On January 20 2012, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 52 in Certain Starter Motors and Alternators (Inv. No. 337-TA-755). 

In the Order, ALJ Rogers granted a joint motion filed by Complainants Remy International, Inc. and Remy Technologies LLC and Respondent Electric Motor Service, Inc. to terminate the investigation based on a settlement agreement.  The Commission Investigative Staff (“OUII”) initially opposed the motion because the parties did not file a public version of the settlement agreement; however, after the parties filed a supplement to their motion that included a public version of the agreement, the OUII supported the motion.  After reviewing the confidential and non-confidential versions of the agreement, ALJ Rogers granted the motion.

On January 20, 2012, ALJ Thomas B. Pender issued Order No. 30 in Certain Vaginal Ring Birth Control Devices (Inv. No. 337-TA-768). 

According to the Order, Complainant Femina Pharma Inc. (“Femina”) moved to terminate the investigation based on withdrawal of the complaint under Commission Rule 210.21(a)(1).  Respondents Merck & Co., Inc., Schering Plough Corporation, Organon Inc., and N.V. Organon and the Commission Investigate Staff did not oppose the motion.  Because Femina filed its motion prior to the evidentiary hearing and there were no extraordinary circumstances to justify denying of the motion, ALJ Pender issued an Initial Determination granting the motion.

On January 26, 2012, ALJ Robert K. Rogers, Jr. issued Order No. 24 denying Respondents SKC, Inc. and SKC Kolon PI, Inc.’s (collectively, “SKC”) motion for summary determination that claims 1, 2, 6-10 and 12-14 of U.S. Patent No. 7,691,961 (“the ‘961 patent”) are invalid as anticipated in Certain Polyimide Films, Products Containing Same, and Related Methods (Inv. No. 337-TA-772).

According to the Order, SKC argued that the asserted claims of the ‘961 patent were invalid in light of prior art polyimide films manufactured and sold by E.I. DuPont de Nemours and Company (“DuPont”) more than a year before the earliest priority date asserted by Complainant Kaneka Corporation (“Kaneka”).  SKC pointed to Kaneka’s interrogatory responses indicating that the inventors of the ‘961 patent conceived of the inventions therein “in early 2003” and reduced the inventions to practice “in or about the Summer of 2003,” and contended that the undisputed facts show that some of DuPont’s Kapton® film products manufactured prior to September 2001 meet each limitation set forth in the asserted claims as construed by Kaneka.  SKC relied on samples of Kapton® 200HN and Kapton® 200FPC that were tested using a protocol developed by SKC based on the ‘961 patent, and a report submitted by its expert witness.

Kaneka argued in response that genuine issues of material fact precluding summary determination exist with respect to the methods and results of the testing of the DuPont films, specifically regarding the calculation of the molecular orientation axis (MOA) and the coefficient of linear expansion (CLE) in claims 1, 2 and 6-8, and the calculation of the tear propagation resistance (TPR) in claims 9-10 and 12-14.

ALJ Rogers agreed with Kaneka that a genuine issue of fact exists as to whether the measurements for the MOA, CLE and TPR were correctly determined for the DuPont films, and therefore denied the motion.

On January 20, 2012 ALJ Thomas B. Pender issued Order No. 21 in Certain Wireless Communication Devices and Systems, Components Thereof, and Products Containing Same (337-TA-775) denying Respondents Apple Inc., Hewlett-Packard Company, Aruba Networks, Inc., Meru Networks, and Ruckus Wireless’s (collectively, “Respondents”) motion to compel the production of documents and testimony from Complainant Linex Technologies, Inc. (“Linex”).

By way of background, the investigation is based on a May 6, 2011 complaint filed by Linex alleging violation of Section 337 in the importation into the U.S. and sale of certain products and components that infringe U.S. Patent Nos. 6,757,322 and RE42,219.  See our May 10, 2011 post for more details.

