By way of background, on October 6, 2006, Norgren Inc. (“Norgren”) filed a complaint with the ITC against SMC alleging violation of Section 337.  ALJ Charneski issued an initial determination on February 13, 2008 in which he found no violation of Section 337.  Norgren petitioned for review, and the Commission rendered a final decision on April 14, 2008 adopting the ALJ’s initial determination.  Norgren appealed the Commission’s decision to the U.S. Court of Appeals for the Federal Circuit.

On May 26, 2009, the Federal Circuit issued a decision in which it modified the Commission’s claim construction, reversed the Commission’s determination of non-infringement, vacated the Commission’s determination of nonobviousness, and remanded the case.  The Federal Circuit’s remand order contained instructions “to evaluate obviousness in the first instance based upon the correct construction of the claim term ‘generally rectangular ported flange’ — i.e., a construction that does not require a flange having projections on all four sides.”  See our May 28, 2009 post for more details.  ALJ Charneski conducted a one-day evidentiary hearing on April 21, 2010.

In the RID, ALJ Charneski determined that none of the asserted claims of the ‘392 patent were invalid as obvious.

SMC argued that, based on the Federal Circuit’s construction of the claim term “generally rectangular ported flange” — which did not required a flange having projections on all four sides — an SMC old-style connector qualified as a “four-sided generally rectangular clamp that is adapted to engage a generally rectangular ported flange.”  SMC further argued that it would have been obvious to one of ordinary skill in the art to “connect[] the strider to the connector to avoid any loose parts or for ease of use,” citing to U.S. Patent No. 4,915,418 to Palatchy (“Palatchy”).  SMC also argued that there was insufficient evidence of secondary considerations that could rebut its showing of prima facie obviousness.

The Commission Investigative Staff (“OUII”) agreed with SMC that claim 1 would have been obvious in view of the SMC old-style connector and Palatchy, and that secondary considerations could not overcome the showing of prima facie obviousness.

Norgren argued that it had not been proven that all of the elements of claim 1 were present in the prior art.  Norgren also asserted that there was no evidence as to why a person of ordinary skill in the art in 1993 would have been motivated to make the specific combination found in the ‘392 patent.  Finally, Norgren pointed to secondary considerations that it argued supported a finding of nonobviousness.

ALJ Charneski found that the SMC old-style connector did not contain all of the limitations of claim 1 other than the pivotally mounted side.  In particular, the SMC old-style connector was found not to be “generally rectangular” and not to be “four-sided.”  Accordingly, ALJ Charneski determined that “merely modifying the SMC old-style connector to add a pivotally mounted side would not result in a device that contains all limitations of the asserted claims of the ‘392 patent.  Thus, for that reason alone, the obviousness argument of SMC and the Staff cannot prevail.”

Additionally, ALJ Charneski determined that it would not have been obvious to adapt the SMC old-style connector to engage a pivotally mounted side.  According to the RID, “the record remains unclear as to whether one of ordinary skill would have anticipated success or perceived any design challenges when adding a pivotally mounted side in view of the numerous variables that affect FRL operations, such as variable temperatures, the frequent use with corrosive gases, and stress on the device.”  Accordingly, claim 1 of the ‘392 patent was found not to be obvious on that basis as well.

Finally, with respect to secondary considerations of nonobviousness, ALJ Charneski determined that had the prior art otherwise rendered claim 1 obvious, secondary considerations would have provided little support for the validity of the claims.

By way of background, the Complainant in this investigation is John Mezzalingua Associates, Inc. d/b/a PPC, Inc. (“PPC”) and the Respondents are Fu Ching Technical Industry Co. Ltd., Gem Electronics, Inc. (collectively, the “Active Respondents”), Hanjiang Fei Yu Electronics Equipment Factory, Zhongguang Electronics, Yangzhou Zhongguang Electronics Co., Ltd., and Yangzhou Zhongguang Foreign Trade Co., Ltd. (collectively, the “Defaulting Respondents”).  The investigation was instituted on May 30, 2008.  On October 13, 2009, ALJ Gildea issued his Initial Determination (“ID”) finding, inter alia, that the Defaulting Respondents were in violation of Section 337 by reason of infringement of U.S. Patent Nos. 5,470,257, 6,558,194, D519,076, and D440,539 (the ‘539 patent).  See our November 10, 2009 post for more details.

