IP Newsflash

In Kyocera Senco Industrial Tools Inc. v. International Trade Commission, the Federal Circuit held that an expert who did not possess the specific defined level of ordinary skill in the art could not testify about infringement, despite having advanced degrees and extensive experience in the general field of study. In so doing, the court confirmed that it is the defined level of skill in the art that determines whether an expert can provide relevant and reliable testimony from the perspective of a skilled artisan.

A recent initial determination at the U.S. International Trade Commission (ITC) determined that claims directed to semiconductor chips with no lower bounds for recited gate pitch and width ranges (e.g., “less than or equal to about [X] nanometers”) were not enabled under 35 U.S.C. § 112. Specifically, it found that a person of ordinary skill could not practice the full scope of the claims, in particular at the lower bounds of the recited ranges, without undue experimentation.

Although issues of inter partes review (IPR) estoppel have arisen often in district court litigation, they have come up less often in the context of International Trade Commission (ITC) investigations. In a recent ITC decision, ALJ Cheney ruled that the Commission Investigative Staff was not barred from asserting invalidity based on prior art references that the respondent had unsuccessfully raised in an IPR proceeding.

In an order from the International Trade Commission (ITC), Administrative Law Judge Lord denied Respondents’ motion for summary determination of no domestic industry because the motion was based on an incorrect interpretation of the term “article” in Section 337(a)(2).

On June 23, 2016, the International Trade Commission (ITC) determined that a Section 337 violation has occurred in Certain Footwear Products (Inv. No. 337-TA-936). As a result, it issued a general exclusion order prohibiting the unlicensed entry of footwear products that infringe two marks directed to the outsole layout of Converse Inc.’s (“Converse”) famous Chuck Taylor shoe (U.S. Trademark Registration Nos. 3,258,103 (the ‘103 trademark) and 1,588,960 (the ‘960 trademark)). The ITC determined that the public interest factors do not preclude issuance of the general exclusion order. The ITC also determined that a bond of 100 percent of the entered value (per pair) of the covered products is required to permit temporary importation during the presidential review period.

In the Matter of Certain Activity Tracking Devices, Systems, and Components Thereof, ALJ Lord found two of Jawbone’s health- and sleep-tracking device patents invalid for being directed to ineligible subject matter. Applying the two-part Mayo test, ALJ Lord held that the asserted claims were (1) directed to abstract ideas and (2) did not provide an inventive concept. Jawbone’s U.S. Patent No. 8,961,413 is directed to a wearable device for sleep monitoring, while U.S. Patent No. 8,073,707 is directed to a wearable health and wellness data monitoring device.

In granting a summary determination motion, ALJ Lord found that the patent owner’s (Owner) patents were directed to ineligible subject matter under 35 U.S.C. § 101. This was the first successful challenge to patentability under Section 101 at the International Trade Commission (ITC) since the Supreme Court’s decision in Alice Corporation Pty. Ltd. v. CLS Bank International.