U.S. Court of Appeals for the Federal Circuit, Philip Morris v. ITC, Docket No. 2022-1227

Customs

 

Import

 

Section 337 of the Tariff Act of 1930, 19 U.S.C. § 1337

 

Duty to Consult Under Section 337

 

Forfeiture

 

Public Interest

 

Domestic Industry Requirement

 

Patent Infringement

 

Cease and Desist Order

 

Limited Exclusion Order

 

 

 

 

Appeal from the United States International Trade Commission in Investigation No. 337-TA-1199.

 

 

RAI Strategic Holdings, Inc., R.J. Reynolds Vapor Company, and R.J. Reynolds Tobacco Company (collectively “Reynolds”) filed a complaint at the International Trade Commission alleging that respondents Philip Morris Products S.A., Philip Morris USA, Inc., and Altria Client Services LLC (collectively “Philip Morris”) violated Section 337 of the Tariff Act of 1930, 19 U.S.C. § 1337, through the importation and sale of tobacco products that infringed certain claims of U.S. Patent Nos. 9,901,123 and 9,930,915. After conducting a Section 337 investigation, the Commission barred Philip Morris and its affiliates from importing products infringing the asserted patents. Philip Morris appeals, contending that the Commission failed to “consult with, and seek advice and information from” the Department of Health and Human Services (HHS) as required by Section 337. In addition, Philip Morris challenges the Commission’s determinations on public interest, domestic industry, patent validity, and infringement. For the reasons set forth below, we affirm the Commission’s decision in full.

 

 

(…) In response to Reynolds’ complaint, the Commission instituted an investigation and ordered the presiding administrative law judge (ALJ) to “provide the Commission with findings of fact and a recommended determination on the issue” of public interest. J.A. 3432–33 (85 Fed. Reg. 29,482–83 (May 15, 2020)).

 

 

The ALJ issued a final initial determination (FID) concluding that: (1) Reynolds had shown that Philip Morris infringed the asserted claims, and that Philip Morris had not shown the asserted claims to be invalid, id. at *58; (2) Reynolds had established the existence of a domestic industry with respect to both of the asserted patents, id.; and (3) “the public interest evidence of record did not weigh against entry of a remedy,” id. at *73. The ALJ also recommended that the Commission issue a limited exclusion order, id. at *74, but not cease and desist orders, id. at *76. Philip Morris petitioned the full Commission for review of the FID.

 

 

It is undisputed that Reynolds satisfied the technical prong of the domestic industry requirement with respect to the asserted patents. (Fn. 1).

 

 

The Commission decided to review the FID in part. In the Matter of Certain Tobacco Heating Articles & Components Thereof, Inv. No. 337-TA-1199, Commission Opinion, 2021 WL 4947427 (Oct. 19, 2021) (Commission Op.). Among other things, it affirmed the ALJ’s determination of nonobviousness of the asserted claims of the ’123 patent and the ALJ’s determination that Reynolds satisfied the domestic industry requirement. The Commission concluded that Philip Morris had violated Section 337 and issued cease and desist orders directed to Altria Client Services LLC and Philip Morris USA, Inc., and issued a limited exclusion order banning the importation of infringing products by Philip Morris and its affiliates. Philip Morris appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(6).

 

 

Our court reviews the Commission’s decisions under the standards of the Administrative Procedure Act (APA). 19 U.S.C. § 1337(c); 5 U.S.C. § 706(2). We review the Commission’s legal determinations, including statutory interpretation, de novo and its factual findings for substantial evidence. Spansion, Inc. v. Int’l Trade Comm’n, 629 F.3d 1331, 1343–44 (Fed. Cir. 2010).

 

 

We begin with Philip Morris’s argument that the Commission erred by failing to meet its statutory duty as set forth in Section 337. That statutory duty requires that: During the course of each investigation under this section, the Commission shall consult with, and seek advice and information from, the Department of Health and Human Services, the Department of Justice, the Federal Trade Commission, and such other departments and agencies as it considers appropriate. 19 U.S.C. § 1337(b)(2).

