U.S. court halts import ban on Hitachi nail guns in Kyocera patent case

2 minute read

A logo of Kyocera Corp. is seen at Wireless Japan 2012 REUTERS/Issei Kato

Register now for FREE unlimited access to Reuters.com
  • Federal Circuit reopened case, finding errors by International Trade Commission
  • ITC found Hitachi and Metabo nail guns infringed Kyocera patent

(Reuters) - A U.S. appeals court on Friday overturned an import ban on certain Hitachi and Metabo-branded nail guns in a patent case brought by Kyocera Senco Industrial Tools Inc, sending the companies back to the U.S. International Trade Commission for more proceedings.

The U.S. Court of Appeals for the Federal Circuit said the ITC made multiple mistakes in its earlier ruling against Hitachi and Metabo tool maker Koki Holdings America Ltd, citing its decision to admit expert testimony and problems with its interpretations of patent terms.

Japan-based Kyocera filed a complaint at the ITC in 2017, alleging fellow Japanese company Koki's imports of gas-spring nailers used widely in construction infringed patents belonging to its Senco Industrial Tools unit.

Register now for FREE unlimited access to Reuters.com

An administrative judge found that Koki didn't infringe the patent at issue, but the commission reversed and issued a ban on infringing nail guns. The ITC later allowed sales of redesigned versions of the tools.

Both parties appealed aspects of the decision.

A three-judge Federal Circuit panel reinstated the case on Friday, agreeing with Koki that the ITC was wrong to allow expert testimony from an engineer who didn't have experience in power-nailer design.

The Federal Circuit also said the commission misconstrued some parts of the patent that Kyocera said Koki had infringed.

The parties have also been involved in related litigation in Delaware federal court. They settled Koki's claims that Kyocera's nailers infringed its patents shortly before a trial was scheduled to start last year.

Kyocera's claims against Koki in Delaware are on hold until the end of the ITC case.

A lawyer for Kyocera declined to comment. Koki and its attorneys didn't immediately respond to requests for comment.

Chief U.S. Circuit Judge Kimberly Moore wrote the opinion, joined by Circuit Judges Timothy Dyk and Tiffany Cunningham.

The case is Kyocera Senco Industrial Tools Inc v. International Trade Commission, U.S. Court of Appeals for the Federal Circuit, No. 20-1046.

For Kyocera: Daniel Shulman of Vedder Price

For Koki: Amol Parikh of McDermott Will & Emery, Joseph Paquin of Barnes & Thornburg

Register now for FREE unlimited access to Reuters.com

Our Standards: The Thomson Reuters Trust Principles.

Thomson Reuters

Blake Brittain reports on intellectual property law, including patents, trademarks, copyrights and trade secrets. Reach him at blake.brittain@thomsonreuters.com