By Alex Gasser
On August 17, 2012, Isola USA Corp. of Chandler, Arizona (“Isola”) filed an enforcement complaint in Certain Prepregs, Laminates, and Finished Circuit Boards (Inv. No. 337-TA-659).  The enforcement complaint alleges that Taiwan Union Technology Corp. of Taiwan (“TUC”) violated a consent order that had been entered in the underlying investigation.

By way of background, the Commission instituted the underlying investigation on November 12, 2008 based on Isola’s complaint of October 6, 2008.  The underlying complaint named multiple entities—including TUC—as Respondents.  According to the enforcement complaint, on March 12, 2009, ALJ Charles E. Bullock entered a consent order between Isola and TUC, which the International Trade Commission (the “Commission”) elected not to review on April 10, 2009.

According to the enforcement complaint, the consent order requires that “TUC shall not import, sell for importation, or sell after importation into the United States, or knowingly aid, abet, encourage, participate in, or induce the importation into the United States of prepregs and laminates that are the subject of this Investigation, or otherwise infringe, or induce, and/or contribute to the infringement of claims 1-3, 5 and 8 of U.S. Patent No. 6,187,852 [(the ‘852 patent)], and claims 1, 2, 4, and 7-9 of U.S. Patent No. 6,322,885 [(the ‘885 patent)] (collectively, the Asserted Claims) except under consent or license from Isola, its successors, or assigns.”

In the enforcement complaint, Isola alleges that TUC and/or parties acting in concert with TUC have violated the consent order by manufacturing abroad, selling for importation into the U.S., importing into the U.S., using, and/or selling with the U.S. after importation certain prepregs and laminates that are covered by at least one claim of the ‘852 patent and at least one claim of the ‘885 patent.  In view of these alleged violations of the consent order, Isola requests that the Commission institute a formal enforcement proceeding pursuant to 19 C.F.R. § 210.75.

As to related litigation, Isola states that on July 25, 2012, it sued TUC for patent infringement in the U.S. District Court for the District of Arizona on two patents directed to related technology.

With respect to potential remedy, Isola requests that the Commission issue a permanent cease and desist order prohibiting TUC and parties acting in concert with it from engaging in illegal activities.  Isola further requests that the Commission modify the consent order in any manner that would assist in the prevention of the unfair practices that were originally the basis for issuing the consent order.  Additionally, Isola requests that the Commission impose civil penalties pursuant to 19 U.S.C. § 1337(f), and if necessary, bring a civil action in an appropriate U.S. district court to recover such civil penalties.  Lastly, Isola requests that the Commission impose such other remedies and sanctions as are appropriate and within the Commission’s authority.

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