News & Analysis as of

Patent Infringement Discovery International Trade Commission (ITC)

Schwabe, Williamson & Wyatt PC

Latest Federal Court Case: Kroy IP Holdings, LLC v. Groupon Inc.

After an inter partes review finds certain claims of a patent unpatentable, may the patentee assert other claims, immaterially different, in district court without being collaterally estopped? This was the question presented...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: Trudell Medical International Inc. v. D R Burton Healthcare, LLC

Trudell Medical International Inc. v. D R Burton Healthcare, LLC, Appeal Nos. 2023-1777, -1779 (Fed. Cir. Feb. 7, 2025) This week’s Case of the Week presents a cautionary tale for litigators to be sure they’ve timely...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Denies Motion to Compel Discovery of Evidence from Parallel ITC Investigation Due to Lack of Inconsistency

The PTAB denied a petitioner’s motion to compel routine discovery that sought information from a parallel ITC investigation for alleged inconsistent positions taken by patent owner in the IPR. The board found that patent...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2023 ITC Section 337 Year in Review: Analysis & Trends: Looking Beyond Inventory Numbers to Secure a Cease and Desist Order

The Commission may grant a cease and desist order (“CDO”) when it finds a violation of Section 337. See 19 U.S.C. 1337(f)(1). Historically the Commission would grant a CDO upon a showing that a respondent had a “commercially...more

Jones Day

PTAB Does Not Provide a Supplemental Discovery Venue

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Following the grant of institution of a recent IPR petition in the matter of Satco Products, Inc. v. The Regents of the University of California, IPR2021-00662, Paper 26 (PTAB Feb. 11, 2022) concerning U.S. Patent No....more

Kerr Russell

What To Know About The US International Trade Commission

Kerr Russell on

The International Trade Commission (ITC) of the United States is an independent and quasi-judicial federal agency that handles a range of trade-related matters. The main functions of ITC are to investigate and make...more

Jones Day

ITC Denies Motion to Stay After Weighing Semiconductor Chips Factors

Jones Day on

In a recent order, the ITC denied a motion to stay after ALJ Bullock found that the balance of the Semiconductor Chips factors weighed against granting the motion. See In re Certain Memory Modules And Components Thereof, Inv....more

Jones Day

ITC Permits Addition of Invalidity Defense Previously Raised By Terminated Respondent

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Administrative Law Judge (“ALJ”) McNamara’s recent order suggests that respondents may be permitted to add defenses if another respondent makes the complainant aware of the defense during discovery. See In the Matter of...more

Jones Day

Inducement After Importation Actionable Under Section 337

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Complainants often must rely on indirect infringement to prove a violation of Section 337. Indirect infringement may be in the form of induced or contributory infringement. In a recent opinion, the Commission clarified issues...more

Jones Day

When Is It Too Late to Amend an Answer to an ITC Complaint?

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We recently posted about when a complainant is permitted to amend its complaint and the good cause that must be shown. Similar issues arise where a respondent wants to amend an answer without showing good cause. An order...more

Jones Day

When Is It Too Late to Amend an ITC Complaint?

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In a recent order, Administrative Law Judge McNamara denied Complainants Advanced Micro Devices, Inc. and ATI Technologies ULC’s motion for leave to file an amended complaint to assert U.S. Patent Nos. 8,760,454 and 9,582,846...more

Jones Day

Diagrams Not Considered Source Code Under Modified Protective Order

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In a recent Order, ALJ McNamara clarified that while diagrams drawn by an expert depicting the interplay and hierarchy of relevant code modules, inputs, and outputs of source code are to be treated as confidential business...more

Jones Day

CALJ Denies Motion to Supplement Expert Reports

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In Certain Integrated Circuits with Voltage Regulators and Products Containing Same; Inv. No. 337-TA-1024, Chief ALJ Bullock recently denied a motion by Complainant R2 Semiconductor, Inc. to take additional discovery and...more

Jones Day

Cover All Your Bases in ITC Discovery

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Certain Access Control Systems and Components Thereof, Inv. No. 337-TA-1016 (May 31, 2017), is a good lesson in covering all your bases. Relying on a non-infringement decision by ALJ Pender, respondents assumed that they did...more

Foley & Lardner LLP

A Perfect Storm for Automotive Patent Disputes?

Foley & Lardner LLP on

As the automotive industry rebounds from its recessionary levels to an all time record level of spending on vehicles and healthy profitability, one of the key drivers of the increased vehicles sales has been increased...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Section 337’s Potential for Defending Biologics Market Share Against Biosimilars

Enforcement of biologic patents at the United States International Trade Commission under Section 337 provides certainty and tactical advantages to patent holders that are unavailable in district court under the BPCIA. For...more

King & Spalding

ITC Section 337 Update - February 2015

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Oral Argument Fails To Shed Light On The Outcome Of Anticipated En Banc Federal Circuit Decision In Suprema – On February 8, oral argument was held before the en banc Federal Circuit in Suprema v. Int’l Trade Comm’n, Case No....more

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