Monthly Archives: February 2014

IPAB strengthening the Principles of Natural Justice

This article relates to a judgment of Intellectual Property Appellate Board (hereinafter IPAB) dated 20th January 2014 in the case “Abraxis BioScience LLC USA Vs Union of India” for a patent application no. 2899/DELNP/2005. The said patent application was rejected by Indian patent office. Thus being aggrieved by the rejection of the patent application by Indian patent office an appeal was filed by the applicant to IPAB. The copy of the decision made by IPAB can be accessed here.

Background                                                                                               Abraxis BioScience, a global biopharmaceutical company, acquired by Celgene Corporation, USA (hereinafter Applicant), filed a patent application on December 09th 2002 in USA and the corresponding application was  filed in India through PCT on June 29th 2005 vide  application no. 2899/DELNP/2005 (“composition and method for delivery of pharmacological agents”).   A pre grant opposition was filed for the same application by NATCO Pharma Ltd on Sept 2008. During examination of the patent application, the Indian Patent office raised certain objections for the said patent application on July 24th 2009. But as alleged by the appellant, no opportunity has been given for hearing as per section 14 and 15 of the Act in order to clear the objections raised by the Indian patent office for the reason that appellant has not submitted reply to the first examination report within the prescribed period. Even the appellant was deprived of opportunity for filing an appeal against the order passed as per provision u/s 14 and 15 of the Act. And further Indian patent office without following the mandatory requirement of section 14 and 15 of the Act, proceeded with the pre grant opposition as filed by Natco Pharma. Further, in the proceedings of pre grant opposition, the Indian patent office suo-moto raised one more ground of opposition regarding insufficiency as per section 25 (i) (g) of the Act which was neither pleaded nor argued by the opponent. Thus being aggrieved by rejection, the applicant preferred an appeal in IPAB for challenging the rejection of said patent application mainly on the ground of violation of natural justice principles. Considering the facts and circumstances of the case and weighing the evidence on record, IPAB set aside the order of patent office and remanded the matter for fresh consideration and also directed that the procedure be completed within three months from the date of the IPAB order.

Arguments advanced by the Appellant                                                          It was argued by the counsel for the appellant that the impugned order of patent office suffers from gross violation of principles of natural justice. The counsel also submitted that the appellant has been deprived of an opportunity of hearing as per provision under Section 14 of the Indian patent Act in spite of making specific request for the reason that the appellant has not submitted their reply to the First Examination Report before 07.01.2009. However said finding is incorrect as the appellant submitted its reply for the First Examination Report on 06.01.2009 itself.

It was further contended that without complying with the mandatory requirement under Section 14 of the Act, the Assistant Controller of Patents proceeded with the hearing on the pre-grant representation under Section 25 (1) of the Act. Furthermore, it was also contended that the learned Assistant Controller has suo-moto taken additional ground of opposition “insufficiency” under section 25(1)(g) of the Act which was neither pleaded by the opponent nor even argued during the hearing. Thus such findings on the basis of said additional ground cannot be justified being a serious error of law.

Arguments advanced by the Respondent                                                      The counsel for 4th respondent contended that there is no illegality or infirmity in the impugned order. It was further contended that as the appellant participated in the proceedings of hearing under Section 25 (1) of the Act, they could not contend any plea of depriving of an opportunity of hearing as per provision under Section 14 of the Act. Even it was argued by said respondent that they were not furnished with the copy of evidence filed through appellant and as such no opportunity was given to reply to that evidence.

Decision of IPAB                                                                                              The IPAB stated that there is clear evidence that the specific request made by the appellant for hearing under section 14 of the Act was denied and rejected by patent office. And also a response was filed to the first office action on 06.01.2009 itself with the request for hearing under Section 14 and 15 of the Act. But unfortunately, the said request was denied by the Assistant Controller of Patents stating that the said request was not made before 07.01.2009 and such finding is factually wrong as the said request was made by the appellant even on 06.01.2009 itself.

