Razor Scooter Trips Over Reissue Statute at the ITC

The U.S. International Trade Commission (“ITC”) recently terminated CERTAIN MOTORIZED SELF-BALANCING VEHICLES, Investigation No. 337-TA-1000, brought by Razor USA LLC against alleged infringers of a patent related to electric hoverboards, denying Razor any relief. In doing so, the ITC confirmed that an original patent is surrendered when a Reissue Patent issues, even if a pending Continuation Application from the Reissue Application includes the claims of the original patent.

The ITC instituted Investigation No. 337-TA-1000 in May 2016. On the same day the ITC instituted the investigation, the Complainant, Razor USA LLC, sought reissue of the asserted patent, U.S. Patent No. 8,738,278 (“the ’278 patent”), but subsequently requested that the PTO suspend examination of the reissue application during the investigation, which it did. The Investigation proceeded to a hearing and the ITC found no violation of section 337. The ITC found that none of the then-participating respondents’ accused products infringed the asserted claims and that the technical prong of the domestic industry requirement was not satisfied. Razor then appealed that decision to the Court of Appeals for the Federal Circuit.

While the decision was on appeal, Razor asked the PTO to resume the reissue proceeding. In July 2018, before the Federal Circuit issued a decision on the appeal, the PTO issued a Notice of Allowance for U.S. Patent No. RE46,964 (“the RE’964 patent”), in which all original claims were amended or cancelled. The ITC then moved to dismiss the appeal as moot under 35 U.S.C. § 252, arguing that the original claims were surrendered once the reissue patent issued. The ITC also argued that, because the reissue claims are not “substantially identical” to the original claims, any existing causes of action are extinguished by operation of the statute.

In an attempt to avoid an argument that it surrendered the original patent, Razor filed two continuation applications of the reissue application, which contained the original claims from the ‘278 patent, prior to the issuance of the RE’964 patent. Razor argued in opposition to the ITC’s Motion that the existence of these pending continuation applications meant that the original claims had not been surrendered, thus avoiding mootness. Without considering the parties’ arguments, the Federal Circuit remanded the case to the ITC 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.”

After considering briefing from the parties, the ITC terminated the investigation as moot because no enforceable claims were left in the investigation. The ITC held that it cannot continue under the original claims, which have been surrendered, or the reissue claims, which are not substantially identical to the original claims. Moreover, Razor could not amend the complaint to include the reissue claims because those claims are only effective as of their issue date, which was after conclusion of the underlying investigation. In rendering its decision, the ITC rejected Razor’s argument – that the original claims of the ‘278 patent were not surrendered (and thus still enforceable) because there remained pending a continuation reissue application – as being inconsistent with the reissue statute.

Takeaway: Patent owners planning to use a reissue application to correct a patent asserted in litigation need to understand the PTO procedures and the legal consequences of a reissue application. The timing of both the filing of the application and the issuance of the reissue patent can have a significant impact on a patent owner’s legal rights. For more information on reissue and reexamination procedures at the PTO, see the USPTO’s April 2019 Notice Regarding Options for Amendments here.

Growing Tension Between the ITC and the PTAB

One of the most common responses to being sued for patent infringement is a petition to the USPTO’s Patent Trial and Appeal Board (PTAB) challenging the validity of the patent. To avoid duplication of effort, either the Board or the tribunal can defer to the other. According to a recent decision, the U.S. International Trade Commission (ITC) will not defer to the PTAB in such situations. In Certain Automated Storage and Retrieval Systems, Robots, and Components thereof (337-TA-1228), Judge Lord emphatically confirmed that in order to conclude its investigations “at the earliest practicable time,” the ITC should not stay a Section 337 investigation in view of an Inter Partes Review (“IPR”) proceeding at the PTAB, even where this might deprive an accused infringer of the opportunity to have the PTAB review an asserted patent prior to the issuance of an Exclusion Order. Continue Reading

Restoring Balance: Increased Discretionary Authority of the PTAB Favors Patentees

US Patent and Trademark OfficeThe Patent Trial and Appeal Board (PTAB) is an administrative law body of the US Patent and Trademark Office (USTPO) that determines disputes over the issuance, reissuance, and cancellation of patent claims. The PTAB has become well known to patent litigants since the implementation in 2012 of new proceedings, including Inter Partes Review (IPR), for challenging the patentability of issued patent claims.