On December 14, 2009, the International Trade Commission (the “Commission”) issued a notice determining to review the ID in part.  On review, the Commission considered, inter alia, whether PPC had satisfied the domestic industry requirement with respect to the ‘539 patent.  On March 31, 2010, the Commission vacated ALJ Gildea’s finding that PPC had established a domestic industry with respect to the ‘539 patent and issued an order remanding the portion of the investigation relating to the ‘539 patent to ALJ Gildea for further proceedings.   In the Opinion accompanying the remand order, the Commission held that litigation costs taken alone are insufficient to satisfy the domestic industry requirement, but that litigation costs that are actually related to the licensing of the asserted patent(s) may be sufficient.  See our April 16, 2010 post for more details.

According to the RID, ALJ Gildea conducted a four-hour remand hearing on the domestic industry issue with respect to the ‘539 patent on April 27, 2010.  Only PPC and the Commission Investigative Staff (“OUII”) appeared at the remand hearing.  OUII argued that PPC had utterly failed to show a domestic industry with respect to the ‘539 patent.  In particular, OUII argued that there was not a single expenditure relevant to satisfying the requirement and further argued that, for policy reasons, expenses relating to the settlement of litigation should not be considered for purposes of satisfying the requirement.  PPC argued that OUII was ignoring the standards set forth in the Commission’s Opinion and that under the correct standards, PPC’s litigation activities were sufficiently tied to licensing so as to satisfy the domestic industry requirement.

In the RID, ALJ Gildea determined that no domestic industry exists with respect to the ‘539 patent and that therefore there has been no violation of Section 337 by the Defaulting Respondents in connection with any alleged infringement of the ‘539 patent.  While the public version of the RID is heavily redacted, it is apparent that a major factor in ALJ Gildea’s analysis was the fact that PPC had presented no evidence that it had sent any cease and desist correspondence or otherwise engaged in any definitive licensing efforts relating to the ‘539 patent prior to the initiation of its various patent infringement suits.  ALJ Gildea thus found that only certain expenses that PPC could show were directly related to licensing could be considered for purposes of satisfying the domestic industry requirement, and that it would be inappropriate to consider all of PPC’s litigation expenses in the domestic industry analysis.

However, ALJ Gildea rejected OUII’s strict view that no expenses relating to the settlement of the litigations could be used to satisfy the domestic industry requirement.  In particular, the ALJ found that expenses relating to settlement negotiations and expenses relating to the drafting and reviewing of settlement agreements could be considered as long as these negotiations and agreements actually provided for licensing of the ‘539 patent.  ALJ Gildea reviewed PPC’s accounting and found that $27,506.00 in such expenses should be considered in full and that another $14,858.75 should be considered in part in the domestic industry analysis.

Ultimately, ALJ Gildea found that PPC had received only one license for the ‘539 patent, and that only a portion of the license agreement in question actually related to the ‘539 patent.  Moreover, PPC had no established licensing program, let alone a licensing program that encompassed the ‘539 patent.  Finally, PPC had made no efforts to send cease and desist letters or engage in other licensing talks with any persons or entities other than those involved with the single ‘539 patent license.  Thus, while ALJ Gildea found that the issue was a “close one,” he determined that “PPC’s evidence does not demonstrate ‘substantial’ investment in exploitation of the ‘539 patent through its licensing efforts, and therefore does not support a finding of economic domestic industry with respect to the ‘539 patent.”  Accordingly, ALJ Gildea held that PPC had failed to establish a violation of Section 337 by the Defaulting Respondents with respect to the ‘539 patent.

