by Dennis Crouch

Texas Advanced Optoelectronic Solutions, Inc., (TAOS) v. Renesas Electronics America, Inc., fka Intersil Corporation (Supreme Court 2018)

This case focuses on TAOS’ patented photodiode array ambient light sensor that is now widely used in smartphones to adjust display brightness.  U.S. Patent No. 6,596,981.  Following failed merger negotiations with TAOS, Intersil developed a competing product and Apple signed-on as a client. However, a jury found Intersil liable for patent infringement, trade secret misappropriation, breach of contract, and tortious interference with prospective business (finding that Intersil had improperly used confidential information from the merger talks).

A tough aspect of the patent case against Intersil itself is that 98.8% of its products are manufactured, packaged, and tested abroad — then delivered to customers abroad. U.S. patent law is territorial and almost none of the products were made, used, or sold “within the United States.” 35 U.S.C. 271(a).  In its new petition for writ of certiorari, TAOS argues that the infringer should still be liable becase it made “offers to sell” the invention within the US.

Here, the evidence shows that an offer was made in California by Intersil to sell the accused sensors to Apple at $.035 each.  Although the offer was made in California, delivery was set outside the U.S.  The delivery location is critical under the leading Federal Circuit decision in Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296 (Fed. Cir. 2010).  In Transocean, the court held that “offers to sell . . . within the United States” are limited to offers where – if accepted – the sale will occur in the United States.   Now TAOS raises the following question to the Supreme Court:

Whether an “offer[] to sell” occurs where the offer is actually made or where the offer contemplates that the proposed sale will take place.

[Petition].  Linguistically — the basic question is whether “within the United States” clause modifies “offers” or “sell” (or perhaps both). In the context of the statute’s list of bad actions it is pretty clear that the focal point is “offers.”

[W]hoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.

35 U.S.C. 271(a). There is really no Congressional guidance on what was intended when the law was implemented as part of the Uruguay Round Agreements Act (1994).

In Transocean, the offer was made in Scandinavia to but for delivery in the US — the court held this as infringing because the sale was going to take place in the US. “In order for an offer to sell to constitute infringement, the offer must be to sell a patented invention within the United States. The focus should not be on the location of the offer, but rather the location of the future sale that would occur pursuant to the offer.”  Id. The Supreme Court called for views of the Solicitor General in that case, but the parties settled prior to resolution.   Now the court has another chance to consider the issues.

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The importance of this case is much greater following the Supreme Court’s recent decision in WesternGeco LLC v. ION Geophysical Corp.  In that case, the court indicated that foreign consequential damages are available to compensate for U.S. acts of infringement.   Here, that could mean that TAOS could collect damages for the foreign made products that stemmed from the US originated offer.

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One way to look at this case is through a simple two-by-two table of activities showing the location of the offer as well as the location of the proposed sale.  Everyone agrees that box-1 is infringing where both the offer and eventual sale are in the US; we all also agree that box-4 is not infringing where neither the offer nor the eventual sale are in the US.  The debate is then over boxes 2 and 3.  In Transocean, the Federal Circuit held that box-3 is also infringing — focusing on the location of the eventual sale.  Here, the patentee is arguing that the statute focuses on the location of the offer and thus that boxes 1 and 2 are the actionable situations.  I can also conceive of a court saying that of the four, only box 1 is infringing or alternatively that 1, 2, and 3 are all infringing..

by Dennis Crouch

Following up on the patent experience of US Attorney General Matthew Whitaker.  Although not a patent attorney, Whitaker has been a board member of the now defunct invention promotion scam World Patent Marketing.  In 2017, the Federal Trade Commission (FTC) filed suit against the company, won a preliminary injunction against its ongoing business, and then a consent decree for $27 million in judgments and injunction against ongoing business.  (Apparently at least $24 million is gone and not being repaid.)

Gene Quinn has written extensively about invention marketing scams discussed the preliminary injunction on his IPWatchdog site.  Quinn explains:

“The record supports a preliminary finding that Defendants devised a fraudulent scheme to use consumer funds to enrich themselves,” concluded United States District Judge Darrin P. Gayles. “Accordingly, the Court finds a preliminary injunction is necessary to maintain the status quo pending a trial on the merits.”

