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Josh Hartman is an experienced IP litigator with Merchant &amp; Gould’s Washington, D.C. area office and the head of the firm’s ITC Section 337 Group. Josh navigates the substantive, procedural and strategic challenges that exist when litigating before the United States International Trade Commission. He also litigates IP and unfair competition disputes in district courts and helps companies develop and protect their IP.

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Experienced Litigator Serving a Broad Range of Industries

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Josh focuses his practice on advocating for companies before the U.S. International Trade Commission in Section 337 investigations, which address unfair practices associated with imports into the United States. The disputes he handles in this arena are diverse, including patent litigation, trade secret misappropriation, antitrust, business torts and unfair competition issues.

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In addition to his work before the ITC, Josh also supports clients in district court litigation, in Federal Circuit appeals, and through IP counseling. The companies he serves come from a broad range of industries, including automotive, high technology, consumer products, life sciences, and semiconductors.

“ITC investigations are fast-paced. I enjoy the speed of the investigations and the dynamics of protecting IP holders’ rights with respect to the marketplace. I’m passionate about stopping the flow of imported, infringing products and about helping businesses protect their products’ access to the U.S. market.”

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Over the past 15 years, Josh has litigated many successful cases that have resulted in positive outcomes for his clients. Some recent examples include ITC investigations concerning patent infringement related to in vitro diagnostic testing and trade secret protection related to lithium-ion batteries.

Josh proudly serves businesses of all sizes, regardless of their place in the market. This includes businesses ranging from the growth stage to the Fortune 500. He understands the unique legal challenges that come with each stage of business and has the experience necessary to guide companies through their IP- and competition-related challenges.

Providing Business-Oriented Solutions to Eliminate IP Issues

No two businesses are the same. Legal solutions should be tailored to fit your unique business and IP needs. This is what Josh does well. He prides himself on using a multidisciplinary approach to develop practical legal solutions that protect the best interests of his clients’ businesses now and in years to come.

Josh received his Master of Laws in Intellectual Property Law from The London School of Economics and Political Science and his J.D. from Columbia Law School in New York. He is an accomplished legal writer and speaker, sharing his knowledge with other attorneys and organizations across the country.

Josh supports his community by offering up his time and legal knowledge. He is currently active in pro bono work, serves as the board chair for his children’s school and as a member of the ITC Trial Lawyers Association’s Executive Committee.

Outside of his work, Josh is an avid jazz pianist, a practicing yogi, and a father of two highly energetic boys.

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Columbia Law School, J.D.

The London School of Economics and Political Science, L.M.M., 

The University of Miami, M.M.

The University of Miami, B.M., 

Josh Hartman, Intellectual Property Attorney

he / him / his

Alternative Energy

Automotive & Powersports

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Washington, D.C. Area

Specializes in disputes before the U.S. International Trade Commission, expanding the national IP firm’s capabilities



Merchant &amp; Gould is pleased to announce that <a href="/people/joshua-a-hartman/">Joshua Hartman</a> joined as a partner on Sept. 1, adding his International Trade Commission (ITC) litigation experience to the firm’s IP platform and expanding its capabilities in IP litigation.



Josh brings 13 years of experience as a litigator, specializing in intellectual property and unfair competition disputes before the U.S. International Trade Commission and U.S. district courts.&nbsp; He has represented companies from growth-stage to Fortune 500 and Global 1000 across a broad range of innovative industries, including life sciences, fintech, cleantech and cybersecurity.&nbsp;



Josh has had significant successes in litigation before the ITC. These successes include helping to achieve a $1.8 billion settlement in a major trade secrets investigation in the electric vehicle batteries industry; obtaining consent orders and highly favorable settlements to protect a life sciences company’s in vitro diagnostics technologies; and helping secure remedial orders from the ITC.&nbsp; Josh’s cases typically blend a deep understanding of ITC issues with traditional IP issues, such as patent and copyright and trade secret misappropriation.



“Josh is an excellent addition to Merchant &amp; Gould, as we expand support and capabilities for partnering with our clients.  He brings relevant ITC experience to our mix of IP solutions, adding greater depth to brand protection and active enforcement.  We are excited to have him join us,” said Christopher J. Leonard, CEO and Managing Director, Merchant &amp; Gould.



“More than ever, ITC litigation involves not just patent-based causes of action, but a broader range of IP and business issues.&nbsp; With Josh’s hire and niche, we are increasing our existing IP capabilities and helping establish Merchant &amp; Gould in the ITC litigation space,” added Chris.

