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.

On April 15, 2014, ALJ Dee Lord issued Order No. 3 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. 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. 3, ALJ Lord set August 10, 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 April 10, 2015.

On April 10, 2014, ALJ E. James Gildea issued the public version of Order No. 29 (dated March 20, 2014) granting in part Complainant’s motion to compel and/or strike 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 Order No. 29, Knowles filed a motion to compel GoerTek to complete certain categories of discovery.  Knowles also moved to strike certain contentions and sought leave to supplement its contentions based on alleged late discovery.  Specifically, Knowles requested the following:

• Reopening the depositions of GoerTek Chairman Bin Jiang and Vice Chairman Long Jiang and either the complete production of responsive electronically stored information from these custodians, or specific facts from GoerTek demonstrating that the materials were provided;
• Technical drawings including bills of material, assembly drawings, metal case drawings, and PCB drawings for the accused products;
• Signed, official versions of product design specifications for the accused products;
• Reopening GoerTek’s corporate deposition regarding late-produced technical documents;
• Responses to Knowles’ Interrogatory Nos. 76-87, requesting basic discovery from GeoerTek regarding whether and how GoerTek contends that particular models of MEMS microphones differ for the purposes of infringement;
• Production of missing GoerTek monthly IP Department reports or identification of which reports are being withheld on a privilege log;
• Information regarding GoerTek’s collaboration with the Chinese government and third parties to attempt to develop a package for a MEMS microphone;
• The correction of GoerTek’s response to Interrogatory No. 29; and
• Striking GoerTek’s “State of the Art” chart and/or ordering GoerTek to state its contentions with specificity and allowing Knowles to respond.

With respect to the Depositions of Bin Jiang and Long Jiang, ALJ Gildea found that Knowles had not made a sufficient showing to burden the witnesses with further deposition time.  More particularly, ALJ Gildea noted that Knowles did not attempt to argue that the witnesses were unprepared to testify on the matter of copying during their two-day depositions and did not identify any specific documents reflecting a need for additional testimony.  As such, ALJ Gildea found that Knowles had not shown any need that outweighed the burden of producing the witnesses for further deposition and that Knowles had not identified any gaps in the document production indicating that GoerTek improperly withheld responsive documents.  Accordingly, ALJ Gildea denied this portion of the motion.

Concerning the production of technical documents, ALJ Gildea found that while GoerTek argued that it had already produced the requested documents or confirmed that they do not exist, GoerTek had not provided any evidence to support those representations.  Therefore, ALJ Gildea noted that he had no basis to conclude that GoerTek had fulfilled its discovery obligations regarding the requested technical documents.  Accordingly, ALJ Gildea granted this portion of the motion.

Regarding the request for signed copies of product specifications, ALJ Gildea found that GoerTek had provided evidence that signed versions had already been produced, and that Knowles had provided evidence showing that the product specifications had been signed electronically.  Accordingly, ALJ Gildea denied this portion of the motion.

As to reopening GoerTek corporate depositions, ALJ Gildea found that Knowles had not shown that GoerTek’s corporate witnesses were unprepared to testify regarding the technical subject matter at issue in the investigation, and had not identified any specific need for further testimony regarding the allegedly late-produced documents beyond the need to authenticate them.  As with the depositions of Bin Jiang and Long Jiang, ALJ Gildea found that Knowles’ need for additional testimony did not outweigh the substantial burden of requiring GoerTek to produce witnesses for additional depositions in the U.S.  ALJ Gildea also noted that he expected the parties to work in good faith to enter a stipulation regarding the authenticity of the documents.  Accordingly, ALJ Gildea denied this portion of the motion.

With respect to supplementing interrogatory responses, ALJ Gildea found that GoerTek’s argument that it should not be required to rebut contentions that were not timely provided was previously addressed in GoerTek’s earlier motion to strike the supplemental contentions.  Accordingly, ALJ Gildea granted the motion in part to the extent that GoerTek was ordered to provide substantive supplemental responses to Knowles’ Interrogatory Nos. 76-87 by the close of business on March 28, 2014.  ALJ Gildea also found that Knowles’ request to supplement its contention interrogatory responses was denied as moot in light of Order No. 24.

Regarding the IP Department Reports, ALJ Gildea found that while GoerTek represented that it had completed its production and updated its privilege log regarding these materials, GoerTek did not provide any evidence that it had done so, instead providing only attorney argument.  Accordingly, ALJ Gildea granted this portion of the motion.