Perhaps most egregious, however, were the threats and intimidation World Patent Marketing directed toward complaining customers.

As a former Federal Prosecutor, Whitaker’s place on the Board lent the company a high level of credibility. For lending his name, Whitaker was paid only about $600 per month.  At the time, Whitaker was also managing director of his own small Iowa law firm and penned at least one letter toward a complaining customer:

Whitaker was not prosecuted by the FTC and was not named in either the preliminary injunction or the consent decree.  Unlike other board members, Whitaker has not returned the cash he received in the scheme and has made no public statement regarding his role or the scam.  My hope is that the AG will have learned from this experience, however his ongoing silence on the issue is troubling.

• WSJ Article

by Dennis Crouch

Acceleration Bay, LLC v. Activision Blizzard Inc., Docket No. 17-2084 (Fed. Cir. 2018)

This consolidated appeal involves 12 different inter partes review proceedings collectively challenging three Acceleration Bay patents.[1] The patents at issue here are all related to methods of broadcasting information over a peer-to-peer network.  The basic approach here is to ensure that the network is sufficiently connected and then send data through each node to its neighbor participants.  I made the gif below that provides a simple example.

The PTAB split in its decision – finding many of the challenged claims obvious but some patentable.[2]  The decision involves a few patent attorney inside questions:

If a claim has no transition phrase, is it all body? Some of the challenged claims had no transition phrase such as “comprising” — Claim 1 of the ‘966 patent is on point:

1. A computer network for providing an information delivery service for a plurality of participants, each participant having connections to at least three neighbor participants, wherein an originating participant . . .

On appeal, the patentee argued that “information delivery services” should be seen as a limiting claim term — because it is part of the body of the claim — rather than a non-limiting portion of the preamble. Here, challenged term appears toward the start of the claim, but the patentee argues that the claim is all-body (and therefore is all limiting).  On appeal, the Federal Circuit sided with the PTAB that the term was part of the preamble and was non-limiting. The court writes “Acceleration’s poor claim drafting will not be an excuse for it to infuse confusion into its claim scope.”  Note here that the patents originally belonged to Boeing and were prosecuted by Perkins Coie.

Printed Publication: In its cross-appeal, Blizzard argued that a particular reference (“Lin”) should count as a prior art printed publication. The article in question is captioned:

Meng-Jang Lin, et al., Gossip versus Deterministic Flooding: Low Message Overhead and High Reliability for Broadcasting on Small Networks, Technical Report No. CS1999-0637 (Univ. of Cal. San Diego, 1999).

The unchallenged testimony was that the article by Lin was uploaded to the UCSD Computer Science and Engineering website (on a page of CSE technical reports).  The upload took place in 1999 before the critical date for the patents and the site was indexed and searchable – although the search function was limited. Still, the PTAB found that the document was not “published” — a conclusion affirmed on appeal. 

To qualify as a “publication” the document must either (1) be actually distributed to the public or (2) be publicly available. Because there was no evidence that the document actually reached members of the public, the focus was on the second prong, public availability.  The question here: “whether an interested skilled artisan, using reasonable diligence, would have found Lin on the CSE Technical Reports Library website.”  Although the site was indexed and searchable, the PTAB concluded that the search function was limited and that the evidence only “suggests that an artisan might have located Lin by skimming through potentially hundreds of titles in the same year, with most containing unrelated subject matter, or by viewing all titles in the database listed by author, when the authors were not particularly well known.”

Treating public accessibility as a factual determinatoin, the Federal Circuit affirmed — finding that “[s]ubstantial evidence supports the Board’s finding that there “is insufficient evidence of record to support a finding that a person of ordinary skill in the art in 1999 could have located Lin using the CSE Library website’s search function.”

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As noted above, a critical factor in the Federal Circuit’s analysis was the deference given to PTAB fact finding — holding that public accessibility is a question of fact.

Whether a reference qualifies as a printed publication under § 102 is a legal conclusion based on underlying fact findings. Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1356 (Fed. Cir. 2018); accord Cooper Cameron Corp. v. Kvaerner Oilfield Prod., Inc., 291 F.3d 1317, 1321 (Fed. Cir. 2002). One such fact question is public accessibility, which we review for substantial evidence. Jazz Pharm., 895 F.3d at 1356.

