On July 18, 2014, Chief ALJ Charles E. Bullock issued Order No. 6 in Certain Archery Products and Related Marketing Materials (Inv. No. 337-TA-919).

By way of background, this investigation is based on a May 9, 2014 complaint filed by Bear Archery, Inc. and SOP Services, Inc. alleging violation of Section 337 in the importation into the U.S. and sale of certain archery products that infringe one or more claims of U.S. Patent Nos. RE38,096, 6,978,775, and 7,226,375, and related marketing materials that infringe U.S. Trademark Reg. No. 2,501,255 for the mark WHISKER BISCUIT ARROW REST and U.S. Trademark Reg. No. 3,312,392 for the mark WHISKER BISCUIT.  See our May 12, 2014 post for more details on the complaint and our June 12, 2014 post for more details on the Notice of Investigation.   

In the Order, ALJ Bullock set September 16, 2015 as the target date for completing the investigation (which is approximately fifteen months after institution of the investigation).  In addition, ALJ Bullock directed the parties to submit proposed procedural schedules by August 8, 2014.

On July 10, 2014, the International Trade Commission (“the Commission”) issued the public version of its opinion in Certain Cases For Portable Electronic Devices (Inv. Nos. 337-TA-867/861).

By way of background, the Commission instituted Inv. No. 337-TA-861 based on a complaint filed by Speculative Product Design, LLC (“Speck”) alleging violations of Section 337 by reason of infringement of various claims of U.S. Patent No. 8,204,561 (the ‘561 patent) by several respondents.  See our November 16, 2012 post for more details.  The Commission instituted Inv. No. 337-TA-867 based on a second complaint filed by Speck alleging violations of Section 337 by reason of infringement of various claims of the ‘561 patent by additional respondents.  See our January 29, 2013 post for more details.  The two investigations were consolidated on January 31, 2013.  All of the respondents that participated in the consolidated investigation were terminated from the investigation based upon consent order stipulations, settlement agreements, or withdrawal of the complaint. 

On August 19, 2013, Speck filed a motion for summary determination that it has satisfied the domestic industry requirement under Sections 337(a)(3)(A), (B), and (C) (not including licensing).  The Commission Investigative Staff (“OUII”) filed a response in support of Speck’s motion.  On September 10, 2013, ALJ Pender issued an ID granting Speck’s motion in part, finding that Speck established a domestic industry for the ‘561 patent under Section 337(a)(3)(C).  See our October 30, 2013 post for more information.  On November 15, 2013, Speck filed a motion for summary determination with respect to defaulting respondents.  OUII filed a response in support of Speck’s motion and on February 21, 2014, ALJ Pender issued the final ID granting the motion and recommending the issuance of a general exclusion order (“GEO”) and the imposition of a bond of 100 percent of entered value during the Presidential review period.  See our March 11, 2014 post for more details on the public version of this ID.  On April 8, 2014, the Commission issued a notice of its determination not to review ALJ Pender’s finding of violation, and solicited submissions on remedy, the public interest, and bonding. 

General Exclusion Order

According to the Opinion, the Commission determined that the requirements for issuing a GEO under Section 337(d)(2)(A) and (d)(2)(B) had been met.  With respect to prong (a) “prevent[ing] circumvention” of a limited exclusion order (“LEO”), the Commission found that the defaulting respondents customarily engage in business practices that necessitated a GEO in order to prevent the circumvention of an LEO.  Specifically, the Commission noted that the respondents could easily circumvent an LEO by selling infringing goods online.  Additionally, the Commission found that, as the barrier to entering the protective case manufacturing market is low and foreign manufacturing operations can change their names and distribution patterns, respondents have, or are capable of, changing their names, facilities, or corporate structures to avoid detection.  The Commission found that Speck also met its burden to show that issuing a GEO is necessary because the evidence showed a widespread pattern of infringement by respondents and non-respondents and because it is difficult to identify the source of the infringing products.  Accordingly, the Commission adopted ALJ Pender’s recommendation and determined to issue a GEO in this investigation.  Under the GEO, cases for portable electronic devices covered by claims 4, 5, 9, and 11 of the ‘561 patent are excluded from entry into the United States for consumption, entry for consumption from a foreign-trade zone, or withdrawal from a warehouse for consumption, for the remaining term of the ‘561 patent, except under license of the patent owner or as provided by law.

