The Federal Circuit’s recent denial of a rehearing en banc of its decision in ClearCorrect Operating, LLC v. ITC, 810 F.3d 1283 (Fed. Cir. 2015), confirms that the International Trade Commission’s jurisdiction under Section 337 of the Tarriff Act, 19 U.S.C. § 1337 does not include digital items. ClearCorrect Operating, LLC v. ITC, No. 2014-1527 (Fed. Cir. March 31, 2016). In concurring and dissenting opinions concerning the denial of the petition for en banc rehearing, Chief Judge Prost and Judge Newman went another round in disagreeing about the definition of “article” in Section 337. Judge Newman’s lone stand, and her colleagues’ more limited view of Section 337, is not news. Nonetheless, I flag this decision as an example of the broader trend in the law to limit patent protection for digital products. You may recall that, as the Federal Circuit panel decision explained, “the accused ‘articles’” in this case were “the transmission of the ‘digital models, digital data and treatment plans, expressed as digital data sets, which are virtual three-dimensional models of the desired positions of the patients’ teeth at various stages of orthodontic treatment’ (‘digital models’), from Pakistan to the United States.” 810 F.3d at 1287. The panel, consisting… Read More »A Deeper Meaning in the Federal Circuit’s Exclusion of “Digital Goods” From ITC Jurisdiction?
International Trade Commission
Patent licensing activities in the U.S. satisfy the “domestic industry” requirement of 13 U.S.C. 1337(a), the Federal Circuit has reaffirmed. Interdigital Communications, LLC v. ITC, No. 2010-1093 (Fed. Cir. Jan. 10, 2013). Nokia, the accused importer of infringing devices in an International Trade Commission proceeding, had petitioned for a rehearing, either by the panel or en banc, of the Court’s earlier decision. The Court denied both petitions. Judge Bryson authored an opinion by the panel. Judge Newman sharply dissented. Under Section 337(a), the ITC’s jurisdiction, and ability to issue exclusion orders, exists “only if an industry in the United States, relating to the articles protected by the patent, copyright, trademark, mask work, or design concerned, exists or is in the process of being established.” 13 U.S.C. § 1337(a)(2). Further, an industry in the United States shall be considered to exist if there is in the United States, with respect to the articles protected by the patent, copyright, trademark, mask work, or design concerned— (A) significant investment in plant and equipment; (B) significant employment of labor or capital; or (C) substantial investment in its exploitation, including engineering, research and development, or licensing. The court disagreed with Nokia’s argument “that the International Trade Commission… Read More »Section 337 “Domestic Industry” Requirement Satisfied by Licensing