Further to our February 3 post, Chief ALJ Paul J. Luckern issued a notice assigning ALJ Theodore R. Essex as the presiding Administrative Law Judge in Certain Liquid Crystal Display Modules and Products Containing the Same, and Methods for Making the Same (Inv. No. 337-TA-702).

On February 3, 2010, the U.S. International Trade Commission issued a Notice of Investigation regarding institution of Certain Liquid Crystal Display Modules and Products Containing the Same, and Methods for Making the Same (Inv. No. 337-TA-702).

The investigation is based on a January 8, 2010 complaint filed by Sharp Corporation of Japan alleging violation of Section 337 in the importation into the U.S. and sale of certain liquid crystal display (“LCD”) modules and products containing the same, and methods for making the same which allegedly infringe certain claims of U.S. Patent Nos. 7,379,140, 6,141,075, 7,283,192, 5,670,994, and 7,408,588.  See our January 11, 2010 post for more details.

According to the Notice of Investigation, the Commission has identified Samsung Electronics Co., Ltd. of Korea, Samsung Electronics America, Inc. of Ridgefield Park, New Jersey, and Samsung Semiconductor, Inc. of San Jose, California as the respondents in this investigation.

Further, Anne Goalwin of the Office of Unfair Import Investigations is identified on the Notice of Investigation as the Investigative Attorney assigned to handle this investigation.

On February 1, 2010, ALJ Carl C. Charneski issued Order No. 23 in Certain Digital Televisions and Certain Products Containing Same and Methods of Using Same (Inv. No. 337-TA-617) granting Complainants Funai Electric Co., Ltd. and Funai Corporation, Inc.’s (collectively, “Funai”) motion to file a supplemental expert report of V. Michael Bove, Jr.  The Order simultaneously denied a motion by Respondents Vizio, Inc., AmTran Technology Co., Ltd., Suzhou Raken Technology, Ltd., TPV Technology, Ltd., TPV International (USA), Inc., Top Victory Electronics (Taiwan) Co., Ltd., Envision Peripherals, Inc., and Top Victory Investments, Ltd. (collectively, “Respondents”) to strike the supplemental expert report of V. Michael Bove.

Funai argued that its motion to supplement was necessitated by new arguments raised within Respondents’ expert report, which “to Dr. Bove’s surprise,” opined that VCTs that fit into single packets are “hypothetical” or a “remote” likelihood, and that VCTs are not routinely placed at the start of packets.

Respondents opposed and moved to strike on the basis that good cause to supplement does not exist because (1) the supplemental report “seeks merely to rebut criticism” for not providing “adequate support for positions” in the original expert report, and (2) the proposed supplementation includes a disc containing over 400 megabytes of previously undisclosed data.

ALJ Charneski acknowledged that Funai’s expert “considered addressing the VCT issue in his initial expert report,” and “was mistaken” when “he did not think that it would be in dispute.”  Nonetheless, ALJ Charneski noted that “unless Funai is permitted to file the proposed supplemental expert report, the issue will not be developed adequately at the hearing,” and therefore, “good cause for permitting the requested supplementation has been shown.”

As to the 400 megabytes of data, ALJ Charneski held “it will not unduly burden respondents or this investigation,” because this data constitutes only 10 video clips (each three to 15 seconds in duration ), recorded from domestic television broadcasts.

On January 29, 2010, ALJ Charles E. Bullock issued the public version of Order No. 28 (dated January 8, 2010) in Certain Flash Memory Chips and Products Containing the Same (Inv. No. 337-TA-664).

According to the Order, Respondents Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung International, Inc., Samsung Semiconductor, Inc., and Samsung Telecommunications America, LLC (collectively, “Samsung”) moved for leave to file a supplemental submission in support of their claim constructions regarding one of the patents-in-suit, the ‘877 patent.  Complainants Spansion, Inc. and Spansion LLC (collectively, “Spansion”) opposed the motion.  No response was received from the Commission Investigative Staff.

