United States: Commission Agrees With ALJ Pender That Complainant Waived Indirect Infringement Arguments And That Respondents Waived Obviousness Theories

In the Matter of CERTAIN ROBOTIC VACUUM CLEANING DEVICES AND COMPONENTS THEREOFSUCH AS SPARE PARTS, Inv. No. 337-TA-1057, Commission Opinion (February 1, 2019)

Summary: ALJ Pender issued an ID determining that a violation of section 337 had occurredbased on respondents Hoover and bObsweep’s accused robotic vacuum products, which the ID found to infringe the asserted ’233 patent, and no violation as to the remaining asserted patents.

The Commission granted review of, inter alia, the ID’s findings that: (1) respondents did not induce or contribute to infringement of any of the asserted patents; and (2) the ’233 patent is not obvious over the Jones-844 reference combined with Tangenberg. The Commission affirmed the ALJ’s finding of no induced or contributory infringement. In particular, the Commission found that iRobot had waived any argument that iRobot’s filing of its 337 complaint against the respondents established the “requisite knowledge of infringement.” The Commission recognized that a section 337 complaint “can be adequate to provide knowledge of the asserted patents.” However, the Commission found that, prior to the petition for review, iRobot had never asserted that its section 337 complaint satisfied the required showing of “knowledge of patent infringement, which is a separate requirement from knowledge of the patents.” The Commission also agreed with the ALJ that the only evidence relied upon during the investigation was insufficient to establish knowledge of infringement.

On the issue of obviousness of the ’233 patent, the Commission agreed with the ALJ that the respondents were precluded from relying on the Jones-844 reference under § 102(a). Although the respondents had previously identified Jones-844, they identified Jones-844 as solely § 102(e) prior art in invalidity contentions, the expert report, and the pre-hearing brief. The Commission found that the ground rules required the respondents to identify the specific statutory basis for prior art. The Commission concluded that the respondents made no pre-hearing disclosures identifying Jones-844 as § 102(a) prior art and, therefore, waived that argument. The Commission further found that respondents could not pursue a § 103(c) obviousness defense based on Jones-844 as § 102(e) prior art because it was undisputed that Jones-844 and the ’233 were commonly owned at the time the claimed invention of the ’233 patent was made.

On remedy, the Commission issued an LEO against respondents Hoover, bObsweep, and SSSIT, and CDOs against Hoover and bObsweep. The Commission disagreed with the ALJ’s conclusion in the RD that complainant had not established that bObsweep maintained a commercially significant inventory in the United States.

Originally published by the ITC TLA

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