On May 17, 2013, Graphics Properties Holdings, Inc. of New Rochelle, New York (“GPH”) 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 consumer electronics with display and processing capabilities that infringe one or more claims of U.S. Patent Nos. 6,650,327 (the ‘327 patent), 8,144,158 (the ‘158 patent), and/or 5,717,881 (the ‘881 patent) (collectively, the “asserted patents”):

• Panasonic Corp. of Japan
• Panasonic Corp. of North America of Secaucus, New Jersey
• Toshiba Corp. of Japan
• Toshiba America, Inc. of New York, New York
• Toshiba America Information Systems, Inc. of Irvine, California
• Vizio, Inc. of Irvine, California
• AmTran Logistics, Inc. of Irvine, California
• AmTram Technology Co., Ltd. of Taiwan
• ZTE Corp. of China
• ZTE (USA) Inc. of Iselin, New Jersey and Richardson, Texas
• ZTE Solutions, Inc. of Richardson, Texas

According to the complaint, the asserted patents generally relate to consumer electronics with display and processing capabilities.  In particular, the ‘327 and ‘158 patents relate to display systems and processes where geometry, rasterization, and frame buffer values are predominately determined by floating point numbers.  The ‘327 and ‘158 patents also relate to allowing data to be read from, operated on, written to, and stored in a frame buffer using the floating point format.  According to the complaint, the use of the frame buffer enables subsequent graphics operations to be performed directly on the frame buffer data without any loss of accuracy.  Lastly, the ‘881 patent relates to a supercomputer data processing apparatus that includes an instruction set adapted to issue one and two parcel instructions.

In the complaint, GPH states that the Proposed Respondents import and sell products that infringe the asserted patents.  The complaint specifically refers to various laptops, netbooks, PCs, television sets, HD camcorders, and Blu-ray and DVD players as infringing products.

Regarding domestic industry, GPH states that it has an extensive domestic licensing program focused on the asserted patents.  GPH states that, since 2009, its activities have been primarily dedicated to licensing the asserted patents.  GPH further states that it employs licensing professionals and outside counsel in the U.S. in connection with its licensing activities.  In addition, GPH refers to the activities of its domestic licensees, including Microsoft Corporation (“Microsoft”), Apple Inc. (“Apple”), and Motorola Mobility LLC (“Motorola”).  GPH states that Microsoft, Apple, and Motorola have made substantial investments in the U.S. relating to products that practice the asserted patents, including the Microsoft Surface RT, the Apple iPhone, and the Motorola Droid Razr Maxx.

As to related litigation, GPH refers to numerous district court cases where it has alleged infringement of the asserted patents.  Some of these cases involve the Proposed Respondents, but many others involve entities other than the Proposed Respondents.  Most of the cases appear to have been filed in the U.S. District Court for the District of Delaware.  GPH also refers to Inv. No. 337-TA-836, where it asserted the ‘327, ‘158, and ‘881 patents against various other entities.  That investigation was terminated based on a series of settlement agreements.  See our January 30, 2013 post for more details.

With respect to potential remedy, GPH requests that the Commission issue a limited exclusion order and a cease and desist order directed at the domestic Proposed Respondents.

On May 13, 2013, the Federal Circuit issued its opinion in Motiva, LLC v. Int’l Trade Comm’n (2012-1252).  This was an appeal by Motiva, LLC (“Motiva”) from the International Trade Commission’s (the “Commission”) final determination in Certain Video Game Systems and Controllers (Inv. No. 337-TA-743) that Nintendo Co., Ltd. and Nintendo of America, Inc. (collectively, “Nintendo”) had not violated Section 337 in connection with the importation into the U.S., sale for importation, or sale within the U.S. after importation of certain video game systems and controllers.  See our January 24, 2012 post for more details on the Commission’s final determination.

In the opinion, the Federal Circuit affirmed the Commission’s determination that Motiva had failed to satisfy the economic prong of the domestic industry requirement with respect to U.S. Patent Nos. 7,292,151 (the ‘151 patent) and 7,492,268 (the ‘268 patent).  In particular, the Federal Circuit found that substantial evidence supported the Commission’s finding that Motiva’s litigation against Nintendo was not an investment in commercializing Motiva’s patented technology that would develop a licensing program to encourage adoption and development of articles that incorporated Motiva’s patented technology.  The Court cited its decision in John Mezzalingua Assocs. v. Int’l Trade Comm’n, 660 F.3d 1322, 1327 (Fed. Cir. 2011) for the proposition that litigation expenses should not automatically be considered a substantial investment in licensing.  See our October 6, 2011 post for more details.

