Goodwin Insights August 21, 2020

Most Impactful Commission Decisions

Commission Adopts Claim Construction not Advanced by Either Party and Finds Direct Infringement Under Its Construction

In the Matter of Certain BLOOD CHOLESTEROL TESTING STRIPS AND ASSOCIATED SYSTEMS CONTAINING THE SAME, Inv. No. 337-TA-1116, Commission Opinion (May 1, 2020)

Before: Commission Opinion

Practice Tips and Insights:

Neither the ALJ nor the Commission is confined by the Parties’ proposed construction of key terms and may adopt its own construction in compliance with the APA where parties are on notice that construction of a term is at issue and have an opportunity to be heard. Accordingly, if construction is at issue, parties should be sure to brief all possible interpretations, rather than confine arguments to their own and those advanced by opponents. Additionally, if a party cannot establish that the inclusion of certain words or phrases in their proposed construction is necessary to the resolution of the underlying dispute, they are unlikely to succeed. Finally, even if the terms are relevant and necessary, without evidence of the terms in the record or widespread inclusion of the word in the term’s definition, the party is unlikely to succeed.

Holding and Status:

The Commission found a violation of Section 337 as to the ’397 Patent’s and ‘721 Patent’s direct infringement of the methods claims.

Case Background:

The Complainant, Polymer Technology Systems, Inc., filed a complaint against ACON Laboratories, Inc. and ACON Biotech (Hangzhou) Co., Ltd. Of Hangzhou, China, claiming ACON violated Section 337 by importing certain blood cholesterol testing strip products that allegedly infringed three Polymer patents. The ID found, inter alia, that Complainant failed to demonstrate infringement of the claims of the ’818 patent but did establish a violation of section 337 with respect to the ‘397 and ‘721 patents. The Commission reviewed the ID’s findings as to whether ACON Laboratories, Inc.’s use of the accused products in the United States constitutes a violation of 19 U.S.C. 1337(a)(1)(B)(i); the construction of “reacting HDL . . . without precipitating said one or more non-selected analytes” in the ’721 patent, as well as related findings on infringement, the domestic industry, and invalidity; and the finding that all of the asserted claims of the '721 patent were not shown to be invalid for a lack of enablement. The Commission determined not to review any other issues, including that Complainant failed to show a violation with respect to the ‘818 patent. The Commission solicited briefing from the parties, interested government agencies, and members of the public on remedy, the public interest, and bonding.

Notable Disputed Issues and Related Points of Law:

Construction of “Precipitating”: Complainant argued “precipitating” as used in the ‘721 patent should be construed to mean “forming and separating a solid from a bodily fluid by chemical reaction without further intervention.” ACON argued it should be given its “plain and ordinary meaning, which is bringing a substance out of solution to form a solid and/or an oil, and/or a colloid thereof.” The Final ID resolved the conflict by clarifying that “precipitating” does not include a reaction that results in the formation of a complex. The Commission determined to construe “precipitating” to mean “separating a solid substance of material from a solution by chemical reaction.” Under this interpretation, Complainant established infringement and the domestic industry requirement as to the ‘721 patent. The Commission refused to adopt the claim term construction advocated by ACON, the inclusion of “oil and/or colloid,” as ACON had not shown it relevant to any aspect of the controversy. Moreover, the Court found that the record did not support ACON’s interpretation where: (1) the terms do not appear in the intrinsic record; and (2) expert testimony relied on was the product of results-oriented searches that returned insufficient results to support inclusion of “oil” and “colloid” in the definition. The Commission further determined the construction of “precipitating” requires the creation of a solid based on: (1) neither party disputing that the term covers the formation of a solid; (2) consistency with the specification’s teaching that “precipitates” clog filters; and (3) consistency with Federal Circuit precedent.

Proof Necessary to Show APA Violation: ACON asserted that the construction in the Commission’s notice of review was a violation of the APA because no party proposed that the term “precipitating” should be construed as not covering complexing, meaning ACON did not have notice or opportunity to respond to such a construction. The Commission rejected ACON’s position as there was “no dispute that the construction of ‘precipitating’ was an issue in controversy and that the parties each presented facts and arguments regarding the term’s proper construction.” Further, the Commission found that an ALJ is not required to adopt the construction proposed by either party and that an in adversarial action, an ALJ may arrive at its own claim construction in compliance with the APA. Moreover, the Commission gave ACON additional notice and an opportunity to respond, specifically to the proposed construction.

