Justia International Trade Opinion Summaries

Articles Posted in Intellectual Property
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Plaintiff Wudi Industrial (Shanghai) Co., Ltd. Challenged two adverse rulings made by the district court in favor of defendant Wai L. Wong and his business entity, GT Omega Racing, Ltd. (collectively “GTOR”). Wudi and GTOR are Asian-centered business entities that compete in the marketing of video gaming chairs and other products. In March 2017, Wudi obtained from the United States Patent and Trademark Office (“USPTO”) a registration for the stylized word mark “GTRACING.” For its part, GTOR claimed that it already owned an earlier use of a similar word mark — that is, “GT OMEGA RACING” — and challenged Wudi’s registration of the “GTRACING” word mark in cancellation proceedings before a USPTO component called the Trademark Trial and Appeals Board (the “Board”). In June 2020, the Board ruled in favor of GTOR, concluding that Wudi’s use of the “GTRACING” word mark encroached on GTOR’s earlier use of its own “GT OMEGA RACING” word mark.   The Fourth Circuit vacated the challenged rulings and remanded. The court agreed with Wudi’s primary contention that the district court’s challenged rulings constitute awards of injunctive relief in favor of GTOR and against Wudi. Secondly, the court also agreed that the challenged rulings failed to comport with the applicable Rules of Civil Procedure and controlling precedent. The court emphasized that the First Order possesses all of the necessary attributes and thus qualifies as an injunction order. That is, the First Order contains “clear, enforceable directives” and threatens Wudi with contempt for noncompliance. View "Wudi Industrial (Shanghai) Co., Ltd. v. Wai Wong" on Justia Law

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Corning filed a complaint with the International Trade Commission alleging FS violated 19 U.S.C. 1337 by importing high-density fiber optic equipment that infringed four patents that generally relate to fiber optic technology commonly used in data centers. After investigating, the ALJ found that FS’ importation of high-density fiber optic equipment violated section 337; that FS induced infringement of two claims of the 320 patent, multiple claims of the 456 patent, and four claims of the 153 patent; and that FS’ accused modules directly infringed claims of the 206 patent. The ALJ adopted the Office of Unfair Import Investigations’ construction of “a front opening” as recited in the claims. The ALJ rejected invalidity challenges, including arguments that certain claims of the 320 and 456 patents were not enabled.The Federal Circuit affirmed the Commission’s determination that FS violated section 337, and issuance a general exclusion order prohibiting the importation of infringing high-density fiber optic equipment and components thereof and a cease-and-desist order directed to FS. The court upheld the enablement determination and the claim construction of “a front opening.” View "FS.com Inc. v. International Trade Commission" on Justia Law

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Reynolds filed a complaint at the International Trade Commission alleging that Philip Morris violated Section 337 of the Tariff Act, 19 U.S.C. 1337, through the importation and sale of tobacco products (the IQOS line of electronic nicotine delivery system products) that infringed certain claims of the 123 and 915 patents. The patents are directed to electrically powered “smoking articles” that heat tobacco instead of burning it, providing an inhalable substance in vapor or aerosol form. After an investigation, the Commission barred Philip Morris and its affiliates from importing products infringing the asserted patents.The Federal Circuit affirmed. The Commission satisfied its Section 337 duty to “consult with” the Department of Health and Human Services and asked interested government agencies, including the FDA, to provide written submissions on the public interest factor. The Commission provided a sufficient basis for the issuance of an exclusion order. Philip Morris’s argument that Reynolds’ products that had not received FDA authorization are precluded from consideration by Section 337 for purposes of its domestic industry requirement has no merit. The court also upheld findings of non-obviousness and infringement concerning the patents. View "Philip Morris Products S.A. v. International Trade Commission" on Justia Law

