Further to our April 7, 2014 post, on April 10, 2014, the International Trade Commission (the “Commission”) issued the public version of its opinion finding a violation of Section 337 in Certain Digital Models, Digital Data, and Treatment Plans for Use in Making Incremental Dental Positioning Adjustment Appliances, the Appliances Made Therefrom, and Methods of Making the Same (Inv. No. 337-TA-833).

By way of background, the Complainant in this investigation is Align Technology, Inc. (“Align”), and the Respondents are ClearCorrect Operating, LLC (“CCUS”) and ClearCorrect Pakistan (Private), Ltd. (“CCPK”) (collectively, “Respondents”).  The asserted patents are U.S. Patent Nos. 6,217,325 (the ‘325 patent), 6,722,880 (the ‘880 patent), 8,070,487 (the ‘487 patent), 6,471,511 (the ‘511 patent), 6,626,666 (the ‘666 patent), 6,705,863 (the ‘863 patent), and 7,134,874 (the ‘874 patent) (collectively, the “asserted patents”).

On May 6, 2013, former ALJ Robert K. Rogers, Jr. issued an Initial Determination (“ID”) in the investigation.  In the ID, ALJ Rogers found that Respondents had violated Section 337 with respect to the ‘325, ‘880, ‘487, ‘511, ‘863, and ‘874 patents.  However, the ALJ found no violation with respect to the ‘666 patent.  The ALJ also recommended the issuance of cease and desist orders directed to Respondents.  See our June 24, 2013 post for more details on the ID.

On July 25, 2013, the Commission determined to review the ID in its entirety and requested briefing on the issues on review and on remedy, the public interest, and bond.  The Commission then extended the target date for completion of the investigation on four separate occasions, first to November 1, 2013, then to January 17, 2014, then to March 21, 2014, and finally to April 3, 2014.  As part of the third such extension, the Commission requested additional briefing from the parties and the public.  See our January 27, 2014 post for more details.

In the opinion, the Commission determined to affirm-in-part, modify-in-part, and reverse-in-part the ID and to find a violation of Section 337.  In particular, the Commission affirmed the ALJ’s conclusion that the accused products are “articles” within the meaning of Section 337(a)(1)(B) and that the mode of bringing the accused products into the U.S. constitutes importation of the accused products into the U.S. pursuant to Section 337(a)(1)(B).  The Commission further determined to find a violation of Section 337 with respect to (i) claims 1 and 4-8 of the ‘863 patent; (ii) claims 1, 3, 7, and 9 of the ‘666 patent; (iii) claims 1, 3, and 5 of the ‘487 patent; (iv) claims 21, 30, 31, and 32 of the ‘325 patent; and (v) claim 1 of the ‘880 patent.  The Commission also determined to issue cease and desist orders directed to the Respondents, with an exemption for activities related to treatment of existing patients in the U.S. 

“Importation … of Articles”

As a threshold issue, the Commission addressed whether Respondents’ electronic transmissions of digital data sets constitute “importation of … articles” within the meaning of Section 337.  In particular, Respondents argued that the digital data sets representing the initial, intermediate, and final positions of patients’ teeth are not “articles” within the meaning of Section 337(a)(1)(B).  Moreover, Respondents argued that because the accused data sets are brought into the U.S. by CCPK by uploading them to CCUS’s server in Houston, Texas, this mode of bringing the accused products into the U.S. is not an importation into the U.S. under Section 337(a)(1)(B).  

In addressing this question, the Commission acknowledged that the term “articles” is not expressly defined in the statute.  However, the Commission found that the statutory construction of “articles” that is most consistent with the overall language of the statute and that implements the avowed Congressional purpose of Section 337 encompasses within its scope the electronic transmission of the digital data sets at issue in the investigation.  The Commission found that the legislative history of Section 337 indicates that the statute’s purpose is to prevent every type of unfair act in connection with imported articles (assuming consistency with the public interest) and to strengthen protection of intellectual property rights.  Accordingly, in order to faithfully carry out this purpose, the Commission found that it could not limit the definition of “articles” in the manner proposed by Respondents.  Rather, the Commission concluded that the statutory phrase “importation … of articles” should be construed to include electronic transmission of digital data, as in the instant investigation.