The basis for Samsung’s motion was an Invention Disclosure Form (“IDF”) related to the ‘877 patent which Spansion produced after the parties completed their claim construction briefing and after the Markman hearing.  Samsung argued that the IDF was relevant to construction of the claim term “selected surface area profile” because it established that the inventors “understood the claimed invention consistent with Respondents’ construction of the claim terms.”  Spansion responded that the IDF was duplicative of intrinsic evidence already before the court, and that Samsung therefore had a full and fair opportunity to present any arguments related to the duplicative information found in the IDF in their briefs and during the Markman hearing.  ALJ Bullock agreed with Spansion that the IDF appeared duplicative of the prosecution history and specification of the ‘877 patent, and further noted that the specification is the single best guide to the meaning of a disputed claim term, and that extrinsic evidence, while permitted to be considered by courts, is generally less reliable than the “intrinsic” patent specification and prosecution history, citing Phllips v. AWH, 415 F.3d 1301 (Fed. Cir. 2005).  Accordingly, Samsung’s motion was denied.

On January 29, 2010, ALJ Carl C. Charneski issued the public version of the Initial Determination (dated September 21, 2009) in Certain Semiconductor Integration Circuits Using Tungsten Metallization and Products Containing Same (Inv. No. 337-TA-648).

By way of background, the Complainants in this investigation are LSI Corporation and Agere Systems Inc. (collectively, “Complainants”) and the Respondents are Tower Semiconductor, Ltd. (“Tower”), Jazz Semiconductor (“Jazz”), Qimonda AG, Powerchip Semiconductor Corporation (“Powerchip”), Grace Semiconductor Manufacturing Corporation (“Grace”), Integrated Device Technology, Inc. (“IDT”), Spansion, Inc. (“Spansion”), and Nanya Technology Corporation (“Nanya”) (collectively, “Respondents”).

On September 21, 2009, ALJ Charneski issued the initial determination (“ID”) finding no violation of Section 337.  The ID held “that each accused process of each Respondent  practices each of the claims[1, 3, and 4]” asserted against it, but [Respondents] also “established by clear and convincing evidence that claims 1, 3, and 4 of [U.S. Patent No. 5,227,335 (the ‘335 patent)] are invalid due to anticipation in view of IBM Process A.”  ALJ Charneski found that a domestic industry existed for the ‘335 patent based on Complainants’ licensing activities.

The asserted claims relate to methods of fabricating an integrated circuit by depositing a tungsten layer by chemical vapor deposition covering a glue layer consisting of a conducting nitride.  The Complainants accused several of Respondents’ processes of infringement, but these processes were identified only in the heavily-redacted portion of the ID.

Infringement

ALJ Charneski interpreted four claim terms within the ‘335 patent.  Complainants argued that “depositing” as used in the patent, did not include forming a layer through nitridization.  ALJ Charneski disagreed, relying upon applicants’ reference during prosecution to Titanium Nitride being “deposited,” and the ‘335 specification reciting that “depositing” includes “well known techniques,” and nitridization “is a well known technique.”

The Complainants and Respondents disagreed on the meaning of a “glue layer” and whether this layer required actual contact between the underlying dielectric layer and the tungsten. ALJ Charneski held that while the nitride itself within the glue layer need not contact the dielectric, “in order to have good adhesion to both the underlying dielectric layer and the tungsten (i.e. to adhere to them, which is the very nature of a glue) the glue layer must come into contact with them.”

Additionally, ALJ Charneski held that the “exposed underlying material” covered by the glue layer in claim 1 is not limited to silicon or metallic silicides on the substrate, denying the interpretation requested by IDT.

Finally, contrary to IDT and Grace’s arguments,  ALJ Charneski interpreted “etching” in claim 4 to include chemical mechanical polishing.

ALJ Charneski held that “IDT’s non-infringement defense turns largely on disputed claim constructions.”  ALJ Charneski’s rejection of IDT’s proposed constructions of “glue layer,” “exposed underlying material” and “etching,”  are “key to IDT’s arguments.”  Accordingly, ALJ Charneski found that the “IDT Process [ ] meets every element of claims 1, 3, and 4.” He similarly found Grace’s non-infringement arguments to “hinge primarily on its [rejected] proposed construction” of “glue layer” and “etching,” and its process also met “every element of claims 1, 3, and 4.”  Nanya, Powerchip and Spansion relied upon a  rejected construction of “depositing” for non-infringement.  For at least this reason, ALJ Charneski held that Nanya’s process meets every element of claims 1 and 4, Powerchip’s process meets every element of claim 1, and Spansion’s process meets every element of claims 1, 3, and 4.  ALJ Charneski additionally stated that the accused processes of Jazz and Tower met every element of claim 1.