Joshua Hartman Joins Merchant & Gould’s D.C.-Area Office as Partner

Merchant &amp; Gould is pleased to have welcomed associates Catherine (Kate) S. Mayer and Hayley Ostrin to its legal team on Oct. 12. &nbsp;Both Kate and Hayley specialize in Section 337 investigations before the U.S. International Trade Commission (ITC), which involve unfair and injurious competition in trade.



Kate helps businesses protect their intellectual property rights against unfair practices, including patent and trademark infringement and trade secret misappropriation. &nbsp;Having been a part of many successful cases before the ITC, she works to protect brands and products in large and small industries. Kate also has handled several trade secret cases, a rarity within the ITC. &nbsp;Kate’s experience includes all phases of Section 337 investigations, from pre-complaint through trial and Commission briefing, and she has led trainings related to Section 337 strategy and procedure. &nbsp;Kate received her B.A. from the University of Pittsburgh and her J.D. from the George Washington University Law School. &nbsp;



Hayley’s practice includes IP litigation and counseling, with particular emphasis on Section 337 investigations before the ITC. &nbsp;Like Kate, her experience with Section 337 investigations encompasses pre-complaint investigations through trial and Commission briefing, and she has extensive knowledge of ITC procedural and substantive issues, discovery and trial strategies, and other nuances of this unique practice area. &nbsp;Hayley’s background as a sales engineer, which encompassed product management for multiple Fortune 500 companies, instilled a deep understanding for how trade and intellectual property affect a company’s ability to innovate. &nbsp;She received her B.S. and M.S. in Bioengineering from the University of California (Riverside), and her J.D. from The University of Texas School of Law.



“Hayley and Kate are excellent additions to Merchant &amp; Gould, as we expand our litigation capabilities. Their international trade experience and focus on Section 337 investigations will be invaluable to our clients looking to protect their global assets,” said E. Joseph Gess, managing partner of Merchant &amp; Gould’s D.C.-area office. “Our office is well situated and located for this type of work, and the backgrounds and insight offered by Hayley and Kate will greatly enhance our ITC practice capabilities.”



Josh Hartman, who joined Merchant &amp; Gould last month as a partner to lead the firm’s ITC specialty within the Litigation Practice Group, added, “With the evolution of our global economy, the ITC is more important than ever as a forum for intellectual property and unfair competition disputes. &nbsp;Kate, Hayley and I are excited to have joined Merchant &amp; Gould and to bring collective relief to our clients in Section 337 matters.” &nbsp;

Merchant & Gould Hires Two Associates in D.C.-Area Office

Law360 is helping us welcome our newest partner <a href="/people/joshua-a-hartman/">Josh Hartman</a> and two associates, Kate Mayer and <a href="/people/hayley-m-ostrin/">Hayley Ostrin</a>, to our D.C.-area office.  Collectively, they add Section 337 litigation experience to our IP platform.  Read more here: <a href="/wp-content/uploads/2023/03/IP-Firm-Merchant-Gould-Adds-3-Attys-In-DC-Area.pdf" target="_blank" rel="noreferrer noopener">IP Firm Merchant &amp; Gould Adds 3 Attys In DC Area</a>

IP Firm Merchant & Gould Adds 3 Attys In DC Area

Focuses on Section 337 disputes before the U.S. International Trade Commission (ITC),  responding to current business issues and expanding the national IP firm’s capabilities.



Merchant &amp; Gould is pleased to announce its new International Trade Commission (ITC) Group, specializing in Section 337 investigations before the ITC and expanding the firm’s capabilities at a critical time in our global economy.



The <a href="/practices/itc-section-337-investigations/">ITC Section 337 Investigations Group</a>, which will sit within the firm’s Litigation Practice, serves all clients, regardless of industry, and handles both patent and non-patent issues (trademark, trade dress, false advertising and trade secrets) under Section 337.  As a global law firm that has focused exclusively on intellectual property work for more than 120 years, Merchant &amp; Gould has deep experience that cuts across all technology fields and a historical understanding for how trade and intellectual property affect a company’s ability to innovate.  



