Tag Archives: ITC

The Art of Losing Gracefully or How Koki’s appellate loss is truly a win.

Patent, , , , , ,

by Dennis Crouch

We have seen lots of ITC action recently. In the new Koki v. ITC decision, the Federal Circuit found that the accused infringer Koki lacked Constitutional standing to bring the appeal  based upon a binding promise not to sue submitted by the patentee Kyocera.

As I discuss at the end of this post, although Koki is the nominal loser, the company substantially advanced its position on appeal because Kyocera was forced to declare (and then clarify) its promise in order to obtain dismissal.

To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

ITC Patent Jurisdiction: Roku’s Petition and Contreras’ Critique

Patent, , , , , , , , , , , , ,

by Dennis Crouch

Roku, Inc. has asked the Supreme Court to review 2024 Federal Circuit decision affirming the US International Trade Commission's (ITC) finding of a Section 337 violation based on infringement of a TV-remote patent owned by Universal Electronics, Inc. (UEI). US10593196 (method of configuring user interfaces on home theater devices to control other appliances).

The petition focuses on the ITC's "domestic industry" requirement, and the level of nexus required between substantial domestic investment, the scope of the asserted patent, and any articles that embody the patented invention.  The case invites a broader reconsideration of the ITC's role in patent disputes, including its near-automatic issuance of exclusion orders against adjudged infringers.

To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

No Sugar-Coating: Post-AIA Patent on Secret Process Barred by Pre-Filing Sale of Product

Patent, , , , , , , , , , , , , , ,

by Dennis Crouch

Although the result could have been guessed, the Federal Circuit has issued an important decision interpreting the scope of post-AIA 35 U.S.C. 102 -- and the meaning of the "claimed invention." Celanese Intl. Corp. v. Intl. Trade Comm'n,  22-01827 (Fed. Cir. August 12, 2024).   In particular, the court affirmed the precedent of D.L. Auld -- i.e., the on-sale bar continues to block patenting of an otherwise secret process when the patentee makes pre-filing sales of product made using that process. The ITC had invalidated Celanese' artificial sweetener manufacturing process patent based upon these pre-filing sales. That judgment was thus affirmed on appeal.

To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

A few initial thoughts on Loper Bright and the end of Chevron Deference

Patent, , , , , , , , , , , , , , , ,

by Dennis Crouch

This is just a first look at how overturning Chevron may impact patent practice. 

In the past, both the USPTO and patent attorneys have largely ignored the larger scope of administrative law, but in recent years USPTO operations have been under tighter control from the White House, and courts have increasingly asked whether the agency is following the rules.  Administrative patent law was truly launched with  the American Invents Act of 2011 and the resulting administrative patent trials by the PTAB -- resulting in hundreds of appeals arguing that the USPTO's procedural approach is an abuse of administrative power.  Importantly, the Supreme Court in Cuozzo Speed Techs. v. Com. for Intell. Prop., 579 U.S. 261 (2016) provided the patent office with Chevron deference for its determinations regarding AIA trials, including issues such as its approach to claim construction.  But Chevron has now been overruled, and many are wanting the Federal Circuit to revisit the USPTO approach.

Although I expect that the outcome

To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.