ALJ Charneski

ALJ Charneski denies motion to quash non-party subpoena in certain cast steel railway wheels (337-TA-655)

By Eric Schweibenz
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Mar
03
On February 27, 2009, ALJ Carl C. Charneski issued Order No. 15in Certain Cast Steel Railway Wheels, Certain Processes for Manufacturing or Relating to Same and Certain Products Containing Same (337-TA-655).  In the Order, ALJ Charneski denied non-party Westinghouse Air Brake Technologies Corporation’s (Wabtec) motion to quash a subpoena duces tecum and ad testificandum served by complainant Amsted Industries Incorporated (Amsted). 

According to the Order, the subpoena at issue requested that Wabtec produce documents responsive to fourteen categories and that Wabtec present a representative to testify at a deposition on twelve topics. 

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ALJ Charneski Grants Motion For Summary Determination In Certain Hair Irons 337-TA-637

By Eric Schweibenz
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Mar
12
On March 10, 2009, ALJ Carl C. Charneski issued a notice indicating that he granted Complainant Farouk System, Inc.’s motion for summary determination of violation of section 337 in the matter of Certain Hair Irons and Packaging Thereof (Inv. No. 337-TA-637).  The notice further indicates that ALJ Charneski also issued a Recommended Determination (in the same order) recommending the issuance of a general exclusion order.  ALJ Charneski’s order granting complainant’s motion for summary determination was issued as a confidential document and a public version is not yet available.

We will provide additional information regarding this order once the public version issues.

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ALJ Charneski Denies Respondents’ Motion to Compel, But Grants Access To Videotape Subject to Conditions in Certain Cast Steel Railway Wheels (337-TA-655)

By Eric Schweibenz
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Mar
24
On March 20, 2009, ALJ Carl C. Charneski issued Order No. 18 in Certain Cast Steel Railway Wheels, Certain Processes for Manufacturing or Relating to Same and Certain Products Containing Same (337-TA-655).  In the Order, ALJ Charneski denied respondents Standard Car Truck Company, Inc., Barber Tianrui Railway Supply, LLC, Tianrui Group Company Limited, and Tianrui Group Foundry Company Limited’s (“Respondents”) motion to compel complainant Amsted Industries Incorporated to release a videotape made during respondents’ inspection of Amsted’s Kansas City Foundry.

According to the Order, the dispute between the parties involved access to a videotape made during Respondents’ inspection of Amsted’s Griffin Wheel Foundry outside of Kansas City, Missouri.  The Respondents sought unlimited access to the videotape and argued that the Protective Order issued during the investigation would provide sufficient protection for Griffin Wheel Foundry’s trade secrets.  Amsted and the Commission Investigative Staff argued for greater protection for the videotape inspection and suggested that an amendment to the Protective Order for special, increased measures of ensuring security and confidentiality is not uncommon. 

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ALJ Charneski Denies Motion to Amend Complaint To Assert Additional Patent Claims In Certain Semiconductor Integrated Circuits Using Tungsten Metallization (337-TA-648)

By Eric Schweibenz
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Mar
31
On March 26, 2009, ALJ Carl C. Charneski issued Order No. 60 in Certain Semiconductor Integrated Circuits Using Tungsten Metallization and Products Containing Same (337-TA-648).  In the Order, ALJ Charneski denied Complainants LSI Corporation’s and Agere Systems Inc.’s (“Complainants”) motion to amend the complaint and notice of investigation to assert two additional patent claims against respondent Magnachip Semiconductor, Ltd. (“MagnaChip”).

According to the Order, Complainants’ motion failed to meet the good cause standard set forth in Commission Rule 210.14(b)(1) as it relates to post-institution motions to amend the complaint and notice of investigation.  Specifically, ALJ Charneski noted, among other things, that initial expert reports had already been filed, rebuttal expert reports are due on April 6, 2009, and the deadline for fact and expert discovery is April 17, 2009.

