Canon has recently filed its third complaint within the last six years at the U.S. International Trade Commission (ITC). Canon is alleging infringement of its intellectual property rights covering the dongle gear and associated components used in laser printer cartridges. The new investigation, USITC Inv. No. 337-TA-1106 follows the 2012 337-TA-829 and 2014 337-TA-918 investigations.
This may be unfamiliar territory for many in the office products and supplies industry, whether directly or indirectly affected by these proceedings.
This article is intended to provide laypersons with a basic understanding of the procedures for resolving the Canon patent allegations, including the steps that will take place during the ITC investigation, a projected timeline, the role of the ITC versus the district courts, and the significance of the multiple district court proceedings simultaneously initiated by Canon against the ITC defendants.
1. Now that the ITC has instituted the 1106 investigation, what comes next?
The U.S. International Trade Commission instituted Inv. 337-TA-1106 on March 26, 2018, setting in motion a number of deadlines. Within approximately a week thereafter, either side has the right to serve discovery requests (for production of documents, answers to interrogatories, requests for depositions, requests for admissions) on the opposing party(ies). A party who is served with a discovery request must file a written response to the request within ten days. Factual and, later, expert discovery will continue until approximately two months before the hearing (trial).
Domestic respondents (at the ITC, defendants are called “respondents”; plaintiffs are called “complainants”) must file an answer to the complaint within approximately 21 days from the date on which the ITC sends out the complaint and notice of investigation; foreign respondents within approximately 25 days.
Within 45 days of institution, the administrative law judge will issue an order setting the so-called target date, the date by which the Commission must issue its final determination, deciding whether there has been a violation of 19 U.S.C. § 1337 and, if so, issuing remedial orders. ITC target dates typically range from 15 to 18 months from institution.
In the last ITC investigation brought by Canon, Inv. 337-TA-918, the target date was set at 15 months. Fact discovery closed four months after institution. Expert discovery and depositions were completed two months later. The hearing was held eight months after institution. The ALJ’s initial determination was due two and one-half months after the hearing, with the Commission’s final determination due four months thereafter, fifteen months from institution.
No Markman hearing was held. (In some ITC and district court patent infringement cases, the judge will hold a mini-trial, called a Markman hearing, in which the parties present evidence and argument on the construction (interpretation) of the language of the asserted patent claims. How the judge interprets the language of the asserted claims is crucial to his/her determination as to whether the accused products infringe the claims.)
If the ITC issues a remedial order or orders (exclusion order(s) and any cease-and-desist orders), those orders will not take full effect until the 60-day presidential review period has expired.
2. What defenses are available to respondents?
The two classic defenses to an allegation of patent infringement are non-infringement and the invalidity of the asserted patent claims. As regards non-infringement, respondents will be looking for arguments that their design-around dongle gears are not covered by the language of the 1106 patent claims. As regards an invalidity defense, respondents will be looking closely to determine whether the patent claims asserted by Canon in the 337-TA-1106 investigation, where the underlying patents are all continuation patents, satisfy the so-called written description requirement of 35 U.S.C. § 112. Specifically, they will be examining whether the 1106 patent claims, which describe a dongle gear that doesn’t dongle (i.e., doesn’t move out of the longitudinal axis of the drum), have sufficient written support in the specification of the ‘278 patent, the parent patent on which the continuation patents are based, which described a dongle gear that does dongle. If the language of the ‘278 specification is not sufficiently broad to describe a non-dongling dongle gear, then the respondents will have a strong case that the asserted claims are invalid.
Three additional defenses are available to ITC respondents that are not available to defendants in patent infringement litigation in federal district court.
First, respondents will be taking discovery to see whether Canon meets the ITC’s domestic industry requirement, that is whether (1) Canon can show sufficient economic activity of particular types (manufacturing, research and development, or licensing) in the United States in connection with the asserted patents and whether (2) Canon’s own products practice at least one of the claims (not necessarily an asserted claim) of each of the asserted patents.
Second, they will argue that the remedies sought by Canon are not in the public interest.
Third, certain respondents may be able to argue that their accused products are neither sold for importation, imported, nor sold after importation, and, thus, are not within the jurisdiction of the ITC.
These are difficult defenses to prevail on; and Canon has already overcome the domestic industry and public interest defenses in its two previous ITC investigations, the 829 and the 918 investigations.
3. Will the district court cases be stayed during ITC investigation?
At the same time that it filed its complaint at the ITC, naming 49 respondents, it sued all of the respondents in actions filed in the federal district courts, one suit per respondent or group of affiliated respondents, a total of 36 district court suits.
This is a common tactic for aggrieved patent holders. The special rules of the ITC make it possible to sue all potential defendants in a single action, something that is difficult to do in the district courts. Moreover, the ITC moves more quickly than even the fastest district courts, so the successful ITC complainant can have an injunction in place in sixteen to eighteen months. However, the only remedy the ITC is authorized to provide is an injunction barring the importation and sale of infringing products. The district courts, on the other hand, are empowered to impose monetary damages.
