Goodwin Insights July 03, 2019

Most Impactful ALJ Decisions

Initial Determination Recommending a General Exclusion Order Related to a Complaint Naming Only Eight (Defaulting) Respondents

In the Matter of CERTAIN FULL-CAPTURE ARROW RESTS AND COMPONENTS THEREOF, Inv. No. 337-TA-1117, Initial Determination (March 19, 2019)

Before: Chief ALJ Charles E. Bullock

Practice Tips and Insights:

Complaint identified only eight named Respondents and could not identify all sources of accused products imported into the United States. Nevertheless, the ALJ agreed with Complainant’s, request for a general exclusion order (GEO) and recommended a GEO. Complainant produced evidence of several other sources of infringing products online, general state of counterfeiting in the industry at issue, and ways entities avoided detection, made easier by small size and interchangeability of the accused products. That all of the Respondents defaulted in responding to the complaint helped as well.  The takeaway from this case is that even when only a few respondents can be identified, Complainants should consider requesting a GEO, if they can muster sufficient evidence and make compelling arguments to show a widespread pattern of violation, likely evasion of a limited protection order, and difficulty in identifying the source of infringing products.

Holding and Status:

ALJ found violation of Section 337 as to the asserted patent and recommended as remedy a GEO encompassing the infringing products.

Case Background:

The 1117 Investigation is based on alleged infringement of a patent generally related to archery equipment, and more particularly, to an arrow rest.  All eight respondents – Chinese entities – were found in default for not responding to the complaint. As a result, arguments and evidence regarding infringement and domestic industry were largely undisputed.

Notable Issues and Related Points of Law:

General Exclusion Order: The complainant requested a GEO, contending that the eight named respondents were “just tip of a large and growing iceberg.” It argued that enforcement “is difficult, if not impossible, as manufacturers may simply provide their infringing products to resellers, who in turn import the products into the United States.” It further argued that these transactions “are difficult to identify because the selling and importing entities frequently hide their identities and the locations from which [the infringing] products ship.”

As evidence for widespread pattern of violation, the complainant including the following evidence:

  • Numerous other sources of infringing arrow rests were available for purchase online, including over 100 China-based entities offering and selling infringing arrow vests for importation into the United States
  • Search performed on Alibaba.com uncovered at least sixty potentially infringing products from various unidentified overseas sellers, which were available to U.S. customers.Majority of listings were for products from China and used fictitious seller names
  • Current state of counterfeiting facing the archery and bowhunting industry, including:
    • Speech addressing manufacturing representatives at the annual Archery Trade Association (ATA) Trade Show by the Deputy Director of the National Intellectual Property Rights Coordination Center, who described counterfeiters as “skilled criminals whose imitations mimic authentic products and their packaging.”
    • Statement by former ATA CEO/President Jay McAninch that safety is the industry’s biggest concern: “When you have people drawing counterfeit bows to shoot counterfeit arrows and broadheads from treestands made from inferior metals, something is bound to give at the worst possible time. It not only puts people at risk, but it increases the chances of wounding losses when arrows don’t fly straight or broadheads break on impact.”
    • Counterfeit products are often shipped directly to homes or businesses as gifts, and “counterfeiters pay no federal excise taxes” as compared to legitimate manufacturers who pay “up to an 11 percent tax on the sale.”

Reviewing this evidence, ALJ Bullock agreed with complainant that there was a widespread pattern of violation, and identifying the source of the infringing products would be difficult, if not impossible. ALJ Bullock stressed that while the complainant has attempted to identify sources of infringing counterfeits, it is impossible to identify all sources given the anonymity with which counterfeiters conduct business through online retailers.

The Complainant also submitted evidence to show a limited exclusion order would likely be subject to immediate evasion, as follows, because many sales are made via the Internet making it difficult to gain information about the entities selling the infringing/counterfeit products:

  • On two separate occasions, the complainant purchased an infringing product from an online seller and the product received was manufactured by an entity who was the subject of a prior investigation and whose products were excluded from importation into the United States by a limited exclusion order
  • Defaulting Respondents and other entities renamed their companies, hid behind anonymous seller profiles, or sold to other companies who then imported their infringing products into the United States under a different name – all to avoid detection
  • The small size and interchangeability of the accused products made it easy for foreign manufacturers and distributors to transfer product between sellers, thereby evading enforcement efforts
  • Defaulting Respondents ignored proceedings, were found in default, suggesting that they would not abide by the terms of any limited exclusion order the Commission may impose.

Ultimately, ALJ Bullock found that a GEO is the appropriate remedy.

Claims of Privilege Waived for Subsequent Production Because Respondent Failed to Implement New Review Procedures After Issuing Claw Back Requests

In the Matter of CERTAIN HUMAN MILK OLIGOSACCHARIDES AND METHODS OF PRODUCING THE SAME, Inv. No. 337-TA-1120, Order No. 30 Granting Motion to Compel (Apr. 8, 2019)

Before: ALJ Elliot

Practice Tips and Insights:

The Respondent in this case waived any claims to work-product protection by failing to modify its review process after issuing claw backs for prior productions. Litigants who issue claw backs should review the content of their search strings and consider taking additional steps to protect privileged information before making subsequent productions. Additionally, litigants should be mindful that corrective measures they take after discovering they have inadvertently produced protected material (for example, by manually re-reviewing a production) may subsequently be used as evidence of what preventive measures it would have been reasonable for them to initially take.

Holding and Status:

The Respondent waived any existing work product protection because it failed to take reasonable steps to prevent disclosure.

Case Background:

The complaint alleges violations of section 337 of the Tariff Act of 1930 based on importation into the United States of certain human milk oligosaccharides and methods of producing the same, allegedly infringing patents asserted by Complainant Glycosyn LLC. The Respondent in this case is Jennewein Biotechnologie GmbH.

