patent owner at the ITC, our clients’ case would benefit from a Markman hearing.  Claim construction during an ITC investigation was routinely performed as part of the evidentiary hearing in an investigation, rather than as part of earlier Markman proceedings.  This has now changed.  Recently appointed ALJs at the ITC have been trending towards conducting Markman hearings rather than pushing claim construction to the final hearing.  This new trend has resulted in additional litigation strategy considerations at the ITC, regarding whether Markman hearings are beneficial, or detrimental, and what affect the increase in Markman hearings have on investigations.

Claim construction will occur at some point in any patent-based ITC investigation.  From a patent owner’s perspective, the question is whether having a Markman hearing at the ITC will be helpful.  A negative claim construction order, especially early in the investigation, may imperil the ability to reach the evidentiary hearing as an adverse ruling could result in summary determination.  In contrast, a favorable claim construction order could result in added pressure for settlement.

Continue Reading Markman at the ITC and Its Effect on an Investigation

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 August 22, 2016, Administrative Law Judge David Shaw of the International Trade Commission (“ITC” or “Commission”) issued his final initial determination (“the ID”) in Certain Portable Electronic Devices and Components Thereof, Inv. No. 337-TA-994. The ID invalidated all of the asserted claims for lack of patentable subject matter under 35 U.S.C. § 101, and terminated the investigation.  This decision resulted from an early evidentiary hearing, conducted by order of the Commission within 100 days of its Notice of Institution under its “pilot program.”  81 Fed. Reg. 29307 (May 11, 2016).

The ID has implications related both to the implementation of the 100 day pilot program and continually developing Alice jurisprudence.  For a more in depth discussion of those issues, please see our client alert here.

Continue Reading A Novel Outcome at the International Trade Commission: Patent Claims Invalidated Under Alice in the 100-Day Pilot Program

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

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