Justia International Trade Opinion Summaries

Ericsson owns patents essential to practicing standards (SEPs) that enable mobile devices from different manufacturers and different networks to communicate with each other using the same communication protocol. Ericsson is a member of the European Telecommunications Standards Institute (ETSI), the organization responsible for developing 2G, 3G, and 4G standards. ETSI’s acceptance of a member’s patent as "SEP" forms a contract between ETSI and its members. SEP owners wield significant power over implementers during licensing negotiations, so the ETSI contract imposes an obligation to license (FRAND obligation). Ericsson and TCL have been negotiating licensing terms for over a decade. There was litigation. The parties agreed to binding court adjudication of terms for a worldwide portfolio license. The district court imposed a prospective FRAND royalty rate for practicing each standard, and a “release payment” computed based on a closely related, retrospective FRAND rate for “TCL’s past unlicensed sales.” The court rejected both parties’ proposed methodologies and employed its own modified version of TCL’s proposed “top-down” approach in combination with comparable license evidence to compute both the prospective and retrospective FRAND rates. The Federal Circuit vacated in part. Ericsson had a Seventh Amendment right to a jury trial on the adjudication of the “release payment” term; the release payment is in substance compensatory relief for TCL’s past patent infringing activity. View "TCL Communication Technology Holdings Ltc. v. Telefonaktiebolaget LM Ericsson" on Justia Law

Guangdong is a foreign manufacturer of aerogel insulation products currently subject to a limited exclusion order entered by the U.S. International Trade Commission following an unfair competition investigation. The exclusion order is based in part on the Commission’s final determination that Alison’s products infringe Aspen’s 359 patent, 19 U.S.C. 1337. The Commission found that certain claims of the 359 patent are not indefinite based on their use of the term “lofty . . . batting” and that certain claims of the patent are not invalid on anticipation and obviousness grounds. The Federal Circuit affirmed. The written description of the 359 patent informs the meaning of “lofty . . . batting” with reasonable certainty and the Commission’s factual findings regarding anticipation are supported by substantial evidence View "Guangdong Alison Hi-Tech Co. v. International Trade Commission" on Justia Law

Anjinomoto’s 655 patent claims E. coli bacteria that have been genetically engineered to increase their production of aromatic L-amino acids, such as L-tryptophan, during fermentation, as well as methods of producing aromatic L-amino acids using such bacteria. Ajinomoto filed a complaint against CJ with the International Trade Commission, alleging that CJ was importing certain products that infringed the patent. CJ used several strains of E. coli to produce L-tryptophan products, which it then imported into the United States. The Commission determined that CJ’s earlier strains did not infringe but that CJ’s two later strains did, and that the relevant claim of the 655 patent is not invalid for lack of an adequate written description. The Federal Circuit affirmed, upholding the Commission’s construction of “replacing the native promoter . . . with a more potent promoter.” The court rejected CJ’s claim of prosecution history estoppel and held that the 655 patent expressly provides four examples of “more potent promoters,” so that the Commission supportably found that a skilled artisan could make relatively predictable changes to the native promoter to arrive at a more potent promoter. View "Ajinomoto Co., Inc. v. International Trade Commission" on Justia Law

Hyosung and Diebold manufacture and sell ATMs. Diebold filed a complaint with the International Trade Commission claiming that Hyosung’s imported ATMs infringe its 616 and 631 patents and their importation violates 19 U.S.C. 1337(a)(1)(B). The 616 patent claims an ATM rollout tray that allows for easier servicing of its internal components. The 631 patent relates to a particular method for reading magnetic ink character recognition data on checks (e.g., ink used for the account and routing numbers) that are inserted into an ATM regardless of their width or orientation. The ITC concluded that Hyosung’s accused products infringed both patents; that the asserted claims were not invalid; and that the domestic industry requirement was met for both patents; it entered a limited exclusion order and cease and desist orders against Hyosung. Hyosung redesigned its products to avoid infringing the 616 patent and sought an administrative ruling by U.S. Customs and Border Protection. Customs concluded that the newly redesigned products did not infringe and were therefore not covered by the ITC’s limited exclusion order. The Federal Circuit affirmed as to the 631 patent and concluded that the appeal was moot as to the 616 patent, which has expired, so the ITC’s orders as to that patent have no prospective effect. View "Hyosung TNS Inc. v. International Trade Commission" on Justia Law

The patent describes an ATM, capable of performing banking transactions, including “automatically depositing a bundle of cashes and cheques inserted at once” by separating deposited bundles into individual banknotes; verifying the authenticity or abnormality of each note; sorting and processing the notes based on how each was verified; and preparing the notes for storage safes. One component recited in each of the nine claims is a “cheque standby unit.” The specification does not mention a “cheque standby unit,” but references a “cheque temporary standby unit” in three portions of the detailed description. The International Trade Commission found that Diebold violated section 337 of the Tariff Act of 1930 by importing ATM components that infringe the claims, all of which recite the term “cheque standby unit.” The Federal Circuit reversed, finding that the term “cheque standby unit” is a means-plus-function term subject to 35 U.S.C. 112, para. 6, which lacks corresponding structure disclosed in the specification. The claimed function is “holding the at least one authentic cheque to return the at least one authentic cheque to the user responsive to receiving user instructions canceling depositing of the at least one authentic cheque.” A person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim. View "Diebold Nixdorf, Inc. v. International Trade Commission" on Justia Law

