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Significant Victory for Electrical Device Manufacturer in the U.S. International Trade Commission

01.06.09

ITC Rules that Chinese Companies Violated Patents and Recommends Entry of General Exclusion Order

NEW YORK, Jan. 6, 2009 – In recent public decisions issued by the U.S. International Trade Commission (ITC), Goodwin Procter LLP achieved a significant litigation victory for its client Pass & Seymour, (P&S), a leading supplier of electrical wiring devices. In a 172-page initial determination, the ITC noted numerous violations of P&S’s patents by the importation and sale of ground fault circuit interrupters (GFCIs) by a number of Chinese manufacturers and their U.S. distributors.

P&S’s complaint was filed by Goodwin Procter in August 2007 and trial was scheduled a mere 10 months later in June 2008. The investigation included six patents and 15 respondents. Over the course of the investigation, the respondents raised a broad variety of defenses from standard invalidity defenses of anticipation, obviousness and lack of an adequate written description in the patents, to more far-reaching claims.

During the nine-day trial last summer, nine fact witnesses and seven expert witnesses presented live testimony and many more witnesses were presented by deposition concerning the patents and the development and operation of P&S’s and respondents’ GFCIs, which are electrical receptacles with “test” and “reset” buttons which are installed in kitchens and bathrooms to prevent electric shock injuries.

In the initial determination, issued by ITC Administrative Law Judge Carl C. Charneski, all six asserted patents were found valid, enforceable and infringed. The Judge rejected respondents arguments which: (1) presented “an unrealistic scenario” regarding operation of their products and “d[id] not negate the infringement that … occur[s] under normal operation,” slip op. at 97-99, 128-29; (2) combined non-analogous references and ignored concerns in the art and their own widespread infringement that undercut the obviousness invalidity arguments they made, slip op. at 76-79; and (3) relied on “little direct evidence” concerning fraudulent intent during patent prosecution and “failed to show why [P&S’s patent attorney’s] testimony should not be credited,” slip op. at 102-107.

In a Recommended Determination, Judge Charneski recommended entry of a general exclusion order as a remedy for the infringement. A general exclusion order is a very powerful remedy only available in the ITC, which would exclude from importation into the U.S. any infringing GFCIs manufactured or imported either by parties to the ITC Investigation or by non-parties.

Mark J. Abate of Goodwin Procter LLP’s New York office served as lead counsel for P&S. George R. McGuire of Bond Schoeneck & King, PLLC’s Syracuse, New York, office served as co-counsel. The Goodwin Procter trial team also included attorneys Jennifer Albert, Charles Sanders, Ankur Parekh, Andrew SteinCalvin Wingfield and Eleanor Hynes. Since 2007, Goodwin Procter has been involved in five ITC investigations.

To see the P&S news release on the ITC finding, please go to: http://www.passandseymour.com. The decisions are available on the ITC website: http://www.USITC.gov.

About Goodwin Procter
Goodwin Procter LLP is one of the nation’s leading law firms with more than 900 attorneys in offices in Boston, Hong Kong, London, Los Angeles, New York, San Diego, San Francisco, Silicon Valley, and Washington, D.C. The firm’s core areas of practice are corporate, litigation and real estate, with specialized areas of focus that include financial services, private equity, technology, REITs and real estate capital markets, intellectual property, tax and products liability. Information may be found at www.goodwinprocter.com.