Advisory Opinions

ITC Issues Advisory Opinion In Certain GPS Devices (337-TA-602)

By Eric Schweibenz
|
Apr
27
On April 20, 2010, the International Trade Commission issued an advisory opinion determining to grant the request of Atheros Communications, Inc. (“Atheros”) for an opinion that the importation of products containing Atheros GPS chips does not violate the Commission’s limited exclusion order (“LEO”) in Certain GPS Devices and Products Containing Same (Inv. No. 337-TA-602). By way of background, the Complainant in the underlying investigation was Global Locate, Inc. (“GL”), and the Respondents were SiRF Technology, Inc. (“SiRF”), E-TEN Corp., Pharos Science & Applications, Inc., MiTAC International Corporation, and Mio Technology Limited (collectively, “Respondents”).  GL’s complaint was directed to “SiRF GPS Devices” and “downstream products using accused SiRF GPS devices” manufactured and/or distributed by the other Respondents.  Atheros was not named as a respondent. The investigation was instituted on May 7, 2007.  On January 15, 2009, the Commission found a violation of Section 337 by Respondents and issued an LEO and several cease and desist orders.  The LEO called for the exclusion of infringing products “that are manufactured abroad by or on behalf of [Respondents] or any of their affiliated companies, parents, subsidiaries, or other related business entities, or their successors or assigns.”  SiRF appealed the ITC’s decision to the Federal Circuit, but the court affirmed the Commission’s findings.  See our April 12, 2010 post for more details. On March 5, 2010, Atheros filed a request pursuant to Commission Rule 210.79 for an advisory opinion as to whether the importation, sale for importation, or sale after importation of GPS products incorporating Atheros GPS chips, rather than SiRF GPS chips, would violate the Commission’s LEO.  The Commission received no response to Atheros’s request, either from a party to the underlying investigation or from any member of the public. In considering Atheros’s request, the Commission first found that the request met the requirements of Commission Rule 210.79 because it would “facilitate the enforcement of section 337 of the Tariff Act of 1930, would be in the public interest, and would benefit consumers and competitive conditions in the United States.”  Additionally, the Commission found that Atheros had shown “a compelling business need for the advice.” The Commission then noted that LEOs generally apply to (1) articles explicitly found by the Commission to infringe, and (2) articles that are “essentially the same” as those articles.  In this case, since the Commission’s finding of infringement in the underlying investigation was based almost entirely on the operation of SiRF’s proprietary software, data services, and hardware, products containing Atheros GPS chips could not be considered to be “essentially the same” as products containing SiRF GPS chips.  Accordingly, Atheros’s products were not covered by the LEO in the underlying investigation, and the Commission determined to grant Atheros’s request for an advisory opinion that importation of products containing Atheros GPS chips does not violate the LEO.
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ITC Issues Notice And Advisory Opinion In Certain Coaxial Cable Connectors (337-TA-650)

By Eric Schweibenz
|
Feb
14
On February 9, 2012, the International Trade Commission (the “Commission”) issued a notice and advisory opinion granting a request by non-respondent Holland Electronics, LLC (“Holland”) and determining that Holland’s identified coaxial cable connectors are not covered by the Commission’s March 31, 2010 general exclusion order for U.S. Patent No. 6,558,194 in Certain Coaxial Cable Connectors and Components Thereof and Products Containing Same (Inv. No. 337-TA-650). 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 violated Section 337 by infringing various patents, including U.S. Patent No. 6,558,194 (the ‘194 patent).  See our November 10, 2009 post for more details.  On December 14, 2009, the Commission determined to review the ID in part, but the Commission did not review the ALJ’s determination with respect to the ‘194 patent.  See our December 16, 2009 post for more details. The Commission issued a general exclusion order on March 31, 2010 with respect to the ‘194 patent based on finding a violation of Section 337 by the defaulting respondents.  According to the opinion, Holland filed a request on September 12, 2011, for an advisory opinion under Commission Rule 210.79, asking the Commission to determine that its identified connectors are outside of the scope of the Commission's March 31, 2010 general exclusion order.  Holland first argued that it is authorized to import and sell its identified connectors because PPC entered into a covenant not to sue with Holland in 2006.  Holland additionally argued that its identified connectors did not infringe the ‘194 patent.  Holland requested expedited consideration and asserted that referral to an ALJ was unnecessary.  Holland noted that U.S. Customs and Border Protection (CBP) was holding Holland’s connectors at two ports in California, and CBP indicated it would not consider the legal import of Holland’s covenant not to sue with PPC.  According to the opinion, neither PPC nor the Commission Investigative Attorney disputed that the Holland products at issue are subject to a covenant not to sue, and both agreed that Holland’s identified products do not fall within the scope of the exclusion order. The Commission determined that the March 31, 2010 general exclusion order covered coaxial connectors that infringe claims 1 and/or 2 of the ‘194 patent, “except under license of the patent owner or as provided by law,” and that according to the Federal Circuit, covenants not to sue are equivalent to non-exclusive patent licenses.  The Commission therefore agreed with the parties and determined that Holland’s identified products that are subject to the covenant not to sue are outside the scope of the March 31, 2010 general exclusion order.
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ITC Institutes Advisory Opinion Proceeding In Certain Sleep-Disordered Breathing Treatment Systems (337-TA-879)