The instant order grants a motion to compel re-production of documents that Respondent clawed back on the basis of privilege.

Notable Disputed Issues and Related Points of Law:

Use of Search Strings to Review for Privilege (When to Modify): It was unreasonable for the Respondent not to modify the search string it used to review its documents for privilege after discovering that the search string allowed privileged documents to slip through in an earlier production. After it had to issue two claw backs, the Respondent was on notice that it needed to review subsequent productions more carefully. In light of the claw backs, ALJ Elliot found that it would have been reasonable to manually review the 1400 documents in a subsequent review. In reaching this conclusion, the ALJ noted that Respondent had previously been able to review 6000 documents by hand in a previous production, and ultimately reviewed the 1400 documents in the production at issue after discovering they contained privileged information.

Use of Search Strings to Review for Privilege (Substance of Search Strings): ALJ Elliot reviewed the content of the search strings Respondent used in its pre-production review for privilege and found it to be inadequate. Some of the terms the ALJ found should have been included are redacted, but appear to be the names of legal personnel.

Motions to Compel (Time to File): After its initial discovery of inadvertent production of privileged materials, the Respondent engaged in a rolling review of its production, issuing multiple claw-back requests over a period of several months. In light of the lengthy and on-going claw-back process, the ALJ held it was reasonable for the Complainant to “wait for the dust to settle” before challenging the claw backs in a motion to compel.

The Public Interest Does Not Overcome the Commission’s Interest in Excluding Infringing Products from the United States

In the Matter of CERTAIN MOBILE ELECTRONIC DEVICES AND RADIO FREQUENCY AND PROCESSING COMPONENTS THEREOF, Inv. No. 337-TA-1093, Analysis and Findings of Fact With Respect to the Public Interest, and Recommendation On Remedy and Bond (Dec. 19, 2018)

Before: ALJ McNamara

Practice Tips and Insights:

This case related to the now ended feud between Apple and Qualcomm. ALJ McNamara’s findings on the public interest were particularly notable because she reached a different conclusion on whether an exclusion order against iPhones incorporating Intel chipsets would adversely affect the public interest such that an exclusion order should not issue. ALJ McNamara gave less credence than Judge Pender to Intel’s testimony that it would exit the 5G marketplace if an exclusion order issued. Judge McNamara called Intel’s testimony about exiting the 5G market speculative because there were no tangible business plans or SEC filings supporting the position.  Judge Pender (in the 1065 Investigation) was convinced Intel would exit the 5G market.

Holding and Status:

ALJ McNamara found one of the Qualcomm’s non-standard essential patents to be valid and infringed. This ruling related to whether or not the public interest overcame the need for an exclusion order and she determined that recommending an exclusion order was warranted.

Notable Disputed Issues and Related Points of Law:

Of the four public interest factors, Judge McNamara determined that the competitive conditions in the U.S. economy was the only real factor that may weigh against issuing an exclusion order. Qualcomm defined the market for consideration as smartphones generally, whereas Apple defined the relevant marketplace as the market for premium baseband chipsets. Judge McNamara did not make a ruling as to which market was proper for consideration and, instead, determined that under both market definitions the Commission’s interest in protecting Qualcomm’s intellectual property rights was not overcome by the public interest concerns. The ALJ found that it was important that Intel could continue selling other chipsets, Apple and Intel could both continue selling handsets with Intel chips outside the U.S., and that 5G development does not depend upon Intel. She also found that Intel’s claims that it would exit the 5G market in view of an exclusion order were “speculative.”

Importantly, the recommended remedy did include carve-outs: “First, Apple should be permitted to service, that is repair and replace its iPhones in the United States. Second, the Commission should allow a carve out for iPhones and testing platforms used to test and develop 5G to test prototypes or design-arounds in the infringing Apple iPhones.” The carve-outs were proposed at least in part to promote the development of 5G technology.

ALJ Cheney Finds No Violation of Section 337 by the Respondents

In the Matter of CERTAIN subsea telecommunications systems and components thereof, Inv. No. 337-TA-1098, Initial Determination (April 26, 2019)

Before: ALJ Cheney

Practice Tips and Insights:

Complainant must conduct a thorough pre-suit investigation before pulling the 337 trigger.

Holding and Status:

The ALJ determined that there was no violation Section 337.

Case Background:

The Complainants (collectively “Xtera”) filed a complaint alleging violation of Section 337 based upon infringement of five patents. During the course of the investigation, the ALJ issued initial determinations terminating the investigation with respect to some of the asserted claims, and granting the respondents’ summary determination motion based on Xtera’s failure to satisfy the domestic industry with respect to certain other claims. Going into the evidentiary hearing, of the five patents that formed the basis for institution of the investigation, only two remained, U.S. Patent No. 7,860,403 ("the '403 patent") and U.S. Patent No. 8,351,798 ("the '798 Patent"). Complainant asserted infringement of 3 claims of the '798 patent. But as the ALJ found that, at the evidentiary hearing, Complainant failed to produce any evidence to show a violation of Section 337 based on infringement of those claims. Thus the post-hearing ID focused on the allegations regarding the ’403 patent.

The ’403 patent generally relates to optical data transmission in a wavelength division multiplex scheme. The stated objective of the patent is to improve spectral efficiency over traditional formats.

Notable Disputed Issues and Related Points of Law:

The Asserted Patent Was Found Invalid and Not Infringed. There were two claim construction issues of note. First, the Court took up Xtera’s argument that the preamble of one of the asserted claims was limiting. Importantly, the ALJ noted the untimeliness of the argument, observing that Xtera raised the argument “for the first time at the evidentiary hearing.” Although the ALJ never expressly excused the untimeliness, nevertheless he addressed the substantive issue, concluding that Xtera’s argument was not persuasive.  Specifically, the ALJ noted that the operative language in the preamble, “a transmitter for producing,” was not limiting because it merely described the intended use for an otherwise structurally complete invention.