Claim Construction

ALJ Rogers had found that the term “a predetermined series of dental incremental position adjustment appliances” in claim 1 of the ‘880 patent allowed for the predetermined series to be constructed prior to the fabrication of an intermediate aligner, and was not limited to requiring construction of the series prior to the fabrication of all aligners.  The ALJ had also found that this claim required that the four steps of the claimed method be performed in the recited order because each subsequent step necessarily required the completion of the previous step.  Align disputed this requirement that the claimed steps be performed in the recited order, but the Commission ultimately affirmed the ALJ’s construction.

The Commission also affirmed the ALJ’s construction of the term “treatment plan” in clams 7, 8, and 9 of the ‘487 patent and claim 1 of the ‘874 patent, as well as the term “computer implemented method” in claim 1 of the ‘511 patent and claim 1 of the ‘874 patent.  However, the Commission reversed the ALJ’s construction of the term “distinct successive incremental dental positioning appliance” in claim 1 of the ‘863 patent.  In particular, the Commission found that, contrary to the ALJ’s construction, the term meant that while the claim required a series of dental appliances, the entire series did not need to be manufactured before the beginning of treatment.

With respect to the term “providing” in the ‘325 patent, Respondents argued that, contrary to ALJ Rogers’s construction, the term required that the providing be from one entity to a different entity, and that an entity could not provide something to itself.  However, the Commission disagreed and affirmed the ALJ’s broad construction of “providing,” which did not distinguish between whether a given electronic transmission was to a computer owned by another individual or to a computer owned by the same individual.

The Commission also noted that ALJ Rogers had improperly applied the “broadest reasonable” claim construction standard with respect to claims 1 and 33 of the ‘325 patent, claim 2 of the ‘511 patent, and claim 1 of the ‘874 patent.  The Commission noted that this was not the correct claim construction standard before the ITC, citing Phillips v. AWH Corp., 415 F.3d 1303, 1312-17 (Fed. Cir. 2005) (en banc).  However, the Commission found that the ALJ’s incorrect statement of the claim construction standard was harmless error because his ultimate claim constructions were consistent with an application of the correct standard.

Infringement

With respect to infringement, the Commission adopted ALJ Rogers’s finding that the CCUS and CCPK accused products satisfy the claim limitations as construed.  However, the Commission proceeded to analyze whether infringement had been demonstrated in light of the requirements of Section 337.  In doing this, the Commission divided the asserted claims into four distinct groups, and analyzed each of these groups separately.

The Commission designated claims 21 and 30 of the ‘325 patent and claim 1 of the ‘880 patent as Group I claims.  These claims are directed to methods of manufacturing dental appliances starting with a digital data set.  According to the opinion, prior to the accused manufacturing activity related to these claims, CCPK manipulates digital models, thereby generating intermediate and final data sets in Pakistan, and then electronically transmits those data sets to CCUS in the U.S.  Then, CCUS uses the generated data sets to prepare molds of the patient’s teeth which are in turn used to make the physical dental appliances in the U.S.

The Commission found that the Group I claims are directly infringed by CCUS within the U.S.  However, since the direct infringement of these methods claims occurs entirely within the U.S., the direct infringement itself is not a violation of Section 337.  Nevertheless, the Commission further found that CCPK contributorily infringes the Group I claims under 35 U.S.C. § 271(c).  In particular, the Commission found that Respondents had knowledge of the ‘325 and ‘880 patents and that there were no substantial non-infringing uses for the digital data sets at issue.  Moreover, the Commission found that the digital data sets are “a material or apparatus” within the meaning of § 271(c).  Accordingly, the Commission affirmed ALJ Rogers’s finding of contributory infringement of the Group I claims.