Section 337 litigation is considered a specialty within the broader field of intellectual property and unfair competition litigation, encompassing all types of IP and unfair competition claims. &nbsp;Cases typically blend traditional IP issues, such as patent, copyright, trademark infringement and trade secret misappropriation, with trial practice and administrative procedure &#8212; requiring an interdisciplinary mix of IP law experience, litigation skills and regulatory proficiency, as well as economic and financial knowledge.&nbsp;



“With the launch of the ITC Group and this additional niche, Merchant &amp; Gould is increasing our existing IP capabilities in the ITC litigation space during an important shift in our global economy. &nbsp;ITC investigations require a variety of IP specializations, and we have a deep team of IP all-stars who understand the complexity of this area, as we move into a more interconnected world,” said Christopher J. Leonard, Managing Director and CEO of Merchant &amp; Gould. &nbsp;“This distinctive insight and experience will be invaluable to our clients who are protecting their brands and businesses across the world, while balancing different trade issues.” &nbsp;



Merchant &amp; Gould’s D.C.-area office is well situated to lead this kind of work with local resources nearby and with a deep understanding for Section 337 investigations. &nbsp;The firm’s specialized, ITC-focused D.C.-area team will steer the ITC Group, while working with attorneys across Merchant &amp; Gould’s seven offices to tap into the firm’s diverse and global Litigation Practice.



According to Josh Hartman, who joined Merchant &amp; Gould in September as a partner to lead the firm’s ITC Group, “The ITC has been extremely busy, and the trend is continuing with an increasing number of investigations and a greater variety of new complaints. &nbsp;Relationships among the U.S. and other economies are growing tighter; and the COVID pandemic accelerated reliance on online marketplaces, increasing the risk of unfair competition from imports. &nbsp;Products are also more and more complex, as innovation progresses; and with global supply chains, products are made through contributions from many places. &nbsp;To protect intellectual property, businesses are looking outward, and that’s when Section 337 can provide solutions.”



Matters before the ITC are fast, complicated, and large in scale, involving different parties and technologies. &nbsp;In fact, the quick pace includes discovery periods lasting three to five months; evidentiary hearings typically within eight to 10 months after complaint filings; and target dates for completion in 14 to 16 months.&nbsp;



Josh added, “Fast action is critical in this part of the IP mix. &nbsp;Thankfully, the rapid resolution in front of the ITC is also fast paced, bringing clients quick relief when it matters most. But you have to know how to navigate deep waters – almost like using a battleship as a speed boat.”



Merchant &amp; Gould is planning a Continuing Legal Education (CLE) event regarding Section 337 in Spring 2022. &nbsp;The topic, speakers, date and location (in-person vs. virtual) will be announced early next year. &nbsp;

Merchant & Gould Adds New ITC-Specialized Litigation Group

The&nbsp;ITC Section 337 investigations group, which will sit within the firm’s litigation practice, will handle both patent and non-patent issues (trademark, trade dress, false advertising and trade secrets) under Section 337.



Read more <a href="https://www.intellectualpropertymagazine.com/trademark/merchant-gould-launch-itc-specialist-litigation-group-149600.htm">here.</a>

Merchant & Gould launch ITC-specialist litigation group

Merchant &amp; Gould has unveiled its new <a href="https://protect-eu.mimecast.com/s/CTHCCZjJi5LDRXFjbbvP?domain=merchantgould.com">International Trade Commission (ITC) group</a>, specialising in Section 337 investigations. The <a href="/practices/it-section-337-investigations/">ITC Section 337 investigations group</a> will sit within the firm’s litigation practice, handling both patent and non-patent (eg, trademark, trade dress, false advertising and trade secrets) issues under Section 337.



Read more <a href="https://www.worldtrademarkreview.com/anti-counterfeiting/us-supreme-court-ends-long-running-ugg-dispute-abba-sues-uk-tribute-act-square-rebrands-block-news-digest">here.</a>

Merchant & Gould unveils ITC specialist litigation group

Merchant &amp; Gould P.C., a national Intellectual Property (IP) law firm that has helped innovators around the globe since…



Read more <a href="https://www.lexology.com/library/detail.aspx?g=fc7ab9e2-0411-41bf-8af0-b09172d2f322">here.</a>

The intellectual property law firm Merchant &amp; Gould PC, with has an office in Knoxville and six other cities, has <a href="/news/merchant-gould-adds-new-itc-specialized-litigation-group/">added a new practice group</a> that will focus on disputes before the U.S. International Trade Commission (ITC). 



Read more <a href="https://www.tba.org/?pg=LawBlog&amp;blAction=showEntry&amp;blogEntry=66605">here.</a>

Merchant Gould Adds New Trade Litigation Group

Focuses on Section 337 disputes before the U.S. International Trade Commission (ITC), responding to current business issues and expanding the national IP firm’s capabilities.