The second claim construction issue related to a means plus function claim disclosing a “means for producing a periodic series of optical pulses defining a series of time slots, ….” The dispute here centered on the corresponding structure. Noting that Xtera’s argument was “not a model of clarity,” the ALJ regardless considered the argument and the proffered support. Ultimately, the ALJ rejected Xtera’s proposed corresponding structure as the argument relied heavily on expert testimony to compensate for the deficient disclosure for what Xtera advocated as the structure. “Expert testimony” the ALJ stated, “cannot ‘rewrite the patent’s specification’ to provide a link between a structure and a claimed function where the patentee did not clearly provide one.”

Regarding the accused products, the ALJ found that the complainant “never clearly identifie[d] the accused products.” To the extent there is a disagreement between the parties about what in fact constitutes the accused products, the ALJ stated that the burden remains on the Complainant to show what articles infringe the asserted patents. Here, because the ALJ found that Xtera ultimately failed to show any product infringes the ’403 patent, Xtera’s failure to clearly identify the accused products was rendered moot.  Specifically, the ALJ concluded that the accused products did not directly or indirectly infringe the ’043 patent. (With respect to the latter, the ALJ deemed the contention to be withdrawn because Xtera’s failure to address indirect infringement in the post-hearing briefs.) Similarly, because Xtera’s argument regarding the technical prong of the domestic industry was coextensive with the infringement allegations, the ALJ found that Xtera failed to satisfy the technical prong requirement. Finally, the ALJ found that the respondents had met their burden to prove, by clear and convincing evidence, that the ’403 patent was invalid as anticipated.

Investments in Articles Not Protected by the Asserted Patent Do Not Count for the Economic Prong of the Domestic Industry Requirement. With respect to the economic prong of the domestic industry requirement, Xtera relied upon one of its systems known as the NuWave Optima. Importantly, however, some versions of the NuWave Optima product allegedly practice the ’043 patent while others did not. Respondents argued that Xtera essentially “padded” its domestic industry numbers by counting investments in articles that are not protected by the ’403 patent. The “operative question” the ALJ stated, “is how much of Xtera’s investments in [its own systems] are attributable to its domestic industry in the patented technology.” The ALJ concluded that Xtera failed to “present evidence sufficient to answer that question in this investigation.”

Further, the ALJ rejected Xtera’s additional argument that in any event a qualitative analysis of Xtera’s investments should suffice. The ALJ rejected as misplaced, Xtera’s reliance on Lelo, Inc. v. ITC, 786 F.3d 879 (Fed. Cir. 2015). The holding of Lelo, the ALJ noted, “is that qualitative factors alone are insufficient to show ‘significant investment in plant and equipment’ and ‘significant employment of labor or capital’ under prongs (A) and (B) of the §337 domestic industry requirements.” Thus, the ALJ deemed Xtera’s domestic industry showing as “flawed” for combining investments in systems that do not practice the ’403 patent with those that allegedly do.

It is also significant to note that in “possible recognition” of its failure, as the ALJ put it, Xtera included a section in its post-hearing brief that allocated the investments in the two versions of the system. But the ALJ noted that such allocation did not appear in the nearly 1500 pages of Xtera’s prehearing brief. As such, the ALJ stated that he would “not credit an argument made for the first time after the close of the evidentiary hearing, when Respondents have no ability to seek expert economic analysis of the argument, or any ability to test the veracity of that argument through cross-examination of Xtera’s economic expert.” Nor did the ALJ find any evidentiary support for the untimely argument.  The ALJ, therefore, concluded that “even if Xtera’s last minute allocation argument had not been abandoned, [the ALJ] would nonetheless be compelled to find that Xtera’s proffered allocation lacked the support of substantial evidence.”

Accordingly, the ALJ concluded that Xtera failed to satisfy the economic prong of the domestic industry requirement.

Disavowal of Claim Scope in IPR Leads to Remedy Modification

In the Matter of CERTAIN access control systems AND COMPONENTS THEREOF, Inv. No. 337-TA-1016, Recommended Determination (April 22, 2019)

Before: Chief ALJ Bullock

Practice Tips and Insights:

Representations Made by a Patent Owner in an Inter Partes Review Can Operate as a Disavowal of Claim Scope for Proceedings Before the Commission. Patent owners enforcing their patent rights at the Commission should be mindful of taking positions in IPRs which could prejudice them before the Commission, even if the Commission has already issued remedial orders. On the flip side, respondents could carefully craft IPR challenges such that a complainant is put to choose between defending the validity of an asserted patent or maintaining a useful claim scope for assertion.

Holding and Status:

In a proceeding to modify a limited exclusion order and cease and desist order, Chief Administrative Law Judge Bullock recommended that the orders be modified to exclude Respondents’ redesigned wireless garage door openers from their scope. The CALJ held that Complainant’s positions taken in an IPR concerning the patent asserted at the Commission operated as a disavowal of wireless garage door openers from the scope of the claims.

Case Background:

In the 1016 Investigation, the Commission issued a limited exclusion order and cease and desist orders for certain access control systems, including garage door openers, covered by Complainant Chamberlain Group, Inc.’s (“CGI”) asserted patent. During the Commission proceedings, Respondents petitioned for inter partes review of CGI’s patent.