 

 

Because Philip Morris forfeited this argument, and because in any event the Commission satisfied its duty to “consult with” HHS, we conclude that the Commission committed no error.

 

 

(…) Even in the absence of forfeiture, we conclude that, in this case, the Commission satisfied its duty to “consult with” HHS and the FDA. When the Commission instituted the investigation in May 2020, it published a Notice of Investigation in the Federal Register, J.A. 3432–33, and individually served letters enclosing the Notice of Investigation to representatives of the Department of Justice, the U.S. Bureau of Customs and Border Protection, the Federal Trade Commission, and HHS. J.A. 43501.

 

 

Public Interest:

 

§ 1337(d)(1) provides that if the Commission determines “that there is violation of this section, it shall direct that the articles concerned. . . be excluded. . . unless, after considering public interest, it finds that such articles should not be excluded” (emphasis added). In deciding this issue, the Commission must consider the effect of the remedy on four statutory public interest factors: (1) public health and welfare, (2) competitive conditions in the U.S. economy, (3) the production of like articles in the United States, and (4) U.S. consumers. 19 U.S.C. § 1337(d)(1), (f)(1).

 

 

 

Domestic industry requirement:

 

The domestic industry requirement of Section 337, 19 U.S.C. § 1337(a)(2) and (a)(3), includes an economic prong, which “requires that there be an industry in the United States,” and a technical prong, which “requires that the industry relate to articles protected by the patent,” both of which must be met. InterDigital Commc’ns, LLC v. Int’l Trade Comm’n, 707 F.3d 1295, 1298 (Fed. Cir. 2013).

 

 

(…) Obviousness of the ’123 Patent Claims (…).

 

 

(…) Infringement of the ’915 Patent.

 

 

 

 

(U.S. Court of Appeals for the Federal Circuit, March 31, 2023, Philip Morris v. ITC, Docket No. 2022-1227)

 

U.S. Court of Appeals for the Federal Circuit, Broadcom Corp. v. International Trade Commission, Docket No. 20-2008

Import

 

Customs

 

Patent Infringement

 

19 U.S.C.  § 1337  

Existence of a Domestic Industry Requirement (Consists of an “Economic Prong” and a “Technical Prong.”)

 

 

 

Appeal  from  the  United  States  International  Trade  Commission in Investigation No. 337-TA-1119.

 

 

 

Broadcom Corporation (“Broadcom”) filed a complaint at the International Trade Commission (“the Commission”) alleging a violation of 19 U.S.C. § 1337  (“Section  337”) based on the importation of products by Renesas Electronics Corporation (“Renesas”) and other companies that are asserted to infringe U.S.  Patents 7,437,583  (the “’583  patent”) and 7,512,752 (the “’752 patent”). In a final initial determination, the administrative law judge (“the ALJ”) held that  Broadcom failed to demonstrate a violation of Section 337 with respect to the ’583 patent because it failed to satisfy the technical prong of the domestic industry requirement and because there was no infringement of claim 25. (For the ’752 patent, the ALJ held that claim 5 would have been unpatentable as obvious over certain prior art). The parties then filed petitions seeking Commission review, and the Commission affirmed the relevant portions of the    final initial determination. Certain Infotainment  Sys., Components Thereof, and  Auto.  Containing the Same, Inv. No. 337-TA-1119 (May 28, 2020) (Final) (“Decision I”).

 

 

(…) Holding that there was no Section 337 violation because Broadcom failed to show the existence of a domestic industry (…).

 

At the Commission, Broadcom alleged a violation of Section 337 based on the importation of products by Renesas and other companies that it asserts infringe claims 17 and 18 and 25 and 26. Each of the accused infringers was a respondent in the Commission investigation and most have intervened in support of the Commission in this appeal.