Invalidity

According to the ID, in late October 1985, an IBM research team signed an invention disclosure form (”IDF”) that eventually led to the issuance of U.S. Patent No. 5,760,475.  The IDF included a “Process A” that depicts “a glue layer in which a layer of titanium is sputtered onto the surface and then thermal annealed in nitrogen (nitridized).”  Respondents asserted that “Process A”  anticipated claims 1, 3, and 4 of the ‘335 patent under 35 U.S.C. §102(g).

Complainants argued that IBM suppressed and concealed Process A “to gain a competitive edge over its rivals.”  ALJ Charneski rejected this argument.  He found that the seventeen month gap between the IDF and filing of a patent application was within the six to 24 month period IBM commonly took to review and file a patent application.  ALJ Charneski additionally noted that during the seventeen month gap, IBM continually worked to commercialize and improve part of the invention relating to the glue layer, and this additional work was described in the specification of the IBM ‘475 patent.

Complainants additionally argued that IBM’s Process A did not include all limitations of claim 1, because it did not disclose “depositing” a glue layer containing at least one nitride.   This argument, however, relied upon Complainant’s rejected construction argument that “depositing” not including “nitridization.”   ALJ Charneski further held that “Process A” anticipated dependent claims 3 and 4 of the ‘335 patent.

Domestic Industry

Complainants asserted that the ‘335 patent played a prominent role in their licensing activities, with an in-house licensing program (with employees across four states), substantial payments to outside counsel and consultants, and substantial royalty revenue.  Respondents challenged the alleged nexus between the ‘335 patent and Complainants’ licensing activities, and demanded that Complainants “break out or account for expenditures specifically for the ‘335 patent.”  ALJ Charneski noted an absence of any authority requiring Complainants to separately break out expenses to show a nexus.  He agreed with the Complainant and the Commission Investigative Staff that a sufficient nexus between the ‘335 and substantial licensing activities had been shown, and that the domestic industry requirement was satisfied.

Please see our November 30, 2009, January 22, 2010, and January 29, 2010 posts for more details about this investigation.

On January 29, 2010, the International Trade Commission issued a notice determining to review in part ALJ Robert K. Rogers, Jr.’s October 14, 2009 initial determination (“ID”) finding no violation of Section 337 in Certain Semiconductor Integrated Circuits and Products Containing Same (Inv. No. 337-TA-665).  The Commission determined to take no position on one issue, and to terminate the investigation with a finding of no violation.

By way of background, and as explained in our October 19, 2009 post, the Complainant in this investigation is Qimonda AG (“Qimonda”) and the Respondents are LSI Corporation, Seagate Technology, Seagate Technology (US) Holdings, Inc., Seagate Technology LLC, Seagate Memory Products (US) Corporation, Seagate Technologies International (Singapore), and Seagate (US) LLC (collectively “Respondents”).  In the ID, ALJ Rogers held that there was no violation of Section 337 by Respondents.  Specifically, ALJ Rogers determined that none of the accused products literally infringed United States Patent Nos. 5,213,670 (“the ‘670 patent”), 5,646,434 (“the ‘434 patent”), and 5,851,899 (“the ‘899 patent”).  ALJ Rogers also determined that while certain claims of United States Patent No. 6,495,918 (“the ‘918 patent”) were literally infringed by certain products of Respondent LSI, no industry exists in the U.S. that exploits the ‘918 patent (or any of the asserted patents), as required by 19 U.S.C. § 1337(a)(2).  In addition, ALJ Rogers determined that certain claims of the ‘918 patent are invalid under 35 U.S.C. § 102 and that certain claims of the ‘434 patent are invalid under 35 U.S.C. § 102 or § 103.  Further, ALJ Rogers determined that the asserted claims of the ‘670 and ‘899 patents are valid and the patents are enforceable.

