On July 7, 2014, ALJ E. James Gildea issued Order No. 64 in Certain Integrated Circuit Devices and Products Containing the Same (Inv. No. 337-TA-873).

By way of background, the investigation is based on a complaint filed by Complainant Tela Innovations, Inc. (“Tela”) alleging violation of Section 337 in the importation into the U.S. and sale of certain integrated circuit devices and products containing the same that infringe one or more claims of U.S. Patent Nos. 8,264,049; 8,264,044; 8,258,550; 8,258,547; 8,217,428; 8,258,552; and/or 8,030,689.  See our February 11, 2013 and March 14, 2013 posts for more details on the complaint and the Notice of Investigation, respectively.

In the Order, Respondents filed a motion seeking non-monetary sanctions against Tela for failure to fully comply with Order No. 26, which required Tela to provide an affirmative statement of the date Tela first became aware of inventorship issues with respect to two of the asserted patents.  See our September 30, 2013 post for more information about ALJ Gildea’s ruling in Order No. 26.  Accordingly, Respondents sought a finding that Tela knew at the time the Complaint was filed that it did not own two asserted patents, which they say would mandate a finding of unclean hands.

ALJ Gildea held that Tela’s response was not made in bad faith, such that a finding of sanctions was appropriate.  Specifically, ALJ Gildea held that “[Tela’s] response, while not precisely what was ordered in Order No. 26, sufficiently shows here that [Tela] sought to comply to the extent it felt able.”  Accordingly, ALJ Gildea denied Respondents’ motion.