Concerning information regarding collaboration with the Chinese government and third parties, ALJ Gildea found that some of the information Knowles was requesting had already been determined by ALJ Gildea to be overly broad and burdensome.  ALJ Gildea also found, however, that GoerTek again made an unsupported argument regarding its representation that it performed a reasonably diligent search and had produced documents that it had regarding collaboration.  Accordingly, ALJ Gildea granted in part this portion of the motion.  

Regarding correcting GoerTek’s response to Interrogatory No. 29, ALJ Gildea found that GoerTek established that its response to the interrogatory was satisfactory.  Accordingly, ALJ Gildea denied this portion of the motion.

As to GoerTek’s “state of the art” chart, ALJ Gildea found that GoerTek’s claim charts provided, on a limitation-by-limitation basis, a description of what GoerTek believed the state of the art was at the time the asserted patents were filed and how the state of the art could allegedly be combined with additional prior art references to render the asserted claims invalid.  Based on the contents of the chart, ALJ Gildea found that the chart appropriately responded to Knowles’ interrogatory and provided adequate notice of GoerTek’s invalidity positions regarding the state of the art.  Accordingly, ALJ Gildea denied this portion of the motion.

On March 26, 2014, the International Trade Commission (the “Commission”) issued the public version of its opinion finding no violation of Section 337 in Certain Audiovisual Components and Products Containing the Same (Inv. No. 337-TA-837). 

By way of background, the investigation is based on a March 2, 2012 complaint filed by LSI Corporation and its subsidiary Agere Systems Inc. (collectively, “LSI”) alleging violation of Section 337 with regard to certain audiovisual components and products containing the same including certain digital televisions, Blu-ray disc players, home theater systems, DVD players and/or recorders that infringe one or more claims of U.S. Patent Nos. 5,870,087 (the ‘087 patent), 6,982,663 (the ‘663 patent),  6,452,958 (the ‘958 patent), and 6,707,867 (the ‘867 patent).  See our April 13, 2012 post for more details on the investigation.  On March 7, 2013, the ALJ granted a motion to terminate the investigation as to certain claims of those patents. 

In the initial determination (“ID”), ALJ Shaw found a violation of Section 337 had occurred with respect to claims 1, 5, 7-11, and 16 of the ‘087 Patent but that no violation had occurred with respect to the remaining asserted claims of the ‘663, ‘958, and ‘867 Patents.  See our September 16, 2013 post for more details.  As of the date of the ID, the remaining respondents in the investigation were Funai Electric Company, Ltd., Funai Corporation, Inc., P&F USA, Inc., and Funai Service Corporation (collectively, “Funai”) and Realtek Semiconductor Corporation (“Realtek”).

As explained in our October 25, 2013 post, after examining the relevant portions of the record of the investigation, including the ID and the parties’ submissions, the Commission determined to review the final ID in its entirety and requested the parties to brief twelve specifically enumerated issues.  According to the opinion, after the Commission determined to review the ID, the parties entered into settlement agreements or agreed to vacate findings (in view of patent expiration) for all patents except the ‘958 patent.  We now provide the details of the Commission’s opinion in relation to the ‘958 patent.

The ‘958 patent relates to digital signal modulation to encode information.  In the accused products, the modulators are included in WiFi chips that are a part of the downstream products.  LSI asserts that the ‘958 patent is essential to the Institute of Electrical and Electronic Engineers, Inc. (“IEEE”) 802.11 standard for complementary code keying (“CCK”) modulation and timing synchronization.

All the asserted claims require “a modulator that chooses a code having N chips in response to a group of data bits,” and LSI petitioned for review of the ALJ’s construction of this phrase.  The Commission affirmed ALJ Shaw’s construction of the term “code” to mean “a sequence of chips representing a real value,” noting that LSI’s proposed construction (to include complex codes) contradicts the parties’ agreed-upon construction, and that LSI’s proposed construction was not supported by either the intrinsic or extrinsic evidence.

The Commission’s affirmation of the claim construction of “code” to exclude complex codes supported a determination that certain products do not infringe the ‘958 patent, as they select complex, not real, codes.  According to the Commission, “[d]espite abundant record evidence supporting [this finding],” LSI continued to argue that the products select a “real” code.  However, the Commission held that the ALJ “correctly concluded that each CCK codeword…represents a complex value, and so the accused codewords do not meet the claimed ‘code.’”  The Commission also determined that the remaining accused products were not proved to infringe, affirming the ALJ’s decision to strike LSI’s supporting evidence as provided too late (as it was only submitted the same day that pre-hearing briefs were due).