The IPAB also stated that an Assistant Controller is well aware about the affording opportunity to the appellant as well as to the opponent. Inspite of making the above said observations, the learned Assistant Controller has not given opportunity of hearing to the appellant as per the mandatory provision under section 14 of the Act.

Further, it was also stated that an order passed under Section 14 and 15 of the Act is an appealable order and the appellant has been deprived of their right to appeal against an adverse order if passed under Section 14 and 15 of the Act.

Further, IPAB also held that formulation of an additional ground of opposition on “insufficiency” under section 25(1)(g) of the Act by the assistant controller which was not at all raised or pleaded by the respondent, is unsustainable in law.

Thus in the light of averments, IPAB remanded the matter to the Assistant Controller of Patent for fresh consideration by affording opportunity to both sides, that is, applicant and opponent. As it is pointed out by the learned counsel for the 4th respondent that the affidavit of evidence filed by the appellant, the 4th respondent was not served with any copy of the affidavit of evidence as such learned Assistant Controller of Patent is directed to serve copy of the same to the 4th respondent and he will be given opportunity to reply the same. It is made clear that the learned Assistant Controller of Patent shall complete the hearing and dispose of the matter within a period of three months from the date of receipt of the order.

 It appears that the decision given by IPAB is well balanced in view of the fact that the patent office while dealing with application erred to follow the principles of natural justice by not giving an opportunity to the appellant of hearing in spite of the mandatory requirement.  Thus the IPAB ordered fresh consideration of application by patent office and also ordered in favoured of 4th respondent that they shall be given an opportunity to serve a copy of affidavit of evidence and to reply the same.

About the Author: Mr Sitanshu Singh, Patent Associate at Khurana and Khurana and can be reached at: Sitanshu@khuranaandkhurana.com

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A Tiny Antenna Threatens Broadcasters

Chet Kanojia’s Aereo have shaken up the Television Industry. A 43 Year old immigrant from India, who as an outsider saw a system that most took for granted and who knew he could build a better mousetrap, or at least a different one. Aereo, Mr. Kanojia’s two-year-old company, has figured out how to grab over-the-air television signals and stream them to subscribers on the Internet. It is an invention that could topple titans.

The man at the center of this movement is Mr. Kanojia, a self-described “back bencher” in his youth, who spent too much time smoking and drinking and too little time studying in his hometown, Bhopal. Now he has transformed himself into a lean long-distance runner and workaholic pursuing what he describes as a simple ambition: improving the world through technology.

Mr. Kanojia does not fit the profile of a poor immigrant bootstrapper. He grew up in an upper-middle-class household in Bhopal where his parents were so conscious of his future that they largely spoke English instead of the native Urdu.

After earning an undergraduate degree in mechanical engineering in India, he came to the United States and earned a master’s in computer systems engineering from Northeastern University.

His aspirations are idealistic and democratic, as well. Aereo, he says, is not so much about making money — after all he made plenty after he sold his first company, Navic Systems, which made software that helped cable companies interact with their customers, to Microsoft in 2008 for a reported $250 million.

Aereo- a technology company based in New York City that allows subscribers to view live as well as time-shifted streams of over-the-air televisionon Internet-connected devices. The service launched in February 2012and is backed by Barry Diller’s IAC.

Aereo works by setting up thousands of tiny antennas, then it sends the signals received by those antennas to subscribers over the Internet. (Bloomberg LP, which owns Bloomberg Business week, is an Aereo partner and offers its cable channel on the service.) Because each antenna is assigned to a specific customer, Aereo says it’s not providing a public broadcast, allowing the company to avoid retransmission fees.

As of October 2012, Aereo could be used on Windows, Mac, and Linux PCs  with a compatible browser or iOS devices including the iPhone, iPad, iPod Touch or Apple TV (2nd & 3rd Gen) via AirPlay. As of January 21, 2013, Aereo can be watched on Roku without the use of iOS device via a stand-alone app.

As of June 2012, the service offered 28 channels, including all major broadcast channels. In August 2012, the company announced new monthly and yearly pricing options, $1 a day and ‘Aereo Try for Free.’ Monthly plans start at $8 for 20 hours of DVR storage, there are also yearly subscriptions.

