By Elissa Sanford
On February 8, 2021, the ITC issued the public version of its opinion in Certain Motorized Self-Balancing Vehicles (Inv. No. 337-TA-1000). According to the opinion, the Commission determined to terminate the investigation as moot in light of reissue of the asserted patent by the PTO.

By way of background, the Commission instituted this investigation on May 26, 2016 based on a complaint filed by Razor USA LLC of Cerritos, California, and Inventist, Inc. and Shane Chen, both of Camas, Washington (collectively, “Razor”) alleging violations of section 337 by reason of infringement of claims 1-9 of U.S. Patent No. 8,738,278 (“the ’278 patent”). The Commission’s Notice of Investigation named 28 respondents, nine of which remained active in this investigation. On the same day the Commission instituted this investigation, Razor sought reissue of the ’278 patent.

On May 26, 2017, Chief ALJ Charles E. Bullock issued a final initial determination (“ID”) finding no violation of section 337 because none of the active respondents’ accused products were found to infringe remaining asserted claims 1-3 and 5-8 of the ’278 patent. Upon reviewing the ID, on July 28, 2017, the Commission issued its final determination finding no violation of section 337 and terminating the investigation. During Razor’s appeal the to the Federal Circuit, the PTO issued a notice of allowance for Razor’s reissue application. In light of the notice of allowance, the Commission moved to dismiss the Federal Circuit appeal as moot under 35 U.S.C. § 252, asserting that (1) once the reissue patent issued, the original claims of the ’278 patent would be surrendered, and (2) the reissue claims were not substantially identical to the original claims, and thus any existing causes of action would be extinguished by operation of the statute.

Razor filed continuation reissue applications with the PTO on May 22, 2018 and June 15, 2018, and argued to the Federal Circuit that the existence of pending continuation applications meant that the original claims had not been surrendered and therefore the issue of mootness was avoided. On October 16, 2018, the Federal Circuit issued an order and mandate in Razor USA LLC v. ITC (No. 2017-2591), remanding the investigation to the Commission to determine “whether post-investigation events have rendered the case moot or whether the case may continue either on the original patent claims or reissued claims and to conduct any additional proceedings as necessary.” On September 19, 2019, the Commission issued an order requesting the parties to provide written responses regarding the effect of the reissued patent (“the RE’964 patent”).

The main issue on review was whether the PTO’s issuance of the RE’964 patent resulted in the surrender of any of the original asserted claims of the ’278 patent and, if so, whether any of the reissue claims were substantially identical to the corresponding surrendered original claims. Specifically, the Commission was presented with the issue of what, if any, original claims are surrendered when a reissue patent is issued and there is also a continuation reissue application pending at the time of issue of the reissue patent. The analysis turned on the proper interpretation of the reissue statutes, 35 U.S.C. §§ 251 and 252, which require that surrender of the original claims take effect when the reissue patent is issued. The Commission determined that when there is only one reissue application and that application results in the issuance of a reissue patent, all claims of the original patent are surrendered on the date the reissue patent issues, relying on Seattle Box Co., Inc. v Indus. Crating & Packing, Inc., 731 F.2d 818 (Fed. Cir. 1984). The Commission found that this principle does not change in situations where multiple reissue applications are involved. Although the Commission determined that partial surrender could apply in this case, the reissue claims could only be enforced as of the date of the original investigation if they were substantially identical to the original claims and, if they are not, then they could only be enforced from the date of issue of the reissue patent.

The Commission ultimately determined that all original asserted claims of the ‘278 patent were surrendered and none of the reissued claims of the RE’964 patent were substantially identical to the original claims. The Commission also denied Razor’s request for leave to amend its complaint, noting that Razor could not have amended its complaint to add the claims of the reissue patent until the patent issued in July 2018, which was approximately one year after the Commission’s final determination. Because the reissued claims are not substantially identical to the original claims, they are only enforceable from their date of issuance and cannot be simply substituted for the original claims. The factual record closed before the reissue patent issued, meaning discovery would have to be reopened, and the Commission concluded that good cause was not shown in order to allow the amendment to the complaint. Therefore, the Commission terminated the investigation for mootness.