The validity dispute was premised on a determination of the correct priority of the ‘958 patent, and the Commission disagreed with the ALJ that the ‘958 patent was entitled to its earliest priority date.  Specifically, the Commission found that at least four limitations were not included in the earliest priority application (as conceded by LSI’s expert at trial), and as such, the written description requirement was not met.

With the priority date of the ‘958 patent now correctly determined to be the actual filing date, prior art that was dismissed by the ALJ was considered by the Commission.  The Commission determined that the ‘958 patent would have been obvious over the van Nee article in view of the Harris Proposal, noting that LSI’s expert conceded that the van Nee article would anticipate or render obvious every asserted claim of the ‘958 patent if it were prior art.  The Commission also reversed the ALJ’s finding of no anticipation of a subset of claims over the Prasad reference, but affirmed that the remaining claims would not have been obvious over Prasad.  The Commission also affirmed that the remaining proffered references were non-analogous art and would not have rendered the ‘958 patent obvious and that the secondary considerations put forward by LSI did not have the required nexus to the claims.  Finally, the Commission affirmed ALJ Shaw’s finding that the asserted claims were not indefinite. 

With regard to domestic industry, the Commission determined that the ALJ’s finding of domestic industry based on licensing conflicts with recent decisions imposing an “articles” requirement for licensing-based domestic industry, and LSI failed to prove that the products covered by the license practiced the invention of the ‘958 patent. 

Because “there are multiple grounds for determining no violation” of Section 337, the Commission did not reach any RAND or equitable defenses asserted by Funai and Realtek.

In light of the above, the Commission affirmed the ALJ’s finding of no violation of Section 337 with respect to the ‘958 patent as modified, and terminated the investigation.

On April 4, 2014, the International Trade Commission (the “Commission”) issued a notice in Certain Encapsulated Integrated Circuit Devices and Products Containing Same (Inv. No. 337-TA-501).  In the notice, the Commission found a violation of Section 337 by Respondents Carsem (M) SdnBhd, Carsem Semiconductor Sdn Bhd, and Carsem, Inc. (collectively, “Carsem”).  The Commission issued a limited exclusion order and terminated the investigation.

By way of background, the Commission instituted an investigation based on a complaint filed by Amkor Technology Inc. (“Amkor”), alleging the importation into the U.S., sale for importation, and sale within the U.S. after importation of certain encapsulated integrated circuit devices that infringe claims of U.S. Patent Nos. 6,433,277 (the ‘277 patent), 6,630,728 (the ‘728 patent), and 6,455,356 (the ‘356 patent) (collectively, “the Asserted Patents”).  The investigation also concerned a third-party, ASAT, Inc. (“ASAT”) and its invention (the “ASAT invention”), which Carsem argued was invalidating prior art to Amkor’s Asserted Patents.

On November 18, 2004, ALJ Charles E. Bullock issued a final initial determination (“Final ID”) finding no violation of Section 337.  After reviewing the Final ID, the Commission modified ALJ Bullock’s claim construction and remanded the investigation, instructing ALJ Bullock “to conduct further proceedings and make any new findings or changes to his original findings that are necessitated by the Commission’s new claim construction.”  On November 9, 2005, ALJ Bullock issued a remand initial determination (“Remand ID”) finding a violation of Section 337 with regard to six claims of the ‘277 patent and finding no violation of the ‘728 or ’356 patents.  The investigation was delayed due to difficulty obtaining certain documents from ASAT that Carsem asserted were critical for its affirmative defenses.  On July 1, 2009, after ASAT had complied with a subpoena requesting the documents, the Commission issued a notice and order remanding the investigation to ALJ Bullock in order for the ASAT documents to be considered.  On October 30, 2009, ALJ Bullock issued a supplemental ID (“First Supplemental ID”), finding that the ASAT invention was not prior art and reaffirming the Section 337 violation.  On February 18, 2010, the Commission revered ALJ Bullock’s finding that the ASAT invention was not prior art to the Asserted Patents and remanded the investigation for ALJ Bullock to make necessary findings in light of the determination that the ASAT invention was prior art.  On March 22, 2010, ALJ Bullock issued a Supplemental ID (“Second Supplemental ID”), finding that the ‘277 and ‘728 patents were invalid in view of the ASAT prior art and determining that there was no violation of section 337.  The Commission determined not to review the ALJ’s Remand ID and Second Supplemental ID and determined that there was no violation of Section 337.  Amkor appealed the Commission’s decision to the U.S. Court of Appeals for the Federal Circuit (the “Federal Circuit”), which reversed the Commission’s determination that the ‘277 patent is invalid under 35 U.S.C. §102(g), declined to affirm the invalidity determination on alternative grounds raised by Carsem, and remanded for further proceedings.  On October 5, 2012, Carsem filed a combined petition for panel rehearing and for rehearing en banc, which the Federal Circuit denied.  On January 14, 2013, the Commission issued an Order directing the parties to submit their comments regarding what further proceedings must be conducted to comply with the Federal Circuit’s judgment.  On June 5, 2013, the Commission issued a Notice requesting briefing on remedy, bonding, and public interest, as well as responses to certain questions regarding the economic prong of the domestic industry requirement and the public interest.  See our July 28, 2010, September 7, 2010, and August 27, 2012 posts for more background details on this matter.   