Aereo provides this service by leasing to each user an individual remote antenna. This distinguishes Aereo from purely internet-based streaming services.

Immediately following Aereo’s launch in New York City the company was sued by a consortium of major broadcasters, including CBSComcast‘s NBCDisney‘s ABC and 21st Century Fox‘s Fox for copyright infringement.

To entertainment companies, this is Cheating. According to Copyright Law- An individual can watch anything with the help of an Antenna as long as it is for their personal use. But according to the Broadcasters, Aereos transmissions constitute a “public performance” that requires Aereo to pay for retransmitting them.  Further they claim that Aereo is violating copyright and stealing their content.

Broadcasters say that Aereo is taking advantage of a legal loophole and that the transmission of content without a license is a copyright violation. Because the broadcasters expect to bring in more than $4 billion in retransmission fees this year, the stakes are high. DirecTV (DTV), Time Warner Cable (TWC), and Charter Communications (CHTR) have all said they would consider using similar technology to avoid paying fees if Aereo’s techniques were deemed legal.

The top court in the country on Friday agreed to hear the case pitting television broadcasters against Aereo, an online subscription service with arrays of miniature antennas that grab over-the-air programming, stream it online to paying members, and store it for them in a remote DVR.

Although, Aereo is pretty confident it can win as two courts have already ruled that its service is legal. It wants the Supreme Court to put an end to the controversy so it can move on, as Aereo says the uncertainty is holding it back from what would otherwise be a fruitful future. The company this week said it has raised $34 million to fund further expansion.

Table stakes :

Copyright law distinguishes between private performances and a public ones. Pulling up “The Walking Dead” on your DVR and watching it on your couch — that’s a private performance, and kosher with copyright law. Your cable company providing you with AMC so you and millions of others can watch “The Walking Dead,” that’s public performance.

On the surface, Aereo’s business seems akin to the latter example, a public performance. But Aereo has an individual antenna for every subscriber, and an individual copy of the content for each user. It’s setting up each member’s antenna of his or her behalf, connecting it to the Web, and letting that member use the antenna however they see fit, as though it were an antenna in their own home. Aereo calls that private.

Strictly speaking, retransmission fees are the reason broadcasters are suing Aereo. Today, nearly all US viewers watch TV via a paid distributor like cable — estimates put it at more than 90 percent. You pay the cable company to watch free broadcast shows, and as a result, the cable company must pay the networks for retransmitting their content.

Aereo’s model circumvents these big payments, and broadcast networks are incensed.

Networks relish their retransmission fees. Though most of their sales still comes from advertising, retransmission fees are a revenue innovation and are growing fast. Where retransmission fees didn’t exist a few years ago, they’ve grown to an estimated $3.3 billion last year and may be worth more than $7 billion a few years from now.

 Cable stakes :

Aereo is tiny, however. The retransmission fees networks are missing out on are a drop in the bucket. The networks’ bigger fear is their giant distributors will do the same.

“Broadcasters are worried not so much about Aereo but the Aereo principle applying to their big retrans consent accounts,” like cable, satellite and fiber-optic TV companies, said David Wittenstein, a media and information technology lawyer at Cooley in Washington DC.

In other words, the networks aren’t worried about the drop in the bucket. They’re worried Aereo will kick the whole bucket over.

Copyright owners like them collect about $100 million a year from the licensing charges distributors pay when they retransmit broadcast programming, the brief said. If retransmission fees disappear, pro leagues risk losing those millions too. That could force rights holders to move to paid cable networks, “where Aereo-like services cannot hijack and exploit their programming.”

 Distributor stakes:

Pay-TV operators, meanwhile, are loathe to keep paying skyrocketing retransmission fees. Time Warner Cable’s willingness to temporarily remove CBS channels from its lineup during their fee negotiations this summer illustrated that. But most cable clients of Wittenstein don’t want Aereo to win, because Aereo offers a low-cost alternative to their video service, and they’re worried about generational viewing shift.