According to the Opinion, the Commission found—and Motiva did not dispute—that Motiva’s investments in developing a domestic industry for the ‘151 and ‘268 patents were limited after 2007 to litigation against Nintendo.  Thus, since the domestic industry requirement needed to be satisfied at the time the complaint was filed (in this case, September 2010), this meant that expenses associated with the litigation were the only relevant investments that could be used to try to satisfy the economic prong of the domestic industry requirement.

The Federal Circuit found that Motiva’s investment in litigation against Nintendo could satisfy the economic prong of the domestic industry requirement if it was substantial and directed toward a licensing program that would encourage adoption and development of articles that incorporated Motiva’s patented technology.  However, in this case, the ALJ had found that Motiva’s litigation against Nintendo was not directed at developing such a licensing program, and thus did not satisfy the domestic industry requirement.  The Commission adopted this finding, and the Federal Circuit affirmed because the finding was supported by substantial evidence.  The Federal Circuit also specifically affirmed the Commission’s use of the date that Motiva had filed its ITC complaint as the relevant date at which to determine if the domestic industry requirement was satisfied.

In view of the above, the Federal Circuit affirmed the Commission’s final determination of no violation of Section 337.

On May 13, 2013, ALJ Theodore R. Essex issued Order No. 26 (dated May 10, 2013) in Certain Electronic Imaging Devices (Inv. No. 337-TA-850).

By way of background, ALJ Essex issued Order No. 21 granting Complainant FlashPoint Technology, Inc. (“Flashpoint”) and Respondents Pantech., Co., Ltd. and Pantech Wireless, Inc.’s (collectively, “Pantech”) joint motion to terminate the investigation as to Pantech based on entry of a consent order and an associated letter of intent to execute a final patent license agreement.  See our March 11, 2013 post.  Subsequently, the International Trade Commission remanded the initial determination back to ALJ Essex to allow for FlashPoint and Pantech to file a new motion to terminate after the parties have executed their final patent license agreement.

According to Order No. 26, FlashPoint and Pantech filed a new joint motion to terminate the investigation as to Pantech based on entry of a consent order and the now final, executed patent license agreement.  ALJ Essex granted the joint motion to terminate the investigation as to Pantech based on the consent order and patent license agreement’s compliance with Commission Rule 210.

The investigation remains pending against other respondents.

On May 14, 2013, Chief ALJ Charles E. Bullock issued Order No. 106 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. (“Hitachi”) and Respondents Milwaukee Electric Tool Corporation and Techtronic Industries Company Limited (collectively, “Respondents”) filed a joint motion to terminate the investigation based on a settlement agreement between Hitachi and Respondents.  The Commission Investigative Staff supported the joint motion.  ALJ Bullock granted the motion, agreeing that the terms of the settlement have no negative effect on the public health and welfare or competitive conditions in the U.S.

On April 23, 2013, ALJ E. James Gildea issued the public version of Order No. 18 and Order No. 19 (both dated March 26, 2013) regarding motions to strike certain portions of expert testimony in Certain Semiconductor Chips with DRAM Circuitry, and Modules and Products Containing Same (Inv. No. 337-TA-819).

By way of background, this investigation is based on a complaint filed by Elpida Memory, Inc and Elpida Memory (USA) Inc. (collectively, “Elpida”) alleging violation of Section 337 by Respondents Nanya Technology Corporation and Nanya Technology Corporation U.S.A. (collectively, “Nanya”) in the importation into the U.S. and sale of certain semiconductor chips with DRAM circuitry, and modules and products containing the same.  See our December 16, 2011 post for more details.  On March 26, 2013 ALJ Gildea issued a notice of Initial Determination that a violation of Section 337 had occurred.  See our April 3, 2013 post for more details.