According to the April 4, 2014 notice, after considering the record of the investigation, including the parties’ submissions in response to the Commission’s Order and Notice, the Commission determined to affirm ALJ Bullock’s First Supplemental ID and Remand ID finding a violation of Section 337.  The Commission also determined to:

• Affirm ALJ Bullock’s determination that claims 2-4 and 21-23 of the ‘277 patent are not invalid over the ASAT invention;
• Affirm ALJ Bullock’s determination that Carsem failed to show that the equitable estoppel defense based applied in this investigation;
• Affirm that Carsem failed to prove that Amkor had deceived the standard setting body or that the’277 patent is necessary to practice JEDEC’s standards and that Carsem failed to show that its legal estoppel defense applied in this investigation;
• Affirm with modifications ALJ Bullock’s finding that Amkor satisfied the economic prong of the domestic industry requirement under subsection 337(a)(3)(A);
• Affirm with modifications ALJ Bullock’s finding that Amkor failed to satisfy the economic prong of the domestic industry requirement under subsection 337(a)(3)(B);
• Take no position on ALJ Bullock’s findings with respect to whether Amkor satisfied the economic prong of the domestic industry requirement under subsection 337(a)(3)(C).

Accordingly, the Commission determined that the appropriate form of relief in the investigation was a limited exclusion order prohibiting the unlicensed entry of certain encapsulated integrated circuit devices covered by claims 2-4 and 21-23 of the ‘277 patent that are manufactured abroad by, or on behalf of, or imported by, or on behalf of, Carsem.  The Commission also determined that the public interest factors did not preclude issuing the limited exclusion order and that Amkor was required to post a bond in the amount of a reasonable royalty rate of $0.00025 per contact per covered encapsulated integrated circuit device imported during the period of Presidential review.

On April 10, 2014, ALJ E. James Gildea issued the public version of Order No. 18 (dated March 6, 2014) granting Complainants’ Motion to Compel Production of Documents in Certain Sleep-Disordered Breathing Treatment Systems and Components Thereof (Inv. No. 337-TA-879).

By way of background, this advisory opinion proceeding was initiated by Respondents Apex Medical Corp. and Apex Medical USA Corp. (collectively, “Apex”).  Apex sought an advisory opinion in order to confirm that their redesigned sleep-disordered breathing treatment systems are not covered by the consent order which they previously entered into.  See our December 16, 2013 post for more details on the ITC’s decision to institute this advisory opinion proceeding.    

According to the Order, Complainants ResMed Inc., ResMed Ltd., and ResMed Corp. (collectively, “ResMed”) filed a motion to compel Apex to produce certain photographs.  According to ResMed, these photographs were produced several times by Apex.  ResMed also asserted that one of the photographs was marked as an exhibit during the deposition of an Apex fact witness and that the witness was questioned about the photograph without objection of Apex’s U.S. or Taiwanese counsel.  Additionally, ResMed asserted that Apex did not assert a claim of privilege with respect to these photographs until after the deposition, and that Apex cannot establish that the photographs are protected by the attorney-client privilege or work product doctrine.  ResMed further argued that Apex had waived any privilege by producing the documents multiple times without objection and permitting their use during a deposition.

Apex opposed the motion arguing that the photographs were protected by both the attorney-client privilege and the work product doctrine because they reflect the mental impressions of Apex’s in-house patent adviser, were prepared for the purpose of seeking advice of counsel, and were prepared in anticipation of Apex’s Request for Advisory Opinion and the pending District Court action between the parties.  Apex also argued that it had not waived any privilege because the disclosure was inadvertent, because Apex took reasonable steps to prevent disclosure, and because Apex took reasonable steps to rectify its error.

