By Eric Schweibenz
On January 13, 2012, Mondis Technology, Ltd. of London, England (“Mondis”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that Chimei Innolux Corporation of Taiwan and Innolux Corporation of Austin, Texas (collectively, “Innolux”) unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain video displays and products containing and using same such as computer monitors and televisions that infringe one or more claims of U.S. Patent Nos. 6,247,090 (the ‘090 patent) and 7,089,342 (the ‘342 patent) (collectively, the “asserted patents”).

According to the complaint, the asserted patents generally relate to what is commonly known as “Plug-and-Play” technology.  In particular, the ‘090 patent relates to storing and communicating display unit information to a video source using a bi-directional communications channel.  The video source can then use the display unit information to generate compatible signals for the video display unit.  Additionally, the ‘090 patent describes using the communication channel to send control instructions from a computer to the video display in order to adjust the displayed image.  The ‘342 patent relates to storing and communicating display unit information to a video source using a bi-directional communications channel, wherein the display unit information includes an identification number for identifying the display unit together with other information.

In the complaint, Mondis states that Innolux imports and sells products that infringe the asserted patents.  The complaint alleges that a number of computer monitors and televisions manufactured by Innolux infringe the asserted patents, and specifically names the Lenovo Thinkvision L2251X computer monitor (manufactured by Innolux) as an infringing product.

Regarding domestic industry, Mondis states that its activities relating to the licensing and enforcement of the asserted patents in the U.S. constitute a significant domestic investment in the exploitation of the asserted patents.  In particular, Mondis states that, since acquiring the asserted patents in 2007 from original patentee Hitachi Ltd. (“Hitachi”), Mondis has engaged in an extensive licensing program relating to the asserted patents.  Mondis states that it has employed counsel and other professionals in connection with its licensing program.  According to the complaint, these professionals have analyzed the asserted patents, met with potential licensees during license negotiations, and prepared and litigated patent infringement litigation.  Mondis states that, to date, it has entered into five licenses encompassing the asserted patents in its own right.  Further, Mondis states that Hitachi entered into a number of additional licenses for the asserted patents before Mondis acquired the patents from Hitachi in 2007.  In addition to its own—and Hitachi’s—licensing activities, Mondis relies on the domestic activities of these licensees to further support its domestic industry allegations.

As to related litigation, Mondis states that Hitachi filed four patent infringement suits in the U.S. District Court for the Northern District of California between 2003 and 2005, alleging infringement of the asserted patents.  According to the complaint, all four of these cases were settled and licenses were taken by each of the defendants.  Mondis further states that, on December 31, 2007, it filed an action against Innolux and others in the U.S. District Court for the Eastern District of Texas alleging infringement of, inter alia, the asserted patents.  Mondis states that all of the defendants in that action other than Innolux settled and took licenses to the asserted patents.  As to Innolux, Mondis states that a jury trial was held in June 2011, and that the jury found that the asserted patents are valid, that Innolux infringes, and that Innolux’s infringement was willful.  On August 30, 2011, the Court entered final judgment and awarded damages in the amount of $15,560,847.00 to Mondis.  Mondis states that an appeal of the district court’s decision is currently pending before the Federal Circuit.  In the complaint, Mondis argues that “[t]he infringement, validity, and enforceability issues normally part of investigations before the Commission have been fully and finally litigated against Innolux in the Eastern District of Texas and accordingly should form no part of this investigation.”  Mondis also refers to an ex parte reexamination of the ‘090 patent and an inter partes reexamination of the ‘342 patent, both filed by Innolux.  According to the complaint, the ex parte reexamination terminated with a confirmation of the patentability of all original claims as well as certain new claims.  The inter partes reexamination is still pending.

With respect to potential remedy, Mondis requests that the Commission issue a permanent exclusion order and a permanent cease and desist order directed at Innolux.