KNOXVILLE – Merchant &amp; Gould P.C., a national intellectual property (IP) law firm that has helped innovators around the globe since 1900, is pleased to announce its new <a href="/practices/it-section-337-investigations/" target="_blank" rel="noreferrer noopener">International Trade Commission (ITC) Group</a>, specializing in Section 337 investigations before the ITC and expanding the firm’s capabilities at a critical time in our global economy. Knoxville is one of the firm’s seven office locations.



Read more <a href="https://www.knoxvilledailysun.com/business/2021/merchant-gould-litigation-group.html">here.</a>

Merchant & Gould adds new ITC-specialized litigation group

By <a href="https://www.law360.com/articles/1445892/ip-firm-merchant-gould-launches-itc-practice">Adrian Cruz</a>



Law360 (December 6, 2021, 4:36 PM EST) &#8212;



Intellectual property firm Merchant &amp; Gould PC has launched a <a href="/practices/it-section-337-investigations/">U.S. International Trade Commission practice group</a> with a specialty in Section 337 investigations, the firm said Monday.



Merchant &amp; Gould&#8217;s ITC practice will be led by partner <a href="/people/joshua-a-hartman/">Joshua Hartman</a>, who joined the firm in September. Hartman told Law360 on Monday that the ITC group will consist of 12 attorneys in cities that include New York, Minneapolis and Atlanta led by a core group of Section 337 specialists including himself in the <a href="/offices/washington-d-c-area/">Washington, D.C., area</a>.



&#8220;This group was definitely part of the plan when I first started here, and it&#8217;s great to see it come to fruition,&#8221; he said. &#8220;It&#8217;s something that we talked about and have put a lot of work into, and it&#8217;s extremely exciting to be at this firm. Everybody&#8217;s been very supportive, and we have a strong, wellrounded team that combines 337 experience, technical expertise and lots of tactical experience with the types of problems that come up with 337 investigations.&#8221;



Hartman said the ITC group will do a variety of work, representing both ITC complainants asserting their IP rights and looking to prevent unfair competition along with respondents defending themselves from complaints.



&#8220;Based on the way the firm is structured and the diversity of our practice groups, we do expect to be able to handle a wide range of technologies including consumer products, electronics, life science products and brand name goods. We&#8217;ll also see some sector-specific work in spaces such as automotive, and a key part is that we&#8217;re really well situated for the rise in nonpatent investigations, which is a trend we&#8217;ve seen over the last few years.&#8221;



According to a report released by California-based intellectual property firm Patexia in February, more companies than ever have been requesting ITC investigations since the start of the COVID-19 pandemic. The report said the number of investigations filed went from 54 to 62 in 2020, a 15% increase from 2019.



Hartman said a number of other firms have been launching similar practices lately, and in an update from the report&#8217;s results, he said demand for 337 work has become even heavier this year, with 82 new complaints being filed in 2021 to go along with over 100 active investigations. Both numbers are all-time highs, he said.



&#8220;It&#8217;s a great time for Merchant &amp; Gould to add this offering,&#8221; he said. &#8220;Many of our clients have problems that Section 337 can address, including competition from imported products that can unfairly compete or infringe IP and the need to secure access to the U.S. market.&#8221;



One of the main reasons Hartman said the demand for Section 337 work has skyrocketed is because of the pandemic-driven increase in online commerce. With consumer access to more options than found in a traditional brick and mortar store, he said, many foreign producers have been able to obtain new access to American markets.



Hartman said the proportion of Chinese manufacturers selling on Amazon went from 20% to 60% in a short period of time and that while a majority of the items fall under fair trade regulations, a number had raised infringement and unfair competition claims now being addressed at the ITC.



&#8220;The increasing importance of online shopping has been a big part of the story,&#8221; he said. &#8220;Due to the pandemic, Amazon became the first shopping option for a lot of people, and that&#8217;s given U.S. consumers more options, including foreign producers. The number of Amazon sellers based abroad has gone up exponentially, and what this means is that there&#8217;s far more competition from foreign products and a subset of those raise IP infringement and unfair competition concerns.&#8221;



The creation of the new practice is the latest move in a busy 2021 for the Minnesota-based Merchant &amp; Gould, which also made a number of leadership changes in June. Partner <a href="/people/andrew-l-jagenow/">Andrew Jagenow</a> was appointed head of the firm&#8217;s <a href="/offices/denver/">Denver office</a> and partners Loretta L. Freeman and Ryan C. Smith were named co-heads of the<a href="/practices/design-patent-trade-dress/"> patent design and trade dress group</a>.



