On May 10, 2013, ALJ Robert K. Rogers, Jr. issued Order No. 27 denying Complainants InterDigital Technology Corporation, IPR Licensing, Inc. and InterDigital Holdings, Inc.’s (collectively, “InterDigital”) motion for leave to amend the complaint in Certain Wireless Devices With 3G And/Or 4G Capabilities and Components Thereof (Inv. No. 337-TA-868).

According to the Order, InterDigital sought to add allegations of infringement of certain claims of U.S. Patent No. 8,380,244 to the complaint, arguing that the ’244 patent had not yet issued and could not be asserted at the time it filed the complaint.  InterDigital also argued that good cause exists for granting leave because the ’244 patent would not complicate the case since it is “closely related” to another patent at issue, all the Respondents are already familiar with the scope of technology of the ’244 patent, and any required discovery would likely be duplicative of information being currently collected.  Also, InterDigital contended that granting its motion would obviate the need to initiate a separate investigation.

Respondents countered that no good cause exists to amend the complaint because Respondents would be prejudiced, arguing that InterDigital delayed issuance of the ’244 patent several times, and that InterDigital chose not to wait until the ’244 patent issued to file its complaint even though the ’244 application was allowed by the PTO only one day after the complaint was filed and before the investigation was instituted by the ITC.  Respondents also pointed out that (1) the investigation currently includes seven patents and 109 asserted claims; (2) adding claims of the ’244 patent would raise new claim construction issues, necessitate new prior art searches, and require supplemental discovery; (3) the ’244 patent touches on technical areas unrelated to the patents-in-suit, which would require an additional expert; and (4) six of the 11 claim charts for the ’244 patent are for products not identified in the original complaint, and add a new category of accused products (dual mode devices that lack 4G capability and designed to operate with 3G networks) that does not exist in the current investigation.

ALJ Rogers denied the motion, finding that InterDigital’s delay of more than three weeks after the ’244 patent issued to file its motion for leave to amend defeated any assertion of good cause based on the patent issuing after the complaint was filed.  The ALJ rejected InterDigital’s argument that it needed this time to investigate whether to assert the ’244 patent, noting that InterDigital had more than one month before the patent officially issued to determine whether to add ’244 claims to the investigation.  Moreover, assuming arguendo that good cause existed, ALJ Rogers found that adding the ’244 patent at this stage would prejudice Respondents in light of the number of issues already raised in the original complaint and the already accelerated schedule of Section 337 investigations.

On May 8, 2013, ALJ Theodore R. Essex issued the public version of Order No. 10 and Order No. 11 (both dated May 7, 2013) in Certain Products Having Laminated Packaging, Laminated Packaging, and Components Thereof (Inv. No. 337-TA-874).

According to Order No. 10, ALJ Essex granted a joint motion filed by Complainant Lamina Packaging Innovations, LLC (“Lamina”) and Respondent Camus Wines and Spirits Group (“Camus”) to terminate the investigation as to Camus based on good cause and a mutual release agreement.  The remaining Respondents filed an opposition to the motion arguing that, given the redactions of the agreement, they could not determine whether it was a “sham.”  The ALJ found this argument unpersuasive, stating that Respondents had failed to set forth a good basis as to why the amount of consideration exchanged between Lamina and Camus was critical and failed to clearly set out how the agreement could be a “sham.

According to Order No. 11, ALJ Essex also granted a joint motion filed by Lamina and Respondent Sidney Frank Importing Co., Inc. (“Sidney Frank”) to terminate the investigation as to Sidney Frank based on a settlement agreement, having found no indication that such termination would adversely impact the public interest.

The investigation remains pending against other Respondents.

On May 13, 2013, Black Hills Media, LLC of Wilmington, Delaware (“Black Hills”) 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 digital media devices that infringe one or more claims of U.S. Patent Nos. 8,028,323; 8,214,873; 8,230,099; 8,045,952; 8,050,652 and 6,618,593 (collectively, the “Asserted Patents”):

• Samsung Electronics Co. Ltd. of South Korea
• Samsung Electronics America, Inc. of Ridgefield Park, New Jersey
• Samsung Telecommunications America, LLC of Richardson, Texas
• LG Electronics, Inc. of South Korea
• LG Electronics U. S. A., Inc. of Englewood Cliffs, New Jersey
• LG Electronics MobileComm U.S.A., Inc. of San Diego, California
• Panasonic Corporation of Japan
• Panasonic Corporation of America of Secaucus, New Jersey
• Toshiba Corporation of Japan
• Toshiba America Information Systems, Inc. of Irvine, California
• Sharp Corporation of Japan
• Sharp Electronics Corporation of Mahwah, New Jersey

According to the complaint, the Asserted Patents generally relate to sharing of media across various electronic devices (e.g., phones, TVs, etc.).  Additionally, the ‘593 patent generally relates to location based services on smart phones.