 

In the final initial determination, the ALJ held that Broadcom failed to demonstrate that its system-on-a-chip (“SoC”) satisfied the technical prong of the domestic industry requirement in Section 337 because the SoC did not include a “clock tree driver,” which is a limitation of the asserted claims. J.A. 46. The ALJ also held that Broadcom failed to demonstrate infringement of claims 25 and 26 because it “could not identify any specific source code in the accused product where the claimed sequence of events ‘actually happened.’” J.A. 96. The Commission affirmed both holdings.

 

The Commission determined that there was no Section 337 violation because Broadcom failed to satisfy the technical prong of the domestic industry requirement. On appeal, Broadcom asserts error in the Commission’s findings of fact. Reviewing these findings for substantial evidence, we affirm the Commission’s decision.

 

To establish a violation of Section 337 a complainant must show both infringement and that an industry “relating to the articles protected by the patent . . . exists or is in the process of being established” in the United States. 19 U.S.C. § 1337(a)(2), (3). Under Commission precedent, the domestic industry requirement consists of an “economic prong” and a “technical prong.” See, e.g., Alloc, Inc. v. ITC, 342 F.3d 1361, 1375 (Fed. Cir. 2003). To meet the technical prong, the complainant must establish that it practices at least one claim of the asserted patent. This requires a complainant to identify “actual ‘articles protected by the patent.’” Microsoft Corp. v. ITC, 731 F.3d 1354, 1361–62 (Fed. Cir. 2013) (citing 19 U.S.C. § 1337(a)(2)–(a)(3)). To meet the economic prong, the complainant must demonstrate that its investment in the protected article is “significant” or “substantial.” 19 U.S.C. §1337(a)(3). The economic prong is not at issue in this appeal.

 

The ALJ determined that Broadcom identified only its SoC as a domestic industry article. However, the ALJ found, and Broadcom did not dispute, that the SoC did not contain the “clock tree driver” that is required by claim 25; it found that the driver must be stored on an external memory, separate from the SoC. But Broadcom instead argued that it satisfies the technical prong of the domestic industry requirement because it collaborates with its customers to integrate its SoC with external memory to enable retrieval and execution of the “clock tree driver” firmware. However, the ALJ faulted Broadcom for failing to identify any specific external memory that contained the “clock tree driver,” and noted that an actual article protected by the patent is needed to meet the industry requirement.

 

The Commission similarly found that Broadcom failed to identify any specific integration of the purported domestic industry SoC and the “clock tree driver” firmware, or a specific location where the firmware was stored. The Commission reasoned that without identifying an actual integration of the SoC and “clock tree driver,” Broadcom posited only a hypothetical device that did not meet claim 25’s limitations and therefore did not satisfy the technical prong of the domestic industry requirement. The Commission added that Broadcom’s new argument, i.e., that it manufactured and tested a “system” that included an SoC and firmware that contained the clock tree driver, was waived because Broadcom did not raise this theory in the ALJ proceedings.

 

We agree with the Commission that Broadcom failed to satisfy the technical requirement. We have previously found that, in order to meet the technical requirement of Section 337, a complainant must “show that there is a domestic industry product that actually practices” at least one claim of the asserted patent. Microsoft, 731 F.3d at 1361. In Microsoft, the patentee Microsoft supplied a mobile operating system to its customers. Id. at 1358, 1361. Microsoft’s asserted patent dealt with server-client communications, in which the client application was run on a mobile phone manufactured by Microsoft’s customers. Id. at 1360–61. Microsoft failed to show, however, that any such client applications were actually implemented on any third-party mobile device. Id. We therefore found that Microsoft did not satisfy the domestic industry requirement.

 

Broadcom suffers from substantially the same failure of proof here. As in Microsoft, Broadcom failed to identify any specific integration of the domestic industry SoC and the “clock tree driver” firmware, or a specific location where the firmware was stored. Broadcom does not challenge this finding, and instead introduces new theories that the Commission properly deemed waived. Because Broadcom failed to identify an actual article that practices claim 25, the Commission’s finding that Broadcom failed to satisfy the domestic industry requirement of Section 337 was supported by substantial evidence.