“Cord cutters,” people who forsake traditional pay-TV service for Internet-based alternatives, are still a rare breed, but those who cut the cord are young. If today’s kids become accustomed to Internet-based TV, tomorrow’s households will turn to the Internet rather than cable or satellite.

Adding another wrinkle for pay TV, the Aereo case could imperil a precedent known as the Cablevision case. In 2008, the cable provider Cablevision won its court battles against media companies to offer network DVR, a cloud-based recording system that doesn’t require recording hardware in the home. Without network DVR, you can’t access your recorded shows on the go, and the content is locked to the box attached to your TV. The Supreme Court declined to hear an appeal of the Cablevision case in 2009, and pay-TV operators have been rolling out the cloud-based services ever since.

If the Supreme Court rules against Aereo, it could do so by striking down the Cablevision decision.

Dark clouds elsewhere:

The worries about cloud storage don’t stop with remote DVR. Cablevision, Aereo, and others have argued that the broadcasters are challenging the legal underpinning of all cloud-based services. That means Dropbox, or your Amazon cloud-storage locker.

Most cloud-locker companies don’t hold any licenses for the content. Why would they? If customers store their own movies or MP3s and stream them from the lockers, those are private performances.

Aereo’s single-antenna, single-copy setup is the basis for its claim of being a private transmission too.

So which way will it go? 

Who is likely to come out on top: the broadcasters or Aereo? As with any case before the bench, it’s a difficult call.

Aereo has been victorious in courts thus far. In April, the Second Circuit Court of Appeals denied a preliminary injunction sought by the television networks, and denied a motion it be reheard before a full panel of judges. A judge in Boston ruled along the same line.

However, FilmonX, a company offering a service similar to Aereo’s, hasn’t had as much success, failing to deflect injunctions in Los Angeles, D.C., and Boston courts. While it’s unclear whether Aereo and FilmonX are based on the same technology, the latter’s court failures cast uncertainty on Aereo’s record.

No matter who wins, one thing is certain — Aereo will be changing the course of television history, just as it wanted.

About the Author: Ms Sheetal Tiwari, Trademark Attorney at Khurana and Khurana and can be reached at: sheetal@khuranaandkhurana.com

Strengthening the Remedy against Modern Tort of Passing Off: Oriental Cuisines Private Ltd vs. Star Restaurants Pvt. Ltd

This article is to highlight the recently decided case of Oriental Cuisines Private Ltd vs. Star Restaurants Pvt. Ltd, by the Hon’ble Delhi High Court regarding passing-off action based on the principles of common law.

 Brief Facts of the Case:-                                                                                  The plaintiff is a private limited company engaged in the business of global speciality and hospitality management services.  It is the owner of the mark ‘The Noodle House and claim its adoption since 2003. The defendant in this case is Star Restaurants Private Limited engaged in the similar nature of business as that of Plaintiff. The plaintiff allege that in the year 2008 it learnt about the proposed launch of the defendant’s restaurant “THE NOODLE HOUSE” in the same vicinity proposing to offer the same cuisine as the plaintiff’s restaurant. Thus the plaintiff filed the present suit alleging passing off and infringement of its trade mark and copyright in the mark “The Noodle House” by the defendant engaged in the business of same nature as that of Plantiff. The plaintiff prayed for permanent and mandatory injunction against the defendants and its representative using similar or deceptively similar mark to the Plaintiff’s mark “The Noodle House”.

 Arguments Advanced:                                                                                   The learned counsel for the Plaintiff contended that the plaintiff has adopted the trade mark ‘The Noodle House’ in the year 2003 for which registration is pending and by its extensive and continuous use the trademark has emerged as the plaintiff company’s most popular chain. Further it was submitted that the trademark is a fanciful and invented combination of words and has come to be associated exclusively with the plaintiff’s business. It was also contended that the popularity of the plaintiff’s trademark is evidenced by its net sales under the trademark for the year 2008, which amounted to Rupees Twenty Million. It was further submitted that the proposed launch of the defendant’s restaurant under the identical trademark is in a vicinity close by to the plaintiff’s location and that too for the same category of products and services as those of the plaintiff. Thus the use of the trademark “THE NOODLE HOUSE” by the defendant for identical services is with the intention to free ride on the plaintiff’s popularity. However on the other hand the defendant failed to provide any explanation regarding the genuine basis for the adoption of the Trade Mark ‘The Noodle House’.

