District Court Grant of Ongoing Royalty Precludes Finding of Section 337 Violation by ITC

The ALJ granted respondents' motion for summary determination of no violation of Section 337 because respondents were authorized to import and sell the accused products pursuant to a district court order involving the same parties where complainant had been granted an ongoing royalty against respondents. "[T]he ALJ finds the statutory basis, legal theory, and characteristics of the ongoing royalty as well as the specific facts of this case compel the conclusion that the ongoing royalty is a license that allows [respondents] to continue to import the accused products. . . . [A]n ongoing royalty should be viewed as a license for the adjudged infringer to use the patented inventions such that there is no longer any violation of the patentee's patent rights."

Video Displays and Products Using and Containing Same, 337-TA-828 (ITC August 27, 2012, Order) (Essex, ALJ).