By way of background, the ITC instituted an investigation in February 2003 based on a complaint filed by Deere alleging that Bourdeau and other Deere dealers unlawfully imported and sold Deere’s European-version harvesters in the U.S. in violation of Section 337’s prohibition against importation of products “produced by the owner of the United States trademark or with its consent, but not authorized for sale in the United States,” often called “gray market goods.”  In May 2004, the ITC determined there were material differences between Deere’s North American version and European version harvesters, supporting a finding of trademark infringement and thus a general exclusion order.

In March 2006, the Federal Circuit vacated-in-part and remanded the ITC’s decision based on the additional requirement that Deere also show that all or substantially all of its authorized domestic products (North American version) are materially different from the accused gray market goods (European version).  On remand, in December 2006, the ALJ issued an initial determination of infringement, finding that the original record showed that Deere did not authorize the sales of the European version in the U.S., that new evidence of alleged Deere financing of the European version sold by its dealers did not show authorization, and that the number of sales Bourdeau alleged were authorized was in any event so small that “substantially all” of Deere’s authorized U.S. sales were of the North American version.

In August 2008, the ITC reversed the ALJ, finding substantial evidence that Deere’s U.S. and European dealers had apparent authority to sell the European version, that Deere itself sold and/or facilitated the sale of the European version in the U.S., and that not “all or substantially all” of the authorized harvesters sold in the U.S. were the North American version.  The ITC noted that since the total number of authorized sales of the North American version in the U.S. was approximately only 4400, the introduction of even a small number of the European version could cause substantial consumer confusion.  The ITC then found such confusion based on its determination that at least 141 European version harvesters sold in the U.S. were sold by official Deere dealers.  The ITC considered 141 to be a “substantial quantity” of nonconforming goods because it constituted 40 to 57% of the 247 to 347 European version harvesters sold in the U.S. by both official and independent (in some cases, accused) dealers.  Importantly, the ITC did not use as its denominator the total number of authorized harvesters sold in the U.S., which would have been the number of authorized North American version harvesters (4400) plus the number of authorized European version harvesters (141), or 4541.

In May 2010, the Federal Circuit held that the ITC misapplied the “all or substantially all” test, and that the denominator should have been the total authorized sales in the U.S. in accordance with the court’s remand instructions, not the total European version sales in the U.S.  Using the ratio dictated by its remand instructions as well as the ITC’s lower-end and upper-end findings, the court concluded that a total of 3.1 to 3.4% of the authorized harvesters sold in the U.S. were the European version, or conversely that 96.6 to 96.9% of the authorized harvesters sold in the U.S. were the North American version.  The court observed that those figures may be insubstantial, but that is for the ITC to determine on remand based on all of the relevant facts, noting that “[t]he cutoff as to what is to be considered ‘substantially all’ is a question of fact.”  See our May 27, 2010 post for more details.

According to the January 13 notice, the Commission requested briefing on the merits of the remand, and after examining the record of the investigation, including the parties’ submissions on remand, the Commission determined that Deere established that substantially all of the U.S. sales of the subject harvesters were of the North American version, and Deere therefore met its burden to prove on remand that it satisfied the “all or substantially all” test for gray market trademark infringement.  Accordingly, The Commission reinstated the exclusion order and cease and desist orders with respect to European versions of the subject harvesters issued by the Commission in the original investigation.  Based on the above, the Commission proceeded to terminate the investigation.

By way of background, and according to the notice, Complainant Motiva, LLC accused Respondents Nintendo Co., Ltd. and Nintendo of America Inc. (collectively “Nintendo”) of infringing certain claims of U.S. Patent Nos. 7,292,151 (the ‘151 patent) and 7,492,268 (the ‘268 patent).  In his November 2, 2011 Initial Determination (“ID”), ALJ Rogers found no violation of Section 337.  Specifically, ALJ Rogers determined that the accused Nintendo products do not infringe (1) claims 16, 27-32, 44, 57, 68, and 84 of the ‘151 patent, and (2) claims 2, 4, 11, and 14 of the ‘268 patent.  ALJ Rogers also determined that an industry does not exist in the U.S. that exploits the ‘151 or ‘268 patents, as required by 19 U.S.C. § 1337(a)(2).  ALJ Rogers further determined that the claims of the ‘151 and ‘268 patents are neither invalid nor unenforceable due to inequitable conduct.  See our November 4, 2011 post for more details.