Judgment:                                                                                                        It was held by the Hon’ble Court that in the absence of any explanation from the defendant as to why the impugned mark was adopted by them, it is crystal clear that the intention of the defendant is to ride on the goodwill and reputation of the Plaintiff’s business and pass off its service of restaurant as that of Plaintiff. The adoption of the mark by the defendant would result in the dilution of the Plaintiff’s trade mark and would cause irreparable loss to the reputation of the plaintiff. Thus the suit was decreed in favour of the Plaintiff to the extent of grant of Permanent Injunction. However there was no order as to damages in the light of short duration between filing of suit and grant of injunction and in view of absence of any evidence from the plaintiff to establish whether the defendant’s restaurant launched at all. However the plaintiff was entitled to costs of the suit.

Conclusion:-                                                                                                    The court while deciding the case discussed the five elements of modern tort of passingoff as laid down by Lord Diplock in Erwen Warnink BV Vs. J Townend & Sons. The five elements of modern tort of passing off are (i) misrepresentation; (ii) made by a trader in the course of trade (iii) to customers of goods and services supplied by him (iv) which is calculated to injure the business or goodwill of another trader and (v) which causes actual damage to a business or goodwill of a trader. Thus considering the above elements the Court granted the injunctive relief to the Plaintiff. Pertinently the court while passing the order of injunction also considered the fact that the defendant’s restaurant was in the vicinity of the Plaintiff’s restaurant in addition to the similarity of the mark and services, and this would cause irreparable loss or damage to the Plaintiff because of likelihood confusion and deception being caused in the mind of potential customer or target population. However due to lack of evidence on record regarding the actual damages incurred by the plaintiff and the circumstances being unclear whether the defendant’s restaurant launched or not, the court disentitled plaintiff for damages.

About the Author: Mr. Abhijeet Deshmukh, Trade Mark Attorney, Khurana & Khurana, Advocates and IP Attorneys and can be reached at: Abhijeet@khuranaandkhurana.com

Understanding ITC Litigation (Section 337 Cases)

Having seen regular and growing number of queries from Indian Companies on U.S. International Trade Commission (ITC) cases in the US (primarily companies having domestic market in the US), this is a brief attempt to give clarity on jurisdiction that ITC provides, types of cases handled, advantages/disadvantages of the ITC routes, among few other characteristics of the cases filed.

Introduction:

U.S. International Trade Commission (ITC) has, in the last few years, become a key destination for both Domestic and Foreign IP litigants for different types of Trade Disputes. ITC, in essence, is basically an independent, quasi- judicial Federal agency with broad investigative responsibilities on matters of trade. ITC is enabled to investigate effects of dumped and subsidized imports on domestic industries and conduct global safeguard investigations. The Commission is also involved in adjudicating cases involving imports that allegedly infringe intellectual property rights. The Commission also serves as a Federal resource where trade data and other trade policy-related information are gathered and analyzed for development of sound and informed U.S. trade policy. The Commission makes most of its information and analysis available to the public to promote understanding of international trade issues.

Basic functions of ITC can be viewed here. ITC therefore, not only focuses on IP issues, but handles and has jurisdiction over any action that is to be taken by an appropriately hurt entity on issues relating to import injury, handling Freedom of Information Act Requests (FIAR), customs, Antidumping and Countervailing Duties (AD/CVD), among other like matters. However, ITC is best known for its IP practice, wherein, Section 337 investigations conducted by the U.S. International Trade Commission often involve claims regarding intellectual property rights, including allegations of patent infringement and/or trademark infringement by imported goods, which may lead to unfair practices in import trade. Both utility and design patents, as well as registered and common law trademarks, may be asserted in these investigations. Other forms of unfair competition involving imported products, such as infringement of registered copyrights, mask works or boat hull designs, misappropriation of trade secrets or trade dress, passing off, and false advertising, may also be asserted. In addition, antitrust claims relating to imported goods may also be asserted.

