By Eric Schweibenz
On February 8, 2013, ALJ Thomas B. Pender issued the public version (dated January 8, 2013) of the Initial Determination (“ID”) finding no violation of Section 337 in Certain Kinesiotherapy Devices and Components Thereof (Inv. No. 337-TA-823).

By way of background, the investigation is based on a December 2, 2011 complaint filed by Standard Innovation Corporation and Standard Innovation (US) Corp. (collectively, “Standard Innovation”) alleging violation of Section 337 in the importation into the U.S. and sale of certain kinesiotherapy devices and components thereof that infringe one or more claims of U.S. Patent Nos. 7,931,605 (the ‘605 patent) and D605,779.  See our December 6, 2011 post for more details on Standard Innovation’s complaint.

Claim Construction

According to the ID, the parties disputed whether the phrase “dimensioned to be worn by a female on the body during intercourse” in the preamble should be considered a limitation, and if so, how it should be construed.  ALJ Pender determined that the preamble limits the claimed invention, relying on the context provided by the preamble and the fact that the inventors relied on the preamble to distinguish the prior art during prosecution of the ‘605 patent.  Since the preamble was found to be limiting, the ALJ also had to construe this phrase.  As such, agreeing with Standard Innovation and the Commission Investigative Staff (“OUII”), ALJ Pender determined that the phrase “dimensioned to be worn by a female on the body during intercourse” should be construed as “dimensioned to be worn by a female during coitus.”

The parties also disputed the construction of the phrase “generally tear drop shaped.”  ALJ Pender determined that this phrase should simply be given its plain and ordinary meaning without limitation, dismissing Respondents’ argument that Standard Innovation had disclaimed bulbous, hook, or round shapes.


According to the ID, Standard Innovation “devotes no more than one page of its post hearing brief in support of its [infringement] allegations” (emphasis in original).  ALJ Pender determined that the “non-specific string citation to the record” failed to provide factual support or any explanation of how these citations relate to any of the asserted claims.  As such, ALJ Pender determined that Standard Innovation “effectively waived its allegations of direct infringement.”  However, OUII identified sufficient evidence in its briefing for the ALJ to determine that the Respondents infringed the ‘605 patent.  Respondents’ argued that their accused products do not meet the “generally tear drop” limitation as the products are bulbous, round, or hooked, but as ALJ Pender determined that these shapes were not disclaimed, this argument was not persuasive.


Respondents relied on three anticipatory references, but in each instance ALJ Pender determined that Respondents failed to meet their burden as Respondents only argued the limitations disputed by Standard Innovation.  Therefore, the ALJ concluded “Respondents’ failure to address all elements of [the independent claims] is fatal.”  Regardless, the ALJ analyzed the references independently, and still determined that each reference failed to teach at least one of the elements of the claimed invention.  Therefore, the ‘605 patent was determined not to be anticipated.

According to the ID, Respondents “devote a mere three pages” of their post-hearing brief in support of their obviousness position, and these “cursory assertions and conclusory arguments…fall far short of meeting the clear and convincing standard necessary to invalidate the ‘605 patent as obvious.”   ALJ Pender also determined that Respondents effectively waived their allegation that the dependent claims are obvious, as this issue was not addressed in their post-hearing briefing.

Domestic Industry

With respect to the technical prong of the domestic industry requirement, ALJ Pender stated that Standard Innovation “devoted one sentence in support of its assertion that [its] products practice the asserted patent,” (emphasis in original) and that this was insufficient to meet the burden of proof.  However, the ALJ was able to rely on the evidence set forth by OUII indicating how Standard Innovation’s products practice the ‘605 patent on an element by element basis. 

Regardless, ALJ Pender concluded that the economic prong of the domestic industry requirement was not met.  Specifically, Standard Innovation included substantial arguments regarding the economic prong that “far exceeded the scope of its pre-hearing brief” and were thus disregarded.  Only arguments presented in the pre-hearing brief were evaluated, and of those, activities conducted after the filing of the complaint were not considered.  Furthermore, Standard Innovation’s primary argument was that it purchased components for its products in the United States, although the products are assembled in China.  ALJ Pender determined this was insufficient, as Section 337(a)(3)(C) does not list “purchasing components” as an example, and Standard Innovation provided no evidence that the components were customized for their products.  As such, the ALJ determined that Standard Innovation had not proven that a domestic industry exists by a preponderance of the evidence, and no violation of Section 337 was found.

Remedy and Bond

ALJ Pender discussed his recommendations on remedy and bond in a separate opinion.  See our February 7, 2013 post for more details on this determination.