On November 15, 2011, Complainant Motiva and the Commission investigative attorney filed petitions for review of portions of the ID.  Respondent Nintendo filed a response to both petitions and the Commission Investigative Attorney filed a response to Motiva’s petition.

Having examined the record of this investigation, the Commission determined to deny the petitions for review and, upon its own initiative, further determined to review “(1) a statement in the ID connecting the relevant level of skill in the art to the skill of the inventors, and (2) the relevant time frame for considering whether a domestic industry exists or is in the process of being established.”  After issuing an opinion on those issues, the Commission determined not to review the remainder of the ID, thus affirming ALJ Rogers’ finding of no violation of Section 337 and terminating the investigation.

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.

By way of background, the Complainants in this investigation are Apple Inc. and NeXT Software, Inc. (collectively, “Apple”) and the Respondents are High Tech Computer Corp., HTC America Inc., and Exedia, Inc. (collectively, “HTC”).  On July 15, 2011, ALJ Charneski determined that a violation of Section 337 had occurred by HTC through its infringement of certain claims of U.S. Patent Nos. 5,946,647 (the ‘647 patent) and 6,343,263 (the ‘263 patent).  The ID found no violation of Section 337 with respect to U.S. Patent Nos. 5,481,721 (the ‘721 patent) and 6,275,983 (the ‘983 patent) because Apple had not demonstrated that HTC infringed the asserted claims of these patents or that Apple had satisfied the domestic industry requirement with respect to these patents.  The ID concluded that HTC had not demonstrated that any of the asserted patent claims are invalid.  See our September 2, 2011 post for more details.

HTC, Apple, and the Commission Investigative Staff (“OUII”) filed petitions for review of the ID on August 1, 2011.  HTC, Apple, and OUII each filed responses to the petitions for review on August 9, 2011.  On September 15, 2011, the Commission determined to review several issues regarding each of the four patents asserted in this investigation.  See our September 19, 2011 post for more details.

According to the December 19 notice, after examining the record of the investigation, including the ID and the parties’ submissions, the Commission determined that HTC violated Section 337 by reason of its importation and sale of articles that infringe claims 1 and 8 of the ‘647 patent. 

The Commission also determined to reverse the ALJ’s finding of violation as to claims 15 and 19 of the ‘647 patent and as to the asserted claims of the ‘263 patent.  Lastly, the Commission affirmed the ALJ’s conclusion that there has been no violation as to the ‘721 and ‘983 patents.  

Further, the Commission determined that the appropriate remedy is a limited exclusion order prohibiting the entry of HTC’s personal data and mobile communications devices and related software into the U.S. that infringe claims 1 or 8 of the ‘647 patent.  The Commission also determined that the public interest factors enumerated in Section 337 do not preclude the issuance of the limited exclusion order.  Nothwithstanding the foregoing, the Commission determined that in light of competitive conditions in the U.S. economy, the exclusion of HTC articles subject to the order shall commence on April 19, 2012 to provide a transition period for U.S. carriers.  Moreover, the notice indicates that HTC may import refurbished handsets to be provided to consumers as replacements under warranty or an insurance contract (whether the warranty or contract is offered by HTC, a carrier, or by a third party) until December 19, 2013.  The notice also provides that         “[t]his exemption does not permit HTC to call new devices ‘refurbished’ and to import them as replacements.”

Lastly, the Commission determined that zero bond will be required for temporary importation during the period of Presidential review.  The notice additionally stated that the investigation is terminated.