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ALJ Charneski Grants Motion to Compel in Certain Semiconductor Integrated Circuits Using Tungsten Metallization (337-TA-648)

By Eric Schweibenz
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Apr
13
On April 6, 2009, ALJ Carl C. Charneski issued Order No. 63 granting a motion to compel filed by Complainants Agere Systems Inc. and LSI Corporation (“Agere”) related to the identification of prior art.

Agere moved to compel the respondents to comply with the procedural schedule (Order No. 10) and amend their Joint Notice of Prior Art (“Notice”) to identify “the prior art upon which Respondents realistically intend to rely.”  According to the Order, Respondents had identified 478 prior art references in the Notice.  The Staff supported Agere’s motion to compel.

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ALJ Charneski Permits Invalidity Defense In Enforcement Proceeding In Certain Voltage Regulators (337-TA-564)

By Eric Schweibenz
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Apr
15
On April 10, 2009, ALJ Carl C. Charneski issued Order No. 10 in Certain Voltage Regulators, Components Thereof and Products Containing Same (337-TA-564).  In the Order, ALJ Charneski granted, in part, Complainant Linear Technology Corporation’s (“Linear”) motion to strike certain affirmative defenses of respondent Advanced Analogic Technologies, Inc. (“AATI”).  Specifically, ALJ Charneski granted Linear’s motion to strike a number of AATI’s affirmative defenses, but denied Linear’s motion to strike AATI’s patent invalidity defense as premature. 

By way of background, on September 24, 2007, the Commission issued its Final Determination on the question of violation finding that certain AATI products infringed claims 2, 3, and 34 of U.S. Patent No. 6,580,258.  The Commission also issued a limited exclusion order directed toward AATI.  Linear thereafter filed a complaint requesting that the Commission institute a formal enforcement proceeding against AATI for alleged violation of the limited exclusion order.  On October 1, 2008, the Commission issued its Notice of Institution of Formal Enforcement Proceeding against AATI “to determine whether AATI is in violation of the Commission’s limited exclusion order issued in the investigation, and what, if any, enforcement measures are appropriate.”

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Update Regarding Certain Electronic Devices Having Image Capture Or Display Functionality (337-TA-672)

By Eric Schweibenz
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Apr
20
Further to our March 26 post, on April 16, 2009, ALJ Carl C. Charneski issued Order No. 4 – setting target date in Certain Electronic Devices Having Image Capture or Display Functionality and Components Thereof (337-TA-672). 

In the order, ALJ Charneski set a 16 month target date.  Therefore, the Initial Determination in this investigation will be due on March 30, 2010 and the target date for completion of the investigation is July 30, 2010.

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ALJ Charneski Denies Motion To Dismiss Complaint In Certain Cast Steel Railway Wheels (337-TA-655)

By Eric Schweibenz
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Apr
20
On April 16, 2009, ALJ Carl C. Charneski issued the public version of Order No. 20 in Certain Cast Steel Railway Wheels, Certain Processes for Manufacturing or Relating to Same and Certain Products Containing Same (337-TA-655).  According to the Order, ALJ Charneski denied respondent Standard Car Truck Company’s (“SCT”) motion to dismiss complainant Amsted Industries Incorporated’s (“Amsted”) complaint. 

In the Order, ALJ Charneski first explained that SCT’s motion to dismiss “was filed pursuant to Commission Rule 210.18, i.e., the rule on summary determination (19 C.F.R. § 210.18).”  SCT argued that the complaint should be dismissed for three reasons: (1) there was no trade secrets in existence at the time of the filing of the complaint that could have been misappropriated as alleged by [Amsted]; (2) there was no domestic industry at the time of filing, and therefore (3) the [ITC] lacks subject matter jurisdiction.”  Amsted and the Commission Investigative Staff opposed SCT’s motion.

