Recent Guidance On IP Enforcement At The ITC

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Recent Guidance on IPEnforcement at the ITCPresented by:Knobbe MartensAugust 19, 2020

Introductions 2020 Knobbe Martens2

AgendaoITC enforcement trends in view of COVID-19oRecent Guidance on ITC EnforcementoSwagwayoComcastoMaybornoOpen Q&A 2020 Knobbe Martens3

Audience Poll Question # 1I have been involved with a Section 337 investigation at the ITC.q Yesq No 2020 Knobbe Martens4

Overview of Section 337 Investigations Administrative agency based in Washington D.C. Structure: Six Commissioners Administrative Law Judges Office of Unfair Import Investigations Responsible for administration of Section 337 of the Tariff Act to prevent unlawful importation intothe United States of infringing articles Available remedies:1. Exclusion order to prevent the importation of articles into the United States2. Cease-and-desist order directed to U.S. companies to prevent sales of articles that havealready entered Typical procedure for ITC investigationo Filing of Complainto Institution of Investigationo Evidentiary hearing before ALJo Issuance of Initial Determination by ALJo Review of Initial Determination by Commission to issue Final Determinationo Presidential Review 2020 Knobbe Martens5

ITC Enforcement Trends 2020 Knobbe Martens6

ITC Procedures during COVID-19 All in-person hearings have been suspended since March 2020 Discovery deadlines not suspended Filing of new cases moved online Three Phase reopening plan: Likely moving in step with federal and regional (Maryland, Virginia, and D.C.) governmentswhose reopening plans are generally based on the executive branch’s / D.C. and Maryland are in Phase 2, Virginia is in Phase 3. RECENT DEVELOPMENT – ITC Announced on July 20, 2020 it has identified a secure teleconference system for evidentiary hearings New hearing dates are now being scheduled on a case by case basis. Rescheduling is delayed, not immediate.o For example, hearing set for late-March 2020 is now set for December 2020. 2020 Knobbe Martens7

Impacts of COVID on Pending Section 337 Investigations Where COVID closures have impeded ability to have a hearing, ALJs have suspended hearingand determination schedules. Discovery and other proceedings have continued as scheduled ALJs have accommodated requested extensions Now that hearings have resumed ALJ’s are adjusting schedules accordingly: Evidentiary hearings rescheduled Initial determination target dates pushed back Final determination target dates pushed back 2020 Knobbe Martens8

Audience Poll Question # 2How do new Section 337 filings at the ITC in 2020 compare toprior years?q New filings have stayed the sameq New filings have increasedq New filings have decreased 2020 Knobbe Martens9

Initiation of New Section 337 Complaints New filings have remained fairly consistent: below average for early 2020, with a surge of newfilings in July 2020.ITC New Section 337 Filing Totals2017-2020 (Jan. – July)ITC New Section 337 Filings 2017-2020(Jan. – 018May2019JuneJuly202002017Jan. 2020 Knobbe Martens2018Feb.March2019AprilMay2020JuneJuly10

Recent Guidance 2020 Knobbe Martens11

Swagway v. ITC Investigation regarding infringement of “SEGWAY” trademarks and patent Federal Circuit issued a first opinion determining it did not need to reach one of Swagway’sarguments regarding a consent motion, because there was no preclusive effect. Federal Circuit had previously held no preclusive effect on ITC decisions involving patentissues. Tex. Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1569 (Fed. Cir.1996); see Tandon Corp. v. ITC, 831 F.2d 1017, 1019 (Fed. Cir. 1987). Federal Circuit determined there was “no reason to differentiate between the effect of theCommission’s patent-based decisions and the Commission’s decisions regarding trademarks.” Segway petitioned for rehearing Argued that lack of preclusive effect for trademark issues conflicted with other circuit courtsand the Supreme Court’s precedent. Federal Circuit reissued opinion addressing consent motion, and deleting the section on thetrademark ruling not have any preclusive effect. 2020 Knobbe Martens12

Takeaways from Swagway Federal Circuit indicated that ITC’s trademark rulings will have preclusive effect in other actions. If there are pending district court cases between the parties, issues litigated before the ITC willlikely be given preclusive effect. Unclear whether this will apply to other non-patent cases before the ITC Unfair Competition Copyright Trade Secret Misappropriation Supreme Court’s guidance: The court should “take it as a given that Congress has legislated with the expectation that theprinciple of issue preclusion will apply, except when a statutory purpose to the contrary isevident.” B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138 (2015) 2020 Knobbe Martens13

Comcast Corp. v. ITC Overview of case TV set-top boxes used for remote access to TV programso Used in an infringing manner after importation ITC found direct infringement by Comcast’s customers and inducement by Comcast ITC blocked importation of the set-top boxes by Comcast and by third parties whomanufactured and imported the set-top boxes on Comcast’s behalf Issues on appeal Can ITC issue an exclusion order against products that were not infringing at the time ofimportation?o Exclusion order was limited to importations for an entity who intended use was to induceinfringement Does exclusion order apply to an entity who does not import the products, and whose acts ofinducement occur entirely after importation?o Entity was sufficiently involved in design, manufacture, and importation to be consideredan importer under Section 337 2020 Knobbe Martens14

Takeaways from Comcast ITC’s authority can extend to products that do not infringe at the time of importation Facts here showed inducement of the patented use ITC’s remedies can extend to entities other than the legal importer of record Evidence of sufficient involvement by the non-importing party 2020 Knobbe Martens15

Mayborn v. ITC Appeal of decision denying Mayborn’s petition for rescission of a general exclusion order(“GEO”) Unlike a more common limited exclusion order (“LEO”), a GEO applies to all importers. GEO issued in prior case because it was “difficult to gain information about the entitiesselling infringing” products and it was “nearly impossible to identify the sources” of theproducts. Mayborn not involved in prior case, but knew about the investigation and took no action duringthe proceedings. Filed petition after patent owner notified Mayborn and its retail partners thatMayborn’s products infringed the patent and were subject to the GEO. Mayborn argued patent was invalid and the ITC should rescind the GEO. ITC denied petition holding that the discovery of invalidating prior art after the issuance of aGEO is not a “changed condition” allowing the rescission of a GEO under the statute. Federal Circuit affirmed Mayborn’s petition did not raise invalidity in an investigation or enforcement proceeding. 2020 Knobbe Martens16

Audience Poll Question # 3Once a General Exclusion order has issued, it cannot berescinded.q Trueq False 2020 Knobbe Martens17

Takeaways from Mayborn Important to monitor GEO’s for potential applicability Consider taking action during the underlying investigation to present defenses Consider timing and other avenues for challenging patent validity 2020 Knobbe Martens18

Live Q&A 2020 Knobbe Martens19

Thank you!Sheila SwaroopSheila.Swaroop@knobbe.comJonathan

Responsible for administration of Section 337 of the Tariff Act to prevent unlawful importation into the United States of infringing articles Available remedies: 1.Exclusion order to prevent the importation of articles into the United States 2.Cease-and-desist order directed

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