According to the Order, Respondents sought documents and testimony from Linex sufficient to establish the figures and factors used to calculate the licensing-based expenses on which Linex intends to rely to establish a domestic industry or, alternatively, to preclude Linex from presenting evidence of any licensing-based expenses for which it has not provided a basis for its calculation.  Respondents also sought to preclude Linex from relying on any expenses that were disclosed after the November 2, 2011 contention interrogatory response deadline.  The Commission Investigative Staff supported the motion to the extent that supplemental information Linex indicated it intended to provide did not render the motion moot.

ALJ Pender denied the motion, noting that Respondents failed to identify the pertinent document requests or deposition topics in contravention of Ground Rule 3.5.  The ALJ also found that while Respondents attached a notice of deposition to their motion, they failed to identify the deposition topics for which the witness was designated.  Further, while Respondents’ motion stated that their contention interrogatories on the issue of domestic industry include Apple Inc.’s Interrogatory Nos. 46, 47, 61, 72-75 and 77-78, Respondents failed to attach Linex’s responses to these interrogatories except for Interrogatory No. 46, which ALJ Pender pointed out is not a contention interrogatory.  Thus, Respondents provided no basis to preclude Linex from relying on expenses disclosed after the contention interrogatory response deadline.

On January 23, 2012 ALJ David P. Shaw issued the public versions of Order Nos. 31 and 32 (both dated January 6, 2012) concerning motions in limine filed by the Complainants and the Respondent, respectively, in Certain Gaming and Entertainment Consoles, Related Software, and Components Thereof (337-TA-752).

By way of background, the investigation is based on a November 22, 2010 complaint filed by Motorola Mobility, Inc. and General Instrument Corp. (collectively, “Motorola”) alleging that Microsoft Corp. (“Microsoft”) violates Section 337 by infringing various patents.  See our November 24, 2010 post for more details.

According to Order No. 31, Motorola filed six motions in limine.  Motion No. 1 was granted in part, allowing exhibits containing prior art references but barring an expert from testifying who was not previously identified or deposed.  Motion No. 2 was also granted in part, disallowing an expert from testifying on Japanese prosecution documents that were not addressed in his expert report or deposition.  Motion No. 3 was denied without detail, and the order merely indicates “it has not been shown that the testimony should be precluded as a threshold manner.”  Motion No. 4 was granted in part, allowing prior art to be used as evidence but preventing admission of late-submitted declarations based on the prior art.  Motion No. 5 was denied, and thus the testimony of a particular expert regarding invalidity will be allowed.  ALJ Shaw stated in the order that “it is not necessary at this time to preclude in its entirety the witness’ testimony with respect to the validity of the patent” but notes that the briefing “has identified areas of concern that may have a bearing on the relevance of portions of his testimony, and the weight that should be given to his testimony.”  Motion No. 6 to exclude other expert witness testimony was similarly denied, although the ALJ again noted concerns regarding the expert’s testimony.

According to Order No. 32, Microsoft filed three motions in limine.  The first motion was to preclude Motorola from presenting evidence based on depositions and document production by Motorola’s suppliers.  The second motion was to preclude Motorola from relying on any testimony or evidence beyond the scope of the original expert reports.  The third motion was directed at precluding Motorola from relying on any evidence based on several “untimely” expert reports.  These motions were directly affected by the ALJ’s issuance of Order No. 24 granting Motorola’s motion “for leave to present at the hearing evidence that was the subject of certain discovery, as well as certain expert reports and testimony that addressed such discovery.”  Since this order was directed at the evidence relating to Motorola’s suppliers and the allegedly “untimely” expert reports, ALJ Shaw determined that Microsoft’s first and third motions are moot.  The ALJ denied Microsoft’s second motion because some of the testimony was not shown to be beyond the scope of the original report, and the remaining testimony and evidence outside the original reports is related to the discovery and evidence from Motorola’s suppliers, evidence specifically allowed by Order No. 24.