Merchant &amp; Gould has around 100 attorneys and staff in its seven offices in Atlanta; New York; Alexandria, Virginia; Denver; Minneapolis; Los Angeles and Knoxville, Tennessee, according to the firm&#8217;s website.



&#8211;Additional reporting by Tiffany Hu. Editing by Peter Rozovsky.



All Content © 2003-2021, Portfolio Media, Inc.



Law360 PDF <a href="/wp-content/uploads/2023/03/IPFirmMerchantGouldLaunchesITCPractice.pdf">Here</a>.

IP Firm Merchant & Gould Launches ITC Practice

Exclusive for World Trademark Review Written by <a href="/people/joshua-a-hartman/">Joshua A. Hartman</a> and Kate S. Mayer



Global e-commerce was already on the rise and the pandemic has only accelerated this growth. Sellers are now able to access consumers anywhere at any time, while online marketplaces, such as Amazon and Alibaba, have flourished as avenues for cross-border trade. From 2019 to 2021, the percentage of Amazon sellers based in China rose from 28% to 63%, with 75% of new sellers in its top four core markets (the United States, the United Kingdom, Germany and Japan) based in China (see Marketplace Pulse, “75% of New Sellers on Amazon Are From China”). While the increase has yielded benefits such as greater choice and lower prices, it has also come with a cost: a wider customer base for infringers. As sales of counterfeits and knock-offs have moved from back alleys to living rooms at the expense of brand owners, rights holders and consumers.&nbsp;Indeed, as global trade has slowed, the trade in counterfeits has soared. According to a joint study released in March 2019 by the Organisation for Economic Cooperation and Development and the EUIPO, the global trade in counterfeit and pirated goods reached $509 billion in 2016, accounting for 3.3% of all trade in goods that year, up from 2.5% in 2013.



So how can legitimate vendors protect their brands from imported knock-offs and counterfeits flowing into their most important geographic markets? In the United States, brand owners have valuable regulatory solutions to the flow of infringing imports via two federal agencies – US Customs and Border Protection and the International Trade Commission (ITC). First, trademark owners registered with the US government can record their marks with Customs, which will enforce recorded marks at US ports of entry by inspecting, detaining and seizing infringing goods. Second, they can file complaints with the ITC to investigate ‘unfair imports’ suspected of infringing registered and unregistered trademarks and trade dresses. Through Section 337 investigations, the ITC can issue orders blocking infringing goods from entering the United States and prevent the marketing, sale and distribution of imported goods already in the country.



Read the full article <a href="/wp-content/uploads/2023/03/WTRPerimeterDefence.pdf">here.</a>

Perimeter Defence: Regulatory Tools to Halt Counterfeits at US Borders

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/20-2342.OPINION.3-1-2022_1915069.pdf">DBN Holding, Inc. v. ITC, No. 2020-2342 (Mar. 1, 2022)</a>, affirming the International Trade Commission’s (“ITC”) denial of a petition to rescind or modify a civil penalty imposed for violation of a consent order. The ITC had imposed that penalty for DBN’s violation of a consent order in which it agreed to refrain from unfair import practices based on alleged infringement of a patent asserted in an ITC investigation. DBN’s petition sought rescission or modification based on a final judgment of invalidity of that patent.



This was the fourth appeal involving this case. In earlier appeals, the appellate court (1)&nbsp;affirmed a district court’s summary judgment invalidating the same patent claims asserted before the ITC; (2) affirmed the ITC’s civil penalties for DBN’s consent order violations predating that invalidity decision; and (3)&nbsp;reversed and remanded the ITC’s denial, based on res judicata, of DBN’s rescission/modification petition. On remand, the ITC denied DBN’s petition on the merits, noting that its rule regarding rescission/modification does not address civil penalties; distinguishing DBN’s cited cases; reaffirming that civil penalties were warranted under the applicable factors; and rejecting DBN’s public policy argument.



On appeal, the Federal Circuit concluded that the ITC did not abuse its discretion by denying DBN’s petition. The Court dismissed DBN’s cited authority regarding the ITC’s rescission of a civil penalty due to a retroactive license. Analogizing consent orders to contracts, the Court explained that DBN promised to discontinue its trade practices in exchange for the ITC terminating the investigation and that the ITC could impose penalties for DBN’s breach of this promise. The Court disregarded other prior rescission/modification determinations as primarily concerning remedial orders, which the ITC rules expressly covered and which committed such determinations to the Commission’s discretion.



