Goodwin Insights May 06, 2019

Most Impactful ALJ Decisions

Violation Based on One Asserted Patent, But Parent Domestic Retailer Not Involved In Importation

In the Matter of CERTAIN LED LIGHTING DEVICES, LED POWER SUPPLIES, AND COMPONENTS THEREOF, Inv. No. 337-TA-1081, Initial Determination (Dec. 19, 2018)

Before: ALJ Lord

Practice Tips and Insights:

A select number of Lowe’s entities were named respondents in this investigation—the parent and one subsidiary. The complaint did not name the Lowe’s subsidiary that sells most accused products in the U.S. As a result, there was no violation even for products that are imported and were found to infringe valid and asserted patents. Complainants should be cautious to name the right corporate entities in their complaints and to quickly amend their complaints if there appears to be a break in the importation chain. Do not take importation for granted.

Holding and Status:

Two of three asserted patents were found to be infringed. None of the three asserted patents were found invalid. There was a violation for one asserted patent, but not the other infringed patent because there was not a showing of importation by a named respondent. Both sides have submitted Petitions for Commission Review.

Case Background:

The 1081 Investigation is based on alleged patent infringement of three patents related to LED lighting devices.  The named respondents asserted standard defenses of non-infringement, invalidity, and no domestic industry.

Additionally, certain Lowe’s entities were named as respondents—Lowe’s Companies, Inc. (LCI) and LG Sourcing, Inc. (LGS). The Lowe’s entities admitted that certain accused products were imported by LGS. However, many accused products were sold by LCI’s other subsidiary, Lowe’s Home Centers (LHC), who was not a named respondent. LCI argued that it was not an importer and it did not “act in concert” with its subsidiaries and, therefore, the importation requirement was not met for any Lowe’s accused products not imported by LGS.

The importation requirement was effectively undisputed for the other named respondents, Feit and Satco.

Notable Disputed Issues and Related Point of Law:

Importation: For the Lowe’s entities, the parent company, LCI, was accused of “acting in concert” with an unnamed subsidiary to import and sell after importation certain accused products. The complainant relied on the Commission’s holding in the 849 Investigation, Certain Rubber Resins and Process for Manufacturing Same to argue that parent companies can be held in violation if they act in concert with importing and/or selling subsidiaries.  Additionally, the complainant argued that the nine factor test from Milgo Elec. Corp. v. United Bus. Commc’ns, Inc., 623 F.2d 645 (10th Cir. 1980) to argue that the U.S. subsidiary was a mere instrumentality of the parent LCI.

Judge Lord found that the complainant failed to meet its burden in showing that the parent acted in concert with the subsidiary or that the subsidiary was a mere instrumentality. Thus, ALJ Lord would not pierce the corporate veil and the importation requirement was not met for the parent company.

Obviousness (motivation to combine): Respondents put forth numerous obviousness combinations against all three asserted patents. For each, ALJ Lord found that the respondents failed to explain away incompatibilities between combined references. ALJ Lord also found that the respondents’ burden for motivation and a reasonable likelihood of success was not met.  As Judge Lord explained: “A general motivation in the lighting industry towards the use of LEDs is not sufficient to explain why a person of ordinary skill in the art would make the specific modifications” respondents were proposing. It is critical that obviousness arguments are supported by more than conclusory statements and motivations.

Domestic Industry (economic prong): A meaningful portion of the complainants’ domestic industry investment was based on a facility that was closing down after the date of complaint. Although post-filing activity is not usually material to the domestic industry inquiry, ALJ Lord found that the plant closing rendered the complainants’ post-filing expenditures and plans to be relevant to her determination. Nevertheless, complainants were able to satisfy the domestic industry requirement with another plant that was not closing.

Non-credible witness testimony: One of complainants’ experts admitted at trial that “he knowingly gave misleading testimony at his April deposition.” As a result, all of his testimony was afforded zero weight and credibility Additionally, other expert opinions that relied on his testimony were equally discredited.

Scope of exclusion order: The respondents argued that the exclusion order should be limited to accused products and accused products only. ALJ Lord was not persuaded by this argument and found that long-standing Commission precedent supports issuing exclusion orders that are commensurate with the scope of the notice of investigation. “Respondents have identified no aspect of section 337’s proscription against violating American intellectual property rights, or of the remedies that may be invoked under the statute, that impinges on any Constitutional protection. The Commission’s traditional remedies for violation comport with the letter of section 337 and the statutory purpose.