According to the Opinion, terminated Respondent Superior Communications, Inc. (“Superior”) filed a submission stating that if the Commission issued a GEO, it should “either (i) exempt the products imported by and for Superior from the scope of the order, or (ii) include a provision enabling third parties such as Superior to certify that their products do not infringe Speck’s ‘561 Patent.”  Specifically, Superior argued that ALJ Pender’s termination of Superior due to Speck’s motion to withdraw the complaint and terminate the investigation as to Superior based on Superior ceasing to import the accused DualTek line of cases had deprived Superior of its ability to offer its defense at the Commission.  Superior also noted that during a conference call with ALJ Pender it requested that ALJ Pender provide a carve-out for Superior’s products in his recommended remedy, and that ALJ Pender rejected this request.  

Speck filed a reply submission urging the Commission to reject Superior’s request for a carve-out because: (1) the exemption sought by Superior is overbroad and would permit Superior to import infringing products of its own; (2) the exemption would impermissibly include products that Superior concealed from Speck during the investigation; (3) Superior did not seek review of the ALJ’s ID terminating Superior from the investigation; (4) Superior will not be prejudiced by a GEO because Superior has twice previously challenged the validity of the ‘561 patent and lost before the Patent Office; and (5) Customs can readily identify infringing products, including those that Superior may attempt to import, and that existing procedural safeguards prevent seizure of noninfringing product. 

OUII also filed a reply submission contending that the Commission should not provide a carve-out for Superior’s products.  OUII argued that Superior had not established compelling facts or cited to legal precedent to support its request for a “carve-out.”  OUII, however, did recommend that the Commission include a certification provision to provide Customs and third parties with the ability to certify that their products are noninfringing, which would reduce the burden on Customs when it is not immediately clear whether an imported product infringes the ‘561 patent.

The Commission declined to include a carve-out provision for Superior’s products finding that Superior had not shown that a carve-out was necessary or appropriate.  The Commission noted that the Commission’s rules provide procedures that allowed Superior to contest ALJ Pender’s ruling terminating Superior from the investigation, but that Superior failed to use these established procedures and therefore waived its right to challenge ALJ Pender’s ruling.  The Commission also decided to include a certification provision in the GEO in order to reduce the burden on Customs in enforcing the GEO and to alleviate concerns that noninfringing products will be prevented from entering the United States. 

The Public Interest

According to the Opinion, Speck argued that none of the public interest factors warranted denying a GEO.  Speck also noted that no party raised any public interest concerns during the investigation.  The IA also determined that a GEO would have a minimal impact on competitive conditions in the U.S. economy and the production of like or directly competitive articles in the United States. 

The Commission found, based on the evidence of record, that issuing a GEO would not harm the public interest.  The Commission noted that there is no evidence that Speck and its legitimate competitors cannot meet the domestic demand for protective cases and that the record does not indicate that issuing a GEO would have any potential adverse impact on the public health and welfare, competitive conditions in the U.S. economy, or U.S. production. 

Bond

According to the Opinion, ALJ Pender recommended that if the Commission imposed a remedy following a finding of violation, it should set the bond in the amount of 100 percent of the entered value during the Presidential review period.  The Commission agreed with ALJ Pender’s recommendation, noting that the pricing variability, along with the number of accused products, made it difficult to reliably compare the price of the infringing products to the price of Speck’s domestic industry products.  The Commission noted that when it is difficult or impossible to calculate a bond based on price differentials, particularly where respondents have failed to provide discovery, the Commission has set the bond in the amount of 100 percent of the entered value of the infringing product.  Accordingly the Commission determined to set the bond in the amount of 100 percent of the entered value of infringing cases for portable electronic devices during the Presidential review period.

