28
Feb
By Alex Gasser
On February 23, 2011, the International Trade Commission (the “Commission”) issued a notice determining to review in part an Initial Determination (“ID”) issued by ALJ Carl C. Charneski on December 16, 2010, finding no violation of Section 337 in Certain Multimedia Display And Navigation Devices And Systems (337-TA-694).

By way of background, the Complainants in this investigation are Pioneer Corporation and Pioneer Electronics (USA), Inc. (collectively, “Pioneer”) and the Respondents are Garmin International, Inc. and Garmin Corp. (collectively, “Garmin”).  In the ID, ALJ Charneski determined there was no violation of Section 337.  Specifically, ALJ Charneski determined that (i) Garmin’s accused products do not infringe the asserted claims of the Patent Nos. 5,365,448 (the ‘448 patent), 5,424,951 (the ‘951 patent), and 6,122,592 (the ‘592 patent), (ii) Respondents did not show by clear and convincing evidence that any claim of the ‘592 patent is invalid due to obviousness or lack of written description, and (iii) Complainants satisfied the domestic industry requirement with respect to the asserted patents.  See our February 11, 2011 post for more details.

According to the February 23 notice, Pioneer, Garmin, and the Commission Investigative Staff each filed petitions for review of the ID on January 5, 2011.   On January 9, 2011, the parties filed responses to the petitions.

After examining the record of the investigation, including the ID and the parties’ submissions, the Commission determined to review the ID in part.  In particular, the Commission determined to review (1) the claim construction of the limitation “second memory means” recited in claim 1 of the ‘951 patent, (2) infringement of claims 1 and 2 of the ‘951 patent, (3) the claim construction of the limitations “extracting means” and “a calculating device” recited in claim 1 of the ‘592 patent, (4) infringement of claims 1 and 2 of the ‘592 patent, (5) validity of the ‘592 patent under the written description requirement of 35 U.S.C. § 112, and (6) the economic prong of the domestic industry requirement.

The notice states that the parties are requested to submit briefing on the issues under review and on remedy, the public interest, and bonding.  The notice further states that the Commission is particularly interested in responses to the following questions:
1.  With respect to claim 1 of the ‘951 patent, does the claimed function of the limitation “second memory means” require “the read display pattern data” stored on the “second memory means” to be in the same data format with “said display pattern data ... from said first memory mean”? Does the scope of the claimed function allow “display pattern data” stored on the “second memory means” to be derived from and to convey the same conceptual information as “display pattern data” from the “first memory means,” even though the display pattern data may be represented in different formats? Please provide support for your claim construction in the claims, the specification, the prosecution history, and any extrinsic evidence concerning how the claim would be understood by persons skilled in the art.

2.  Assume that the scope of the claimed function of the “second memory means” limitation recited in claim 1 of the ‘951 patent encompasses “display pattern data” stored on the “second memory means” that are derived from and represented in a different format than the “display pattern data” from the “first memory means,” where both “display pattern data” represent the same conceptual information. Do the accused product combinations, i.e., the product combinations identified at the top of page 3 of complainant’s petition for review, meet the “second memory means” limitation?

3.  Assuming that the accused product combinations meet all of the recited limitations of claim 1 of the ‘951 patent, do they also meet dependent claim 2’s limitation “wherein said second memory means has a plurality of memory locations to store said position coordinate data and said position display data to indicate said display pattern as a pair?” Please cite to all evidence in the record for support.

4.  With respect to the proper construction of the function of the “extracting means” limitation recited in claim 1 of the ‘592 patent, does claim 1 require that the recited “plurality of locations” be physically segregated into different categories in memory in view of the intrinsic evidence (see, e.g., ‘592 patent, Figure 27 and Col. 16).

5.  If the answer to question 4 is yes; do the accused devices meet the “extracting means” limitation of the ‘592 patent? Please cite to all evidence in the record for support.

6.  With respect to the proper construction of the corresponding structure of the “extracting means” limitation recited in claim 1 of the ‘592 patent, should the Commission modify the corresponding structure identified by the ALJ from the specification as “CPU programmed to read location data from memory and a CD-ROM drive, wherein the memory is RAM configured to store the location data as depicted in Figure 27.” Please provide support for your claim construction in the claims, the specification, the prosecution history, and any extrinsic evidence concerning how the claim would be understood by persons skilled in the art.

7.  If the answer to question 6 is yes, do the accused devices meet the “extracting means” limitation of the ‘592 patent? Please cite to all evidence in the record for support.

8.  With respect to the proper construction of the limitation “a calculating device” recited in claim 1 of the ‘592 patent, does the intrinsic evidence require that the recited term “said locations” refer to the plurality of locations of the selected category that has been extracted by the “extracting means,” rather than all locations of the selected category?

9.  If the answer to question 8 is yes, do the “Search Near” mode and the “GPS Simulator” mode of the accused device meet the limitation “a calculating device.” Please cite to all evidence in the record for support.

10.  With respect to the functionality discussed on page 124, n. 19 of the ID, please cite to all evidence of record indicating how this feature operates and how this feature does or does not meet the “a calculating device” limitation of claim 1. Please cite to all evidence in the record for support.

11.  Assuming that the specification of the ‘592 patent provides adequate support for the “extracting means” limitation of claim 1 and assuming that claim 1 is not directed to the disparaged problem in the prior art, does the specification provide adequate support for “a selector device” and “a location name display device” recited in claim 1 to satisfy the written description requirement of 35 U.S.C. § 112?

12.  With respect to the economic prong of the domestic industry requirement, what is Pioneer’s investment as opposed to DVA’s investment for Pioneer’s licensing activities with the entity identified on page 148 of the ID?

13.  With respect to Pioneer’s licensing negotiation efforts with the entity identified on page 151 of the ID, what is the contribution by Pioneer’s U.S. employees?

14.  Do payments made to outside counsel by complainant prior to filing the instant investigation constitute investment in exploitation of the patent under section 337(a)(3)(C)?

15.  With respect to the table provided on pages 87-88 of complainant’s post-hearing brief and adopted by the ALJ on pages 157-158 of the ID, please identify the targeted licensee for each entry.

16.  Is Pioneer’s investment in exploitation of the asserted patents through licensing “substantial” under section 337(a)(3)(C), in light of the Commission’s holding on page 31, first paragraph, of Certain Printing and Imaging Devices and Components Thereof, 337-TA-690, Comm’n Op. (Feb. 1, 2011)?

Written submissions are due by March 9, 2011, with reply submissions due by March 18, 2011.
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