ALJ Lord Found That a Prototype of a Machine Incorporating the Features of an Asserted Patent Satisfies the Domestic Industry Even if it Was Not For Sale At The Time of the Complaint

In the Matter of Certain ROAD CONSTRUCTION MACHINES AND COMPONENTS AND COMPONENTS THEREOF, Inv. No. 337-TA-1088, Initial Determination (Feb. 14, 2019)

Before: ALJ Lord

Practice Tips and Insights:

Lack of availability of a product for sale at the time a complaint is filed may not alone be enough to attack the domestic industry requirements. Also, successful complainants seeking a bond during the presidential review must keep in mind that they bear the burden of establishing the appropriate bond amount and must develop the data necessary for such calculation, such as the difference in sales prices between the patented domestic product and the infringing product or evidence of reasonable royalty.

Holding:

ALJ Lord determined a violation of Section 337, in the importation, the sale for importation, and/or the sale within the United States after importation of certain road construction machines and components thereof with respect to one asserted claim.

Case Background:

The Commission instituted this investigation in response to a complaint filed by Caterpillar, Inc., alleging violations of section 337 by Wirtgen GmbH, et al., through infringement of certain claims of U.S. Patent No. 7,140,693 ("the ’693 patent"); U.S. Patent No. 9,045,871 ("the ’871 patent"); and U.S. Patent No. 7,641,419 ("the ’419 patent"). The '871 patent was terminated from the investigation after its asserted claims were found to be invalid under 35 U.S.C. § 101.  Order No. 18 (May 24, 2018). The ’419 patent was terminated after Caterpillar withdrew its allegations with respect to that patent. Order No. 26 (July 5, 2018). Thus, the hearing focused on the ’693 patent.

The technology at issue relates to road milling machines used to remove asphalt and concrete on roads prior to resurfacing efforts.  Provision of a textured surface using milling machines helps with the adherence of a new layer of pavement.

Notable Disputed Issues and Related Points of Law:

Domestic Industry: The record evidence established that the alleged domestic industry products were manufactured by Caterpillar’s affiliate in Italy. Design and development of the product occurred in Caterpillar's facilities at two sites in Minnesota, while software development for the product took place in Peoria, Illinois. Further, four prototype machines were shipped to U.S. customers. Caterpillar contended that customers’ use of the prototypes allowed it to validate its design. Some customers subsequently purchased machines based on the original design. Wirtgen argued, among other things, that Caterpillar could not satisfy the economic prong because the domestic industry product relied upon by Caterpillar did not qualify as an "article" under section 337(a)(3) because it was not sold or available for sale at the time the complaint was filed. Wirtgen thus argued that Caterpillar must therefore establish that it was "in the process of' establishing a domestic industry on the date the complaint was filed.  ALJ Lord disagreed, stating that under the statute, the "article" requirement applies to both an industry in existence and an industry in the process of being established. 19 U.S.C. § 1337(a)(2). Under the Commission’s recent precedent, the ALJ noted, in the context of an industry in the process of being established “the article requirement can be satisfied by an item that is not in the stream of commerce, and may not ever be placed in the stream of commerce.” Citing, Certain Non-Volatile Memory Devices and Prods. Containing the Same ("Non-Volatile Memory Devices"), Inv. No. 337-TA-1046, Comm'n Op. at 41. The ALJ stated that “Wirtgen has not explained why an article would have to be commercialized in order to demonstrate the existence of a domestic industry. In section 337(a)(2), there is only one instance of the word "articles" in reference to a domestic industry that "exists or is in the process of being established." Thus the ALJ rejected the notion that the term "articles protected by the patent" means one thing under the "in the process of being established" clause and something different under the "exists" clause of section 337(a)(2). ALJ Lord concluded that the prototype of an article for sale because it was “a complete machine incorporating the features of the patent and, at the time the complaint was filed, it was being tested by consumers in the real world.” The ALJ added that there is similarly no requirement that articles must be commercialized to satisfy the technical prong. The prototype machine here was not a "hypothetical device," and was in existence and in the market at the time the complaint was filed. To the extent that it was protected by the patent at issue, it satisfied both the economic and technical prong of the domestic industry requirement.

Bonding:

Under 19 U.S.C. 13370)(3), imported articles otherwise subject to remedial orders may continue to be imported under bond during the statutory period of Presidential review. But it remains the complainants’ burden to establish the need for a bond and its amount. Here, the ALJ rejected Caterpillar’s requested bond because it failed to carry its burden to support the requested bond.

Construction of Certain Limitations as “Means-Plus-Function” Doomed Alleged Infringement and Domestic Industry

In the Matter of CERTAIN PORTABLE GAMING CONSOLE SYSTEMS WITH ATTACHABLE HANDHELD CONTROLLERS AND COMPONENTS THEREOF, Inv. No. 337-TA-1111, Order No. 21, Initial Determination (Feb. 14, 2019)

Before: ALJ Shaw

Practice Tips and Insights:

Practitioners should be vigilant when nonce terms are used in claim limitations. Expert testimony is unlikely to outweigh the weight of intrinsic evidence when looking for a structural disclosure of a claimed function. 

