According to the article, the ITC has been examining issues relating to e-discovery for nearly a year, gathering input from litigants, academics, district court judges, and bar associations.  In 2010, Chief Judge Rader asked the Federal Circuit Advisory Council to study e-discovery issues and develop an e-discovery model order for consideration by district courts in patent cases.  On January 11, 2012, Chief Judge Rader and three members of the Council came to the ITC to present an analogous proposal for Section 337 investigations.

The article states that the proposal tracks the approach of the district court e-discovery model order.  In particular, litigants would:

• indicate whether electronic documents such as e-mail are being sought or not;
• presumptively limit the number of custodians whose files will be searched, the locations of those documents, and the search terms that will be used (if litigants exceed the specified limits, they would assume the additional costs);
• use focused search terms limited to specific contested issues; and
• allow privileged documents to be exchanged without losing privilege.

Chief ALJ Charles E. Bullock and ITC Chairman Deanna Tanner Okun both expressed their appreciation for Chief Judge Rader and the Council’s presentation.  After the presentation, ALJ Bullock stated that he is “optimistic that the USITC will come up with a suitable approach to address litigants’ legitimate discovery needs while balancing the costs associated with e-discovery in section 337 investigations.”

The complaint alleges that T-Tech Tattoo Device Inc. of Canada (“T-Tech”), Yiwu Beyond Tattoo Equipments Co., Ltd. of China (“Yiwu”), and Guangzhou Pengcheng Cosmetology Firm of China (“Guangzhou”) (collectively, the “Proposed Respondents”) unlawfully import into the U.S., sell for importation, sell within the U.S. after importation, and/or offer for sale within the U.S. after importation certain ink application devices and components thereof that infringe one or more claims of U.S. Patent Nos. 6,345,553 (the ‘553 patent) and 6,505,530 (the ‘530 patent) (collectively, the “asserted patents”).

According to the complaint, the asserted patents generally relate to ink application devices for tattooing, applying permanent makeup, scar concealment, and areola reconstruction and methods of using these devices.  More specifically, the asserted patents relate to ink application devices that use disposable cartridges designed to reduce or eliminate health risks associated with tattooing and the application of permanent makeup.

In the complaint, the Complainants state that the Proposed Respondents import and sell products that infringe the asserted patents.  The complaint specifically names T-Tech’s EZ Needle Cartridges and certain Yiwu and Guangzhou needle cartridges as infringing products.

Regarding domestic industry, the complaint states that MT.Derm has made a substantial investment in the exploitation of the asserted patents in the U.S. through the design, manufacturing, assembly, marketing, and sale of its PMU medical devices, handsets, and disposable cartridges.  The complaint states that MT.Derm’s PMU and tattoo devices and disposable needle cartridges embody all of the features claimed in certain claims of the asserted patents.  Additionally, the complaint refers to the Complainants’ investment in U.S. labor, training and education, customer support, research and development, and commercial property all in further exploitation of the asserted patents.

As to related litigation, the Complainants state that on April 4, 2004, MT.Derm’s predecessor filed a civil action against Le Belle International, Inc. in the U.S. District Court for the Middle District of Florida alleging infringement of the ‘553 patent.  According to the complaint, this case was dismissed without prejudice based on a settlement agreement.  Additionally, the Complainants state that on July 6, 2009, MT.Derm filed a civil action against Stacey Diorio (an individual doing business as “Natural Profile”) in the U.S. District Court for the Middle District of Florida alleging infringement of the ‘553 and ‘530 patents.  According to the complaint, this case was also dismissed without prejudice based on a settlement agreement.

With respect to potential remedy, the Complainants request that the Commission issue a permanent general exclusion order and permanent cease and desist orders directed at the Proposed Respondents, their affiliates, subsidiaries, divisions, licensees, agents, contractors, and other related entities.  The Complainants state that a general exclusion order is warranted because a widespread pattern of infringement exists, the source of infringing products is difficult to identify, and a limited exclusion order is likely to be circumvented.