On January 23, 2012, Neptun Light, Inc. and Andrzej Bobel of Lake Forest, Illinois (collectively, “Neptun”) 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 dimmable compact fluorescent lamps (CFLs) and products containing same that infringe one or more claims of U.S. Patent Nos. 5,434,480 (“the ‘480 patent”) and 8,035,318 (“the ‘318 patent”):

• SK America, Inc. d/b/a/ Maxlite of Fairfield, New Jersey
• U Lighting America Inc. of San Jose, California
• Golden U Lighting Manufacturing (Shenzhen) Co., Ltd. of China
• Feit Electric Company, Inc. of Pico Rivera, California
• General Electric Company of Fairfield, Connecticut
• Xiamen Topstar Lighting Co. Ltd. of China
• Technical Consumer Products, Inc. of Aurora, Ohio
• TCP China of China
• TCP (Shanghai) Tiancanbao Lighting Electrical Appliance Co., Ltd. of China
• Shanghai Jensing Electron Electrical Equipment Co., Ltd. of China
• Shanghai Qiangling Electronics Co. Ltd. of China
• Zhejiang Qiang Ling Electronic Co. Ltd. of China

According to the complaint, the ‘480 patent is directed to “circuitry for electronic ballasts that power dimmable CFLs with the ballasts providing a high power factor and low harmonic distortion” which allows for improved dimmable CFL performance.  The ‘318 patent is directed to “an electronic ballast for enabling a full range of dimming of a CFL.”  Both patents address deficiencies in ballast circuitry that cause visible flicker during the dimming operation in dimmable CFLs.

The complaint identifies Mr. Bobel as the inventor of the ‘480 and ‘318 patents and the founder, CEO and chief engineer of Neptun, a “manufacturer of energy conservation lighting products such as LED, induction and compact fluorescent, including dimmable CFLs … designed for residential, commercial, outdoor and other infrastructure lighting applications.”  The complaint defines SK America, Inc. d/b/a/ Maxlite, U Lighting America, Inc., Feit Electric Company, Inc., General Electric Company, and Technical Consumer Products, Inc. as importers, distributors and/or sellers of infringing dimmable CFLs manufactured abroad, namely in China.  The complaint also defines Golden U Lighting Manufacturing (Shenzhen) Co., Ltd., Xiamen Topstar Lighting Co. Ltd., TCP-China, TCP (Shanghai) Tiancanbao Lighting Electrical Appliance Co., Ltd., Shanghai Jensing Electron Electrical Equipment Co., Ltd., Shanghai Qiangling Electronics Co. Ltd., and Zhejiang Qiang Ling Electronic Co. Ltd. as manufacturers of infringing dimmable CFLs in China.

Regarding the technical prong of domestic industry requirement, Neptun asserts that it is in the business of developing, designing and manufacturing in the U.S. dimmable CFLs which practice the ‘480 and ‘318 patents, such as Neptun’s dimmable CFL R30 product.  With respect to the economic prong, Neptun points to substantial investments in labor, capital, research and development, and marketing for over 15 different models of dimmable CFLs that it currently sells in the United States.  Neptune also adds that not only is it is a licensee of the ‘480 patent, but the ‘480 patent has been licensed to another dimmable CFL manufacturer.

With respect to potential remedy, the complaint asks the Commission to issue permanent cease and desist orders and a permanent limited exclusion order forbidding entry into the U.S. of all infringing dimmable CFLs that are manufactured, imported or sold for importation by or on behalf of the Proposed Respondents.