The Commission designated claims 31 and 32 of the ‘325 patent, claims 1 and 4-8 of the ‘863 patent, claims 1, 3, 7, and 9 of the ‘666 patent, and claims 1, 3, and 5 of the ‘487 patent as Group II claims.  These claims are directed to methods of generating digital data sets.  According to the opinion, the digital data sets at issue are generated by CCPK in Pakistan prior to their electronic transmission to the U.S.  Specifically, CCPK provides the initial data set that it obtains from CCUS to the CCPK computer platform and manipulates the data set into final and intermediate positions.  These final and intermediate data sets are then transmitted to CCUS in the U.S.

The Commission found a violation of Section 337 with respect to the Group II claims.  In particular, the Commission determined that the digital data sets at issue are “articles” that are “processed” within the meaning of Section 337(a)(1)(B)(ii).  Since CCPK creates the digital data sets at issue by practicing the methods of the Group II claims in Pakistan, it was a violation of Section 337 to import the data sets into the U.S., sell them for importation, and sell them after importation into the U.S.

The Commission designated claims 7-9 of the ‘487 patent as Group III claims.  These claims are directed to treatment plans (i.e., a series of digital data sets) on a storage medium.  With respect to these claims, the Commission agreed with the ALJ that there was no direct infringement at the time of importation.  Moreover, the Commission found that Align had waived its indirect infringement theory with respect to these claims because Align had raised indirect infringement for the first time in its petition for review.  Accordingly, the Commission found no violation of Section 337 with respect to the Group III claims.

The Commission designated claims 1-3, 11, 13-14, 21, 30-35, and 38-39 of the ‘325 patent, claims 1 and 3 of the ‘880 patent, claim 1 of the ‘511 patent, and claims 1, 2, 38-39, 41, and 62 of the ‘874 patent as Group IV claims.  These claims are directed to methods of producing dental appliances starting with images of a patient’s teeth which are exported to Pakistan, manipulated abroad, and then imported.  The final digital data sets are imported and the dental appliances are constructed by CCUS in the U.S. after importation.

The Commission found that ALJ Rogers erred in finding a violation of Section 337(a)(1)(B)(ii) with respect to the Group IV claims because the imported digital data sets are not the end product of the Group IV claims, which disclose methods for fabricating dental appliances.  Since the Group IV claims are directed to fabricating dental appliances, the last claim step is not performed prior to importation as required by Section 337(a)(1)(B)(ii).

The Commission also disagreed with Align’s argument that infringement under 35 U.S.C. § 271(g) can form the basis for a finding of violation of Section 337(a)(1)(B)(i).  Applying canons of statutory construction, the Commission found that the existence of Section 337(a)(1)(B)(ii), which specifically defines violations of Section 337 based on the importation of articles produced by a patented process, precluded Align’s theory that infringement could be based on Section 337(a)(1)(B)(i) read in conjunction with 35 U.S.C. § 271(g).  Accordingly, the Commission found no violation of Section 337 with respect to the Group IV claims.

Invalidity

According to the opinion, Respondents argued that claims 1, 37, and 38 of the ‘325 patent are invalid.  The Commission found that any invalidity arguments for other claims had been waived because Respondents had failed to specifically argue invalidity for any other claims.

Respondents argued that claims 1, 37, and 38 of the ‘325 patent were anticipated by U.S. Patent No. RE35,169 to Lemchen (“Lemchen”), which allegedly incorporated U.S. Patent No. 2,467,432 to Kesling (“Kesling”) by reference.  The Commission first found that Lemchen only incorporated certain figures from Kesling by reference, rather than the entirety of the Kesling patent.  The Commission further found that Lemchen does not anticipate the asserted claims of the ‘325 patent because it does not teach interpolation or how to create successive appliances.  Moreover, the Commission found that Lemchen does not discuss defining or moving tooth boundaries.

Respondents also argued that claims 1, 37, and 38 of the ‘325 patent were invalid as obvious over Lemchen in view of Kesling.  The Commission found that the claims were not obvious over these references because, inter alia, Lemchen and Kesling do not teach the interpolation of digital data sets.  The Commission further found that another obviousness argument based on U.S. Patent No. 6,471,511 in view of the knowledge of one of ordinary skill in the art had been waived because it had not been properly raised prior to the evidentiary hearing in the investigation.