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 toner cartridges and components thereof, including but not limited to photosensitive drums, that infringe one or more claims of U.S. Patent Nos. 5,903,803 (the ‘803 patent) and 6,128,454 (the ‘454 patent) (collectively, the “asserted patents”):

• Clover Holdings, Inc. of Hoffman Estates, Illinois
• Clover Technologies Group, LLC d/b/a Depot International f/k/a Depot America f/k/a Image1 Products of Ottawa, Illinois
• Clover Vietnam Co., Ltd. of Vietnam
• Dataproducts USA, LLC of Thousand Oaks, California
• Dataproducts Imaging Solutions S.A. de C.V. of Mexico
• CAU, Inc. d/b/a Cartridges Are Us of Ithaca, Michigan
• Shanghai Orink Infotech International Co., Ltd. of China
• Orink Infotech International Co., Ltd. of Hong Kong
• Zhuhai Rich Imaging Technology Co., Ltd. of China
• Standard Image Co., Ltd. a/k/a Shanghai Orink Co., Ltd. of China
• Zhuhai National Resources & Jingjie Imaging Products Co., Ltd. d/b/a Huebon Co., Ltd. d/b/a Ink-Tank of China
• Standard Image USA, Inc. d/b/a Imaging Standard Inc. of Santa Ana, California
• Printronic Corporation d/b/a Printronic.com d/b/a InkSmile.com of Santa Ana, California
• Nukote, Inc. of Plano, Texas
• Nukote International de Mexico, S.A. de C.V. of Mexico
• Acecom, Inc. – San Antonio d/b/a InkSell.com of San Antonio, Texas
• Atman, Inc. s/b/a pcRUSH.com of El Segundo, California
• Dexxxon Digital Storage, Inc. of Lewis Center, Ohio
• Discount Office Items, Inc. of Columbus, Wisconsin
• Deal Express LLC d/b/a Discount Office Items of Columbus, Wisconsin
• Do It Wiser LLC d/b/a Image Toner of Marietta, Georgia
• E-Max Group, Inc. d/b/a Databazaar.com of Miramar, Florida
• Green Project, Inc. of Hacienda Heights, California
• GreenLine Paper Company, Inc. of York, Pennsylvania
• IJSS Inc. d/b/a TonerZone.com d/b/a InkJetSuperstore.com of Los Angeles, California
• Imaging Resources, LLC of Chatsworth, California
• Ink Technologies Printer Supplies, LLC of Dayton, Ohio
• Myriad Greeyn LLC of Virginia Beach, Virginia
• Office World, Inc. of Eugene, Oregon
• OfficeWorld.com, Inc. of Eugene, Oregon
• OnlineTechStores.com, Inc. d/b/a SuppliesOutlet.com of Reno, Nevada
• SupplyBuy.com, Inc. of Nashville, Tennessee
• Virtual Imaging Products Inc. of Canada
• Zinyaw LLC d/b/a TonerPirate.com of Houston, Texas

According to the complaint, the asserted patents both disclose the same subject matter.  In particular, the complaint states that the asserted patents are directed, in part, to a novel and advantageous projection on a photosensitive drum that is configured to couple with and receive a rotational force from a hole in a laser beam printer (“LBP”), so that the drum may be rotated.  The novel structure of the projection enables a process cartridge which contains the drum to be easily inserted and removed from a LBP by a user and at the same time enables the drum to be rotated in a smooth and stable fashion, thereby ensuring a high quality of the resultant printing.

In the complaint, Canon states that the Proposed Respondents import and sell products that infringe the asserted patents.  The complaint specifically identifies a number of infringing products associated with the various Proposed Respondents.

Regarding domestic industry, Canon states that CVI currently manufactures, inspects, packages, engineers, and recycles millions of toner cartridges and photosensitive drums in the U.S. that utilize technology protected by each of the asserted patents.  According to the complaint, CVI manufactures certain toner cartridges that it sells to Hewlett-Packard Company (“HP”) for distribution throughout the U.S. under the HP brand name.  Canon states that CVI’s main campus is located in Newport News, Virginia, and that this campus includes three primary facilities: (1) a Main Plant, (2) an Advanced Cartridge Manufacturing (“ACM”) Plant, and (3) a Toner Plant.  The complaint includes a photograph of former Virginia Governor Tim Kaine officiating a ribbon cutting ceremony in celebration of the completion of CVI’s ACM Plant. 

