On July 22, 2021, Chief ALJ Bullock issued the public version of his recommended determination (“RD”) in a modification proceeding of Certain Gas Spring Nailer Products and Components Thereof (Inv. No. 337-TA-1167).

By way of background, this investigation was originally instituted on November 14, 2017 based on a complaint by Kyocera Senco Brands Inc. of Cincinnati, Ohio (“Kyocera”) alleging a violation of section 337 in the unlawful importation/sale of certain gas spring nailer products and components thereof that infringe one or more claims of U.S. Patent Nos. 8,011,547; 8,267,296; 8,267,297; 8,387,718; 8,286,722; and 8,602,282. See our November 16, 2017 post for more details regarding the complaint and Notice of Investigation. Following the investigation, on March 5, 2020, the Commission issued a limited exclusion order (“LEO”) and a cease-and-desist order (“CDO”) directed to Respondent Hitachi Koki U.S.A., Ltd., now known as Koki Holdings America Ltd. (“Koki”) regarding the unlicensed entry and sale of gas spring nailer products and components thereof that infringe one or more of claims 1, 10, and 16 of the ’718 patent.

On June 30, 2020, U.S. Customs and Boarder Protection (“CBP”) issued a ruling that Koki redesigns were outside the scope of the LEO. Kyocera subsequently petitioned the Commission for a modification proceeding to determine whether Koki’s redesigned gas spring nailer product infringed the claims of the ’718 patent that are the subject of the LEO and CDO. On September 16, 2020, the Commission instituted the modification proceeding “to determine whether Koki’s redesigned products infringe asserted claims 1, 10, or 16 of the ’718 patent, and are therefore covered by the LEO directed against Koki’s infringing products and the CDO issues against Koki.” The modified proceeding was assigned to Chief ALJ Bullock.

According to the RD, the LEO issued on March 5, 2020 and Koki began selling the resigned products in May 2020. Because the redesigned products were sold after issuance of the LEO, they could not have been considered in the underlying investigation. Accordingly, Chief ALJ Bullock found that changed conditions of fact exist under Commission Rule 210.76(a)(1).

With respect to whether Koki’s redesigned products infringe asserted claims 1, 10, or 16 of the ’718 patent, Chief ALJ Bullock found that based on the construction of the claim term “bottom firing mode” from the original investigation, the redesigned products do not have the claimed “bottom firing mode” and thus do not infringe claims 1, 10, or 16 of the ’718 patent. Accordingly, Chief ALJ Bullock recommended that the LEO and CDO be modified so as to not apply to the redesigned products.