In a prior post, I walked though a series of low quality citation strings on the question of whether public-accessibility is a question of fact (or instead a question of law).

Here, the court cites Jazz Pharma, and Jazz Pharma does include the holding that “[p]ublic accessibility is a question of fact.”  Jazz Pharma justifies this holding with a citation to In re NTP, Inc., 654 F.3d 1279 (Fed. Cir. 2011). NTP also includes the short statement that “publicly accessible is a question of fact,” again without any reasoning or explanation other than a citation back to In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) along with the parenthetical (holding that whether a reference is publicly accessible is based on the “facts and circumstances surrounding the reference’s disclosure to members of the public”).  It turns out though that Klopfenstein did not actually make that holding. Once again, this citation string goes back to nowhere.

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[1] IPR2015-01951, IPR2015-01953, IPR2015-01964, IPR2015-01970, IPR2015-01972, IPR2015-01996, IPR2016-00933, IPR2016-00934, IPR2016-00935, IPR2016-00936, IPR2016-00963, IPR2016-00964.

[2] “Claims 1–9 of U.S. Patent No. 6,829,634, claims 1–11 and 16–19 of U.S. Patent No. 6,701,344, and claims 1–11 and 16–17 of U.S. Patent No. 6,714,966” were all found invalid. “Claims 10–18 of the ’634 patent, as well as substitute claims 19 of the ’966 patent, 21 of the ’344 patent, and 25 of the ’634 patent” were all found patentable.

Here in Missouri we have a Univ. of Missouri School of Law Graduate – Claire McCaskel – running against a former Univ. of Missouri School of Law Professor – Josh Hawley (whose spouse is a current Univ. of Missouri School of Law Professor).  Keeping it all close to home.

by Dennis Crouch

GoPro, Inc. v. Contour IP Holding LLC (Fed. Cir. 2018) [Original Opinion][Revised Opinion]

In its July 2018 decision, the Federal Circuit vacated a PTAB IPR final decision over a prior-art dispute — whether a GoPro catalog counts as prior art as a “printed publication” under 35 U.S.C. 35 U.S.C. § 102(b) (pre-AIA). Below I discuss the July Federal Circuit decision as well as the November 1 panel revision decision. 

In its IPR institution decision, the PTAB found that the patent challenger had made a threshold showing that the catalog was prior art as a printed publication. However, on final analysis, the PTAB found that its prior art status had not been proven.  The patent challenger GoPro appealed.

The Federal Circuit has broadly interpreted “printed publication” to include all sorts of documents — so long as they were either (1) distributed to relevant members of the public; or (2) accessible to the relevant public.

A reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.’ Blue Calypso quoting Kyocera Wireless.

Here, the catalog in question was taken to the Tucker Rocky dealer-only trade show in Fort Worth Texas in July 2009 (before the critical date).  Tucker Rocky is a wholesaler of “action sports vehicles like motorcycles, motorbikes, ATVs, snowmobiles, and watercraft.”  A GoPro employee testified that he took the catalog to the show where it was displayed and distributed to attendees. The employee also testified that the GoPro continued to make the catalog available to “actual and potential customers, dealers, and retailers through its website, direct mail, and other means of distribution.”  In its response, Contour provided evidence that the Tucker Rocky show was limited only to dealers — and not open to the public.  The PTAB found the GoPro employee’s testimony credible — but found it insufficient to prove public accessibility — since the show was not advertised or announced to the public.  According to the Board — the fact that dealers attended was insufficient because dealers do sales not camera engineering — i.e., dealers are not persons of skill in the art of camera making.  Thus, this dealer show is different from an academic meeting where the attendees are skilled in the art.

On appeal, the Federal Circuit disagreed with the PTAB’s conclusions — holding that the Board too narrowly “focused on only one of several factors that are relevant to determining public accessibility in the context of materials distributed at conferences or meetings. . . . [O]ur case law directs us to also consider the nature of the conference or meeting; whether there are restrictions on public disclosure of the information; expectations of confidentiality; and expectations of sharing the information.”

After reviewing the matter Federal Circuit rejected the PTAB analysis and found that the catalog’s use at the show counted as prior art.