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ALJ Charneski Orders That Respondent Need Not Provide Deposition Testimony On Unasserted Claim In Certain Semiconductor Integrated Circuits (337-TA-648)

By Eric Schweibenz
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Apr
20
On April 16, 2009, ALJ Carl C. Charneski issued the public version of Order No. 48 (dated March 11, 2009) in Certain Semiconductor Integrated Circuits Using Tungsten Metallization and Products Containing Same (337-TA-648).  In the Order, ALJ Charneski denied Complainants LSI Corporation’s and Agere Systems Inc.’s (“LSI”) motion for reconsideration of a ruling he made during a telephonic conference that a deposition witness appearing on behalf of respondent Cypress Semiconductor Corp. (“Cypress”) need not answer questions with respect to claim 4 of U.S. Patent No. 5,227,335 (the ‘335 patent”) since only claim 1 of the ‘335 patent was asserted against Cypress.  ALJ Charneski also denied LSI’s alternative request seeking leave for interlocutory review of the ruling.

By way of background, during a deposition, Cypress’ counsel instructed a Cypress engineer not to answer a question on the basis that the question only related to possible infringement of claim 4 of the ‘335 patent.  While claim 4 was asserted against other respondents, only claim 1 had been asserted against Cypress.  In response to Cypress’ counsel’s instruction, the parties contacted ALJ Charneski for a ruling as to whether Cypress’ counsel’s objection to the question was proper.  In addition to ruling that the objection was proper, ALJ Charneski went on to rule that questions regarding claim 4 were not permissible as to Cypress or to any other respondent that has not been asserted to have infringed claim 4.

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ALJ Charneski Denies Motion In Limine To Prevent Expert Testimony Relating To PTO Procedures In Certain Variable Speed Wind Turbines (337-TA-641)

By Eric Schweibenz
|
May
06
On May 4, 2009, ALJ Carl C. Charneski issued Order No. 34 in Certain Variable Speed Wind Turbines And Components Thereof (337-TA-641).  In the Order, ALJ Charneski denied General Electric Company’s (“GE”) motion in limine to prohibit patent law expert Lawrence J. Goffney from presenting testimony in violation of Ground Rules 5(A) and 5(B) on behalf of Mitsubishi Heavy Industries, Ltd., Mitsubishi Heavy Industries America, Inc., and Mitsubishi Power Systems Americas, Inc. (collectively, “MHI”).

According to the Order, GE argued that Goffney’s opinions, as set forth in his expert report, violate Ground Rule 5(A) (because such opinions contain legal arguments), and Ground Rule 5(B) (because such opinions go beyond the procedures of the U.S. Patent and Trademark Office (“PTO”)).  In response, MHI agreed to strike those portions of Goffney’s report which it believed GE found objectionable.   MHI further agreed to limit Goffney’s testimony to matters of (1) general considerations pertaining to patents (e.g., role and structure of the PTO and training and skill of PTO examiners), (2) PTO practices and procedures relating to the duty of candor of good faith in dealing with the PTO, (3) the prosecution histories of the applications for the patents at issue and (4) matters raised on cross-examination, matters necessary to rebut matters testified to by GE’s experts, and matters otherwise raised at the hearing by GE’s counsel or the ALJ.

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ALJ Charneski Denies Motion In Limine To Prevent Rebuttal Testimony Not Identified In Pre-Hearing Statement In Certain Variable Speed Wind Turbines (337-TA-641)

By Eric Schweibenz
|
May
11
On May 6, 2009, ALJ Carl C. Charneski issued Order No. 36 in Certain Variable Speed Wind Turbines And Components Thereof (337-TA-641).  In the Order, ALJ Charneski denied Respondents Mitsubishi Heavy Industries, Ltd., Mitsubishi Heavy Industries America, Inc., and Mitsubishi Power Systems Americas, Inc.’s (collectively, “MHI”) motion in limine seeking an order precluding complainant General Electric Company (“GE”) from offering rebuttal testimony not identified in GE’s pre-hearing statement.

