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February 2019: Victory in ITC

February 2019

Quinn Emanuel achieved a significant victory for its client Ledman Optoelectronic Co. Ltd. On January 31, 2019, Administrative Law Judge (ALJ) David P. Shaw, presiding over International Trade Commission (ITC) Investigation No. 337-TA-1114, issued an initial determination that terminated the investigation in its entirety. Notably, the termination was done at the request of the complainant, Ultravision Technologies LLC, who, at the close of discovery, opted to dismiss the case rather than proceed to the evidentiary hearing.

Ultravision filed its initial petition requesting this Investigation on March 27, 2018. In the initial complaint, Ultravision asserted patent infringement against 44 respondents, many of whom were Chinese manufacturers of modular LED display systems for outdoor use. These LED display systems adorn soccer stadiums, highway billboards, and office buildings around the world, from Times Square to Tokyo. Quinn Emanuel was retained by Ledman to handle the case together with co-counsel Bayes, PLLC, who had previous experience against Ultravision.

Together with co-counsel, Quinn Emanuel grasped early on and targeted a significant vulnerability in Ultravision’s case. Specifically, Quinn Emanuel built a strategy around exposing Ultravision’s asserted patents as unenforceable. Among the 44 respondents, Ledman alone developed and pled defenses of inequitable conduct and improper inventorship—a move that set the dominoes in motion for eventual victory.

From the very start of discovery, Quinn Emanuel pressed Ultravision for information and documents regarding the circumstances surrounding the purported inventions claimed in the asserted patents. Ultravision resisted, maintaining that the requested records were missing. So Quinn Emanuel sought the voluntary production of a trove of pertinent documents from a foreign manufacturer. These documents proved a critical accelerant to the collapse of Ultravision’s case, as they substantiated the allegations supporting the inequitable conduct and improper inventorship defenses. Quinn Emanuel leveraged the production during depositions of Ultravision’s witnesses to obtain admissions contradicting the false narrative of inventorship and innovation in the complaint.

After other respondents learned of the relevant facts and documents obtained by Quinn Emanuel and its cocounsel through these efforts, they collectively moved to amend their answers to assert the defenses of inequitable conduct and improper inventorship that Quinn Emanuel’s client had maintained from the beginning. In parallel, Quinn Emanuel moved to compel an avalanche of email discovery that Ultravision had refused to disclose as well as additional depositions of Ultravision’s key witnesses. With expert discovery in full swing, and Ultravision’s infringement theories cracking under scrutiny, the ALJ granted both Quinn Emanuel’s motion to compel and the other respondents’ motion to amend their answers to assert additional defenses.

On the due date specified in the court order granting Quinn Emanuel’s motion to compel, Ultravision made an initial email production the day after Thanksgiving. Quinn Emanuel immediately responded and told Ultravision that this production was inadequate and failed to meet its obligations under the ALJ’s order. The next business day, Ultravision notified all respondents that it intended to file a Motion to Terminate the investigation and stay all case deadlines. By November 27, 2018, eight months after it began, the case was effectively over. After reopening from the longest government shutdown in U.S. history, the ALJ issued the initial determination that terminated Investigation 1114 on January 31, 2019.