International Trade Commission

Intellectual Property Litigation

Experience

  • Representing two Fortune 50 technology companies in two related patent infringement lawsuits brought by Qualcomm Incorporated. Our team recently obtained a major victory in the first Investigation, in which Qualcomm had alleged that our client infringed 88 claims of six patents. Following an evidentiary hearing on three patents—which was the first trial in the global litigation battle between our client and Qualcomm—ALJ Thomas Pender issued an initial determination in which he found only a single claim infringed. Despite finding infringement of one patent claim, he recommended that the ITC decline to issue an exclusion order, concluding that Qualcomm’s requested remedy would be against the public interest due to its adverse impact on competition in the market for premium-tier baseband processor chipsets. 
  • Defending four multinational technology companies against patent infringement claims brought by a semiconductor company. The complainant seeks an exclusion order, barring importation into the United States of one of our client’s current and future microprocessors, as well as our other three clients’ computers and servers containing those processors. On summary determination, the CALJ found noninfringement of all asserted claims. Since 2010, CALJ Charles Bullock has granted summary determination on a substantive, case-dispositive issue in only one other case—and denied nearly 50 other motions for summary determination. In 2018, the Commission vacated the CALJ’s initial determination of noninfringement and remanded the Investigation to the CALJ for further proceedings. Based on the Commission’s decision, the CALJ ordered new briefing on an issue of claim construction, which was decided in our clients’ favor. In parallel with the ITC investigation, we filed six petitions on behalf of one of the four clients for inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB), challenging the claims of the semiconductor company’s asserted patent. The PTAB issued final written decisions finding that all claims of the asserted patent are unpatentable and denying the semiconductor’s motion to amend the patent. As a result of the PTAB’s finding unpatentability of all claims, CALJ Judge Bullock has stayed the ITC investigation pending appeal of the IPR results.
  • Achieved a historic victory for a multinational technology company in its litigation with a global conglomerate when the President vetoed a Commission order that otherwise would have excluded certain products of our client’s. The adverse party dropped one of the asserted patents before the evidentiary hearing, and ALJ E. James Gildea issued an initial determination finding no violation with respect to each of the four remaining patents. The adverse party sought review of the ID by the Commission, which then requested further briefing on the effect on the public interest if the Commission were to issue an exclusion order. The Commission then reversed the ALJ’s findings on one patent and issued exclusion and cease and desist orders directed toward our client’s products. Citing significant public interest concerns with the Commission’s issuance of an exclusion order on the basis of a patent the adverse party declared essential to a standard, the President—through the United States Trade Representative—disapproved the Commission’s orders in their entirety. This was later affirmed by the Federal Circuit.
  • Defended a multinational technology company in global litigation brought forth by a telecommunications company (and its various subsidiaries), after the complainant filed patent infringement lawsuits against our client in the United States and 10 foreign countries, simultaneously. The complainant’s litigation campaign included two separate ITC investigations that were filed on the same day and litigated simultaneously—one including four patents and the other including eight patents. In total, the complainant asserted more than 90 patents worldwide against our client that covered a wide range of technologies, from wireless communications to video compression. Serving as lead counsel in defending the patent infringement actions at the ITC and in the Eastern District of Texas, our team coordinated simultaneously and successfully coordinated our client’s global defense. 
  • Achieved a complete victory for three leading technology companies against an electronics parts supplier, after the complaint asserted six patents and sought to exclude from the US all of one respondent’s microprocessors and all computers incorporating those microprocessors sold by the other two respondents. Altogether, the adverse party’s complaint sought to exclude billions of dollars of products from the United States. After extensive discovery involving dozens of witnesses and millions of pages of documents, the opposing party dropped three of the asserted patents. The case then went to hearing on the three remaining patents. The ALJ issued an initial determination finding that all three remaining asserted patents were not infringed and two of the patents were invalid. We then won again on appeal at the Federal Circuit, which affirmed the ITC’s determination of no violation.
  • Represented a leading biopharmaceutical company in an investigation brought by a top biotechnology company. The adverse party alleged that an innovative treatment for hemophilia B, a treatment the respondent spent more than a decade developing, infringed patents directed to methods of administering products with an extended half-life. Following a successful Markman decision in which the ALJ adopted all of our client’s positions and found that the asserted claims of two of the three asserted patents were “non-sensical,” the adverse party withdrew its complaint, and the investigation was terminated. 

International Trade Commission