In the recently instituted 994 investigation (Portable Electronic Devices and Components Thereof), the Commission has directed the Administrative Law Judge (ALJ) to determine, within 100 days of institution, whether the only asserted patent is invalid under Section 101. This is the first time that the Commission has called for an expedited decision on a Section 101 issue, and only the third time the Commission has identified a potentially dispositive issue for an early 100-day proceeding.
As we have noted previously, the ITC currently has a pilot program under which parties can ask the Commission to schedule an initial determination on case-dispositive issues within 100 days of institution. The Commission has proposed making this program a permanent part of the ITC's rules. Prior to institution of the 994 investigation, several proposed respondents asked the Commission to designate the Section 101 invalidity issue for early determination in a 100-day proceeding.
The Commission agreed that patentability of the asserted claims was suitable for the pilot program and in its Notice of Institution instructed the presiding ALJ (Judge Shaw) to determine whether the asserted claims recite patent-eligible subject matter within 100 days of institution. (337-TA-994, Notice of Institution, at 2 (May 5, 2016).) Judge Shaw's Order No. 3, issued the same day, established a schedule for the 100-day proceeding, including a hearing on July 6-7, 2016 and a deadline for an Initial Determination (ID) on August 19, 2016. (337-TA-994, Order No. 3 (May 5, 2016).) The parties have agreed that any claim construction or discovery activities during the 100-day proceeding will be limited to Section 101 issues, and any further proceedings and discovery on other issues will be deferred until after the ID on Section been 101 has issued. (Id.)
Successful Section 101 challenges were previously rare at the ITC (see our earlier post here), but Judge Dee Lord's recent IDs in Activity Tracking Devices finding patents invalid under Section 101 may signal a renewed focus on Section 101 at the ITC (see our earlier posts here and here). One of Judge Lord's IDs was affirmed by the Commission (see post here), and the other is awaiting Commission review.
Early determination of Section 101 patentability has the potential to resolve investigations expeditiously, avoiding the need for expensive fact and expert discovery on the other issues in an investigation. ITC practitioners will be closely observing the resolution of the patentability question in Portable Electronic Devices.
Disclosure: Morrison & Foerster is representing respondents BlackBerry Ltd. and BlackBerry Corporation in the 994 investigation.
Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.
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