October 27, 2020

Volume X, Number 301

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October 27, 2020

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October 26, 2020

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Non-Respondent’s Product Cannot Be Adjudicated for Infringement in Context of General Exclusion Order

The US International Trade Commission issued a general exclusion order (GEO) excluding from entry into the United States products infringing patents directed to luxury vinyl tile, but vacated findings in the Initial Determination (ID) adjudicating infringement for products belonging to entities not named as respondents in the investigation. The Commission explained that a finding should not be made as to whether a non-respondent’s product infringes a patent in the context of a GEO, but instead the analysis should be limited to whether the “alleged” infringement supports a finding that there is a pattern of violation of Section 337. Certain Luxury Vinyl Tile and Components Thereof, USITC Inv. No. 337-TA-1155, Comm’n Op. (Oct. 5, 2020).

The ITC instituted an investigation against multiple respondents. The administrative law judge granted summary determination of violation by certain defaulting respondents and recommended a GEO. Unlike limited exclusion orders (LEO), which only prohibit infringing goods imported by a named respondent in an investigation, GEOs prohibit entry of the infringing products regardless of the source. GEOs are issued when necessary to prevent circumvention of an LEO or when there is a pattern of violation and it is difficult to identify the source of infringing products. In connection with the request for a GEO in this investigation, the complainants accused two additional products from non-respondents of infringement. In the ID, the administrative law judge analyzed the two products and determined that they infringed the asserted patents.

The Commission determined to review the ID in part. On review, the Commission determined that a GEO was appropriate, but vacated the findings of the ID that adjudicated infringement of the asserted patents by the two products belonging to the non-respondents. The Commission explained that in considering a GEO, a finding should not be made as to whether a non-respondent’s product infringes a patent and instead the analysis should be limited to whether there is a pattern of violation of Section 337. The Commission therefore vacated the infringement findings to avoid confusion and possible prejudice to the non-respondents in future proceedings.

Practice Note: A GEO is an attractive remedy for companies confronted by widespread infringement by imported products originating from sources that are difficult to identify or companies that dissolve and re-emerge as new entities and can therefore circumvent an LEO. The Commission has now made it easier to obtain a GEO because “alleged” infringement by products from a non-respondent can be used to show a pattern of violation warranting a GEO without a full adjudication of infringement for those products.

© 2020 McDermott Will & EmeryNational Law Review, Volume X, Number 289
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About this Author

Associate

Hala Mourad* focuses her practice on intellectual property litigation matters in federal district court and the US International Trade Commission. She works with clients to litigate patent cases spanning various technologies including consumer electronics, telecommunications, medical and surgical devices, materials engineering, and biotechnology. She has experience in all phases of litigation from pre-litigation investigations through trial and appeal.

Hala is also a registered patent attorney and has experience in contentious patent proceedings before the Patent Trial and Appeal...

404-260-8536
Jay H. Reiziss Intellectual Property Attorney McDermott Will & Emery Washington, DC
Partner

Jay Reiziss has an active practice in Section 337 intellectual property investigations before the US International Trade Commission (ITC), US Trade Representative and Customs, as well as in US federal courts.

From 1995-2007, Jay worked at the ITC, serving in the Office of General Counsel, the Office of Chairman Stephen Koplan and the Office of Unfair Import Investigations. In these roles, Jay was involved in more than 50 Section 337 investigations involving patents, trademarks and trade secrets in the areas of biotechnology, chemistry, computer hardware and software, and mechanical devices. His experience includes all aspects of litigation before the ITC and briefing and arguing matters before the US Court of Appeals for the Federal Circuit.

When appropriate, Jay also provides creative advice on strategies for resolving disputes on favorable terms. He regularly advises clients regarding licensing practices and has a comprehensive knowledge of the complex legal framework and unique issues surrounding licensing of standard-essential patent (SEP) portfolios under fair, reasonable and non-discriminatory (FRAND) terms. Jay has drafted and negotiated patent license and settlement agreements valued at more than 100 million dollars on behalf of Fortune 500 companies, as well as for small and medium-sized companies.

202-756-8646
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