Beware NPEs – ITC says no to exclusion order for an NPE who obtained ongoing royalties in district court
On August 1, 2012, in Certain Video Displays and Products Using and Containing Same, Inv. No. 337-TA-828, Order No. 9, ITC ALJ Essex held that an ongoing royalty awarded in the EDTX precluded an NPE, Mondis Technology Ltd., from obtaining an exclusion order from the ITC. The EDTX had awarded post-verdict (or ongoing royalties) to Mondis against respondents Chimei Innolux Corp. and Innolux Corp. (“CMI”). CMI argued in the ITC that the ongoing royalties constituted a license. Mondis argued to the contrary, but Judge Essex rejected Mondis’ arguments.
On May 23, 2011, Judge Robert E. Payne of the Eastern District of Virginia issued an opinion granting ePlus’ (“plaintiff”) motion for a permanent injunction against Lawson (“defendant”). ePlus, Inc. v. Lawson Software, Inc., Case No. 3:09-CV-620 (E.D. Va., May 23, 2011). Defendant infringed plaintiff’s e-procurement software patent. Defendant, a large company, manufactured a “Core S3 Procurement System” able to run either defendant’s or plaintiff’s e-procurement software.