Its original opinion focused more on factual matters — disputing some findings of the PTAB.  The new revised opinion focuses more on legal errors made by the PTAB — making this perhaps a more supportable opinion.

For a conference distribution, the key added line makes clear that the distribution can still count as a publication — even if not directly distributed to any person of skill in the art.

When direct availability to an ordinarily skilled artisan is no longer viewed as dispositive, the undisputed record evidence compels a conclusion that the GoPro Catalog is a printed publication as a matter of law.

It is this line that serves as the source of the essay title.  In the original opinion, the court quibbled with the notion that dealers were not PHOSITA.  The revised opinion substantially drops that argument and explains that the factor simply is not determinative.

I have black-lined the primary changes in the text based upon the rehearing decision:

Although the trade show was only open to dealers, there is no evidence or indication that any of the material disseminated or the products at the show excluded POV action cameras, or information related to such cameras.   Contrary to the Board’s conclusion, the attendees attracted to the show were likely more sophisticated and involved in the extreme action vehicle space than an average consumer. Thus, it is more likely than not that persons ordinarily skilled and interested in POV action cameras were in attendance or at least knew about the trade show and expected to find action sports cameras at the show. While the Board found that GoPro did not provide any evidence as to what products the companies at the trade show make, GoPro was not the only manufacturer of POV action cameras. The vendor list provided with Mr. Jones’s declaration listed a number of vendors who likely sell, produce and/or have a professional interest in digital video cameras. J.A. 4319, 4323–24.  This is especially true in light of the evidence that Tucker Rocky is a trade organization directed to action sports vehicles and accessories related thereto.  J.A. 4319.

The Board concluded that the GoPro Catalog was not a printed publication because the Tucker Rocky Dealer Show was not open to the general public and GoPro failed to provide evidence that someone ordinarily skilled in the art actually attended the dealer show.  But, the standard for public accessibility is one of “reasonable diligence,” Blue Calypso, 815 F.3d at 1348, to locate the information by “interested members of the relevant public.”  Constant, 848 F.2d at 1569 (emphasis added). A dealer show focused on extreme sports vehicles is an obvious forum for POV action sports cameras. And although the general public at large may not have been aware of the trade show, dealers of POV cameras would encompass the relevant audience such that a person ordinarily skilled and interested in POV action cameras, exercising reasonable diligence, should have been aware of the show. Mr. Jones testified that the dealer show was attended by actual and potential dealers, retailers, and customers of POV video cameras.  Additionally, the GoPro Catalog was disseminated with no restrictions and was intended to reach the general public.  Based upon Mr. Jones’s testimony, the evidence provided by GoPro regarding the Tucker Rocky Dealer Show, and the evidence of the Tucker Rocky Distributing website, we conclude that GoPro met its burden to show that its catalog is a printed publication under

Although the court did not well on this issue, the court noted that the patentee did not depose or cross examine the GoPro employee (Jones) who testified.  In hindsight, that may have been a strategic mistake.  Although Jones would have likely stuck to his testimony, a deposition would have likely been able to poke various holes into the account.

The revised opinion has a few other minor changes:

• The Board based this decision on its finding conclusion that a certain GoPro catalog is not a prior art printed publication. We disagree. . . . In its final written decisions, the Board found concluded that the GoPro Catalog did not qualify as a prior art printed publication under 35 U.S.C. § 102(b).
• The Board’s findings of fact, such as public accessibility, are reviewed for substantial evidence.

The change from “finding” to “conclusion” is not explained but these terms appear to be short-hand for “finding of fact” and “conclusion of law.” The Federal Circuit sees the question of whether a reference is a “printed publication” is a question of law — and so “conclusion of law” is the appropriate term.

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Diversion into the wormhole of whether Public Accessibility a Question of Fact: I’m not confident in the court’s statement here that “public accessibility” is a question of fact.  In Klopfenstein, for instance, the court first noted that there were no factual disputes between the parties — but that the court still needed to determine whether the reference was publicly accessible. In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004).  Calling “public accessibility” a question of fact and “printed publication” a question of law is also problematic because the court has called the two classifications essentially overlapping — “Thus, throughout our case law, public accessibility has been the criterion by which a prior art reference will be judged for the purposes of § 102(b).” Klopfenstein.

