Justia International Trade Opinion Summaries

Organik and Dow both manufacture opaque polymers, hollow spheres used as additives to increase paint’s opacity. Dow has maintained its worldwide market-leader position through a combination of patent and trade-secret protections. Dow filed a complaint with the International Trade Commission requesting an investigation into whether Organik’s opaque polymer products infringed four Dow patents. The Commission granted Dow’s request, and the parties began discovery. During the proceedings, Dow amended its complaint to add allegations of trade secret misappropriation when it discovered that Organik may have coordinated the production of its opaque polymers with the assistance of former Dow employees. As Dow attempted to obtain discovery relating to the activities of those employees, Dow discovered spoliation of evidence “on a staggering scale.” The Federal Circuit affirmed the Commission’s imposition of default judgment and entry of a limited exclusion order against Organik as sanctions for the spoliation of evidence. Organik’s “willful, bad faith misconduct” deprived Dow of its ability to pursue its trade secret misappropriation claim effectively. The record supports the limited exclusion order of 25 years with the opportunity for Organik to bypass that order at any time if it can show that it has developed its opaque polymers without using Dow’s misappropriated trade secrets. View "Organik Kimya v. International Trade Commission" on Justia Law

Newbridge, headquartered in Newbridge, Ireland, designs, manufactures and sells housewares and silverware around the world under the mark NEWBRIDGE HOME. Newbridge designs its products in Newbridge, Ireland, and manufactures someof its products there. In the U.S. its products are available for sale through its website and through retail outlets that feature products from Ireland. The NEWBRIDGE HOME mark is the subject of an International Registration, which was filed through the International Bureau of the World Intellectual Property Organization. Newbridge sought protection of the mark pursuant to the Madrid Agreement and Madrid Protocol, under which the U.S. Patent and Trademark Office (PTO) examines international registrations for compliance with U.S. law, 15 U.S.C. 1141. Newbridge disclaimed the word HOME apart from the mark as a whole in the application. It sought registration for listed items of silverware, jewelry, desk items and kitchenware. The Trademark Examiner refused to register the mark as being primarily geographically descriptive. The Trademark Trial and Appeal Board affirmed. The Federal Circuit reversed. The evidence as a whole suggests that Newbridge, Ireland, is not generally known; to the relevant public the mark NEWBRIDGE is not primarily geographically descriptive of the goods, which is what matters. View "In re: Newbridge Cutlery Co." on Justia Law

uPI and Richtek design and sell DC-DC controllers that convert direct current from one voltage to another, and are embodied in chips for downstream devices such as computer motherboards. uPI was founded by former Richtek employees; its chips are imported into the U.S. either directly or as incorporated in downstream devices. Richtek complained to the International Trade Commission that uPI misappropriated Richtek’s trade secrets and infringed Richtek’s U.S. patents, in violation of the Tariff Act, 19 U.S.C. 1337. uPI offered to enter into a consent order and to cease importation of products produced using or containing Richtek’s trade secrets or infringing Richtek’s patents. Over Richtek’s objection, the ALJ entered the consent order substantially as drafted by uPI. The Commission terminated the investigation. A year later Richtek filed an Enforcement Complaint. An ALJ distinguished between products that were accused in the prior investigation and products allegedly developed and produced after entry of the Consent Order, finding violations as to the formerly accused products and that the post- Consent Order products infringed two patents, but were independently developed and not produced using Richtek’s trade secrets. The Commission affirmed with respect to the formerly accused products and reversed in part with respect to the post-Order products. The Federal Circuit affirmed concerning the formerly accused products, but reversed the ruling of no violation as to the post-Consent Order products.View "UPI Semiconductor Corp. v. Int'l Trade Comm'n" on Justia Law

Align’s Invisalign System, an alternative to conventional braces, uses a series of clear dental aligners that are worn sequentially over time to adjust the position of a patient’s teeth. The aligners must be custom-designed for the patient’s unique teeth. Align’s asserted patents are directed to methods and treatment plans using digital data sets. In 2005, Align’s founder and former CEO founded OrthoClear and used former Align employees to manufacture dental aligners. Align filed a complaint with the International Trade Commission, alleging that OrthoClear violated 19 U.S.C. 1337 by importing, selling for importation, or selling within the U.S., aligners that infringe Align’s patents, and by misappropriating Align’s trade secrets. A 2006 settlement required OrthoClear to assign its entire intellectual property portfolio to Align. The Commission entered the Consent Order and terminated the investigation. Suspecting that OrthoClear and others were violating the Consent Order, Align sought an enforcement proceeding. Rather than issuing an “initial determination,” the ALJ issued an order, denied a motion to terminate and scheduled a trial. The Commission concluded that the order constituted an “initial determination,” subject to its review, reversed, and terminated the enforcement proceeding, finding that the accused digital data sets were not covered by the scope of the consent order. The Federal Circuit vacated, finding that the Commission erred in reviewing the order. View "Align Tech., Inc. v. Int'l Trade Comm'n" on Justia Law