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INVT alleged that the importation and sale of personal devices, such as smartphones, smartwatches, and tablets, infringed INVT's patents. An ALJ determined that the accused devices did not infringe claims 3 and 4 of the 590 patent and claims 1 and 2 of the 439 patent and that INVT had failed to meet the technical prong of the domestic industry requirement as to those claims.The International Trade Commission affirmed the finding of no 19 U.S.C. 1337 (section 337) violation. The Federal Circuit affirmed the determination with respect to the 439 patent because INVT failed to show infringement and the existence of a domestic industry. The 439 patent relates to wireless communication systems, specifically an improvement to adaptive modulation and coding, which is a technique used to transmit signals in an orthogonal frequency division multiplexing system. The asserted 439 claims are drawn to “capability” but for infringement purposes, a computer-implemented claim drawn to a functional capability requires some showing that the accused computer-implemented device is programmed or otherwise configured, without modification, to perform the claimed function when in operation. INVT failed to establish that the accused devices, when put into operation, will ever perform the particular functions recited in the asserted claims. The determination with respect to the 590 patent is moot based on the patent’s March 2022 expiration. View "INVT SPE LLC v. International Trade Commission" on Justia Law

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NBA Properties owns the trademarks of the NBA and NBA teams. In 2020, a Properties investigator accessed HANWJH’s online Amazon store and purchased an item, designating an address in Illinois as the delivery destination. The product was delivered to the Illinois address. Properties sued, alleging trademark infringement and counterfeiting, 15 U.S.C. 1114 and false designation of origin, section 1125(a). Properties obtained a TRO and a temporary asset restraint on HANWJH’s bank account, then moved for default; despite having been served, HANWJH had not answered or otherwise defended the suit. HANWJH moved to dismiss, arguing that the court lacked personal jurisdiction over it because it did not expressly aim any conduct at Illinois. HANWJH maintained that it had never sold any other product to any consumer in Illinois nor had it any “offices, employees,” “real or personal property,” “bank accounts,” or any other commercial dealings with Illinois.The Seventh Circuit affirmed the denial of the motion to dismiss and the entry of judgment in favor of Properties. HANWJH shipped a product to Illinois after it structured its sales activity in such a manner as to invite orders from Illinois and developed the capacity to fill them. HANWJH’s listing of its product on Amazon.com and its sale of the product to counsel are related sufficiently to the harm of likelihood of confusion. Illinois has an interest in protecting its consumers from purchasing fraudulent merchandise. HANWJH alleges no unusual burden in defending the suit in Illinois. View "NBA Properties, Inc. v. HANWJH" on Justia Law

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Broadcom’s 583 patent is directed to reducing power consumption in computer systems by “gating” clock signals with circuit elements to turn the signals ON and OFF for downstream parts of the circuit; its 752 patent is directed to a memory access unit that improves upon conventional methods of requesting data located at different addresses within shared memory. Broadcom alleged violations of 19 U.S.C. 1337 based on Renesas's importation of products that allegedly infringe those patents.An ALJ held that Broadcom failed to demonstrate a violation with respect to the 583 patent, citing the technical prong of the domestic industry requirement; Broadcom failed to identify an actual domestic industry article that practices claim 25. For the 752 patent, the ALJ held that claim 5 would have been unpatentable as obvious. The International Trade Commission affirmed. In inter partes review, the Patent Trial and Appeal Board held that claims 25 and 26 of the 583 patent and claims 1, 2, 5, 7, and 8 of the 752 patent would have been obvious over prior art but that Renesas failed to demonstrate that other claims of the 583 patent would have been obvious.With respect to the 583 patent, the Federal Circuit affirmed the Board’s holding and affirmed the holding that there was no domestic industry. With respect to the 752 patent, the court affirmed the entirety of the Board’s holding. View "Broadcom Corp. v. International Trade Commission" on Justia Law

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In 2017, Kyocera filed a complaint with the International Trade Commission, alleging Koki was violating 19 U.S.C. 1337 by importing gas spring nailer products that infringe or were made using methods that infringe, certain claims in five patents. Those patents generally relate to linear fastener driving tools, like portable tools that drive staples, nails, or other linearly driven fasteners. The Commission held that Koki induced infringement.The Federal Circuit vacated. The ALJ erred in admitting certain expert testimony. The court upheld claim construction with respect to “driven position” and “main storage chamber” but rejected the construction of “lifter member.” The “safety contact element” and “fastener driving mechanism” should have been construed as separate components. View "Kyocera Senco Industrial Tools Inc.v. International Trade Commission" on Justia Law