In its 2018 Jazz Pharm. decision, the Federal Circuit stated that “Public accessibility is a question of fact that we review for substantial evidence.” Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1356 (Fed. Cir. 2018). The Jazz Pharm. court did not explain its reasoning for this statement but merely cited In re NTP, Inc., 654 F.3d 1279 (Fed. Cir. 2011).  The NTP case also provides a 1-liner that “Whether a reference is publicly accessible is a question of fact that we review for substantial evidence.”  NTP did not provide any reasoning for this statement but merely cited back to the aforementioned In re Klopfenstein, 380 F.3d 1345, 1350 (Fed.Cir.2004).  Klopfenstein decided the question of public accessibility (which was disputed by the parties) shortly after stating that “there are no factual disputes between the parties in this appeal.” This appears to be a situation where the roots were not properly dyed.

Going back to NTP, the court cited to a particular statement in Klopfenstein for its conclusion that public accessibility is a question of fact:

Whether a reference is publicly accessible is a question of fact that we review for substantial evidence. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed.Cir.2004) (holding that whether a reference is publicly accessible is based on the “facts and circumstances surrounding the reference’s disclosure to members of the public”).

NTP.  Unfortunately, the NTP court badly mis-paraphrased Klopfenstein.  The more complete quote from Klopfenstein on this issue is as follows:

Where no facts are in dispute, the question of whether a reference represents a “printed publication” is a question of law. . . The determination of whether a reference is a “printed publication” under 35 U.S.C. § 102(b) involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.

Klopfenstein.  NTP took this quote to mean that the issue of public accessibility is a question of fact. But, as you can see, the quote refers to the broader issue of whether a document is a “printed publication” and actually holds that it is a question of law.

In the 2012 Voter Verified decision, the Federal Circuit explained that “Public accessibility is a legal conclusion based on underlying factual determinations.” Voter Verified, Inc. v. Premier Election Sols., Inc., 698 F.3d 1374, 1380 (Fed. Cir. 2012).  For this principle, the Federal Circuit cited to Cooper Cameron Corp. v. Kvaerner Oilfield Prods., Inc., 291 F.3d 1317, 1321 (Fed.Cir.2002).  However, as far as I can tell, the Cooper Cameron decision says nothing of the kind (and the pin-cited portion of the case is not even related to the printed publication issue).

This whole series of failed citations makes the Federal Circuit look pretty bad.

by Dennis Crouch

In its decision here, a divided Federal Circuit created a new test for secondary meaning, placed limits on trade dress infringement with an analogy to design patent law, and more . . .

Converse v. ITC and Sketchers, New Balance, et al. (Fed. Cir. 2018) [ConverseITC]

The ITC found that the mid-sole portion of these Converse All Star shoes was not a protected trademark — invalidating the Chuck Taylor trade dress registration (Reg. No. 4,398,753) and rejecting the existence of common-law rights.  Although it found no trademark rights — the ITC did explain that the accused shoes would be infringing if the mark was valid.  On appeal, the Federal Circuit has vacated and remanded.

Distinctiveness is a threshold requirement for trademark rights.  In Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000), the Supreme Court held that a product design (such as a shoe portion) is never inherently distinctive, but that distinctiveness may be acquired and proven with “a showing of secondary meaning” — i.e., that the relevant consumers associate the particular product features with a particular source of goods. Thus, a trade dress rights are established over time as consumers become more familiar with the product design.

In this case, the dates are important — because “the party asserting trade-dress protection must establish that its mark had acquired secondary meaning before the first infringing use” on an infringer-by-infringer basis.  In the opinion, the court modified this “first infringing use” language to set rough five-year cutoff — applying Section 2(f) of the Lanham act to the Courts.  Thus, five years of exclusive and continuous use will can create a presumption of secondary meaning. Thus, in evaluating the “length, degree, and exclusivity of use” by the mark holder, “the ITC should rely principally on uses within the last five years. . . . [U]ses older than five years should only be considered relevant if there is evidence that such uses were likely to have impacted consumers’ perceptions of the mark as of the relevant date”

In this case, the 2013 mark registration by Converse creates a presumption of secondary meaning — as of the registration date.