Estoppel

According to the opinion, Respondents argued that Align was estopped from asserting the asserted patents against them because Align had withdrawn a prior lawsuit in Texas in which Align had asserted U.S. Patent No. 6,554,611 (the ‘611 patent), and had issued a statement which Respondents argued was a covenant not to sue.  ALJ Rogers had previously found that this argument had been waived because it had not been raised in Respondents’ response to the original complaint in the investigation.  Moreover, even if it had not been waived, it was without merit.  The Commission affirmed these findings.

Domestic Industry

With respect to domestic industry, the Commission affirmed ALJ Rogers’s finding that Respondents had waived the right to contest domestic industry.  The Commission also agreed that Align had established that it satisfied the economic prong of the domestic industry requirement.  As to the technical prong, the Commission affirmed the ALJ’s finding that Align satisfied the technical prong for the ‘487, ‘863, ‘325, ‘880, ‘511, and ‘874 patents.  However, the Commission reversed the ALJ’s finding that Align had not satisfied the technical prong for the ‘666 patent.  In particular, the Commission determined that Align had put forth sufficient evidence to show that it practices claim 7 of the ‘666 patent.

Remedy

With respect to remedy, the Commission determined to issue cease and desist orders directed to CCUS and CCPK.  ALJ Rogers had found that CCUS has a “rolling” inventory of digital data sets that make up particular phases of patients’ treatment provided by CCPK to CCUS on a daily basis, which are then used by CCUS to manufacture aligners.  Since cease and desist orders are the typical remedy to deal with domestic inventories of articles in violation of Section 337, cease and desist orders were the appropriate remedy in the investigation.  In any event, Align had not requested an exclusion order.

However, the Commission also considered the public interest, and determined to include an exemption in the cease and desist orders for existing ClearCorrect patients.  In particular, the Commission exempted repair and replacement of existing appliances from the scope of the cease and desist orders, as well as activities relating to the treatment of patients who had already contracted for treatment with ClearCorrect as of April 10, 2014.

Conclusion

In view of the above, the Commission found a violation of Section 337 and issued cease and desist orders directed to CCUS and CCPK.

Dissenting Opinion by Commissioner David S. Johanson

Commissioner David S. Johanson filed a dissenting opinion disputing the Commission majority’s determination that electronically-transmitted digital data sets can be considered “articles” within the meaning of Section 337.  Commissioner Johanson argued that the majority’s interpretation did not properly address Congress’s delegation of authority to the Commission, ignored Section 337’s remedial scheme, and contradicted the federal courts’ interpretation of “articles.”  Accordingly, Commissioner Johanson would have found no violation of Section 337 due to the lack of importation of true “articles” within the meaning of Section 337.

On April 17, 2014, the International Trade Commission (the “Commission”) issued a notice in Certain Optoelectronic Devices for Fiber Optic Communications, Components Thereof, and Products Containing the Same (Inv. No. 337-TA-860).  In the notice, the Commission affirmed the Initial Determination (“ID”) that was issued by ALJ Theodore R. Essex on December 13, 2013, finding a violation of Section 337.  As such, the Commission determined to issue a limited exclusion order and cease and desist orders, and also terminated the investigation.

By way of background, this investigation is based on a complaint filed by Avago Technologies Fiber IP (Singapore) Pte. Ltd., Avago Technologies General IP (Singapore) Pte. Ltd., and Avago Technologies U.S. Inc. (collectively, “Avago”) alleging violation of Section 337 in the importation and sale of certain optoelectronic devices for fiber optic communications, components thereof, and products containing the same that infringe one or more claims of U.S. Patent Nos. 6,947,456 (the ‘456 patent) and 5,596,595 (the ‘595 patent).  See our September 26, 2012 and October 30, 2012 posts for more details about the complaint and Notice of Investigation, respectively.  On December 13, 2013, ALJ Essex issued a final ID determining that a violation of section 337 had occurred by reason of infringement of certain claims of the ‘595 patent and recommended cease and desist orders against respondents FCI SA, FCI Deutschland GmdH,  FCI USA, LLC (collectively, “FCI”), Mellanox Technologies, Ltd., and Mellanox Technologies, Inc. (collectively, “Mellanox”).  See our January 22, 2014 post for more details on the ID.  On February 12, 2014, the Commission determined to review the ID in-part and requested briefing on the issues on review and on remedy, the public interest, and bond. 