Commission Finds That For Divided Infringement, the Direct Infringer Need Not Benefit from Each and Every Claim Limitation

In the Matter of CERTAIN DIGITAL VIDEO RECEIVERS AND RELATED HARDWARE AND SOFTWARE COMPONENTS, Inv. No. 337-TA-1103, Commission Opinion (May 13, 2020)

Before: Commission Opinion (ID issued by Judge McNamara)

Practice Tips and Insights:

To prove direct infringement in a potential “divided infringement” scenario as in Akamai Technologies, Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 1022 (Fed. Cir. 2015), a Complainant need not show that the infringer used or benefitted from each and every limitation of a claim.  Nonetheless, it would be prudent to show each limitation is met as a matter of fact. Further, the Commission’s decision emphasizes the need for a party to include discussion of each legal theory in post-hearing briefing, else the Commission find an undisclosed theory waived.

Holding and Status:

The Commission found a violation of Section 337 as to claim 9 of U.S. Patent No. 7,779,011, and issued a limited exclusion order and cease and desist orders directed to infringing digital video receivers and related hardware and software.

Case Background:

The Commission instituted this investigation based on a supplemented complaint filed by Rovi Corporation against various Comcast Corporation entities, alleging they violated Section 337 by importing certain digital video receivers that infringe eight patents. Prior to the hearing, the Commission terminated the investigation as to all but claims 1 and 9 of the ’011 patent and several claims of two of the other asserted patents, U.S. Patent Nos. 7,827,585 and 9,396,741. Judge McNamara found after the hearing that the asserted claims of the ’585 patent were invalid in view of prior art, and that respondents did not infringe the ’741 patent. The Commission thereby terminated the investigation as to the two patents and determined to review the final ID’s findings of infringement of the asserted claims of the ’011 patent by Comcast’s accused non-redesigned systems. Two redesigns, which modified Comcast’s servers to prevent the display of highlighted search results to users, were found not to infringe.

Notable Disputed Issues and Related Points of Law:

A key issue that the Commission sought to clarify through the parties’ briefing was how the Akamai “single entity” test should be applied, and whether the final ID correctly applied that test to the ’011 patent.

Rovi sought to assert that Comcast directly infringed because they “made” the infringing system. The Commission found, however, that theory of liability had been waived because in Rovi’s post-hearing briefing, Rovi had only argued that Comcast “used,” but did not “make,” the allegedly infringing systems. In post-hearing briefing, Rovi also asserted for the first time that Comcast itself “used” the infringing systems when their employees tested them. That theory also was held to have been waived because it was brought up for the first time in post-hearing briefs.

That left Rovi with the theory that Comcast induced infringement by instructing its users in the infringing use of the imported set top boxes. Relying on Centillion Data Sys., LLC v. Qwest Communications Int’l, Inc., 631 F.3d 1279 (Fed. Cir. 2011) and Intellectual Ventures I LLC v. Motorola Mobility LLC, 870 F.3d 1320 (Fed. Cir. 2107), Comcast argued that its users did not infringe because Comcast, not its users, benefitted from the “indexing” limitation of the patent, but direct infringement required that a single entity, i.e., Comcast’s users, “use” the infringing system, or “control or benefit from” the subject infringement.

The Commission rejected Comcast’s reading of these cases, first finding that there is no requirement that the “use” or “benefit from” requirements be satisfied on a component-by-component basis, or that a user must benefit from each claim limitation. Regardless, the Commission agreed that Comcast’s customers in fact benefitted from each and every element of of claim 9. Although Comcast argued that its users did not benefit from the “indexing” limitation, the Commission found that the indexing exists to serve user queries, and that there is no point in creating, maintaining or updating an index corresponding to user remote control searches if the index is never queried by the user. The Commission further found that the users have “the ability to place the system as a whole into service,” thus satisfying the “direct or indirect control” requirement. Intellectual Ventures, 870 F.3d at 1329.

The Commission thus affirmed the ID and issued a limited exclusion order, and cease and desist orders.

Complainant Waived Certain Theories: The Commission precluded Rovi from pursuing several theories of direct infringement because they had not been raised in post-hearing briefs, but for the first time in briefing before the Commission.

Inventory or domestic operations need not be “commercially significant” for issuance of cease and desist order

In the Matter of CERTAIN ELECTRONIC NICOTINE DELIVERY SYSTEMS AND COMPONENTS THEREOF, Inv. No. 337-TA-1139, Commission Opinion (May 5, 2020)

Before: Commission Opinion (FID issued by Judge Shaw)

Practice Tips and Insights:

Where regulatory compliance is required for a DI product at issue, practitioners should make clear whether evidence submitted in the areas of FDA regulatory compliance activities can only be conducted in the United States. The same practice tip is applicable to warranty and customer support activities. Additionally, the presence of some infringing domestic inventory or domestic operations provides a basis to issue a CDO.

