Patent Office
May 23, 2016ITC News, ITC Procedures

No Stays of ITC Proceedings Based on IPRs, But Commission Grapples With Effect of A Final PTAB Decision

On March 3, 2016, Administrative Law Judge David Shaw denied a motion to stay Investigation No. 337-TA-983 pending resolution of instituted inter partes reviews (IPR) for two of the three patents asserted in the investigation. The requested stay was denied even though the two IPRs were scheduled to conclude before the anticipated target date for the ITC investigation’s final determination. ...›

May 10, 2016ITC News

Mark Whitaker Joins Editorial Board for MoFo@ITC Blog

Mark Whitaker, an IP litigation partner in the firm’s Washington, D.C. office, has joined the editorial board for the MoFo@ITC blog. Leveraging more than 25 years of experience crafting litigation strategies before the U.S. district courts, the International Trade Commission (ITC), and the Court of Federal Claims, Mark will be a regular contributor to the blog. ...›

Jawbone
May 6, 2016ALJ Decisions

Activity Tracking Devices – Update: Judge Lord Finds Remaining Patents Invalid Under Section 101

On April 27, Judge Dee Lord found the two remaining Jawbone patents in the 963 Investigation (Certain Activity Tracking Devices, Systems, and Components Thereof) invalid under Section 101. The two patents subject to this Initial Determination were family members of one of the patents Judge Lord found invalid on March 3, a decision the Commission adopted on April 4. ...›

IP
April 8, 2016ITC Procedures

Comments on ITC’s Proposed Amendments to Rules, Including Making the 100-Day Pilot Program Permanent

On September 24, 2015, the ITC published a Notice of Proposed Rulemaking (“NOPR”) to make several amendments to its Rules of Practice and Procedure, including, inter alia, (1) codifying and expanding the pilot program for early resolution of potentially dispositive issues within 100 days of institution, (2) allowing for institution of multiple investigations based on a single complaint, and (3) requiring the notice of institution to specify the accused products within the scope of the investigation. ...›

Digital Models
March 31, 2016Federal Circuit

ClearCorrect v. ITC: Federal Circuit Denies En Banc Review of Decision on ITC’s Jurisdiction Over Electronic Transmissions

Today, the Federal Circuit rejected petitions for rehearing en banc in ClearCorrect v. International Trade Commission. The three-judge panel’s November 10, 2015 opinion, which held that the International Trade Commission (ITC) does not have jurisdiction to block the importation of electronic transmissions that infringe U.S. intellectual property, therefore remains in effect. ...›

General Exclusion Orders
March 9, 2016Litigation Strategy

Time for Another Look At General Exclusion Orders?

One of the most attractive attributes of Section 337 proceedings from a complainant’s perspective is the ITC’s unique exclusionary remedies against infringing imports. Specifically, the ITC has the power to issue exclusion orders directing U.S. Customs and Border Protection to block the importation of products that infringe U.S. patents. ...›

Lexmark v. Impression
February 26, 2016Federal Circuit

Lexmark v. Impression: Federal Circuit Holds that Restricted Sales and Foreign Sales Do Not Exhaust Patent Rights

In Lexmark International, Inc. v. Impression Products, Inc., the en banc Federal Circuit held that (1) the sale of an article under clearly communicated and otherwise lawful restrictions on use and resale avoids patent exhaustion and preserves the patentee’s rights to pursue infringement remedies both against the buyer and downstream buyers with knowledge of the restrictions, and (2) a patentee’s or licensee’s foreign sales of a patented article do not exhaust the U.S. patent rights in the article sold, even if no reservation of those rights accompanies the sale. ...›