CAFC Upholds ITC Exclusion Order in Rule 36 Judgment


“Man Controlling Trade” outside the ITC in DC, by NY sculptor Michael Lantz (1942).

The United States Court of Appeals recently issued a Rule 36 Summary Affirmance of the April 27, 2012 Final Determination of the International Trade Commission (hereinafter “Commission” or “ITC”) in In the Matter of Certain Ground Fault Circuit Interrupters and Products Containing Same. A Rule 36 judgment can be entered without an opinion when it is determined by the panel that any one of five conditions exist and a written opinion would not have precedential value.  See What is a Rule 36 Judgment?  The Federal Circuit judgment affirmed the Commission’s general exclusion order, “prohibiting the unlicensed importation of infringing ground fault circuit interrupters and products containing same,” inhibiting infringement on Leviton Manufacturing’s U.S. Patent No. 7,737,809.

The Commission instituted this particular investigation on October 8, 2010, based on a complaint and an amended complaint filed by Leviton Manufacturing Co., of Melville, New York (“Leviton”). The complaint and amended complaint alleged violations of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337), in the importation into the United States, the sale for importation, and the sale within the United States after importation of certain ground fault circuit interrupters and products containing the same by reason of infringement of claims 1-7, 9-11, 13-17, 23-26, and 32-36 of U.S. Patent No. 7,463,124 (“the ’124 patent”); claims 1-11, 13-28, 30-59, 61-64, and 74-83 of U.S. Patent No. 7,737,809 (“the ’809 patent”); and claims 1-4 and 8 of U.S. Patent No. 7,764,151 (“the ’151 patent”).


Patent Litigation Does Not Create “Domestic Industry”

United_States_International_Trade_Commission_sealSeveral weeks ago, the Federal Circuit issued another decision relating to the “domestic industry” requirement.

Motiva, LLC appealed the decision of the International Trade Commission that Nintendo Co., Ltd. and Nintendo of America, Inc. did not violate § 337 of the Tariff Act of 1930 by importing, selling for importation, or selling certain video game systems and controllers. Ultimately, the Federal Circuit determined that the ITC properly determined that a domestic industry does not exist nor is in the process of being established for U.S. Patent Nos. 7,292,151 (“the ‘151 patent”) and 7,492,268 (“the ‘268 patent”). Thus, the decision of the ITC was affirmed.

The dispute between the parties started n 2008, when Motiva filed suit against Nintendo in the United States District Court for the Eastern District of Texas accusing Nintendo’s Wii video game system (“Wii”) of infringing the ’151 patent. The case was later transferred to the United States District Court for the Western District of Washington. In June 2010, that district court stayed the case pending completion of reexamination of the ’151 patent by the U.S. Patent and Trademark Office.


ITC Finds Kodak’s Digital Capture Patent Invalid

On May 21, 2012, the U.S. International Trade Commission’s Judge Thomas Pender issued a notice in the patent infringement battle brought by Eastman Kodak against Apple, Inc. and Research In Motion, Ltd. The decision noted that Apple and RIM infringed upon one of the claims in Kodak’s digital capture patent, but that Kodak’s patent was invalid because of the “obviousness” of claim 15 of the patent. As such, Apple and RIM did not violate 19 U.S.C. § 1337(a)(1) with respect to Kodak’s patent.


Top 5 Patent Law Blog Posts of the Week

Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. If there are any patent blogs you think should be highlighted by our Top 5, please comment on this post and we’ll check them out.

1) IP Watchdog: Patent Drawings: An Economical Way to Expand Disclosure – This post discusses the importance of including patent drawings within patent applications that  show every feature of the invention specified in the claims, and explains when and where the applications would best serve the applicant.

2) Chicago IP Litigation Blog: Determining Senior User is Not an Issue for Motion to Dismiss – This post reports on Arcadia Group Brands Ltd. v. Studio Moderna SA, No. 10 C 7790, Slip Op. (N.D. Ill. Aug. 15, 2011), including both parties’ arguments as well as the judge’s decision. (more…)

The ITC’s Injunctive Relief Power

The International Trade Commission’s recently issued decision to ban HTC smart phones from being imported to the U.S. as a result of the  HTC Android operating system infringing one of Apple’s patents. What is interesting is that the discussion surrounding this matter hasn’t been about whether or not there was any patent infringement, but rather the focus has been on the impact of banning HTC smart phones as the means of remedying the patent infringement.

Dennis Crouch, of Patently-O, provides a great summary on the ITC’s role in patent infringement cases and how it’s power to grant injunctive relief compares with that of the federal courts. Here is an excerpt from Crouch’s summary entitled, “Injunctive Relief and the Public Interest at the ITC”:

In federal court litigation, a court can only award injunctive relief after considering the four equitable factors outlined in eBay v. MercExchange. The ITC is not bound by eBay, but is required to consider the impact that an injunction (or “exclusion order”) would have on competition and consumers.  Interestingly, the ITC order follows a recentNYTimes editorial, by Professors Mark Lemley and Colleen Chien who argued for delay in exclusion orders in order to serve the public interest.

Click here to read the article in full on