Holding and Status:

The Commission found no violation of section 337, adopted the findings in the FID that are not inconsistent with the Commission’s opinion, and determined that the appropriate relief form of relief is issuance of a LEO and CDO.

Case Background:

The Commission reviewed sua sponte the FID in part and, on review, adopted certain of the FID’s findings. The Commission found a violation of section 337 by reason of respondent Eonsmoke’s importation of certain electronic nicotine delivery systems and components thereof that infringe one or more of the asserted Eonsmoke claims and that complainant Juul Labs, Inc. (“JLI”) is entitled to relief against defaulted respondent XFire pursuant to 19 U.S.C. § 1337 (g)(1).

Notable Disputed Issues and Related Points of Law:

Supporting evidence of domestic industry should distinguish which activities can only be conducted in the United States. With respect to investments in FDA regulatory approval activities relating to the DI product, Commissioner Kearns observed that complainant’s evidence of FDA regulatory compliance activities was unclear as to whether such activities can only be conducted in the United States. However, this issue did not require resolution based on the other sufficient evidence put forth by complainant to satisfy the DI requirement of section 337(a)(3)(A) and (B).

Commissioner does not adopt the view that the inventory or domestic operations needs to be “commercially significant” in order to issue a CDO. Commissioner Schmidtlein reasoned that the presence of some infringing domestic inventory or domestic operations, regardless of its commercial significance, provides a basis to issue a CDO under section 337(f)(1).

Commission Finds Evidence of Technical Prong Insufficient and Apparatus Claim Anticipated

In the Matter of CERTAIN INFOTAINMENT SYSTEMS, COMPONENTS THEREOF, AND AUTOMOBILES CONTAINING THE SAME, Inv. No. 337-TA-1119, Commission Opinion (May 28, 2020)

Before: Commission Opinion

Practice Tips and Insights:

To prove the technical prong at the Commission, Complainant cannot rely on vague testimony without evidence showing the actual practice of each limitation. Additionally, with respect to apparatus claims, the Commission will focus on what a device is, not what a device does. Accordingly, a claim may be anticipated where a prior patent describes a device that is capable of performing a certain function even where said function is not explicitly disclosed and the device must be “configured to” perform.

Holding and Status:

The Commission found no violation of Section 337 as to the Asserted Patents.

Case Background:

The Complainant, Broadcom Corporation, filed a complaint against 25 respondents, claiming respondents violated Section 337 by importing certain automobile information and entertainment systems and components thereof that allegedly infringed seven Broadcom patents. These patents fall broadly into three categories: (1) electronics architecture; (2) electronics for video processing; and (3) navigation satellite systems. After a tutorial, Markman hearing, and an evidentiary hearing, the ALJ issued a Final Initial Determination finding no violation of section 337 with respect to each of the Asserted Patents. Broadcom petitioned the Commission for review of certain of the ALJ’s findings related only to the ‘583 patent and the ‘752 patent. Respondents filed a contingent petition for review of issues related to all of the Asserted Patents except the ‘027 patent and the ‘104 patent. The Commission determined to review: (1) the FID’s construction of the term “at least one processor” in claims 25 and 26 of the ’583 patent; (2) the FID’s infringement and technical prong findings regarding the ’583 patent; (3) the FID’s infringement findings regarding the ’752 patent, in particular, whether the accused Pioneer head units meet the limitations of claims 2 and 5; and (4) the FID’s findings regarding invalidity of the ’752 patent. The Commission determined not to review the FID’s findings of no violation as to the ’187 patent, the ’104 patent, the ’027 patent, and the ’844 patent. The Commission also requested briefing on certain questions related to the issues under review, as well as remedy, bonding, and the public interest.

Notable Disputed Issues and Related Points of Law: 

Proof Necessary to Satisfy Technical Prong Requirement: Broadcom argued that the development and testing of its “Broadcom DI system,” which allegedly included both hardware (physical SoC) and firmware (software that runs on SoC), meets the limitations of claim 25 of the asserted patent, which recites, in relevant part: “A system for distributing clock signals within an electronic device, the system comprising: … at least one register that is controlled by a clock tree driver.” Broadcom argued that when the firmware is executed, the clock tree driver software that is initially stored on the external memory of its customer’s set-top box is brought into the SoC’s internal memory, that both are needed for the system to be operations, and that once executed, the clock tree driver software meets the limitations of claim 25. The Commission disagreed, finding that Broadcom’s DI product is only the SoC and does not include customer set-top boxes or a larger system, and this does not meet the relevant limitation.