On July 16, 2014, Enterprise Systems Technologies S.a.r.l. of Luxembourg (“Enterprise”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that the following entities (collectively, the “Proposed Respondents”) unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain communications or computing devices and components thereof that infringe one or more claims of U.S. Patent Nos. 7,454,201 (the ‘201 patent); 6,594,366 (the ‘366 patent); 6,691,302 (the ‘302 patent); and 5,870,610 (the ‘610 patent) (collectively, the “asserted patents”):

• Apple Inc. of Cupertino, California
• Cirrus Logic Inc. of Austin, Texas
• HTC Corporation of Taiwan
• HTC America, Inc. of Bellevue, Washington
• LG Electronics, Inc. of Korea
• LG Electronics U.S.A., Inc. of Englewood Cliffs, New Jersey
• LG Electronics MobileComm U.S.A., Inc. of San Diego, California
• Samsung Electronics Co., Ltd. of Korea
• Samsung Electronics America, Inc. of Ridgefield Park, New Jersey
• Samsung Telecommunications America, L.L.C. of Richardson, Texas

According to the complaint, the asserted patents relate generally to messaging, telephony, communication, computing, and network technology.  More specifically, the ‘302 patent is directed to an improved interface for native operating systems to operate with programs using non-native programming languages.  The ‘610 patent is directed to a system for autoconfiguration of new software of devices added to a system.  The ‘366 patent describes a combined telephone and music player that share a jack.  The ‘201 patent is directed to a system for sending instant messages to mobile stations of other users without knowing the user’s mobile number, based on other unique identifiers (such as a user name).

In the complaint, Enterprise states that the Proposed Respondents import and sell smartphones, tablet computers, media players, laptop computers, and other products that infringe the asserted patents.  The Complaint refers specifically to the Samsung Galaxy S5, Apple iPhone 5S, Apple Macbook Air, HTC Once M8, and LG Nexus 5 as exemplary products. 

Regarding domestic industry, Enterprise states that Microsoft Corporation (“Microsoft”) is licensed to practice the asserted patents, and thus Enterprise relies on Microsoft’s activities to meet both the technical and economic prongs of the domestic industry requirement.  According to the Complaint, Microsoft makes substantial domestic investments in connection with its Surface 2 tablet computer and Surface Pro 2 tablet computer.  Both Surface devices are alleged to practice each of the asserted patents.  Enterprise states that Microsoft’s revenue derived from the Surface devices was $839 million in the second quarter of fiscal year 2014, and details Microsoft’s substantial investments in property, equipment, labor, capital, research, and development in the United States. 

As to related litigation, Enterprise states that each of the four patents has been asserted against Apple, Inc. and Cirrus Logic Inc. in the U.S. District Court for the District of Delaware in two separate suits.  These four patents have also been asserted in three suits against the HTC entities, the Samsung entities, and the LG entities in the U.S. District Court for the Eastern District of Texas.

With respect to potential remedy, Complainants request that the Commission issue a limited exclusion order and permanent cease and desist orders directed at Proposed Respondents in relation to the accused products.

On July 10, 2014, ALJ Theodore R. Essex issued the public version of Order No. 21 (dated June 19, 2014), denying multiple motions for summary determination filed by Respondents Federal-Mogul Corporation and Federal-Mogul SA (collectively, “Federal-Mogul”) in Certain Windshield Wipers and Components Thereof (Inv. No. 337-TA-902).

By way of background, this investigation is based on an October 21, 2013 complaint filed by Trico alleging violation of Section 337 in the importation into the U.S. and sale of certain windshield wipers and components thereof that infringe one or more claims of U.S. Patent Nos. 6,836,925 and 6,799,348.  See our October 22, 2013 and November 25, 2013 posts for more details on the complaint and the Notice of Investigation, respectively.

According to the Order, Federal-Mogul filed a motion seeking summary determination as to non-infringement of U.S. Patent No. 6,836,925 (the ‘925 patent).  After reviewing the parties’ motion papers in support of and in opposition to the motion, ALJ Essex found that issues of material fact exist that prevent a finding of summary determination.

Additionally, Federal-Mogul filed a motion for summary determination that Complainant Trico Products Corporation (“Trico”) is estopped from asserting that “compound curvature” in claim 5 of the ‘925 patent meant anything other than “curved in two or more planes.”  ALJ Essex noted that this motion was moot as claim 5 of the ‘925 patent was terminated from the investigation by ALJ Essex’s earlier issued Order No. 10 that terminated, inter alia, claim 5 of the ‘925 patent from the investigation.

Federal-Mogul also submitted a motion for summary determination that Trico is estopped from rewriting the formula found in claims 1 and 15 of the ‘925 patent.  After reviewing the parties’ motion papers in support of and in opposition to the motion, ALJ Essex found that issues of material fact exist that prevent a finding of summary determination.

