Goodwin Insights January 27, 2020

Most Impactful Commission Decisions

Commission Determines Prosecution History Estoppel Prevents Finding of Infringement Under Doctrine of Equivalents

In the Matter of CERTAIN INTRAORAL SCANNERS AND RELATED HARDWARE AND SOFTWARE, Inv. No. 337-TA-1091, Commission Opinion (Dec. 19, 2019)

Before: Commission Opinion (ID issued by Judge Cheney)

Practice Tips and Insights:

The Commission will not find a violation if an asserted patent is set to expire before the target date of the investigation. Further, the Commission applies the doctrine of prosecution history estoppel equally to both technical prong and infringement determinations.

Holding and Status:

The Commission affirmed the ALJ’s initial determination, on modified grounds, that there was no violation of Section 337.

Case Background:

The Complainant, Align Technology, Inc., filed a complaint against Respondents 3Shape A/S, 3Shape Trios A/S, and 3Shape Inc., claiming Respondents violated Section 337 by importing certain intraoral scanners and related hardware and software that allegedly infringed six Align patents. Judge Cheney found no violation with respect to two of the patents because they expired prior to the original target date of the investigation. He also found that although the respondents infringed three of the patents, those patents were invalid (two for lack of written description and one as obvious). Judge Cheney further found the technical prong of the domestic industry requirement was not met for those patents. For the final patent, Judge Cheney found that although the technical prong was met, the patent was not infringed.

Notable Disputed Issues and Related Points of Law:

“Comprising” Requires All Elements to Be Physically Included:

Initially, the Commission agreed with Judge Cheney that the term “processor” in the asserted claims did not invoke 112, ¶ 6. The Commission also found that the processor claimed in three of the asserted patents must be physically enclosed in the claimed hand-held device. Specifically, the patents claim a hand-held device “comprising” a number of elements, including a processor. Align argued that the processor need not be physically incorporated on the device as long as it was connected to the device. The Commission disagreed, relying on the accepted definition of comprising as “including but not limited to.” Because the specification did not disclose a processor incorporated in a hand-held device, the Commission affirmed that two of the asserted patents lack written description.

Infringement Under Doctrine of Equivalents Barred by Prosecution History Estoppel:

The Commission agreed with Judge Cheney’s finding that the claim requirement of a hand-held device with a processor configured to associate depth and color information was a narrowing amendment made during prosecution to overcome a prior art rejection. The Commission found that the patentee’s “boilerplate” remark during prosecution that the amendment was not narrowing was not persuasive, particularly given that the amendment was made specifically to overcome a prior art rejection. Because the domestic industry products were found to not literally practice for lack of a processor, and the Commission determined the doctrine of equivalents did not apply, the Commission affirmed that Align did not meet the domestic industry requirement.

Commission Finds No Section 337 Violation By the Respondents

In the Matter of CERTAIN subsea telecommunications systems and components thereof, Inv. No. 337-TA-1098, Commission Opinion (Oct. 21, 2019)

Before: Commission Opinion (ID issued by ALJ Cheney)

Practice Tips and Insights:

Parties risk waiving arguments not properly raised in the proceedings before the ALJ, in the petition for review, and in response to the Commission’s notice.

Holding and Status:

The Commission found no violation of Section 337, after modifying Judge Cheney’s findings to incorporate a broader construction of a means plus function term.

Case Background:

The Complainants, (collectively “Xtera”), filed a complaint against Respondents (collectively “Nokia” and “NEC”), claiming Nokia violated Section 337 by importing certain subsea fiber optic communications products that allegedly infringed five Xtera patents. The post-hearing ID focused on only one asserted patent. In the ID, Judge Cheney found that the accused products did not infringe, the asserted patent was invalid, and that Xtera failed to establish a domestic industry. The Commission determined to review the ID’s findings as to the asserted patent and not to review the remainder of the ID.