By Eric Schweibenz
|
Dec
16
On December 11, 2013, the ITC issued an order and notice instituting an advisory opinion proceeding in Certain Sleep-Disordered Breathing Treatment Systems and Components Thereof (Inv. No. 337-TA-879). By way of background, the investigation was based on a March 28, 2013 complaint and April 19, 2013 letter supplementing the complaint filed by ResMed Corp., ResMed Inc., and ResMed Ltd. (collectively, “ResMed”) alleging violation of Section 337 in the importation and sale of certain sleep-disordered breathing treatment systems and components thereof that infringe one more claims of U.S. Patent Nos. 7,159,587; 7,487,772; 7,997,267; 7,743,767; 6,216,691; 6,935,337 and 7,614,398.  See our March 29, 2013 post for more details on the complaint.  The Respondents in the investigation were Apex Medical Corp. and Apex Medical USA Corp. (collectively, “Apex”), and Medical Depot Inc., d/b/a Drive Medical Design & Manufacturing (“Medical Depot”).  Order Nos. 8 and 11 terminated the investigation as to Medical Depot and Apex, respectively, based on consent orders in July 2013. According to the Order, Apex filed a request asking the ITC to institute an advisory opinion proceeding to declare that their redesigned sleep-disordered breathing treatment systems are not covered by the consent order. Based on Apex’s compliance with Commission Rule 210.79, the ITC determined to institute the requested advisory opinion proceeding.  Furthermore, the ITC ordered that the advisory opinion proceeding be completed as expeditiously as practicable. Lastly, Chief ALJ Charles E. Bullock issued a notice indicating that ALJ E. James Gildea will be the presiding administrative law judge in this advisory opinion proceeding.
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ITC Institutes Advisory Opinion Proceeding In Certain Kinesiotherapy Devices (337-TA-823)

By Eric Schweibenz
|
Feb
10
On February 7, 2014, the ITC issued a notice instituting an advisory opinion proceeding in Certain Kinesiotherapy Devices and Components Thereof(Inv. No. 337-TA-823). By way of background, the investigation was based on a December 2, 2011 complaint filed by Standard Innovation Corporation and Standard Innovation (US) Corp. (collectively, "SIC") alleging violation of Section 337 in the importation into the U.S. and sale of certain kinesiotherapy devices and components thereof that infringe one or more claims of U.S. Patent Nos. 7,931,605 and D605,779.  See our January 9, 2012 post for more details on the complaint.  SIC identified twenty-one proposed respondents in the complaint, including Lelo Inc. and Leloi AB (collectively, "Lelo").  On June 17, 2013, the ITC issued a final determination finding a violation of Section 337 based on the infringement of the '605 patent.  Based on evidence of a pattern of violation and difficulty ascertaining the source of infringing products, the Commission issued both a general exclusion order against certain kinesiotherapy devices that infringe the asserted claims of the '605 patent, as well as cease and desist orders against certain respondents, including Lelo.  See our June 27, 2013 post for more details. According to the notice, Lelo filed a request on September 30, 2013 asking the ITC to institute an advisory opinion proceeding as to whether Lelo's new kinesiotherapy devices are covered by the general exclusion order or the cease and desist order issued against Lelo.  SIC opposed the request.  Finding Lelo's request in compliance with Commission Rule 210.79, the ITC determined to institute the requested advisory opinion proceeding, naming SIC and Lelo as parties thereto.  Further, the notice stated that an advisory opinion will issue by June 30, 2014.
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ITC Institutes Advisory Opinion Proceeding In Certain Ground Fault Circuit Interrupters (337-TA-739)