As to the allegedly infringing products, the complaint identifies specific products from each of the Proposed Respondents, including televisions, Blu-ray disc players, home theater systems, tablets, mobile telephones, components thereof and associated software.

Regarding domestic industry, Black Hills asserted that its licensees have made substantial investments in plant and equipment, significant employment of labor and capital, and substantial investments in research, development, repair and warranty work in the U.S.  Black Hills further asserted that these investments are related to articles that practice the Asserted Patents.

As to related litigation, Black Hills stated that on May 22, 2012 it filed complaints in the District of Delaware asserting certain Black Hills patents against: (i) Yamaha Corporation, Civil Action No. 12-635 (RGA); (ii) Logitech, Inc. and Logitech, LLC, Civil Action No. 12-636 (RGA); (iii) Sonos, Inc. Civil Action No. 12- 637 (RGA); and (iv) Pioneer Corporation, Civil Action No. 12-638 (RGA).  Further, Black Hills stated that on May 6, 2013 it filed complaints in the District of Delaware and the Eastern District of Texas asserting certain Black Hills patents against: (i) the Samsung Respondents, Civil Action No. 13-379 (JRG) (E.D. Tex); (ii) the LG Respondents, Civil Action No. 13-803 (UNA) (D. Del.); (iii) the Panasonic Respondents, Civil Action No. 13-806 (UNA) (D. Del.); (iv) the Toshiba Respondents, Civil Action No. 13-805 (UNA) (D. Del.); and (v) the Sharp Respondents, Civil Action No. 13-804 (UNA) (D. Del.).

With respect to potential remedy, Black Hills requested that the Commission issue a permanent limited exclusion order and permanent cease and desist orders directed to the Proposed Respondents.

Further to our March 25, 2013 post, on May 10, 2013, ALJ Theodore R. Essex issued Order No. 13 setting a target date and procedural schedule in Certain Products Having Laminated Packaging, Laminated Packaging, and Components Thereof (Inv. No. 337-TA-874).

According to the Order, ALJ Essex set July 28, 2014 as the target date for completion of the investigation (which is approximately 16 months after institution of the investigation).  ALJ Essex further indicated that the initial determination on alleged violation shall be due on March 28, 2014 and that the evidentiary hearing will commence on December 16, 2013.

Further to our April 15, 2013 post, on May 9, 2013, ALJ Thomas B. Pender issued Order No. 3 setting a target date and procedural schedule in Certain Electronic Devices Having Placeshifting or Display Replication Functionality and Products Containing Same (Inv. No. 337-TA-878).

According to the Order, ALJ Pender set August 18, 2014 as the target date for completion of the investigation (which is approximately 16 months after institution of the investigation).  ALJ Pender further indicated that the initial determination on alleged violation shall be due on April 17, 2014 and that the evidentiary hearing will commence on December 16, 2013.

On May 9, 2013, ALJ Charles E. Bullock issued the public version of Order No. 97 (dated April 23, 2013) in Certain Sintered Rare Earth Magnets, Methods of Making Same, and Products Containing Same (Inv. No. 337-TA-855).

According to the Order, Complainants Hitachi Metals, Ltd. and Hitachi Metals North Carolina, Ltd. (collectively, “Hitachi Metals”) moved to compel depositions from Respondent Yantai Zhenghai Magnetic Material Co., Ltd. (“Yantai”) and discovery responses from Respondents Yantai, Ningbo Jinji Strong Magnetic Material Co., Ltd. and Anhui Earth-Panda Advance Magnetic Material Co., Ltd. (collectively, “Respondents”).  Hitachi Metals argued that it complied with Ground Rule 3.2 by providing notice to Respondents on March 22, 2013 and by meeting and conferring on March 24, 2013.  In opposition, Respondents contended that Hitachi Metals failed to make a reasonable good-faith effort to resolve the issue.  Specifically, Respondents asserted that Hitachi Metals simply informed Respondents that they were moving to compel.

ALJ Bullock found that Hitachi Metals failed to comply with Ground Rule 3.2.  Specifically, the ALJ determined that Hitachi Metals should have met and conferred by March 22, 2013.  ALJ Bullock stated that Hitachi Metals should have filed a motion requesting an extension of time or, in the alternative, a motion to requesting a waiver of Ground Rule 3.2.  Accordingly, the motion was denied.

