We would like to alert you to the following developments regarding Section 337 investigations in the International Trade Commission (ITC):
- New Chief Judge at ITC;
- New Administrative Law Judge at ITC;
- Status of Broadcom/Qualcomm Section 337 Investigation and Enforcement;
- Status of Philip Morris Section 337 Investigation regarding Grey Market Goods;
- Changes to Procedural Rules for Section 337 Investigations; and
- Statistical Analysis of Section 337 Investigations
New Chief Administrative Law Judge.
Judge Paul J. Luckern (an ITC Administrative Law Judge since 1984) was named the Chief Administrative Law Judge at the ITC. He will continue to hear cases and will manage the 337 investigation caseload among the Commission’s ALJs.
New Administrative Law Judge.
Judge Robert K. Rogers was named an Administrative Law Judge at the ITC. Prior to the appointment, Judge Rogers was an Administrative Law Judge at the Office of Medicare Hearings and Appeals, the Federal Energy Regulatory Commission, and the Social Security Administration, which commonly supplies Administrative Law Judges to the Commission.
Notable Section 337 Proceedings
Broadcom/Qualcomm, 337-TA-543 (Certain Baseband Processor Chips and Chipsets, Transmitter and Receiver (Radio) Chips, Power Control Chips, and Products Containing Same, Including Cellular Telephone Handsets)
Enforcement Proceeding at ITC: Judge Bullock postponed his initial determination and the target date for the Commission’s decision for the Qualcomm v. Broadcom enforcement proceeding. Judge Bullock’s initial determination regarding whether the Commission’s remedies apply to Qualcomm’s “design-around” chips, which was originally scheduled for July 28, 2008, will issue on November 28, 2008.
Fed. Cir. Appeal of Violation Phase: Federal Circuit Oral arguments were held for the violation phase of the Broadcom/Qualcomm Section 337 investigation. The arguments centered around whether the Commission had authority to extend a limited exclusion order to downstream products. This decision most likely will provide instruction to future complainants seeking downstream relief through Section 337 investigations.
Philip Morris/Internet Retailers, 337-TA-643 (Certain Cigarettes and Packaging Thereof)
Investigation Background: The Commission voted to institute a Section 337 investigation regarding “grey market” goods. Grey market goods cases have been relatively rare in the history of Section 337 proceedings. In this case, Philip Morris has sought relief against
a number of foreign internet cigarette retailers. The allegations include that products being imported by the internet retailers, containing trademarks such as MARLBORO, are materially different from the domestic products.
Current Status: Judge Luckern issued an order requiring 11 (out of 13) respondents who failed to respond or adequately respond to the Complaint to explain why they should not be held in default. In accordance with the Commission’s regulations regarding defaulting respondents, Philip Morris may obtain limited exclusion orders against respondents held in default. The issuance of limited exclusion order in this investigation infers that a party may start obtaining relief against grey market internet retailers within 4-5 months of filing a Section 337 complaint.
Changes to Rules of Practice and Procedure
Amendments to the International Trade Commission’s Rules of Practice and Procedure became effective August 8, 2008. Under the new rules:
- Parties will have one additional day for response deadlines when service is by overnight delivery;
- Parties must designate in the notice of appearance a single attorney or representative to receive service from the Commission. Under the current rules, the Commission serves all appearing attorneys;
- Complainant may serve the complaint upon a respondent in certain circumstances. Under the current rules the Commission serves the complaint upon the respondents. The new rule addresses, for example, circumstances when the Commission is unable to locate a respondent to make service;
- Complainant must furnish IP licenses only if the allegation of domestic industry implicates the licenses. Further, the new rules do not require multiple copies of licenses in the appendix to a complaint. Under current rules, all licenses relating to the subject IP are required with the Complaint;
- Complainant must include information regarding foreign patents in its Complaint. This is a new requirement;
- Complainant must include in the Complaint infringement claim charts for each asserted independent claim. Under current rules, only a representative infringement claim chart per patent was required in the Complaint;
- Summary determination motions are due 60 days prior to hearing. Under current rules, motions for Summary Determination are due 30 days prior to a hearing;
- Parties must provide a status notification to the Commission of parallel district court proceedings. This is a new requirement;
- Terminations by settlement or consent decree need not constitute determinations of violation. Currently, most terminations by settlement or consent decree incorporated violation determinations;
- Responses to interrogatories, document requests, or requests for admission are due in 10 days, unless otherwise stated by the Administrative Law Judge (“ALJ”). This is a new codification in the regulations of the commonly utilized response time frame;
- Initial determinations must issue four months prior to a target date in all circumstances. Currently, the amount of time prior to the target date that the initial determination issued differs depending upon the length of time from initiation until the target date;
- An ALJ may set a target date for 16 months without Commission review. Under the current rules, the Commission reviewed target dates set for over 15 months. The new rules reflect a time frame that has become common practice, thereby alleviating the burden on the Commission to review the lengthier target dates; and
- The new regulations clarify that the Commission has authority to issue civil penalties to enforce an ITC order, as opposed to the commonly accepted notion that a district court issues and enforces civil penalties to enforce an ITC order.
New Investigations Instituted
337-TA-644 (Composite Wear Components): instituted April 22 based on a complaint filed by Magotteaux International S/A of Belgium and Magotteaux, Inc., of Franklin, TN, against respondents from the US, India, and Italy. Judge Essex will preside over this patent infringement proceeding.
337-TA-645 (Vein Harvesting Surgical Systems): instituted April 29 based on a complaint filed by Maquet Cardiovascular L.L.C. against Japanese respondents and US affiliates. Judge Charneski will preside over this patent infringement proceeding.
337-TA-646 (Power Supplies): instituted May 5 based on a complaint filed by Ultra Products, Inc. and Systemax, Inc., against Taiwanese respondents and U.S. affiliates. Judge Bullock will preside over this patent infringement proceeding.
337-TA-647 (Handheld Meat Tenderizers): instituted May 8 based on a complaint filed by Jaccard Corporation against respondents from the US. Judge Luckern will preside over this patent infringement proceeding.
337-TA-648 (Semiconductor Integrated Circuits Using Tungsten Metallization): instituted May 15 based on a complaint filed by LSI Corporation and Agere Systems, Inc. against respondents from Taiwan, Japan, China, Switzerland, Netherlands, and the United States. Judge Charneski will preside over this patent infringement proceeding.
337-TA-649 (Certain Semiconductor Chips with Minimized Chip Package Size): instituted May 21 based on a complaint filed by Tessera, Inc. against respondents from Taiwan, Singapore and the United States. Judge Essex will preside over this patent infringement proceeding.
337-TA-650 (Coaxial Cable Connectors): instituted May 23 based on a complaint filed by John Mezzalingua Associates, Inc., d/b/a PPC, Inc. against respondents from China, Taiwan, and the United States. Judge Bullock will preside over this trademark infringement proceeding.
337-TA-651 (Automotive Parts): instituted May 29 based on a complaint filed by Ford Global Technologies against respondents from Taiwan and the United States. Judge Essex will preside over this design patent infringement proceeding.
337-TA-652 (Rubber Antidegradant Intermediates): instituted July 3 based on a complaint filed by Flexsys America L.P. against respondents from China, South Korea and US affiliates. Judge Luckern will preside over this design patent infringement proceeding.
New Complaints Filed
Pet Feeders: filed July 22 by OurPet’s Company against Indian companies.
Base Stations and Wireless Microphones: filed July 22 by L-3 Communications Mobile-Vision, Inc. against South Korean and U.S. companies.
Peripheral Devices: filed July 30 by Microsoft Corporation against Taiwanese company Primax Electronics Ltd.