08
Dec
On December 5, 2011, Walker Digital, LLC (“Walker Digital”) 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 Blu-ray disc players, components thereof, and products containing the same that infringe one or more claims of U.S. Patent No. 6,263,505 (the ‘505 patent):

  • D&M Holdings, Inc. of Japan

  • D&M Holdings US, Inc. of Mahwah, New Jersey

  • Denon Electronics (USA) LLC of Mahwah, New Jersey

  • Funai Electric Co., Ltd. of Japan

  • Funai Corp., Inc. of Rutherford, New Jersey

  • Haier Group Corp. of China

  • Haier America Trading, LLC of New York, New York

  • Harman International Industries, Inc. of Stamford, Connecticut

  • Inkel Corp. of South Korea

  • LG Electronics, Inc. of South Korea

  • LG Electronics U.S.A., Inc. of Englewood Cliffs, New Jersey

  • Marantz America LLC of Mahwah, New Jersey

  • Onkyo Sound & Vision Corp. of Japan

  • Onkyo USA Corp. of Upper Saddle River, New Jersey

  • Orion America, Inc. of Princeton, Indiana

  • Orion Electric Co., Ltd. of Japan

  • Panasonic Corp. of Japan

  • Panasonic Corp. of North America of Seacaucus, New Jersey

  • P&F USA, Inc. of Alpharetta, Georgia

  • Philips Electronics North America Corp. of Andover, Massachusetts

  • Pioneer Corp. of Japan

  • Pioneer Electronics (USA) Inc. of Long Beach, California

  • Samsung Electronics Co., Ltd. of South Korea

  • Samsung Electronics America, Inc. of Ridgefield Park, New Jersey

  • Sharp Corp. of Japan

  • Sharp Electronics Corp. of Mahwah, New Jersey

  • Sherwood America, Inc. of La Mirada, California

  • Sony Corp. of Japan

  • Sony Computer Entertainment, Inc. of Japan

  • Sony Corp. of America of New York, New York

  • Sony Electronics, Inc. of San Diego, California

  • Sony Computer Entertainment of Foster City, California

  • Toshiba Corp. of Japan

  • Toshiba America Information Systems, Inc. of Irvine, California

  • VIZIO, Inc. of Irvine, California

  • Yamaha Corp. of Japan

  • Yamaha Corp. of America of Buena Park, California

  • Yamaha Electronics Corp., USA of Buena Park, California


According to the complaint, the ‘505 patent is directed to technology that “allows someone who is watching a movie on Blu-ray disc to access ‘fun facts’ about an actor or a scene without pausing the movie to do a search on the Internet.”  Supplemental information requested by the user is delivered and synchronized with the movie as it continues to play without the need for any additional computers or Internet browsers.

The complaint describes the infringing activities of the Proposed Respondents by dividing the Proposed Respondents into groups based on each Respondent and its subsidiaries, resulting in seventeen groups.  The complaint specifically identifies a number of allegedly infringing products associated with the various Proposed Respondents.

As to related litigation, the complaint describes that two ex parte reexamination requests have been filed against the ‘505 patent (one granted, and one deemed moot based on the other), and the reexamination process is ongoing.  The complaint states that Walker Digital filed a civil action on April 11, 2011, in the U.S. District Court for the District of Delaware accusing Proposed Respondents of infringing the ‘505 patent, and several defendants have requested a stay pending outcome of the reexamination proceedings.  The complaint also states that Walker Digital filed a civil action on April 22, 2011, in the U.S. District Court for the District of Delaware accusing six different defendants of infringing the ‘505 patent, although that case has been terminated. 

Walker Digital asserts that it meets both the economic and technical prongs of the domestic industry requirement, arguing that it has “made substantial investment in the exploitation of the ‘505 patent through licensing activities.”  Specifically, Walker Digital licensed the ‘505 patent to California-based electronics maker Oppo Digital Inc., a company that designs and sells digital electronics products, including Blu-ray disc players that practice the ‘505 patent.  The complaint also alleges that Walker Digital has licenses with other entities listed in a confidential filing. 

With respect to potential remedy, the complaint requests the Commission to issue a permanent limited exclusion order barring entry into the U.S. of Proposed Respondents’ Blu-ray disc players and components that infringe the ‘505 patent.  Walker Digital also requests permanent cease and desist orders directed against the Proposed Respondents, directing each domestic Proposed Respondent to cease and desist from importing, marketing, or selling Blu-ray disc players or components that infringe the ‘505 patent.
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