Injunctive Relief and the Public Interest at the ITC

by Dennis Crouch

The U.S. International Trade Commission is a branch of the U.S. government designed to protect and serve U.S. interests.  The ITC handles a variety of international trade issues, including passing judgment on whether importation of accused products constitutes actionable patent infringement. These Section 337 disputes have become more important as more expensive and high-technology products are being imported rather than being manufactured in the US and because of legal changes that have made injunctive relief relatively more likely in an ITC proceeding as compared with federal court litigation.

Although both the patentee and accused infringers have standing to argue their respective cases, ITC proceedings are administrative in nature with a focus on whether a domestic industry deserves protection.  Thus, rather than being captioned Apple v. HTC, the recent dispute between the two parties has the title: In the Matter of CERTAIN PERSONAL DATA AND MOBILE COMMUNICATIONS DEVICES AND RELATED SOFTWARE, 337-TA-710.

In its decision on the case, the Commission concluded that HTC’s Android phones violated Apple’s Patent No. 5,946,647 (Claims 1 and 8) and that the HTC phones do not infringe the asserted claims of Apple’s Patent Nos. 5,481,721, 6,275,983, or 6,343,263.  Commentators have noted that HTC should have little trouble designing around the the ‘647 patent. This is especially true because the Commission gave HTC four–months to alter its product before injoining further importation. 

In federal court litigation, a court can only award injunctive relief after considering teh four equitable factors outlined in eBay v. MercExchange. The ITC is not bound by eBay, but is required to consider the impact that an injunction (or “exclusion order”) would have on competition and consumers.  Interestingly, the ITC order follows a recent NYTimes editorial, by Professors Mark Lemley and Colleen Chien who argued for delay in exclusion orders in order to serve the public interest.

If the ITC continues to give more weight to the public interest factor, the result is that ITC exclusion orders may begin to parallel the injunction that a court would have ordered under eBay. Although the ITC still does not directly consider the first three eBay factors, it does require a domestic industry being harmed by the alleged importation.  That harm is often the type of harm that would help a patentee prove its case under eBay.

Notes:

  • The ITC does not have power to award damages. This could suggest that the ITC decisions automatically satisfy the first-two eBay factors.
  • In the Apple v. HTC case, the full decision on the merits that discusses the public interest factors has apparently been held as classified (or at least under seal).  The US President has the statutory right to disapprove of the decision within the next 60 days.
  • Claim 1 of the infringed ‘647 patent is the broadest of the infringed claims and is directed to a system of detecting structures in data and then performing some action on the structures. The claim reads as follows: 1. A computer-based system for detecting structures in data and performing actions on detected structures, comprising: an input device for receiving data; an output device for presenting the data; a memory storing information including program routines including an analyzer server for detecting structures in the data, and for linking actions to the detected structures; a user interface enabling the selection of a detected structure and a linked action; and an action processor for performing the selected action linked to the selected structure; and a processing unit coupled to the input device, the output device, and the memory for controlling the execution of the program routines.
  • These patents were all filed in the mid-1990’s and no, Steve Jobs is not listed as an inventor of any of them.

69 thoughts on “Injunctive Relief and the Public Interest at the ITC

  1. My personal bet is not on #4,

    cf

    why in #4 I expressly acknowledged

    W

    T

    F

    That’s called wanking, and hedging your bets – pretty spineless

  2. Hey fool, that is why in #4 I expressly acknowledged the possibility that the patent might actually be valid.

    Troll, you are simply oppositionally defiant, and I will never respond to you again.

    Interaction with you is worse than useless.

  3. Actually, claim 1 reads on any stored program computer, where the difference between the conventional stored program computer and the claimed stored program computer is in the program.

    At some point in time, somebody is going to point out that the emperor has no clothes. Claim one is essentially a claim as follows:

    1. A programmed computer comprising:

    a computer program which when executed performs the following method:

    list of steps.

    What, if anything, is wrong with such a claim?

  4. Not to devolve this into an analysis of the patent, but according to a plain meaning interpretation of the language of claim 1 (with no analysis of the file history), the “data” from which the “structure” is detected is input from the “input device”, and not from the “document” described in the specification. In other words, according to claim 1, a device would infringe only if the phone numbers detected were input by the keyboard of the same device itself, and not from a received email (unless the email was created by the input device of the same device)! As weird as this result sounds, the claim should be interpreted as written, not as it should have been written.

    I am not disagreeing with the result, at least not with regard to the infringement of the patent (note I am saying nothing about the validity), just with which indep. claim was used to find liability. The other independent claims would have been more appropriate.

