22
Jan
By Eric Schweibenz
On December 28, 2012, ALJ Thomas B. Pender issued the public version (dated October 24, 2012) of the Initial Determination (“ID”) finding a violation of Section 337 in Certain Electronic Digital Media Devices and Components Thereof (Inv. No. 337-TA-796).  Due to its size, we have split the ID in four parts here: part 1, part 2, part 3, and part 4.

By way of background, the investigation is based on a complaint filed by Apple, Inc. (“Apple”).  The Respondents in this investigation are:  Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively, “Samsung”).  See our August 2, 2011 post for more details about this investigation.  

As summarized in our October 26, 2012 post, ALJ Pender determined that a violation of Section 337 had occurred in this investigation by Samsung by reason of infringement of certain valid claims of U.S. Patent Nos. D618,678 (the ‘678 patent), 7,479,949 (the ‘949 patent), RE 41,922 (the ‘922 patent), and 7,912,501 (the ‘501 patent).  ALJ Pender also held that no violation of Section 337 had occurred in this investigation by Samsung by reason of infringement of certain claims of U.S. Patent Nos. D558,757 (the ‘757 patent), and 7,789,697 (the ‘697 patent).  Additionally, ALJ Pender determined that a domestic industry in the U.S. does exist that practices or exploits the ‘757, ‘678, ‘949, ‘922, and ‘501 patents, but does not exist for the ‘697 patent.

The ‘757 Patent

Infringement:

As an initial matter, ALJ Pender held that the sole test for design patent infringement is “whether the claimed design is ‘substantially the same’ as the accused design in the eye of the ordinary observer, giving such attention as a purchaser usually gives.”

Turning to the claimed products, ALJ Pender held that the overall impression of the accused products is substantially different from the design claimed in the ‘757 patent.  Specifically, ALJ Pender held that the ‘757 patent gives a sleek, minimalistic impression, which is significantly different from the accused products’ busy, angular appearance.  Accordingly, ALJ Pender held that the accused products do not infringe the ‘757 patent.

Validity:

ALJ Pender held that the sole claim of the ‘757 patent is valid.  ALJ Pender held that neither of the references presented qualified as primary references because they are not sufficiently the same as the ‘757 patent.

Technical Prong:

ALJ Pender held that the ‘757 patent’s domestic industry products practice the ‘757 patent.  Specifically, ALJ Pender held that, despite Apple’s admitted differences, the sleek, minimalistic impression of the ‘757 patent is substantially similar to the ‘757 patent’s domestic industry products.

The ‘678 Patent

Infringement:

ALJ Pender held that the overall visual impression of several of the accused products is substantially similar to the design of the ‘678 patent.  The ‘678 patent claimed a design for the front face of a mobile device.  ALJ Pender held that the overall impression of the ‘678 patent is a “symmetrical and minimalistic design.”  ALJ Pender held that several of the accused products have a substantially similar overall impression and, accordingly, infringe the design claimed in the ‘678 patent.

Validity:

ALJ Pender held that the ‘678 patent is valid because it was not obvious and the application did not present new matter.  ALJ Pender held that neither of the two references cited by Samsung in view of additional prior art rendered the asserted claim of the ‘678 patent obvious.  Samsung asserted that the oblique shading added to the ‘678 patent during prosecution represented new matter and, thus, renders the ‘678 patent invalid.  ALJ Pender held that the oblique shading feature cited by Samsung was included in the grandparent application to the ‘678 patent; therefore, the oblique shading added by Apple during prosecution is not new matter.

Technical Prong:

ALJ Pender held that the ‘678 patent’s domestic industry products practice the ‘678 patent.  Specifically, ALJ Pender held that the minor differences between the ‘678 patent design and the ‘678 patent’s domestic industry products does not alter the overall visual impression.

The ‘949 Patent

Infringement:

ALJ Pender held that the accused products directly infringe claims 1, 4–6, and 10–20 of the ‘949 patent.  Despite this finding, ALJ Pender held that Samsung did not violate Section 337 with respect to method claims 11–16 because the allegedly infringing acts did not occur at the time of infringement.  Instead, the allegedly infringing acts occurred by Samsung employees in the United States, after importation.

As to indirect infringement, ALJ Pender held that Samsung induced infringement of claims 11–16, but did not contributorily infringe claims 11–16. 