According to the Orders, in post-hearing briefing, both Nanya and Elpida included motions to strike portions of the opposing expert’s testimony with regard to U.S. Patent No. 7,495,453 (“the ‘453 patent”).  Order No. 18 relates to Elpida’s motion to strike portions of Nanya’s expert Dr. Bagherzadeh’s testimony, and Order No. 19 relates to Nanya’s motion to strike portions of Elpida’s expert Dr. Baker’s testimony and some of Elpida’s related arguments.

With respect to Elpida’s motion and Order No. 18, Elpida argued that Dr. Bagherzadeh’s testimony included opinions not disclosed in his previous expert report or deposition testimony. Specifically, Elpida asserted that Dr. Bagherzadeh fundamentally changed his opinion with regard to how the Ba reference anticipated one of the claims of the ‘453 patent.  In addition, Elpida asserted that Dr. Bagherzadeh’s testimony combined the Ba and Park references in entirely new ways not presented in the obviousness arguments of his expert report.  Elpida argued that Dr. Bagherzadeh’s report merely included a catch-all paragraph regarding the obviousness of these claims without providing support or explaining how the references should be combined.  Nanya asserted in response that these opinions had been adequately disclosed.

In Order No. 18, ALJ Gildea determined that Dr. Bagherzadeh’s testimony was sufficiently within the scope of his report.  The ALJ found that his testimony on anticipation by the Ba reference was not inconsistent with the opinion set forth in his report and was consistent with the explanations set forth by Nanya.  As to the obviousness combination of Ba and Park, ALJ Gildea found that the claim charts included in the expert report described how the elements of the claims were found in Park and where secondary references could be used to teach certain elements.  The report also identified Ba and Park as an obviousness combination.  This was sufficient to inform Elpida of Dr. Bagherzadeh’s opinions regarding Ba and Park.

With respect to Nanya’s motion and Order No. 19, Nanya argued that Dr. Baker’s testimony included a new claim construction and associated validity argument.  Specifically, Nanya argued that the terms “unit buffer” and “unit” were not included in Dr. Baker’s reports but that, in his testimony, Dr. Baker sought to introduce the idea that a “unit buffer” should be understood based on the plain meaning of the words “unit” and “buffer.”  According to Nanya, based on this construction, Dr. Baker and Elpida then advanced a new argument as to why Ba did not disclose unit buffers.  In response, Elpida asserted that these opinions were supported by the report and were, in fact, appropriate responses to assertions made by Dr. Bagherzadeh.

In Order No. 19, ALJ Gildea determined that Dr. Baker’s testimony was within the scope of his report and was appropriately responsive to testimony provided by Dr. Bagherzadeh regarding his opinion on the separate meaning of the word “unit.”  The ALJ also found that Dr. Baker’s testimony as to why Ba did not disclose unit buffers and thus did not anticipate the claims was also consistent with his expert report.

On May 10, 2013, the International Trade Commission (“the Commission”) issued a notice determining to review in part the Remand Initial Determination (“RID”) issued by Chief ALJ Charles E. Bullock on March 26, 2013 finding no violation of Section 337 in Certain Automated Media Library Devices (Inv. No. 337-TA-746).

By way of background, the Complainant in this matter is Overland Storage, Inc. (“Overland”) and the remaining Respondents are BDT AG, BDT-Solutions GmbH & Co. KG, BDT Products, Inc., BDT Automation Technology (Zhuhai FTZ) Co., Ltd., and BDT de México, S. de R.L. de C.V. (collectively, “Respondents”).  Overland asserted U.S. Patent Nos. 6,328,766 (the ‘766 patent) and 6,353,581 (the ‘581 patent) which are directed to automated media library devices, also known as tape libraries.  In his June 20, 2012 Initial Determination, ALJ Bullock determined that (1) the ‘766 and ‘581 patents are not infringed by BDT; (2) the patents are not invalid except for claim 15 of the ‘581 patent; and (3) a domestic industry exists for the ‘766 patent, but not for the ‘581 patent.  See our July 27, 2012 post for more details.  On October 25, 2012, the Commission issued a notice and order remanding the investigation.  See our October 31, 2012 and November 28, 2012 posts for additional information.

