ALJ Luckern

ALJ Luckern denies motion for claim construction hearing in certain 3g mobile handsets and components (337-TA-613)

By Eric Schweibenz
|
Mar
03
On February 27, 2009, ALJ Paul J. Luckern issued the public version of his February 9, 2009 Order No. 40 in Certain 3G Mobile Handsets and Components (337-TA-613).  In the Order, ALJ Luckern denied respondents Nokia Corporation and Nokia Inc.’s (Nokia) motion for a one-day claim construction hearing and a speedy claim construction order.

According to the Order, Nokia argued in support of its motion, among other things, that “although [ALJ Luckern] does not normally conduct claim construction hearings prior to an evidentiary hearing, the unique circumstances of this investigation warrant a separate hearing.”  Specifically, Nokia argued that conducting a claim construction hearing prior to the evidentiary hearing would streamline the proceedings.  Further, Nokia pointed to a prior investigation (Certain 3G Wideband Code Division Multiple Access (WCDMA) Handsets and Components Thereof (337-TA-601) (the 601 investigation)) and, according to the Order, argued that the disputed claim terms in the current investigation were identical to those in the 601 investigation.

Share

Read More

ITC Institutes investigation (337-TA-670) regarding certain adjustable keyboard support systems

By Eric Schweibenz
|
Mar
11
On March 9, 2009, the U.S. International Trade Commission voted to institute an investigation of certain adjustable keyboard support systems and components thereof.  The investigation is based on a February 10, 2009 complaint filed by Humanscale Corporation of New York, New York.  As explained in our February 17 post, the complaint alleges violations of Section 337 in the importation into the U.S. and/or the sale within the U.S. after importation of certain adjustable keyboard support systems and components thereof.  Specifically, the complaint alleges that the “products at the heart of the proposed investigation are keyboard support systems, particularly, ergonomic computer keyboard support systems that are adjustable for minimizing an individual worker’s fatigue and improving efficiency.”

The ITC has identified the following as respondents in this investigation:

Share

Read More

Chief ALJ Luckern Issues Order Regarding Witness Statements And Admissibility Of Expert Reports In Certain Video Game Machines (337-TA-658)

By Eric Schweibenz
|
Mar
25
On March 24, 2009, Chief ALJ Paul J. Luckern issued Order No. 21 in Certain Video Game Machines and Related Three-Dimensional Pointing Devices (337-TA-658).  In the Order, Chief ALJ Luckern determined that “written testimony for direct testimony of witnesses will be limited to non-controversial testimony” and “expert reports are not to be admitted with evidence.”

According to the Order, the parties made submissions on March 20, 2009 regarding the issue of witness statements and expert reports.  With respect to witness statements, all of the parties agreed that the use of witness statements should be permitted in lieu of live direct testimony on certain non-controversial matters, such as, for example, witness qualifications, educational history, work experience, etc. 

Share

Read More

ITC Institutes Investigation (337-TA-674) Regarding Certain Light Emitting Diode Chips, Laser Diode Chips And Products Containing Same

By Eric Schweibenz
|
Apr
02
On March 31, 2009, the U.S. International Trade Commission voted to institute an investigation of Certain Light Emitting Diode Chips, Laser Diode Chips and Products Containing Same (337-TA-674). 

The investigation is based on a March 2, 2009 complaint filed by Professor Gertrude Rothschild of Columbia University in New York.  As we explained in our March 4 post, the complaint alleges that the following companies unlawfully import into the U.S., sell for importation, and sell within the U.S. after importation certain light emitting diode (LED) chips, laser diode chips and products containing those devices that infringe claims 10, 12, 13, and 16 of U.S. Patent No. 5,252,499:

Share

Read More

ALJ Luckern Upholds Initial Determination in Certain R-134a Coolant (337-TA-623)

By Eric Schweibenz
|
Apr
06
On April 1, 2009, Chief ALJ Paul J. Luckern issued a Remand Determination in the matter of Certain R-134a Coolant (Otherwise Known as 1,1,1,2-Tetrafluorothane) (337-TA-623) affirming that Respondents Sinochem Modern Environmental Protection Chemicals (Xi’an) Co. Ltd. and Sinochem Ningbo Ltd. (“Sinochem”) imported coolant that infringed a process patent held by Complainants INEOS Fluor Holdings Ltd., INEOS Fluor Ltd. and INEOS Fluor Americas LLC (“INEOS”).