Cubatabaco, a Cuban entity, and General, a Delaware company, manufacture and distribute cigars using the COHIBA mark. General owns trademark registrations issued in 1981 and 1995. Cubatabaco owns the mark in Cuba and uses it worldwide. Cuban Assets Control Regulations (CACR), prohibit Cubatabaco from selling cigars in the U.S.; 31 C.F.R. 515.201(b) prohibits “transfer of property rights . . . to a Cuban entity,” but a general or specific license allows Cuban entities to engage in otherwise prohibited transactions. General licenses are available for transactions “related to the registration and renewal” of U.S. trademark. Specific licenses issue from the Office of Foreign Assets Control. Cubatabaco used a general license to attempt to register the COHIBA mark in 1997, relying on 15 U.S.C. 1126(e), which allows reliance on a foreign registration if the applicant has a bona fide intent to use the mark in commerce. Cubatabaco also sought to cancel General’s registrations, which the PTO cited as a basis for likelihood of confusion. Cubatabaco obtained a special license to sue General. The district court held that General had abandoned its registration by non-use and enjoined General’s use of the COHIBA mark, finding that Cubatabaco had acquired ownership under the famous marks doctrine. The Second Circuit reversed, holding that injunctive relief would involve a prohibited transfer under CACR because Cubatabaco would acquire ownership of the mark and later affirmed denial of General’s motion concerning cancellation of its registrations. The Board then dismissed Cubatabaco’s petition, stating that it need not address preclusion because Cubatabaco lacked standing. The Federal Circuit vacated, finding that Cubatabaco has a statutory cause of action to petition to cancel the registrations and that issue and claim preclusion do not bar that petition View "Empresa Cubana del Tabaco v. General Cigar Co., Inc." on Justia Law

This case stemmed from a dispute between the parties over license agreements which allowed Myriad access to Oracle's Java programming language. On appeal, Myriad challenged the district court's partial denial of its motion to compel arbitration. The court concluded that the incorporation of the United Nations Commission on International Trade Law (UNCITRAL) arbitration rules into the parties' commercial contract constituted clear and unmistakable evidence that the parties agreed to arbitrate arbitrability. Accordingly, the court reversed and remanded for further proceedings. View "Oracle America, Inc. v. Myriad Group A.G." on Justia Law

Alpha sued defendants, foreign corporations, alleging that defendants conspired to steal its tire blueprints, produce infringing tires, and sell them to entities that had formerly purchased products from Alpha. A jury found in favor of Alpha on all claims and the district court upheld the damages award against defendants' post-trial challenges. Defendants subsequently appealed, contesting the verdict and the district court's exercise of personal jurisdiction. The court initially held that the district court properly exercised jurisdiction over defendants. The court affirmed the district court's judgment that defendants were liable to Alpha under the Copyright Act, 17 U.S.C. 101 et seq., and for conversion under Virginia law, but the court dismissed the remaining theories of liability submitted to the jury. Accordingly, the court affirmed the jury's damages award. Finally, the court vacated the district court's award of attorneys' fees. View "Tire Engineering and Distribution, LLC. v. Shandong Linglong Rubber Co." on Justia Law

This case involved the importation and sale of counterfeit luxury goods bearing trademarks owned by Louis Vuitton (plaintiff) and others. Defendants appealed from the district court's judgment granting summary judgment to plaintiff on its claims of trademark counterfeiting and infringement, and awarding plaintiff statutory damages in the amount of $3 million, and more than $500,000 in attorney's fees and costs. The court concluded that the district court did not abuse its discretion in declining to stay the proceedings; that, as the district court concluded, an award of attorney's fees under 15 U.S.C. 1117(a) could accompany an award of statutory damages pursuant to 15 U.S.C. 1117(c); and that the district court did not abuse its discretion in awarding such fees or in setting their amount. Accordingly, the judgment was affirmed. View "Louis Vuitton Malletier S.A. v. LY USA, Inc., et al." on Justia Law

Defendant, a domestic manufacturer of cast steel railway wheels, owns two secret processes for manufacturing such wheel. It uses one process at three of its domestic foundries and has licensed the other to firms with foundries in China. Unsuccessful in obtaining a license for plaintiff's process, defendant hired employees that had been trained in plaintiffs' processes and began manufacturing wheels in China for sale in the U.S. The International Trade Commission found violation of the Tariff Act of 1930, 19 U.S.C. § 1337, finding that found that the wheels were manufactured using a process developed in the U.S., protected under domestic trade secret law, and misappropriated abroad. The Federal Circuit affirmed, holding that the wheel imports threaten to destroy or substantially injure an industry in the U.S., in violation of section 337, which covers "[u]nfair methods of competition and unfair acts in the importation of articles . . . into the United States." The Commission has authority to investigate and grant relief based in part on extraterritorial conduct insofar as it is necessary to protect domestic industries from injuries arising out of unfair competition in the domestic marketplace. View "Tianrui Grp. Co., Ltd. v. Int'l Trade Comm'n" on Justia Law

A manufacturer of cable connectors that are used to connect coaxial cables to electronic devices filed a complaint with the International Trade Commission asserting that the importation, sale for importation, and sale after importation of certain coaxial cable connectors infringed four of its patents and therefore violated 19 U.S.C. 1337. Its 539 design patent patent issued in 2001 and describes an ornamental design for a coaxial cable connector. The Commission ruled that the company failed to satisfy the requirement of showing that a "domestic industry" exists or was being established. The Federal Circuit affirmed. The company's enforcement litigation expenses did not constitute "substantial investment in exploitation" of the 539 patent. Those costs were not sufficiently related to licensing. The company has no formal licensing program and the litigation opponent was its only licensee. View "John Mezzalingua Assocs., Inc. v. Int'l Trade Comm'n" on Justia Law