By John Presper
On May 13, 2013, Black Hills Media, LLC of Wilmington, Delaware (“Black Hills”) 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 digital media devices that infringe one or more claims of U.S. Patent Nos. 8,028,323; 8,214,873; 8,230,099; 8,045,952; 8,050,652 and 6,618,593 (collectively, the “Asserted Patents”):

  • Samsung Electronics Co. Ltd. of South Korea

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

  • Samsung Telecommunications America, LLC of Richardson, Texas

  • LG Electronics, Inc. of South Korea

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

  • LG Electronics MobileComm U.S.A., Inc. of San Diego, California

  • Panasonic Corporation of Japan

  • Panasonic Corporation of America of Secaucus, New Jersey

  • Toshiba Corporation of Japan

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

  • Sharp Corporation of Japan

  • Sharp Electronics Corporation of Mahwah, New Jersey

According to the complaint, the Asserted Patents generally relate to sharing of media across various electronic devices (e.g., phones, TVs, etc.).  Additionally, the ‘593 patent generally relates to location based services on smart phones.

As to the allegedly infringing products, the complaint identifies specific products from each of the Proposed Respondents, including televisions, Blu-ray disc players, home theater systems, tablets, mobile telephones, components thereof and associated software.

Regarding domestic industry, Black Hills asserted that its licensees have made substantial investments in plant and equipment, significant employment of labor and capital, and substantial investments in research, development, repair and warranty work in the U.S.  Black Hills further asserted that these investments are related to articles that practice the Asserted Patents.

As to related litigation, Black Hills stated that on May 22, 2012 it filed complaints in the District of Delaware asserting certain Black Hills patents against: (i) Yamaha Corporation, Civil Action No. 12-635 (RGA); (ii) Logitech, Inc. and Logitech, LLC, Civil Action No. 12-636 (RGA); (iii) Sonos, Inc. Civil Action No. 12- 637 (RGA); and (iv) Pioneer Corporation, Civil Action No. 12-638 (RGA).  Further, Black Hills stated that on May 6, 2013 it filed complaints in the District of Delaware and the Eastern District of Texas asserting certain Black Hills patents against: (i) the Samsung Respondents, Civil Action No. 13-379 (JRG) (E.D. Tex); (ii) the LG Respondents, Civil Action No. 13-803 (UNA) (D. Del.); (iii) the Panasonic Respondents, Civil Action No. 13-806 (UNA) (D. Del.); (iv) the Toshiba Respondents, Civil Action No. 13-805 (UNA) (D. Del.); and (v) the Sharp Respondents, Civil Action No. 13-804 (UNA) (D. Del.).

With respect to potential remedy, Black Hills requested that the Commission issue a permanent limited exclusion order and permanent cease and desist orders directed to the Proposed Respondents.