According to the April 17, 2014 notice, after examining the record in the investigation, including the parties’ submissions, the Commission determined to (a) affirm the ALJ’s claim construction of the ‘595 patent’s limitation “current-spreading layer” and infringement and domestic industry determinations relating to that limitation with certain modifications, (b) affirm the ALJ’s finding that Avago met the economic prong with respect to the ‘595 patent under U.S.C. 1337(a)(3)(C), (c) affirm the ALJ’s infringement and domestic industry (technical prong) determinations as to the ‘456 patent with certain modifications in rationale, and (d) affirm the ALJ’s finding that Avago met the economic prong with respect to the ‘456 patent under U.S.C. 1337(a)(3)(C).

As to relief, the notice states that the Commission determined the appropriate relief includes (1) a limited exclusion order prohibiting the unlicensed entry of certain optoelectronic devices for fiber optic communications, components thereof, and products containing the same covered by one or more of claims 14 and 19 of  the ‘595 patent and that are manufactured abroad by or on behalf of, or imported by or on behalf of, respondents IPtronics A/S, IPtronics Inc., FCI and Mellanox and (2) cease and desist orders prohibiting importing, selling, marketing, advertising, distributing, transferring (except for exportation), and soliciting U.S. agents or distributors for, optoelectronic devices for fiber optic communications, components thereof, and products containing the same covered by one or more of claims 14 and 19 of the ‘595 patent and that are manufactured abroad by or on behalf of, or imported by or on behalf of, respondents FCI USA, LLC and Mellanox.  The Commission also determined that the public interest factors did not preclude issuance of the limited exclusion order and that the respondents should be required to post a bond in the amount of 3 percent of the entered value of the products covered by the exclusion order and cease and desist orders during the Presidential review period.

On April 22, 2014, ALJ Dee Lord issued Order No. 6 in Certain Sulfentrazone, Sulfentrazone Compositions, and Processes for Making Sulfentrazone (Inv. No. 337-TA-914).

By way of background, this investigation is based on a March 5, 2014 complaint filed by FMC Corp. (“FMC”) alleging violation of Section 337 in the importation into the U.S. and sale of certain certain sulfentrazone active ingredient and formulated sulfentrazone compositions made by a process that infringes one or more claims of U.S. Patent No. 7,169,952 (the ‘952 patent).  See our March 6, 2014 and April 11, 2014 posts for more details on the complaint and Notice of Investigation, respectively. 

According to Order No. 6, Respondents Beijing Nutrichem Science and Technology Stock Co., Ltd. and Jiangxi Heyi Chemicals Co. Ltd. (collectively, “Respondents”) filed a motion to deem the temporary relief proceeding more complicated.  FMC filed its opposition to the motion.  ALJ Lord agreed with the Respondents and designated this investigation “more complicated.”  Specifically, ALJ Lord determined that the “more complicated” designation was being conferred on the basis of the complexity of the issues raised in the motion for temporary relief, including: (1) a patent which relates to a chemical process that is allegedly practiced in China, (2) multiple products accused of infringement, (3) two Chinese respondents and the anticipated difficulty of obtaining discovery of information located in China, (4) the likelihood of the assertion of multiple alleged invalidating prior art references, and (5) the likelihood that the date of invention and diligence in reduction to practice will become disputed issues.  Lastly, ALJ Lord set the procedural schedule and determined, inter alia, that the hearing on the motion for temporary relief will commence on July 1, 2014.

On April 22, 2014, Chief ALJ Charles E. Bullock issued Order No. 4 in Certain Hemostatic Products and Components Thereof (Inv. No. 337-TA-913).