On October 27, 2009, Qimonda filed a petition for review of the ID with respect to the ‘434, ‘899, and ‘918 patents (but not the ‘670 patent).  On November 5, the Respondents and the ITC Staff filed responses to the petition.

The Commission determined to review the final ID in part “and to take no position on whether U.S. Patent No. 6,242,051 to Shinogi anticipates, under 35 U.S.C. § 102, any of the asserted claims of the ‘918 patent.”  The Commission determined not to review the remainder of the ID and thus terminated the investigation with a finding of no violation.

On January 28, 2010, ALJ Charles E. Bullock issued the public version of Order No. 29 (dated January 14, 2010) in Certain Flash Memory Chips and Products Containing the Same (Inv. No. 337-TA-664).

According to the Order, Complainants Spansion, Inc. and Spansion LLC (collectively, “Spansion”) moved to compel Respondents Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung International, Inc., Samsung Semiconductor, Inc., and Samsung Telecommunications America, LLC (collectively, “Samsung”) to produce certain documents, witnesses, information, and samples relating to the manufacture and programming of Samsung’s accused flash memory chips.

In particular, Spansion argued that Samsung failed to produce information, including documents and testimony, relating to the actual voltages applied to Samsung’s flash memory device cores during programming, which Spansion claimed was relevant to the issue of infringement.  Samsung disagreed, arguing that Spansion’s request was moot, and that Samsung had already provided or agreed to provide the requested information.  The Commission Investigative Staff (the “Staff”) supported Spansion’s motion.  ALJ Bullock agreed with the Staff that the information sought by Spansion appeared reasonably calculated to lead to the discovery of admissible evidence, but noted that since the filing of the motion, Samsung had produced additional responsive documents and samples, and supplemented its interrogatory responses.  Accordingly, ALJ Bullock granted Spansion’s motion as to documents relating to applied voltage to the extent that Samsung had not yet produced responsive documents.  ALJ Bullock denied as moot Spansion’s motion to compel testimony given that Spansion took the deposition of two engineers on topics relating to applied voltage since the filing of Spansion’s motion.

Spansion also argued that Samsung failed to produce samples of certain accused chips.  Samsung pointed out that it in fact produced some samples of its 35 nm chips and 42 nm chips, and that it “will notify the ALJ when it is able to” produce samples of its 32 nm chips.  Given the late stage of discovery, however, ALJ Bullock ordered Samsung to provide by January 25, 2010 a date by which samples of the 32 nm chips will be available.  As to the remaining chips, to the extent that Samsung had not yet complied, ALJ Bullock granted Spansion’s motion, and in particular ordered Samsung to either produce the requested samples or advise Spansion that the samples already produced are representative of specific other products.

Spansion further moved to compel the testimony of the 19 Samsung employees that it noticed who were identified during 30(b)(6) depositions as persons with relevant knowledge, which Samsung had refused to make available.  Samsung responded that Spansion provided no basis for noticing the depositions beyond the mere fact that the individuals were employees of Samsung.  The Staff stated that because Samsung’s witnesses thus far were unable or unwilling to discuss the actual duties of these individuals, the witnesses should be produced or information sufficient to show they were redundant or unnecessary should be produced.  ALJ Bullock agreed with Spansion and the Staff, and granted Spansion’s motion to compel with respect to the noticed witnesses, but “strongly encourage[d] the parties to work together to narrow down the number of people to be deposed.”

Finally, Spansion requested an on-site inspection of Samsung’s wafer fabrication lines and computer systems.  Samsung argued that such a request was unduly burdensome and harassing.  The Staff asserted that an on-site inspection could potentially resolve the issue of obtaining actual voltages by providing access to the actual production line, and that Samsung should be able to produce representative samples of wafers and thus avoid having to produce hundreds of samples.  However, the Staff agreed with Samsung that Spansion’s request for remote access to Samsung’s computer systems was “an extraordinarily burdensome and broad request and is not one often seen in ITC cases.”  Citing Commission Rule 210.30(a)(2) and Rule 210.27(b), ALJ Bullock found that Spansion’s request was reasonable and likely to lead to the discovery of admissible evidence, but he was not convinced that Spansion needed remote access to Samsung’s computer systems, finding such access unduly burdensome.  Thus, ALJ Bullock granted Spansion’s motion with respect to on-site inspection, but denied it with respect to remote access to Samsung’s computer systems.  Noting the disruption that Spansion’s request would likely cause Samsung’s normal course of business, ALJ Bullock ordered Spansion to pay for the costs and expenses incurred by Samsung and its counsel with respect to the inspection, including all costs and expenses incurred in closing Samsung’s commercial fabrication facilities for a limited inspection.