The investigation was instituted in December 2007.  On December 1, 2008, ALJ Luckern issued a final initial determination (“ID”) that Sinochem infringed the patent-in-suit and failed to establish that the patent-in-suit was invalid.  Following submissions by the parties, the Commission reviewed the ID with respect to invalidity and issued an order on January 30, 2009 remanding the investigation to the ALJ for further proceedings related to anticipation and obviousness because the disposition of these issues was unclear from the ALJ’s ID.

Share

Read More

Update Regarding Certain Adjustable Keyboard Support Systems (337-TA-670)

By Eric Schweibenz
|
Apr
13
Further to our March 11 post, on April 6, 2009, Chief ALJ Paul J. Luckern issued Order No. 3 – setting target date in Certain Adjustable Keyboard Support Systems and Components Thereof (337-TA-670).

In the Order, Chief ALJ Luckern set a 15 month target date (i.e., June 14, 2010).  The 15 month target date was set despite an argument from respondents CompX International Inc. and Waterloo Furniture Components Limited d/b/a CompX Waterloo that an 18 month target date is required in view of “the complexity and multiplicity of factual and legal issues involved in the investigation.”  The complainant requested a 14 month target date and the ITC Staff requested a 15 month target date.  According to the Order, any final initial determination will be filed no later than February 15, 2010.  Also, the evidentiary hearing is scheduled to commence on December 1, 2009.

Share

Read More

ALJ Luckern Issues Order Relating to Third Party Discovery In Certain Video Game Machines (337-TA-658)

By Eric Schweibenz
|
Apr
15
On April 13, 2009, the public version of Order No. 14 (which was issued by Chief ALJ Paul J. Luckern on February 27, 2009) was made available in Certain Video Game Machines and Related Three-Dimensional Pointing Devices (337-TA-658).  In the Order, ALJ Luckern denied third-party James D. Richards III’s motion for sanctions and for a new protective order, and denied his motion to quash a subpoena duces tecum and ad testificandum, ordering Richards to comply with the subpoena.

According to the 17-page order, Richards moved for sanctions against respondents Nintendo Co., Ltd. and Nintendo of America Inc. (“Nintendo”) because Nintendo violated the protective order by disclosing Richards’ confidential trade secrets by including information obtained from its expert witness, Donald Odell, and by retaining Odell as an expert.  Odell is the named inventor on a patent that Nintendo asserted as prior art.  Odell was formerly employed at Selectech, Inc. under the supervision of Richards.  Richards also requested removal of two Nintendo attorneys for their disclosure of this supposed confidential business information, which included customer identities.

Share

Read More

ALJ Luckern Determines That Respondents’ License Agreements Relating To Accused Products Are Not Relevant For Calculating The Appropriate Bond In Certain Video Game Machines (337-TA-658)

By Eric Schweibenz
|
Apr
20
On April 16, 2009, Chief ALJ Paul J. Luckern issued the public version of Order No. 17 in Certain Video Game Machines and Related Three-Dimensional Pointing Devices (337-TA-658).  In the order, ALJ Luckern found respondents Nintendo Co., Ltd. and Nintendo of America, Inc.’s (“Nintendo”) license agreements relating to the accused products are not relevant for calculating the appropriate bond.

On March 2, 2009, complainant Hillcrest Laboratories, Inc. (“Hillcrest”) moved for an order compelling Nintendo to produce their license agreements relating to the accused products, and, if necessary, to produce a witness to provide testimony on those agreements.  Nintendo and the Commission Investigative Staff opposed Hillcrest’s motion.

Share

Read More

ALJ Luckern Issues Enforcement Initial Determination In Certain Ink Cartridges (337-TA-565)

By Eric Schweibenz
|
Apr
21
On April 17, 2009, ALJ Paul J. Luckern issued a Notice of his Enforcement Initial Determination (“ED”) which included the non-confidential title page, conclusions of law, and the order in Certain Ink Cartridges and Components Thereof (337-TA-565).  According to the Notice, ALJ Luckern determined that enforcement respondents Ninestar Technology Company Ltd., Ninestar Technology Co., Ltd. and Town Sky, Incorporated violated the orders issued at the conclusion of Investigation No. 337-TA-565.