  5. Not sure what that gets you though.

    …an invitation to a personal meet and greet at the next Wankers’ Club meeting (held in Malcolm’s Mom’s basement).

  6. I have a question – are ITC procedures subject to the Patent Act? Specifically I am wondering what the implications of the America Invents Act will be on the ITC Section 337 cases. (Think about the new joinder provisions and its effect on NPEs at the ITC).

  7. Let’s face it, Lemley and people like Lemley don’t like any patent remedies with teeth because some real inventor somewhere might get an even break.

    First vigorous fronting for a dumbed down patent system in the PTO and courts, now setting sights on the ITC, where a patentee can still get a meaningful remedy. For some odd reason, a toothless patent system serves Lemley and presumably his people well (think Cisco, Google, IBM, Micron, and Microsoft).

    Need I say more?

    I’m going back to sleep.

  8. “Because that task seems incredibly easy, one is left looking for answers to explain the failure…”

    You could always use Examiner Mooney’s approach: “B-b-but your honor, it’s so incredibly old and well known that nobody ever bothered to write it down!!!!!! Come on, I was programming computers back in the old mainframe days that did exactly what is claimed!!!!!!”

    Invalidating all of these “facially invalid computer related crxp” patents that Malcolm constantly rants against always seems “incredibly easy” when all you do is read claim 1 and conclude, “it recites an input device, which is old, therefore it’s invalid.” But then you actually have to produce the evidence to prove it. And that’s where guys like you and Mooney fail every time.

    Keep wanking though.

  9. Whatever.

    If you want to believe the claims are invalid despite having been litigated by an accused infringer with deep pockets, a willingness to scour the earth for invalidating prior art, and some of the best lawyers and firms around (with proven track records), be my guest. Not sure what that gets you though.

  10. “However, I generally believe that it is all but impossible to successfully design around a good patent.”

    Unless what you mean by “good” patent relates to the specific approach taken by a particular inventor, I would disagree in the sense that there are many paths to the same result. A “good” patent would protect all variations to a specific approach, but not a completely different one. I guess what is missing in the discussion is context.

  11. Professors Mark Lemley and Colleen Chien would close the patent office doors “in order to serve the public interest.”

    I put very little credence into either of these author’s viewpoints.

  12. Well, at least that’s not how the world works from MM’s basement.

    (sigh) – that’s MM’s mom’s basement. MM does not have a his own place yet.

  13. “That’s not how the world works.”

    I’m not expecting to read the opinion in Mayo and see the justices ignore the parties’ arguments and cite your typical “it’s not patent eligible under 101 because it’s so obvious” rants as a basis for their decisions.

    That’s not how the world works.

  14. ” However, I generally believe that it is all but impossible to successfully design around a good patent.”

    I disagree.

    “Furthermore, good patents are backed by pending continuations and good patent attorneys. Any holes will quickly be filled.”

    I tend to agree.

    It’s the search for the design around options that promotes innovation.

  15. ” My personal bet is not on #4, it is on a combination of #1 and #2.”

    Had the claims been found invalid, would you have the same regards for the ITC’s competence, or the competence of the attorneys?

  16. That’s not how the world works

    Well, at least that’s not how the world works from MM’s basement.

  17. I haven’t had the opportunity since eBay. However, I generally believe that it is all but impossible to successfully design around a good patent. Furthermore, good patents are backed by pending continuations and good patent attorneys. Any holes will quickly be filled.

    For the above reason, I typically suggest taking out a license. It is a much better, and potentially a lot cheaper alternative.

    But, in the post-eBay world, perhaps the calculus has changed. I haven’t fully thought it through. I know MS got tagged with an injunction in a recent case just because they chose to willfully infringe. Willful infringement does not appear to be a recommended course of action.

    Your thoughts?

  18. sockie It’s not my position.

    Congrats! You’ve taken a tiny, tiny, tiny baby step towards becoming a credible commenter who actually has an interesting opinion about something that is backed up by more than sheer undying love for patents and/or entities who own them. Please try to explain why it’s not your position, sockie. It shouldn’t take more than two sentences. Try really hard (this oughta be fascinating).

    I’m willing to bet the evidence and arguments HTC’s attorneys produced to try to invalidate Apple’s patents were a little better than the “analysis” you typically come up with it.

    Really? Like Mayo’s arguments to the Supreme Court regarding Prometheus’ claims were better than mine? LOL, sockie. That’s not how the world works. The greater the stakes, the more you can count on a bigtime “hired gun” to screw it up. Some people actually make a career out of doing that. And then when they “retire,” they show up on TV to share their “insights”.

  19. It’s not my position.

    “You responded with some pathetic ‘appeal to authority’, as if high-priced lawyers and a judge are the last word in legal reasoning.”

