## Facts

- A PTO examiner concluded that claims in a single application covered three distinct inventions: (1) a semiconductor device, (2) injection-molding processes for semiconductor devices, and (3) a lead frame for the devices.
- The examiner issued a restriction requirement dividing the application into three groups and required election of claims by group; the groups later issued as separate patents.
- Texas Instruments, Inc. (TI) owned U.S. Patent No. 4,043,027 (the “’027 patent”), directed to an injection-molding process used to make plastic-encapsulated integrated circuits.
- A related patent, U.S. Patent No. 4,037,764 (the “’764 patent”), issued from the lead-frame group, but it included at least one claim associated with the injection-molding subject matter.
- TI filed a complaint at the U.S. International Trade Commission (ITC) under § 337 of the Tariff Act of 1930 (Inv. No. 337‑TA‑315), alleging that several companies imported, sold, and marketed plastic-encapsulated integrated circuits made abroad by a process that would infringe the ’027 patent if performed in the United States.
- The respondents asserted, among other defenses, that the ’027 patent was invalid for double patenting because TI allegedly failed to keep “consonance” with the PTO restriction requirement, resulting in impermissible overlap between the ’027 and ’764 patents.
- After an evidentiary hearing, the administrative law judge issued an initial determination finding a § 337 violation for some asserted claims and no violation for others.
- On review, the Commission found the ’027 patent not invalid and found infringement of claims 12, 14, and 17 by certain imported products, resulting in a § 337 violation.
- The Commission issued a limited exclusion order and cease-and-desist orders against the respondents.
- The respondents appealed the Commission’s validity, infringement, and remedial determinations, and TI also appealed seeking additional relief; the Federal Circuit consolidated the appeals.

## Issues

1. Whether the ’027 patent was invalid for double patenting based on the PTO restriction requirement and alleged lack of consonance between the restricted invention groups and the later-issued patents.
2. Whether substantial evidence supported the Commission’s findings that respondents’ imported plastic-encapsulated integrated circuits infringed claims 12, 14, and 17 of the ’027 patent (as a process that would infringe if practiced in the United States).
3. Whether the Commission correctly determined a § 337 violation and properly entered a limited exclusion order and cease-and-desist orders.
4. Whether TI was entitled to additional relief beyond the remedies ordered by the Commission.

## Decision

- The Federal Circuit affirmed the Commission’s final determination in the § 337 investigation.
- The court upheld the Commission’s rejection of respondents’ invalidity theory that the ’027 patent was barred by double patenting based on the restriction requirement and consonance arguments.
- The court sustained the Commission’s infringement findings as to claims 12, 14, and 17 and, as a result, the determination of a § 337 violation.
- The court affirmed the Commission’s remedial orders, including the limited exclusion order and cease-and-desist orders.
- By affirming the Commission’s determination in full, the court left TI without additional relief beyond what the Commission had ordered.

## Legal Principles

- When an application is divided by a PTO restriction requirement into distinct invention groups and later issues as separate patents, double-patenting challenges may turn on whether the patentee maintained consonance with the lines drawn by the restriction.
- A patent is not invalid for double patenting simply because it is related to another patent from the same original application; the analysis focuses on whether the claims improperly extend exclusivity by claiming the same invention (or an obvious variant) in a second patent outside any applicable safe-harbor protection.
- In § 337 investigations involving process patents, the ITC may find a violation based on importation of articles made abroad by a process that would infringe the asserted U.S. process claims if performed domestically.
- On review of ITC patent determinations, the Federal Circuit reviews legal questions de novo and sustains Commission factual findings if supported by substantial evidence.
- The ITC has statutory authority to issue limited exclusion orders and cease-and-desist orders to address proven § 337 violations, subject to appellate review for legal error and evidentiary support.

## Conclusion

In this consolidated appeal from an ITC § 337 investigation involving plastic-encapsulated integrated circuits, the Federal Circuit affirmed the Commission’s determination that TI’s ’027 injection-molding process patent was not invalid despite respondents’ restriction/consonance-based double-patenting defense, affirmed findings of infringement and a resulting § 337 violation, and upheld the Commission’s limited exclusion and cease-and-desist orders while denying TI any broader relief.


Texas Instruments, Inc. v. United States International Trade Commission, 988 F.2d 1165, 26 U.S.P.Q.2d 1018 (1993)