ITC Monthly Wrap-Up: July 2022

In July, there were four new complaints filed at the ITC: (1) Certain Soft Projectile Launching Devices, Components Thereof, Ammunition, and Products Containing Same, Inv. No. 337-TA-3629, filed by Hasbro, Inc., and Spin Master, Inc.; (2) Certain Video Processing Devices and Products Containing the Same, Inv. No. 337-TA-1323, filed by VideoLabs, Inc.; (3) Certain Solar Power Optimizers, Inverters, and Components Thereof, Inv. No. 337-TA-3630, filed by Ampt, LLC, and (4) Certain Robotic Pool Cleaners, Products Containing the Same, and Components Thereof, Inv. No. 3631, filed by Zodiac Pool Systems, LLC, and Zodiac Pool Care Europe.

In addition, one enforcement proceeding was filed by GMI Holdings, Inc., and Overhead Door Corporation in Certain Movable Barrier Operator Systems and Components Thereof, Inv. No. 337-TA-1209, and one request for modification was filed by Sonos, Inc., in Certain Audio Players and Controllers, Components Thereof, and Products Containing Same, Inv. No. 337-TA-1191.

The ITC instituted one new investigation in Certain Rotating 3-D LiDAR Devices, Components Thereof, and Sensing Systems Containing the Same, Inv. No. 337-TA-1322, filed by Velodyne Lidar USA, Inc.

In other ITC news, in July, ALJ Shaw took over as the chief judge of the Copyright Royalty Board, leaving an opening for a new ALJ position. In addition, the ITC announced on July 20, 2022 that the Commission will resume in-person hearings and re-open to the public on September 29, 2022.

This month's ITC Wrap-Up reviews two ALJ decisions of interest.

Certain Knitted Footwear, Inv. No. 337-TA-1289, Order No. 14 (July 13, 2022)

With a month left in fact discovery, complainant Nike began the complex process of attempting to obtain deposition testimony from a witness living in the U.K. who had allegedly helped come up with the idea of using knitting for sports shoes. Id. at 1-3. Specifically, Nike filed a motion with the ITC seeking a recommendation to the U.S. District Court for the District of Columbia to issue a letter of request to the Central Authority for England and Wales. Id. at 1. About two weeks later, the motion was granted. Id. at 2. As the next step, Nike filed a motion in the D.C. District Court for a letter of request for international assistance. Id. The court granted the motion and issued the letter of request three days before the close of fact discovery. Id. Nike then intended to work with London-based counsel to seek an order for deposition from a London-based court, which would allow the deposition to take place. Id. But by that time, fact discovery would be closed.

Nike therefore moved for leave to take the deposition after the close of fact discovery. Id. at 1. Nike argued that good cause existed because the witness possessed relevant information and that Adidas would not face prejudice given the ample time until the hearing. Id. at 2. Adidas opposed on the grounds that Nike was not sufficiently diligent in seeking the deposition, and that Adidas would be prejudiced by the introduction of new evidence well into the expert discovery period. Id. at 3-4.

The ALJ denied leave to take the deposition after the fact discovery period. Id. at 4. The ALJ noted that Nike was aware of the witness' relevance 11 weeks prior to the close of fact discovery and did not offer an adequate explanation for its delay in initiating the process of taking the U.K. witness' deposition. Id. at 5.

This case illustrates that ITC litigants should move as quickly as possible to obtain discovery from third parties particularly those living outside of the United States. The process involves multiple different filings in series, which can take weeks or months to resolve. It might be possible to obtain leave to take foreign deposition after the close of fact discovery, but any significant and unexplained delay in doing so would weigh against a finding of diligence, which ALJs consider in granting leave to obtain discovery after the cutoff.

Certain Flocked Swabs, Products Containing Flocked Swabs, and Methods of Using Same, Inv. No. 337-TA-1279, Order No. 63 (decided June 24, 2022; published July 5, 2022)

Complainants Copan Italia, S.p.A., and Copan Industries, Inc., ("Copan") moved to strike a portion of the Staff's prehearing brief, in which Staff argued that Copan's proposed construction of "perpendicularly" was indefinite. Id. at 1. The asserted claims covered fibers that stand up "perpendicularly" from the surface of a swab tip. Id. at 2. Copan argued in its motion that Staff's indefiniteness argument was untimely and waived and that Staff's argument amounts to a new invalidity theory. Id. Staff countered that its indefiniteness argument was included as a response to Copan's own late disclosure of the position that the term was relative in nature. Id. at 2-3. Respondents also opposed the motion, arguing that Staff preserved its right to argue indefiniteness in its disclosed list of terms for construction, summary determination motion, and contentions. Id. at 3.

The ALJ denied Copan's motion and permitted Staff to argue that Copan's understanding of the term "perpendicularly" was indefinite. Id. at 4. The ALJ observed that none of the parties proposed construction of "perpendicularly" during the Markman process, id., and that Copan's specific understanding of the term as relative in nature was not disclosed until expert reports, id. at 5. The ALJ explained, "It would be unfair to strike Staff's indefiniteness argument based on Copan's specific understanding of 'perpendicularly' because it was not disclosed during the Markman proceedings, while allowing Copan to assert a specific understanding that was not disclosed during Markman proceedings." Id. at 5.

This decision illustrates how the Staff can serve as an additional guard against parties' shifting of their theories and claim construction positions as a case progresses, underscoring the importance of developing claim construction strategies early.