By Eric Schweibenz
On May 1, 2012, the California Institute of Technology (“Caltech”) 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 complementary metal oxide semiconductor (“CMOS”) image sensors and products containing the same that infringe one or more claims of U.S. Patent Nos. 5,841,126 (the ‘126 patent), 6,606,122 (the ‘122 patent) and 5,990,506 (the ‘506 patent):

  • STMicroelectronics NV of Switzerland

  • STMicroelectronics Inc. of Coppell, Texas

  • Nokia Corp. of Finland

  • Nokia, Inc. of White Plains, New York

  • Research in Motion Ltd. of Canada

  • Research in Motion Corp. of Irving, Texas

According to the complaint, Caltech is the assignee of the asserted patents, related to semiconductor chips known as CMOS image sensors.  The ‘126 patent relates to CMOS image sensors “which capture light reflected from an input scene and generate a digital image thereof.”  The ‘122 patent describes CMOS sensors having a completely digital interface with timing and control electronics and other control systems.  The ‘506 patent discloses a semiconductor imaging system having a CMOS image sensor with color filters that “integrate color-filtering elements…with the image sensor.”

The complaint describes the activities of the Proposed Respondents alleged to be both directly and indirectly infringing the asserted patents.  Caltech identifies accused products for each of the asserted patents, listing numerous model numbers of CMOS image sensors for each Proposed Respondent.  Caltech also asserts that it purchased several different mobile telephones imported into the United States containing chips alleged to infringe the asserted patents, including, among others, several Blackberry models.

With regard to related litigation, the complaint describes a declaratory judgment case in the U.S. District Court for the Northern District of California filed against Caltech in relation to the ‘506 and ‘126 patents, among other patents.  This suit was dismissed based on stipulation by the parties.  Caltech and another plaintiff also filed another Section 337 case against different respondents based on a group of patents including the ‘506 patent and the ‘126 patent, terminated after the parties reached a settlement.  Caltech filed suit in the U.S. District Court for the Central District of California against multiple defendants (including some of the Proposed Respondents) for infringement of a group of patents that included the ‘506 and ‘122 patents.    Some of the patents from this group (though none asserted in the present complaint) were the basis of a second suit in the U.S. District Court for the Western District of Wisconsin.  Both these cases were dismissed after the parties reached settlements.  A group of related patents was the basis of an ongoing suit filed by Caltech and its exclusive licensee in the field of dental radiography in the U.S. District Court for the District of Delaware, and this case is currently pending.  Also pending is another suit in the U.S. District Court for the Central District of California filed by Caltech based on the ‘122 patent, among other patents. 

Caltech asserts that it meets both the economic and technical prongs of the domestic industry requirement, arguing that it “operates and maintains a licensing program for the intellectual property developed at Caltech” and that the asserted patents are “key patents in Caltech’s CMOS image sensor portfolio.”  The complaint alleges that this particular portfolio has been licensed to various companies and generated substantial revenue for Caltech through licensing and enforcement via litigation.

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