Notable Disputed Issues and Related Points of Law:

Xtera Waived Certain Arguments Regarding Infringement: At the outset, considering the specification and expert testimony, the Commission adopted a broader construction of a means plus function limitation compared to the ID. Nevertheless, even under this broader construction, the Commission concluded Xtera did not show infringement of the asserted claims. Importantly, the Commission noted that “Xtera’s failure to petition for review of the ID’s constructions of [certain claim terms was] . . . fatal to Xtera’s infringement position.” Xtera had “waived any challenge to these constructions” and its infringement theory “necessarily fail[ed].” The Commission also noted that Xtera had “waived its doctrine of equivalents argument before the Commission by not raising it in its petition for review and in response to the Commission’s notice.”

Xtera Waived Certain Arguments Regarding Invalidity: The Commission found Xtera had failed to show clear error in ID’s findings and thus affirmed and adopted the ID’s analysis that a certain prior art anticipated the claims of the asserted patent. Notably, “Xtera argued for the first time that the ID improperly relied on disclosures from multiple embodiments in [the Prior Art].” Because Xtera had not raised “this argument in its pre-hearing and post-hearing briefs,” the Commission deemed this argument waived.

Xtera Waived Certain Arguments Regarding Domestic Industry: The Commission concluded that Xtera failed to show domestic industry and the ID properly found Xtera’s alleged economic prong evidence improperly included investments and activities in articles not protected by the asserted patent. ;In the Commission’s view, the ID appropriately determined Xtera’s belated allocation of its investments and activities, which Xtera raised for the first time in its post-hearing brief, had been waived and lacked the support of substantial evidence.

Commission Finds No Infringement of Asserted Means-Plus-Function Claims By Nintendo Switch Consoles


Before: Commission Opinion (ID issued by ALJ Shaw)

Practice Tips and Insights:

Even for claim limitations that do not use the word “means,” the Commission will find that § 112(f) applies where an accused infringer can demonstrate that a limitation recites a function without reciting sufficient structure to perform the function. Complainant cannot avoid treatment under § 112(f) with expert testimony that the claimed structure can be anything that performs the recited function.

Holding and Status:

The Commission affirmed the ID’s finding that no violation of Section 337 occurred.

Case Background:

The Complainant, Gamevice, Inc., filed a complaint against Nintendo Co., Ltd. of Kyoto, Japan and its US subsidiary, claiming Nintendo violated Section 337 by importing Nintendo Switch Consoles and Nintendo Joy-Con Controllers that allegedly infringed certain claims of two Gamevice patents. Judge Shaw issued a Markman order construing three terms of the asserted claims as means-plus-function limitations under § 112(f) and thus, either required a specific structure disclosed in the specification or lacked a corresponding structure altogether. The parties stipulated that under Judge Shaw’s constructions, Nintendo’s products did not infringe the asserted claims. Consequently, judge Shaw granted Nintendo’s summary determination motion for noninfringement in the ID. Judge Shaw further found the claims for which no corresponding structure was disclosed in the specifications invalid due to indefiniteness.

The Commission determined to review the ID in its entirety.

Notable Disputed Issues and Related Points of Law:

Means-Plus-Function Treatment: Gamevice argued that the terms “fastening mechanism,” “pair of modules,” and “retention member” all recited sufficient structure to avoid treatment under § 112(f). In support of its arguments, Gamevice submitted testimony of a technical expert that a POSA would understand the structure of those claim limitations to be sufficiently definite. For “fastening mechanism” and “retention member,” the Commission found the expert’s position would essentially allow any structure that performed the claimed function (fasten or retain) to be considered the corresponding structure. The Commission accordingly rejected Gamevice’s arguments that those limitations recited sufficiently definite structure. The Commission also rejected Gamevice’s argument regarding the limitation requiring “pair of modules,” concluding that Gamevice’s expert conflated the “pair of modules” with “control modules,” which the specification taught were different components.

Commission Remands Certain Domestic Industry Issue Even Though Respondents Defaulted

In the Matter of certain earpiece devices and components thereof, Inv. No. 337-TA-1121, Commission Opinion (Nov. 8, 2019)

Before: Commission Opinion (ID issued by ALJ Shaw)

Practice Tips and Insights:

This case shows the importance of allocating investments when trying to prove a domestic industry. Although the Commission ultimately affirmed that a GEO and LEO should issue, the Commission found that the complainant failed to properly allocate its alleged investments related to one of the asserted patents. Complainants should be careful not to aggregate expenditures without allocation when proposed domestic industry products are not uniform across the asserted patents.