By Eric Schweibenz
|
Feb
14
On February 5, 2014, the ITC issued an order and notice instituting an advisory opinion proceeding in Certain Ground Fault Circuit Interrupters and Products Containing Same (Inv. No. 337-TA-739). By way of background, the original investigation was based on an October 8, 2010 complaint filed by Leviton Manufacturing Co., Inc. (“Leviton”) alleging violations of section 337 in the importation and/or sale of certain ground fault circuit interrupters (“GFCIs”) that infringe, among other patents, U.S. Patent No. 7,737,809 (“the ‘809 patent”).  The ITC issued cease and desist orders against numerous defaulting respondents, including Menard, Inc. (“Menard”).  The ITC also issued a general exclusion order.  Non-party Pass & Seymour, Inc. (“P&S”) had argued that the general exclusion should not reach P&S’s products, but the ITC rejected this argument.  Subsequently, on August 29, 2012, Leviton filed a complaint for an enforcement proceeding alleging, among other things, that Menard violated the cease and desist order by selling P&S GFCIs.  P&S joined the enforcement proceeding as an intervener, but the proceeding was later terminated following a settlement and licensing agreement between Leviton and P&S. According to the Order, P&S filed a request with the ITC for an advisory opinion as to whether the importation of certain redesigned P&S GFCIs violates the ITC’s remedial orders entered in the earlier proceedings.  The ITC granted P&S’s request and instituted an advisory opinion proceeding, ordering the presiding ALJ to “provide an opinion as to whether importation of P&S’s redesigned GFCls, without authorization from Leviton, would violate the Commission's remedial orders entered in this investigation on April 27, 2012.” Lastly, Chief ALJ Charles E. Bullock issued a notice indicating that he will be the presiding ALJ in this advisory opinion proceeding.
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ITC Issues Advisory Opinion In Certain Sleep-Disordered Breathing Treatment Systems (337-TA-879)

By Eric Schweibenz
|
Aug
15
On August 11, 2014, the U.S. International Trade Commission (the "Commission") issued the public version of an advisory opinion ("AO") adopting-in-part and reversing-in-part ALJ Gildea's Initial Advisory Opinion ("IAO") in Certain Sleep-Disordered Breathing Treatment Systems and Components Thereof (Inv. No. 337-TA-879). The Commission also reversed the ALJ's determination to place the burden of proof in this Advisory Opinion Proceeding ("AOP") on the patent owner in view of Medtronic, Inc. v. Mirowski Family Ventures, LLC, 134 S. Ct. 843 (2014), and instead placed the burden on Respondents Apex Medical Corp. and Apex Medical USA Corp. (collectively, "Apex").

By way of background, this AOP was initiated by Apex.  Apex sought an advisory opinion in order to confirm that their redesigned sleep-disordered breathing treatment systems are not covered by the consent order previously entered into by Apex. See our December 16, 2013 post for more details on the ITC's decision to institute this advisory opinion proceeding.  Complainants ResMed Corp. of San Diego, California, ResMed Inc. of San Diego, California, and ResMed Ltd. of Australia (collectively, "ResMed") and the Commission Investigative Staff participated in the AOP.
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Commission Issues Advisory Opinion In Certain Stainless Steel Products (337-TA-933)

By Eric Schweibenz
|
Oct
18
On October 14, 2016, the International Trade Commission (“the Commission”) issued an advisory opinion in Certain Stainless Steel Products, Certain Processes for Manufacturing or Relating to Same, and Certain Products Containing Same (Inv. No. 337-TA-933).

By way of background, this investigation is based on a complaint filed by Valbruna Slater Stainless, Inc., Valbruna Stainless Inc., and Acciaierie Valbruna S.p.A. (collectively, “Valbruna”) alleging violation of Section 337 in the importation into the U.S. and sale of certain stainless steel products manufactured using Valbruna’s allegedly stolen trade secrets.  See our September 8, 2014 and October 9, 2014 posts for more details on the complaint and Notice of Investigation, respectively.
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