Jordan Coyle

Partner

Washington, D.C.


Read full biography at www.orrick.com

Section 337 investigations pose an enormous risk. Without proper counsel, the speed, complexity and potential cost can overwhelm companies and drain precious resources. Having handled 30 such investigations, Jordan understands those risks, and how to safely and efficiently guide complainants, respondents and non-parties toward the best possible result.

He’s managed all aspects of Section 337 investigations, including eight trials, from pre-complaint counseling and diligence to Federal Circuit appeals. The investigations have covered technologies including smartphones, tablets, televisions, flash memory, semiconductors, and medical devices. 

He also represents plaintiffs and defendants across the country in cases involving claims of patent, trademark and copyright infringement, trade secret misappropriation and violations of the Digital Millennium Copyright Act.

Some of Jordan's representative Section 337 engagements include the following:

  • Obtained a finding of no violation of Section 337 on behalf of respondents in a Section 337 investigation involving alleged infringement by certain video game systems; finding upheld on appeal to the Federal Circuit.
  • Obtained dismissal on summary determination of vigorously-contested patent misuse defense in a Section 337 investigation involving e-readers.
  • Obtained a termination without settlement on behalf of respondents in a Section 337 investigation involving alleged infringement of certain light emitting diode and laser diode patents.
  • Obtained a termination without settlement on behalf of respondents in a Section 337 investigation involving alleged infringement of certain electronic device patents.
  • Regularly advise recipients of subpoenas issued in Section 337 investigations, advising them on compliance, negotiating the scope of the subpoenas with counsel for the serving party, and drafting motions to quash, oppositions to motions seeking enforcement, and enforcement briefing in United States District Courts.
  • Advised members of a trade association regarding the potential effects a precedent-setting question of ITC jurisdiction could have on their businesses, their exposure to Section 337 investigations, and the availability of the ITC as a forum for them to assert their own Section 337 claims.

Some of Jordan's other representative engagements include the following:

  • Represented plaintiff in declaratory judgment action in the U.S. District Court for the District of Colorado in which the judge--after an 11-day bench trial--found that the defendant did not own the disputed trademark or trade dress rights.
  • Represented intervenor in suit filed under the Administrative Procedure Act against the United States Patent and Trademark Office based on decisions made by the Patent Trial and Appeal Board in an inter partes review established by the America Invents Act; court dismissed complaint.
  • Obtained transfer of patent infringement case from the Eastern District of Texas to the Southern District of New York and then dismissal of the suit due to lack of standing.
  • Obtained dismissal of contract claim brought in New York state court due to lack of personal jurisdiction and then obtained dismissal of similar complaint brought in the Southern District of New York based for lack of personal jurisdiction and failure to state a claim.
  • Secured antitrust clearance through the U.S. Federal Trade Commission of a global acquisition that created the world's largest technical ceramics manufacturer. Secured antitrust clearance through the U.S. Federal Trade Commission of a global joint venture that created one of the world's largest integrated manufacturers and sellers of styrene and polystyrene plastics.
  • Obtained a dismissal without settlement on behalf of a high-end, international clothing and accessories boutique of a complaint brought under the Fair and Accurate Credit Transactions Act (FACTA).

Jordan also actively provides pro bono legal services, including the following representative engagements:

  • Drafted amicus brief on behalf of Major Cities Chiefs Association, a professional association of Chiefs and Sheriffs representing the largest cities in the United States, Canada and the UK, in a state supreme court appeal regarding the negligent sale of a firearm by a pawn shop.
  • Representing political asylee seeking permanent resident status in the United States, including litigating her mandamus petition in federal district court.
  • Advised an international non-profit organization on the protection of its trade secrets, including drafting a template non-disclosure agreement.
  • Obtained a restraining order on behalf of a domestic violence victim.