According to the Order, Federal-Mogul further submitted a motion for summary determination that Trico surrendered any wiper whose support structure has a cross-sectional profile and whose perimeter is not completely encapsulated from any arguable scope of protection during prosecution of the ‘925 patent.  After reviewing the parties’ motion papers in support of and in opposition to the motion, ALJ Essex found that issues of material fact exist that prevent a finding of summary determination.

Lastly, Federal-Mogul submitted a motion for summary determination that Trico surrendered all “space formations” that fail to permit bending and flexing of the beam and all “claws” that fail to permit longitudinal movement of the beam relative to the coupler during prosecution.  After reviewing the parties’ motion papers in support of and in opposition to the motion, ALJ Essex found that issues of material fact exist that prevent a finding of summary determination.

On July 11, 2014, ALJ David P. Shaw issued Order Nos. 23 and 24 in Certain Standard Cell Libraries, Products Containing or Made Using the Same, Integrated Circuits Made Using the Same, and Products Containing Such Integrated Circuits (Inv. No. 337-TA-906).

According to Order No. 23, non-party James H. Hogan filed a motion to quash and/or limit the subpoena duces tecum and ad testificandum issued upon request by respondents Taiwan Semiconductor Manufacturing Co., Ltd. and TSMC North America (collectively, “TSMC”).  Mr. Hogan argued that he was subject to the “apex deposition rule, which protects such executives from depositions when the executive has no unique first-hand knowledge of the facts of the case, or where the testimony would be repetitive.”  Accordingly, Mr. Hogan argued that he had limited knowledge of the facts at issue, no unique, first-hand knowledge relevant to any claims or defenses, and that TSMC did not exhaust other less intrusive discovery methods to get the information it seeks.  Mr. Hogan further argued that the subpoena’s definition of “Related Tela Patents” should be limited.  In opposition, TSMC asserted that Mr. Hogan has unique, first-hand knowledge of Complainant Tela Innovations Inc. (“Tela”) because he was one of the co-founders and is directly involved in Tela’s business decisions.

ALJ Shaw determined that Mr. Hogan was subject to the apex deposition rule and that TSMC failed to prove that his deposition is necessary.  Specifically, ALJ Shaw held that “TSMC has not established that Mr. Hogan has relevant information that could not be obtained from the other founders of Tela, or from other persons included on the emails and other communications attached as exhibits to TSMC’s opposition papers.”  As to Mr. Hogan’s request to limit the subpoena’s definition of “Related Tela Patents,” ALJ Shaw denied this request.  Accordingly, ALJ Shaw granted-in-part Mr. Hogan’s Motion.

According to Order No. 24, non-parties Rajiv Bhateja, Jacob Jacobsson, and Martine Penilla Group (“MPG”) (collectively, “movants”) filed a motion to quash subpoenas duces tecum and ad testificandum issued upon request by TSMC.  In opposition, TSMC argued that both Mr. Bhateja and Mr. Jacobsson had information relevant to TSMC’s defenses because the men were vice president and CEO, respectively, at Blaze DFM, Inc. (“Blaze”) and that Tela acquired Blaze’s assets in 2009, including the patents asserted in this investigation.  TSMC further argued that MPG possessed relevant information because MPG is Tela’s patent prosecution firm, and prosecuted the patents at issue in this investigation.  In support of the motion, movants argued that neither Mr. Bhateja nor Mr. Jacobsson were with Blaze when the inventors invented the claims of the asserted patents.  Additionally, MPG argued that their “email repository contains numerous privileged and confidential communications with clients other than Tela,” and that “TSMC’s subpoena would require MPG to either turn over its entire email repository containing these privileged communications to an outside vendor and its attorneys in this Investigation, or review and produce emails on its own.”

ALJ Shaw determined that Messrs. Bhateja and Jacobsson are in possession of information relevant to issues raised in this investigation based on their previous employment at Blaze.  As to MPG, ALJ Shaw held that MPG must produce the requested documents because “[t]he fact that MPG will have to perform screens for relevance and privilege before producing documents responsive to the subpoenas is not a reason to quash those subpoenas.”  ALJ Shaw also rejected movant’s request to limit the definitions of certain terms.  ALJ Shaw held that the definitions were not overly broad.  Accordingly, ALJ Shaw denied movant’s Motion.