In its attempt to satisfy the technical prong, Complainant relied on the testimony of its own engineer, an expert, and system block diagrams. The Commission found that this evidence was insufficient as it was only “vague testimony” without any explanation that “specifically show[ed] the practice of each limitation.” Accordingly, the Commission found that Complainant failed to satisfy the technical prong.

Proof Necessary to Show Anticipation:  The Commission affirmed the FID’s findings that several claims of the ‘752 patent were anticipated and found an additional claim was also anticipated. The Commission found the claim was anticipated because a prior patent “has figures that exactly illustrate [the claim’s] limitation” where there was “no dispute that [the patent’s] figures are enabled and operable.” The Commission explained that as an apparatus claim, the claim at issue is anticipated even if the prior patent’s disclosure is only capable of performing in a specified manner because apparatus claims cover what a device is not what a device does.

Commission Finds The Design Around Product Sufficiently Presented during the Investigation to Warrant a Full Adjudication

In the Matter of CERTAIN HUMAN MILK OLIGOSACCHARIDES AND METHODS OF PRODUCING THE SAME, Inv. No. 337-TA-1120, Commission Opinion (June 8, 2020)

Before: Commission Opinion

Practice Tips and Insights:

Once a design-around is introduced into an investigation, Commission precedent and judicial economy dictates a full adjudication. The parties would do well to litigate such products as part of the investigation.

Holding and Status:

The Commission found a violation of Section 337 as to the asserted claims. But the Commission reversed the ALJ’s refusal to adjudicate a design-around product introduced during discovery.

Case Background:

Glycosyn LLC filed a complaint against Jennewein of Germany, alleging violation of Section 337 by importing certain human milk oligosaccharides that infringe two US patents. Glycosyn eventually narrowed the case to only certain asserted claims of only one of the two patents.

During the investigation, Jennewein sought adjudication of infringement with respect to its TTFL12 bacterial strain, which Glycosyn had not accused in its complaint. But the ALJ decided not to adjudicate the question of infringement as to the TTFL12 strain.

After the evidentiary hearing, the ALJ determined that all but one of the asserted claims were infringed. The ALJ also found that the domestic industry requirement is satisfied.

The Commission determined to review the infringement findings with respect to Jennewein’s bacterial strains adjudicated in this investigation, and the ALJ’s decision not to adjudicate infringement as to the TTFL12 strain.  The Commission determined not to review the remainder of the initial determination.

Notable Disputed Issues and Related Points of Law:

The sole patent at issue, the ’018 patent, titled “Biosynthesis of Human Milk Oligosaccharides in Engineered Bacteria,” relates to “compositions and methods for producing fucosylated oligosaccharides” which are “typically found in human milk” and which “serve critical roles in the establishment of a healthy gut microbiome, in the prevention of disease and in immune function.”   According to the specification, the alleged invention “makes use of an engineered bacterium E. coli or other bacteria engineered to produce” fucosylated oligosaccharides.

The ALJ concluded that the Accused Strains do not literally satisfy the claim term “an exogenous functional β-galactosidase gene,” but that the term is satisfied under the doctrine of equivalents. Specifically, the ALJ found that Jennewein’s Accused Strains include two distinct DNA sequences, namely, lacZα and lacZΩ, which, together, encode for the β-galactosidase enzyme. Although the accused strains do not literally infringe ‘an exogenous functional β-galactosidase gene’ because they lack a single sequence of DNA which functions to create a β-galactosidase gene, the ALJ nevertheless found infringement under the doctrine of equivalents finding “no difference between the combination of lacZα and lacZΩ genes on the one hand, and any particular individual ‘functional β-galactosidase gene’ on the other.”  The Commission agreed.

More notably, however, Jennewein had sought adjudication of infringement with respect to its TTFL12 bacterial strain, which Glycosyn did not accuse in its complaint. Jennewein had identified the TTFL12 strain in its Ground Rule 7.2 disclosure and in its interrogatory responses. Jennewein further produced two documents, a draft article and  a European Patent Application, to establish the relevant features of the TTFL12 strain.