28 U.S.C. § 1659 provides that in the case of simultaneous ITC and district court litigation covering the same subject matter, an ITC respondent may, as a matter of right, have the parallel district court action stayed (temporarily stopped) until the conclusion of the ITC investigation and any appeals thereof. (The respondent must file its motion to stay within 30 days of the institution of the ITC investigation.)
Thus, in virtually every case of simultaneous ITC and district court litigation, the district court action is stayed while the ITC action moves forward to its conclusion. In the meantime, the threat of potential monetary damages hangs over the head of the ITC respondents, discouraging defaults and shaping any settlement negotiations.
4. District courts are not required to adopt ITC findings, but they will be carefully considered.
The ITC’s decisions on (non-)infringement and patent (in)validity do not bind a federal district court when it considers that same issue. However, because of the ITC's preeminence as a forum for patent litigation, its rulings carry great weight with the district courts. Its preeminence is due to several factors.
The ITC adjudicates more patent infringement cases to conclusion (i.e., to trial and a final decision) than any district court in the United States. Moreover, between 90% and 95% of the cases heard by the ITC under 19 U.S.C. § 1337 are patent cases. In other words, unlike district court judges, who are generalists, the administrative law judges at the ITC are patent infringement specialists. Finally, because all ITC hearings (trials) are bench trials decided by the administrative law judge (as opposed to jury trials) and then by the full Commission, there is no opportunity for a legally flawed decision by a jury of laymen deciding highly complex technical issues.
Moreover, 28 U.S.C. § 1659 provides that the evidentiary record developed in the ITC investigation will be transferred to the district court for use in the co-pending investigation once the stay is lifted. Thus, the district court will be reaching its decision on the basis of the same evidentiary record that was the basis for the ITC’s decision. For these reasons, it is unusual, but not unheard of, for a party who has lost at the ITC to re-litigate the same set of facts in district court.
5. How many issues must a Respondent win in order to "win"?
If Canon prevails on any one of its asserted patent claims (i.e., if the ITC finds that any one of the asserted claims is “valid and infringed,” including infringed by a defaulting respondent), the ITC will issue an exclusion order barring the importation and sale of all goods infringing that claim. In other words, to prevail on an invalidity defense, and to prevent the issuance of a remedial order or orders, respondents must succeed in invalidating every asserted claim. However, a given respondent may be successful in showing that its products do not infringe any of the patent claims (a) asserted against it (b) that are found to be valid. If it does so, that respondent will have won its own battle without winning on every issue in the investigation. In other words, it is possible for a number of respondents to achieve separate “wins” without all respondents "winning".
6. Canon may settle with individual respondents rather than risk losing any of its IP rights.
A complainant/plaintiff who files patent infringement litigation is taking a bold and risky gambit. Because, as noted above, one the classic defenses to an allegation of patent infringement is to argue that the asserted patent claim is invalid, the complainant/plaintiff is gambling its patent every time it sues.
Canon has the right during the investigation to file motions seeking to dismiss certain patents and/or claims from the case and to add new patents and/or claims to the case. If, as the case develops, Canon perceives that one of its asserted claims is vulnerable to invalidation, it may seek to withdraw that claim or, if the claim is asserted against a single respondent or a subset of respondents, to settle with that/those respondent/s.
Intellectual property disputes are a part of business and typically occur as competitors fight for market share. Nobody wants to be involved in litigation; it's expensive, time-consuming, and distracts management from the day-to-day activities required for running a business. However, if an owner of intellectual property rights believes its rights are being infringed, it has a right to bring an action to resolve the matter.
About the author: Merritt R. Blakeslee
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Merritt R. Blakeslee has practiced in the fields of international law and international trade regulation since 1991. His practice focuses on international trade and specifically on the intersection between international trade and intellectual property.
He has written and spoken extensively on the subject of intellectual property protection in the context of international trade, with particular reference to Section 337 actions at the International Trade Commission.
He is a member of the bars of the U.S. Court of Appeals for the Federal Circuit, the U.S. Court of Appeals for the District of Columbia Circuit, the U.S. Court of Appeals for the Eleventh Circuit, the U.S. Court of International Trade, and the U.S. Court of Appeals for Veterans Claims.
Section 337 investigations at the International Trade Commission; Customs counseling, enforcement, and litigation; anti-dumping and countervailing duty investigations; and export controls.
Message from Executive & Strategic Solutions, LLC
We would like to thank Merritt for his time spent preparing this valuable contribution intended to help demystify the legal process for the thousands of individuals and businesses that may be directly, or indirectly, impacted by the latest round of legal proceedings; and who are now attempting to deal with the business uncertainty that accompanies them.