Following the Commission’s ruling, Respondents sought an administrative ruling from the Intellectual Property Rights Branch of the United States Customs and Boarder Protection that certain redesigned garage door openers were not covered by the remedial orders. The redesigned openers used a wireless connection between the keypad and head unit whereas the original openers had a hard-wired connection. The IPRB ruled that the redesigned openers were subject to the remedial orders, but on appeal of that decision, the Court of International Trade found that the redesigned openers do not infringe CGI’s patent and ordered a shipment of detained openers released.

Respondents subsequently petitioned the Commission to modify the remedial orders to exclude the redesigned wireless garage door openers. Respondents’ based their petition on “changed conditions of fact”: (1) that the redesigned garage door openers used a wireless connection between the keypad and head unit instead of a hard-wired connection; and (2) CGI made statements during the IPR, and subsequent to the Commission’s orders, to the effect that the asserted patent did not cover wireless connections.

Notable Issues and Related Points of Law:

Disavowal: In the modification proceeding before CALJ Bullock, the central claim limitation at issue was “said microcontroller of said motor drive unit being connected to the microcontroller of the wall console by means of a digital data bus.” (Emphasis added.) The portion “digital data bus” had previously been construed to mean “conductor or group of conductors which convey digital data.” In support of the modification request, Respondents argued that the limitation excluded the redesigned wireless openers, relying on intrinsic evidence, extrinsic evidence, CGI’s statements in the IPR, and the CIT’s ruling.

CALJ Bullock agreed with Respondents that CGI’s positions taken during the IPR operated as a disavowal of wireless garage door openers from the scope of the claims. Specifically, CGI contended in the IPR that Respondents’ prior art did not disclose the disputed limitation because it “need not include a physical connection at all and may consist of radio frequencies.” (Internal quotations omitted.) CALJ Bullock found that CGI’s argument was a representation that the claims required a “physical connection between the microcontroller of the ‘wall console’ and the microcontroller of the ‘motor drive unit.’” Accordingly, CGI effectively put the public on notice that its claims required a physical connection—a wire—between components.

As CGI’s IPR arguments amounted to a disavowal of wireless garage door openers from its claim scope, CALJ bullock did not reach the issues of intrinsic evidence, or extrinsic evidence, or judicial estoppel arising from the CIT proceeding.

Modification: CGI argued that Respondents’ noninfringement position, i.e. that the accused products lack the physical connection between the keypad and head unit required by the patent, had been rejected during the proceeding on violation and that determination was binding in the modification proceeding. CALJ Bullock found, however, that CGI’s remarks in the IPR proceeding “materially changed” the intrinsic record for the disputed claim limitation and justified revisiting its construction.

Judge Lord Grants Partial Summary Judgment of Failure to Satisfy the Technical Prong of the Domestic Industry Requirement

In the Matter of CERTAIN SOLID STATE STORAGE DRIVES, STACKED ELECTRONICS COMPONENTS, AND PRODUCTS CONTAINING SAME, Inv. No. 337-TA-1097

Before: Judge Lord

Practice Tips and Insights:

When responding to indefiniteness objections during prosecution of patents, use open-ended descriptions of the limitation rather than defining the term in question. Courts and other tribunalsfaced with definitional language in the specification, such as quotation marks and/or “is,” are likely to find that the patentee acted as her own lexicographer.

Holding and Status:

Judge Lord held that complainant had failed to show a genuine dispute that its E-Disk Altima product fails to practice any claim of the ’243 patent but had shown a genuine dispute regarding whether that product practices the ’103 patent. Judge Lord’s summary determination is subject to review by the Commission.

Case Background:

Complainant claimed a domestic industry based on its investments with respect to its

E-Disk Altima product and that the E-Disk Altima practices certain claims of asserted U.S. Patent Nos. 7,826,243 ("the '243 patent"), 8,093,103 ("the '103 patent"), and 6,529,416 ("the '416 patent"). Respondents moved for summary determination that complainant could not satisfy the technical prong of the domestic industry under their proposed construction of “passive port,” which they had previously presented at the Markman hearing held by Judge Lord. Respondents filed their motion for summary determination before Judge Lord had issued any order construing the claim term at issue.

Notable Disputed Issues and Related Points of Law:

Complainant Bound By Patent’s Definition of “Passive Port” in Claim Construction Dispute:

During the prosecution of the ’243 patent, the examiner rejected the pending claims as indefinite. In response, the applicant amended the specification to recite: “A connection between a passive ball on one surface of a SDRAM module and a passive pad on another surface of the same SDRAM module, such as the X1 passive ball and X1 passive pad connection in Figure 19, is named ‘passive port,’ such as passive ports 1909 illustrated in Figure 19.” The amendment to the specification further states: “Thus, ‘a connection between a passive ball on one surface of a SDRAM module and a passive pad on another surface of the same SDRAM module’ is a ‘passive port.’” That same amendment was made to the ’103 patent specification as well.

Judge Lord held that the language “is named ‘passive port’” indicated an intent to define that term as stated in the specification, particularly when combined with applicant’s statement in the amendment that patentees can be their own lexicographers. Accordingly, Judge Lord held that the patentee had provided an explicit definition used the language from the specification in defining the claim term “passive port.” In so holding, Judge Lord noted, but disagreed complainant’s arguments that such a construction would exclude certain embodiments and violate the doctrine of claim differentiation. First, Judge Lord noted that the embodiments excluded were not described as including “passive ports.” Second, she found that the dependent claim in question added more limitations than those included in the definition of “passive port” and that therefore the doctrine of claim differentiation did not apply.

Complainant Could Not Satisfy Technical Prong of Domestic Industry Requirement for at Least One of Two Patents Based on the Claim Construction of “Passive Port”

Based upon the definition of “passive port,” Judge Lord found that the ’103 patent domestic industry products did not meet that limitation. Specifically, Judge Lord reasoned that none of the components that could constitute a SDRAM module had both a passive ball on one surface and a passive pad on another surface, and therefore granted the motion for the ’103 patent. While complainant pointed to one component with such a configuration in its opposition to the motion for summary determination, Judge Lord found that it could not constitute the claimed SDRAM “memory module” having a “passive port” because complainant had already identified that module as the separately required “controller module” and the claim required both a controller module and memory module.

