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IPR Enforcement Actions on Digital Media Devices, Orthodontic Aligners, Discovery Rules

Friday, May 17, 2013
Sandler, Travis & Rosenberg Trade Report

Potential IPR Probe of Digital Media Devices Evaluated for Public Interest Issues. The International Trade Commission is requesting comments no later than May 27 on any public interest issues raised by a Section 337 intellectual property rights infringement complaint filed on behalf of Black Hills Media LLC against certain digital media devices, including televisions, Blu-ray disc players, home theater systems, tables and mobile phones, components thereof and associated software. Comments should address whether the issuance of exclusion orders and/or cease and desist orders pursuant to this complaint would affect the public health and welfare in the U.S., competitive conditions in the U.S. economy, the production of like or directly competitive articles in the U.S., or U.S. consumers. In particular, the ITC is interested in comments that:

- explain how the articles potentially subject to the orders are used in the U.S.;

- identify any public health, safety or welfare concerns in the U.S. relating to the potential orders;

- identify like or directly competitive articles that the complainant, its licensees or third parties make in the U.S. that could replace the subject articles if they were to be excluded;

- indicate whether the complainant, the complainant’s licensees and/or third-party suppliers have the capacity to replace the volume of articles potentially subject to the requested orders within a commercially reasonable time; and

- explain how the requested orders would impact U.S. consumers.

Cease and Desist Order Proposed for Orthodontic Aligners. The International Trade Commission is accepting through June 13 comments on a recommendation that it issue cease and desist orders against certain digital models, digital data, and treatment plans for use in making incremental dental positioning adjustment appliances (orthodontic aligners), appliances made therefrom, and methods of making the same that have been determined to infringe patents owned by Align Technology Inc. Cease and desist orderswould require the named respondents to cease actions that violate Section 337, including selling infringing imported articles out of U.S. inventory.

Comments should address whether the issuance of such orders would affect the public health and welfare in the U.S., competitive conditions in the U.S. economy, the production of like or directly competitive articles in the U.S., or U.S. consumers. In particular, the ITC is interested in comments that:

- explain how the articles potentially subject to the orders are used in the U.S.;

- identify any public health, safety or welfare concerns in the U.S. relating to the potential orders;

- identify like or directly competitive articles that the complainant, its licensees or third parties make in the U.S. that could replace the subject articles if they were to be excluded;

- indicate whether the complainant, the complainant’s licensees and/or third-party suppliers have the capacity to replace the volume of articles potentially subject to the requested orders within a commercially reasonable time; and

- explain how the requested orders would impact U.S. consumers.

Final Rule Aims to Lower Costs of Discovery. The International Trade Commission has posted to its Web site a final rule amending its rules of practice and procedure concerning adjudication and enforcement in intellectual property rights infringement proceedings under Section 337 of the 1930 Tariff Act. This rule will be effective 30 days after it is published in the Federal Register, which is expected shortly.

Specifically, the ITC is adopting certain rules relating to discovery generally, to e-discovery specifically, and to the discovery of privileged information and attorney work product. The intended effect of these changes is to reduce expensive, inefficient, unjustified or unnecessary discovery practices in these proceedings while preserving the opportunity for fair and efficient discovery for all parties. The ITC notes that there are eight changes in the final rule from the October 2012 proposed rule.

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