Converse argues that it is entitled to rely on the presumption of validity afforded to registered marks. We do not agree that this presumption applies to infringement that began before registration. . . . [U]nder the statute, the registration and its accompanying presumption of secondary meaning operate only prospectively from the date of registration. . . . This rule is a straightforward application of the Lanham Act, pursuant to which the PTO examines whether secondary meaning has been acquired at the time of registration. See 15 U.S.C. § 1052(f). The resulting registration confers a presumption of secondary meaning from that point in time, see id. §§ 1057(b), 1115(a), but at the time of registration the PTO is not asked to determine whether secondary meaning had been acquired at some previous date, and therefore registration cannot support a presumption for the period before registration. Indeed, on a record such as this, with a multiyear gap between infringement and registration, registration cannot even be probative of secondary meaning at the time of infringement.

Because the ITC did not establish when (if ever) the mark established secondary meaning pre-registration, on remand, Converse will be given a chance to prove that secondary meaning was established prior to “the first infringing use by each respondent.” The dissenting opinion in this case filed by Judge O’Malley would not have given Converse the opportunity to go back and provide this new evidence.

Test for Secondary Meaning: In addition to the presumption and timing issues, the Federal Circuit also found that the ITC erred in its analysis of secondary meaning — here the court laid out its particular test:

Today we clarify that the considerations to be assessed in determining whether a mark has acquired secondary meaning can be described by the following six factors: (1) association of the trade dress with a particular source by actual purchasers (typically measured by customer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage of the product embodying the mark. . . . All six factors are to be weighed together in determining the existence of secondary meaning.

This test is similar to that adopted by the various circuits, but include some quirks. (Prepare an additional post on this).

Regarding “exclusivity,” the Federal Circuit suggested that the ITC had relied upon shoes with designs “that were not substantially similar.”

The court explained that

Although we agree with the ITC that evidence of the use of similar but not identical trade dress may inform the secondary-meaning analysis, we think such uses must be substantially similar to the asserted mark. Here, the ITC made no determination as to which of the prior uses were substantially similar.

Establishing infringement: On the infringement side, the Federal Circuit also found errors in the ITC’s likelihood of confusion test.  Here, the court held that product design trade dress can only infringe if it is “substantially similar” to the protected trade dress — noting that “We have applied an analogous requirement in the design-patent context, where infringement cannot be found unless an ordinary observer would perceive that the ‘two designs are substantially the same.'” Quoting Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 670 (Fed. Cir. 2008) (en banc) (quoting Gorham Co. v. White, 81 U.S. 511, 528 (1871)).

Defaulting Parties: Finally, the ITC had refused to enter an exclusion order against defaulted respondents — based upon its finding that the trademark was invalid. In the appeal, the court here suggested that result should be changed.

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The majority opinion was written by Judge Dyk and joined by Judge Huges.  Judge O’Malley wrote in dissent. She explained:

I agree with the majority that the International Trade Commission (“ITC” or “Commission”) erred in its legal analysis in this matter and that its decision must be vacated. I also agree that a remand is appropriate. I even agree with many of the ways in which the majority finds that the ITC erred. I cannot join in the majority’s reasoning, however, because I believe that the majority overlooks important procedural facts and binding statutory authority to reach issues that are not properly before us. Thus, I do not agree with the majority’s decision to remand questions regarding the validity of the registered mark for further consideration or its decision to even address questions of infringement. And, I cannot accede to the majority’s failure to order the ITC to enter a remedy against the parties found in default in the proceedings below or to explain why public interest concerns would justify not doing so.

Specifically, I believe that the majority: (1) misperceives the scope of the ITC’s authority to invalidate duly issued intellectual property rights when it addresses the issue of the validity of a registered mark; (2) blurs the line between the concepts of priority of use under common law and the validity of a registered mark; (3) espouses advisory—and unnecessary—opinions on the weight to be given certain survey evidence and the question of infringement; and (4) ignores the ITC’s statutory obligation to enter remedies against defaulting parties. Thus, except where otherwise noted, I concur only in the conclusion that the ITC’s findings must be vacated, and the matter remanded to the ITC for further analysis. I dissent from the fact that the majority discusses matters not properly before us and from the nature of the remand the majority outlines.