13
Aug
By Barry Herman
Further to our July 28 post, on August 7, 2009, ALJ E. James Gildea issued the corrected public version of his Initial and Recommended Determinations (“ID”) in Certain Laser Imageable Lithographic Printing Plates (Inv. No. 337-TA-636).  In this investigation, the Complainant is Presstek, Inc. (“Presstek”) and the Respondents are VIM Technologies, Ltd. (“VIM”), Hanita Coatings RCA, Ltd. (“Hanita”), Guaranteed Services & Supplies, Inc. (“Guaranteed”), AteCe Canada (“AteCe”), Spicers Paper, Inc. (“Spicers”), and Recognition Systems, Inc. (“Recognition”) (collectively, “Respondents”).

The patents-in-suit are U.S. Patent Nos. 5,339,737 (the “‘737 patent”) and 4,487,338 (the “‘338 patent”), which are both generally directed to lithographic printing plates suitable for imaging with low-to-moderate power levels of near-infrared laser radiation.  In the 105-page ID, ALJ Gildea held that a violation of Section 337 occurred in the importation into the U.S., the sale for importation, or the sale within the U.S. after importation of certain laser imageable lithographic printing plates (the “accused products”) by reason of infringement of one or more of Claims 1, 10, and 27 of the ‘737 patent, and one or more of Claims 20, 21, and 23 of the ‘338 patent.  Further, ALJ Gildea found that a domestic industry exists with respect to the ‘737 and ‘338 patents.

Infringement

Prior to determining infringement of the ‘737 patent, ALJ Gildea construed disputed claim terms, including “the second layer also being partially transmissive to said radiation.”  Presstek and the Commission Investigative Staff (the “Staff”) objected to Respondents’ proposed construction of this term, arguing that Respondents inappropriately adopted a new claim construction position at the post-hearing briefing stage, which should be stricken or deemed waived.  ALJ Gildea found that Respondents belatedly shifted their claim construction position, which negatively affected Presstek’s and Staff’s ability to respond, and held that Respondents waived their new arguments with respect to this claim term.  ALJ Gildea further held that, based on Respondents’ post-hearing disclaimer of its pre-hearing construction, Respondents abandoned their pre-hearing arguments with respect to this claim term.

Similarly, with respect to the disputed claim term “the substrate comprises a material that reflects imaging infrared radiation,” ALJ Gildea found that Respondents belatedly shifted their claim construction position and thus waived their new arguments.  ALJ Gildea further found that, because Respondents failed to re-state their pre-hearing arguments with respect to this term in their post-hearing brief, Respondents abandoned that claim construction.

In light of his claim constructions, ALJ Gildea determined that all of Respondents’ accused products literally infringe claims 1 and 27 of the ‘737 patent, and that certain VIM accused products literally infringe claim 10 of the ‘737 patent.

Prior to determining infringement of the ‘338 patent, ALJ Gildea construed disputed claim terms, including “the substrate comprises means for reflecting imaging radiation.”  As with certain terms in the ‘737 patent, ALJ Gildea found that Respondents belatedly shifted their claim construction position, and thus had waived their new arguments with respect to the claim term “the substrate comprises means for reflecting imaging radiation,” and abandoned their pre-hearing arguments with respect to this claim term.  In light of his claim constructions, ALJ Gildea determined that all of Respondents’ accused products literally infringe claims 20, 21 and 23 of the ‘338 patent.

Regarding Presstek’s indirect and contributory infringement claims against Hanita, ALJ Gildea held that Hanita induced direct infringement of the ‘737 and ‘338 patents by manufacturing and providing VIM with a portion of the accused products, which, in their final form, literally infringe the ‘737 and ‘338 patents.  ALJ Gildea found that Hanita was aware of these patents and that the accused products may directly infringe.  ALJ Gildea noted that Hanita knew or should have known that its actions in manufacturing portions of the accused products and then supplying them to VIM for completion would induce direct infringement of the ‘737 and ‘338 patents.  ALJ Gildea stated that Hanita’s failure to investigate after learning of possible patent infringement was evidence of its intent to induce infringement, and found that Hanita induced infringement of the ‘737 and ‘338 patents.  Regarding contributory infringement, ALJ Gildea noted that none of the parties discussed the most fundamental issue of 35 U.S.C. § 271(c), which, according to ALJ Gildea, was whether Hanita offered to sell or sold in the U.S. or imported into the U.S. any portion of the accused products.  ALJ Gildea determined that the evidence demonstrated that Hanita manufactured and sold to VIM outside the U.S., VIM completed the manufacture outside the U.S., and then sold the completed accused products for importation into the U.S.  ALJ Gildea stated that the plain language of § 271(c) does not include “sale for importation,” but rather indicates that direct interaction with the U.S. is required.  Because Hanita did not meet the territorial requirements of the statute, ALJ Gildea found that Hanita did not contributorily infringe the ‘737 and ‘338 patents.

Validity 

Regarding validity, ALJ Gildea determined that Respondents failed to show that claims 1 and 27 of the ‘737 patent were invalid as anticipated, and failed to show that claim 10 of the ‘737 patent was invalid for obviousness.  ALJ Gildea indicated that Respondents’ other defenses of invalidity and unenforceability were either waived or withdrawn.

Domestic Industry 

ALJ Gildea determined that the technical and economic prongs of the domestic industry requirement were satisfied with respect to the ‘737 and ‘338 patents.  Specifically, ALJ Gildea found that the Presstek domestic industry articles satisfied the technical prong because these articles met all of the limitations of claim 1 of the ‘737 patent, as well as the limitations of claims 10 and 27 of the ‘737 patent.  ALJ Gildea further found that the Presstek domestic industry articles met all of the limitations of claims 20, 21, and 23 of the ‘338 patent.  For its part, Respondents asserted that only evidence of domestic industry at the time of, or prior to, the filing of the Complaint may be considered, and argued that the reliance on post-complaint testing for domestic industry is unavailing.  ALJ Gildea disagreed, noting that the Commission has used the end of discovery as the cut-off point for satisfaction of the domestic industry requirement, and not just the filing date of the complaint.  ALJ Gildea also found that Presstek satisfied the economic prong of the domestic industry requirement.

Remedy and Bond 

With respect to remedy, ALJ Gildea recommended issuance of a limited exclusion order against  all of Respondents’ accused products that were found to infringe the ‘737 and ‘338 patents.  Presstek requested a cease and desist order to prevent the sale and distribution in the U.S. of any existing inventory of Respondents’ accused products.  ALJ Gildea denied Presstek’s request, stating that there was insufficient evidence to show that the domestic Respondents maintained significant inventories of the accused products in the U.S.  Regarding bond, ALJ Gildea recommended a bond in the amount of 100 percent.
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