ALJ Essex Issues Initial Determination Finding Violation Of Section 337 In Certain Optoelectronic Devices (337-TA-669)
On March 12, 2010, ALJ Theodore R. Essex issued a notice regarding the Initial Determination (“ID”) in Certain Optoelectronic Devices, Components Thereof, and Products Containing Same (Inv. No. 337-TA-669).
The Complainants in this investigation are Avago Technologies Fiber IP Pte. Ltd., Avago Technologies General IP Pte. Ltd., and Avago Technologies Ltd. The sole Respondent is Emcore Corporation.
According to the notice, ALJ Essex held that a violation of Section 337 occurred in connection with the importation into the U.S., sale for importation, or sale within the U.S. after importation of certain optoelectronic devices, components thereof, and products containing same by reason of infringement of claims 1, 2, 3, and 5 of U.S. Patent No. 5,359,447 (the ‘447 patent). ALJ Essex further determined that no such violation of Section 337 had occurred with respect to U.S. Patent No. 5,761,229 (the ‘229 patent) and claim 6 of the ‘447 patent.
ALJ Essex also determined that the ‘447 patent is not invalid, not unenforceable, and a domestic industry exists with respect to the ‘447 patent. The notice further stated that Respondent did not have an implied license to practice the asserted claims of the ‘447 patent. ALJ Essex additionally determined that the asserted claim of the ‘229 patent was not invalid, but neither the asserted claim of the ‘229 patent nor claim 6 of the ‘447 patent were infringed. Finally, ALJ Essex held that while the economic prong of the domestic industry requirement for the ‘229 patent had been satisfied, the technical prong for the ‘229 patent had not been satisfied.
The notice issued by ALJ Essex released only the title pages and conclusions of law sections of the ID. We will provide additional information once the public version of the ID issues in its entirety.
March 17th, 2010 at 10:43 pm
There also is a district court case that was stayed pending a final determination by the ITC. If the respondent appeals the ITC’s final determination to the Federal Circuit, does the district court’s stay remain in effect? It would seem a waste of judicial resources for a case to be in parallel proceedings before both the district court and the Federal Circuit on appeal.
Also, many records are labeled as confidential on the ITC’s website for this case, and this presumably explains the large volume of protective orders in the ITC record. Before the final determination, there will certainly be some transferring of information, particularly confidential information, to the district court, whether via requests to the party that supplied the information, or via a 28usc1659b request.
Due to the relatively fast-paced nature of an ITC proceeding, there is a greater likelihood that the parties may learn of new relevant information after discovery has closed, or at an otherwise too-late date in the ITC proceeding, such that the ALJ denies admission of the new information. If the losing party appeals to the Federal Circuit, it may be denied the opportunity to present arguments based on the new information. The losing party could of course raise the arguments before the district court, but then the right to appeal the ITC decision may be lost.
Res judicata also is a factor at this stage. For example, the ITC’s determination may be that certain patent claims are not invalid, while the district court’s decision, which is based upon consideration of the new information and whatever it deems persuasive from the ITC case, may be that those same patent claims are invalid. In this sense, the fast-paced nature of an ITC proceeding can be used as an effective strategy for either party.