By Barry Herman
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Mar
19
Patent owners often simultaneously file suits in both the ITC and district court on the same patent(s).  If an ITC investigation is ongoing, an accused infringer can request, as a matter of right, a stay of the parallel district court action under 28 U.S.C. § 1659.  Even if the accused infringer does not request a stay, the ITC investigation typically will conclude before (and sometimes well before) a trial in district court.  After the ITC issues a final determination on infringement, validity, and/or enforceability of a U.S. patent, one might think this ruling would be binding on a district court.  This is not the case, however, because the doctrine of res judicata does not apply to ITC determinations concerning patents. 

The doctrine of res judicata, which is also referred to as claim preclusion, means “the thing has been decided.”  The doctrine is rooted in the principle that once a competent court has rendered its final judgment on a matter, that judgment has a conclusive effect upon subsequent litigation between the parties regarding the same cause of action.  However the Federal Circuit has held that “ITC findings neither purport to be, nor can they be, regarded as binding interpretations of the U.S. patent laws in particular factual contexts.  Therefore, it seems clear that any disposition of a Commission action by a federal court should not have a res judicata or collateral estoppel effect in cases before such courts.”  Tandon Corp. v. U.S.I.T.C., 831 F.2d 1017, 1018 (Fed. Cir. 1987).  The reason often cited for lack of a preclusive effect for ITC holdings is that Congress intended the ITC to be primarily responsible for administrating the trade laws and not the patent laws which is specifically referenced in the legislative history of Section 337.  Texas Instruments v. Cypress Semiconductor Corp., 90 F.3d 1558 (Fed. Cir. 1996). 


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By Eric Schweibenz
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Mar
18
On March 16, 2009, ALJ Theodore R. Essex issued a notice regarding his Initial Determination in the matter of Certain Computer Products, Computer Components and Products Containing Same (Inv. No. 337-TA-628). 

According to the notice, ALJ Essex held that no violation of section 337 has occurred in the importation into the U.S., the sale for importation, or the sale within the U.S. after importation of certain computer products, computer components, or products containing same by reason of infringement of U.S. Patent Nos. 5,008,829, 5,249,741, and 5,371,852.  The notice further indicates that the patents-in-suit are valid and that Complainant International Business Machines (IBM) satisfies the domestic industry requirement of section 337 for each of the patents-in-suit.


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By Eric Schweibenz
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Mar
17
As indicated in our March 3 post, on February 26, 2009, the U.S. International Trade Commission voted to institute an investigation of certain non-shellfish derived glucosamine and products containing same.  Certain Non-Shellfish Derived Glucosamine and Products Containing Same (337-TA-668).

On March 11, ALJ Rogers issued Order No. 4 setting the procedural schedule for the investigation. 


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By Eric Schweibenz
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Mar
17
As indicated in our March 6 post, on March 5, 2009, the U.S. International Trade Commission voted to institute an investigation of certain optoelectronic devices, components thereof, and products containing the same.  Certain Optoelectronic Devices, Components Thereof, And Products Containing the Same (337-TA-669).

Since our March 6 post, ALJ Luckern issued a notice indicating that ALJ Theodore R. Essex will handle this investigation.


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By Eric Schweibenz
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Mar
16
According to an excerpt from the March 13, 2009 Federal Register, the U.S. International Trade Commission issued a notice indicating that its Electronic Document Information System (EDIS) will be unavailable for use from 6:00 p.m. on Thursday, March 26, 2009 until 6:00 a.m. on Monday, March 30, 2009.

According to the notice, while EDIS is shut down the ITC plans to roll out EDIS3, a new and improved EDIS system with better technical performance.


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