Representative Section 337 investigations in which Mr. Coyle represented complainants or respondents:

  • Certain Hand Dryers and Housings for Hand Dryers; Inv. No. 337-TA-1015
  • Certain Surgical Stapler Devices and Components Thereof; Inv. No. 337-TA-985
  • Certain Consumer Electronics and Display Devices with Graphics Processing and Graphics Processing Units Therein; Inv. No. 337-TA-932
  • Certain Formatted Magnetic Data Storage Tapes and Cartridges Containing Same; Inv. No. 337-TA-931
  • Certain Integrated Circuits and Products Containing the Same; Inv. No. 337-TA-920
  • Certain Point-to-Point Network Communication Devices and Products Containing Same; 377-TA-892
  • Certain Silicon Microphone Packages and Products Containing Same; Inv. No. 337-TA-888
  • Certain Consumer Electronics with Display and Processing Capabilities; Inv. No. 337-TA-884
  • Certain Electronic Devices Having a Retractable USB Connector; 337-TA-843
  • Certain Silicon Microphone Packages and Products Containing Same; 337-TA-825
  • Certain Blu-Ray Disc Players, Components Thereof and Products Containing Same; Inv. No. 337-TA-824
  • Certain Semiconductor Chips with DRAM Circuitry, and Modules and Products Containing Same; Inv. No. 337-TA-819
  • Certain Handheld Electronic Computing Devices, Related Software and Components Thereof; Inv. No. 337-TA-769
  • Certain Video Game Systems and Controllers; Inv. No. 337-TA-743; Motiva, LLC v. Int'l Trade Comm'n, No. 12-1252 (Fed. Cir. May 13, 2013)
  • Certain Electronic Devices with Image Processing Systems, Components Thereof, and Associated Software; Inv. No. 337-TA-724
  • Certain Light Emitting Diode Chips, Laser Diode Chips and Products Containing Same; Inv. No. 337-TA-674
  • Certain Electronic Devices, Including Handheld, Wireless Communications Devices; Inv. No. 337-TA-667
  • Certain Short-Wavelength Light Emitting Diodes, Laser Diodes and Products Containing Same; Inv. No. 337-TA-640

Representative Section 337 investigations in which Mr. Coyle represented non-party subpoena recipients:

  • Certain Activity Tracking Devices, Systems, and Components Thereof; Inv. No. 337-TA-963
  • Certain Network Devices, Related Software and Components Thereof (II); Inv. No. 337-TA-945
  • Certain Network Devices, Related Software and Components Thereof (I); Inv. No. 337-TA-944
  • Certain Standard Cell Libraries, Products Containing or Made Using the Same, Integrated Circuits Made Using the Same, and Products Containing Such Integrated Circuits; Inv. No. 337-TA-906
  • Certain Wireless Devices with 3G and/or 4G Capabilities and Components Thereof; Inv. No. 337-TA-868
  • Certain Communication Equipment, Components Thereof, and Products Containing the Same, Including Power Over Ethernet Telephones, Switches, Wireless Access Points, Routers, and Other Devices Used in WLAN, and Cameras; 337-TA-817
  • Certain Wireless Devices with 3G Capabilities and Components Thereof; 337-TA-800

Posts by: Jordan Coyle

“Weight” a Minute – Upon Further Review Those Claims Are Not Indefinite

Commission Opinion, Certain UV Curable Coatings For Optical Fibers, and Products Containing the Same, Inv. No. 337-TA-1031 (August 11, 2017) (ITC)

We previously posted – “Weight” a Minute- Those Claims Are Indefinite – about Administrative Law Judge (“ALJ”) MaryJoan McNamara’s Initial Determination (“ID”), finding claims of U.S. Patent No. 7,706,659 (“the ’659 patent”) indefinite under 35 U.S.C. § 112, ¶ 2 (pre-AIA).  The United States International Trade Commission (“ITC”) recently reversed and vacated that ID.  The ’659 patent is entitled “Coated Optical Fiber” and claims primary coating compositions and primary coatings.