By way of background, the investigation is based on a February 28, 2014 complaint filed by Baxter International Inc., Baxter Healthcare Corp., and Baxter Healthcare SA of Switzerland alleging violation of Section 337 by Johnson & Johnson Inc., Ethicon, Inc., Ferrosan Medical Devices A/S, and Packaging Coordinators, Inc. in the importation into the U.S. and sale of certain hemostatic products and components thereof that infringe one or more claims of U.S. Patent Nos. 8,303,981; 8,512,729; 6,066,325; 8,357,378; and 8,603,511.  See our March 5, 2014 and April 4, 2014 posts for more details on the complaint and notice of investigation, respectively.

In the Order, ALJ Bullock set August 7, 2015 as the target date for completing the investigation (which is approximately sixteen months after institution of the investigation).  In addition, ALJ Bullock directed the parties to submit proposed procedural schedules by April 30, 2014.  ALJ Bullock further noted that the evidentiary hearing in this investigation will commence on January 5, 2015, for purposes of preparing proposed procedural schedules.

On April 15, 2014, ALJ David P. Shaw issued Order No. 29 in Certain Point-to-Point Network Communication Devices and Products Containing the Same (Inv. No. 337-TA-892).  In the Order, ALJ Shaw granted-in-part and denied-in-part Respondents AmTRAN Logistics, Inc., AmTRAN Technology Co., Ltd., LG Electronics Inc., LG Electronics U.S.A., Inc., LG Electronics MobileComm U.S.A., Inc., Panasonic Corp., Panasonic Corp. of North America, Sony Corp., Sony Corp. of America, Sony Electronics Inc., Sony Mobile Communications AB, Sony Mobile Communications (USA) Inc., Sony Computer Entertainment, Inc., Sony Computer Entertainment America LLC, Toshiba Corp., Toshiba America Inc., Toshiba America Information Systems, Inc., and Vizio, Inc.’s (collectively, “Respondents”) motion to strike portions of Complainant Straight Path IP Group, Inc.’s (“Straight Path”) domestic industry contentions, as well as portions of the expert report of Straight Path’s expert Dr. Stuart Stubblebine.

According to the Order, Respondents sought to strike four categories of information:  (1) analysis and opinions relating to the VoiceLine terminal adapter product; (2) analysis regarding alleged infringement of the “caller process,” “callee process,” “associating,” and “querying” limitations under the doctrine of equivalents; (3) allegedly new infringement theories in Dr. Stubblebine’s report relating to Netflix and YouTube applications; and (4) citations to previously undisclosed Netflix deposition testimony.  Straight Path opposed Respondents’ motion.  The Commission Investigative Staff did not file a response to the motion.

After considering the arguments, ALJ Shaw determined to grant the motion as to the first two categories of information but deny it as to the last two.  With respect to category (1), ALJ Shaw found that it was appropriate to strike information concerning the VoiceLine terminal adapter product because Straight Path had failed to identify that product on its list of domestic industry products pursuant to the procedural schedule in the investigation.  With respect to category (2), ALJ Shaw found that it was appropriate to strike the cited doctrine of equivalents analysis because Straight Path’s infringement contentions had not specifically set forth infringement allegations for the four limitations at issue.  With respect to category (3), ALJ Shaw denied the motion to strike after finding that the portions of Dr. Stubblebine’s report at issue had merely provided additional factual support for previously disclosed theories.  Lastly, with respect to category (4), ALJ Shaw denied the motion because he had previously granted leave for the parties to take the Netflix deposition after the close of fact discovery, and Respondents had been on notice that Dr. Stubblebine would likely rely on testimony from that deposition.

On April 15, 2014, ALJ E. James Gildea issued Order No. 77 in Certain Consumer Electronics With Display and Processing Capabilities (Inv. No. 337-TA-884).  In the Order, ALJ Gildea denied Respondents Toshiba Corp., Toshiba America, Inc., Toshiba American Information Systems, Inc., and Vizio, Inc.’s (collectively, “Respondents”) motion for summary determination that certain claims of U.S. Patent No. 8,144,158 (the ‘158 patent) are invalid for lack of written description.