On January 23, 2012, Canon Inc. of Japan, Canon U.S.A., Inc. of Lake Success, New York, and Canon Virginia, Inc. of Newport News, Virginia (“CVI”) (collectively, “Canon”) 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 toner cartridges and components thereof, including but not limited to photosensitive drums, that infringe one or more claims of U.S. Patent Nos. 5,903,803 (the ‘803 patent) and 6,128,454 (the ‘454 patent) (collectively, the “asserted patents”):

• Clover Holdings, Inc. of Hoffman Estates, Illinois
• Clover Technologies Group, LLC d/b/a Depot International f/k/a Depot America f/k/a Image1 Products of Ottawa, Illinois
• Clover Vietnam Co., Ltd. of Vietnam
• Dataproducts USA, LLC of Thousand Oaks, California
• Dataproducts Imaging Solutions S.A. de C.V. of Mexico
• CAU, Inc. d/b/a Cartridges Are Us of Ithaca, Michigan
• Shanghai Orink Infotech International Co., Ltd. of China
• Orink Infotech International Co., Ltd. of Hong Kong
• Zhuhai Rich Imaging Technology Co., Ltd. of China
• Standard Image Co., Ltd. a/k/a Shanghai Orink Co., Ltd. of China
• Zhuhai National Resources & Jingjie Imaging Products Co., Ltd. d/b/a Huebon Co., Ltd. d/b/a Ink-Tank of China
• Standard Image USA, Inc. d/b/a Imaging Standard Inc. of Santa Ana, California
• Printronic Corporation d/b/a Printronic.com d/b/a InkSmile.com of Santa Ana, California
• Nukote, Inc. of Plano, Texas
• Nukote International de Mexico, S.A. de C.V. of Mexico
• Acecom, Inc. – San Antonio d/b/a InkSell.com of San Antonio, Texas
• Atman, Inc. s/b/a pcRUSH.com of El Segundo, California
• Dexxxon Digital Storage, Inc. of Lewis Center, Ohio
• Discount Office Items, Inc. of Columbus, Wisconsin
• Deal Express LLC d/b/a Discount Office Items of Columbus, Wisconsin
• Do It Wiser LLC d/b/a Image Toner of Marietta, Georgia
• E-Max Group, Inc. d/b/a Databazaar.com of Miramar, Florida
• Green Project, Inc. of Hacienda Heights, California
• GreenLine Paper Company, Inc. of York, Pennsylvania
• IJSS Inc. d/b/a TonerZone.com d/b/a InkJetSuperstore.com of Los Angeles, California
• Imaging Resources, LLC of Chatsworth, California
• Ink Technologies Printer Supplies, LLC of Dayton, Ohio
• Myriad Greeyn LLC of Virginia Beach, Virginia
• Office World, Inc. of Eugene, Oregon
• OfficeWorld.com, Inc. of Eugene, Oregon
• OnlineTechStores.com, Inc. d/b/a SuppliesOutlet.com of Reno, Nevada
• SupplyBuy.com, Inc. of Nashville, Tennessee
• Virtual Imaging Products Inc. of Canada
• Zinyaw LLC d/b/a TonerPirate.com of Houston, Texas

According to the complaint, the asserted patents both disclose the same subject matter.  In particular, the complaint states that the asserted patents are directed, in part, to a novel and advantageous projection on a photosensitive drum that is configured to couple with and receive a rotational force from a hole in a laser beam printer (“LBP”), so that the drum may be rotated.  The novel structure of the projection enables a process cartridge which contains the drum to be easily inserted and removed from a LBP by a user and at the same time enables the drum to be rotated in a smooth and stable fashion, thereby ensuring a high quality of the resultant printing.

In the complaint, Canon states that the Proposed Respondents import and sell products that infringe the asserted patents.  The complaint specifically identifies a number of infringing products associated with the various Proposed Respondents.

Regarding domestic industry, Canon states that CVI currently manufactures, inspects, packages, engineers, and recycles millions of toner cartridges and photosensitive drums in the U.S. that utilize technology protected by each of the asserted patents.  According to the complaint, CVI manufactures certain toner cartridges that it sells to Hewlett-Packard Company (“HP”) for distribution throughout the U.S. under the HP brand name.  Canon states that CVI’s main campus is located in Newport News, Virginia, and that this campus includes three primary facilities: (1) a Main Plant, (2) an Advanced Cartridge Manufacturing (“ACM”) Plant, and (3) a Toner Plant.  The complaint includes a photograph of former Virginia Governor Tim Kaine officiating a ribbon cutting ceremony in celebration of the completion of CVI’s ACM Plant. 

