Knowledge and Control of Importation Can Lead to § 337 Violation

By on March 12, 2020
Posted In Patents

The US Court of Appeals for the Federal Circuit affirmed a US International Trade Commission (ITC) decision that a respondent qualified as an importer under § 337 despite not being the actual importer of record, based on the respondent’s involvement in the importation. Comcast Corp. et al. v. ITC, Case Nos. 18-1450, -1653, -1667 (Fed. Cir. Mar. 2, 2020) (Newman, J).

In 2016, Rovi filed a complaint with the ITC against Comcast and its suppliers based on infringement allegations of seven patents related to digital video guide technologies. Rovi dropped one asserted patent prior to trial, and the ITC’s administrative law judge ultimately found a § 337 violation based on two of the remaining patents. In late 2017, the ITC commissioners affirmed the administrative law judge’s determination and entered an exclusion order against Comcast.

Comcast appealed. After Comcast’s motion for expedited briefing was rejected, the parties spent eight months attempting to arrange an oral argument without scheduling conflicts. Meanwhile, Rovi filed a second ITC complaint against Comcast in early 2018, asserting eight additional patents, and a third ITC complaint against Comcast in 2019, asserting six more patents. The Federal Circuit eventually issued its opinion almost two years after the ITC issued its exclusion order and after both of the patents had expired.

The Federal Circuit’s opinion first addressed Comcast’s motion to dismiss the appeal for mootness based on the patent expirations. The Court agreed with Rovi that there were collateral consequences because the same issues would likely arise in the two subsequent ITC actions.

The Court next addressed Comcast’s attempt to distinguish the Court’s 2015 en banc Suprema v. Int’l Trade Comm’n decision and non-precedential remand by arguing that its allegedly inducing conduct all took place after importation and was unrelated to the importation of the accused articles. The Court largely avoided this issue by finding no error in the ITC’s alternative holding that Comcast had also carried out inducing conduct prior to and during importation.

Finally, the Court rejected Comcast’s argument that it was not the “importer” as the term is used in § 337 because it was not literally the importer of record during the product entry at customs. According to the Court, Comcast’s knowledge and control over the importation made it sufficiently involved in the importation to satisfy the importer requirement of § 337.

Alexander P. Ott
Alexander (Alex) P. Ott focuses his practice on litigating complex patent disputes and representing clients in a variety of high technology industries, including the semiconductor, consumer electronics, telecommunications, pharmaceutical and software industries. He is a registered patent attorney with significant experience in patent prosecution matters. Alex has represented clients in federal district courts, in Section 337 investigations before the US International Trade Commission (ITC), in inter partes review (IPR) and post-grant review (PGR) proceedings at the US Patent and Trademark Office, and before the US Court of Appeals for the Federal Circuit. Read Alexander (Alex) P. Ott's full bio.