Respondents argued that the claim terms “scan converter” and “scan convert data” in the ‘158 patent needed to be construed in accordance with how similar terms had been construed in the related U.S. Patent No. 6,650,327 (the ‘327 patent).  Respondents noted that the U.S. Court of Appeals for the Federal Circuit had previously construed the ‘327 terms to require that the claimed scan converter perform operations entirely in floating point.  Respondents therefore argued that the ‘158 claims also required that operations be performed entirely in floating point.  However, Respondents argued that if the ALJ were to construe the terms as not having this requirement, then the ‘158 patent lacks written description support for claims that include these terms because the specification allegedly does not provide support for a scan converter that does not operate entirely in floating point.

Complainant Graphics Properties Holding Inc. (“GPH”) opposed the motion.  GPH contested Respondents’ proposed constructions and argued that there were disputed issues of material fact that precluded summary determination.  The Commission Investigative Staff also opposed the motion.

After considering the arguments, ALJ Gildea determined to deny the motion.  The ALJ noted that he had previously ruled in his Markman order that the “scan converter” and “scan convert data” terms in the ‘158 patent were not limited to performing operations entirely in floating point.  See our March 13, 2014 post for more details on the Markman order.  Moreover, there were at least material questions of fact as to whether a person of ordinary skill in the art would have understood the ‘158 patent specification to disclose non-floating point operations, and thus provide written description support for the claims as construed.  Accordingly, ALJ Gildea denied Respondents’ motion for summary determination.

On April 17, 2014, ALJ E. James Gildea issued the public version of Order No. 33 (dated April 11, 2014) denying Complainant’s Motion to Compel Expert Deposition in Certain Silicon Microphone Packages and Products Containing Same (Inv. No. 337-TA-888).

By way of background, the Commission instituted this investigation on July 23, 2013 based on a complaint filed by Knowles Electronics, LLC (“Knowles”) alleging a violation of Section 337 by Respondents GoerTek, Inc. and GoerTek Electronics, Inc. (collectively, “GoerTek”) in the importation into the U.S. and sale of certain silicon microphone packages and products containing the same that infringe, or that are made by a process that infringes, one or more claims of U.S. Patent Nos. 7,439,616, 8,018,049, and 8,121,331.  See our June 25, 2013 and July 24, 2013 posts for more details on the complaint and notice of investigation, respectively.

According to the Order, Knowles filed a motion to compel GoerTek to produce its expert, Dr. Pecht, for deposition.  Knowles argued that, under a discovery stipulation that the parties had entered into, GoerTek should be required to produce Dr. Pecht for deposition because he did not submit an expert report and another GoerTek expert, Dr. Lall, submitted an expert report relying on a declaration by Dr. Pecht which Knowles stated included extensive analysis regarding issues central to the case.  In response, GoerTek argued that Dr. Lall did not rely on the opinions of Dr. Pecht and simply included Dr. Pecht’s declaration in Dr. Lall’s “List of Materials Considered.”  GoerTek further noted that Dr. Lall testified at his deposition that he did not rely on Dr. Pecht’s opinions.

ALJ Gildea found that Knowles had not shown that Dr. Lall relied on Dr. Pecht’s opinions.  Specifically, ALJ Gildea noted that at Dr. Lall’s deposition, he specifically stated that he considered Dr. Pecht’s declaration but did not rely on it in forming his own opinions.  Additionally, ALJ Gildea noted that Dr. Lall’s expert report did not cite to Dr. Pecht’s declaration and only included the declaration in the “List of Materials Considered.”  Further, ALJ Gildea found that Knowles’ side-by-side comparison of the statements made by Drs. Lall and Pecht did not lead to the conclusion that Dr. Lall copied Dr. Pecht’s opinions.  Accordingly, ALJ Gildea denied the motion.

