A Fox Rothschild Intellectual Property team led by Jeff Schwartz and Austen Endersby, along with Ryan Miller and Kristen Broz, won a significant victory for firm client Denovo Brands, LLC, in a patent infringement case at the U.S. International Trade Commission (ITC) involving competing lines of portable, foldable rocking chairs.  Denovo’s legal team included co-counsel Michael Leetzow of Michael L. Leetzow, P.A. and Marshall Ney of Friday, Eldredge & Clark LLP.

The ITC’s Commission Opinion, which was made public on May 18, cleared Denovo of alleged violations of the unfair importation statute (Section 337 of the Tariff Act of 1930, 19 U.S.C. § 1337), bringing to an end a 21-month legal battle at the ITC with competitor GCI Outdoor, Inc. over Denovo’s "Kijaro Rok-It" chair.

Complainant GCI Outdoor, Inc. of Connecticut filed an ITC Complaint against Denovo in August 2019, claiming Denovo’s importation and sale of the Rok-It chair infringed on U.S. Patent No. 9,282,824 (the '824 patent) and violated the unfair importation statute. GCI sought an Exclusion Order and a Cease and Desist order, seeking to prevent Denovo from importing and selling its Rok-It chair in the United States during the term of the ‘824 patent.

Schwartz and Endersby tried the case virtually in December 2020 with the assistance of Fox Rothschild paralegal Tanya Cooper. Administrative Law Judge David Shaw presided.

In a February 2021 Final Initial Determination, Judge Shaw cleared Denovo of alleged wrongdoing.  Judge Shaw’s ruling was based on GCI’s failure to satisfy the “technical prong” of the ITC’s domestic industry requirement, which required GCI to prove that its own products were covered by the asserted patent.  Because GCI failed to prove the ‘824 patent covers GCI’s own "RoadTrip Rocker," "Pod Rocker" and "Kickback Rocker" chairs, Judge Shaw ruled that Denovo's importation and sale of the Rok-It chair did not violate the unfair importation statute.

In March 2021, Denovo petitioned the full Commission to review aspects of Judge Shaw’s ruling.  The Commission affirmed Judge Shaw’s finding of “no violation” by Denovo.  In addition to affirming Judge Shaw’s ruling that GCI’s own chairs are not covered by the ‘824 patent, the Commission also ruled that Denovo’s Rok-It chair does not infringe the ‘824 patent.  This non-infringement ruling by the Commission significantly strengthened the victory that Fox Rothschild had already obtained from Judge Shaw’s ruling.

Denovo’s prevailing non-infringement position relied in part on the following argument: that GCI’s infringement arguments were legally incorrect because they relied on patent figures and patent text that — while present in the patent — were actually not pertinent to the specific patent claims at issue.

As a result of this ITC win, Denovo is free to continue selling its non-infringing Rok-It chair in the United States.