According to the RID, ALJ Bullock found no violation of Section 337 with respect to claims 10, 12 and 16 of the ‘581 patent.  The ALJ further determined that there is no violation of Section 337 with respect to claims 1-3 and 7-9 of the ‘766 patent as these claims were found to be invalid as anticipated.  ALJ Bullock also determined that the economic prong of the domestic industry requirement has been satisfied for the ‘581 patent.  See our April 29, 2013 post for more details.

On April 8, 2013, Overland petitioned for review of the RID, requesting that the Commission review and reverse the ALJ’s finding that (1) claims 10, 12 and 16 of the ‘581 patent are not infringed by the accused devices, and (2) the asserted claims of the ‘766 patent are invalid as anticipated.  Respondents opposed Overland’s petition for review.

After examining the record of the investigation and the parties’ submissions, the Commission determined to review the finding in the RID that Overland had not shown by a preponderance of the evidence that the accused products infringe claim 16 of the ‘581 patent.  The Commission also determined to review the finding that the asserted claims of the ‘766 patent are invalid as anticipated.

The Commission determined not to review the remaining issues decided by the ALJ and did not request briefing on the reviewed issues or additional briefing on remedy, bonding, and the public interest.

On May 9, 2013, ALJ Robert K. Rogers, Jr. Issued Order No. 19 granting Respondents LSI Corporation and Seagate Technology’s (collectively, “Respondents”) motion to strike Complainant Realtek Semiconductor Corporation’s (“Realtek”) supplemental interrogatory response while denying Realtek’s motion to file a response to the Respondents’ motion one day out of time in Certain Integrated Circuit Chips and Products Containing the Same (Inv. No. 337-TA-859).

By way of background, the investigation is based on a complaint filed by Realtek alleging violation of Section 337 in the importation into the U.S. and sale of certain integrated circuit chips that include bond pad structures or level shifter circuitry and products containing the same that infringe one or more claims of U.S. Patent Nos. 6,787,928 (“the ‘928 patent”) and 6,963,226 (“the ‘226 patent”).  See our September 20, 2012 post for more details.

According to the Order, Respondents filed a motion to strike Realtek’s supplemental response to Interrogatory No. 25 which sought information about conception and reduction to practice of the invention in the ‘928 patent.  Respondents argued that Realtek’s original response was merely boilerplate objections and a statement that it would provide information at a later date.  In its first supplemental response, Realtek asserted that it was not aware of any documents indicating conception or reduction to practice prior to the filing date of the Taiwanese counterpart application.  After the discovery deadline, Realtek attempted to supplement its response again, asserting a new conception date three years earlier and subsequent reduction to practice.  Respondents assert that these new contentions are based on information that was in Realtek’s possession and accessible before the deadline for serving responses to contention interrogatories had passed, and that supplemental responses are only allowed when new information is learned after that date.

Realtek filed a motion seeking permission to submit its opposition to Respondents’ motion one day after the deadline, arguing that although it started filing before the 5:00 pm deadline, due to electronic filing problems, it was unable to upload its papers.  Realtek emphasized that all parties were timely served.  In substantive response to Respondents, Realtek asserted that the restoration and review process of the original test chips was time-intensive and the restored information supporting its revised contentions was not available until the time it filed its supplemental response.

ALJ Rogers denied Realtek’s motion to file its response one day late, noting that he emphasized in the initial prehearing conference that Ground Rule 1.8 requires that any request for an extension be made in writing no later than the day before the due date, and that good cause must be established, specifically noting that filing problems are not good cause.  As such, ALJ Rogers found Realtek’s “technical error” to be unpersuasive, and that Realtek had therefore “waived its arguments opposing Respondents’ motion.”

Regarding the motion to strike, ALJ Rogers began by noting that an attorney of record is required to sign responses averring that the rules have been followed, and that only information thereafter acquired can be the basis of a supplement.  However, the ALJ stated that “Realtek’s supplementations were either not based on information thereafter acquired, or were not made seasonably after the information was acquired.”  ALJ Rogers determined that Realtek should have performed its restoration and review of archived data before the deadline for responses was due, and that lengthy processing time does not affect the conclusion that the information ultimately discovered was in Realtek’s possession all along.  As such, the ALJ determined that Realtek is “barred from asserting that conception and reduction to practice occurred any earlier” than the filing date of the Taiwanese counterpart application.

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.