According to the Order, MHI argued in its motion that “GE’s attempt to hide potential witnesses is improper trial by ambush, procedurally flawed, and severely prejudices MHI’s ability to prepare for the Hearing.”  ALJ Charneski, however, disagreed finding that “GE has identified all potential witnesses who may testify at the hearing” and “GE need not identify rebuttal witnesses at this time inasmuch as MHI has yet to put on its case-in-chief.”

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Update Regarding Certain Electronic Devices Having Image Capture Or Display Functionality (337-TA-672)

By Eric Schweibenz
|
May
14
Further to our April 20 post, ALJ Carl C. Charneski issued Order No. 6 – Procedural Schedule in Certain Electronic Devices Having Image Capture or Display Functionality and Components Thereof (337-TA-672).

According to the Order, the evidentiary hearing in this matter will commence on February 1, 2010.

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ALJ Charneski Denies Respondents’ Motions In Limine In Certain Variable Speed Wind Turbines (337-TA-641)

By Eric Schweibenz
|
May
18
On May 14, 2009, ALJ Carl C. Charneski issued the public versions of Order No. 37 (dated May 6, 2009) and Order No. 40 (dated May 7, 2009) in Certain Variable Speed Wind Turbines And Components Thereof (337-TA-641).  In the Orders, ALJ Charneski denied Respondents Mitsubishi Heavy Industries, Ltd., Mitsubishi Heavy Industries America, Inc., and Mitsubishi Power Systems Americas, Inc.’s (collectively, “MHI”) motions in limine seeking orders to preclude complainant General Electric Company (“GE”) from offering certain evidence relating to alleged inequitable conduct committed during prosecution of the patents-in-suit.

According to Order No. 37, MHI sought to preclude an analysis performed by GE regarding a German Patent Office search report relating to a German patent application that corresponds to one of the U.S. patents being asserted by GE in the investigation.  Specifically, MHI sought to preclude GE from offering evidence purporting to show good faith in connection with its alleged failure to disclose the German Patent Office search report and references cited therein to the U.S. Patent and Trademark Office (“USPTO”).  ALJ Charneski denied MHI’s motion, determining that the facts were scarce and, to the extent they existed, such facts were in dispute.  ALJ Charneski further determined that MHI would be permitted to renew its objections at the evidentiary hearing.

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ALJ Charneski Denies Motion In Limine In Certain Variable Speed Wind Turbines (337-TA-641)

By Eric Schweibenz
|
May
18
On May 14, 2009, ALJ Carl C. Charneski issued the public version of Order No. 35 (dated May 6, 2009) in Certain Variable Speed Wind Turbines and Components Thereof (Inv. No. 337-TA-641).  In the Order, ALJ Charneski denied complainant General Electric Co.’s (“GE”) motion in limine to prevent respondents Mitsubishi Heavy Industries, Ltd., Mitsubishi Heavy Industries America, Inc., and Mitsubishi Power Systems Americas, Inc.’s (collectively, “MHI”) expert, Dr. Thomas G. Habetler (“MHI’s expert”), from testifying as to invalidity positions presented initially in his “Contention Rebuttal Report.”

GE’s motion in limine sought to exclude new obviousness, written description, and enablement arguments that MHI’s expert presented for the first time in his February 3, 2009 Contention Rebuttal Report.

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ALJ Charneski Denies Motions For Summary Determination In Certain Semiconductor Integrated Circuits Using Tungsten Metallization (337-TA-648)

By Eric Schweibenz
|
May
27
On May 20, 2009, ALJ Carl C. Charneski issued Order No. 80 and Order No. 81 in Certain Semiconductor Integrated Circuits Using Tungsten Metallization and Products Containing Same (Inv. No. 337-TA-648).  In the Orders, ALJ Charneski denied five motions for summary determination relating to the validity or invalidity of U.S. Patent No. 5,227,335.