    I’m willing to bet the evidence and arguments HTC’s attorneys produced to try to invalidate Apple’s patents were a little better than the “analysis” you typically come up with it. And it still wasn’t enough. But if you got something better, feel free to share it with the rest of us.

  20. So you’ve never advised a client to design around a patent without the threat of an injunction or losing an infringement suit and the prospects of having to pay damages or a royalty?

    I guess you’re too busy posting on this site.

    Whatever.

  21. Meanwhile eveyone knows that MM has no spine and thus shows front and center, even (always) when things turn out badly for him.

    O wait, he did have a pretty good August as I remember…

  22. It’s not up to the legal illuminati to invalidate it, that is up to the ITC. It is their job to try to convince the ITC to invalidate it, however–something that they failed to do.

    Because that task seems incredibly easy, one is left looking for answers to explain the failure…

    #1 ITC bias or incompetence?
    #2 Attorney incompetence?
    #3 Fraud by somebody?
    #4 Claim actually valid?

    Who knows. My personal bet is not on #4, it is on a combination of #1 and #2.

    Referring to the ITC, incompetence would refer to the inability to apprehend the issues, unfamiliarity with the subject-matter, ignorance of the law, etc.

    Referring to the attorneys, incompetence would refer to the inability to convince the Commission that the claim was invalid, for whatever reason.

  23. AAA BJ That must mean there’s lots of prior art available to invalidate these patents. I wonder why HTC and the 4 or 5 law firms they were using in these suits couldn’t find any.

    I don’t know about every claim in “these patents”, sockie, but with respect to claim 1, I am wondering, too.

    No comment on that?

    I already did comment, twice. So did Ned. You responded with some pathetic “appeal to authority”, as if high-priced lawyers and a judge are the last word in legal reasoning. LOL, sockie. LOL.

    “a claim to a method of drinking coffee while thinking a useful, new, and non-obvious thought is an eligible, patentable and enforceable claim.”

    Can’t recall ever taking that position.

    But is that your position, sockie? Yes or no? Go ahead, sockie. Show some spine. You can always return to cowering behind one of your other lame pseuodynms if things turn out badly for you.

  24. On the face of it, Google is a US company that developed the Android software and licensed it to HTC. By excluding the HTC phones because of Android software (I assume this to be the case here), one is effectively damaging Google, an US technology developer and licensor of the technology in question.

  25. Paul, I discussed this below as well, but on the face of it, Google is a US company that developed the Android software and licensed it to HTC. By excluding the HTC phones because of Android software (I assume this to be the case here), one is effectively damaging Google, an US technology developer and licensor of the technology in question.

    Do you agree?

    And, if you agree, why should Apple be able to use the ITC but not Google, a licensing entity?

    Something doesn’t smell right here.

  26. “In any event, patents are supposed to be used to suppress competition among two US competitors. They’re not really designed for much else.”

    Patents lead to design arounds, which lead to new products, which increases competition.

  27. “They weren’t? Hmm. That must mean there’s lots of prior art available to invalidate these patents. I wonder why HTC and the 4 or 5 law firms they were using in these suits couldn’t find any. Maybe they can just point the judge to your brilliant analysis above and get them invalidated.”

    No comment on that? Didn’t think you’d have one.

  28. AAA BJ “a claim to a method of drinking coffee while thinking a useful, new, and non-obvious thought is an eligible, patentable and enforceable claim.”

    Can’t recall ever taking that position.

    LOL, sockie. Nobody could have predicted that your “memory” about what you’ve said and done here would be a bit faulty when it comes to “taking a position” on any subject, except of course your loathing for a few non-sockpuppet commenters.

    If you’ve got a different “position” on the subject, sockie, just say so. That’s all you have to do. That alone will put you head and shoulders above Gene, Kevin and their beloved sycophant, EG. Go ahead, sockie. Surprise me.

  29. •In the Apple v. HTC case, the full decision on the merits that discusses the public interest factors has apparently been held as classified (or at least under seal). The US President has the statutory right to disapprove of the decision within the next 60 days.

    President Gingrich will take as much time as he wants, thank you. And if the Judge thinks that the “law” requires President Gingrich to act sooner, the Judge can explain why after the Judge is arrested and held for questioning.

  30. “First sockie wants everyone to believe that a claim to a method of drinking coffee while thinking a useful, new, and non-obvious thought is an eligible, patentable and enforceable claim.”

    Can’t recall ever taking that position.

    “Now sockie wants to pretend that computers were invented in 1995.”

