A recent Initial Determination ("ID") by ALJ Cheney illustrates how the government shutdown earlier this year effectively made this ITC investigation "toothless" since relief was not practicable before the patents would expire. Certain Color Intraoral Scanners and Related Hardware and Software, Inv. No. 337-TA-1091, Initial Determination (Mar. 1, 2019).
Here's the background: Complainant asserted six patents, two of which claim a process of digitally modeling the deformation of gingival tissue during orthodontic treatment (U.S. Patent Nos. 6,948,931 and 6,685,470, together the "Gingival Deformation Patents"). These two patents are used in hardware and software to produce three-dimensional models of teeth for dentistry and orthodontics. The complaint was filed in November 2017, less than two years before the Gingival Deformation Patents would expire on May 14, 2019.
ALJ Cheney terminated the investigation with respect to the Gingival Deformation Patents because the Patents would expire forty-eight days before the new target date for the investigation. He found there was no violation with respect to the remaining four patents. Although the ITC set a typical sixteen-month target date for the investigation, the ITC pushed the target date back two months due to an unforeseen lapse in government appropriations between December 2018 and January 2019.
In an earlier order issued in September 2018, ALJ Cheney denied Respondent's Motion to Terminate the investigation and noted that it might have been possible to obtain a remedy before the initial target date of May 20, 2019 (six days after the patents would expire), because the initial determination might issue early, before expiration. Certain Color Intraoral Scanners and Related Hardware and Software, Inv. No. 337-TA-1091, Order No. 34 (Sept. 6, 2018). However, because of the two month delay, ALJ Cheney determined that it was "a near impossibility that any remedy will issue" when the Patents would expire forty-eight days prior to the target date. Comm'n Op. at 13.
This case is a reminder to patentees of the potential risk of asserting patents that will expire within two years. Although the ITC aims for a sixteen-month target date to complete investigations and is unlikely to terminate an investigation if there is any possibility of obtaining a remedy, relief may become impracticable if investigations are prolonged past the patents' expiration date.
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