ALJ Luckern determined that the Ninestar and Town Sky compatible and remanufactured cartridges at issue are “covered products” under the Cease and Desist Order issued against it by the Commission on October 19, 2007.  ALJ Luckern also determined that Ninestar and Town Sky failed to meet their burden to demonstrate their affirmative defenses and were “jointly and severally liable for violations of the Cease and Desist Orders in the amount of $20,504,974.16.”

Share

Read More

ALJ Luckern Denies Motion for Summary Determination That Licensing Activities Satisfy Domestic Industry (Economic Prong) Requirement In Certain Video Games (337-TA-658)

By Eric Schweibenz
|
May
05
On April 30, 2009, Chief ALJ Paul J. Luckern issued the public version of Order No. 26 (dated March 26, 2009) in Certain Video Games and Related Three-Dimensional Pointing Devices (337-TA-658).  In the Order, ALJ Luckern denied complainant Hillcrest Laboratories, Inc.’s (“Hillcrest”) motion for summary determination that Hillcrest’s licensing activities in the United States satisfy the domestic industry (economic prong) requirement of 19 U.S.C.§ 1337(a)(3)(C).

Section 337(a)(3)(C) provides for a domestic industry based on “substantial investment” in certain activities, including licensing of a patent.  Hillcrest sought summary determination that its licensing activities satisfied the domestic industry requirement because of its investments in negotiating licenses.  Hillcrest relied on the assertions of one of its own officers in an attempt to prove its contentions.

Share

Read More

ALJ Luckern Denies Motion to Preclude Testimony in Certain Video Game Machines (337-TA-658)

By Eric Schweibenz
|
May
05
On April 21, 2009, Chief ALJ Paul J. Luckern issued the public version of Order No. 18 (dated March 23, 2009) in Certain Video Game Machines and Related Three-Dimensional Pointing Devices (337-TA-658) denying respondent Nintendo Co., Ltd.’s  (“Nintendo”) motion to preclude complainant Hillcrest Laboratories Inc. (“Hillcrest”) from introducing evidence on the subject of infringement by Nintendo’s Nunchuk and Wii MotionPlus accessories and that the ALJ grant partial summary determination of non-infringement with respect to these two accessories.  Hillcrest and the Commission Investigative Staff  opposed the motion.

Nintendo argued that it had repeatedly inquired as to the scope of Hillcrest’s allegations of infringement, and that Hillcrest refused to answer.  Instead, according to the order, Nintendo argued that Hillcrest answered an interrogatory on the issue by “simply pointing to its expert reports,” which were served on the same day as the interrogatory answer, and that neither Nintendo nor the expert reports discussed how the Nunchuk and Wii MotionPlus accessories infringe the patents.  Hillcrest and the Staff responded that it was premature for the ALJ to preclude expert testimony regarding the Nunchuk and Wii MotionPlus accessories, citing Ground Rule 4(viii), which states that “[t]he party submitting said expert report shall have the opportunity to supplement at appropriate intervals the information contained therein if the party learns that in some material respect the information disclosed therein is incomplete or incorrect.”

Share

Read More

ALJ Luckern Denies Nintendo’s Motion for Summary Determination of Invalidity In Certain Video Game Machines (337-TA-658)

By Eric Schweibenz
|
May
06
On April 30, 2009, Chief ALJ Paul J. Luckern issued the public version of Order No. 33 (dated April 9, 2009) in Certain Video Game Machines and Related Three-Dimensional Pointing Devices (337-TA-658).  In the Order, ALJ Luckern denied Respondents Nintendo Co., Ltd. and Nintendo of America, Inc.’s (“Nintendo”) Motion for Summary Determination of Invalidity of U.S. Patent No. 7,139,983 (“the ‘983 patent”) Under 35 U.S.C. §§ 102 and 103.

According to the Order, the ‘983 patent is directed to a method for providing a user interface on a television comprising the steps of displaying media objects, receiving inputs, zooming, and displaying selections.  In its motion, Nintendo argued that under Hillcrest’s proposed claim construction, certain claims of the ‘983 patent are invalid under §§ 102 and 103, in light of (1) U.S. Patent No. 6,577,350 (“the ‘350 patent”); (2) a Pad++ system developed at New York University and the University of New Mexico (“Pad++”); and (3) Nintendo’s N64 Extreme-G video game (“Extreme-G”).