On February 1, 2010, ALJ E. James Gildea issued Order No. 1: Protective Order; and Order No. 2: Notice of Ground Rules and Setting Target Date and Date for Submission of Proposed Procedural Schedule in Certain Electronic Devices, Including Mobile Phones, Portable Music Players, And Computers (Inv. No. 337-TA-701).

In Order No. 2, ALJ Gildea set May 31, 2011 as the target date for completion of the investigation (which is 16 months after institution of the investigation).  Also, any final initial determination is due to be issued in the investigation no later than January 31, 2011.

In the Order, ALJ Gildea directed the parties to submit discovery statements and proposed procedural schedules by March 8, 2010.  Regarding proposed procedural schedules, ALJ Gildea furnished the parties in the Order with a sample schedule, which includes proposed events to take place during the course of the investigation.  In this regard, ALJ Gildea noted in the Order that “the proposed schedule provides dates for the submission of proposed claim constructions for disputed claim terms.  Absent a showing of good cause, the parties will be bound by their proposed constructions for disputed claim terms on the date the joint submission of disputed claim terms is due.”  ALJ Gildea further noted that the “parties may submit proposals before March 30, 2010, with their comments as to whether a Markman hearing at least two months in advance of the hearing would be useful in resolving disputed claim terms.”

Order No. 2 also includes ALJ Gildea’s ground rules for the investigation.

On January 28, 2010, ALJ E. James Gildea issued the public version of Order No. 12 (dated January 8, 2010) in Certain Video Displays, Components Thereof, and Products Containing Same (Inv. No. 337-TA-687) granting Complainant LG Electronics, Inc.’s (“LGE”) motion for leave to file a second amended complaint and amend the Notice of Investigation.  Through its motion, LGE sought to add two additional respondents to the Investigation, AmTran Technology Co. Ltd. and AmTran Logistics, Inc. (collectively “AmTran”).

In support of its motion, LGE asserted that good cause existed to grant its motion because “through discovery conducted in this Investigation [LGE] has gained new knowledge and confirmed information about AmTran’s involvement with the importation, sale for importation, and sale within the United States after importation of products accused in this Investigation.”  Additionally, LGE asserted that adding AmTran as respondents “would reduce the need to conduct third-party discovery, aid in developing a more complete record, and afford it effective relief.”  The Commission Investigative Staff (“Staff”) filed a response in support of LGE’s motion citing the same reasons as LGE, including the assertion that AmTran “appears to have the most detailed technical understanding of the Vizio accused products.”

Respondent Vizio and AmTran filed responses opposing LGE’s motion.  Both Vizio and AmTran asserted that LGE failed to demonstrate that its proposed amendment was based on information that was not known to LGE prior to the institution of the Investigation and “that amending the complaint at this juncture would prejudice both the named and proposed respondents, as well as, the public.”  Further, they asserted that LGE’s motion was procedurally defective.