On May 9, 2013, ALJ E. James Gildea issued the public version of Order No. 35 (dated April 30, 2013) in Certain Wireless Consumer Electronics Devices and Components Thereof (Inv. No. 337-TA-853).

According to the Order, Respondents ZTE Corporation and ZTE (USA) Inc. (collectively, “ZTE”) moved to strike several of Complainants Technology Properties Limited, LLC, Phoenix Digital Solutions LLC, and Patriot Scientific Corporation’s (collectively, “Complainants”) discovery responses and related expert reports.  Specifically, ZTE argued that Complainants submitted untimely supplemental infringement contention responses which included previously unasserted infringement allegations and new accused products.  In opposition, Complainants maintained that they properly sought to provide representative charts of accused products and to supplement those charts when required.  Further, Complainants asserted that they were not required to disclose every detail of an expert’s analysis in advance.

ALJ Gildea found that Complainants gave ZTE proper notice of 29 accused products, but failed to provide proper notice to the five accused products first disclosed in Complainants’ expert reports.  Accordingly, the ALJ held that Complainants cannot rely on those five accused products in the investigation.  Further, the portions of the expert reports which discuss those five accused products were stricken.  Accordingly, ZTE’s motion was granted-in-part.

On May 9, 2013, ALJ E. James Gildea issued the public version of Order No. 38 (dated May 1, 2013) in Certain Wireless Consumer Electronics Devices and Components Thereof (Inv. No. 337-TA-853).

By way of background, on April 23, 2013, ALJ Gildea had issued Order No. 27 which granted-in-part Respondents Garmin Ltd., Garmin International, Inc., Garmin U.S.A., Inc., ZTE Corporation, and ZTE (USA) Inc.’s (collectively, “Respondents”) motion to compel discovery.  Before ruling on Respondents’ request for unredacted attorney invoices, ALJ Gildea requested further briefing on the issue of whether Complainants Technology Properties Limited LLC, Phoenix Digital Solutions, LLC (“PDS”), and Patriot Scientific Corporation (collectively, “Complainants”) had waived the right to rely on legal fees and/or litigation expenses to prove domestic industry.

According to Order No. 38, Respondents submitted a supplemental memorandum asserting that Complainants waived the right to rely on legal fees and litigation expenses to establish a domestic industry.  Specifically, Respondents argued that Complainants stated in a letter and in interrogatory responses that they did not intend to rely on legal fees to prove domestic industry.  Further, Respondents stated that Complainants waited until two weeks after the deadline for contention interrogatory responses to assert the use of legal fees to prove domestic industry.

In opposition, Complainants filed a supplemental memorandum arguing that they should be able to use attorney invoices which documented the legal fees, and PDS financial documents to support their domestic industry case.  Specifically, Complainants asserted that they should be able to rely on these documents to prove their domestic industry case because they were produced before the close of fact discovery.

ALJ Gildea held that the Complainants unequivocally waived their right to use the attorney invoices.  Further, the ALJ determined that Complainants could not rely on the PDS financial documents because their request to use those documents was already denied in Order No. 28.  Accordingly, ALJ Gildea denied Respondents’ request for unredacted attorney invoices as moot on the grounds that Complainants waived their right to rely on them to prove the domestic industry requirement.

On May 8, 2013, the International Trade Commission (the “Commission”) issued the public version of its opinion affirming-in-part and reversing-in-part the Remand Initial Determination (“RID”) in Certain Wireless Communication Devices, Portable Music and Data Processing Devices, Computers and Components Thereof (Inv. No. 337-TA-745), although the ultimate conclusion of no violation of Section 337 was affirmed.

By way of background, the Complainant in this investigation is Motorola Mobility, Inc. (“Motorola”) and the Respondent is Apple Inc. (“Apple”).  On May 16, 2012, ALJ Pender issued the public version of an Initial Determination (“ID”) finding a violation of Section 337 as to U.S. Patent No. 6,246,697, but no violation of Section 337 with respect to U.S. Patent Nos. 6,272,333, 6,246,862 (the ‘862 patent), and 5,636,223.  See our May 31, 2012 post for more details on the ID.  On September 17, 2012, the Commission issued the public version of its opinion affirming-in-part, reversing-in-part and remanding-in-part the findings in the ID.  Specifically, the Commission remanded the case to the ALJ with respect to the ‘862 patent.  See our September 20, 2012 post for more details on the Commission’s decision.