By way of background, the Complainant in this investigation is John Mezzalingua Associates, Inc. d/b/a PPC, Inc. (“PPC”) and the Respondents are Fu Ching Technical Industry Co. Ltd., Gem Electronics, Inc. (collectively, the “Active Respondents”), Hanjiang Fei Yu Electronics Equipment Factory, Zhongguang Electronics, Yangzhou Zhongguang Electronics Co., Ltd., and Yangzhou Zhongguang Foreign Trade Co., Ltd. (collectively, the “Defaulting Respondents”).  The investigation was instituted on May 30, 2008.  On October 13, 2009, ALJ Gildea issued his Initial Determination (“ID”) finding, inter alia, that the Defaulting Respondents were in violation of Section 337 by reason of infringement of U.S. Patent Nos. 5,470,257, 6,558,194, D519,076, and D440,539 (the ‘539 patent).  See our November 10, 2009 post for more details.

On December 14, 2009, the International Trade Commission (the “Commission”) issued a notice determining to review the ID in part.  On review, the Commission considered, inter alia, whether PPC had satisfied the domestic industry requirement with respect to the ‘539 patent.  On March 31, 2010, the Commission vacated ALJ Gildea’s finding that PPC had established a domestic industry with respect to the ‘539 patent and issued an order remanding the portion of the investigation relating to the ‘539 patent to ALJ Gildea for further proceedings.  See our April 1, 2010 and April 16, 2010 posts for more details.

According to the May 27 notice, ALJ Gildea held in his RID that PPC has not established a domestic industry with respect to the ‘539 patent, and therefore, there has been no violation of Section 337 by Defaulting Respondents in connection with the importation into the U.S., sale for importation, or sale within the U.S. after importation of certain coaxial cable connectors by reason of infringement of the ‘539 patent.

The notice issued by ALJ Gildea released only pages 1-2 of the RID.  We will provide additional information once the public version of the RID is issued in its entirety

By way of background, this investigation was instituted in December 2007 based on a complaint filed by INEOS Fluor Holdings Ltd., INEOS Fluor Ltd. and INEOS Fluor Americas LLC (“INEOS”).  INEOS’ complaint alleged violations of Section 337 by Respondents Sinochem Modern Environmental Protection Chemicals (Xi’an) Co. Ltd., Sinochem Ningbo Ltd., Sinochem Environmental Protection Chemicals (Taicang) Co., Ltd., and Sinochem (U.S.A.) Inc. (collectively, “Sinochem”) in the importation into the U.S., the sale for importation, and the sale within the U.S. after importation of certain R-134a coolant (otherwise known as 1,1,1,2-tetrafluorothane) by reason of infringement of certain patents, including the ‘276 patent.  On December 1, 2008, ALJ Luckern issued a final initial and determination (“ID”) finding a violation of Section 337.  On January 30, 2009, the Commission issued a notice determining to review-in-part the ID finding a violation of Section 337 and remanding a portion of the investigation “for a remand determination addressing issues related to anticipation and obviousness [of claim 1 of the ‘276 patent] with respect to certain references” identified by the Commission.

In the RD, ALJ Luckern held that (1) Sinochem failed to sufficiently raise the issues identified by the Commission and (2) the issues, even if properly raised, had no merit.  In addressing the first issue, whether Sinochem sufficiently raised the issues identified by the Commission, ALJ Luckern examined eleven arguments regarding anticipation and/or obviousness made by Sinochem in its pre-hearing statement.  Regarding Sinochem’s pre-hearing statement arguments on anticipation, ALJ Luckern determined that they did not sufficiently raise the issues identified by the Commission because ground rules 9(vi) and (viii) that govern the requirements of pre-hearing statements were not complied with.  In particular, ALJ Luckern did not find any “allegation that the Marangoni reference anticipates claim 1 of the ‘276 patent” under 35 U.S.C. § 102.   As for Sinochem’s pre-hearing statement arguments on obviousness, ALJ Luckern found that they did not sufficiently raise the issues identified by the Commission because they either (i) used vague and ambiguous language such as “secondary references,” “above discussions,” and “anticipation” to reference prior art, and thus did not comply with the aforementioned ground rules, (ii) were irrelevant to the extent they related to references not identified by the Commission, and/or (iii) were related to references that were not prior art.

