By Tom Fisher
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Feb
19
On February 18, 2009, ALJ Robert K. Rogers, Jr. issued an order denying complainant Saxon Innovations, LLC’s  (“Saxon’s”) motion to amend its complaint to add Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLP (collectively “Samsung”) as respondents in the matter of Certain Electronic Devices, Including Handheld Wireless Communications Devices (Inv. No. 337-TA-667).

Saxon has been litigating a separate patent infringement suit against Samsung in the Eastern District of Texas since October 2007, and the parties have been in settlement negotiations since December 2007.  In its motion to amend its complaint in the ITC, Saxon claimed that several months prior to filing the complaint, it notified Samsung of its intent to include Samsung as a respondent.  Saxon stated that it agreed to refrain from adding Samsung as a respondent as long as the parties continued working towards a settlement in the district court case.  However, since Samsung had allegedly expressed concern regarding any delay in commencing the investigation, Saxon now needed to add Samsung as a respondent.


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By Barry Herman
|
Feb
19
On February 18, 2009, ALJ Robert K. Rogers, Jr. issued an order in the matter of Certain Base Stations and Wireless Microphones (Inv. No. 337-TA-653) denying the joint motions of complainant L-3 Communications Mobile-Vision, Inc. and respondents KCi Communications, Inc., Digital Ally, Inc., and Trinus Systems, Inc. to terminate the investigation as to those respondents based on settlement agreements with the complainant. 

The parties sought to withhold the terms of their settlement agreements from the other respondents in the investigation by not submitting the settlement agreements with their joint motions to terminate – they instead sent the settlement agreements directly to ALJ Rogers under separate cover.  ALJ Rogers held that this violated the clear mandate of Commission Rule 210.21(b)(1), which requires that “a motion for termination by settlement shall contain copies of the licensing or other settlement agreement.”  He denied the motions to terminate without prejudice.


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By Barry Herman
|
Feb
19
On February 17, 2009, Samsung Electronics Co., Ltd. of Korea and Samsung Electronics America, Inc. filed a complaint requesting that the ITC commence an investigation pursuant to section 337.

The complaint alleges that Eastman Kodak Company imports into the U.S. (in addition to sale for importation into the U.S. and/or sale within the U.S. after importation) digital cameras that infringe certain claims of U.S. Patent No. 5,731,852 and U.S. Patent No. 6,229,695.  According to the complaint, the ‘852 patent “improves on the prior art recording devices by allowing a variable-length audio file, enabling the user to create ‘sound tags’ or ‘voice memos’ that exceeded the fixed file size known in the prior art.”  Further, the complaint alleges that the ‘695 patent relates to a palm-sized camera, and more particularly to the housing encasing the device’s structure that provides “increased impact-resistance.”


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By Eric Schweibenz
|
Feb
19
On February 10, 2009, Administrative Law Judge Roger K. Rogers, Jr. issued the public version of his January 12, 2009 Initial Determination in the matter of Certain Silicon Microphone Packages and Products Containing the Same (Inv. No. 337-TA-629).  Please note that Oblon Spivak represents respondent MEMS Technology Berhad (“MemsTech”) in this matter. 

In the ID, ALJ Rogers determined that MemsTech violated section 337 based on the importation, sale for importation, and sale after importation of certain silicon microphone packages by literal infringement of certain claims of Complainant Knowles Electronics, LLC’s (“Knowles”) U.S. Patent Nos. 6,781,231 and 7,242,089.


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By Barry Herman
|
Feb
18
When asked to identify the major differences between patent litigation in the ITC and in federal district court, most practitioners would likely identify 1) the domestic industry requirement and 2) the form of relief (injunctive relief but no money damages).  Another difference is that certain defenses to infringement are not available to respondents in the ITC.

In Certain Abrasive Products Made Using a Process for Making Powder Preforms, and Products Containing Same (Inv. No. 337-TA-449), the ITC determined that with respect to the offshore practice of a patented product, the defenses to infringement under 35 U.S.C. § 271(g) are not available to respondents in infringement actions before the ITC.  Respondent Kinik asserted a defense to infringement under § 271(g) because even if its process were found to include all of the steps of the patent claims, it asserted that the product of those steps was “materially changed by subsequent processes” and thus placed Kinik within the exception of § 271(g)(1).


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