As to related litigation, Canon states that, concurrently with the filing of the instant ITC complaint, it is also filing a civil action against the Proposed Respondents in the U.S. District Court for the Southern District of New York alleging infringement of the asserted patents.  Additionally, Canon states that on June 28, 2010, it filed an ITC complaint relating to the asserted patents.  The ITC instituted an investigation (Inv. No. 337-TA-731) based on this complaint.  See our July 28, 2010 post for more details.  Canon states that the 731 investigation was terminated on May 5, 2011, when the Commission issued a consent order prohibiting all 20 Respondents in that investigation from importing into the U.S., selling for importation, and selling or offering for sale in the U.S. after importation the accused toner cartridges and components thereof.  Canon further states that, concurrently with the filing of the complaint in the 731 investigation, it also filed a complaint in the U.S. District Court for the Southern District of New York against the same Respondents.  Canon states that this action was terminated on May 24, 2011 in view of a stipulation, consent judgment, and permanent injunction.  Canon also states that the asserted patents have undergone ex parte reexaminations, and that the USPTO has issued reexamination certificates for each of the asserted patents.  Lastly, Canon refers to various foreign proceedings involving a Korean counterpart to the asserted patents. 

With respect to potential remedy, Canon requests that the Commission issue a permanent general exclusion order—or, alternatively, a limited exclusion order—and permanent cease and desist orders directed at the Proposed Respondents.  Canon states that a general exclusion order is warranted in view of the numerous sources abroad of infringing toner cartridges and components thereof and the available channels of distribution.

The complaint alleges that Chimei Innolux Corporation of Taiwan and Innolux Corporation of Austin, Texas (collectively, “Innolux”) unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain video displays and products containing and using same such as computer monitors and televisions that infringe one or more claims of U.S. Patent Nos. 6,247,090 (the ‘090 patent) and 7,089,342 (the ‘342 patent) (collectively, the “asserted patents”).

According to the complaint, the asserted patents generally relate to what is commonly known as “Plug-and-Play” technology.  In particular, the ‘090 patent relates to storing and communicating display unit information to a video source using a bi-directional communications channel.  The video source can then use the display unit information to generate compatible signals for the video display unit.  Additionally, the ‘090 patent describes using the communication channel to send control instructions from a computer to the video display in order to adjust the displayed image.  The ‘342 patent relates to storing and communicating display unit information to a video source using a bi-directional communications channel, wherein the display unit information includes an identification number for identifying the display unit together with other information.

In the complaint, Mondis states that Innolux imports and sells products that infringe the asserted patents.  The complaint alleges that a number of computer monitors and televisions manufactured by Innolux infringe the asserted patents, and specifically names the Lenovo Thinkvision L2251X computer monitor (manufactured by Innolux) as an infringing product.

Regarding domestic industry, Mondis states that its activities relating to the licensing and enforcement of the asserted patents in the U.S. constitute a significant domestic investment in the exploitation of the asserted patents.  In particular, Mondis states that, since acquiring the asserted patents in 2007 from original patentee Hitachi Ltd. (“Hitachi”), Mondis has engaged in an extensive licensing program relating to the asserted patents.  Mondis states that it has employed counsel and other professionals in connection with its licensing program.  According to the complaint, these professionals have analyzed the asserted patents, met with potential licensees during license negotiations, and prepared and litigated patent infringement litigation.  Mondis states that, to date, it has entered into five licenses encompassing the asserted patents in its own right.  Further, Mondis states that Hitachi entered into a number of additional licenses for the asserted patents before Mondis acquired the patents from Hitachi in 2007.  In addition to its own—and Hitachi’s—licensing activities, Mondis relies on the domestic activities of these licensees to further support its domestic industry allegations.