By way of background, on July 21, 2011, ALJ E. James Gildea issued the public version of an Initial Determination (“ID”) (dated July 12, 2011) granting Complainant Georgia-Pacific Consumer Products LP’s (“Georgia-Pacific”) motion for summary determination that defaulting Respondents Stefco Industries, Inc. and Cellynne Corporation (collectively, “Stefco”) and defaulting Respondent NetPak Elektronik Plastik ve Kozmetik Sanayi Ve Ticaret Ltd. (“NetPak”) (Stefco and NetPak collectively, the “Defaulting Respondents”) violated Section 337.  The ALJ also recommended that the Commission issue general exclusion orders and cease and desist orders and impose a bond of 100 percent on the Defaulting Respondents.  See our July 29, 2011 post for more details.   According to the notice, non-defaulting Respondents Kruger Products LP; KTG USA LP; Draco Hygienic Products Inc.; Paradigm Marketing Consortium, Inc.; United Sourcing Network Corp.; New Choice (H.K.) Ltd.; Vida International Inc.; Jet Power International Limited; Winco Industries Co.; DWL Industries Co.; Ko-Am Corporation Inc. d/b/a Janitor’s World; Natury, S.A. De C.V.; Franklin Financial Management, Inc. d/b/a Update International; and Alliance in Manufacturing LLC were terminated by consent order.

The notice stated that the Commission on August 19, 2011, determined not to review ALJ Gildea’s ID and requested briefing on remedy, the public interest, and bonding.  Only Georgia-Pacific and the Commission investigative attorney timely filed submissions.  The notice further stated that the Commission determined to issue a GEO with respect to claims 4-7 of U.S. Patent No. 6,871,815; claims 8-22 of U.S. Patent No. 7,017,856; claims 1-3 of U.S. Patent No. 7,182,289; and claims 4-22 of U.S. Patent No. 7,387,274, and cease and desist orders against Stefco with respect to the same claims. The Commission further determined that the bond for temporary importation during the period of Presidential review shall be in the amount of 100 percent of the value of the imported articles that are subject to the order.  The notice additionally stated that the investigation is terminated.

By way of background, on August 26, 2011, ALJ Theodore R. Essex issued the public version of an Initial Determination (“ID”) (dated August 3, 2011) granting Complainants Hewlett-Packard Company and Hewlett-Packard Development Company’s (collectively, “HP”) motion for summary determination that HP satisfied the domestic industry requirement and that defaulting Respondents Shanghai Angel Printer Supplies Co., Ltd., Zhuhai National Resources & Jingjie Imaging Products Co., Ltd., Tatrix International, and Ourway Image Co. Ltd. (collectively, the “Defaulting Respondents”) had violated Section 337 with respect to certain claims of U.S. Patent Nos. 6,959,985 (the ‘985 patent) and 7,104,630 (the ‘630 patent).  See our August 30, 2011 post for more details.   According to the notice, non-defaulting Respondents Mipo International, Ltd., Mextec Group Inc., and Shenzhen Print Media Co., Ltd. were terminated from the investigation based on either a settlement agreement with HP or because HP withdrew its allegations against them.

According to the notice, the Commission on September 1, 2011 determined not to review ALJ Essex’s ID and requested briefing on remedy, the public interest, and bonding.  Only HP and the Commission investigative attorney timely filed submissions, and both proposed GEOs.  The notice further stated that Commission determined that the appropriate form of relief is indeed a GEO prohibiting the unlicensed entry of inkjet cartridges and components thereof covered by one or more of claims 1-5, 7, 22-25, 27 and 28 of the ‘985 patent and claims 1-7, 11-12, 14, 26-30, 32, 34 and 35 of the ‘630 patent.   The Commission further determined that the bond for temporary importation during the period of Presidential review shall be in the amount of 100 percent of the value of the imported articles that are subject to the order.  The notice additionally stated that the investigation is terminated.

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.

By way of background, the Complainants in this investigation are S3 Graphics Co. Ltd. and S3 Graphics Inc. (collectively, “S3G”) and the Respondent is Apple Inc. (“Apple”).  On July 1, 2011, ALJ E. James Gildea issued an Initial Determination (“ID”) finding that Apple violated Section 337 through its infringement of certain claims of U.S. Patent Nos. 6,683,978 and 6,658,146.  ALJ Gildea found no violation of Section 337 with respect to U.S. Patent Nos. 7,043,087 and 6,775,417 because the asserted claims of those patents are invalid.  See our July 6, 2011 post for more details.

On September 2, 2011, the Commission issued a notice determining to review the ID in its entirety.  See our September 7, 2011 post for more details.

