A Petitioner Cannot Assert Discovery of Invalidating Prior Art After the ITC Issued a General Exclusion Order

In Mayborn Group, Ltd. v. ITC, No. 2019-2077 (Fed. Cir. July 16, 2020), the Federal Circuit affirmed the ITC’s denial of Mayborn’s petition for rescission of a general exclusion order (“GEO”) issued in Certain Self-Anchoring Beverage Containers, Inv. No. 337-TA-1092, USITC Pub. 4984, 2019 WL 2174055, at *1 (May 17, 2019). In the Investigation, respondents, not including Mayborn, were in default and infringed the asserted patent.  The respondents did not raise any invalidity challenges.  Mayborn, who was notified of the ongoing investigation but took no action during the proceedings, sought to rescind the GEO by asserting an invalidity defense.

On appeal, the Federal Circuit held that the ITC lacked authority to adjudicate Mayborn’s invalidity claim because Mayborn was not a party to an enforcement proceeding or a respondent in an investigation. The Court rejected Mayborn’s argument that the public interest favored resolving questions of patent validity, holding Mayborn’s invalidity challenge was not a “changed condition” in public interest that could lead to rescission of a GEO under 35 U.S.C. § 1337. The “changed conditions” include only: the public health and welfare, competitive conditions in the U.S. economy, the production of like articles in the U.S. and U.S. customers. The Court held patent invalidity was, therefore, not a proper basis to rescind the GEO.