ITC Monthly Wrap-Up: April 2023

This month, there were four new complaints filed at the U.S. International Trade Commission.

Those included complaints filed by: Netgear, Inc. (Wi-Fi Routers, Wi-Fi Devices, Mesh Wi-Fi Network Devices, and Hardware and Software Components Thereof; Inv. No. 337-TA-3673); West Pharmaceutical Services, Inc. and West Pharma Services IL, Ltd. (Liquid Transfer Devices with an Intregral Vial Adapter; Inv. No. 337-TA-3674); Ouster Inc. (Lidar (Light Detection and Ranging) Systems And Components Thereof; Inv. No. 337-TA-3675); Composite Resources, Inc. and North American Rescue, LLC (Blood Flow Restriction Devices with Rotatable Windlasses and Components Thereof; Inv. No. 337-TA-3676).

This month’s ITC wrap up focuses on an order that highlights an adjudication on redesigned products — a powerful tool for respondents: Certain Wet Dry Surface Cleaning Devices, Inv. No. 337-TA-1304.

On March 9, 2022, the Commission instituted Investigation No. 337-TA-1304 based on a complaint filed by BISSELL, Inc. and BISSELL Homecare, Inc. (collectively “complainant”). Certain Wet Dry Surface Cleaning Devices, Inv. No. 337-TA-1304, Initial Determination at 2. The accused products were Tineco’s wet dry surface cleaning devices. Id. Shortly after the institution of the investigation, Tineco redesigned the Resch accused products. Id. at 19. The redesign altered the products’ source code so that “the battery would charge at two separate times during what Tineco refers to as the ‘self-clean cycle’ for those products,” whereas the asserted patent required that “the surface cleaning apparatus comprises a battery charging circuit controlling the recharging of the rechargeable battery, wherein the battery charging circuit is disabled by the actuation of the self-cleaning mode input control and remains disabled during the unattended automatic cleanout cycle.” Id. at 95. Following an evidentiary hearing, the Administrative Law Judge found that Tineco’s redesigned products did not infringe complainant’s surface cleaner patents. Id. at 100. The ALJ came to the conclusion of non-infringement of the redesigned product based on evidence that, among others, complainant’s expert “ignores the word ‘cycle’ in the claim, a word based on the same Latin root as the word circle. . . . Neither [complainant’s expert] nor [complainant] provide any explanation as to how actions in an arbitrarily selected period constitute any sort of cycle.” Id. The ALJ found that “the redesigned Resch accused products do not satisfy the requirement in limitation 1[p] that the battery charging circuit ‘remains disabled during the unattended automatic cleanout cycle.’” Id.

An adjudication of a redesigned product as non-infringing during the investigation serves as a powerful tool for respondents in the ITC to avoid the full impact of a remedial order. Such adjudication allows respondents to import the redesigned products without delay even if a violation is found on the other products in the investigation.

The Commission has used the following four factors in determining whether a respondent has met its burden for adjudication of a redesigned or alternative product: (1) whether the product is within the scope of the investigation (2) whether it has been imported; (3) whether it is sufficiently fixed in design; and (4) whether it has been sufficiently disclosed by respondent during discovery. Certain Human Milk Oligosaccharides and Methods of Producing the Same, 337-TA-1120 Commission Opinion at 18. “The Commission also reiterates its policy in favor of adjudicating redesigns to prevent subsequent and potentially burdensome proceedings that could have been resolved in the first instance in the original Commission investigation.” Id.

Therefore, as the 1304 investigation illustrates, an early product redesign that meets the four factors can help mitigate the risk that could result from a finding of violation for other accused products that would bar such products from importation.