On August 15, 2016, Judge Essex issued the public version of Order No. 14 in Certain RF Capable Integrated Circuits and Products Containing the Same, Inv. No. 337-TA-982, denying Apple, Inc.’s motion for summary determination of non-infringement. Judge Essex held that summary determination of non-infringement was improper where the respondent has not provided affirmative evidence that the products at issue do not infringe the asserted patents.
Complainant ParkerVision filed a Section 337 complaint alleging infringement of four U.S. patents by various smartphone and chip makers, including Apple. In its interrogatory responses, ParkerVision listed certain of Apple’s iPhone products (“disputed iPhone products”) as accused products, but, despite receiving technical discovery relating to the disputed iPhone products from Apple, ParkerVision did not provide any infringement contentions or expert analysis with respect to those products.
Apple, supported by OUII, moved for summary determination of noninfringment as to the disputed iPhone products arguing that ParkerVision failed to provide evidence of infringement. ParkerVision subsequently amended its interrogatory responses to remove the disputed iPhone products as accused products and argued in response to Apple’s motion that summary determination of non-infringement should not be entered because the products are not part of the investigation.
Judge Essex denied Apple’s motion, agreeing with ParkerVision that the disputed iPhone products are not part of the investigation. Judge Essex stated that he “declines to make a finding of noninfringement on summary determination simply because (1) a respondent has produced discovery on certain products, regardless as to how sensitive or confidential, and (2) the complainant has chosen not to accuse said products. Without some sort of affirmative showing of noninfringement by the respondent, a finding of noninfringement is not warranted under Commission precedent.” Order No. 14 at 10. In making his decision, Judge Essex distinguished three cases cited by Apple and Staff by noting that “the respondents in each of those investigations made affirmative showings of noninfringement by the non-accused products.” See Certain Electronic Digital Media Devices and Components Thereof, Inv. No. 337-TA- 796; Certain Multiple Mode Outdoor Grills and Parts Thereof, Inv. No. 337-TA-895; and Certain Television Sets, Television Receivers, Television Tuners, and Components Thereof, Inv. No. 337-TA-910.
Judge Essex’s decision is enlightening given the relative burdens in a patent infringement matter. Generally, a respondent need not provide affirmative evidence of non-infringement because the complainant bears the burden of proof on that issue. Based on Judge Essex’s decision, merely because a product has been put at issue (even if later withdrawn) does not mean that the ITC will adjudicate the merits of that product. A Section 337 respondent should be prepared to provide discovery and affirmative evidence of non-infringement with respect to products it wants the ITC to adjudicate. This is especially true in the context of a design-around intended to mitigate against exposure to an exclusion order.