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Ayla, a San Francisco-based brand, is the registered owner of trademarks for use of the “AYLA” word mark in connection with on-site beauty services, online retail beauty products, cosmetics services, and cosmetics. Alya Skin, an Australian company, sells and ships skincare products worldwide. Ayla sued in the Northern District of California, asserting trademark infringement and false designation of origin under the Lanham Act, 15 U.S.C. 1114, 1125(a).Alya Skin asserted that it has no retail stores, offices, officers, directors, employees, bank accounts, or real property in the U.S., does not sell products in U.S. retail stores, solicit business from Americans, nor direct advertising toward California; less than 10% of its sales have been to the U.S. and less than 2% of its sales have been to California. Alya Skin uses an Idaho company to fulfill shipments outside of Australia and New Zealand. Alya Skin filed a U.S. trademark registration application in 2018, and represented to potential customers that its products are FDA-approved; it ships from, and allows returns to, Idaho Alya Skin’s website listed U.S. dollars as the default currency and advertises four-day delivery to the U.S.The Ninth Circuit reversed the dismissal of the suit. Jurisdiction under Fed.R.Civ.P. 4(k)(2) comports with due process. Alya Skin had minimum contacts with the U.S., and subjecting it to an action in that forum would not offend traditional notions of fair play and substantial justice. The company purposefully directed its activities toward the U.S. The Lanham Act and unfair competition claims arose out of or resulted from Alya Skin’s intentional forum-related activities. View "Ayla, LLC v. Alya Skin Pty. Ltd." on Justia Law

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Bio-Rad’s patents relate to the generation of microscopic droplets, contiguous fluid that is encapsulated within a different fluid, by using a microfluidic chip. Typically, the inner fluid is water-based, while the outer fluid is oil. The patents arise out of research conducted by inventors at QuantaLife. In 2011, Bio-Rad purchased QuantaLife, acquiring QuantaLife’s patent rights. The inventors became employees of Bio-Rad and executed assignments of their rights to applications that later issued as the 664, 682, and 635 patents. Soon after Bio-Rad acquired QuantaLife, three inventors left Bio-Rad to start 10X, which has developed technology and products in the field of microfluidics, with the goal of achieving DNA and RNA sequencing at the single-cell level. Bio-Rad alleged that 10X violated the Tariff Act, 19 U.S.C. 1337, by importing into the U.S. certain microfluidic chips. The Trade Commission concluded that 10X did not infringe the 664 patent by importing its “Chip GB” but infringed the 664, 682, and 635 patents by importing its “GEM Chips.” The Federal Circuit affirmed. The construction of the term “droplet generation region” is consistent with the intrinsic evidence; substantial evidence established that the use of 10X’s GEM chips directly infringes the asserted claims. Bio-Rad proved the elements of induced and contributory infringement of the 682 and 635 patents with respect to the GEM Chips. View "Bio-Rad Laboratories, Inc. v. United States International Trade Commission" on Justia Law

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10X filed a complaint with the International Trade Commission, alleging that Bio-Rad’s importation and sale of microfluidic systems and components used for gene sequencing or related analyses violated the Tariff Act of 1930, 19 U.S.C. 1337, which prohibits importation and sale “of articles that . . . (i) infringe a valid and enforceable United States patent.”An ALJ determined that Bio-Rad violated the statute with respect to all three patents finding that Bio-Rad infringed the patent claims and that 10X practiced the claims, satisfying the requirement of a domestic industry “relating to the articles protected by the patent.” The ALJ rejected Bio-Rad’s defense that it could not be liable for infringement because it co-owned the asserted 10X patents under assignment provisions that two of the named inventors signed when they were employees of BioRad (and its predecessor), even though the inventions were not made until after the employment.The Commission and Federal Circuit affirmed. Substantial evidence supports findings that Bio-Rad infringed the asserted claims and that 0X’s domestic products practice the asserted claims. The court rejected Bio-Rad’s indefiniteness challenge. The assignment provisions did not apply to a signatory’s ideas developed during the employment solely because the ideas ended up contributing to a post-employment patentable invention in a way that supports co-inventorship of that eventual invention. View "Bio-Rad Laboratories, Inc. v. International Trade Commission" on Justia Law