 

In light of our affirmance of the Commission’s finding of no domestic industry, the portion of the Commission’s decision addressing infringement of claim 25 is moot. We thus do not address Broadcom’s appeal from that portion of the Commission’s decision.

 

 

 

 

(U.S. Court of Appeals for the Federal Circuit, March 8, 2022, Broadcom Corp. v. International Trade Commission, Docket No. 20-2008)

 

U.S. Court of Appeals for the Federal Circuit, Bio-Rad Laboratories, Inc. v. International Trade Commission, Docket No. 2020-1475, 2020-1605

 

International Trade

 

ITC

 

Tariff Act of 1930 (Section 337)

 

Import

 

Patent Infringement

 

Induced Infringement

 

Contributory Infringement

 

 

 

In this consolidated appeal, Bio-Rad Laboratories, Inc. (“Bio-Rad”) and 10X Genomics, Inc. (“10X”) each challenge a portion of a decision by the United States International Trade Commission (“Commission”) regarding Bio-Rad’s allegations that 10X violated section 337 of the Tariff Act of 1930, 19 U.S.C. § 1337, by importing into the United States certain microfluidic chips. See Comm’n Opinion, In the Matter of Certain Microfluidic Devices, USITC Inv. No. 337-TA-1068, 2020 WL 225020 (Jan. 10, 2020) (“Commission Opinion”). Specifically, Bio-Rad challenges the Commission’s determination that 10X did not infringe the claims of U.S. Patent 9,500,664 (the “’664 patent”) by importing its “Chip GB.” 10X challenges the Commission’s determination that it infringes the claims of the ’664 patent as well as U.S. Patents 9,636,682 (the “’682 patent”) and 9,649,635 (the “’635 patent”) by importing its “GEM Chips.” For the reasons discussed below, we affirm the Commission’s decision with respect to both appeals.

 

We consolidated the appeals in the nature of cross-appeals. We have jurisdiction under 19 U.S.C. § 1337(c) and 28 U.S.C. § 1295(a)(6).

 

Both parties’ appeals relate to patent infringement, which is a two-step analysis. Packet Intelligence LLC v. NetScout Sys., 965 F.3d 1299, 1306 (Fed. Cir. 2020) (citing Clare v. Chrysler Grp. LLC, 819 F.3d 1323, 1326 (Fed. Cir. 2016)). The first step of the infringement analysis is claim construction, id., which is an issue of law that we review de novo. Linear Tech. Corp. v. ITC, 566 F.3d 1049, 1054 (Fed. Cir. 2009). The second step of the infringement analysis involves a comparison of the accused product to the construed claims, which is an issue of fact that we review for substantial evidence. See Packet Intelligence, 965 F.3d at 1305–06.

 

The compelling factor here is the distinction between “samples” and “reagents.” The ’664 patent consistently makes clear that a sample is not a reagent, beginning with the opening sentences of the introduction section. See ’664 patent col. 1 ll. 26–31 (“Many biomedical applications rely on high-throughput assays of samples combined with reagents. For example, in research and clinical applications, high-throughput genetic tests using target-specific reagents can provide high-quality information about samples . . . .” (emphases added)). The patent goes on to list definitions that lead to the unavoidable conclusion that a compound cannot simultaneously be a sample and a reagent. For example, within the definition of “sample,” the patent states that “a sample is the general subject of interest for a test that analyzes an aspect of the sample, such as an aspect related to at least one analyte that may be present in the sample.” Id. at col. 8 ll. 37–40. Similarly, the term “analyte” is defined as “a component(s) or potential component(s) of a sample that is analyzed in a test.” Id. at col. 9 ll. 1–2. And the term “test” is defined as “a procedure(s) and/or reaction(s) used to characterize a sample, and any signal(s), value(s), data, and/or result(s) obtained from the procedure(s) and/or reaction(s).” Id. at col. 8 ll. 7–9. Thus, the patent describes a relationship between a sample, the analyte(s) it contains, and the test(s) performed to analyze it.

