By Eric Schweibenz
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Jun
15
Further to our May 12 post, on June 11, 2009, ALJ E. James Gildea issued Order No. 7: Setting Procedural Schedule in Certain Wireless Communications Devices and Components Thereof (337-TA-675).

According to the Order, the evidentiary hearing in this matter will commence on January 19, 2010.


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By Eric Schweibenz
|
Jun
15
On June 12, 2009, the ITC issued a Notice of Final Determination in Certain Silicon Microphone Packages and Products Containing Same (337-TA-629) finding a violation of section 337 by MEMS Technology Berhad (“MemsTech”) as a result of infringement of certain claims of U.S. Patent No. 6,781,231 and 7,242,089.  Please note that Oblon Spivak represents MemsTech in this matter.

As we explained in our March 16 post, this investigation was instituted on January 14, 2008, based on the complaint of Knowles Electronics, LLC of Itasca, Illinois.


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By Eric Schweibenz
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Jun
12
On June 10, 2009, ALJ E. James Gildea issued the public version of Order No. 8 (dated June 1, 2009) in Certain Active Comfort Footwear (Inv. No. 337-TA-660).  In the Order, ALJ Gildea denied Respondent RYN Korea Co. Ltd.’s (“RYN”) motion for summary determination of non-infringement of U.S. Patent No. 6,341,432 (the “‘432 patent”).

According to the Order, RYN argued that certain of its shoe products (“Accused Shoes”) did not literally infringe the ‘432 patent because the Accused Shoes did not “have the claimed structure for ‘recess (13)’ and ‘material element (25)’” limitations.  RYN also argued that Complainants Masai Marketing & Trading AG and Masai USA Corp. (collectively, “Masai”) were estopped from asserting infringement under the doctrine of equivalents because of certain claim amendments Masai made during prosecution of the patent-in-suit.  In opposition, Masai asserted that RYN’s motion was insufficient because it did not “provide adequate factual evidence of the level of skill in the relevant art” and that there were genuine issues of material fact as to whether the Accused Shoes had a “material element” and a “recess ‘between’ the sole body and covering” as claimed in the patent-in-suit.  Further, Masai argued that RYN was incorrect in asserting that Masai alleged infringement under the doctrine of equivalents.  The Commission Investigative Staff (“Staff”) opposed RYN’s motion for summary determination of non-infringement arguing that Masai did not assert infringement under the doctrine of equivalents and that RYN’s non-infringement arguments with respect to literal infringement were not based on factual evidence but rather, on conclusory expert statements.  Staff also argued that there was “a genuine issue of material fact as to the structure of the sole and location of the ‘tunnel’ or ‘recess’ in the Accused Shoes.”


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By Eric Schweibenz
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Jun
11
Further to our May 22 post, on June 3, 2009, the International Trade Commission issued the public version of its Opinion in Certain Semiconductor Chips With Minimized Chip Package Size and Products Containing Same (Inv. No. 337-TA-605).  In the Opinion, the Commission reversed ALJ Theodore R. Essex’s finding that respondents Spansion, Inc., Spansion, LLC (collectively “Spansion”), Qualcomm, Inc. (“Qualcomm”), ATI Technologies (“ATI”), Motorola, Inc. (“Motorola”), STMicroelectronics N.V. (“ST”), and Freescale Semiconductor, Inc. (“Freescale”) (collectively “Respondents”) had not violated Section 337.  Specifically, the Commission reversed ALJ Essex’s finding that Respondents’ semiconductor chip packages and assemblies did not infringe certain claims of complainant Tessera, Inc.’s (“Tessera”) U.S. Patent Nos. 5,852,326 (the “‘326 patent”) and 6,433,419 (the “‘419 patent”).  Additionally, the Commission reversed ALJ Essex’s determination that Tessera had waived its indirect infringement arguments, and found that Respondents had in fact contributorily infringed the ‘419 patent.  The Commission also modified ALJ Essex’s invalidity analysis, although it affirmed his ultimate conclusion that the asserted patents are not invalid.  Finally, the Commission denied Tessera’s request for a “tailored” General Exclusion Order (“GEO”) and instead issued (1) a Limited Exclusion Order (“LEO”) covering Respondents’ unlicensed infringing chip packages and Motorola‘s downstream products that incorporate Respondents’ unlicensed infringing chip assemblies and (2) cease and desist orders directed to those Respondents that maintain commercially significant inventory of infringing goods in the United States.

By way of background, the patents-in-suit are directed to semiconductor chip assemblies that use “solder balls” to connect the semiconductor chip’s package substrate to a printed circuit board.  In particular, the asserted patents address certain problems caused by unwanted stress on the semiconductor chip package due to the differing rates of thermal expansion (“DTE”) of the materials used to construct the semiconductor chip, the package substrate, and the printed circuit board, respectively.


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By Barry Herman
|
Jun
11
On June 11, 2009, the Commission issued a Notice determining that it would review Chief ALJ Paul J. Luckern’s May 8, 2009 Initial Determination in Certain Short-Wavelength Light Emitting Diodes, Laser Diodes and Products Containing Same (Inv. No. 337-TA-640).  As explained in our June 11 post, ALJ Luckern granted Complainant Professor Gertrude Neumark Rothschild’s motion for summary determination that she satisfied the domestic industry requirement.  According to the Notice, on May 18 and May 19, respondent Panasonic and the Commission Investigative Staff filed petitions for review of the May 8 Initial Determination, respectively.  Professor Rothschild filed a response on May 26.

The Commission’s Notice requests briefing on the following questions:

  • Does section 337 (including the legislative history and the case law) support the ALJ’s determination that complainant’s payments made to outside counsel for exploiting and licensing the ‘499 patent qualify as an “investment” under 337(a)(3)(C)?

  • Does the record indicate the extent of investment made and royalties received in connection with the licenses granted prior to litigation, as opposed to licenses entered into in order to settle litigation, and, if so, are such investments and royalties entered into prior to litigation entitled to more weight in the analysis?

  • Does it matter whether the investment in licensing is performed by in-house employees versus outside counsel?

  • For determining the sufficiency of investment in licensing, it is relevant that the party asserting the intellectual property right is an individual inventor?


Written submissions are due on June 26 and responsive submissions are due on July 10.


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