Regarding the ’243 patent, however, Judge Lord found that genuine issues of material fact remained regarding whether the complainant’s ’243 domestic industry product practiced that patent. Specifically, she found that because the ’243 claims did not include any requirement regarding ‘memory modules’ or ‘controller modules’ and that the claimed SDRAM module could be either a memory or controller module. Accordingly, Judge Lord found that triable issues remained as to whether Complainant’s product practiced the ’243 patent.

Motion for Judicial Notice Requesting Application of Doctrine of Estoppel Found Frivolous and Objectively Baseless and Warranting an Award of Sanctions Against Filer

In the Matter of CERTAIN INFOTAINMENT SYSTEMS, COMPONENTS THEREOF, AND AUTOMOBILES CONTAINING THE SAME, Inv. No. 337-TA-1119, Order No. 33 (May 23, 2019)

Before: ALJ Dee Lord

Practice Tips and Insights:

Motion for judicial notice seeking application of collateral estoppel to the facts and rulings made in a previous investigation is improper because collateral estoppel is not a fact and indisputable. Had Respondents made a diligent inquiry into the law of judicial notice, Respondents would have known that a motion for judicial notice in the manner they sought was fundamentally wrong and sanctions could have been avoided.

Holding and Status:

ALJ Lord awarded sanctions against Respondents’ counsel for violation of Commission Rule 210.4(c)(2) in the amount of costs incurred by Complainant Broadcom Corporation (“Broadcom”) in opposing Respondents’ motion for judicial notice and responding to Order No. 32.

Case Background:

ALJ Lord denied certain Respondents’ motion for judicial notice of facts established in Inv. No. 337-TA-1047 and ordered Respondents to show cause why they should not be sanctioned for violation of Commission Rule 210.4(c)(2). Respondents’ motion for judicial notice requested that collateral estoppel be applied to preclude Broadcom from “re-litigating” certain issues based on the findings from the 1047 Investigation.  The 1047 Investigation invalidated the remaining claims of the ’844 Patent.

ALJ Lord noted her reasoning set forth in Order No. 32 stating that “there is no legal support for the argument that collateral estoppel may be applied simply by taking judicial notice of a prior decision.” Order No. 33, at 3. “Respondents could have raised collateral estoppel in a motion for summary determination that the 1047 decision invalidates the remaining claims under the ’844 patent.” Id. at 10. It was fundamentally wrong for Respondents to argue for the application of collateral estoppel via judicial notice because those facts were established by the Commission in the 1047 Investigation and needed no request for judicial notice. See fn. 4, at 4 (“Commission decisions must be ‘noticed’ by administrative law judges in section 337 investigations even without a request.”) (citation omitted). Additionally, ALJ Lord found that Respondents were essentially seeking an advisory opinion “of uncertain breadth without establishing the legal or factual predicates for obtaining such relief.” Id. at 6.

Related Points of Law:

A Request for Judicial Notice is Not a Proper Vehicle for Legal Argument. ALJ Lord made this point clear in her order:

If all that Respondents were seeking was notice of the facts and legal rulings in the 1047 investigation, they would not have needed to file their motion. Respondents, however, were seeking more.They sought application of the legal doctrine of collateral estoppel to the facts and rulings made in the 1047 investigation. But collateral estoppel is not a fact. It is not indisputable. Collateral estoppel requires the application of legal reasoning to a set of facts.  It is an issue to be adjudicated, not one that can be judicially noticed.

Id. at 4 (internal citation omitted).

Sanctions May Be Warranted When There Is “Real” Prejudice to the Non-Moving Party. ALJ Lord awarded sanctions against Respondents because Broadcom was required to prepare three responsive briefs all due on the same day the parties exchanged exhibits and witness statements for their cases in chief as a result of Respondents waiting until the deadline to file their motion for judicial notice, and Complainant wasted litigation resources in responding to Respondents’ improper motion.

Motion in Limine to Exclude Allegedly Untimely Claim Constructions Denied Where Movant Did Not Also Seek to Exclude Underlying Non-Infringement Arguments as Untimely

In the Matter of CERTAIN INFOTAINMENT SYSTEMS, COMPONENTS THEREOF, AND AUTOMOBILES CONTAINING THE SAME, Inv. No. 337-TA-1119, Order No. 43 (May 30, 2019)

Before ALJ Dee Lord

Practice Tips and Insights:

When moving to exclude untimely proposed claim constructions, practitioners should also consider moving to exclude the underlying non-infringement arguments as untimely. Claim constructions and non-infringement arguments oftentimes, if not always, go hand-in-hand because each are part of the infringement analysis. Additionally, as investigations proceed past Markman proceedings, it is not unexpected that claim construction disputes arise as the parties gain a better understanding of the products at issue and the opposing party’s application of claim language. In other words, Markman deadlines do not necessarily preclude a party from raising additional terms that need to be construed as the investigation progresses.

Holding and Status:

ALJ Lord denied Broadcom’s motion in limine to exclude untimely proposed claim constructions. To avoid any potential prejudice against Broadcom, ALJ Lord allowed Broadcom to propose its own constructions for the newly identified terms and these constructions will be disclosed at the pre-hearing conference.