 

In contrast, the patent defines a “reagent” as “a compound, set of compounds, and/or composition that is combined with a sample in order to perform a particular test(s) on the sample.” Id. at col. 9 ll. 19–21 (emphasis added). Thus, a reagent is not a part of a sample, nor is it the same thing as a sample in the context of the patent. The ALJ’s findings reflect a correct determination that, while the term “sample” is defined broadly in the patent, the definition of “sample” is not so broad as to include reagents within its scope.

 

Because we find no error in the claim construction, what remains is the second step of the infringement analysis, which turns on whether the monomer solution in the Chip GB is properly characterized as a sample or as a reagent. We review that fact question for substantial evidence. See Packet Intelligence, 965 F.3d at 1305–06.

 

The Commission adopted the reasoning of the ALJ, which relied on testimony from multiple witnesses that the monomer is a reagent and not a sample. Those witnesses focused on the fact that 10X does not analyze the monomers, but rather uses them to make the gel beads that go into reagent kits. See J.A. 179 (citing testimony from multiple fact and expert witnesses). We also agree with 10X that quality control testing is not the type of testing described in the patent, and it does not change the nature of the monomer. We therefore conclude that substantial evidence supports the ALJ’s finding that the monomer in the Chip GB is not a sample. Accordingly, Bio-Rad has failed to persuade us to overturn the Commission’s finding that the Chip GB does not infringe claims 1 and 14 of the ’664 patent.

 

We finally consider the Commission’s determination that Bio-Rad proved the elements of induced and contributory infringement of the ’682 and ’635 patents with respect to the GEM Chips. Induced infringement under 35 U.S.C. § 271(b) requires proof of underlying direct infringement, as well as proof that (1) “the defendant knew of the patent,” (2) the defendant knew or should have known that “the induced acts constitute patent infringement,” and (3) the defendant “possessed specific intent to encourage another’s infringement.” Sanofi, LLC v. Watson Labs. Inc., 875 F.3d 643, 643–44 (Fed. Cir. 2017). Contributory infringement under 35 U.S.C. § 271(c) requires proof that (1) the defendant had “knowledge of the patent in suit,” (2) the defendant had “knowledge of patent infringement,” and (3) the accused product is not a staple article or commodity of commerce suitable for a substantial noninfringing use. Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920, 1926 (2015). Because inducement and contributory infringement are issues of fact, see, e.g., Barry v. Medtronic, Inc., 914 F.3d 1310, 1334 (Fed. Cir. 2019), we review the Commission’s decisions for substantial evidence. Guangdong, 936 F.3d at 1358–59.

 

(…) At the very least, the ALJ found that 10X was willfully blind to the fact that its technology would infringe Bio-Rad’s patents, and continued to import infringing GEM Chips and engage in infringing activities even after Bio-Rad filed its complaint. ALJ Initial Determination, 2018 WL 5279172, at *75–76.

 

CONCLUSION

We have considered the parties’ remaining arguments but we find them unpersuasive. Accordingly, the decision of the Commission is affirmed.

 

 

 

(U.S. Court of Appeals for the Federal Circuit, May 28, 2021, Bio-Rad Laboratories, Inc. v. International Trade Commission, Docket No. 2020-1475, 2020-1605, Circuit Judge Lourie)

United States Court of Appeals for the Federal Circuit, Comcast Corp. v. United States International Trade Commission, Docket No. 18-1450

 

Import

Software

Customs

ITC

Section 337 of the Tariff Act of 1930

Patent Infringement

Infringement May Occur After Importation

Exclusion Order

Blocking Imports

Cease and Desist Order

 

Appeals from the United States International Trade Commission in Investigation No. 337-TA-1001.

 

Rovi Corporation and Rovi Guides, Inc. (collectively “Rovi”) filed a complaint with the ITC alleging violation of Section 337 of the Tariff Act of 1930. Rovi asserted, inter alia, infringement of claims 1, 2, 14, and 17 of United States Patent No. 8,006,263 (“the ’263 patent”) and claims 1, 3, 5, 9, 10, 14, and 18 of United States Patent No. 8,578,413 (“the ’413 patent”). Rovi stated, and the Commission found, that Comcast’s customers directly infringe the ’263 and ’413 patents by using Comcast’s X1 system. The Commission found that Comcast is in violation of Section 337 by importing the X1 set-top boxes that are used in the infringing system.