On April 17, 2014, ViXS Systems, Inc. of Canada and ViXS USA, Inc. of Austin, Texas (collectively, “ViXS”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that Entropic Communications, Inc. of San Diego, California, DirecTV, LLC of El Segundo, California, Wistron Corp. of Taiwan, Wistron NeWeb Corp. of Taiwan, and Cybertan of Taiwan (collectively, the “Proposed Respondents”) unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain set-top boxes, gateways, bridges and adapters and components thereof infringe one or more claims of U.S. Patent Nos. 7,301,900, 7,099,951, 7,200,855, and 7,406,598 (collectively, the “asserted patents”).

According to the complaint, the asserted patents generally relate to the structure and operation of multimedia devices such as set-top boxes, bridges, gateways, or adapters and integrated circuit components contained in such devices.   In the complaint, ViXS states that the Proposed Respondents import and sell products that infringe the asserted patents. 

Regarding domestic industry, ViXS states that such an industry exists as defined by 19 U.S.C. §§ 1337(a)(3)(A), (B), and (C) relating to significant investment in plant and equipment; significant employment of labor and capital; and substantial investment in the exploitation of the patents, including engineering and research and development of domestic industry products and components thereof.

As to related litigation, ViXS states that it is currently engaged in litigation against proposed respondent Entropic in the U.S. District Court for the Southern District of California based on patents different from the Asserted Patents.  Also, ViXS alleges that the Asserted Patents are the subject of a parallel court proceeding filed in the U.S. District Court for the Southern District of California, filed the same day as this complaint.

With respect to potential remedy, ViXS requests that the Commission issue a permanent limited exclusion order and permanent cease and desist orders directed at the Proposed Respondents and others acting on their behalf.

On April 15, 2014, ALJ E. James Gildea issued Order No. 4 in Certain Lithium Silicate Materials and Products Containing the Same (Inv. No. 337-TA-911).

By way of background, the investigation is based on a February 19, 2014 complaint filed by Ivoclar Vivadent AG, Ivoclar Vivadent, Inc., and Ivoclar Vivadent Manufacturing Inc. alleging violation of Section 337 by Dentsply International Inc., Dentsply Prosthetics U.S. LLC, and DeguDent GmbH in the importation into the U.S. and sale of certain lithium silicate materials and products containing the same that infringe one or more claims of U.S. Patent Nos. 8,047,021 and 8,444,756.  See our February 20, 2014 and March 24, 2014 posts for more details on the complaint and the Notice of Investigation, respectively.

According to Order No. 4, ALJ Gildea set the procedural schedule for the investigation and included provisions for the early exchange of disputed claim terms and constructions.  ALJ Gildea further determined that the evidentiary hearing in this matter will commence on November 13, 2014; the initial determination on alleged violation shall be due on February 27, 2015; and the target date for completing this investigation is June 29, 2015 (which is approximately 15 months after institution of the investigation).

On April 15, 2014, Chief ALJ Charles E. Bullock issued Order No.  88 in Certain Ground Fault Circuit Interrupters and Products Containing Same (Inv. No. 337-TA-739).

By way of background, the original investigation was based on an October 8, 2010 complaint filed by Leviton Manufacturing Co., Inc. (“Leviton”) alleging violations of section 337 in the importation and/or sale of certain ground fault circuit interrupters (“GFCIs”) that infringe, among other patents, U.S. Patent No. 7,737,809.  The ITC issued cease and desist orders against numerous defaulting respondents, including Menard, Inc. (“Menard”).  The ITC also issued a general exclusion order.  Non-party Pass & Seymour, Inc. (“P&S”) had argued that the general exclusion should not reach P&S’s products, but the ITC rejected this argument.  Subsequently, on August 29, 2012, Leviton filed a complaint for an enforcement proceeding alleging, among other things, that Menard violated the cease and desist order by selling P&S GFCIs.  P&S joined the enforcement proceeding as an intervener, but the proceeding was later terminated following a settlement and licensing agreement between Leviton and P&S.  See our February 14, 2014 post for more details.

According to Order No. 88, ALJ Bullock granted a joint motion filed by Leviton and P&S to terminate the advisory opinion proceeding based on a settlement agreement.