According to the November 21 notice, on September 15, 2011, non-parties Advanced Micro Devices, Inc. (“AMD”) and its subsidiaries ATI Technologies ULC and ATI International SRL filed a motion to intervene and terminate the investigation based on a claim that AMD owns the patents at issue and declines to assert them in the investigation.  On September 19, 2011, Apple filed its own motion to terminate based on AMD’s patent ownership claims.  Subsequently, the Commission determined to extend the target date for completion of the investigation until November 21, 2011.

After examining the record of the investigation, including the ID and the submissions of the parties and non-parties, the Commission determined to reverse ALJ Gildea’s finding of a violation of Section 337 and find no violation.  Additionally, the Commission determined to deny AMD’s motion to file public interest comments out of time, to grant AMD’s motion to file a reply in connection with its motion to intervene and terminate, to deny AMD’s motion to intervene and terminate, and to deny Apple’s motion to terminate.  Lastly, the Commission determined to terminate the investigation.

By way of background, SWM filed a motion for summary determination on July 6, 2011, that its possession of significant investment in plant and equipment, significant employment of labor and capital, and substantial investment in research, development, design, and engineering satisfy the economic prong of the domestic industry requirement.  On July 26, 2011, the Commission Investigative Attorney filed a response supporting SWM’s motion.  According to the notice, various respondents submitted objections with respect to the domestic industry requirement.  ALJ Gildea issued the ID on October 24, 2011, granting SWM’s motion.  No petitions for review were filed.

According to the Notice, the Commission determined to review the subject ID and affirmed the ID with respect to 19 U.S.C. § 1337(a)(3)(A) and (B) (i.e., that SWM had significant investment in plant and equipment, and significant employment of labor or capital, respectively).  However, the Commission took no position with respect to 19 U.S.C. § 1337(a)(3)(C) (i.e., whether SWM had substantial investment in the exploitation, including engineering, research and development, or licensing articles protected by the subject patents).

By way of background, the Complainants in this investigation are Thompson/Center Arms Company, Inc. and Smith & Wesson Corp. (collectively, the “Complainants”), and the Respondents are Dikar Sociedad Cooperativa Limitada, Blackpowder Products, Inc., Connecticut Valley Arms, Bergara Barrels North America, Bergara Barrels Europe, Ardesa Firearms (“Ardesa”), and Traditional Sporting Goods, Inc. d/b/a Traditions Sporting Firearms (“Traditions”).  On May 11, 2011, the Complainants filed a complaint requesting that the ITC commence an investigation pursuant to Section 337 concerning certain muzzle-loading firearms and components thereof that allegedly infringe U.S. Patent Nos. 7,908,781, 7,814,694 (the ‘694 patent), 7,140,138, 6,604,311, 5,782,030, and 5,639,981. 

With their complaint, the Complainants also filed a motion for temporary relief directed only to Traditions and Ardesa (collectively, the “TEO Respondents”) that requested a temporary limited exclusion order and temporary cease and desist orders.  By stipulation of the parties, the motion for temporary relief was ultimately limited to the alleged infringement of certain claims of the ‘694 patent.  On August 31, 2011, ALJ Rogers issued the ID denying the Complainants’ motion for temporary relief.  In the ID, ALJ Rogers found that the Complainants had not demonstrated that they would suffer irreparable harm and that the lack of irreparable harm precluded temporary relief in the investigation.  The ALJ also found that there was a likelihood of success on the merits with respect to claim 10 of the ‘694 patent, that the balance of hardships did not favor either party, and that the public interest would not preclude preliminary relief.  See our November 15, 2011 post for more details.

According to the November 10 notice, the TEO Respondents filed opening comments on the ID on September 12, 2011.  The Complainants submitted reply comments on September 14, 2011.  The comments did not take issue with the ALJ’s findings regarding the lack of irreparable harm.  Instead, the comments principally dealt with the Complainants’ likelihood of success on the merits, challenging various aspects of the ALJ’s analyses of infringement and the balance of hardships.

After examining the record of the investigation, including the ID and the subsequent comments and reply comments, the Commission found that irreparable harm had not been demonstrated and therefore determined not to review the ID’s finding of lack of irreparable harm and the ID’s denial of temporary relief.  The Commission further found that because irreparable harm is dispositive, the Commission need not evaluate the remaining temporary relief factors.  Accordingly, the Commission determined to review the ID’s findings on the likelihood of success, the balance of hardships, and the public interest but to take no position on those findings.