Complainants DSM Desotech, Inc. and DSM IP Assets B.V. petitioned the Commission to review the ID; Respondent Momentive UV Coatings (Shanghai) Co., Ltd. (“MUV”) and the Office of Unfair Import Investigations opposed the petition.  In its petition for review, DSM argued that the ALJ’s construction of the disputed claim term referred to an “average molecular weight” and that term was not indefinite. READ MORE

When It Comes to Domestic Industry’s Economic Prong, Numbers Speak Louder Than Words

Initial Determination on Violation of Section 337 and Recommended Determination on Remedy and Bond, Certain Radio Frequency Identification (“RFID”) Products and Components Thereof, ITC Inv. No. 337-TA-979 (June 22, 2017) (ALJ MaryJoan McNamara)

In a recent Initial Determination, Administrative Law Judge (“ALJ”) MaryJoan McNamara ruled against Complainant Neology, Inc., finding no violation on multiple grounds.  This post focuses on ALJ McNamara’s analysis of the economic prong of the domestic industry requirement.  Her decision is notable because of the number and diversity of economic prong theories Neology advanced, and the ALJ’s focus on the presence or absence of quantitative evidence supporting those theories, further cementing the effect of the Federal Circuit’s 2015 Lelo v. ITC decision.

Neology tried two patents: Nos. 8,325,044 (“the ’044 patent”) and 8,587,436 (“the ’436 patent).  Both were directed to RFID technology, with the ’044 patent focusing on RFID tags, and the ’436 patent focusing on RFID readers.  Respondents did not contest that Neology satisfied the economic prong for the ’044 patent.  Neology had manufactured millions of RFID tags at its 14,000-square-foot facility in California and invested significantly in employment there. READ MORE

“Weight” a Minute – Those Claims Are Indefinite!

Initial Determination Granting MUV’s Motion for Summary Determination That Claims 16-18, 21, and 30 of U.S. Patent No. 7,076,659 are Invalid under 35 U.S.C. § 112, Certain UV Curable Coatings For Optical Fibers, and Products Containing the Same, ITC Inv. No. 337-TA-1031 (July 6, 2017) (ALJ MaryJoan McNamara)

In a rare move for the ITC, Administrative Law Judge (“ALJ”) MaryJoan McNamara granted a motion for summary determination by Respondent Momentive UV Coatings (Shanghai) Co., Ltd. (“MUV”) finding that several claims of U.S. Patent No. 7,706,659 (“the ’659 patent”) are indefinite under 35 U.S.C. § 112, ¶ 2 (pre-AIA). The ’659 patent is entitled “Coated Optical Fiber” and claims primary coating compositions and primary coatings.

This decision is significant because it is relatively unusual for ALJs to grant motions for summary determination on technical issues. Section 337 investigations move very quickly and motions for summary determination are often filed less than three months before the start of the hearing, so there is often little efficiency to be gained from granting such motions. READ MORE

Printer Cartridges Set the Tone for Patent Exhaustion

Impression Products, Inc. v. Lexmark International, Inc., Supreme Court (June 1, 2017)

 On May 30, 2017, the U.S. Supreme Court overturned an en banc decision of the Court of Appeals for the Federal Circuit (CAFC) and decided that a patentee’s authorized sale of a product—whether within or outside of the United States—exhausts all of the patent rights in that product, regardless of any post-sale restrictions the patentee places on that product.  The decision was unanimous as to exhaustion arising from a domestic sale, and 7-1 as to exhaustion arising from a foreign sale, with Justice Ginsburg the sole dissenter.  This decision will affect how companies enforce post-sale license rights and will provide accused infringers with another potential means to defeat patent infringement claims.

Lexmark concerned the sale of printer toner cartridges.  Lexmark sells toner cartridges and owns various patents that protects its intellectual property rights in them.  Lexmark gives its customers a choice when purchasing its cartridges: They can buy regular cartridges at full price with no restrictions, or they can buy cartridges at a 20% discount through Lexmark’s Return Program by agreeing (1) to use each cartridge only once and (2) not to send used cartridges to anyone but Lexmark.  Impression Products acquired spent toner cartridges, including both Return Program and regular cartridges, from within the United States, then proceeded to refill and resell these cartridges to domestic consumers.  Impression Products also imported, without Lexmark’s permission, both Return Program and regular cartridges from outside the United States for sale in the United States. READ MORE