As to related litigation, Mondis states that Hitachi filed four patent infringement suits in the U.S. District Court for the Northern District of California between 2003 and 2005, alleging infringement of the asserted patents.  According to the complaint, all four of these cases were settled and licenses were taken by each of the defendants.  Mondis further states that, on December 31, 2007, it filed an action against Innolux and others in the U.S. District Court for the Eastern District of Texas alleging infringement of, inter alia, the asserted patents.  Mondis states that all of the defendants in that action other than Innolux settled and took licenses to the asserted patents.  As to Innolux, Mondis states that a jury trial was held in June 2011, and that the jury found that the asserted patents are valid, that Innolux infringes, and that Innolux’s infringement was willful.  On August 30, 2011, the Court entered final judgment and awarded damages in the amount of $15,560,847.00 to Mondis.  Mondis states that an appeal of the district court’s decision is currently pending before the Federal Circuit.  In the complaint, Mondis argues that “[t]he infringement, validity, and enforceability issues normally part of investigations before the Commission have been fully and finally litigated against Innolux in the Eastern District of Texas and accordingly should form no part of this investigation.”  Mondis also refers to an ex parte reexamination of the ‘090 patent and an inter partes reexamination of the ‘342 patent, both filed by Innolux.  According to the complaint, the ex parte reexamination terminated with a confirmation of the patentability of all original claims as well as certain new claims.  The inter partes reexamination is still pending.

With respect to potential remedy, Mondis requests that the Commission issue a permanent exclusion order and a permanent cease and desist order directed at Innolux.

By way of background, the Complainant in this investigation is HTC Corporation (“HTC”) and the Respondent is Apple Inc. (“Apple”).  In the ID, ALJ Bullock determined that no violation of Section 337 had occurred by Apple in the importation into the U.S., sale for importation, or sale within the U.S. after importation of certain portable electronic devices and related software.  Specifically, the ALJ found that Apple does not infringe various claims of U.S. Patent Nos. 6,999,800 (the ‘800 patent), 5,541,988 (the ‘988 patent), 6,320,957 (the ‘957 patent), and 7,716,505 (the ‘505 patent).  ALJ Bullock also found that the asserted claims are not invalid.  Lastly, the ALJ found that a domestic industry exists with respect to the ‘988 and ‘957 patents, but not with respect to the ‘800 and ‘505 patents.

According to the December 16 notice, HTC filed a petition for review of the ID—which also included a contingent petition for review—on October 31, 2011.  That same day, Apple filed a contingent petition for review of the ID.  On November 8, 2011, the parties filed responses to the petition and contingent petitions for review.

After examining the record of the investigation, including the ID and the parties’ submissions, the Commission determined to review the ID in part.  In particular, the Commission determined to review ALJ Bullock’s findings with respect to the ‘800 patent.  The Commission also determined to review the ALJ’s construction and finding that the accused portable electronic devices and related software do not meet the “manually operable selector” limitation of independent claim 1 of the ‘988 patent and independent claim 8 of the ‘957 patent.  According to the December 16 notice, after reviewing this limitation, the Commission declined to take a position on it.  The Commission further determined not to review any other issues in the ID. Accordingly, the Commission terminated the investigation with respect to the ‘500, ‘988, and ‘957 patents.

The notice states that the parties are requested to submit briefing on the issues under review and on remedy, the public interest, and bonding.  The notice further states that the Commission is particularly interested in responses to nine questions listed in the notice.

Written submissions are due by December 30, 2011, with reply submissions due by January 6, 2012.

The complaint alleges that Shenzhen Reliap Industrial Co., Ltd. of China (“Reliap”), Yue Qiu Sheng, a.k.a. Jason Yue of China (“Yue”), and Whalen Furniture Manufacturing Inc. of San Diego, California (“Whalen”) (collectively, the “Proposed Respondents”) unlawfully engage in unfair methods of competition and unfair acts in connection with the importation into the U.S., sale for importation, and/or sale within the U.S. after importation of certain electric fireplaces, components thereof, manuals for same, and products containing same and in relation to certain processes for manufacturing or relating to same.  According to the complaint, the unfair methods of competition and unfair acts at issue include the Proposed Respondents’ misappropriation of Twin-Star’s trade secrets, the Proposed Respondents’ infringement of Twin-Star’s registered copyrights, Yue’s breach of contract, and Reliap’s and Whalen’s tortious interference with Twin-Star’s contractual relations.

According to the complaint, the technology at issue relates to electric fireplaces.  In particular, the complaint states that “[a]n electric fireplace is a kinetic sculpture approximating the size and look of a real, wood burning fireplace.”  The complaint further states that an electric fireplace “replicates the moving flames, burning embers, and charred wood of a real wood-burning fireplace” and that the electric fireplace “may incorporate an electric heater to simulate heat radiated by a real wood-burning fireplace.” 