Case Background:

Broadcom filed its motion in limine to exclude Respondents’ proposed constructions for three terms identified after the Markman deadlines and first disclosed in Respondents’ pre-hearing briefs. These three terms relate to non-infringement arguments. Broadcom did not seek to also exclude the underlying non-infringement arguments as untimely. ALJ Lord reasoned that this non-infringement issue had not been adequately briefed by the parties because the pre-hearing briefs were filed after the deadline for motions in limine. Accordingly, ALJ Lord recommended that the parties address this issue in their post-hearing briefs

ALJ Bars Testimony of Rebuttal Expert Witness Statement Responding to New Testimony in Witness Statement

In the Matter of CERTAIN INFOTAINMENT SYSTEMS, COMPONENTS THEREOF, AND AUTOMOBILES CONTAINING THE SAME, Inv. No. 337-TA-1119, Order (May 29, 2019)

Before: ALJ Dee Lord

Practice Tips and Insights:

Any new opinions of an opposing expert in a report or deposition must be challenged directly by a motion to exclude; rebuttal opinions are insufficient to challenge new opinions and will be barred.

Holding and Status:

The ALJ granted Complainant Broadcom’s motion in limine and excluded certain testimony in Respondents’ expert’s witness statement.

Case Background:

Complainant Broadcom asserted several patents against Respondents regarding certain infotainment systems, component thereof, and automobiles, including U.S. Patent No. 7,437,583 ("the ‘583 patent").

Notable Disputed Issues and Related Points of Law:

Broadcom argued that Respondents’ expert’s rebuttal witness statement included a previously undisclosed noninfringement argument regarding the ‘583 patent. Respondents countered that the testimony at issue could not have been disclosed earlier because it responded to new infringement theories in Broadcom’s expert’s witness statement.  Noting its authority under Ground Rule 10.5.6 to limit expert testimony, the ALJ held that under Certain Recombinant Factor VIII Products, Inv. No. 337-TA-956, Order No. 33 at 3 (Mar. 9, 2016), Ground Rule 10.5.6 does not allow for supplementation of expert testimony solely to rebut opposing experts. The court found that even assuming that the testimony at issue was disclosed for the first time in Broadcom’s expert witness statement, the proper procedure would have been for Respondents to move to exclude that testimony.

ALJ Denies Third Party’s Motion to Quash a Subpoena

In the Matter of CERTAIN BONE CEMENTS, COMPONENTS THEREOF AND PRODUCTS CONTAINING THE SAME, Inv. No. 337-TA-1153, Order No. 14 (May 30, 2019)

Before: ALJ Elliot

Practice Tips and Insights:

Third party subpoenas tailored to issues relevant to the receiving party are likely to lead to discovery of that third party. Third parties seeking to quash subpoenas on the grounds that the requests are duplicative of information already in the litigating parties’ possession should provide concrete evidence to establish that there is truly overlap.

Holding and Status:

A subpoena third party moved to quash a subpoena on the grounds that the information sought was irrelevant, that it was unduly burdensome, and that the information sought was duplicative of evidence already in the litigating parties’ possession. The ALJ disagreed and denied the motion to quash.

Notable Disputed Issues and Related Points of Law:

Motion to Quash: The ALJ considered all three of the third parties’ disputes: (1) relevance, (2) burden, and (3) duplicity. For all three the ALJ found the third parties’ arguments unpersuasive. With respect to relevance, the ALJ noted that the allegations in the complaint particularly related to the third party and the subpoena was tailored to those issues. For burden, the ALJ understood the third party to be concerned about confidentiality provisions. On this point, the ALJ noted that the third party was adequately protected by the protective order. Lastly, the ALJ found the arguments related to duplicity to be speculative and, in any event, found that the subpoena was broad enough to cover evidence for which there was no plausible argument that it was already possessed by a litigating party.

Organisms Such as Bacteria May Be Protected by Trade Secrets Law

In the Matter of CERTAIN BOTULINUM TOXIN PRODUCTS, PROCESSES FOR MANUFACTURING OR RELATING TO SAME AND CERTAIN PRODUCTS CONTAINING SAME, Inv. No. 337-TA-1145, Order No. 7 (May 7, 2019)

Before: ALJ Shaw

Practice Tips and Insights:

Companies developing genetically modified organisms (GMOs) should be aware that organisms themselves may be protectable as trade secrets, provided that the other requirements of trade secret law are met. These considerations should be kept in mind when sharing samples of the GMOs.

The ITC’s determination of whether a GMO has been kept secret will look to the similarity between shared versions of that GMO and the GMO over which trade secret protection is claimed. Companies may wish to consider sharing only partially modified version of their GMOs, in order to maintain trade secret protection over the completely modified version of the GMO.

Holding and Status:

Respondent’s motion for summary determination was denied. Respondent argued (1) that theft of a bacterium could not constitute trade secret misappropriation and (2) that Complainant’s “Hall-A Hyper Strain” bacterium could not be considered secret because Complainant had shared the strain “among untold numbers of private, public and academic institutions.” Slip Op. at 2. The ALJ, citing Pioneer Hi-Bred Int’l v. Holden Foundation Seeds, 35 F.3d 1226 (8th Cir. 1994), held that tangible objects, including genetically engineered organisms, could be protected as trade secrets. Additionally, the ALJ held that the motion raised issues of material fact, because whether secrecy over the “subculture” of Hall-A Hyper Strain at issue could be protected as a trade secret dependend on how similar it was to versions of the strain that had been shared with third parties. The investigation is ongoing.

Case Background:

Complainants Medytox Inc.; Allergan plc; and Allergan, Inc. allege that respondent Daewoong Pharmaceuticals Co., Ltd., misappropriated their trade secrets by stealing a genetically modified bacterium.

Notable Disputed Issues and Related Points of Law:

Trade Secrets: Tangible things, including organisms and biological materials, may be protectable as trade secrets.