The Court affirmed the ITC’s reassessment of the civil penalty factors. The Court disagreed that DBN violated the order in good faith based on its belief in the asserted patent’s invalidity under the since-vacated Commil USA v. Cisco Systems decision, as that case pertained to induced infringement, not civil penalties. The Court observed that no evidence suggested the patent’s invalidation impacted DBN’s ability to pay the penalty and concluded that DBN benefited from its violations. Finally, regarding vindication of the ITC’s authority and the public interest, the Court concluded the ITC reasonably exercised its enforcement authority.

CAFC Confirms Judgment of Patent Invalidity Does Not Excuse Violations of ITC Consent Order

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/22-1765.OPINION.8-24-2023_2179988.pdf">Volvo Penta of the Americas, LLC v. Brunswick Corp., No. 2022-1765 (Aug. 24, 2023)</a>, vacating and remanding the Patent Trial and Appeal Board’s determination that a Volvo Penta patent was unpatentable as obvious.



The patent, U.S. Patent No. 9,630,692, claimed steerable tractor-type stern drives for a boat that incorporated forward-facing propellers. In 2015, Volvo Penta launched its extremely successful commercial embodiment, the Forward Drive. In 2020, Brunswick launched a product that undisputedly embodied the ’692 patent and petitioned for inter partes review. After instituting the IPR, the Board rejected the challenged claims as obvious over a combination of two prior art references. Volvo Penta appealed. When the parties settled after briefing concluded, the USPTO intervened, adopting Brunswick’s arguments to defend the Board’s decision.



On appeal, Volvo Penta first argued that substantial evidence did not support the Board’s finding of motivation to combine, asserting that the Board ignored several factual assertions. The Federal Circuit disagreed, concluding that the Board considered and properly evaluated those assertions in view of the record and that substantial evidence supported its motivation-to-combine finding.



Volvo Penta next argued that the Board erred in finding a lack of nexus between the claimed inventions and the objective evidence of nonobviousness. The Court agreed with the Board that Volvo Penta failed to establish that a presumption of nexus applied because it only submitted conclusory arguments that the commercial embodiments were coextensive with the claimed invention. But the Court rejected the Board’s finding that Volvo Penta failed to prove nexus. It credited record evidence tying the success of the Forward Drive to the claimed features, such as internal Brunswick documents that discussed the need to develop a similar product.



Volvo Penta last challenged the Board’s analysis of the objective evidence of nonobviousness. The Court agreed with this challenge, rejecting the Board’s analysis as vague and ambiguous. The Court faulted the Board for assigning only “some weight” to strong evidence of copying and commercial success, for failing to explain why it assigned the same weight to weaker evidence of industry praise, and for improperly evaluating evidence of long-felt but unsolved need. Finally, the Court determined that the Board failed to explain its conclusion that Brunswick’s evidence of obviousness outweighed the objective evidence of nonobviousness.

CAFC Rejects PTAB Decision of Unpatentability Due to Flawed Secondary Considerations Analysis

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Cooperative Entertainment, Inc. v. Kollective Technology, Inc., No. 2021-2167 (Sept. 28, 2022), reversing a district court’s Rule 12(b)(6) dismissal of an amended complaint on patent eligibility grounds.



Cooperative sued Kollective for infringing the ’452 patent, which relates to a peer-to-peer (P2P) dynamic network for distributing large files. Contrary to prior art content distribution networks (CDNs) that distributed content directly from the originating server, the ’452 patent disclosed distributing content via dynamic P2P networks comprising “peer nodes” by using “trace routes” and other content segmentation techniques. Kollective moved to dismiss, arguing that all claims of the ’452 patent are ineligible under 35 U.S.C. §&nbsp;101. After Cooperative amended its complaint, Kollective refiled its motion to dismiss, which the district court granted. Cooperative appealed.



The Federal Circuit reversed. Applying the two-step Alice eligibility framework, the Court focused on step 2—whether the claims contain an inventive concept. The Court concluded that the amended complaint plausibly alleged that the patent claims contain inventive concepts beyond the abstract idea identified by the district court, “the preparation and transmission of content to peers through a computer network.”



