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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

Over the course of the past year, there have been two notable decisions issued by the Federal Circuit and the International Trade Commission that impact the scope and nature of the remedies available for the infringement of standard-essential patents (SEPs), and as a result, continue to shape the incentives of technology innovators to contribute their patented inventions to standards-setting bodies.

On December 3, 2015, the Federal Circuit issued its much-awaited decision in Commonwealth Scientific and Industrial Research Organization (CSIRO) v. Cisco Systems, Inc., providing meaningful guidance on a number of open questions pertaining to the calculation of damages for the infringement of SEPs.  In Certain Industrial Control System Software, Systems Using Same, and Components Thereof, Inv. No. 337-TA-1020 (the 1020 Investigation), the Commission was asked to invoke the Early Disposition Pilot Program to direct the presiding Administrative Law Judge to determine whether the asserted patents are standard-essential and therefore subject to mandatory licensing obligations.

To read the additional details about these decisions and their impact, please click here.

Trade secret theft is a growing threat to American businesses. One obstacle to addressing misappropriation through a lawsuit can be a lack of direct evidence of theft. For example, if an employee leaves his company to work for a competitor and, some months later, the competitor comes out with a product similar to that of the original employer with features previously unique to the original product, it might be inferred that the employee improperly took trade secret information to the competition. A decision in the U.S. International Trade Commission (ITC) this past summer suggests that these facts, without more compelling evidence, may be insufficient to support a finding of trade secret misappropriation. The decision is an important reminder to all trade secret owners to develop a comprehensive trade secret management plan that tracks a company’s trade secrets and who has access to them so that theft can be documented and used in judicial actions, if necessary.

In August 2015, the ITC instituted an investigation based on allegations by Jawbone that Fitbit misappropriated 154 Jawbone trade secrets through the recruitment of a former Jawbone employee. The trade secrets at issue generally relate to the manufacturing and testing of Jawbone wrist worn activity monitors that track a user’s activity and the number of calories the user has expended.

Continue Reading Jawbone Fails to Prove Trade Secret Misappropriation by Fitbit at the ITC

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

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.

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

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

As 2016 begins and IP strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2015.  According to the many readers of Global IP Matters, hot topics included navigating the waters of U.S. patent prosecution, analyzing Federal Circuit appeals from the International Trade Commission, and handling Japanese patent oppositions.

Here are 2015’s top 5 most popular blog posts at Global IP Matters:

  1. RCEs and the New USPTO Patent Term Adjustment Rules – This post discusses U.S. Patent and Trademark Office (USPTO) rules for Patent Term Adjustment for patents where a request for continued examination (RCE) was filed during prosecution. In general, the first new rule, effective January 9, 2015, provides that applicants are entitled to B-Delay between allowance and issuance, and the second new rule, effective March 10, 2015, creates a new type of applicant delay when an RCE is filed after allowance.
  1. Suprema v. ITC: En Banc Federal Circuit Overturns Panel Decision, Finds ITC Has Jurisdiction Over Induced Infringement of Method Claims – This decision is particularly important for cases involving the software and high tech industries, which often rely heavily on induced infringement allegations. This blog post provides a detailed breakdown of the Federal Circuit’s opinion.
  1. Prepare for the Japanese Patent Opposition System Coming Soon – In advance of Japanese Patent Act revisions effective May 14, 2015, this post provided an overview of the changes and indicated how parties may wish to begin preparing and considering being more aggressive in monitoring competitors’ Japanese patent applications and allocating resources to file oppositions in Japan.
  1. Understanding Post-AIA Power of Attorney Procedures – Although the America Invents Act (AIA) implemented changes affecting Powers of Attorney in U.S. patent applications on September 16, 2012, pre-AIA Powers of Attorney are still relevant for many pending applications filed before that date. This post discusses in simple terms how Power of Attorney can be properly established before the USPTO in pre-AIA and post-AIA cases.
  1. ClearCorrect v. ITC: Federal Circuit Hears Argument in Case Which Will Decide Whether ITC Has Jurisdiction Over Digital ImportsClearCorrect v. International Trade Commission decided whether the ITC has power to exclude intangible items imported digitally rather than physically. This post summarizes the case’s intense oral arguments. (Global IP Matters later covered the case’s decision that overturned the ITC’s opinion.)