By Eric Schweibenz
On October 21, 2009, ALJ E. James Gildea issued the public version of Order No. 31 (dated September 24, 2009) in Certain Cold Cathode Fluorescent Lamp (“CCFL”) Inverter Circuits and Products Containing the Same (Inv. No. 337-TA-666).  In the Order, ALJ Gildea granted in part Complainants O2 Micro International Ltd. and O2 Micro Inc.’s (collectively, “O2 Micro”) motion for summary determination that the activities of Respondent ASUSTeK Computer Inc. (“ASUSTeK”) satisfy the importation requirement of Section 337 and constitute one or more “territorial acts” proscribed under 35 U.S.C. § 271(a).

In the motion, O2 Micro alleged that ASUSTeK sells its accused products for importation into the United States, imports its accused products into the United States, and sells its accused products within the United States after importation.  Further, O2 Micro contended that the latter two activities, i.e., importing accused products into and selling accused products in the United States, are “predicate elements of infringement” under 35 U.S.C. § 271(a).

In the response, ASUSTeK conceded that its activities satisfy the importation requirement of Section 337.  However, ASUSTeK denied that its activities constitute one or more “territorial acts” that might be considered “predicate elements of infringement” pursuant to Section 271(a).  ASUSTeK further argued that a ruling on the “territorial acts” issue was unnecessary and improper in a Section 337 investigation.

The Commission Investigative Staff agreed that O2 Micro was entitled to summary determination on the importation requirement, but, like ASUSTeK, argued that there was no need to reach the “territorial acts” issue under Section 271(a) in a Section 337 investigation.

After reviewing the record and the parties’ arguments, ALJ Gildea granted O2 Micro’s motion for summary determination with respect to the importation requirement, finding that O2 Micro had put forward sufficient evidence to satisfy the requirement.  However, ALJ Gildea denied O2 Micro’s motion with respect to  “predicate elements of infringement” under Section 271(a), noting that “35 USC 271 is a patent infringement statute” and “O2 Micro is not moving for summary determination of infringement by ASUSTeK.”  Further, ALJ Gildea noted that none of the parties had been able to cite any cases that discussed finding as a matter of law that a party had performed “territorial acts” under Section 271(a).  Accordingly, ALJ Gildea denied O2 Micro’s motion insofar as it requested a determination on the “predicate elements of infringement” issue.