The complaint refers to Twin-Star’s trade secrets, Twin-Star’s component supplier list, Twin-Star’s customer list, the Twin-Star manufacturing process, the development of the Twin-Star technology, Twin-Star’s manufacturing specifications, hardware and software for a “Twin-Star Prototype 3 LED Functional Indicator Display,” and certain Twin-Star registered copyrights – including the “E1 MANUAL,” “E22 MANUAL,” “KINETIC SCULPTURE 1,” and “KINETIC SCULPTURE 2” – as the intellectual property at issue.

In the complaint, Twin-Star alleges that the Proposed Respondents import and sell Reliap Electric Fireplaces and user manuals therefor and that the Proposed Respondents wrongfully entered into the electric fireplace products industry through the misappropriation of Twin-Star’s trade secrets.  According to the complaint, Yue was formerly employed by Twin-Star and, since the termination of his employment, Yue has misappropriated Twin-Star’s trade secrets in connection with the formation of his own new company Reliap.  The complaint also accuses the Proposed Respondents of infringing Twin-Star’s registered copyrights.  The complaint further states that Yue has breached his Stockholder Agreement with Twin-Star through his wrongful solicitation of customers, wrongful use and/or disclosure of confidential information, and unfair competition through the breach of non-competition provisions.  Lastly, the complaint alleges that Reliap and Whalen have engaged in unfair competition through their tortious interference with Yue’s contractual relations with Twin-Star.

Regarding domestic industry, Twin-Star states that a domestic industry exists “because of market realities,” including:  (a) Twin-Star’s design and distribution of electric fireplace products and their related technology in the U.S.; (b) Twin-Star’s manufacturing-related and other activities relating to its electric fireplace technology in the U.S.; (c) Twin-Star’s substantial investment in exploitation, including engineering and research and development of its electric fireplace technology in the U.S.; (d) Twin-Star’s significant employment of labor and capital relating to its electric fireplace technology in the U.S.; and (e) Twin-Star’s significant investment in facilities and equipment relating to its electric fireplace technology in the U.S.

As to related litigation, Twin-Star refers to ITC Inv. No. 337-TA-791, where Twin-Star is alleging that Reliap and Yue have violated Section 337 in connection with their sale and importation of certain electric fireplaces, components thereof, manuals for same, and products containing same and in relation to certain processes for manufacturing or relating to same.  See our July 15, 2011 post for more details.  Twin-Star also refers to district court cases in the Southern District of California and the District of Delaware.

With respect to potential remedy, Twin-Star requests that the Commission issue an exclusion order, a cease and desist order, and an order instructing the Proposed Respondents to immediately and verifiably turn over to Twin-Star all documents and things in their possession, custody, or control that contain or embody one or more of Twin-Star’s trade secrets or any information derived from or based on one or more of Twin-Star’s trade secrets.

The complaint alleges that Analog Devices Inc. of Norwood, Massachusetts (“ADI”), Amkor Technology, Inc. of Chandler, Arizona (“Amkor”), and Avnet, Inc. of Phoenix, Arizona (“Avnet”) unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain silicon microphone packages and products containing the same that infringe, or that are made by a process that infringes, one or more claims of U.S. Patent Nos. 7,439,616 (the ‘616 patent) and 8,018,049 (the ‘049 patent) (collectively, the “asserted patents”).

According to the complaint, the asserted patents generally relate to silicon microphone package technology.  In particular, the ‘616 patent relates to a package that contains a silicon microphone die.  The ‘049 patent relates to a package that contains a silicon microphone die and a method for manufacturing the package.

In the complaint, Knowles states that ADI, Amkor, and Avnet import and sell products that infringe the asserted patents.  The complaint specifically names a number of ADI silicon microphones and evaluation boards containing silicon microphones as infringing products.  According to the complaint, Amkor manufactures these ADI products pursuant to ADI’s specifications and requirements and provides them to ADI and Avnet, among others.

Regarding domestic industry, Knowles states that it practices the asserted patents in the U.S. through its manufacture, research and development, and application support for its SiSonic MEMS silicon microphone packages.  According to the complaint, Knowles’s domestic facility includes salaried research and design engineers, salaried administrative employees, tens of millions of dollars’ worth of equipment, and other assets allowing for the research, development, production, and sales of its acoustic products.