On July 15, 2014, ALJ Dee Lord issued Order No. 3 in Certain Integrated Circuits and Products Containing the Same (Inv. No. 337-TA-920).

By way of background, this investigation is based on a May 12, 2014 complaint filed by Freescale Semiconductor, Inc. alleging violation of Section 337 in the importation into the U.S. and sale of certain integrated circuits and products containing the same that infringe one or more claims of U.S. Patent Nos. 5,962,926; 7,158,432; 7,230,505; 7,518,947; 7,626,276; and 7,746,716.  See our May 14, 2014 and July 1, 2014 posts for more details on the complaint and Notice of Investigation, respectively.   

According to Order No. 3, ALJ Lord set November 2, 2015 as the target date for completing the investigation (which is approximately sixteen months after institution of the investigation).  In addition, ALJ Lord noted that the Initial Determination on alleged violation of Section 337 will be issued on July 2, 2015.

On July 7, 2014, ALJ E. James Gildea issued Order No. 64 in Certain Integrated Circuit Devices and Products Containing the Same (Inv. No. 337-TA-873).

By way of background, the investigation is based on a complaint filed by Complainant Tela Innovations, Inc. (“Tela”) alleging violation of Section 337 in the importation into the U.S. and sale of certain integrated circuit devices and products containing the same that infringe one or more claims of U.S. Patent Nos. 8,264,049; 8,264,044; 8,258,550; 8,258,547; 8,217,428; 8,258,552; and/or 8,030,689.  See our February 11, 2013 and March 14, 2013 posts for more details on the complaint and the Notice of Investigation, respectively.

In the Order, Respondents filed a motion seeking non-monetary sanctions against Tela for failure to fully comply with Order No. 26, which required Tela to provide an affirmative statement of the date Tela first became aware of inventorship issues with respect to two of the asserted patents.  See our September 30, 2013 post for more information about ALJ Gildea’s ruling in Order No. 26.  Accordingly, Respondents sought a finding that Tela knew at the time the Complaint was filed that it did not own two asserted patents, which they say would mandate a finding of unclean hands.

ALJ Gildea held that Tela’s response was not made in bad faith, such that a finding of sanctions was appropriate.  Specifically, ALJ Gildea held that “[Tela’s] response, while not precisely what was ordered in Order No. 26, sufficiently shows here that [Tela] sought to comply to the extent it felt able.”  Accordingly, ALJ Gildea denied Respondents’ motion.

On July 3, 2014, the International Trade Commission (“the Commission”) issued the public version of its opinion in Certain Compact Fluorescent Reflector Lamps, Products Containing Same and Components Thereof (Inv. No. 337-TA-872).

By way of background, the investigation is based on a complaint filed by Andrzej Bobel and Neptun Light, Inc. (collectively, “Neptun”) alleging violation of Section 337 in the importation into the U.S. and sale of certain compact fluorescent reflector lamps (“reflector CFLs”), and products and components containing same, that infringe claims 1, 2, 10, and 11 of U.S. Patent No. 7,053,540 (the ‘540 patent).  See our January 30, 2013 and March 1, 2013 posts for more details on Neptun’s complaint and the Notice of Investigation, respectively.  On February 3, 2014, ALJ Shaw determined that Respondents Maxlite, Inc.; Satco Products, Inc.; and Litetronics International, Inc.’s (collectively, “Respondents”) importation and sale of certain reflector CFLs infringed asserted claims 1, 2, 10, and 11.  See our March 14, 2014 post for more details on the public version of the ID.  On April 8, 2014, the Commission issued a notice determining to review ALJ Shaw’s findings on the construction of “mating opening,” infringement, and the economic prong of the domestic industry requirement.  See our April 10, 2014 post for more details on the notice.

According to the Opinion, the Commission determined that the term “mating opening” needs no construction and should be given its plain and ordinary meaning. ALJ Shaw construed the term to mean “an area of the light source base (i.e., the portion through which the light source is inserted) is located,” which the Commission rejected as effectively eliminating the “mating opening” limitation.  As an initial matter, the Commission found that the “mating” portion of the term was not in dispute and, therefore, did not need to be construed.  As to the “opening” portion of the term, the Commission held that the term is a common and easily understood term. Additionally, the Commission determined that the term did not have a special meaning to those of ordinary skill in the art in the field of the ‘540 patent.  Accordingly, the Commission held that “opening” needs no construction, and should be given its plain and ordinary meaning.

