On January 14, 2016, ALJ David P. Shaw issued the public version of Order No. 12 in Certain Windscreen Wipers and Components Thereof (Inv. No. 337-TA-964).  Please note that Oblon represents the Respondents in this matter.

By way of background, this investigation is based on a July 20, 2015 complaint filed by Trico Products Corp. (“Trico”) alleging violation of Section 337 in the importation into the U.S. and sale of certain windscreen wipers and components thereof that infringe one or more claims of U.S. Patent Nos. 6,836,925 (“the ‘925 patent”) and 6,799,348 (“the ‘348 patent”).  See our July 20, 2015 and August 19, 2015 posts for more details on the complaint and Notice of Investigation, respectively. 

According to the Order, Respondents Valeo North America, Inc. and Delmex de Juarez S. de R.L. de C.V. (collectively, “Valeo”) filed a motion seeking to terminate the investigation due to Trico’s lack of standing to bring the action.  While the parties did not dispute whether Trico has constitutional standing to assert the ‘925 and ‘348 patents before the Commission, the parties disputed whether Trico has prudential standing to assert the patents in suit.  Specifically, Valeo disputed whether Trico owned all substantial rights in the ‘925 and ‘348 patents when it filed its complaint in the investigation.  In response, Trico argued that it had not assigned away or licensed any of its patent rights.

After considering the arguments and the evidence, ALJ Shaw found that Valeo had failed to rebut Trico’s prima facie showing that it had standing to assert the ‘925 and ‘348 patents.  Specifically, ALJ Shaw found that the named inventors assigned their rights in the patents to Trico and that there was no evidence of record that Trico had transferred any of those rights.  Accordingly, ALJ Shaw denied the motion to terminate the investigation.