On September 29, 2016, Judge Pender issued the public version of his initial determination in Certain Table Saws Incorporating Active Injury Mitigation Technology and Components Thereof, Inv. No. 337-TA-965, finding a violation of Section 337 with respect to two of four asserted patents.
The Case
The Commission instituted the investigation in response to a complaint filed by SawStop, LLC and SD3, LLC alleging violations of Section 337 by reason of infringement of U.S. Patent Nos. 7,225,712; 7,600,455; 7,895,927; and 8,011,279 by Respondents Robert Bosch Tool Corporation and Robert Bosch GmbH.
After an evidentiary hearing, Judge Pender issued his Initial Determination on violation ("ID") finding that Respondents have violated Section 337 with respect to the '927 and '279 Patents, but that there was no violation with respect to the '712 and '455 Patents. Specifically, Judge Pender found that there is a domestic industry for all four asserted patents and that Respondents had not shown by clear and convincing evidence that any of the asserted patents are invalid. Judge Pender determined that Respondents' accused products infringe the '927 and '279 Patents and do not infringe the '712 and '455 Patents.
Of note, Respondents raised a patent misuse defense alleging that Complainants conditioned a grant of a license on Respondents' agreement to utilize the licensed technology on all of their table saw products. Judge Pender found no patent misuse by Complainants holding that "the evidence does not show that SawStop tried to impose conditions on Bosch that exceeded the scope of the patent right. To the contrary, SawStop's desire to have Bosch commit to making a certain quantity of the patented products is well within the patent grant, not outside of that grant... I agree with SawStop that asking a potential licensee for a commitment of some kind to sell products incorporating the licensed patent is qualitatively different from requiring a licensee to stop selling products not practicing the patented technology, or seeking royalties on sales of a licensee's non-practicing products."
Both Complainants and Respondents have filed a petition for review of the ID. The Commission has not yet determined if it will review Judge Pender's determinations.
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