Share

Read More

ALJ Luckern Denies Motion To Stay In Certain Video Game Machines (337-TA-658)

By Eric Schweibenz
|
May
07
On April 30, 2009, Chief ALJ Paul J. Luckern issued the public version of Order No. 30 (dated April 2, 2009) in Certain Video Game Machines and Related Three-Dimensional Pointing Devices (337-TA-658).  In the Order, ALJ Luckern denied Nintendo Co. Ltd and Nintendo of America Inc.’s (collectively “Nintendo”) motion to stay the procedural schedule.

According to the Order, Nintendo sought to extend the time in which they would be permitted to obtain discovery from Mr. James D. Richards III (“Mr. Richards”) and Mr. Donald S. Odell (“Mr. Odell”).  Such an extension, Nintendo argued, would provide ample time for Nintendo to supplement its expert reports.  Nintendo additionally sought a temporary stay of the procedural schedule, including the evidentiary hearing, until at least six weeks after Mr. Richards complied with a subpoena directed to him.  In response, complainant Hillcrest Laboratories, Inc. (“Hillcrest”) argued that (1) Mr. Richards had no critical information, (2) Nintendo could have previously obtained the discovery it sought from Mr. Richards, and (3) delaying the procedural schedule would cause severe prejudice to Hillcrest and the integrity of Section 337 proceedings.  The Commission Investigative Staff opposed Nintendo’s motion arguing that (1) Nintendo failed to demonstrate a further need for the documents and prototypes currently in Mr. Richard’s possession, (2) discovery of the information sought by Nintendo would not simplify the issues, (3) Nintendo would not be unduly prejudiced without a stay, and (4) a stay would not facilitate the most efficient use of Commission resources.

Share

Read More

ALJ Luckern Grants Motion to Amend Answer to Assert Unenforceability Due to Inequitable Conduct in Certain Video Games (337-TA-658)

By Eric Schweibenz
|
May
07
On April 30, 2009, Chief ALJ Paul J. Luckern issued the public version of Order No. 31 (dated April 2, 2009) in Certain Video Games and Related Three-Dimensional Pointing Devices (337-TA-658).  In the Order, ALJ Luckern granted respondents’ Nintendo Co., Ltd. and Nintendo of America, Inc.’s (collectively “Nintendo”) motion to amend their answer to Complainant Hillcrest Laboratories, Inc.’s (“Hillcrest”) Complaint to assert the defenses that the asserted claims of the patents at issue were unenforceable due to inequitable conduct.

According to the Order, Commission Rule 210.14(b)(2) provides that the presiding ALJ may allow amendments to the pleadings under conditions that avoid prejudicing the public interest and the rights of the parties if disposition on the merits will be facilitated, or if other good cause is shown.  ALJ Luckern noted that the ITC typically favors allowing respondents to amend their answer, however, an unjustified delay in presenting an affirmative defense may show that there is no good cause to amend the pleading.

Share

Read More

Update Regarding Certain Adjustable Keyboard Support Systems (337-TA-670)

By Eric Schweibenz
|
May
12
Further to our March 11 and April 13 posts, on April 20, 2009, Chief ALJ Paul J. Luckern issued Order No. 7 – setting procedural schedule in Certain Adjustable Keyboard Support Systems and Components Thereof (337-TA-670).

In the Order, ALJ Luckern sets the procedural schedule, including the schedule for the evidentiary hearing which will take place from December 1 – December 4, 2009.

Share

Read More

ALJ Luckern Grants Motion To Consolidate Investigation Nos. 337-TA-640 and 337-TA-674

By Eric Schweibenz
|
May
21
On May 19, 2009, Chief ALJ Paul J. Luckern issued an Order granting complainant Gertrude Neumark Rothschild’s motion to consolidate Certain Light Emitting Diode Chips, Laser Diode Chips and Products Containing Same (Inv. No. 337-TA-674) and Certain Short-Wavelength Light Emitting Diodes, Laser Diodes and Products Containing Same (Inv. No. 337-TA-640).