Additionally, a third party voiced concern that the eventually-issued GEO could be used against major manufacturers not named in the complaint. The Commission found that it was not necessary for the complainant to name all known manufacturers in its complaint. Accordingly, interested non parties should closely monitor investigations and consider intervention when they fear their products could be implicated if a remedial order issues.

Holding and Status:

The Commission affirmed judge Shaw’s finding of a violation, but remanded for further findings on a domestic industry issue. The Commission issued a General Exclusion Order, Limited Exclusion Orders, and certain Cease and Desist Orders.

Case Background:

The Complainant, Bose, sued certain respondents for infringing six patents related to earpiece devices. There were fourteen named respondents. Some of the named respondents settled, five respondents were found in default and three other respondents simply did not participate. After a motion for summary determination, Judge Shaw recommended a finding of violation with respect to all six patents. Judge Shaw then recommended a General Exclusion Order and Limited Exclusion Orders. Finally, Judge Shaw also recommended cease and desist orders against the domestic respondents, but not the foreign respondents because there is no presumption of a commercially significant inventory in the U.S. for foreign respondents.

Notable Disputed Issues and Related Points of Law:

Economic Prong: One of the asserted patents included a different subset of domestic industry products than the other five. Nevertheless, Bose aggregated its expenditures across all patents. The Commission found this was inadequate to prove the economic prong. Bose also attempted to put in a new declaration showing an allocation, but the Commission would not consider it because it was not part of the record evidence. Additionally, the Commission found that even if the declaration was considered, it provided no basis to show “how [the activities] are significant or substantial in any appropriate context of Bose’s operations, the marketplace, or the industry in question.” The decision was remanded and Bose was offered the opportunity to supplement its record if it chose to continue pursuing its domestic industry on the particular patent.

General Exclusion Order: The Commission found that four factors supported granting a GEO to prevent circumvention: (1) anonymity of doing business over the internet, (2) respondents with faulty addresses, (3) proof of rebranding, and (4) generic packaging.

Interestingly, a third party submitted a public interest statement asserting that the complainant had intentionally left major manufacturers out of the complaint and, therefore, it was against the public interest to issue a GEO that could affect major manufacturers that the complainant was aware of. The Commission disagreed and noted that “[n]either the statute nor the Commission’s Rules require a complainant seeking a GEO to name all known manufacturers, importers, or sellers of the accused products in its complaint.”

Cease and Desist: For CDO, the Commission reiterated that domestic defaulting respondents have an assumption of commercially significant inventory. Foreign respondents, however, do not share the same fate.

Commission Declines to Consider Qualitative Evidence in Support of Economic Prong Where Quantitative Evidence Deemed Insubstantial and Insignificant

In the Matter of CERTAIN CARBURETORS AND PRODUCTS CONTAINING SUCH CARBURETORS, Inv. No. 337-TA-1123, Commission Opinion (Oct. 28, 2019)

Before: Commission Opinion (ID issued by Chief Judge Bullock)

Practice Tips and Insights:

To meet the economic prong of the domestic industry requirement, Complainant must present evidence regarding the relative importance of domestic activities, consider the context of the operations, marketplace, and industry, and cannot simply rely on the absolute values of investments.Furthermore, where Complainant’s quantitative evidence of investment is insignificant and insubstantial, qualitative evidence will not be considered.  Finally, there is no threshold percentage for sales that will qualify as significant or substantial, nor is a large multinational corporation required to invest larger amounts than a smaller corporation to meet the domestic industry requirement.

Holding and Status:

The Commission affirmed that Complainant had failed to satisfy the economic prong of the domestic industry requirement, but declined to adopt certain statements in the ID’s analysis that it felt could be misinterpreted as implementing new legal standards.

Case Background:

The Complainant, Walbro, filed a complaint against 35 Respondents, claiming Respondents violated Section 337 by importing certain carburetors and products containing such carburetors that allegedly infringed five Walbro patents. Respondents filed a motion for summary determination that Walbro failed to satisfy the economic prong of the domestic industry requirement. The ID found that Complainant failed to meet the economic prong because Walbro’s investments were not significant or substantial.