In the Order, ALJ Gildea stated that leave to amend the complaint may be granted “for good cause shown and upon such conditions as are necessary to avoid prejudicing the public interest and the rights of the parties to the investigation.”  Regarding the showing of good cause, ALJ Gildea determined that good cause existed to amend the complaint because LGE demonstrated that its motion was based on information that was obtained through discovery after the institution of the Investigation.  ALJ Gildea noted that motions similar to LGE’s have been granted when the complainant obtains previously unknown information after the institution of the investigation or “receives information during discovery that confirms information available to the complainant prior to the institution.”  Regarding the issue of prejudice, ALJ Gildea found that joining AmTran “would simplify the discovery process by avoiding the use of the third party subpoena process” and “promote judicial efficiency and conserve Commission resources by alleviating the need for LGE to file a separate Section 337 complaint directed to AmTran on the very same patents and products.”  ALJ Gildea determined that any prejudice in joining AmTran at this time “should be minimal” in view of the close relationship between AmTran and Respondent Vizio, Inc. and the fact that “discovery taken by Vizio should be equally relevant and meaningful to AmTran.”  Further, ALJ Gildea also noted that given the fact that AmTran Technologies Co. Ltd. is outside the scope of the Commission’s subpoena power and given AmTran’s involvement in the “design, manufacture and importation into the United States of the accused products,” joining AmTran may be necessary to obtain complete discovery and “to afford LGE an opportunity for complete and effective relief should a violation of Section 337 be found.”  Thus, ALJ Gildea granted LGE’s motion.

On January 28, 2010, ALJ Robert K. Rogers, Jr. issued Order No. 35 in Certain Bulk Welding Wire Containers and Components Thereof and Welding Wire (Inv. No. 337-TA-686).  In the Order, ALJ Rogers denied Complainants The Lincoln Electric Company and Lincoln Global, Inc.’s (collectively, “Lincoln”) motion to compel Respondent Sidergas SpA (“Sidergas”) to respond to Lincoln’s Interrogatory Nos. 33-36.

In its motion, Lincoln stated that Sidergas had taken the position that it was not obligated to respond to Lincoln’s Interrogatory Nos. 33-36 because Lincoln had already exceeded the maximum number of interrogatories allowed under the Ground Rules to the investigation.  Lincoln argued that Sidergas’s position was unreasonable because Sidergas was attempting to count every interrogatory subpart as a separate interrogatory.

In its opposition, Sidergas cited to Ground Rule 4.5 — which limited each party to 175 interrogatories — and argued that Lincoln had violated the rule by already serving over 370 discrete interrogatories before counting Interrogatory Nos. 33-36.  Sidergas further argued that Lincoln had violated the Ground Rules by failing to make an intensive good faith effort to resolve the discovery dispute before filing its motion to compel.  The Commission Investigative Staff (“Staff”) agreed with Sidergas on this latter argument, and filed an opposition to Lincoln’s motion arguing that Lincoln had failed to make an intensive good faith effort to resolve the dispute.  However, the Staff took no position on Sidergas’s argument that Lincoln had already exceeded the maximum number of interrogatories allowed under the Ground Rules.

Lincoln filed a reply to address the assertion that it had failed to make an intensive good faith effort to resolve the dispute.  In the reply, Lincoln stated that the parties had addressed Sidergas’s failure to answer the interrogatories at a December 23, 2009 Discovery Committee meeting, and that that discussion had resulted in an agreement that the parties had reached an impasse.  Lincoln further stated that it had notified the parties that it would be moving to compel interrogatory responses on December 29, 2009, and that it had filed its motion on January 4, 2010.

ALJ Rogers found that Lincoln had complied with the requirement of making an intensive good faith effort to resolve the discovery dispute, but that Sidergas was not required to respond to Lincoln’s Interrogatory Nos. 33-36 because Lincoln had already served 190 discrete interrogatories, thereby exceeding the 175 interrogatory limit set forth in the Ground Rules.  In particular, ALJ Rogers first found that some of Lincoln’s numbered interrogatories, e.g. on claim construction, non-infringement, and invalidity, actually consisted of six separate interrogatories because Lincoln was asserting six patents against Sidergas in the investigation.  ALJ Rogers also found that certain interrogatories regarding alleged prior art bulk wire containers needed to be counted as fourteen separate interrogatories — one interrogatory for each of the fourteen different containers alleged to be prior art.  Finally, ALJ Rogers found that some interrogatories needed to be counted as two separate interrogatories, because two of the fourteen prior art bulk wire containers were addressed in those interrogatories.  Through these calculations, ALJ Rogers found that Lincoln had already served 190 interrogatories.  Since this exceeded the 175 interrogatory limit set forth in the Ground Rules, Sidergas was not required to respond to Lincoln’s Interrogatory Nos. 33-36, and ALJ Rogers denied Lincoln’s motion to compel.