The Design and Use of IPRs

IPRs were designed to be an alternative to litigation and are initiated with an IPR petition, which must be filed with the PTAB within one year of service of a corresponding infringement action. A petition outlines the grounds for the alleged unpatentability of specified claims in the patent. A panel of three administrative law judges evaluates the petition and any preliminary response of the patent owner, and then decides, within six months of the petition’s filing, whether to institute an IPR of the challenged claims. If an IPR is instituted, the petitioner and the patent owner are allowed to submit additional arguments and evidence for consideration. Unless there is good cause for an extension of time, a final written decision will then issue within twelve months of institution. Continue Reading

Discretionary Denial of Institution of an IPR Disfavored Where Litigation Already Stayed or Petitioner Stipulates to Estoppel

In 2020, the PTAB increasingly denied otherwise meritorious petitions for review under its discretionary authority, as my partner Steve Auvil and I recently discussed. Many such denials were made in view of co-pending litigation under the so-called Fintiv factors adopted last May. The reaction to the PTAB’s approach was vocal and divided, and the USPTO received a record number of responses to its request for comments on the subject, but no changes have been made. Rather, the PTAB has designated as precedential two decisions where review was instituted despite co-pending litigation — confirming more precisely how its decisions will depend on the actions of both courts and litigants. Continue Reading

A Non-Traditional Path to Achievement: Words from Our New Partner Chris Adams

We are delighted to announce the promotion of our IP & Technology colleague Christopher (Chris) Adams to the partnership of Squire Patton. Chris was educated as a scientist and then worked in the IT industry for 10 years before becoming a lawyer. His experience as an intellectual property attorney over the last 12 years runs the gamut from patent prosecution to IP licensing, diligence and enforcement, enabling him to provide counsel on a “thicket” of IP issues for technology and other companies. Chris recently spoke with Law.com about his path to partnership, emphasizing that “Partnership Is Not Merely a Promotion” but also a new job, as well as an important step in his journey. The Q&A with Chris is available here.

Influencer Held in Breach of ASA Code in £8,000 Prize Giveaway

Molly-Mae Hague, 21-year old reality TV star from Love Island show, has been found in serious breach of CAP Code with an £8,000 giveaway, which the regulator ruled was not administered fairly.

In our previous blog, we discussed the ruling of the Advertising Standards Authority (ASA) in relation to influencers and the use of social media filters. This recent ASA ruling yet again brings the role of influencers on social media under scrutiny, this time with a focus on the rules around prize draws, which are subject to the ASA rules and advice on competitions and advertising more generally. Continue Reading

Move Over Marshall, There’s a New Sheriff in Town—The Rise of Waco and the Western District of Texas

Since the mid-2000s, mention Marshall, Tyler, Sherman, Beaumont or Texarkana to an experienced patent litigator and you would get knowing nods about this string of small Texas towns, tips on their favorite BBQ or Tex-Mex restaurants, and war stories about the big patent wars fought there. The Eastern District of Texas, along with the District of Delaware and the Northern and Central Districts of California, rose to prominence as the primary battlegrounds for major technology companies and their non-practicing distant cousins (“NPEs”) to determine the scope and monetary value of their innovations.