On December 18, 2012, ALJ Pender issued his RID finding no violation of Section 337 as to the ‘862 patent.  In particular, the ALJ determined that although claim 1 of the ‘862 patent was infringed by the accused products, it was invalid as anticipated by U.S. Patent No. 6,052,464 to Harris (“Harris”).  The ALJ further found that claim 1 was not invalid for obviousness in light of Harris in combination with the knowledge of one of ordinary skill in the art or in combination with U.S. Patent No. 5,894,298 to Hoeksma (“Hoeksma”).  See our January 2, 2013 post for more details on the RID.

As reported in our March 4, 2013 post, after examining the RID, the petitions for review filed by Motorola and Apple, and the responses, the Commission determined to review the RID in-part.  We now provide the details of the Commission’s opinion.

Claim Construction

In the RID, the ALJ construed the limitation “touch sensitive input device” in the ‘862 patent to have its plain and ordinary meaning, but specified that this was not limited to a touchscreen or touch pad (i.e., included physical keypads).  The Commission agreed that “touch sensitive input device” should have its plain and ordinary meaning, but reversed the RID to the extent that this meaning included keypads.  Specifically, the Commission noted that the specification described the touch sensitive input device as an improvement over conventional user interfaces (such as keypads), and dependent claims stated that the user interface could further include a keypad.  As such, the Commission concluded that the patentee intended a keypad to be a separate element, and thus not included in the “touch sensitive input device” element.

Infringement

The Commission affirmed the RID’s finding that Apple’s accused products literally infringe the ‘862 patent.  The key element was “a sensor … to disable communication of the input signal to the processing section when the portable communication device is positioned in close proximity to a user, thereby preventing inadvertent actuation of the touch sensitive input device.”  However, the details of the Commission’s reasoning are redacted in the public version of the opinion.

Anticipation

The RID found that the ‘862 patent was anticipated by Harris’s disclosure of either push-button keys or a “touch writable display.”  However, since the Commission altered the construction of the term “touch sensitive input device” to exclude keypads, the Commission reversed the determination that the push-buttons anticipated the ‘862 patent.  The Commission also determined that the “touch writable display” did not anticipate the ‘862 patent as the orientation of this display did not clearly meet the other elements of the claim as required to prevent inadvertent actuation.

Obviousness

In the RID, the ALJ found that Apple failed to prove obviousness by clear and convincing evidence.  However, the Commission reversed this determination after considering the additional briefing on this issue.  The prior art included examples of mobile telephones with touch-sensitive screens subject to inadvertent actuation, and Apple argued that the problem to be solved by the ‘862 patent was well known in the art.  Although Motorola presented some evidence of secondary considerations based on praise by those skilled in the art and commercial success, the Commission did not consider the “slim evidence” provided sufficient to overcome the “strong showing of prima facie obviousness in this case.”  Therefore, the Commission determined that the ‘862 patent was invalid as obvious over Harris either in view of the common general knowledge or in view of Hoeksma.

As such, the Commission affirmed the RID’s finding of no violation of section 337 with respect to the ‘862 patent.

On May 9, 2013, Federal-Mogul Corporation of Southfield, Michigan and Federal-Mogul S.A. of Belgium (collectively, “Federal-Mogul”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that Trico Corporation of Rochester Hills, Michigan, Trico Products of Brownsville, Texas, and Trico Components SA de CV of Mexico (collectively, “Trico”) unlawfully import into the U.S., sell for importation and/or sell within the U.S. after importation certain windshield wiper devices and components thereof that infringe claims 1-14 of U.S. Patent No. 8,347,449 (“the ‘449 patent”).

According to the complaint, the ‘449 patent generally relates to “a wiper device having a spoiler as a separate constructional element that is detachably connected to the metal carrier strip(s) of the wiper blade.”  Federal-Mogul asserts in the complaint that Trico manufacturers, assembles, packages and/or tests the accused products in Mexico and imports them into the U.S., sells them for importation into the U.S. and/or sells them after importation into the U.S.  The complaint specifically refers to Trico’s Force, Ice, NeoForm, ExactFit, Flex and Onyx wiper devices.

Regarding domestic industry, Federal-Mogul states that its ANCO Profile, ANCO Contour, NAPA Vista, NAPA AccuFit and Tesla Model S products practice one or more claims of the ‘449 patent.  Federal-Mogul further states that it makes significant investments in facilities, equipment, and labor in the U.S.

With respect to potential remedy, Federal-Mogul requests that the Commission issue a limited exclusion order and a cease and desist order directed to each named Respondent and its subsidiaries and affiliates.