As to related litigation, Canon states that, concurrently with the filing of the instant ITC complaint, it is also filing a civil action against the Proposed Respondents in the U.S. District Court for the Southern District of New York alleging infringement of the asserted patents.  Additionally, Canon states that on June 28, 2010, it filed an ITC complaint relating to the asserted patents.  The ITC instituted an investigation (Inv. No. 337-TA-731) based on this complaint.  See our July 28, 2010 post for more details.  Canon states that the 731 investigation was terminated on May 5, 2011, when the Commission issued a consent order prohibiting all 20 Respondents in that investigation from importing into the U.S., selling for importation, and selling or offering for sale in the U.S. after importation the accused toner cartridges and components thereof.  Canon further states that, concurrently with the filing of the complaint in the 731 investigation, it also filed a complaint in the U.S. District Court for the Southern District of New York against the same Respondents.  Canon states that this action was terminated on May 24, 2011 in view of a stipulation, consent judgment, and permanent injunction.  Canon also states that the asserted patents have undergone ex parte reexaminations, and that the USPTO has issued reexamination certificates for each of the asserted patents.  Lastly, Canon refers to various foreign proceedings involving a Korean counterpart to the asserted patents. 

With respect to potential remedy, Canon requests that the Commission issue a permanent general exclusion order—or, alternatively, a limited exclusion order—and permanent cease and desist orders directed at the Proposed Respondents.  Canon states that a general exclusion order is warranted in view of the numerous sources abroad of infringing toner cartridges and components thereof and the available channels of distribution.

Further to our January 12, 2012 post, on January 19, 2012, ALJ E. James Gildea issued Order No. 2 in Certain Blu-Ray Disc Players, Components Thereof and Products Containing Same (Inv. No. 337-TA-824).

According to the Order, ALJ Gildea set August 23, 2013 as the target date (which is approximately 20 months after institution of the investigation).  ALJ Gildea further indicated that the initial determination on alleged violation shall be due on April 23, 2013.

In addition, ALJ Gildea directed the parties to submit discovery statements and proposed procedural schedules by February 13, 2012.  ALJ Gildea also determined that the evidentiary hearing in this matter will commence on January 25, 2013.

Lastly, the Order also included ALJ Gildea’s ground rules governing the conduct of the investigation.

Further to our December 10, 2011 post, on January 19, 2012, ALJ Theodore R. Essex issued Order No. 4:  Setting the Target Date and Date for Submission of Proposed Procedural Schedule in Certain Communication Equipment, Components thereof, and Products Containing Same, Including Power Over Ethernet Telephones, Switches, Wireless Access Points, Routers and Other Devices Used in WLANs and Cameras (Inv. No. 337-TA-817).

In the Order, ALJ Essex set April 7, 2013 as the target date for completing the investigation (which is approximately 16 months after institution of the investigation).  Therefore, any final initial determination is due no later than December 7, 2012. 

In addition, ALJ Essex directed the parties to submit proposed procedural schedules by February 2, 2012.  ALJ Essex instructed the parties to propose schedules that account for a prehearing conference and tutorial on August 24, 2012, and a hearing that commences on August 27, 2012 and concludes no later than August 31, 2012.

On January 19, 2012, ALJ Theodore R. Essex issued Order No. 15 in Certain Flat Panel Display Devices, and Products Containing the Same (Inv. No. 337-TA-793).  

In the Order, ALJ Essex granted a joint motion filed by Complainant AU Optronics Corporation and AU Optronics Corporation America and Respondents Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., AT&T Mobility LLC, Best Buy Stores, L.P., BestBuy.com, LLC, Best Buy Purchasing, LLC, and Interbond Corporation of America d/b/a BrandsMart U.S.A. to terminate the investigation based on a settlement agreement.  After reviewing the confidential and non-confidential versions of the agreement, ALJ Essex granted the joint motion.