ALJ Luckern determined that “both the 640 Investigation and the 674 Investigation involve the same complainant (as well as the same administrative law judge and staff attorney), the same allegations of domestic industry, the same asserted patent (U.S. Patent No. 5,252,499), and the same asserted claims (independent claim 10 and dependent claims 12, 13 and 16).”  Thus, in view of the overlap in factual and legal issues between the two investigations, ALJ Luckern found that the most efficient course was to consolidate the two investigations.  ALJ Luckern also determined that consolidation “would (i) conserve the parties’ and the Commission’s resources, (ii) avoid the need for two hearings, and (iii) avoid potentially difficult procedural and legal complications that could arise by having to determine whether and to what extent any rulings in the 640 Investigation could affect issues in the 674 Investigation if the investigations proceed on separate, independent tracks.”

Share

Read More

Update Regarding Certain Course Management System Software Products (337-TA-677)

By Eric Schweibenz
|
Jun
08
Further to our June 5 post, Chief ALJ Paul J. Luckern issued a notice indicating that ALJ Theodore R. Essex will handle Certain Course Management System Software Products (337-TA-677).

In addition, according to the Notice of Investigation, the ITC “has determined not to institute an investigation with respect to claims 1-35 [of the asserted ‘138 patent] as these claims are the subject of a valid and final judgment of invalidity issued by the district court for the Eastern District of Texas.”  The Notice of Investigation further notes that the asserted ‘138 patent is currently involved in a reexamination proceeding at the U.S. Patent and Trademark Office and an appellate proceeding at the U.S. Court of Appeals for the Federal Circuit.  Although the ITC makes no determination in the Notice of Investigation whether the investigation should be stayed, it notes that “the presiding administrative law judge may wish to consider whether a stay is warranted at an early date in this proceeding.”  Lastly, the Notice of Investigation provides that “[t]he instant complaint also raises questions relating to, inter alia, (1) the scope of coverage under Section 337, and (2) possible claim preclusion with respect to claims 36-44 of the asserted ‘138 patent in light of [a] prior district court contempt proceeding and a pending appeal before the Federal Circuit.”

Share

Read More

ALJ Luckern Rules That Professor Rothschild’s Licensing Activities Satisfy The Domestic Industry Requirement In Certain Short-Wavelength Light Emitting Diodes (337-TA-640)

By Eric Schweibenz
|
Jun
11
On June 10, 2009, Chief ALJ Paul J. Luckern issued the public version of his May 8, 2009 Initial Determination (Order No. 72) in Certain Short-Wavelength Light Emitting Diodes, Laser Diodes and Products Containing Same (Inv. No. 337-TA-640), granting Professor Gertrude Neumark Rothschild’s motion for summary determination that she satisfied the domestic industry requirement.  One day later, on June 11, the Commission issued a Notice that it would review the ID – see our June 11 post for details.

On April 13, Professor Rothschild moved for summary determination that her substantial investment in exploiting, licensing, and enforcing the asserted patent (U.S. Patent No. 5,252,499 (the ‘499 patent)) satisfied the domestic industry requirement.  Respondents Toshiba Corp. and Panasonic Corp. opposed (note that on May 19, 2009, ALJ Luckern issued an order granting Rothschild’s motion to consolidate Certain Light Emitting Diode Chips, Laser Diode Chips and Products Containing Same (Inv. No. 337-TA-674) with the 640 investigation – see our May 21 post).  The Commission Investigative Staff also opposed the motion.

Share

Read More

ALJ Luckern Issues Initial Determination in Certain Liquid Crystal Display Modules (337-TA-634)

By Eric Schweibenz
|
Jun
16
On June 12, 2009, Chief ALJ Paul J. Luckern issued a notice regarding his Initial Determination in Certain Liquid Crystal Display Modules, Products Containing Same, and Methods for Using the Same (Inv. No. 337-TA-634).

According to the notice, ALJ Luckern held that there is a violation of section 337 in this investigation by respondents Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Semiconductor, Inc.  The notice further indicates that “[s]hould the Commission find a violation, the administrative law judge recommends the issuance of a limited exclusion order barring entry into the United States of infringing liquid crystal display modules and products containing respondents’ infringing liquid crystal display modules, including respondents’ downstream LCD televisions, LCD computer monitors and LCD professional displays as well as the issuance of a cease and desist order.”

Share

Read More