337 Investigations:

A primary remedy available in Section 337 investigations is an exclusion order that directs Customs to stop infringing imports from entering the United States. In addition, the Commission may issue cease and desist orders against named importers and other persons engaged in unfair acts that violate Section 337. Expedited relief in the form of temporary exclusion orders and temporary cease and desist orders may also be available in certain exceptional circumstances. Section 337 investigations, which are conducted pursuant to 19 U.S.C. § 1337 and the Administrative Procedure Act, include trial proceedings before administrative law judges and review by the Commission.

Many of the highest profile, multi-forum IP disputes now include proceedings before the ITC. Since ITC cases go to trial faster than almost any forum in the world, they can be the first to be resolved in these multi-forum disputes and often spearhead resolution of the other cases. Most ITC disputes, as can be seen here, are Patent Infringement Suits filed by Patent holders who must prove that it has a domestic industry with respect to the patent in order to be entitled to relief, against foreign companies that are exporting/ attempting to export potentially patent infringing products to the US. Apart from patent infringement suits, other subject matters relating to, but not limited to, copyright infringement, mask work infringement, misappropriation of trade secrets, passing off, false advertising, and potentially even violations of the antitrust laws may also be asserted under Section 337. However, most of this instant article pertains to allegations being made in context of patent infringements.

Procedure:

As a procedure, following the key steps taken during the case till the same is disposed off:

1. Section 337 investigations are initiated by the Commission following the receipt of a properly filed complaint that complies with the Commission’s Rules.3A Commission notice announcing the institution of an investigation is published in the Federal Register whenever the Commission votes to institute a Section 337 investigation.

2. When an investigation is instituted, the Chief Administrative Law Judge at the Commission assigns an Administrative Law Judge to preside over the proceedings and to render an initial decision (referred to as an “Initial Determination”) as to whether Section 337 has been violated. The Commission also assigns an investigative attorney from the Commission’s Office of Unfair Import Investigations (“OUII”), who functions as an independent litigant representing the public interest in the investigation.

3. In the notice announcing initiation of an investigation, the Commission identifies entities that may participate in the investigation as parties, namely, the complainant(s) that allege a violation of Section 337, respondent(s) that are alleged to have violated Section 337, and the Investigative Attorney.

4. Section 337 investigations are conducted in accordance with procedural rules that are similar in many respects to the Federal Rules of Civil Procedure. These Commission procedural rules (found in 19 C.F.R. Part 210) are typically supplemented by a set of Ground Rules issued by the presiding Administrative Law Judge. The procedural rules and Administrative Law Judge’s Ground Rules provide important instructions and details regarding such matters as the taking of discovery and the handling of motions.

5. A formal evidentiary hearing on merits of a Section 337 case is conducted by the presiding Administrative Law Judge, giving parties the right of adequate notice, cross-examination, presentation of evidence, objection, motion, argument, and other rights essential to a fair hearing.

6. Following a hearing on the merits of the case, the Administrative Law Judge issues an Initial Determination (“ID”) that is certified to the Commission along with evidentiary record. Commission may review and adopt, modify, or reverse the ID or it may decide not to review the ID. If the Commission declines to review an ID, the ID becomes the final determination of the Commission.

7. In the event that the Commission determines that Section 337 has been violated, the Commission may issue an exclusion order barring the products at issue from entry into the United States, as well as a “cease and desist” order directing the violating parties to cease certain actions. The Commission’s exclusion orders are enforced by U.S. Customs and Border Protection. Commission orders become effective within 60 days of issuance unless disapproved by the President for policy reasons.

8. All appeals of Commission orders entered in Section 337 investigations are heard by the U.S. Court of Appeals for the Federal Circuit.

