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ALJ Cheney Holds that IPR Estoppel Does Not Apply to ITC Investigative Staff

In an Initial Determination finding that Fujifilm violated Section 337 by infringing two patents held by Sony, ALJ Cheney found another patent invalid after ruling that inter partes review (“IPR”) estoppel does not apply to the International Trade Commission’s (“ITC”) Office of Unfair Imports Investigations (“OUII”) Staff.  In Magnetic Tape Cartridges and Components Thereof, Investigation 337-TA-1058, ALJ Cheney remarked that even if IPR estoppel prevents a respondent from raising certain references during an investigation before the ITC, IPR estoppel does not prevent Staff from raising those same references to invalidate a patent where Staff was not a party to the IPR.  Id. at 106-07.

By way of background, Fujifilm filed an IPR against Sony’s U.S. Patent No. 6,979,501 (“the ’501 Patent”), which instituted in May of 2017.  In April of 2017, Sony filed a complaint at the ITC alleging that Fujifilm infringed three of Sony’s patents claiming certain magnetic tape recording technology, including the ’501 Patent.  While the investigation was pending, the Patent Trial and Appeal Board issued a Final Written Decision (“FWD”) rejecting Fujifilm’s challenge to the ’501 Patent.  Because Fujifilm challenged the ’501 Patent in an IPR and received a FWD, it became subject to the estoppel provision of 35 U.S.C. § 315(e)(2), which states that a “petitioner in an inter partes review of a claim in a patent … may not assert … in a proceeding before the [ITC] that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.”

While Sony argued that Fujifilm was estopped from using several references to invalidate the ’501 Patent at the ITC because Fujifilm reasonably could have raised those references when it filed the IPR, Staff argued that only a “petitioner in an inter partes review” was subject to estoppel.  Because Staff was not a petitioner or a party to Fujifilm’s IPR, Staff argued that it could assert in the ITC prior art advanced by Fujifilm in the IPR.  ALJ Cheney agreed, stating that regardless of whether Fujifilm is estopped from raising certain references in the investigation, the statute “does not prevent Staff from raising the references in this investigation, which it did.”  As a result, he concluded both that Sony was required to respond to Staff’s contentions that the references invalidate ’501 Patent and that these references invalidated the ’501 Patent.

This initial determination from the ITC is a reminder to patent practitioners of the unique rules of the ITC and the role Staff plays at the forum, and provides further guidance regarding the limits of IPR estoppel.  Although ALJ Cheney’s conclusion has yet to be adopted by the Commission and is therefore not binding on other ALJs, in the future respondents that are otherwise estopped from challenging validity of a patent may find a friend in Staff.           

©1994-2020 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume VIII, Number 291

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About this Author

Aarti Shah Patent Litigation Attorney Mintz
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Aarti focuses her practice on patent litigation and has extensive experience as trial counsel. Leveraging her insider’s view gained during her time spent as a senior investigative attorney in the US International Trade Commission (ITC), Aarti helps her clients develop and implement effective ITC strategies. She is frequently invited to write and comment on ITC litigation matters.

Aarti focuses her practice on patent litigation and has extensive experience as trial counsel, having served in the ITC as a senior investigative attorney prior to joining Mintz. During her tenure at the...

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 Andrew H. DeVoogd Member Boston Mintz Patent Litigation Licensing & Technology Transactions International Trade Commission Strategic IP Monetization & Licensing Federal District Court IP Due Diligence
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Drew is an experienced patent litigator and trial attorney whose work encompasses a broad range of technologies. He regularly represents clients in high stakes International Trade Commission investigations involving some of the world's largest technology companies. He also litigates patent matters and other business disputes in federal district courts around the country, and advises clients in complex IP licensing and related transactions. Drew excels at helping clients make sense of nuanced legal issues while developing effective strategies to protect and leverage their intellectual property. 

Drew focuses his intellectual property practice in patent litigation, with an emphasis on Section 337 investigations in the International Trade Commission. Drew has participated in all phases of numerous ITC investigations involving some of the largest technology companies in the world. He has first-chair trial and strategy experience during multiple ITC evidentiary hearings, and regularly leads large litigation teams through fast-paced ITC investigations. Drew has also litigated patent infringement and trade secret cases and other complex business disputes in federal district courts across the country.  He has successfully argued on behalf of his clients during multiple Markman claim construction hearings, as well as on all manner of discovery, pretrial, and other motions, before the ITC and federal district courts.

In addition, Drew provides strategic counseling to help clients protect and leverage IP rights to maximize their value. Drew has participated in negotiating and closing numerous complex IP licensing and sale transactions, including elaborate multiparty agreements involving thousands of patents, as well as conducting pre-suit and transactional diligence relating to large portfolios of U.S. and foreign intellectual property assets. He also advises clients on trademark protection and related disputes.

Drew has worked in diverse technology areas such as embedded microprocessors, liquid crystal displays, graphics processors, consumer telecommunications systems, converged devices and related software and operating systems, mobile communications infrastructure, DDR4-compliant memory modules and their components, memory controllers, LED-based lighting systems, thermoplastics, electrical motors, and biochemical assays.

Drew is a member of the firm’s Pro Bono Committee. His own pro bono work includes representing asylum-seekers, as well as clients of the Mintz Domestic Violence Program in obtaining and extending 209A abuse prevention orders on behalf of victims of domestic violence and sexual assault, including on appeal.

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Daniel B. Weinger Patent Litigation Attorney Mintz Law Firm
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Daniel's practice in intellectual property focuses on patent litigation, both at the International Trade Commission and the Federal District Courts. Daniel has participated in all phases of patent litigation, including active engagement in multiple evidentiary hearings at the International Trade Commission. He has done work in a variety of technology areas, including computer software, software architecture, GPS, network devices, semiconductors, converged devices, and LED lighting.

Prior to joining Mintz Levin, Daniel worked as a database...

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Christopher G. Duerden Associate Mintz Patent Litigation, Federal District Court, International Trade Commission, Technology
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Chris is a patent attorney whose practice focuses on IP litigation. He has worked on a variety of International Trade Commission cases involving mechanical, electrical, software, and computer engineering technology.

Prior to joining Mintz, Chris was a project attorney in the Boston office of a national, multi-practice law firm. Working with the patent prosecution team, he drafted responses to USPTO Office Actions involving telecommunications.

Earlier Chris founded and ran a company that developed and sold kits for a Linux-powered gaming system. He later...

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