WesternGeco owns patents for a system used to survey the ocean floor. ION sold a competing system, built from components manufactured in the U.S., then shipped abroad for assembly into a system indistinguishable from WesternGeco’s. WesternGeco sued for patent infringement, 35 U.S.C. 271(f)(1) and (f)(2). The jury awarded WesternGeco royalties and lost profits under section 284. The Supreme Court reversed the Federal Circuit, holding that WesternGeco’s award for lost profits was a permissible domestic application of section 284 of the Patent Act, not an impermissible extraterritorial application of section 271. To determine whether the case involves a domestic application of the statute, courts must identify the statute’s "focus” and ask whether the conduct relevant to that focus occurred in U.S. territory. If so, the case involves a permissible domestic application of the statute. When determining the statute’s focus, the provision at issue must be assessed in concert with other provisions. Section 284, the general damages provision, focuses on “the infringement.” The “overriding purpose” is “complete compensation” for infringements. Section 271 identifies several ways that a patent can be infringed; to determine section 284’s focus in a given case, the type of infringement must be identified. Section 271(f)(2) was the basis for WesternGeco’s claim and damages. That provision regulates the domestic act of “suppl[ying] in or from the United States,” and vindicates domestic interests, The focus of section 284 in a case involving infringement under section 271(f)(2) is the act of exporting components from the U.S., so the relevant conduct occurred in the U.S. Damages are not the statutory focus but are merely the means by which the statute remedies infringements. The overseas events giving rise to the lost-profit damages here were merely incidental to the infringement. View "WesternGeco LLC v. ION Geophysical Corp." on Justia Law

The International Trades Commission instituted a section 337 investigation based on Cisco’s complaint alleging that Arista’s imports of certain network devices, related software, and components thereof infringed six of its patents. An ALJ issued a final initial determination finding a violation with respect to three patents, but no violation based on two other patents, 19 U.S.C. 1337(a)(1)(B)(i). The sixth patent had previously been terminated from the investigation. On review, the Commission upheld those findings and entered a limited exclusion order against imports by Arista of “certain network devices, related software and components thereof.” The Federal Circuit affirmed. The Commission sufficiently articulated its findings and employed claim construction requiring “router configuration data” to be “stored in said database.” View "Arista Net 2 Works, Inc. v. International Trade Commission" on Justia Law

One-E-Way filed a complaint with the International Trade Commission, alleging infringement of its patents, which disclose a wireless digital audio system designed to let people use wireless headphones privately, without interference, even when multiple people are using wireless headphones in the same space. The specification explains that previous wireless digital audio systems did not provide “private listening without interference where multiple users occupying the same space are operating wireless transmission devices.” The Commission found the claim term “virtually free from interference” indefinite and invalidated the asserted claims of One-E-Way’s patents. The Federal Circuit reversed, finding that the term “virtually free from interference,” as properly interpreted in light of the specification and prosecution history, would inform a person of ordinary skill in the art about the scope of the invention with reasonable certainty. View "One-E-Way, Inc. v. International Trade Commission" on Justia Law

Lexmark holds patents on the components of toner cartridges that it manufactures and sells. Lexmark allows consumers to buy a cartridge at full price, with no restrictions, or to buy a cartridge at a discount through Lexmark’s “Return Program,” by signing a contract agreeing to use the cartridge only once and to refrain from transferring the cartridge to anyone but Lexmark. Remanufacturers acquire empty Lexmark cartridges—including Return Program cartridges—from purchasers in the U.S. and overseas, refill them, and resell them in the U.S. Lexmark sued remanufacturers with respect to Return Program cartridges that Lexmark had sold within the U.S. and cartridges that Lexmark had sold abroad and that remanufacturers imported into the country. The Federal Circuit ruled for Lexmark with respect to both. The Supreme Court reversed. Lexmark exhausted its patent rights (35 U.S.C. 271(a)) in all of the cartridges. A patentee’s decision to sell a product exhausts all of its patent rights in that item, regardless of any restrictions the patentee purports to impose. If a patentee negotiates a contract restricting the purchaser’s right to use or resell an item, it may be able to enforce that restriction as a matter of contract law, but may not do so through a patent infringement lawsuit. The exhaustion doctrine is not a presumption about the authority that comes along with a sale; it is a limit on the scope of the patentee’s rights. The Patent Act just ensures that the patentee receives one reward—of whatever it considers satisfactory compensation—for every item that passes outside the scope of its patent monopoly. View "Impression Products, Inc. v. Lexmark International, Inc." on Justia Law

The 320 patent describes single-brew coffee machines, such as the Keurig® system, and purports to address the incompatibility between pod-based and cartridge-based systems. The invention “more particularly relates to an adaptor assembly configured to effect operative compatibility between a single serve beverage brewer and beverage pods.” None of the claims as issued included any reference to a “pod,” “pod adaptor assembly,” or “brewing chamber for a beverage pod.” Instead, the relevant claims call for “a container . . . adapted to hold brewing material.” In 2014, Rivera filed a complaint with the International Trade Commission, alleging that Solofill was importing beverage capsules that infringed the patent, in violation of 19 U.S.C. 1337. Solofill’s K2 and K3 beverage capsules are made to fit into a Keurig® brewer, and include an integrated mesh filter surrounding a space designed to accept loose coffee grounds. An ALJ found no violation of section 337, The Commission affirmed, finding asserted claims invalid for lack of written description, and others invalid as anticipated. The Federal Circuit affirmed, agreeing that the claims were invalid for lack of written description. View "Rivera v. International Trade Commission" on Justia Law