First, the Court identified the claimed dynamic P2P network structure as an inventive concept. The Court pointed to specific structural elements recited by the claims; observed that the written description and the amended complaint touted the recited network structure as improving upon the prior art; and deemed the allegations regarding those improvements to be plausibly tethered to the claims. The Court also explained that the district court should have denied the motion to dismiss because questions as to whether the recited network structure was well-understood, routine, or conventional are factual disputes not amenable to resolution at the pleading stage.



Second, the Court concluded that Cooperative plausibly alleged that segmenting content using trace routes was inventive. Here, the parties disputed whether the claims required use of trace routes, not whether such use was inventive. The Court adopted Cooperative’s position that the claims required such use because it was the non-movant, and the district content had not construed the claims. Finally, the Court rejected Kollective’s argument that the claims lacked inventiveness because P2P networks and CDNs are conventional, explaining that useful improvements to computer networks are patentable even if the networks include standard computing equipment.

CAFC Reverses Rule 12(b)(6) Dismissal Based on Patent Ineligibility

Merchant &amp; Gould P.C., a national technology and trial law firm, is pleased to announce a crucial victory for our clients TYC Brother Co., Ltd. and Genera Corp. before the U.S. International Trade Commission (ITC). In a pair of investigations concerning design patents related to automotive lamps, the ITC found no violation of section 337 by TYC Brother and Genera based on Complainants Hyundai’s and Kia’s failure to satisfy the ITC’s domestic industry requirement.



Merchant and its co-counsel Holland Law LLP were retained to defend TYC Brother and Genera against twin complaints filed with the ITC by automotive manufacturers Hyundai and Kia. The complaints asserted a combined 41 design patents against TYC Brother and Genera’s replacement headlights and taillights and sought orders that would have stopped all imports and domestic sales of those products.



An early evidentiary hearing was ordered under the ITC&#8217;s early disposition pilot program to determine whether the complainants satisfied the ITC’s domestic industry requirement. These investigations are the only ones to date for which the pilot program has been used.



Merchant identified numerous flaws in the complainants’ domestic industry evidence and analysis and developed a comprehensive record supporting our clients&#8217; positions. Following the ALJ’s initial determination, Merchant obtained full review by the ITC and submitted extensive briefing.



After considerable deliberations, the ITC agreed with Merchant, concluding that the complainants failed to satisfy the domestic industry requirement as to all 41 asserted patents. As a result, the ITC terminated the investigations with findings of no violation by TYC Brother and Genera, enabling their accused lamps to remain available to U.S. consumers, securing their access to high-value replacement parts.



&#8220;We are thrilled with the ITC&#8217;s ruling in favor of our clients, TYC Brother Co., Ltd. and Genera Corp. From the outset, we were confident in our case and in the merits of our clients&#8217; position. This outcome underscores the importance of thorough domestic industry analysis in section 337 investigations. And it is a significant win, both for the Respondents and for U.S. consumers who will continue to have access to high-quality, affordable automotive parts,&#8221; said Josh Hartman, Lead Counsel at Merchant &amp; Gould.&nbsp;

ITC Rules in Favor of TYC Brother Co., Ltd., and Genera Corp., Represented by Merchant & Gould

This month, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in <a href="https://cafc.uscourts.gov/opinions-orders/22-1649.OPINION.5-8-2024_2314572.pdf">Zircon Corp. v. ITC, No. 2022-1649 (May 8, 2024)</a>, affirming the U.S. International Trade Commission’s (“ITC”) final determination of no violation of 19 U.S.C. §&nbsp;1337 (“section 337”) based on Zircon’s failure to satisfy the statute’s domestic industry requirement.



Zircon filed a complaint with the ITC alleging respondents Stanley Black &amp; Decker, Inc. and Black &amp; Decker (U.S.) Inc. infringed three patents related to electronic stud finders, and the ITC instituted an investigation. During the evidentiary hearing before an administrative law judge (“ALJ”), Zircon contended that it satisfied the domestic industry requirement’s economic prong based on U.S. investments related to 53 stud finder products, most of which practiced some but not all of the asserted patents. Zircon further contended that these investments were significant based on the aggregate amount for all 53 products and did not allocate investments to particular products, product groups, or patents. The ALJ found that these aggregated investments precluded analysis of the investments as to each asserted patent, such that Zircon failed to satisfy the domestic industry requirement. The ITC affirmed that finding, and Zircon appealed.