Order No. 80 addresses four motions for summary determination concerning alleged anticipation and/or obviousness of certain claims of the ‘335 patent in light of prior work conducted at non-party IBM (“IBM Prior Art”).  According to the Order, Respondents National Semiconductor Corp., Integrated Device Technology, Inc., STMicroelectronics N.V., Grace Semiconductor Manufacturing Corp., Spansion Inc., Nanya Technology Corp., Powerchip Semiconductor Corp., Cypress Semiconductor Corp. and Elpida Memory, Inc. moved for summary determination of invalidity of claims 1, 3, and 4 of the ‘335 patent for anticipation and obviousness.  Complainants LSI Corp. and Agere Systems, Inc. (“Complainants”) filed a response and cross motion for summary determination of validity of claims 1, 3, and 4.  Complainants also filed a separate motion for summary determination that the IBM Prior Art does not anticipate claims 1, 3, or 4 of the ‘335 patent against respondents Microchip Technology, Inc., ProMOS Technologies, Inc., United Microelectronics Corp., Micronas Holding AG, NXP Semiconductors USA, Inc., Vanguard International Semiconductor Corp., Dongbu HiTek Semiconductor Business, Qimonda AG, Jazz Semiconductor, Tower Semiconductor, Ltd. and ON Semiconductor Corp.  Lastly, Complainants filed an additional motion for summary determination that the IBM Prior Art does not anticipate or render obvious claims 1, 3, or 4 of the ‘335 patent against respondent Magnachip Semiconductor, Ltd.

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ALJ Charneski Issues Stay As To Qimonda AG In Certain Semiconductor Integrated Circuits Using Tungsten Metallization (337-TA-648)

By Eric Schweibenz
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Jul
16
On July 15, 2009, ALJ Carl C. Charneski issued Order No. 110 in Certain Semiconductor Integrated Circuits Using Tungsten Metallization and Products Containing Same (337-TA-648).  In the Order, ALJ Charneski stayed the investigation as to respondent Qimonda AG (“Qimonda”) in view of a July 2, 2009 Order issued by the U.S. Bankruptcy Court for the Eastern District of Virginia (the “Bankruptcy Court”).

In the Order, ALJ Charneski noted that the Bankruptcy Court issued a preliminary injunction ordering that the ITC investigation be stayed with respect to Qimonda “pending a determination on the Recognition Order.” ALJ Charneski further noted that the “Bankruptcy Court’s Order does not extend to any of the other respondents in this investigation” and “the hearing in this investigation will commence on July 20, 2009.”

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ALJ Charneski Rules On Motion To Compel In Certain Cast Steel Railway Wheels (337-TA-655)

By Eric Schweibenz
|
Jul
28
On July 27, 2009, ALJ Carl C. Charneski issued the public version of Order No. 26 (dated June 22, 2009) in Certain Cast Steel Railway Wheels, Certain Processes For Manufacturing Or Relating To Same And Certain Products Containing Same (Inv. No. 337-TA-655).  In the Order, ALJ Charneski granted-in-part Complainant Amsted Industries, Inc.’s (“Amsted”) motion to compel Respondents Standard Car Truck Company, Inc. and Barber Tianrui Railway Supply, LLC (collectively, “SCT”) to produce certain documents created after Amsted’s August 14, 2008 complaint. 

While ALJ Charneski determined that Amsted’s motion to compel was “overly broad,” he granted the motion with respect to those document requests supported by the Commission Investigative Staff (the “Staff”).  The Staff asserted that 11 of the 17 document requests identified by Amsted in its motion to compel sought documents relevant to the investigation.  ALJ Charneski granted the motion with respect to Amsted’s requests regarding (1) “certifications by the American Association of Railroads, pricing or market information, information provided to customers, and sales plans, strategic plans and similar documents, pertaining to cast steel railway wheels manufactured by Tianrui Group Foundry Company Limited”; and (2) “training or education relating to cast steel railway wheels that respondents have provided to their employees.”