Validity:

ALJ Pender held that all the asserted claims of the ‘949 patent are valid.  Samsung argued that the asserted claims of the ‘949 patent were invalid based on anticipation, obviousness, and failure to satisfy the written description and enablement requirements.  ALJ Pender held that the references cited by Samsung in its anticipation arguments failed to disclose certain claim limitations.  As to Samsung’s obviousness arguments, ALJ Pender held that: 1) the enumerated reference combinations failed to disclose certain claim limitations, and/or 2) Samsung failed to provide sufficient evidence to prove a motivation to combine references.  Regarding the written description and enablement requirements, Samsung argued that the ‘949 patent failed to meet these requirements because it failed to disclose the source code needed to implement certain claim features.  ALJ Pender disagreed with Samsung, holding that the ‘949 patent satisfied the written description and enablement requirements even without disclosing the source code. 

Technical Prong:

ALJ Pender held that the ‘949 patent’s domestic industry products practice the ‘949 patent. 

The ‘922 Patent

Infringement:

ALJ Pender held that claims the accused products directly infringe claims 29, 30, and 33–35 of the ‘922 patent.  Despite this finding, ALJ Pender held that Samsung did not violate Section 337 with respect to method claims 29, 30, and 33–35 because the allegedly infringing acts did not occur at the time of infringement.  Instead, the allegedly infringing acts occurred by Samsung employees in the United States, after importation.

As to indirect infringement, ALJ Pender held that Samsung induced infringement of claims 29, 30, and 33–35, but did not contributorily infringe claims 29–35.  Specifically, ALJ Pender held that Samsung induced infringement of claims 29, 30, and 33–35 by providing end users with manuals and having public demonstrations instructing end users on uses of the accused products that infringe claims 29, 30, and 33–35 of the ‘922 patent.

Validity:

ALJ Pender held that the asserted claims of the ‘922 patent are valid because they are not anticipated or rendered obvious by the references cited by Samsung.  Specifically, ALJ Pender held that: 1) the Frank reference was not prior art, and 2) the Barrett reference, alone, or in combination with other references, failed to disclose the “translucency” limitation of the ‘922 patent.

Technical Prong:

ALJ Pender held that the ‘922 patent’s domestic industry products practice the ‘922 patent.  Specifically, ALJ Pender held that Samsung waived any argument contesting the technical prong of the domestic industry requirement because Samsung failed to address the issue in its pre-hearing brief.

The ‘501 Patent

Infringement:

ALJ Pender held that certain products infringe certain claims of the ‘501 patent.  ALJ Pender divided the accused products into four groups based on the type of detection circuit used.  Specifically, ALJ Pender held the following: 1) the first group infringes claims 1–4, and 8; 2) the second group infringes claims 1, 2, and 8; and 3) the third and fourth groups do not infringe any of the asserted claims.

Validity:

ALJ Pender held that the asserted claims of the ‘922 patent are valid because they are not anticipated or rendered obvious by the references cited by Samsung.  Specifically, ALJ Pender rejected both of Samsung’s anticipation arguments and all three of Samsung’s obviousness arguments.

Technical Prong:

ALJ Pender held that the ‘501 patent’s domestic industry products practice the ‘501 patent.  Samsung did not dispute that the ‘501 patent satisfies the technical prong of the domestic industry requirement.

The ‘697 Patent

Infringement:

ALJ Pender held that none of the accused products infringe the ‘697 patent.  As an initial matter, ALJ Pender divided the accused products into two groups: “GND-detection” and “L-detection.”  ALJ Pender held that both groups of products failed to contain the “coupled” limitation and the limitation requiring “detection circuitry detect that the plug signal path is a high impedance path.”

Validity:

ALJ Pender held that all the asserted claims of the ‘697 patent are valid.  Samsung argued that the asserted claims of the ‘697 patent were invalid based on anticipation, obviousness, and failure to satisfy the written description and enablement requirements.

Technical Prong:

ALJ Pender held that the ‘697 patent’s domestic industry products do not practice the ‘697 patent.  Specifically, ALJ Pender held that both groups of domestic industry products failed to contain the “coupled” limitation and the limitation requiring “detection circuitry detect that the plug signal path is a high impedance path.”

Domestic Industry

ALJ Pender held that a Domestic Industry exists under section 337(a)(3)(C) for the ‘757, the ‘678, the ‘949, the ‘922, and the ‘501 patents.
Share