Given the Supreme Court’s restatement of venue requirements in TC Heartland, Waco is not where you would expect the new center of US patent litigation to arise. Deep in the heart of the Texas Bible Belt, Waco lacks the abundance of technology companies commonly found in its District neighbors to the south, such as Austin and San Antonio. Even with Austin’s prominence as a hi-tech hub, the Western District had only 2.5% of the patent cases filed nationwide in 2018. Continue Reading

Beauty and the Little Pig: French Judges Find Jeff Koons Guilty of Copyright Infringement Once Again

Copyright symbolThe Paris Court of Appeal confirmed a previous decision that found Jeff Koons guilty of copyright infringement for one of his “Banality” sculptures. The Paris Court of Appeal even increased the amount of damages and costs that were initially awarded in the first instance. Beyond the fact that, fortunately, it is quite rare that a famous artist is found guilty of plagiarism, this case is also interesting because Jeff Koons used more or less every defense in the (French) book.

At the end of 2014 and beginning of 2015, the Pompidou Modern Art Museum organized a retrospective of the work of Jeff Koons, which attracted thousands of visitors but gave rise to several lawsuits.

On March 9, 2017, the Paris District Court found that for one of his Banality sculptures, Jeff Koons had reproduced the original features of a French photograph created by Jean François Bauret, which had “saved him creative work.” Continue Reading

The Rise of the “Deepfake” Demands Urgent Legal Reform in the UK

The phenomenon of ‘fake news’ and spread of misinformation is not a new one, but advancements in technology, in particular ‘deepfakes’, have highlighted the seriousness of the threat in a way that has not happened before. Deepfakes have evolved significantly in recent years and the tell-tale signs (odd hand or mouth movements or odd pronunciation for example) that once gave the technology away are becoming harder to detect. Further, deepfakes are now extremely easy to create. The time is now to introduce regulation in this area in order to prevent negative uses of the technology and create an environment where positive use cases emerge. Continue Reading

All Rise! The Kathleen M. O’Malley Inn Of Court Is Now In Session

Squire Patton’s own Steve Auvil has been elected president of the newly-created Kathleen M. O’Malley Inn of Court. The Inn was chartered in Northeast Ohio to promote civility, ethics, professionalism and mentorship within the local IP bar. It is named after the Honorable Kathleen M. O’Malley, who started her judicial career as a judge on the United States District Court for the Northern District of Ohio and now serves as a Circuit Judge on the United States Court of Appeals for the Federal Circuit.

The Honorable James S. Gwin of the United States District Court for the Northern District of Ohio will serve as Counselor for the Inn, alongside esteemed attorneys Malisheia Douglas (Treasurer) and Deborah Wilcox (Secretary) in the inaugural slate of officers. In the coming months, the founding members of the Inn will finalize the roster and committee assignments, and assign pupilage groups. The first Inn meeting will be held in September.

The American Inns of Court is an association of lawyers, judges, and other legal professionals from all levels and backgrounds who share a passion for professional excellence. Its purpose is to build and strengthen professional relationships, discuss fundamental concerns about professionalism and pressing legal issues of the day, share experiences and advice, and advance the highest levels of integrity, ethics, and civility.

The American Inns of Court concept was the product of a discussion in the late 1970s among the United States’ members of the Anglo-American Exchange of Lawyers and Judges, including Chief Justice of the United States Warren E. Burger and Judge J. Clifford Wallace of the U.S. Court of Appeals for the Ninth Circuit. The first American Inn of Court was founded February 2, 1980. Today there are nearly 400 chartered American Inns of Court in 48 states, the District of Columbia, Guam, and Tokyo.

The Kathleen M. O’Malley Inn of Court is part of the Linn Inn Alliance. This alliance was founded by the Honorable Richard Linn, U.S. Court of Appeals for the Federal Circuit in 2008 to unite the then six existing intellectual property law focused American Inns of Court. Today it serves as a vehicle for the sharing of meeting and program information among all of the members of the now 28 intellectual property law American Inns of Court around the country and in Japan.

Steve Auvil leads Squire’s Intellectual Property & Technology Practice Group’s litigation practice in the United States.