Blog May 19, 2023
Legal Alert: Amgen v. Sanofi
In December, six complainants filed three Section 337 complaints with the International Trade Commission (ITC):
The Commission did not institute any new investigations this month.
This month’s ITC wrap-up reviews a recent ALJ decision regarding complainant’s Motion to Amend the Complaint and Notice of Investigation in the 1318 Investigation. Certain Graphics Systems, Components Thereof, and Digital Televisions Containing the Same, Inv. No. 337-TA-1318, Order No. 45: Granting Complainants’ Motion to Amend the Complaint and Notice of Investigation (Dec. 7, 2022).
In particular, complainants Advanced Micro Devices, Inc., and ATI Technologies ULC (together “AMD”) filed a complainant against numerous respondents asserting five patents in May of 2022. In October, ALJ Elliot issued a claim construction order finding certain dependent claims of one of the asserted patents to be indefinite because the dependent claims recited “one or more disjoint subsets,” whereas the claims from which they depended recited “two or more disjoint subsets.” AMD then sought correction of those claims from the USPTO based on what AMD stated was clerical or typographical error, changing “one” in the dependent claims to “two” (as recited in the independent claim). On November 22, 2022, the USPTO issued a certificate of correction and altered the language in the relevant claims. On November 25, 2022, AMD moved for leave to amend the Complaint and Notice of Investigation based on the certificate, seeking to assert the corrected dependent claims.
The respondents opposed, alleging that no good cause existed because (1) AMD should have sought the certificate of correction sooner, and no later than when the respondents indicated their belief that the dependent claims were indefinite; (2) the amendment would cause prejudice to the respondents and the ALJ because they have spent time and resources on the dependent claims as originally issued; and (3) there would be no prejudice to AMD because they could always file a new complaint based on the corrected claims.
ALJ Elliot granted the motion. Commission Rule 210.14 states, in relevant part:
After an investigation has been instituted, the complaint or notice of investigation may be amended only by leave of the Commission for good cause shown and upon such conditions as are necessary to avoid prejudicing the public interest and the rights of the parties to the investigation. A motion for amendment must be made to the presiding administrative law judge.
Regarding the existence of good cause, ALJ Elliot acknowledged that AMD could have moved to correct the patent claims much earlier. However, because the certificate would be considered part of the original patent at all times after its issue date, any invalidity arising from the clerical error would only affect causes arising before the correction. Because Section 337 offers only prospective relief on future activities, any remedial order would relate to activities occurring after the correction, and “there is no point in evaluating infringement or invalidity of the 628 patent as though it still reads ‘one or more disjoint subsets.’”. Id. at 4. Thus, according to ALJ Elliot, “while AMD may have been dilatory in seeking it, there is good—almost necessary—cause behind accepting the correction.” Id. at 5.
Regarding the prejudice to the parties and the public, ALJ Elliot held that no such prejudice had been shown, at least because the respondents became aware of AMD’s position as to the proper interpretation of the claims through the claim construction process and failed to identify how they relied on the original phrasing such that correcting it now would be prejudicial. In addition, ALJ Elliot noted that denying the motion would only lead to institution of another investigation solely for the newly corrected claims, which he held would be grossly inefficient and significantly prejudicial to public resources.
This decision highlights the impact of a certificate of correction at the ITC. In particular, it demonstrates the ease with which complainants may amend their complaints to assert corrected claims that issued after the filing of the complaint, in view of the prospective relief at issue in ITC investigations.
 Respondents include Realtek Semiconductor Corp., TCL Industries Holdings Co., Ltd.; TCL Industries Holdings (H.K.) Limited; TCL Electronics Holdings Limited f/k/a TCL Multimedia Technology Holdings, Ltd.; TCL Technology Group Corporation; TTE Corporation; TTE Technology, Inc.; TCL Holdings (BVI) Limited; TCL King Electrical Appliances (Huizhou) Co., Ltd.; Shenzhen TCL New Technologies Co., Ltd.; TCL MOKA International Limited; TCL Smart Device (Vietnam) Co., Ltd.; Manufacturas Avanzadas SA de CV; TCL Electronics Mexico, S de RL de CV; and TCL Overseas Marketing Ltd. (altogether, “Respondents”).
The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.
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