As to related litigation, Knowles states that on November 14, 2006, it filed a complaint against various entities and individuals in the U.S. District Court for the Northern District of Illinois alleging misappropriation of trade secrets related to silicon microphones.  Knowles states that the resulting action was settled by the parties and dismissed with prejudice.  Additionally, Knowles states that on December 13, 2006, it filed a complaint against Akustica, Inc. in the U.S. District Court for the Eastern District of Texas, alleging infringement of U.S. Patent No. 6,781,231 (the ‘231 patent).  Knowles states that this action was settled by the parties and dismissed without prejudice.  Knowles further states that on October 6, 2009, it filed a complaint against ADI in the U.S. District Court for the Northern District of Illinois, alleging infringement of the ‘231 patent and U.S. Patent No. 7,242,089 (the ‘089 patent).  Knowles states that this action was voluntarily dismissed without prejudice on October 5, 2011.  However, Knowles states that on September 27, 2011, it filed another complaint against ADI in the U.S. District Court for the Northern District of Illinois alleging infringement of U.S. Patent No. 7,537,964 and the ‘049 patent.  Knowles also refers to Inv. No. 337-TA-629 at the ITC, where it accused MEMS Technology Berhad (“MemsTech”) of violating Section 337 through its alleged infringement of the ‘231 and ‘089 patents.  See our October 31, 2011 post for more details.  Please note that Oblon Spivak represents MemsTech in the 629 investigation.  Knowles further refers to Inv. No. 337-TA-695, where it accused ADI of violating Section 337 through its alleged infringement of the ‘231 and ‘089 patents.  See our January 3, 2011 post for more details.  Lastly, Knowles refers to various inter partes and ex parte reexaminations of the ‘231, ‘089, and ‘616 patents.

With respect to potential remedy, Knowles requests that the Commission issue a permanent limited exclusion order and a permanent cease and desist order directed at ADI, Amkor, Avnet, and related companies.

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 portable communication devices that infringe one or more claims of U.S. Patent Nos. 5,926,636 (the ‘636 patent), 5,929,655 (the ‘655 patent), 6,208,879 (the ‘879 patent), and 6,456,841 (the ‘841 patent) (collectively, the “asserted patents”):

• Research In Motion Ltd. of Canada
• Research In Motion Corp. of Irving, Texas
• HTC Corporation of Taiwan
• HTC America, Inc. of Bellevue, Washington
• 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
• Motorola Mobility Holdings, Inc. of Libertyville, Illinois
• Samsung Electronics Co., Ltd. of South Korea
• Samsung Electronics America, Inc. of Ridgefield Park, New Jersey
• Samsung Telecommunications America, LLC of Richardson, Texas
• Sony Corporation of Japan
• Sony Corporation of America of New York, New York
• Sony Electronics, Inc. of San Diego, California
• Sony Ericsson Mobile Communications AB of Sweden
• Sony Ericsson Mobile Communications (USA) Inc. of Research Triangle Park, North Carolina
• Amazon.com, Inc. of Seattle, Washington
• Nokia Corporation of Finland
• Nokia Inc. of Irving, Texas

According to the complaint, the asserted patents generally relate to portable communication technology.  In particular, the ‘636 patent relates to a remote procedural call component management method for a heterogeneous computer network.  The ‘655 patent relates to methods and apparatuses for providing dual-purpose I/O circuits, wherein each of the dual-purpose I/O circuits can be configured to support either one, or both, single-ended and differential I/O signaling modes.  The ‘879 patent relates to a mobile information terminal that has more than one mode, such as a telephone mode and an information terminal mode.  Lastly, the ‘841 patent relates to a mobile communication apparatus capable of notifying a user of the presence of unopened message information, such as a text message or voice mail.

In the complaint, Digitude states that the Proposed Respondents import and sell products that infringe the asserted patents.  The complaint specifically identifies a number of allegedly infringing products associated with the various Proposed Respondents.