Trade Secrets (secrecy): How to determine whether a GMO has been kept sufficiently secret to be protected as a trade secret appears to be an unsettled area of law, but likely involves a fact-sensitive inquiry.

“Tsunami” of Identical Imported Products Justified a General Exclusion Order

In the Matter of CERTAIN LIGHTING DEVICES AND COMPONENTS THEREOF, Inv. No. 337-TA-1107, Initial Determination (May 16, 2019)

Before: ALJ McNamara

Practice Tips and Insights:

Evidence of Widespread, Expanding Internet Sales of Identical or Nearly Identical Products Can Merit a General Exclusion Order. Intellectual property owners seeking to enforce their rights against a large number of foreign counterfeiters should document the number of potentially infringing products, the number of foreign companies selling those products, and the growth of those numbers over time to submit as evidence in an ITC enforcement proceeding.

Holding and Status:

Four defaulting respondents were found to be in violation of Section 337. Based on evidence showing numerous companies selling identical or nearly identical products on the internet, the ALJ recommended that the Commission issue a general exclusion order and that bond be set at 100 percent of the value of the accused products.

Case Background:

The 1107 Investigation is based on Complainant Fraen Corporation’s (“Fraen”) complaint alleging infringement of two related patents for lighting systems and lenses. Fraen named ten respondents in its complaint, alleging that they import infringing lighting products.

Fraen moved to terminate the investigation as to six of the ten respondents based on settlement agreements. The remaining four respondents, Guangzhou Chaiyi Light Co., Ltd., Guangzhou Xuanyi Lighting Co., Ltd., Guangzhou Flystar Lighting Technology Co., Ltd., and Wuxi Changsheng Special Lighting Apparatus Factory (collectively, “defaulting respondents”) did not respond to Fraen’s complaint and did not respond to the ALJ’s order to show cause why they should not be held in default.

Fraen moved for summary determination that the defaulting respondents violated Section 337 and requested that the ALJ recommend issuance of a general exclusion order and a 100 percent bond.  The ALJ found that Fraen offered sufficient evidence of importation, infringement, and domestic industry and granted Fraen’s motion and recommended the requested relief.

Notable Issues and Related Points of Law:

General Exclusion Order: A general exclusion order was warranted because the evidence Fraen submitted with its motion for summary determination established (1) a pattern of violation, (2) the difficulty of identifying the source of infringing products, and (3) the necessity of a general exclusion order to prevent circumvention.

To show the pattern of violation, Fraen submitted an Alibaba.com search identifying 1,635 lighting products similar to Fraen’s domestic industry products. Fraen submitted additional Alibaba.com information from six months later identifying 17 companies selling products identical or virtually identical to the accused products. Those 17 companies had been on Alibaba.com for less than one year. Fraen also showed that over 100 companies overall were selling similar lighting products on Alibaba.com, many of which were located near Guangzhou, China.

With respect to the difficulty of identifying the sources of infringement, Fraen argued that it would be financially impossible to pay for a sample of all potentially infringing products and conduct an infringement analysis for each. Fraen’s expert analyzed three products in particular and opined that they infringed, and Fraen’s evidence showed that those products were offered for sale by over 100 Chinese companies.

The ALJ also agreed with Fraen that a general exclusion order would be necessary to prevent circumvention of a remedy because of the “tsunami” of “essentially unknown and often untraceable Chinese companies.” Fraen supported its contention with internet searches on sites like Alibaba.com and Amazon.com spread out over time showing that the number of identical products and the number of companies selling those products were growing.

Ultimately, the ALJ found that Fraen’s met the statutory criteria with ample evidence for a general exclusion order.

Bonding: Bond is ordinarily set at an average price differential between the Complainant's product and the infringing products or at a reasonable royalty. As the defaulting respondents were unavailable to participate in discovery as to pricing of the accused products and a large quantity of infringing lighting products were sold at highly variable prices, the ALJ recommended that the bond be set at 100 percent of the entered value for all infringing goods during the Presidential review period.

ID Finds Violation and Recommends Limited Exclusion Order

In the Matter of CERTAIN ELECTRICAL CONNECTORS, COMPONENTS THEREOF, ANDPRODUCTS CONTAINING THE SAME, Inv. No. 337-TA-1043, Initial Determination (April 12, 2019)

Before: ALJ Bullock

Practice Tips and Insights: Failing to allege specific knowledge that accused products were sold for importation by entities not directly involved in importation can result in no jurisdiction over those respondents. Corroborating evidence establishing the date of prior art sales is essential for successful arguments. Respondents should be mindful that witness testimony unsupported by actual sales documents is likely insufficient.

Holding and Status: The asserted patent was found to be infringed. There was a violation of the asserted patent by three of the respondents (Respondents Robert Bosch LLC., Robert Bosch, Sistemas Automatrices, S.A. de C.V., and Foxconn Interconnect Technology, Ltd.), but not by the remaining three respondents because complainants failed to establish importation as to those entities.

Case Background: The 337 Investigation is based on alleged infringement of one patent related to a tine plate, mounted on an electrical connector to line up the legs of contacts. The named respondents asserted standard defenses of non-infringement, invalidity, and no domestic industry.

Notable Disputed Issues and Related Points of Law:

Importation and Jurisdiction: Respondents argued that the ITC lacked jurisdiction over the accused products in their entirety because “undisputed evidence proves that the accused product is no longer imported, sold for importation, or sold after importation.” Judge Bullock rejected this argument, asserting that a “complainant need only prove importation of a single accused product to satisfy the importation element.” (citing Certain Purple Protective Gloves, Inv. No. 337-TA-500, Order No. 17 at 5 (Sept. 23, 2004) (unreviewed initial determination)).