 

(…) The administrative law judge (“ALJ”) conducted an investigation and trial, and found violation of Section 337. The ALJ found that the X1 set-top boxes are imported by ARRIS and Technicolor, and that “Comcast is sufficiently involved with the design, manufacture, and importation of the accused products, such that it is an importer for purposes of Section 337.” Final ID at *11. The full Commission affirmed “the Final ID’s findings and conclusion that Comcast imports the X1 STBs into the United States.” Comm. Op. at *7.

 

The full Commission affirmed “the Final ID’s conclusion that the X1 systems meet all of the limitations of the asserted claims” and “Comcast’s customers directly infringed the ’263 and ’413 patents through their use of the X1 systems in the United States.” Id. at *10–11. The Commission stated that “the Final ID’s unreviewed findings also conclude that Comcast induced that infringement,” and that “Comcast also instructs, directs, or advises its customers on how to carry out direct infringement of the asserted claims of the ’263 and ’413 patents with the X1 STBs.” Id. The Commission affirmed that Comcast violated Section 337.

 

The Commission issued a limited exclusion order and cease and desist orders directed to the Comcast respondents. The limited exclusion order excludes importation of the X1 set-top boxes by Comcast (…).

 

Section 337 contemplates that infringement may occur after importation. The statute defines as unlawful “the sale within the United States after importation . . . of articles that—(i) infringe . . . .” The statute thus distinguishes the unfair trade act of importation from infringement by defining as unfair the importation of an article that will infringe, i.e., be sold, “after importation.” Section 337(a)(1)(B)’s “sale . . . after importation” language confirms that the Commission is permitted to focus on post-importation activity to identify the completion of infringement.

 

(…) Wing Shing Pdts. (BVI), Ltd. v. Simatelex Manufactory Co., 479 F.Supp.2d 388, 409–11 (S.D.N.Y. 2007) (“Numerous courts have held that, in contrast to §§ 271 (a) and (c), § 271 (b) applies to extraterritorial conduct.”)

 

(…) Comcast’s inducing activity took place overseas, prior to importation; it took place at importation; and it took place in the United States, after importation.

 

Comcast argues that it is not an importer of the X1 set-top boxes, in that the importer of record is ARRIS or Technicolor. Comcast states that it does not physically bring the boxes into the United States and it does not exercise any control over the process of importation. The Commission and Rovi respond that Comcast is an importer in terms of Section 337 because Comcast causes the X1 set-top boxes to enter the United States.

 

The Final ID found that the X1 set-top boxes “are so tailored to Comcast’s system and requirements that they would not function within another cable operator’s system.” Final ID at *11. “Further, the software at issue in the heart of this investigation is attributable squarely to Comcast.” Id. The Final ID concluded that “the evidence shows that Comcast is sufficiently involved with the design, manufacture, and importation of the accused products, such that it is an importer for purposes of Section 337.” Id.

 

The Final ID also found that Comcast “requires ARRIS and Technicolor to handle importation formalities, such as fees, documentation, licenses, and regulatory approvals.” Id. The Final ID concluded that “Comcast is sufficiently involved in the importation of the accused products that it satisfies the importation requirement, under 19 U.S.C. § 1337(A)(1)(B).” Final ID at *405.

 

The full Commission concluded that Comcast is an importer of the X1 set-top boxes. The Commission stated that “Section 337, as applied to Comcast’s relevant conduct here, requires importation of articles, proof of direct infringement, and proof of inducement, all of which have been established by the record.

 

The Commission has discretion in selecting a remedy that has a reasonable relation to the unlawful trade practice. See Cisco Systems, Inc. v. U.S. Int’l Trade Comm’n, 873 F.3d 1354, 1363 (Fed. Cir. 2017) (“Blocking imports of articles that induce patent infringement has a reasonable relationship to stopping unlawful trade acts.”).