The ALJ had declined Jennewein’s request for adjudication, observing that Glycosyn has not accused the TTFL12 strain of infringement. As the ALJ noted, the Commission follows “a four-factor test as to whether a respondent has met its burden to show that infringement of a redesigned product should be adjudicated,” namely, is the product: “(1) within the scope of the investigation, (2) imported, (3) sufficiently fixed in design, and (4) subject to extensive discovery.” Analyzing those factors, the ALJ found that Jennewein had not met its burden as to the fourth factor.

The Commission began its analysis by reiterating its policy in favor of adjudicating redesigns to prevent subsequent and burdensome proceedings that could have been resolved in the first instance in the original investigation. The Commission further noted that redesigned products remain within the scope of remedial orders that are issued upon the termination of the investigation even if such products were not adjudicated for infringement in the original investigation. Indeed, after a respondent has been determined to be in violation of the Commission’s remedial orders, such orders extend to all infringing products, including redesigned products, regardless of whether they were adjudicated in the original investigation.

Against that general policy and context, the Commission found that Jennewein presented sufficient evidence to put Glycosyn on notice of the relevant features of the TTFL12 strain. The Commission also found that Glycosyn failed to satisfy its burden of establishing infringement with respect to Jennewein’s TTFL12 strain. So, the Commission reversed the ALJ’s decision not to adjudicate infringement with respect to the TTFL12 strain and further found that the TTFL12 strain does not infringe the Asserted Claims.

Redesigned Products Allowed Entry Despite ITC’s Refusal To Adjudicate them as Non-Infringing in the Investigation

Wirtgen America, Inc. v. United States, United States Court of International Trade, (Order Granting Plaintiff’s motion for partial summary judgment regarding Customs’ exclusion of

Plaintiff’s redesigned road-milling machines from entry into the United States, May 18, 2020)

Before: Judge Jennifer Choe-Groves

Practice Tips and Insights:

A common strategy in 337 investigations is to present the ALJ with a redesign to the accused products and get that redesigned product adjudicated as non-infringing by the Commission before issuance of any exclusion order. Where a respondent is not successful in getting that redesign into the investigation in a timely way, importers may be able to use the protest process at Customs and a subsequent action in the Court of International Trade to address redesigns and limit the impact of an exclusion order.

Holding and Status:

Customs is obligated by its regulations and directives to determine whether goods meet the parameters of the subject patent when enforcing a Section 337 exclusion order. If a protest of that decision by Customs is denied, the Court of International Trade has jurisdiction to review the protest, de novo.

Order Background:

Wirtgen is the exclusive U.S. importer of heavy machinery used primarily in road construction and maintenance. The ITC initiated a Section 337 investigation (337-TA-1088 or the “1088 Investigation”) upon a complaint filed by Caterpillar, Inc. and Caterpillar Paving Products, Inc. (collectively, “Caterpillar”) alleging infringement of US Patent No. 7,140,693 B2 (“’693 Patent”). During the 1088 Investigation, Wirtgen redesigned the accused products to avoid infringement and presented the redesign as evidence during the hearing before the ALJ. The ALJ declined to consider the redesigned products, finding that the design had not been implemented in any imported articles, was outside the scope of the investigation and not ripe for a determination of infringement or noninfringement in the investigation. The ITC subsequently issued an LEO barring importation by Wirtgen of infringing products and issued a cease-and-desist order against Wirtgen.

Wirtgen later met with and presented written submissions to Customs attempting to demonstrate that the redesigned products do not infringe and should not be excluded under the LEO. Customs subsequently released certain redesign products but detained six other products that were not released. In response, Wirtgen filed protests on the decision to detain the six products which protests Customs denied.

Wirtgen then filed a Complaint with the Court of International Trade as well as a motion for summary judgment that the redesigned products do not fall within the scope of the LEO and that Customs was wrong to reject Wirtgen’s certification of non-infringement and deny its protests. Defendants argued that the Court of International Trade lacked subject matter jurisdiction to resolve the dispute, claiming that any challenge to the scope of the LEO is within the purview of the ITC rather than this Court. Customs claimed its exclusion decisions are not subject to protest or review by the U.S. Court of International Trade because the ITC is the only agency with authority to make infringement determinations in the context of Section 337. Customs did not challenge the substantive arguments by Wirtgen that its redesign products did not infringe.

