On May 22, 2009, the Federal Circuit issued its opinion in Epistar Corp. v. Int’l Trade Comm’n, No. 2007-1457.  This was an appeal from the Commission’s final determination in Investigation No. 337-TA-556, which held that Epistar’s LED products infringed U.S. Patent No. 5,008,718 (“the ‘718 Patent).  The’718 patent is owned by Philips Lumileds Lighting Co. LLC (“Lumileds”).  At the ITC, Epistar attempted to argue that the ‘718 patent was invalid and the parties disagreed on the claim constructions for two terms.  The Commission found that Epistar had waived its right to argue that the ‘718 patent was invalid due to a settlement agreement signed by its subsidiary.  After the Commission ruled against Epistar’s construction of two claim terms, it found that Epistar’s products infringed and issued a Limited Exclusion Order (“LEO”) prohibiting the importation of Epistar’s LED products, regardless of the manufacturer or importer of those products.  Epistar appealed to the Federal Circuit.

In the opinion, the Federal Circuit reversed the Commission’s decision that Epistar could not raise the defense of patent invalidity, affirmed the Commission’s claim construction, and reversed the grant of the LEO.  The Federal Circuit remanded the case to the ITC so that Epistar could raise its invalidity defense and reconsider the grant of the LEO.


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On May 20, 2009 the International Trade Commission reversed ALJ Theodore R. Essex’s December 1, 2008 Initial Determination (“ID”) finding no violation of the ‘326 and ‘419 patents in Certain Semiconductor Chips with Minimized Chip Package Size and Products Containing Same (337-TA-605) and issued a Notice of Commission Final Determination of Violation of Section 337.  The Commission issued a limited exclusion order against respondents Spansion, Qualcomm, ATI, Motorola, STMicroelectronics-NV, and Freescale, and cease and desist orders against Motorola, Qualcomm, Freescale, and Spansion.

In the ID, ALJ Essex found that the respondents did not infringe the asserted claims of the ‘326 and ‘419 patents; that the patents were not invalid under §§ 102, 103, or 112; and that a domestic industry existed with respect to the patents.  The ALJ issued an RD in which he recommended a limited exclusion order if the Commission determined a violation existed.


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On May 20, 2009, ALJ Theodore R. Essex issued the public version of Order No. 22 (dated May 11, 2009) in Certain Automotive Multimedia Display and Navigation Systems, Components Thereof, and Products Containing Same (337-TA-657).  In the Order, ALJ Essex granted complainant Honeywell International, Inc.’s (“Honeywell”) motion to compel respondents Alpine Electronics, Inc. and Alpine Electronics of America, Inc. (collectively “Alpine”) to produce documents relating to “Mercedes-Benz Alpine navigation products” and a witness to testify regarding such documents.

According to the Order, Honeywell asserted that documents related to the “Mercedes-Benz Alpine navigation products” were responsive to its discovery requests.  Specifically, Honeywell requested documents related to products sold for importation as part of certain Mercedes-Benz vehicles and products imported into the U.S. for testing purposes.  In opposition, Alpine argued that the documents Honeywell sought were irrelevant to the investigation because they related to “a product that has not been released commercially” and “products that Alpine never imported for the sale in the United States.”  Alpine further argued that the documents were irrelevant because Honeywell was not seeking a general exclusion order nor a remedy against downstream products or parties other than Alpine.  The Commission Investigative Staff argued that the documents Honeywell sought were subject to discovery because certain products are “imported as part of assembled Mercedes-Benz vehicles and, thus might be considered as sold for importation” and other products are sufficiently close to completion to be relevant to the investigation.


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By Eric Schweibenz
|
May
21
On May 19, 2009, Chief ALJ Paul J. Luckern issued an Order granting complainant Gertrude Neumark Rothschild’s motion to consolidate Certain Light Emitting Diode Chips, Laser Diode Chips and Products Containing Same (Inv. No. 337-TA-674) and Certain Short-Wavelength Light Emitting Diodes, Laser Diodes and Products Containing Same (Inv. No. 337-TA-640).

ALJ Luckern determined that “both the 640 Investigation and the 674 Investigation involve the same complainant (as well as the same administrative law judge and staff attorney), the same allegations of domestic industry, the same asserted patent (U.S. Patent No. 5,252,499), and the same asserted claims (independent claim 10 and dependent claims 12, 13 and 16).”  Thus, in view of the overlap in factual and legal issues between the two investigations, ALJ Luckern found that the most efficient course was to consolidate the two investigations.  ALJ Luckern also determined that consolidation “would (i) conserve the parties’ and the Commission’s resources, (ii) avoid the need for two hearings, and (iii) avoid potentially difficult procedural and legal complications that could arise by having to determine whether and to what extent any rulings in the 640 Investigation could affect issues in the 674 Investigation if the investigations proceed on separate, independent tracks.”


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By Eric Schweibenz
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May
20
On May 20, 2009, UNeMed Corporation (“UNeMed”) of Omaha, Nebraska filed a complaint requesting that the ITC commence an investigation pursuant to section 337.

The complaint alleges that the following proposed respondents unlawfully import into the U.S. and sell within the U.S. after importation certain products falsely advertised as containing creatine ethyl ester:

  • Bodyonics, Ltd. of Hicksville, New York;

  • Engineered Sports Technology, Inc. of Oviedo, Florida;

  • Proviant Technologies, Inc. of Champaign, Illinois;

  • Controlled Labs of New Rochelle, New York;

  • NRG-X Labs. of Bentonville, Arkansas; and

  • San Corporation of Oxnard, California.


According to the complaint, UNeMed is the technology transfer entity of the University of Nebraska Medical Center (“UNMC”), and the exclusive licensee of patents filed and issued to the Board of Regents of the University of Nebraska on behalf of UNMC employees.  UNeMed’s portfolio includes U.S. Patent No. 6,897,334 and other U.S. patent applications (“UNMC IP”) relating to creatine ethyl ester used as a nutritional supplement and an anti-inflammatory.


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