    They weren’t? Hmm. That must mean there’s lots of prior art available to invalidate these patents. I wonder why HTC and the 4 or 5 law firms they were using in these suits couldn’t find any. Maybe they can just point the judge to your brilliant analysis above and get them invalidated.

  31. Like a troll, sockie keeps running, only stopping occasionally to fluff up some computer-related crxp claims or to lick clean some imaginary gentleman’s buttons.

  32. HTC is enjoined from using Android

    Except that it’s not. The ITC can’t enjoin anybody from using anything, only importing it. Any phones they actually manufacture in the US, infringing or not, are not the droids the ITC is looking for.

    In any event, patents are supposed to be used to suppress competition among two US competitors. They’re not really designed for much else.

  33. Indeed, I know of several types of atoms that have existed for centuries and I know of molecular bonding forces that have existed just as long.

    And yet, that D_mm patent office keeps on giving out patents on combinations of things that are individually notoriously obvious that makes the them a laughing stock.

  34. My earlier post appears to have been gobbled. But I asked earlier whether there is a problem using the ITC to suppress competition among two US competitors? That is effectively what is happening when HTC is enjoined from using Android (or parts thereof) developed and licensed by Google, a US company.

  35. but, but, but…..

    it’s all a conspiracy, don’t you see?

    No, wait, it’s not yet time to go back into the rubber room….

  36. Malcolm, just as an example, I believe there are planes that are equipped to launch ICBMs while airborne. How? They transmit patterns (data structures) that can be recognized only by certain equipment. If the code sequences are proper, the launch is authorized, wherein the ground crew makes the launch. In some cases I suspect, the airborne crew can command the launch itself. (One wonders where the US industry that is protected includes SAC.)(All this dates from the ’50s.)

    On its face, the claimed subject matter neither appears to be new or non obvious. Even if it were not new, the claimed subject matter is notoriously obvious over common experience.

    Indeed, it is claims such as this that makes the USPTO a laughing stock.

  37. Now sockie wants to pretend that computers were invented in 1995.

    Some were.

    Some are being invented as we speak.

    Only the dxmbest trxlls don’t realize this.

  38. AAA BJ This blog has the dxmbest trxll

    Indeed. First sockie wants everyone to believe that a claim to a method of drinking coffee while thinking a useful, new, and non-obvious thought is an eligible, patentable and enforceable claim. Now sockie wants to pretend that computers were invented in 1995.

  39. sockie MM still thinks … a DNA strand is patentable

    Are you suggesting that novel, non-obvious DNA strands are pre se ineligible for patenting, sockie?

    If not, exactly what are you suggesting?

    Your inability to articulate a coherent thought is shining through your pathetic attempt at trollery. Again.

  40. AAA BJ some of the claims were found to be valid

    LOLOLOLOLOLOLOL — which ones, sockie?

    All ancient, even in the mid 90s” type of analysis

    Thank you. Even a dunt with his head intentionally buried up to his shoulders in black sand will recognize that all of the following are completely worthless, irrelevant “limitations” for a new computing device even as of the 50s.

    an input device for receiving data;
    an output device for presenting the data;
    a memory storing information including program routines ….
    and a processing unit coupled to the input device, the output device, and the memory for controlling the execution of the program routines.

    Which leaves us with this functionally described crxp:

    program routines including an analyzer server for detecting X in the data, and for linking actions to said X; a user interface enabling the selection of said X and a linked action;
    and an action processor for performing the selected action linked to said selected X;

    I can recall programming computers when I was in middle school so that they would recognize certain types of input data (let’s call it X) and, after recognizing X, presenting options about X to the user, who could select various actions relating to X. How is that different from what’s being claimed?

    The answer is: it’s not. Certainly not in any non-obvious way that deserves a lengthy patent monopoly.

  41. I’m not interested in discussing anything with you, sockie. I’m sure Apple’s attorneys, HTC’s attorneys and the judge had a “serious discussion” about the validity of the claims, and the result was some of the claims were found to be valid. If you have some actual evidence, other than your usual “All ancient, even in the mid 90s” type of analysis, then maybe we can discuss it. Otherwise, you can go back to your usual wanking.

  42. Hey David and Dennis,

    Thanks much for the additional explanation, which makes sense as to why the document linked appears to be so terse. Even so, you would have thought there would have been at least some minimal ITC/court case citation.

  43. Whether or not trolls who neither invent, make or sell any products in the U.S. [and merely sue on and/or get settlement payments for acquired patents] are the kind of “domestic industry” intended by Congress to be protected from infringing imports has indeed been the sore subject of some earlier strange ITC rulings.

    I suppose it comes down to whether we want to see this as a jurisdiction issue or a standing issue.