Notable Disputed Issues and Related Points of Law:

Evidence Necessary to Meet the Economic Prong:

The Commission found that Walbro’s investments, including in labor and capital, were not significant when considered in the context of Walbro’s worldwide carburetor sales. In addition, Walbro failed to provide evidence of the nature and significance of its domestic activities related to the carburetors and further failed to provide evidence related to its foreign activities. Finally, because the Commission found that Walbro’s quantitative evidence of investment was insufficient, it was unnecessary to consider any qualitative evidence because qualitative evidence alone is not sufficient to meet the economic prong.

Commission Declines to Adopt a Threshold for Significance:

The Commission clarified that there is no minimum threshold for the amount of investment that would be deemed significant or substantial, emphasizing that the domestic industry requirement is analyzed on a case-by-case basis. The Commission further declined to adopt the ID’s statement that large multinational corporations should be expected to invest more in order to meet the significant or substantial requirement. The Commission emphasized that the domestic industry prong is analyzed using a flexible approach based on marketplace conditions.

The Commission Issues a General Exclusion Order With Only Three Defaulting Respondents Remaining in the Investigation

In the Matter of CERTAIN WATER FILTERS AND COMPONENTS THEREOF, Investigation No. 337-TA-1126, Commission Opinion (Nov. 15, 2019)

Practice Tips and Insights:

When all the accused products are offered for sale through online commerce, there is a higher likelihood of obtaining a general exclusion order because an LEO could be circumvented by masking or changing the identity and source of infringing goods.


With only three defaulting respondents remaining in the investigation, after several participating respondents had settled, the Commission issued a general exclusion order (GEO) under section 337(d)(2), and a cease and desist order under section 337(f)(l).

Case Background:

The Commission instituted this investigation based upon a complaint naming eight respondents. Ultimately, the Commission terminated the investigation as to five respondents who participated in the proceedings but ultimately settled. The remaining three respondents had defaulted, and the Commission determined that those entities violated Section 337. The Commission’s analysis of opinion then focused on the requested remedy of a GEO was of particular note.

As an initial matter, the Commission noted that there are two statutory provisions within the Tariff Act that provide the basis for issuing a GEO: sections 337(d)(2) and 337(g)(2). The former applies where one or more respondents participate in the investigation, and the latter governs investigations where all respondents fail to appear. Here, because some respondents had appeared, even though they eventually settled, the Commission concluded that section 337 (d)(2) applies to the remaining defaulted respondents. The Commission noted, however, that although only section 337(g)(2) explicitly states that the underlying violation of section 337 must be “established by substantial, reliable, and probative evidence,” a GEO under section 337(d)(2) “must also rest upon a violation established by the same standard of proof.”

Substantively, Section 337 (d)(2) empowers the Commission to issue a GEO when either “a general exclusion from entry of articles is necessary to prevent circumvention of an exclusion order limited to products of named persons,” or “there is a pattern of violation of this section and it is difficult to identify the source of infringing products.” Because of the far reaching implications of a GEO, the Commission turned to the record evidence in its exercise of caution before issuing such an sweeping order, finding both pre-conditions were satisfied in this investigation.

First, the record showed various internet seller listings on Amazon and eBay as well as generic, unmarked product shipments. Also, orders placed through one defaulting respondent were fulfilled by another, obscuring the distribution networks. The Commission therefore concluded that “there is a high likelihood that an LEO directed to only the Defaulting Respondents would be ineffective from its inception, as it would immediately be circumvented through Internet operations, masking of identities and product sources, and use of unmarked, generic, or reseller branded packaging.”

Second, the Commission concluded that there was a pattern of violation and it was difficult to identify the source of infringing products. Specifically, the evidence showed that numerous foreign entities offered thousands of seemingly infringing products over the internet. Further, the domestic on-line sellers appeared to “operate virtually anonymously” by using pseudonyms with no information about their true identity. The complainant also proffered evidence that showed the source of the infringing products can be further obscured by using intermediary freight companies to ship the goods in generic boxes without any marks identifying the producer. Indeed, the complainant produced evidence of seized counterfeit packaging with its own name falsely identified as the source.

In sum, a GEO is a powerful and sweeping remedy reaching beyond the parties identified as respondents in a 337 investigation. But a complainant can successfully obtain a GEO, even if the respondents do not participate in an investigation,