Regarding domestic industry, Digitude states that it maintains a domestic industry through the activities of a domestic licensee.  According to the complaint, the domestic licensee practices at least one claim of each of the asserted patents in the U.S.  The details of the domestic licensee’s activities are provided in Confidential Exhibits and are not discussed in the body of the complaint.

With respect to potential remedy, Digitude requests that the Commission issue a limited exclusion order and a cease and desist order directed at the Proposed Respondents.

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 integrated circuits, integrated circuit chipsets, and products containing same, including televisions, that infringe one or more claims of U.S. Patent No. 5,467,455 (the ‘455 patent):

• MediaTek Inc. of Taiwan (“MediaTek”)
• Zoran Corporation of Sunnyvale, California (“Zoran”)
• Vizio, Inc. of Irvine, California
• Sanyo Electric Co., Ltd. of Japan
• Sanyo North America Corporation of San Diego, California
• Sanyo Manufacturing Corporation of Forrest City, Arkansas
• TPV Technology Limited of Hong Kong
• TPV International (USA) Inc. of Austin, Texas
• Top Victory Electronics (Taiwan) Co., Ltd. of Taiwan
• Top Victory Electronics (Fujian) Co., Ltd. of China
• AOC International (USA) Ltd. of Fremont, California
• Envision Peripherals, Inc. of Fremont, California
• Amtran Technology Co., Ltd. of Taiwan
• Amtran Logistics, Inc. of Irvine, California

According to the complaint, the ‘455 patent generally relates to on-die termination circuitry of integrated circuit technology.  In particular, the ‘455 patent describes circuitry designed to reduce unwanted signal reflection on a bi-directional communication bus between two integrated circuits.  The complaint states that the system and method described in the ‘455 patent permit disabling the termination circuitry on one of the integrated circuits when data is not being received from the communication bus.  The selective enabling and disabling of the termination circuitry allows the system to reduce unwanted signal reflection, which also typically conserves power.

In the complaint, Freescale states that the Proposed Respondents import and sell products that infringe the ‘455 patent.  The complaint specifically identifies a number of allegedly infringing products associated with the various Proposed Respondents.

Regarding domestic industry, Freescale states that it has engaged in the significant employment of labor and capital and/or made substantial investments in engineering, research and development, and/or licensing with respect to the ‘455 patent.  Freescale cites to former Chief ALJ Paul J. Luckern’s Order No. 33 in Inv. No. 337-TA-709, which found that Freescale has made a substantial investment in licensing its patents, including the ‘455 patent, within the U.S.  See our April 21, 2011 post for more details.  Freescale further states that it has at least 22 employees supporting Freescale’s patent licensing activities in the U.S., and that it “has invested substantial sums in enforcement actions of its patents, including the ‘455 patent, resulting in royalty bearing licenses.”

As to related litigation, Freescale states that on December 7, 2006, it filed an infringement suit against ProMOS Technologies in the U.S. District Court for the Eastern District of Texas, alleging infringement of, inter alia, the ‘455 patent.  Freescale states that this case settled and was dismissed.  Additionally, Freescale refers to Inv. No. 337-TA-656 at the ITC, where it alleged that LSI Corporation (“LSI”) violated Section 337 in connection with the alleged infringement of, inter alia, the ‘455 patent.  Freescale states that this investigation was terminated due to a settlement agreement.  Freescale also refers to a district court action against LSI in the U.S. District Court for the Eastern District of Texas, which also settled.  Freescale additionally refers to Inv. No. 337-TA-709, in which it alleged that various Respondents infringed, inter alia, the ‘455 patent.  ALJ Luckern found no violation of Section 337 in that investigation, and the Commission declined review.  See our May 20, 2011 post for more details.  Freescale also states that on March 1, 2010, it filed an infringement suit against Funai Corporation, Inc. and Funai Electric Co., Ltd. (collectively, “Funai”) in the U.S. District Court for the Western District of Texas.  Freescale further states that the ‘455 patent was the subject of reexamination, but that the U.S. Patent and Trademark Office confirmed the patentability of all claims on November 16, 2011.  Freescale additionally states that on June 8, 2011, it filed suit in the U.S. District Court for the Western District of Texas against, inter alia, Zoran and Mediatek, alleging infringement of the ‘455 patent.  Freescale additionally states that, also on June 8, 2011, it filed a complaint at the ITC naming Funai, MediaTek, and Zoran as Respondents.  The Commission instituted an investigation (Inv. No. 337-TA-786) based on that complaint on July 11, 2011.  See our July 11, 2011 post for more details.  On August 29, 2011, ALJ Robert K. Rogers, Jr. issued an ID granting-in-part Respondents’ motion for summary determination that Freescale’s claims against Funai are precluded based on the final determination in the 709 investigation.  On October 13, 2011, the ITC decided to review the ID in part.  See our October 14, 2011 post for more details.  In the instant complaint, Freescale argues that unlike certain Funai products that were at issue in the 786 investigation, the accused products in the instant ITC complaint were not at issue in the 709 investigation, and therefore Freescale’s instant infringement claims are not precluded.  Lastly, Freescale states that on August 16, 2011, it filed an infringement suit in the U.S. District Court for the Western District of Texas against various entities—including all of the Proposed Respondents listed in the instant ITC complaint other than Zoran and MediaTek—alleging infringement of the ‘455 patent. 