The Commission reversed ALJ Shaw’s infringement determination, holding that Respondents products do not infringe the ‘540 patent either literally or under the doctrine of equivalents.  Specifically, the Commission determined that Respondents’ products do not satisfy the “mating opening,” “said base being inside said defined cavity of said reflector and located inside said mating opening,” “first circumferential flange of the reflector cavity,” and “second circumferential flange of the light source base” limitations.

As to the economic prong of the domestic industry requirement, the Commission took no position on the issue of whether Neptun satisfied the economic prong of the domestic industry requirement.

Accordingly, the Commission determined that Neptun failed to prove a violation of Section 337.

On July 9, 2014, ALJ David P. Shaw issued Order No. 44 denying Respondents’ motion for summary determination of no infringement at the time of importation in Certain Multiple Mode Outdoor Grills and Parts Thereof (Inv. No. 337-TA-895).

By way of background, this investigation is based on a complaint filed by A&J Manufacturing, LLC and A&J Manufacturing, Inc. (collectively, “A&J”) alleging violation of Section 337 by several respondents in the importation and sale of certain multiple mode outdoor grills and parts thereof that infringe one or more claims of U.S. Patent Nos. 8,381,712 (the ‘712 patent), D660,646 and D662,773.  See our August 22, 2013 and September 23, 2013 posts for more details on the complaint and notice of investigation, respectively.

According to the Order, Respondents Char-Broil, LLC; Rankam Metal Products Manufactory Limited, USA, Zhejiang Fudeer Electric Appliance Co., Ltd.; Outdoor Leisure Products, Inc.; Academy Ltd. (d/b/a Academy Sports + Outdoors); Ningbo Huige Outdoor Products Co., Ltd.; GHP Group, Inc.; and The Brinkmann Corporation (the “Moving Respondents”) filed a motion for summary determination of no infringement at the time of importation.  A&J and the Commission Investigative Attorney filed responses opposing the motion.

In support of their motion, the Moving Respondents primarily relied on the Federal Circuit’s vacated opinion in Suprema v. ITC, 742 F.3d 1350 (Fed. Cir. 2013).  Specifically, the Moving Respondents argued that A&J could not establish that any of the accused products infringe any of the claims of the ‘712 patent at the time of importation since the accused products were imported in an unassembled state and thus required assembly after importation.  In the Order, ALJ Shaw noted as a threshold matter that the Federal Circuit ordered rehearing en banc and vacated the panel’s decision in Suprema on the same day that the Moving Respondents filed their instant motion.  ALJ Shaw further noted that an unassembled device may be found to infringe.  In any event, ALJ Shaw held that genuine issues of material fact exist and thus denied the Moving Respondents motion.

On July 14, 2014, ALJ David P. Shaw issued a notice of the Initial Determination (“ID”) (dated July 11, 2014) in Certain Crawler Cranes and Components Thereof (Inv. No. 337-TA-887).

By way of background, this investigation is based on a June 12, 2013 complaint filed by Complainant Manitowoc Cranes, LLC (“Manitowoc”) alleging violation of Section 337 by Respondents Sany Heavy Industry Co., Ltd. and Sany America, Inc. in the importation into the U.S. and sale of certain crawler cranes and components thereof that infringe one or more claims of U.S. Patent Nos. 7,546,928 (the ‘928 patent) and 7,967,158, and that were designed and manufactured using Manitowoc Cranes’ misappropriated trade secrets.  See our June 14, 2013 and July 15, 2013 posts for more details on the complaint and Notice of Investigation, respectively. 

According to the notice, ALJ Shaw determined that a violation of Section 337 has been found in this investigation.  Specifically, ALJ Shaw determined that Manitowoc demonstrated  (i) that “certain accused products infringe claims of the ‘928 patent,” and (ii) “misappropriation of certain asserted trade secrets.”

The notice issued by ALJ Shaw released only limited information.  We will provide additional information once the public version of the ID issues in its entirety.