By Eric Schweibenz
On March 26, 2012, Technology Properties Limited LLC (“TPL”) 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 computers and computer peripheral devices, components thereof, and products containing the same that infringe one or more claims of U.S. Patent Nos. 6,976,623 (the ‘623 patent), 7,162,549 (the ‘549 patent), 7,295,443 (the ‘443 patent), 7,522,424 (the ‘424 patent), 6,438,638 (the ‘638 patent), and 7,719,847 (the ‘847 patent):

  • Acer Inc. of Taiwan

  • Brother Industries, Ltd. of Japan

  • Canon Inc. of Japan

  • Dane-Elec Memory of France

  • Dell Inc. of Round Rock, Texas

  • Falcon Northwest Computer Systems, Inc. of Medford, Oregon

  • Fujitsu Limited of Japan

  • Jasco Products Company of Oklahoma City, Oklahoma

  • Hewlett-Packard Company of Palo Alto, California

  • HiTi Digital, Inc. of Taiwan

  • Kingston Technology Company, Inc. of Fountain Valley, California

  • Micron Technology, Inc. of Boise, Idaho

  • Lexar Media, Inc. of Fremont, California

  • Microdia Limited of San Jose, California

  • Newegg Inc. of City of Industry, California

  • Rosewill Inc. of City of Industry, California

  • Sabrent of Chatsworth, California

  • Samsung Electronics Co., Ltd. of Korea

  • Seiko Epson Corporation of Japan

  • Shuttle Inc. of Taiwan

  • Systemax Inc. of Port Washington, New York

According to the complaint, TPL is the exclusive licensee of the asserted patents, all of which are generally directed to flash memory readers.  The ‘623 patent discloses a memory card apparatus having more than one interface to read at least two different types of memory cards, allowing faster data transfer between flash cards.  The ‘549 patent is directed to a system with a controller chip that interfaces with a flash memory card and can conduct bad block mapping to reduce errors.  The ‘443 patent discloses a multi-media memory adapter capable of receiving multiple types of flash memory cards.  The ‘638 patent is directed to a multi-flash card reader that uses a converter chip to read data from different kinds of flash cards.  The ‘424 patent and the ‘847 patent are both directed to an apparatus with a port having multiple sets of contact pins adapted to interface with different types of flash memory cards.

The complaint describes the infringing activities of each of the Proposed Respondents separately and specifically identifies a number of allegedly infringing products associated with each of the various Proposed Respondents, including, among other items, lap tops, card readers, and printers.

With regard to related litigation, the complaint states that TPL is concurrently filing civil actions in the U.S. District Court for the Eastern District of Texas accusing the same parties of infringing the asserted patents.  ASUSTek Computer Inc. filed a declaratory judgment of noninfringement against TPL and other parties in February, 2008 based on the ‘623 patent and the ‘638 patent, among other patents.  Soon after, TPL filed two suits against ASUSTek Computer Inc. in the U.S. District Court for the Eastern District of Texas, one alleging infringement of the ’443 and ‘549 patents, and one alleging infringement of the ‘623 patent, among others.  These cases have all been dismissed based on settlement.  TPL filed a complaint for violation of Section 337 against 18 respondents in relation to the ‘623, ‘443, ‘549, and ‘424 patents (Investigation No. 337-TA-807, see our August 26, 2011 post for more details).  This case is still pending at the ITC with 5 respondents remaining.  TPL also filed a complaint against the same 18 defendants in the U.S. District Court for the Eastern District of Texas for infringement of the  ‘623, ‘443, ‘549, and ‘424 patents, and this case has been stayed pending resolution of the 337-TA-807 investigation.

TPL asserts that it meets both the economic and technical prongs of the domestic industry requirement, arguing primarily that it has “made substantial investments in the exploitation of the Asserted Patents through its significant licensing activities, which have resulted in numerous licensees whose products practice the inventions claimed in the ‘424, ‘443, ‘549, ‘623, ‘638, and ‘847 Patents.”  TPL bases this argument on the fact that that its predecessor in interest developed the products and technology that form the “CORE Flash Patent Portfolio,” and made significant investments in plants, equipment, labor, and capital, resulting in extensive use of the inventions claimed in the asserted patents.  TPL argues that it meets the domestic industry requirement by continuing to make substantial investments in licensing this portfolio, including employing a “team of IP legal and Research and Development employees who have worked to analyze and license the CORE Flash Portfolio.”

With respect to potential remedy, the complaint requests the Commission to issue permanent limited exclusion and cease and desist orders directed at the Proposed Respondents and their allegedly infringing devices.