 

 

(United States Court of Appeals for the Federal Circuit, March 2, 2020, Comcast Corp. v. United States International Trade Commission, Docket No. 18-1450 (18-1653, 18-1667), Circuit Judge Newman)

U.S. Court of Appeals for the Federal Circuit, Diebold Nixdorf, Inc. v. International Trade Commission

Import: Tariff Act of 1930 § 337: Patent infringement: Assignment: ITC: ALJ:

Appellants Diebold Nixdorf, Inc. and Diebold Self-Service Systems (together, “Diebold”) appeal the International Trade Commission’s (“ITC” or “Commission”) finding that they violated § 337 of the Tariff Act of 1930 by importing components of automated teller machines (“ATMs”) that infringe claims 1–3, 6, 8, and 9 of U.S. Patent No. 8,523,235 (“the ’235 patent”). Diebold challenges the Commission’s determination that these claims, all of which recite the term “cheque standby unit,” are not invalid for indefiniteness. See Certain Automated Teller Machines, ATM Modules, Components Thereof, and Prods. Containing the Same, Inv. No. 337-TA-989, 2017 ITC LEXIS 1603 (USITC Mar. 13, 2017).

We conclude that the term “cheque standby unit” in the ’235 patent is a means-plus-function term subject to 35 U.S.C. § 112, para. 6, which lacks corresponding structure disclosed in the specification. We therefore reverse the Commission’s finding that Diebold violated § 337.

In February 2016, Intervenors Hyosung TNS Inc. and Nautilus Hyosung America Inc. (together, “Hyosung”), which own the ’235 patent by assignment, filed a complaint with the ITC against Diebold, alleging violations of § 337 by reason of Diebold’s infringement of four patents related to ATMs.

(…) The administrative law judge (“ALJ”), after holding an evidentiary hearing, issued an Initial Decision (…)

The Commission, after undertaking review of the ALJ’s Initial Decision on issues not involving the “cheque standby unit,” issued its Final Determination finding a violation of § 337, in addition to a Limited Exclusion Order and Cease and Desist Orders. Diebold appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(6).

We review the Commission’s final determinations under the standards of the Administrative Procedure Act (“APA”). See 19 U.S.C. § 1337(c) (stating that “any person adversely affected by a final determination of the Commission” may appeal to this court “for review in accordance with chapter 7 of title 5”). Under the APA, we review legal determinations de novo and findings of fact for substantial evidence. Ajinomoto Co., Inc. v. Int’l Trade Comm’n, 597 F.3d 1267, 1272 (Fed. Cir. 2010); Osram GmbH v. Int’l Trade Comm’n, 505 F.3d 1351, 1355 (Fed. Cir. 2007).

(…) Because the ’235 patent fails to disclose any structure corresponding to the function of “holding the at least one authentic cheque to return the at least one authentic cheque to the user responsive to receiving user instructions cancelling depositing of the at least one authentic cheque,” we conclude that claims 1–3, 6, 8, and 9 are invalid for indefiniteness under 35 U.S.C. § 112, para. 2.

CONCLUSION

For the foregoing reasons, we reverse the Commission’s finding that Diebold violated § 337.

COSTS

Costs to appellant.

(U.S. Court of Appeals for the Federal Circuit, August 15, 2018, Diebold Nixdorf, Inc. v. International Trade Commission, Docket 17-2553, Type: Precedential, Circuit Judge O’Malley)

Les étapes de la procédure en violation de la Section 337 du Tariff Act de 1930, la violation reprochée étant l’importation de composants qui porteraient atteinte à un brevet U.S. La procédure devant l’ITC puis devant le Circuit fédéral implique analyse de la question de la violation du droit fédéral des brevets d’invention pour décider/juger si une violation de la section 337 s’est ou non produite. Standard de la preuve : en droit : de novo, en fait : substantial evidence. La procédure a ici été initiée par le titulaire par assignation du brevet U.S.