ALJ Gildea found that Federal Circuit precedent and Federal Rule of Evidence 502 both supported a finding that any applicable privilege was waived by Apex’s repeated disclosure of the photographs.  ALJ Gildea determined that what may have been inadvertent production in one case could not reasonably be deemed to be inadvertent after three subsequent productions as well as Apex’s failure to object to the use of the photographs during a deposition.  ALJ Gildea further determined that the subsequent productions undermined Apex’s argument that it took reasonable steps to prevent disclosure of the photographs.  Accordingly, ALJ Gildea granted ResMed’s motion to compel.

On April 10, 2014, the International Trade Commission (the “Commission”) issued a notice in Certain Dimmable Compact Fluorescent Lamps and Products Containing Same (Inv. No. 337-TA-830).  In the notice, the Commission determined to affirm-in-part and reverse-in-part the Enforcement Initial Determination (“EID”) issued by ALJ Thomas B. Pender on January 10, 2014.  In addition, the Commission found a violation of a consent order, issued a civil penalty order, and terminated the enforcement proceeding.

By way of background, the Commission instituted an investigation based on a complaint filed by the Complainants in this investigation, Andrzej Bobel and Neptun Light, Inc. (collectively, “Neptun”), alleging the importation into the U.S., sale for importation, and sale within the U.S. after importation of certain dimmable compact fluorescent lamps (“CFLs”) that infringe claim 9 of U.S. Patent No. 5,434,480 (the ‘480 patent).  The complaint named numerous respondents, including MaxLite, Inc. (“MaxLite”).  On July 25, 2012, the Commission terminated the investigation with respect to MaxLite and entered a consent order preventing MaxLite from importing dimmable CFLs that infringe claim 9 of the ‘480 patent.  MaxLite petitioned the Commission for a modification of the consent order based on a district court proceeding regarding a covenant not to sue.  Additionally, Neptun filed a complaint requesting that the Commission institute a formal proceeding to investigate a violation of the consent order.  The Commission instituted a consolidated formal enforcement and modification proceeding to determine whether MaxLite was in violation of the consent order.  In the EID, ALJ Pender found that MaxLite’s accused CFL bulbs infringed claim 9 of the ‘480 patent, but that Neptun had not demonstrated infringement by MaxLite’s “dimmable CFL Faux Cans” (“Faux Cans”).  See our January 14, 2014 post for more details on the EID.  On February 26, 2014, the Commission determined to review the EID in part and requested briefing on certain patent-related issues and on assessment of the civil penalty.  See our March 5, 2014 post for more details.

According to the April 10 notice, after considering the record of the investigation, including the EID, the petitions for review and responses thereto, and the parties’ briefing in response to the Commission’s notice of review, the Commission determined to affirm-in-part and reverse-in-part the EID.  In particular, the Commission reversed ALJ Pender’s finding that claim 9 has a “bi-directionality” requirement imposed by disavowal in the patent specification.  The Commission also reversed the portion of the non-infringement determination regarding the Faux Cans predicated on this claim construction.  However, the Commission affirmed the ALJ’s determination that Neptun had failed to demonstrate infringement by the Faux Cans even absent such a “bi-directionality” requirement.  The Commission also determined to impose a civil penalty of $10,000 on MaxLite for violation of the consent order as to the accused CFL bulbs.

The notice states that a Commission opinion is forthcoming.  We will provide additional information once the public version of the opinion issues.

On April 3, 2014, ALJ E. James Gildea issued Order No. 62 in Certain Integrated Circuit Devices and Products Containing the Same (Inv. No. 337-TA-873). 

In the Order, ALJ Gildea denied Complainant Tela Innovations, Inc.’s (“Tela”) motion requesting that the ALJ hear closing arguments in this Investigation.  According to the Order, the Commission Investigative Staff did not oppose Tela’s motion, but the Respondents did oppose noting that Tela failed to identify a sufficient justification for presenting closing arguments. 

ALJ Gildea determined that while his Ground Rule 9.2 indicates that parties may make a request to present closing arguments, those requests are not granted as a matter of right.   Because
Tela did not present sufficient justification for presenting closing arguments and the ALJ’s schedule does not allow for setting a timely enough date for closing arguments to be meaningful, ALJ Gildea denied Tela’s motion.