The ongoing intellectual property dispute between Intermec Technologies, an Everett, Wash.-based RFID and bar systems provider, and rival Symbol Technologies of Holtsville, N.Y., has entered a new phase. Last week, the U.S. International Trade Commission (USITC) agreed to investigate Intermec’s claim that Symbol is violating U.S. trade practices by importing three of its own products—handheld mobile computing devices and accessories—that allegedly infringe on patents held by Intermec.
Intermec filed the claim with the USITC on June 30. The claim states Symbol is violating Section 337 of the Tariff Act of 1930 by importing into the United States and selling three products—Symbol’s MC50, MC9000 and PPT8800 handheld mobile computing devices (or their component pieces or communication cradles)—that allegedly infringe on Intermec’s patents covering pocket-sized handheld computing devices, modular handheld computing devices and recharging and data exchange cradles for handheld computing devices. The MC9000-G RFID, one of four models in the MC9000 series, is a handheld bar code/RFID reader.
According to Symbol, none of the patents listed in the claim involve RFID technology. Intermec will not comment on the particulars of the claim or name the patents specifically.
“Our view is that none of our products infringe these [Intermec] patents,” says Peter Lieb, Symbol’s senior vice president and general counsel. “We are doing a study of prior art to determine whether the patents themselves are valid,” he told RFID Journal. A study of prior art determines whether the patent is based on intellectual property that already existed before Intermec filed its patents, or if any of the IP referenced in the patents was common knowledge prior to the filing. Lieb adds that if the products are found by the ITC to infringe on Intermec’s patents, Symbol will redesign them to remove the infringement.
Intermec is requesting that the USITC issue an exclusion order—a prohibition to import specific items—and a permanent “cease and desist” order to Symbol, which would bar the importation and sale of the goods in the United States. Intermec is unable to make a patent infringement case in civil court, because the goods are manufactured outside of the United States, but importing goods into the United States that infringe on U.S patents is considered an unfair trade practice under Section 337.
According to Pat Reilly, CEO and founder of the Intellectual Property Society, making a claim with the USITC over patent infringement based on Section 337 of the Tariff Act of 1930 is a common practice taken by companies to assert patent rights on goods manufactured on foreign soil. “This is a classic move,” he says, “and if the ruling is in favor of the claimant, it will prohibit the import of the goods named in the claim.”
The USITC’s agreement to investigate the case does not mean it has made any decision on whether the Symbol products infringe on Intermec patents. Sidney Harris, an ITC administrative law judge, will issue a schedule for the case within 45 days, which will include a target date for completing the investigation, and a specific date for an evidentiary hearing. The latter is conducted much like a trial in a court of law and will involve lawyers from Intermec, Symbol and an ITC attorney representing the public interest. Most Section 337 investigations take 12 to 18 months, according to the USITC.
The USITC decision will become final 60 days after issuance unless disapproved for policy reasons by a U.S. trade representative. If the USITC rules that Symbol is in violation of Section 337 due to patent infringement, the company may appeal the decision to the U.S. Court of Appeals for the Federal Circuit. Intermec may also appeal if it disagrees with the commission’s decision. Either party’s appeal must be filed within 60 calendar days of the date of the USITC’s final decision.
Since June 2004, Intermec has filed three suits against Symbol over patent infringement and related issues (see Intermec Sues Matrics and Round 3: Intermec vs. Symbol). Symbol, meanwhile, has filed two patent infringement suits against Intermec (see Symbol Sues Intermec in IP Dispute and Symbol Files Second Suit).
A pretrial hearing for the suit levied by Intermec against Symbol in June 2004 will begin Sept. 7 (see Set for Intermec, Symbol).