There were also importation arguments with respect to certain respondents who allegedly did not have sufficient knowledge of importation. These arguments were successful. Judge Bullock found that the complainant failed to meet its burden in showing that a parent company had involvement or knowledge in the importation of the accused products. Additionally, ALJ Bullock found that complainant failed to meet its burden to show that two other associated respondents had specific knowledge regarding importation of the accused products to the US. Thus, the importation requirement was not satisfied for three respondents.

Prior Art Date Proof Standard: Respondents attempts to establish prior art based on two prior products highlights the importance of discovering and presenting adequate evidence to show the actual date of prior art sales.

First, respondents argued that a Tyco Tine Plate found within the Tyco Docking Station constitutes prior art. Respondents were able to prove the date of the prior art through concrete sales evidence including sales records from Dell showing a certain laptop was purchased and shipped within the US in 2003 and date stamps on the laptop and connector components showing dates from early 2003, Thus, ALJ Bullock found respondents established that the Tyco Docking Station Connection was sold in the US as early as March 2003 and was prior art. Although it was found to be prior art, Judge Bullock found that it was not invalidating prior art.

On the other hand, where respondents attempted to establish a prior sales date for a Tyco 121 Way Connector using only a technical drawing and testimony of the employee of a named respondent, without any documentary sales evidence, applying a “rule of reason analysis,” ALJ Bullock found that respondents had failed to meet their burden that the Tyco 121 Way Connector was prior art.

Infringement & Tech Prong: Respondents put forth numerous arguments regarding non-infringement and claim interpretation. However, ALJ Bullock agreed with complainant on each element, and thus, found the complainant met its burden in showing infringement. Respondents put forth several similar arguments related to the technical prong of the domestic industry, but the ALJ ultimately found that complainants’ product practiced the asserted patent.

Anticipation & Obviousness: Respondents argued that the asserted patent were invalid based on several prior patents, including Sasame ‘662, Chen ‘076 and Johhnescu ‘732. Judge Bullock found that each prior art patent failed to teach at least one element of the asserted claims, thus neither anticipation nor obviousness were viable.  Judge Bullock took special note that Chen ’076 was considered during prosecution.

Economic Prong: Complainant argued that expenditures related to parts purportedly integral to the domestic industry product should be considered in the domestic industry analysis. ALJ Bullock disagreed that the associated parts were integral, finding that the relevant domestic industry for a 337 case extends only to articles which come within the claims on the patents relied on. There was also a dispute over whether tooling equipment expenditures could be counted as part of the domestic industry. On this issue, the ALJ sided with the complainants. Although the purportedly integral components were not counted towards the domestic industry expenditures, the ALJ still found the economic prong was satisfied.

Remedy & Bond: Respondents argued that because they ceased manufacturing or importing the accused products an exclusion order was not necessary. ALJ Bullock found that ceasing importation does not moot the need for a remedy and recommended the issuance limited exclusion order to products that infringe the asserted patent. However, ALJ Bullock agreed with respondents that no bond be set as the complainant failed to calculate a price differential or a reasonable royalty.

Ruling on Cross SD Motions Clarifies When There Is Sale After Importation

In the Matter of CERTAIN DIGITAL VIDEO RECEIVERS AND RELATED HARDWARE AND SOFTWARE COMPONENTS, Inv. No. 337-TA-1103, Order No. 47 (June 3, 2019)

Before: ALJ McNamara

Practice Tips and Insights:

The forthcoming opinion from the Federal Circuit related to whether or not Comcast is an “importer” will be closely watched. The Federal Circuits ruling affects the ALJ’s ruling in this order. Additionally, this holding is a reminder that simple importation is not the only means by which complainants can exercise jurisdiction over accused products—sale for importation and sale after importation are also included.

Holding and Status:

In the on-going disputes between Comcast and Rovi, the 1103 Investigation included multiple summary determination motions and a summary determination ruling related to whether or not Comcast is an importer and whether or not Comcast sells the accused products after importation. As to the first issues, Judge Shaw and the Commission both previously found Comcast to be an importer. Judge McNamara agreed, but did note that the issue is currently under Federal Circuit review. ALJs before her had not reached a conclusion on whether Comcast sells after importation, but ALJ McNamara determined Comcast does sell after importation in this order.

Notable Disputed Issues and Related Points of Law:

Importation:Judge McNamara reached the same conclusion as Judge Shaw and the Commission on the issue of importation: Comcast is an importer. Like the rulings before hers, Judge McNamara relied on the Supreme Court’s 1945 ruling inHooven & Allison Co. v. Evattto determine that Comcast is the “efficient cause of the importation” and, therefore, meets the legal definition of an importer. Notably, Judge McNamara also acknowledged that the legal doctrine of issue preclusion further supports her ruling. Nevertheless, she did state that the Federal Circuit is currently reviewing the issue and what the Federal Circuit holds will affect her ruling.

Sale after importation:The operative question for sale after importation was whether Comcast actually “sells” set-top boxes, considering that they are usually under a rental agreement. Judge McNamara analyzed specific facts related to instances where set-top boxes are retained by Comcast customers and never returned to Comcast despite the termination of the customer-service provider relationship.  In those instances, the ALJ found that additional fees are paid to Comcast and a sale is effectuated. To reach this conclusion, Judge McNamara laid out the legal standard for a sale. To the extent the facts did not give rise to a voluntary sale, Judge McNamara alternatively found that the facts at least gave rise to a forced sale governed by the law of conversion—which she also found fell within the purview of Section 337.

“In this case, whether called a voluntary sale or a forced sale through conversion, it is evident that once a subscriber pays the charge for the unreturned Comcast equipment, the equipment in the possession of the subscriber belongs to the subscriber and Comcast ceases all interactions with the subscriber.” Thus, she concluded that, for unreturned set-top boxes, Comcast is engaged in sale after importation.