    If the purpose is to protect domestic industry for the sake of domestic industry, it shouldn’t matter whether the domestic industry is related to the patentee in any way. The statute only requires that the domestic industry “exist”.

    On the other hand, if the purpose is to restrict ITC access to plaintiffs with a legitimate interest to protect, I’d expect the plaintiff to have to show at least a loss of domestic licensing revenue resulting from the importation.

  44. I wonder if HTC’s attorneys used MM’s tried and true method of invalidating patents: “Your honor, you can’t be serious, it’s facially invalid crxp!!!! Come on!!!!!”

  45. So many flaws…and so little time…

    The only flaw is the magical world of computer-related patent law, where the mere recitation of “new” “information” can turn old unpatentable gxrbxge into gold.

    The kids love it. More accurately, they’re addicted to it.

  46. “Only because a competent attorney hasn’t been asked to invalidate it.”

    Well, if the attorneys from Perkins Coie, Keker & Van Nest, Quinn Emanuel, and Finnegan couldn’t invalidate it, I doubt an examiner of protein fragments and DNA strands is going to be able to invalidate it.

  47. yet it is … valid

    Only because a competent attorney hasn’t been asked to invalidate it.

    Let’s take a look at the claim elements:

    an input device for receiving data;
    an output device for presenting the data;
    a memory storing information including program routines including an analyzer server for detecting an X in the data, and for linking actions to an X; a user interface enabling the selection of an X and a linked action;
    and an action processor for performing the selected action linked to the selected structure;
    and a processing unit coupled to the input device, the output device, and the memory for controlling the execution of the program routines.

    All ancient, even in the mid 90s. Is there something magical about the identity of X?

    Nope.

    Keep fluffin’.

  48. Oops, read first, type second.

    The document linked here isn’t even the “decision on the case” (Dennis, the description in the article needs fixin’…)

    It’s a “Notice of Determination” — essentially a press release directed to the public. The Order and Opinion directed to the parties are noted in the Notice.

  49. And yet it is both valid and infringed. Makes me want to extend a felicitous Kwanzaa to MM! Of course, you reach conclusions like that (valid, infringed) when not blinded by the prejudice that computer = unpatentable.

    Of course, MM still thinks the middle of a Twix bar, a branch, your thumb, or a DNA strand is patentable, because “no one would think to cut it on this end and on this end”. Lolz!

  50. Whether or not trolls who neither invent, make or sell any products in the U.S. [and merely sue on and/or get settlement payments for acquired patents] are the kind of “domestic industry” intended by Congress to be protected from infringing imports has indeed been the sore subject of some earlier strange ITC rulings. But more recently there has been “In Multimedia Display and Navigation Devices and Systems” (ITC Inv. No. 337-TA-694) — an action brought by Pioneer Corporation and Pioneer Electronics (USA) Inc. (collectively, “Pioneer”) alleging infringement by Garmin International Inc. and Garmin Corporation (collectively, “Garmin”) of Pioneer’s GPS navigation patents — in which the ITC determined that Pioneer’s U.S. licensing activities were insufficient to establish a domestic industry. The commission therefore terminated the investigation with a finding of no violation by Garmin.

  51. What I find interesting is that the ITC’s decision cites no prior precedent (ITC or court decision) in support of its limited exclusion order. Is that normal in such ITC decisions?

  52. “If the ITC continues to give more weight to the public interest factor, the result is that ITC exclusion orders may begin to parallel the injunction that a court would have ordered under eBay. Although the ITC still does not directly consider the first three eBay factors, it does require a domestic industry being harmed by the alleged importation.”

    Dennis, I agree that in court, showing a domestic industry could help in proving fulfillment of the eBay factors. Nevertheless, the domestic industry requirement is a threshold requirement for the ITC to even institute an investigation. I think of it as being akin to the case or controversy requirement for jurisdiction before a federal court. A U.S.-based manufacturing company that sells most of its products abroad would have a domestic industry for purposes of the ITC, but might have trouble getting an injunction in court under eBay (not that it’s clear why such a company would want an exclusion order if its own domestic business wasn’t being harmed).

    What I don’t recall off the top of my head is if there’s currently a distinction between the views of the courts and the ITC as whether or not a purely licensing-and-suing-for-infringement “business” – i.e. a patent troll – constitutes a business for purposes of showing harm under eBay or a domestic industry for purposes of ITC jurisdiction.

  53. by Professors Mark Lemley and Colleen Chien who argued for delay in exclusion orders in order to serve the public interest.

  54. 1. A computer-based system for detecting structures in data and performing actions on detected structures, comprising generic computer-based stuff for detecting structures in data and performing actions on detected structures.

    What an incredible piece of crxp.

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