April 01, 2016
Authored and Edited by Elizabeth D. Ferrill; Carlos J. Rosario, Lauren J. Dreyer
Yesterday, the Federal Circuit denied a request for en banc rehearing in a case of first impression involving the importation of digital files. The case stems from a decision last November in ClearCorrect v. ITC, where a panel held that the ITC’s authority to limit the importation of infringing “articles” only extended to “material things,” and not to electronic files (3D printable files of teeth aligners, in this case). Of note, the denial of the en banc petition included 1-page per curiam order, 4-page concurrence, and a 21-page dissent. The lone dissenter (Judge Newman) argued that the panel’s decision was at odds with precedent, including the en banc court’s opinion in Suprema v. ITC, and that various unfair practices in imports statutes make no distinction between digital and tangible products. In responding to the dissent, the concurrence (authored by Chief Judge Prost and Judge O’Malley, joined by Judge Wallach) disagreed, stating that “when Congress want[s] to bridge the gap between the non-digital world and the digital world, it [will do] so affirmatively.”
Copyright © 2016 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.
At the PTAB Blog
Discretion All the Way Down: USPTO Uses a Discretionary IPR Denial to Justify a
§ 325(d) EPR Denial
May 28, 2026
At the PTAB Blog
IPR and PGR Statistics for Final Written Decisions Issued in March and April 2026
May 26, 2026
At the PTAB Blog
May 20, 2026
Webinar
Changes at the PTAB from Settled Expectations to Real Parties in Interest to Director Involvement
May 18, 2026
Webinar
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.