ITC Monthly Wrap-Up: July 2023

July saw six complainants file four Section 337 complaints with the International Trade Commission:

1. JUUL Labs, Inc. and VMR Products, LLC, filed a complaint against Altria Group, Inc., Altria Group Distribution Company, Altria Client Services, LLC, NJOY, LLC, and NJOY Holdings Incorporated in Vaporizer Devices, Cartridges Used Therewith, and Components Thereof, Dkt. No. 3685;
2. Hoshizaki America, Inc., filed a complaint against Blue Air FSE, LLC, and Bluenix Co., Ltd., in Icemaking Machines and Components Thereof, Dkt. No. 3687;
3. Vicor Corporation filed a complaint against numerous respondents in Power Converter Modules and Computing Systems Containing the Same, Dkt. No. 3688; and
4. Signify Holding BV and Signify North America Corporation filed a complaint against Current Lighting Solutions, LLC (d/b/a GE Current) in LED Lighting Devices, LED Power Supplies, Components Thereof, and Products Containing Same, Dkt. No. 3689.

The Commission also instituted two investigations this July:

1. Electronic Devices and Semiconductor Devices Having Wireless Communication Capabilities and Components Thereof, Inv. No. 337-TA-1367 (assigned to Administrative Law Judge Elliot); and
2. Certain Vaporizer Devices, Cartridges Used Therewith, and Components Thereof, Inv. No. 337-TA-1368 (assigned to ALJ Johnson Hynes);

This month’s ITC Wrap-Up reviews a recent Commission order that clarifies the extent to which a complainant must disclose its agreements with others to withdraw from an investigation at the Commission. Certain Semiconductor Devices Having Layered Dummy Fill, Electronic Devices, and Components Thereof, Inv. No. 337-TA-1342, Comm’n Ord. Remanding Investigation (July 11, 2023). In October 2022, Bell Semiconductor asserted one patent against respondents that import, and/or sell after importing, semiconductor devices, i.e., Omnivision and Arlo, respectively. The investigation was assigned to Chief Judge Cheney.

Complainants may move at any time, prior to an initial determination, to terminate an investigation for good cause, including by withdrawing their complaint. 19 C.F.R. § 210.21(a)(1). To terminate an investigation by withdrawal, complainants must file a copy of “any agreements concerning the subject matter of the investigation” or otherwise state that no such agreements exist. 19 C.F.R. § 210.21(a)(1).

In the 1342 investigation, Bell Semiconductor sought to withdraw its allegations and accordingly moved to terminate the investigation. Bell Semiconductor noted in its motion that it had an agreement with a non-party, Siemens Industry Software, that “fully resolve[d]” Bell’s infringement allegations in the investigation. Although the respondents supported the motion, they argued that the Chief ALJ should require Bell to file a copy of its agreement with Siemens. However, the Chief ALJ granted Bell’s motion as an initial determination, Ord. No. 23, terminating the investigation, interpreting 19 C.F.R. § 210.21(a)(1) as requiring only agreements between parties to the investigation at hand. Ord. No. 23 at 2-3.

Despite no party filing a petition for review, the Commission determined sua sponte to vacate the initial determination and remand for further proceedings. On review, the Commission found that the ALJ erred in interpretating Commission Rule 210.21(a)(1). Comm’n Ord Remanding Investigation at 3-4. Instead, the Commission interpreted the language requiring filing of “any agreements concerning the subject matter of the investigation” to extend beyond the parties to the investigation. Citing its 2007 proposed rulemaking, the Commission restated its public policy interest in “reviewing settlement agreements that form the basis for termination” and that the “public interest should not be dependent upon a party’s choice to designate the termination as one based on withdrawal of the complaint or as one based on a settlement agreement.” Id. at 3 (quoting 72 Fed. Reg. 72280, 72286 (Dec. 20, 2007)). Accordingly, the Commission found error in terminating the investigation in the face of Bell’s failure to file a copy of its third-party agreement with Siemens.

This order highlights an important issue that arises from time to time when agreements with third parties (e.g., RPX) resolve disputes involving respondents who are not a party to the agreement.