On July 24, 2012, Technology Properties Limited LLC of Cupertino, California (“TPL”), Phoenix Digital Solutions LLC of Cupertino, California, and Patriot Scientific Corporation of Carlsbad, California (collectively, the “Complainants”) 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 wireless consumer electronics devices and components thereof that infringe one or more claims of U.S. Patent No. 5,809,336 (the ‘336 patent):
- Acer Inc. of Taiwan
- Acer America Corporation of San Jose, California
- Amazon.com, Inc. of Seattle, Washington
- Barnes & Noble, Inc. of New York, New York
- Garmin Ltd. of Switzerland
- Garmin International, Inc. of Olathe, Kansas
- Garmin USA, Inc. of Olathe, Kansas
- HTC Corporation of Taiwan
- HTC America of Bellevue, Washington
- Huawei Technologies Co., Ltd. of China
- Huawei North America of Plano, Texas
- Kyocera Corporation of Japan
- Kyocera Communications, Inc. of San Diego, California
- LG Electronics, Inc. of South Korea
- LG Electronics U.S.A., Inc. of Englewood Cliffs, New Jersey
- Nintendo Co., Ltd. of Japan
- Nintendo of America, Inc. of Redmond, Washington
- Novatel Wireless, Inc. of San Diego, California
- Samsung Electronics Co., Ltd. of South Korea
- Samsung Electronics America, Inc. of Ridgefield Park, New Jersey
- Sierra Wireless, Inc. of Canada
- Sierra Wireless America, Inc. of Carlsbad, California
- ZTE Corporation of China
- ZTE (USA) Inc. of Richardson, Texas
According to the complaint, the ‘336 patent generally relates to devices that incorporate microprocessors, memory, and/or input/output interfaces that enable connectivity. In particular, the ‘336 patent relates to the use of two independent clocks in a microprocessor system: (1) an on-chip clock to time the CPU; and (2) a second independent clock to time the input/output (I/O) interface. The complaint states that decoupling the system clock from the I/O clock allows the clocks to run independently or “asynchronously,” which is fundamental to the increased speed and efficiency of modern microprocessors.
In the complaint, the Complainants state that the Proposed Respondents import and sell products that infringe the asserted patents. The complaint specifically refers to various electronic devices associated with the Proposed Respondents.
Regarding domestic industry, the Complainants state that a domestic industry exists by virtue of TPL’s substantial investments in the development and enforcement of the ‘336 patent through its significant licensing activities, which have resulted in numerous licensees that practice the inventions claimed in the ‘336 patent. In particular, the complaint states that TPL employs multiple executives and experts who have worked to analyze and license a portfolio of patents that includes the ‘336 patent. According to the complaint, the majority of these employees are based at TPL’s headquarters in Cupertino, California. The complaint further states that TPL has made extensive use of the inventions claimed in the ‘336 patent to develop microprocessor products that, when integrated into systems with relevant features such as an external memory bus and an input/output interface, enable products to practice the ‘336 patent.
As to related litigation, the Complainants state that, concurrently with the filing of the instant ITC complaint, they are also filing civil actions in the U.S. District Court for the Northern District of California accusing the Proposed Respondents (other than the Acer and HTC entities) of infringing the ‘336 patent. Additionally, the Complainants state that Acer, Inc., Acer America Corporation, and Gateway, Inc.; HTC Corporation and HTC America, Inc.; and Barco NV have filed declaratory judgment actions involving the ‘336 patent in the U.S. District Court for the Northern District of California. According to the complaint, these three declaratory judgment actions remain pending. The complaint also refers to thirteen previous district court actions involving the ‘336 patent that are no longer pending.
With respect to potential remedy, the Complainants request that the Commission issue a permanent limited exclusion order and permanent cease and desist orders directed at the Proposed Respondents.