The Federal Circuit affirmed. It observed that section 337 requires proof of a domestic industry based on significant or substantial investment “relating to articles protected by the patent” at issue. 19 U.S.C. §&nbsp;1337(a)(2). The Court explained that under this language and prior precedent, where different products or product groups practice different asserted patents, separate domestic industries must be established for each product or group. The Court distinguished prior cases that concerned products that all practiced the same asserted patents or that predated the 1988 amendments to section 337, which adopted the current statutory language. The Court also concluded that a declaration from Zircon’s executive providing a revenue-based per-patent breakdown was not at issue because Zircon failed to appeal both the ALJ’s decision excluding it and the ITC’s decision finding Zircon abandoned its right to rely on it. Finally, the Court affirmed the ITC’s finding that uncorroborated testimony from the Zircon executive relating to research and development investments related to one asserted patent was unreliable and failed to satisfy the domestic industry requirement as to that patent.

CAFC Affirms ITC’s Finding of No Violation Due to Complainant’s Failure to Satisfy Domestic Industry Requirement

Litigation

Chemical & Life Sciences

Trade Secret

Internet, Cybersecurity, & E-Commerce

ITC Section 337 Investigations

Lisa Amos

Partner

Lead counsel for in vitro diagnostic test company in asserting its patents at the U.S. International Trade Commission, achieving consent orders and favorable settlements.
Represented manufacturer of lithium-ion batteries for the electric vehicle industry in trade secrets investigation before the U.S. International Trade Commission, achieving a default finding against the opposing party due to discovery misconduct and a $1.8 billion settlement.
Represented flooring companies in defending against a patent-based investigation before the U.S. International Trade Commission, achieving settlement on favorable terms.
Represented patent owner in investigation before the U.S. International Trade Commission concerning solid-state drives, achieving settlement on favorable terms.
Represented cybersecurity company in patent litigation against its key competitor in U.S. district court, achieving settlement on favorable terms.
Counseled clients in the life sciences, fintech, and consumer products fields regarding intellectual property, licensing, and unfair competition issues.

Joshua  A. Hartman

<h3>Presentations</h3>
Trade Secrets and Other Non-Patent Investigations, Panelist, International Trade Commission Trial Lawyers Association (“ITCTLA”) Spring Meeting, May 12, 2021.
<h3>Publications</h3>
Joshua Hartman &amp; Hayley Ostrin, “How ITC Arrived At Proportional Discovery in IP Investigations,” Law360.com (Aug. 2020)
Intellectual Property Misuse: Licensing &amp; Litigation, ABA Book Publishing (2d Ed., Apr. 2020) (contributor)
A Lawyer’s Guide to Section 337 Investigations Before the U.S. International Trade Commission, ABA Book Publishing (4th ed., June 2019) (contributor)
Hector Gallegos &amp; Joshua Hartman, “Supreme Court Hits Reset on Patent Venue Law in TC Heartland,” MoFo IP Newsletter (July 2017)
Josh Hartman &amp; Daniel Muino, “Stainless Steel Products: Commission Affirms Default Finding Based on Bad-Faith Spoliation,” MoFo@ITC (Aug. 2016)
Brian Busey, Josh Hartman, &amp; Michelle Yang, “Strategic Considerations in Litigating Design-Arounds,” IP Litigator (Nov. 2014)
Josh Hartman &amp; Rachel Krevans, “Counsel Courts Keep: Judicial Reliance on Special Masters, Court-Appointed Experts, and Technical Advisors in Patent Cases,” The Sedona Conference Journal, Vol. 14 (2013)
<h3>Quoted</h3>
<a href="https://news.bloomberglaw.com/ip-law/drug-makers-exposed-to-antitrust-probes-if-patent-cache-adopted">Drugmakers Exposed to Antitrust Probes if Patent Cache Added</a> by Annelise Gilbert, Bloomberg Law, May 1, 2024

Publications & Speaking

Columbia Law School 
J.D.
The London School of Economics and Political Science 
LLM, with distinction
The University of Miami 
M.M. 
B.M., cum laude

Education

District of Columbia 
Virginia 
U.S. District Court, Eastern District of Virginia 
U.S. District Court, the District of Columbia 
Second Circuit Court of Appeals

Admissions

ITC Trial Lawyers Association (Executive Committee, 2017–2020)

Joshua A. Hartman

Practices

Industries

Representative Cases

Education

Admissions

Publications & Speaking

Presentations

Publications

Quoted

Education

Admissions

Professional Affiliations