ITC Round-Up: Q1 2025

The first quarter of 2025 saw the International Trade Commission issue the following public orders addressing a wide variety of issues ranging from evaluation of significance for domestic industry to staying remedial orders pending inter partes review (IPR).

Photovoltaic Connectors and Components Thereof; Inv. No. 337-TA-1365 (February 4, 2025)

The Commission issued its opinion on February 4, 2025, finding no violation of Section 337 — the opposite result from the initial determination (ID). The patent-at-issue was U.S. Patent No. 11,689,153 related to solar panel array assembly equipment. The Commission construed the term “aperture” consistent with a proposal from the Office of Unfair Import Investigations (OUII), rejecting the construction of the ID. The Commission found that the prosecution of the ’153 patent’s parent application demonstrates the correctness of OUII’s proposed construction. The Commission then applied this revised “aperture” construction to conclude that the accused products and domestic industry do not practice the claims. Notably, the Commission reiterated its treatment of Patent Trial and Appeal Board (PTAB) constructions, stating “PTAB claim construction decisions are not binding on the Commission” but “they may be considered persuasive.”

Vaporizer Devices, Cartridges Used Therewith, and Components Thereof; Inv. No. 337-TA-1368 (February 19, 2025)

The Commission issued its opinion on February 19, 2025, affirming the ID’s finding that the NJOY respondents violated Section 337 by infringing four patents related to electronic nicotine delivery systems. Although affirmed, the Commission modified the reasoning of the ID with respect to the construction of certain material terms. Having established infringement of the patents-at-issue and the remaining statutory requirements for relief, the Commission determined that a limited exclusion order directed against the infringing products and cease and desist orders against the respondents was appropriate.

To reach this conclusion, the Commission considered, but rejected, NJOY’s request to stay the remedial orders pending issuance of a final written decision (FWD) from an IPR concerning U.S. Patent No. 10,130,123, one of the patents-at-issue. The anticipated FWD deadline is just shy of four months after the target date of the investigation. Yet NJOY urged the Commission to weigh the factors it has applied in circumstances where the FWD is expected before the target date. In the context of those factors, NJOY explained that the complainant would suffer minimal prejudice because of the relatively short time period between the target date and the FWD.

NJOY also argued that remedial orders predicated on the other patents would continue to apply to products also found to infringe the ’123 patents. As a practical matter, according to NJOY, the same set of products would be excluded.

The Commission, however, denied NJOY’s request. It noted that “NJOY abandoned its stay request by failing to raise the issue in its initial submission,” but nevertheless considered the merits of the request. The Commission recognized that the institution of an IPR is not a guarantee of invalidity, and an FWD is not a final or binding determination until the exhaustion of appeals and the Director publishes a certificate of cancellation.

Certain Liquid Transfer Devices with an Integral Vial Adapter; Inv. No. 337-TA-1362 (February 20, 2025)

The Commission issued its opinion on February 20, 2025, affirming a “Remand ID” finding a violation of Section 337 due to the respondent’s infringement of U.S. Patent No. 10,688,295 and finding that the patent was not invalid for insufficient written description. Broadly, the ’295 patent relates to a “liquid transfer device” used for mixing and administering medicated infusion liquid to a patient. At the outset of the investigation, the complainant also alleged infringement of three design patents and one registered trademark. The complainant withdrew those allegations over the course of the investigation leaving only claim 1 of the utility patent at issue. Notably, each respondent group — Summit, Advcare, and Dragon Heart Medical — represented themselves pro se.

The Commission affirmed the majority of the Remand ID, without comment, except to indicate it took no position on a few discrete statements of the Remand ID. The Remand ID explained that a patent applicant need not describe unclaimed features, and therefore rejected OUII’s argument that an improvement within the scope of the claims was not adequately supported by written description. Commissioner Kearns published a dissenting opinion about the written description issue that triggered the remand in the first instance. Specifically, Commissioner Kearns argued (consistent with OUII’s argument) that the Commission adopted a claim scope for infringement inconsistent with the claim scope of the written description. Dissent Op. at 17. Commissioner Kearns noted that while the transitional phrase “comprising” is open-ended, the specification must still supply adequate written description for a proposed construction. In this instance, although the complainant successfully argued that a claim element was not limited to three flow paths but was broad enough to encompass two flow paths, Commissioner Kearns concluded that the written description does not disclose any two-flow-path design, and thus the patent does not comply with Section 112 and is invalid for the same reasons as in Chiron Corp. v. Genentech, Inc., 363 F.3d 1247, 1255-58 (Fed. Cir. 2004).

Certain Power Converter Modules and Computing Systems Containing the Same, Inv. No. 337-TA-1370 (February 26, 2025)

The Commission issued its opinion on February 26, 2025, affirming the initial determination that the respondents violated Section 337 due to the infringement of U.S. Patent Nos. 9,166,481 and 9,516,761, while affirming no violation for U.S. Patent No. 10,199,950. The technology centered on power converter modules used in various computing environments spanning from data center servers, artificial intelligence systems, and central processing units.

At issue before the Commission was whether certain accused products practiced limitation [1g] of the ’481 patent. The limitation requires, “the timing of the timing control signals for one or more selected events may be set independently of other timing control signals and events”. The dispute centered on whether the mere capability of the device to perform the method step was an infringement act qualifying as an unfair trade practice. The Commission found that accused products were capable of practicing the limitation at least during manufacture in China but credited Respondent’s argument that the functionality was irreversibly disabled after manufacture. Relying on INVT SPE LLC v. ITC, 46 F.4th 1361 (Fed. Cir. 2022), the Commission held the products do not infringe because “at no time after completion of the manufacturing process are the Delta Accused Modules capable of satisfying limitation [1.g], including at the time of or after importation into the United States.” (ITC decisions regarding claim construction may not be binding in future civil actions.)

Regarding economic domestic industry, the Commission ratified the approach of comparing investments in the domestic industry products to overall domestic investments to evaluate the significance of the domestic industry product investments. The Commission cautioned, however, that a cogent analysis must “articulate why the proffered comparison was useful in determining quantitative significance” to the domestic industry product investments. Commissioner Kearns dissented from this portion of the opinion, explaining that such comparisons only reflect how important the domestic industry products are to the company and say nothing about the significance of the domestic investments compared to the foreign investments.

Certain Icemaking Machines and Components Thereof, Inv. No. 337-TA-1369 (February 27, 2025)

On February 27, 2025, the Commission affirmed the initial determination finding a violation of Section 337 due to infringement of two patents — U.S. Patent No. 10,113,785 (“the ’785 patent”) and U.S. Patent No. 10,458,692 (“the ’692 patent”). The technology related to components of ice making machines.

One dispute centered on whether the remedial orders should include an exception for warranty obligations. Although the Complainant argued Respondent waived the issue, the Commission explained that a Respondent could not effectuate a waiver of this issue because the Commission has an independent statutory duty to consider the effect of remedial orders on U.S. consumers. Op .at 15. On the merits, however, the Commission found no exception was required because the Respondent conceded that it could satisfy its warranty obligations by using unaccused, noninfringing products. Id. at 16. The Commission explained its standard orders do not preclude servicing of already imported and sold infringing products with non-infringing parts. Id.