Notable Disputed Issues and Related Points of Law:

Jurisdiction: The Court rejected Defendants’ claim that it lacked subject matter jurisdiction over the dispute, finding that Defendant’s argument that the Complaint was a challenge to the scope of the ITC’s LEO or an attempt to modify the LEO. Instead, the Court found that the complaint is a challenge of Customs’ denials of Witgen’s protests which were reviewable decisions subject to the Court’s jurisdiction pursuant to 28 U.S.C. § 1581(a). The Court found that by failing to conduct a substantive analysis, Customs failed to follow its own regulations and directives and that Customs must determine whether goods meet the parameters of the subject patent when enforcing a Section 337 exclusion order. Because the LEO did not specify which road construction machines were infringing, Customs was required to conduct an examination according to its policies and procedures to determine whether the redesigned products were excludable under the LEO (i.e. whether they met the parameters of the asserted claim).

Summary Judgement on The Redesigned Products: The Court further ruled that Customs did not properly excluded the six redesigned products as infringing pursuant to the LEO. Finding that its review of Custom’s protest decisions was de novo, and relying on the fact that the Defendants did not contest non-infringement, the court found that Defendants waived any argument of infringement to rebut Witgen’s allegation of non-infringement.

Commission Finds Violation Based on Trade Dress Infringement

In the Matter of CERTAIN MOTORIZED VEHICLES AND COMPONENTS THEREOF, Inv. No. 337-TA-1132, Commission Opinion (June 18, 2020)

Before: Commission Opinion (ID issued by Judge Elliot)

Practice Tips and Insights:

This case is a reminder that the Commission adjudicates more than just patents. Additionally, respondents are reminded that it is best to introduce design arounds early in the investigation to get a ruling from the ALJ because a finding of violation can substantially injure a business if it is unclear whether future products can be imported.

Holding and Status:

The Commission found a violation of Section 337 based on respondents’ infringement of the complainant’s trade dress.

Case Background:

This litigation began back in September 2018. At that time a 100-day proceeding was instituted to determine whether complainant was contractually barred from making the claims in its complaint. As we previously reported, the claims were found to not be barred.

After full discovery and an evidentiary hearing, Judge Elliot issued a final initial determination that found a violation by way of respondent’s alleged trade dress infringement. Conversely, Judge Elliot found no registered trademark infringement. The Judge also recommended an exclusion order. Both parties filed certain Petitions for Review and comments on the public interest were submitted.

Notable Disputed Issues and Related Points of Law:

Trademark and Trade Dress Infringement:  The Commission’s opinion provides a general framework and overview for how it is assessing trademark and trade dress infringement allegations. This framework includes the three part test set forth in Converse v. ITC related to trademarks: “(1) it has a valid and legally protectable mark; (2) it owns the mark; and (3) [Respondents’] use of the mark to identify goods or services causes a likelihood of confusion.” Likewise, for trade dress, the following three criteria must be met “1) it must be distinctive; 2) it must be nonfunctional; and 3) there must be a likelihood that it will be confused with the accused product.”

The opinion also steps through the critical areas of mark distinctiveness, secondary meaning, and functionality. Ultimately, the Commission agreed that complainant’s trade dress was not generic and non-functional, plus it had acquired secondary meaning.

Survey Evidence: Both sides had submitted certain survey evidence during the underlying investigation. The ALJ assigned no weight to either survey, but the Commission disagreed. Particularly, the Commission found that complainant’s survey evidence was credible and proper but maintained that respondents’ survey should not be given weight. The Commission quoted a District Court case for the proposition that “In designing a survey-experiment, the expert should select a stimulus for the control group that shares as many characteristics with the experimental stimulus as possible, with the key exception for the characteristic whose influence is being assessed.”

Likelihood of Confusion: There was substantial evidence of actual confusion, including customer comments and published articles. This lead the Commission to concluding that there was a likelihood of confusion.

Importation and U.S. Assembly:  There were arguments that the accused vehicles are not imported because assembly takes place in the United States. The respondents particularly argued that this case fell outside the spectrum of Suprema cases because there was no indirect infringement. The Commission, however, found this distinction to be immaterial because trade dress claims fall under Section 337(a)(1)(A) which requires a “nexus between the imported articles and the unfair methods of competition.”

Design Arounds: Respondent requested a carve out or a delay in exclusion that allowed for customs to determine whether new models are infringing the trade dress. The Commission disagreed because it was respondent’s obligation to get the ALJ to rule on the new models if it wanted any type of exemption. “The Commission has determined to require [respondent] to obtain a ruling (via an advisory opinion or a modification proceeding) from the Commission prior to the importation of any component for the infringing Roxor vehicle, including for any future redesign thereof (subject to the exemption for service and repair parts for vehicles already in the possession of consumers as discussed above).”