With respect to potential remedy, Freescale requests that the Commission issue a permanent exclusion order and permanent cease and desist orders directed at the Proposed Respondents, their affiliates, and others acting on their behalf.

By way of background, the Complainant in this investigation is Flashpoint Technology, Inc. (“Flashpoint”) and the remaining Respondents are HTC Corp. and HTC America, Inc. (collectively, “HTC”).  The asserted patents are U.S. Patent Nos. 6,262,769 (the ‘769 patent) and 6,163,816 (the ‘816 patent).  On July 28, 2011, former Chief ALJ Paul J. Luckern issued an Initial Determination (“ID”) finding no violation of Section 337 by HTC.  Specifically, ALJ Luckern determined, inter alia, that (i) Flashpoint failed to show that the asserted claims of the ‘769 and ‘816 patents are infringed, (ii) it has been established that the asserted claims of the ‘816 patent are invalid under 35 U.S.C. § 102(b) (on sale bar), (iii) it was not established that the asserted claims of the ‘769 and ‘816 patents are invalid in view of prior art, (iv) Flashpoint’s rights under the ‘816 and ‘769 patents were not exhausted with respect to HTC’s accused Windows Phone 7 (“WP7”) products, and (v) Flashpoint did not establish a domestic industry with respect to either of the ‘769 or ‘816 patents.  See our September 30, 2011 post for more details.

On September 26, 2011, the Commission issued a notice determining to review the ID in part.  In particular, the Commission determined to review (1) infringement of the asserted claims of the ‘769 patent by the accused HTC Android smartphones, (2) infringement of the asserted claims of the ‘769 patent by the accused HTC WP7 smartphones, (3) the technical prong of the domestic industry requirement for the ‘769 patent with respect to the licensed Motorola smartphones, (4) the technical prong of the domestic industry requirement for the ‘769 patent with respect to the licensed Apple smartphones, and (5) the enforceability of the asserted patents under the doctrines of implied license and exhaustion.  The Commission also determined to review and take no position on (a) anticipation of the asserted claims of the ‘816 patent under 35 U.S.C. § 102 in view of the prior art references, and (b) obviousness of the asserted claims of the ‘816 patent under 35 U.S.C. § 103 in view of the prior art references.  The Commission requested that the parties brief their positions on the issues under review with reference to the applicable law and the evidentiary record.  See our September 27, 2011 post for more details.

According to the November 29 notice, after examining the record of the investigation, including the ID and the submissions of the parties, the Commission determined to affirm ALJ Luckern’s determination of no violation of Section 337 with respect to the ‘769 patent on the bases that (1) the accused HTC Android smartphones and the accused HTC WP7 smartphones do not infringe the ‘769 patent, and (2) HTC has established that it has an implied license to practice the ‘769 patent with respect to the accused WP7 smartphones.  The Commission further determined to take no position on the ALJ’s finding that HTC has not established the right to practice the ‘769 patent with respect to the accused WP7 smartphones under the defense of patent exhaustion.  The Commission also determined to take no position on the ALJ’s finding that Flashpoint has not met the technical prong of the domestic industry requirement for the ‘769 patent.  Lastly, the Commission determined to terminate the investigation.