Hot Topics at the ITC & Recent Case Developments

Transcription

1 Patent Litigation ITC & Discovery What s Happening at the ITC? Hot Topics at the ITC & Recent Case Developments DEANNA TANNER OKUN Adduci, Mastriani & Schaumberg, LLP

2 Fewer Section 337 Cases, Fewer Violation Findings Fewer Section 337 Cases Instituted o In 2012, 40 Section 337 investigations instituted Fewer Violation Findings o In 2012, Commission found violation in only 5 of 66 investigations terminated o In 2011, Commission found violation in only 7 of 53 investigations terminated Varied Target Dates 2 2

3 Dispositions Investigations Instituted Nov to Present Other* 1% Complaint 12% 20% No No Violation Violation Settled 46% Violation 21% Settled Complaint Withdrawn Other Note: Data does not include pending investigations. *Terminated due to arbitration 3 3

4 F/Rand and SEPs at the ITC Standard-Setting Organizations o Industry decides technology standards FRAND Commitments o SSOs require patent owners to license essential patents according to fair, reasonable, and nondiscriminatory terms Where an alleged SEP is valid & infringed, when is exclusionary relief appropriate? How should the ITC analyze the public interest factors in connection with a proposed remedy 4 4

5 The FTC Position F/Rand and SEPs (cont.) Most active in efforts to limit injunctions The FTC Report: The Evolving IP Marketplace: Aligning Patent Notice and Remedies with Competition Settlements with Robert Bosch, Google o Included restrictions on seeking injunctions or exclusion orders o Settlements require companies to negotiate on FRAND terms and limit exclusion orders 5 5

6 The DOJ/USPTO Position F/Rand and SEPs (cont.) DOJ & USTPO Joint Policy Statement o Emphasizes need to balance IP protection with maintaining incentive to participate in SSOs o Recommends caution in granting injunctions, but recognizes that an exclusion order may still be an appropriate remedy on some circumstances o Suggests delay of exclusion orders to allow opportunity for FRAND license negotiation Must be evaluated on a case-by-case basis 6 6

7 ITC s Focus on Public Interest and Approaches to SEPs Develop public interest concerns in investigations with FRAND and SEP issues Tailor remedies on a case-by-case basis Suggest or compel arbitration or mediation under the threat of the enforcement or vacation of an exclusion order Issue an exclusion order and rely on USTR to deny relief based on policy concerns 7 7

8 Recent SEP Investigations at the ITC Wireless Communication Devices, Inv. No. 337-TA-745 (Apple v. Motorola) Gaming and Entertainment Consoles, Inv. No. 337-TA-752 (Motorola v. Microsoft) Certain Electronic Devices, Inv. No. 794 (Samsung v. Apple) o Commission extended target date to May 31 o Commission requested additional information on the potential effect on the public interest 8 8

9 Perceived Problems with NPEs at the ITC The Domestic Industry Requirement o The 1988 Amendments to Section 337 o Case-by-case approach to Domestic Industry on Licensing Activities NPEs and the Domestic Industry Requirement Exclusion Orders for NPEs are Rare ITC Gets Creative To Limit NPE Access Under Section

10 NPEs and Domestic Industry Domestic Industry requirement is interpreted strictly by the ITC Complainants seeking to establish domestic industry through licensing must show a substantial investment o o o Three Threshold Requirements Nexus between activities and asserted patents Numerous factors evaluated for substantiality Since August 2011, only one NPE has established a licensing domestic industry 10 10

11 Exclusion Orders for NPEs are Rare NPEs Much Less Successful at ITC than in US District Courts o 60 investigations brought by NPEs at the ITC between ebay and first quarter of 2013 o Only 4 of the investigations completed resulted in a violation and exclusion order o Only one involved a non-manufacturing NPE Success Rate of NPEs at the ITC is ~14% o Compared with nearly 2/3 in district courts 11 11

12 Facts about NPEs at the ITC Category 1 NPEs account for just 11% Section 337 investigations Category 2 NPEs account for just 9% of Section 337 investigations Only 19% of investigations instituted in 2011 were brought by NPEs The settlement rate for NPE cases is slightly lower than for non-npe cases 12 12

13 Facts about NPEs (cont.) 13 13

14 ITC Gets Creative To Limit NPE Access Under Section 337 In a recent complaint filed by an NPE, the Commission ordered an early evidentiary hearing and decision on domestic industry Commission ordered an initial determination relating to the economic prong of the domestic industry requirement within 100 days Commission s message to NPEs be prepared to prove your domestic industry before addressing the remaining merits of the case 14 14

15 Domestic Industry Must be Based on a Valid Patent Claim The "technical prong" of the domestic industry requirement must be based on a valid patent claim o Certain Silicon Microphone Packages and Products Containing the Same (Inv. No. 695) o Certain Ground Fault Circuit Interrupters and Products Containing Same (Inv. No. 739) Likely to increase the complexity of domestic industry disputes 15 15

16 Remedies: Tailored Exclusion Orders Section 337 requires careful consideration of the public interest before issuing any remedial orders Commission has flexibility in its orders Public-interest concerns have led the Commission to issue tailored exclusion orders in recent investigations 16 16

17 New Public Interest Rules Effective as of November 18, 2011 Public Interest statements must be filed by the parties with complaint and response Commission may direct ALJs to take evidence and make findings on public interest factors The Commission has directed an ALJ to take evidence on public interest in 23 investigations o Two IDs have issued considering public interest 17 17

18 New Rules and Pilot Programs Governing Discovery On April 11, 2013 issued new rules pertaining to discovery issues such as interrogatories and depositions On October 5, 2012, the Commission published a Notice of Proposed Rulemaking in the Federal Register The Proposed Rules 18 18

19 Contact Information Deanna Tanner Okun 1133 Conn. Ave., N.W. Washington, DC T: E: 2013 Adduci, Mastriani & Schaumberg, L.L.P