IP Newsflash

The Federal Circuit’s decision in Kyocera Senco Industrial Tools Inc. v. International Trade Commission articulated a bright-line test for patent expert admissibility: to testify from the perspective of a “person of ordinary skill in the art” (POSITA), the expert must at least meet the definition of a POSITA for the patents-in-suit. Absent that level of skill, Kyocera holds that the witness’s testimony is not sufficiently reliable or relevant enough to be relied on by a fact-finder.

The Federal Circuit recently affirmed an ITC holding that the AIA’s § 102 on-sale bar applies to the sale of a product made according to a secret process when that sale occurs more than one year before the patent’s effective filing date. In so doing, the court confirmed that, despite changes to the text of § 102, the AIA did not undo long-settled pre-AIA precedent that the on-sale bar applies when, before the critical date, a party sells products secretly made using a patented process.

In Kyocera Senco Industrial Tools Inc. v. International Trade Commission, the Federal Circuit held that an expert who did not possess the specific defined level of ordinary skill in the art could not testify about infringement, despite having advanced degrees and extensive experience in the general field of study. In so doing, the court confirmed that it is the defined level of skill in the art that determines whether an expert can provide relevant and reliable testimony from the perspective of a skilled artisan.

A recent initial determination at the U.S. International Trade Commission (ITC) determined that claims directed to semiconductor chips with no lower bounds for recited gate pitch and width ranges (e.g., “less than or equal to about [X] nanometers”) were not enabled under 35 U.S.C. § 112. Specifically, it found that a person of ordinary skill could not practice the full scope of the claims, in particular at the lower bounds of the recited ranges, without undue experimentation.

On April 7, 2020, the International Trade Commission (ITC) overturned certain findings in the Final ID and reversed the Final ID’s finding of a violation of Section 337 by several SK hynix entities (the “Respondents”) with respect to one of two patents asserted by the Complainant, Netlist, Inc. The ITC determined: (1) the Respondents’ accused products did not infringe either of the asserted patents, (2) Netlist failed to provide sufficient evidence that its products satisfied the technical prong of the domestic industry requirement, and (3) the asserted patents were not essential to the JEDEC technical standard. To read the full alert, please click here.

Although issues of inter partes review (IPR) estoppel have arisen often in district court litigation, they have come up less often in the context of International Trade Commission (ITC) investigations. In a recent ITC decision, ALJ Cheney ruled that the Commission Investigative Staff was not barred from asserting invalidity based on prior art references that the respondent had unsuccessfully raised in an IPR proceeding.

In an order from the International Trade Commission (ITC), Administrative Law Judge Lord denied Respondents’ motion for summary determination of no domestic industry because the motion was based on an incorrect interpretation of the term “article” in Section 337(a)(2).

On June 23, 2016, the International Trade Commission (ITC) determined that a Section 337 violation has occurred in Certain Footwear Products (Inv. No. 337-TA-936). As a result, it issued a general exclusion order prohibiting the unlicensed entry of footwear products that infringe two marks directed to the outsole layout of Converse Inc.’s (“Converse”) famous Chuck Taylor shoe (U.S. Trademark Registration Nos. 3,258,103 (the ‘103 trademark) and 1,588,960 (the ‘960 trademark)). The ITC determined that the public interest factors do not preclude issuance of the general exclusion order. The ITC also determined that a bond of 100 percent of the entered value (per pair) of the covered products is required to permit temporary importation during the presidential review period.