ALJ Luckern also determined that Sinochem failed to present a prima facie case of anticipation or obviousness of claim 1 of the ‘276 patent.  In particular, as to the issue of anticipation, ALJ Luckern found that it was undisputed that the Marangoni reference failed to disclose at least three limitations of claim 1, i.e., the recycle limitation, the relative temperature difference limitations, and the separate reaction zone limitation.  Further in this regard, ALJ Luckern rejected Sinochem’s arguments that the recycle limitation was inherently taught by Marangoni or that the burden had shifted to INEOS with respect to the temperature limitations “to show how the temperature ranges of claim 1 are critical and inventive over the temperatures disclosed in Marangoni.”  ALJ Luckern also rejected Sinochem’s argument regarding the separate reaction zone limitation finding that Sinochem was improperly “applying elements of an obviousness analysis to their anticipation argument.”  Regarding obviousness, ALJ Luckern found that claim 1 of the ‘276 patent was not obvious over Marangoni either alone, or in combination with other references that were not prior art.  Further, with respect to the remaining references identified by the Commission, ALJ Luckern found that claim 1 of the ‘276 patent was not rendered obvious over certain references that failed to disclose particular limitations of claim 1.  Additionally, ALJ Luckern found that claim 1 was not rendered obvious over certain other primary references that “disclose nothing more than the fluorination of 1,1,1-trifluoro-2-chloroethane” in combination with other secondary references that “do not disclose two separate reaction zones, do not disclose the relative temperature limitations, and in some cases . . . do not disclose a temperature range for the fluorination of trichloroethylene.”

Lastly, ALJ Luckern recommended issuance of a limited exclusion order in the event the Commission finds a violation of Section 337.  ALJ Luckern also recommended that a bond be set in the amount of 100 percent of entered value of any products made from the infringing process during the Presidential review period.

By way of background, the Complainants in this investigation are LSI Corporation and Agere Systems Inc. and the Respondents are Tower Semiconductor, Ltd., Jazz Semiconductor, Qimonda AG, Powerchip Semiconductor Corporation, Grace Semiconductor Manufacturing Corporation, Integrated Device Technology, Inc., Spansion, Inc., and Nanya Technology Corporation (collectively, “Respondents”).  On September 21, 2009, ALJ Charneski issued an initial determination (“ID”) finding no violation of Section 337.  In this respect, ALJ Charneski determined that “it was established by clear and convincing evidence that claims 1, 3, and 4 of [U.S. Patent No. 5,227,335 (the ‘335 patent)] are invalid due to anticipation in view of IBM Process A.”  On November 23, 2009, the Commission issued a notice determining to review-in-part the ID finding no violation of Section 337 and determining to remand a portion of the investigation related to obviousness back to ALJ Charneski.  See our November 30, 2009 post for more details.

In the Remand Determination, ALJ Charneski held that the Respondents’ and the Commission Investigative Staff’s (the “Staff”) obviousness arguments relating to IBM Process A “do not have merit” and thus it was not shown by clear and convincing evidence that claim 4 of the ‘335 patent is invalid due to obviousness under 35 U.S.C. § 103.  More particularly, ALJ Charneski held that “[l]isting prior art references, and concluding that the invention would have been obvious in view of those references is insufficient to show obviousness.  Rather, the challenger must show clearly and convincingly both how and why prior art could have been combined.”  According to ALJ Charneski, while the Respondents and the Staff demonstrated that “tungsten plugs and planarization are found in the prior art” there is “no example from the prior art of the type of planarization required by claim 4 occurring in connection with the fabrication of a device that meets all the limitations of the claim.”  Further, “[i]f one adopted their arguments, it is unclear how one could convincingly substantiate the fact that one of ordinary skill would have made a specific combination consisting of IBM Process A and other prior art, and further how one would have successfully accomplished such a combination of elements.”