Desmarais LLP’s International Trade Commission (ITC) Practice secured a major win for OPEX Corporation on March 31, 2023. The victory was the latest success in a series of significant cases Desmarais LLP is handling before the ITC.
The firm filed an ITC complaint in December 2021 on behalf of OPEX, a New Jersey-based manufacturer of warehouse and mailroom automation robotics equipment. OPEX alleged HC Robotics, based in Hangzhou, China, was importing warehouse automation products through a Pennsylvania-based distributor Invata that infringed the technology patents behind its industry-recognized Sure Sort product (Nos. 8,622,194 and 10,576,505). Less than a year later, on November 28, 2022, the Desmarais LLP team tried the case before ITC Chief Administrative Law Judge Clark Cheney in an evidentiary hearing that culminated in a complete victory for OPEX.
In the March 31 ruling, Chief ALJ Cheney found that the sale of HC Robotics products had violated section 337 of the Tariff Act of 1930 with the “importation of certain automated put walls and automated storage and retrieval systems, associated vehicles, associated control software, and component parts.”
The Desmarais LLP team representing OPEX in the ITC trial included partners Paul Bondor, Goutam Patnaik, David Shaw, and Tuhin Ganguly, as well as associates Elizabeth Connors and Jonathan Lewis.
Patnaik, who leads the firm’s ITC Practice, is also the former president and a current executive committee member of the International Trade Commission Trial Lawyers Association. His ITC team has extensive experience handling Section 337 investigations. That experience includes cases involving products as varied as digital scanners and their accompanying software, imaging and audio processing technology, integrated circuit design, sucralose manufacturing, online medical monitoring systems, and LED lighting systems. Desmarais LLP attorneys have handled more than 20 ITC investigations with more than 15 going through the evidentiary hearing process and receiving an administrative law judge ruling.
Other recent Desmarais LLP work includes the successful defense of Winplus North America in an ITC case alleging patent infringement related to the company’s importation of lithium-ion jump starters. The claims, brought in January 2021 by The NOCO Company, alleged certain Winplus jump starters’ safety features infringe two patents (Nos. 9,007,015 and 10,604,024), but Desmarais LLP won a finding of no violation on behalf of Winplus and the ITC affirmed that initial determination in June 2022.
Desmarais LLP is also leading the defense of the Austria-based pharmaceutical company Croma-Pharma GmbH against trade secret infringement claims related to a particular strain of botulinum toxin used in Botox products. The complaint, filed by Medytox in March 2022, alleges a proprietary strain was taken to create a rival product, resulting in a request for a cease-and-desist order to stop the sale of the disputed products that are part of a multibillion-dollar anti-wrinkle treatment industry.
The firm was also co-counsel with a team that successfully defeated ITC infringement claims filed against the vaping cartridge products company The Blinc Group. An administrative law judge found that the imported cartridges did not infringe Shenzhen Smoore Technology’s three patents (Nos. 10,357,623; 10,791,762; and 10,791,763).
Law360 – “NJ Robotics Biz Wins Infringement Ruling In ITC Case”
Law360 – “ITC To Probe Drug Cos. Accused Of Using Medytox Secrets”
Law360 – “ITC Judge Details Why Cannabis Cos. Beat IP Investigation”
Law360 – “ITC Clears Cannabis Cos. In Vaping IP Investigation”
businesswire – "OPEX Corporation Achieves Important Win in Patent Dispute"
Desmarais LLP Shortlisted for 5 Managing IP Americas Awards 2023
Accolades
Managing IP recognized Desmarais LLP as a leader in five categories for its Americas Awards 2023 following a year of successes in district courts, appellate courts, and before the Patent...
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