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ALJ Charneski Denies Motion To Terminate Investigation In Certain Cast Steel Railway Wheels (337-TA-655)

By Eric Schweibenz
|
Jul
28
On July 27, 2009, ALJ Carl C. Charneski issued the public version of Order No. 14 (dated February 27, 2009) in Certain Cast Steel Railway Wheels, Certain Processes For Manufacturing Or Relating To Same And Certain Products Containing Same (Inv. No. 337-TA-655).  In the Order, ALJ Charneski denied Respondent Tianrui Group Foundry Limited’s (“Tianrui Foundry”) motion to terminate the investigation based on its assertion that Complainant Amsted Industries Incorporated’s (“Amsted”) complaint did not allege a claim upon which relief can be granted.

By way of background, Amsted filed a complaint against Tianrui Foundry, Tianrui Group Company Limited, Standard Car Truck Company, and Barber Tianrui Railway Supply, LLC (collectively, “Respondents”) alleging violation of section 337 based on the importation and sale of Tianrui Wheels manufactured through a process that allegedly uses Amsted’s misappropriated trade secrets (the “ABC Trade Secrets”).  Amsted’s complaint further alleges that Respondents recruited nine former employees of Datong ABC Castings Company Limited, a licensee of Amsted’s ABC Technology located in China, for the purpose of acquiring the ABC Trade Secrets.

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ALJ Charneski Denies Motion To Compel In Certain Cast Steel Railway Wheels (337-TA-655)

By Eric Schweibenz
|
Jul
28
On July 27, 2009, ALJ Carl C. Charneski issued the public version of Order No. 23 (dated April 24, 2009) in Certain Cast Steel Railway Wheels, Certain Processes For Manufacturing Or Relating To Same And Certain Products Containing Same (Inv. No. 337-TA-655).  In the Order, ALJ Charneski denied Respondents Standard Car Truck, Inc., Barber Tianrui Railway Supply, Tianrui Group Company Limited, and Tianrui Group Foundry Company Limited’s (collectively, “Respondents”) motion to compel.

In their motion, Respondents sought an order from ALJ Charneski compelling Complainant Amsted Industries Incorporated (“Amsted”) to provide a list of the “Griffin Trade Secrets.”  Amsted and the Commission Investigative Staff (the “Staff”) opposed Respondents’ motion.  Specifically, Amsted argued that the disputed discovery request had been “sufficiently answered” since it previously produced documents and things relating to “Griffin Wheel’s Kansas City, Kansas, cast steel railway facility and allowed [R]espondents to inspect that facility.”  Amsted further argued that “this investigation is an unfair-competition-based investigation brought under Section 337(a)(1)(A) and involves the Respondents’ misappropriation of certain ABC trade Secrets.”

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ALJ Charneski Issues Initial Determination Finding Violation Of Section 337 In Certain Variable Speed Wind Turbines (337-TA-641)

By Eric Schweibenz
|
Aug
10
On August 7, 2009, ALJ Carl C. Charneski issued a notice regarding his Initial Determination in Certain Variable Speed Wind Turbines and Components Thereof (Inv. No. 337-TA-641).

The Complainant in this investigation is General Electric Co. and the Respondents are Mitsubishi Heavy Industries, Ltd., Mitsubishi Heavy Industries America, Inc., and Mitsubishi Power System, Inc.  According to the notice, ALJ Charneski determined that a violation of Section 337 occurred with respect to Mitsubishi’s turbines.  In particular, ALJ Charneski held that Mitsubishi’s turbines infringe claim 121 of the asserted ‘039 patent, and claim 15 of the asserted ‘985 patent.  Additionally, while ALJ Charneski determined that Mitsubishi’s turbines infringed claims 5, 7, and 8 of the asserted ‘221 patent, he also determined that GE did not practice any claim of the asserted ‘221 patent for purposes of the domestic industry (technical prong) requirement.

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