Owing to extremely pressing and short time durations between activities relating to cross-examination, presentation of evidence, objection, motion, arguments, litigating in the ITC enables an efficient resolution in a short period of time, and in a pressure-packed forum that can make or break the commercial success of the products at issue, wherein the entire case, starting from the complaint, to discovery, pretrial hearings, trial, post-trial briefs, to subsequent review by the Commission, typically happens within about 18 months.

Other pointers:

  1. Remedies: Unlike in federal district court litigation, ITC does not enable money damages as a remedy and the commission has authority to issue only two types of remedial orders: (1) limited or general exclusion orders and (2) cease and desist orders. Exclusion orders can include Limited Exclusion Order (LEO) that direct the U.S. Customs and Border Protection (CBP) to exclude all infringing articles imported by parties found by the commission to have violated Section 337, whereas a General Exclusion Order (GEO) directs CBP to exclude infringing goods from the United States, regardless of whether the persons importing those goods were parties to the investigation that led to the issuance of the GEO.
  1. Jurisdiction: ITC possesses authority to investigate whether certain allegedly imported and infringing articles should be allowed into US and to provide appropriate remedial relief, if necessary. In sum, the commission has in rem jurisdiction over imported goods rather than in personam jurisdiction over the parties who import those goods and the commission’s remedial orders can reach the products of parties over whom a district court may not have personal jurisdiction.
  1. Subject Matter Jurisdiction: ITC can only try cases wherein the complainant proves to the satisfaction of the ITC, that there has been importation into the United States, sale for importation, or sale within the United States after importation by the owner, importer, or consignee, of articles that infringe a U.S. patent. A second requirement is that a complainant must allege and establish the existence of a protectable domestic industry. For instance, in patent-based investigations, violation of Section 337 can be found “only if an industry in the United States, relating to the articles protected by the patent concerned, exists or is in the process of being established.”

 Exemplary Cases

1. In Dec, 2010, Motorola Mobility brought a patent infringement case at ITC against Microsoft concerning five of Motorola Mobility’s patents. Of the five, the claims were brought down to just one patent, namely U.S. Patent No. 6,069,896, which specifies a peer-to-peer wireless invention. The dispute was actually between Google and Microsoft, since Google bought Motorola Mobility about a year ago, largely to boost its patent holdings. Concerned patented technology uses Microsoft’s Xbox gaming consoles, wherein the Commissioners at the U.S. ITC refused an appeal by Motorola Mobility to examine findings of ITC Administrative Law Judge David P. Shaw that were determined in March, 2013. Shaw found that Microsoft did not infringe a single patent held by Motorola Mobility. Six Commissioners at the ITC agreed with the administrative law judge’s initial determination, including that “Motorola failed to establish indirect infringement on the merits.” They concluded that the investigation was now “terminated” in a notice, which can be accessed here.

2. In June 2013, ITC cleared video-streaming site Netflix of infringing four patents owned by digital entertainment company Rovi. In its preliminary order, administrative law judge, David Shaw, rejected Rovi’s infringement claims covering interactive television programme guides. One patent was found invalid. The complaint was filed in April 2010, targeting Netflix and consumer electronics companies Roku, LG Electronics, Mitsubishi and Vizio. Roku, which is the only one of those not to strike a licensing deal with Rovi, was cleared by the ITC on June 7 2013 of infringing one The asserted patents mainly cover the ability to customise the display of TV programmes, such as recommending shows based on customer preferences. Several claims within one patent – “Interactive computer system for providing television schedule information” – were found invalid on the grounds of anticipation and obviousness.

In sum, the speedy and specialized nature of ITC forum makes the commission an attractive proposition for getting relief, without factoring into issues such as equitable balance, counterclaims, inordinate costs (although ITC has short-term high costs), which are typical in federal district courts.

About the Author:Sheetal Tiwari, Trademark Attorney, at Khurana & Khurana, IP Attorneys and can be reached at sheetal@khuranaandkhurana.com