Holding:

The ALJ granted the unopposed summary determination motion that there was no violation of Section 337. Under the ALJ’s claim construction, complainant agreed that there was no infringement and that certain claims were rendered invalid, and thus defeating domestic industry.

Case Background:

The Investigation was based upon Gamevice Inc.’s allegations of patent infringement by Nintendo. The two asserted patents generally relate to gaming consoles. As part of its Markman Order, the ALJ found the claim limitations “fastening mechanisms,” “retention member,” “fastening mechanism,” and “a pair of modules” to be means-plus-function terms under 35 U.S.C. 112 (f). Regarding “fastening mechanism” (singular and plural), the ALJ went on to conclude that one of the patents lacked the requisite structural disclosure in its specification to support the claimed function, while the other asserted patent disclosed “a soft draw latch” as the corresponding structure. As to the other two terms, complainant conceded that there would be no infringement given the specific corresponding structure under the ALJ’s claim construction.

Notable Disputed Issues and Related Points of Law:

Claim Construction: The Initial Determination turned entirely on claim construction, and specifically the ALJ’s conclusion that the relevant limitations were all mean-plus-function terms. Although the limitations at issue did not contain the presumptive “means” antecedent, the ALJ nevertheless found the terms were functional in nature. Quoting the Federal Circuit, the ALJ explained that “when making the assessment of whether the limitation in question is a means-plus-function term subject to the strictures of § 112, para. 6, [Federal Circuit] cases have emphasized that the essential inquiry is not merely the presence or absence of the word ‘means’ but whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”

Having determined that the limitations at issue were means-plus-function terms, the ALJ looked at the intrinsic evidence to identify any corresponding structure for the claimed functions. The ALJ noted that expert opinions on the issue must be “viewed with caution” as instructed by the Federal Circuit.

100-Day Proceeding Finds that Claims are Not Contractually Barred and Investigation Will Proceed

In the Matter of CERTAIN MOTORIZED VEHICLES AND COMPONENTS THEREOF, Inv. No. 337-TA-1132, Order No. 18, Initial Determination in 100-day Proceeding (Dec. 21, 2018)

Before: Chief Judge Bullock

Practice Tips and Insights:

100-day proceedings appear to be getting more traction at the Commission. Respondents should consider a targeted request to the Commission if there is a straight-forward case dispositive issue that can be adjudicated within a 100-day proceeding. In this case, the 100-day proceeding did not dispose of the case because, as Judge Bullock concluded the contract at issue was not ambiguous and the claims were not barred.

Holding and Status:

Asserted unfair competition claims are not contractually barred and investigation will proceed.  The Commission determined it will not review Judge Bullocks 100-day ID.  A new procedural schedule has been issued and the case is proceeding on a full track.

Case Background:

The Commission placed the 1132 Investigation into a 100-day proceeding for the limited purpose of determining “whether the complainant is contractually barred from enforcing its intellectual property against the named respondents.”

The 1132 Investigation stems from FCA’s complaint that Mahindra & Mahindra Ltd. (M&M) is importing automobiles with front grille designs that infringe FCA’s trade dress and trademarks. FCA and M&M are parties to a 2009 Agreement wherein FCA consented “to the use and incorporation of the grille design shown in Exhibit A.” Exhibit A to the 2009 Agreement shows a picture of one particular grille design. M&M argued that the 1132 Investigation was contractually impermissible based on this agreement.

Notable Disputed Issues and Related Points of Law:

Contract Interpretation: The accused automobiles include a grille design that is somewhat different than what was pictured in the contract Exhibit A because, according to the complaint????, the accused designs have “significant differences in (1) overall shape, (2) proportions, and (3) design details.” Nevertheless, M&M and the OUII Staff argued that the accused grille design was adapted or inspired from the grille shown in the 2009 Agreement and, therefore, covered by the agreement. Chief Judge Bullock disagreed.

Judge Bullock interpreted the 2009 Agreement under Michigan law, which provides that, if an agreement is clear, then it is interpreted according to its plain sense and meaning; but if it is ambiguous, testimony may be taken to explain ambiguities. Judge Bullock heard testimonial evidence that confirmed his understanding, but ruled that the agreement and pictures are not ambiguous. Judge Bullock also clarified that the agreement’s language—“the use and incorporation of the grille design shown in Exhibit A”—includes no hedge language that could be interpreted to expand the agreement to cover non-pictured grille designs, even if they were adapted or inspired from the illustrated grille.