IP Newsflash

The PTAB denied a petitioner’s motion to compel routine discovery that sought information from a parallel ITC investigation for alleged inconsistent positions taken by patent owner in the IPR. The board found that patent owner had not taken inconsistent positions but warned patent owner that it had an ongoing duty to produce any information inconsistent with arguments made during the present IPR, even if that information related to arguments patent owner had dropped at the ITC.

In an appeal from the ITC, the Federal Circuit recently held that by presenting cumulative financial data across different products that practice various combinations of patents, appellant provided insufficient evidence for a court to evaluate domestic industry for any individual patent. And as a result, the court affirmed the ITC’s determination that the appellant failed to satisfy its burden to establish a domestic industry for any of its asserted patents.

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.

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.