By Eric Schweibenz
On January 18, 2011, the International Trade Commission issued a notice determining to temporarily rescind its exclusion order and cease and desist order entered on November 24, 2009 against Respondents AIA Engineering Limited and Vega Industries Ltd. (collectively “AIA”) in Certain Composite Wear Components and Products Containing Same (Inv. No. 337-TA-644).

By way of background, the Commission instituted this investigation on April 25, 2008, in response to a complaint filed by Magotteaux International S/A and Magotteaux Inc. (collectively, “Magotteaux”).  The complaint alleged a violation of Section 337 by respondents Fonderie Acciaierie Rioale S.P.A. (“FAR”) and AIA based on alleged infringement of U.S. Patent No. RE39,998 (the ‘998 patent).  FAR was terminated from the investigation on the basis of a settlement agreement, leaving AIA as the remaining respondent.

AIA responded to the complaint, but thereafter reduced its participation in discovery.  On March 19, 2009, ALJ Essex issued Order No. 23, granting several motions to compel and ordering AIA to respond to written discovery and to produce fact and expert witnesses for deposition.  AIA failed to comply with the order and continued to refuse to participate in discovery.  On May 8, 2009, ALJ Essex issued an Initial Determination (“ID”) finding AIA in default pursuant to Commission Rules 210.16(a)(2) and 210.17.  The Commission determined not to review the ID, and indicated that, in addition to finding a violation pursuant to Commission Rule 210.17, the Commission would presume the facts alleged in the Complaint to be true with respect to AIA.  The Commission then issued a limited exclusion order, a cease and desist order, and terminated the investigation.  See our July 8, 2009, July 21, 2009, and November 30, 2009, and June 10, 2010 posts for more details.

On September 3, 2010, the ‘998 patent was declared invalid by the U.S. District Court for the Middle District of Tennessee in a declaratory judgment action filed by AIA against Magotteaux.  On September 28, 2010, Magotteaux noticed an appeal of the district court’s decision to the U.S. Court of Appeals for the Federal Circuit.  On October 5, 2010, AIA filed a petition under 19 U.S.C. § 1337(k) and 19 C.F.R. § 210.76 asking the ITC to rescind its November 24, 2009 exclusion order and cease and desist order directed to AIA in light of the district court’s holding invalidating the ‘998 patent.  Magotteaux opposed the petition and requested that the ITC hold a public hearing.

According to the January 18 notice, the ITC “determined to temporarily rescind its limited exclusion order and cease and desist order on November 24, 2009 against AIA pending resolution on appeal of the district court’s decision by the Federal Circuit.”  The ITC further determined that its “remedial orders will become permanently rescinded if the Federal Circuit affirms the district court’s judgment with respect to claims 12-13 and 16-21 of the ‘998 patent, i.e., the claims covered by the Commission’s remedial orders, and will be reinstated if the Federal Circuit reverses the district court’s judgment with respect to those claims.”  Lastly, the ITC denied Magotteaux’s request for a public hearing.