ALJ Orders

ALJ Gildea Rules on Motions in Limine In Certain Video Displays (337-TA-687)

By Eric Schweibenz
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Jun
22
On June 21, 2010, ALJ E. James Gildea issued the public versions of Order Nos. 25 and 26 (dated June 8, 2010) in Certain Video Displays, Components Thereof, and Products Containing Same (Inv. No. 337-TA-687) denying motions in limine filed by Complainant LG Electronics, Inc. (“LG”) and Respondents Vizio, Inc. (“Vizio”) and AmTran Technology Co., Ltd. and AmTran Logistics, Inc. (“AmTran”) (collectively, “Respondents”).

According to Order No. 25, LG moved on May 19, 2010, to preclude Respondents from offering evidence relating to an RCA Set Top Box Model DTC-100 (the “DTC-100”) on the grounds that the DTC-100 was not prior art to asserted U.S. Patent No. 7,154,564.  LG also moved to preclude Respondents from comparing LG’s infringement contentions regarding asserted U.S. Patent No. 5,790,096 to the Video Electronics Standards Association (“VESA”) “TV Panels Standard” on the grounds that Respondents “failed to adduce sufficient evidence and expert analysis to support a defense of breach of contractual duty of good faith in connection with LG’s membership in VESA.”  Respondents and the Commission Investigative Staff (“OUII”) opposed LG’s motion on May 27, 2010, noting that the issues raised by LG were in dispute and concerned the weight, rather than admissibility of the evidence, and that Dr. Min had extensively opined on the VESA standard and its relation to LG’s infringement contentions.  ALJ Gildea agreed with Respondents, and determined that the “issue of whether the DTC-100 is prior art to the ‘564 patent is not as clear cut as LG argues, and thus all parties should have an opportunity to present evidence on this issue at the hearing.”  ALJ Gildea further determined that LG had not demonstrated that Dr. Min failed to discuss the VESA defense, and for the above reasons denied LG’s in limine motion in full.

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ALJ Gildea Denies Motion For Order To Show Cause In Certain Electronic Devices (337-TA-701)

By Eric Schweibenz
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Jun
23
On June 21, 2010, ALJ E. James Gildea issued the public version of Order No. 13 (dated June 10, 2010) in Certain Electronic Devices, Including Mobile Phones, Portable Music Players, and Computers (Inv. No. 337-TA-701).  In the Order, ALJ Gildea denied Complainants Nokia Corp. and Nokia, Inc.’s (collectively “Nokia”) motion seeking an order requiring Respondent Apple, Inc. (“Apple”) to show cause why it should not be sanctioned for failing to comply with certain orders requiring Apple to produce responsive documents.

In its motion, Nokia asserted that Apple failed to produce plainly relevant documents from one of its engineers by the deadline imposed by Order Nos. 4 and 6.  In particular, Nokia asserted that the unproduced documents related to whether Apple’s speaker box assembly infringes the asserted claims of the patent-in-suit.  In support of its motion, Nokia alleged that it had been unduly prejudiced by Apple’s failure to timely produce the emails of one of its engineers.  Nokia also argued that Apple should therefore be precluded from arguing that its speaker box did not meet certain limitations of the asserted claims and that Apple should be ordered to pay Nokia’s attorney’s fees and expenses in connection with its attempts to obtain the discovery in question, including any subsequent depositions that may be necessary.

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ALJ Luckern Issues Initial Determination on Claim Construction In Certain Mobile Telephones and Wireless Communication Devices Featuring Digital Cameras (337-TA-703)

By Eric Schweibenz
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Jun
23
On June 22, 2010, Chief ALJ Paul J. Luckern issued a Notice regarding the Markman hearing Initial Determination (ID) in Certain Mobile Telephones And Wireless Communication Devices Featuring Digital Cameras, and Components Thereof (Inv. No. 337-TA-703).

For background on the procedural history leading to the Markman hearing in this investigation, please see our April 28, 2010 post.

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ALJ Luckern Sets Procedural Schedule For Investigation And For Markman Proceeding In Certain Electronic Devices With Multi-Touch Enabled Touchpads And Touchscreens (337-TA-714)

By Eric Schweibenz
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Jun
24
On June 22, 2010, Chief ALJ Paul J. Luckern issued Orders No. 8 and 9 in Certain Electronic Devices With Multi-Touch Enabled Touchpads and Touchscreens (Inv. No. 337-TA-714).  In the Orders, ALJ Luckern set the procedural schedule for the investigation and Markman proceeding.

By way of background, the Complainant in this investigation is Elan Microelectronics Corporation and the Respondent is Apple Inc.  The investigation was instituted on April 26, 2010 based on Elan’s complaint of March 29, 2010.  See our April 26, 2010 post for more details.

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ALJ Gildea Sets Procedural Schedule In Certain Electronic Paper Towel Dispensing Devices (337-TA-718)

By Eric Schweibenz
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Jun
25
On June 24, 2010, ALJ E. James Gildea issued Order No. 7 in Certain Electronic Paper Towel Dispensing Devices and Components Thereof (Inv. No. 337-TA-718).

In the Order, ALJ Gildea set the procedural schedule for the investigation and included provisions for the early exchange of claim construction terms and proposed constructions.  ALJ Gildea also scheduled a Markman hearing for September 21, 2010.

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ALJ Essex Issues Public Version Of Order Granting Rambus’s Motion For Summary Determination That Its Licensing Activities Satisfy The Domestic Industry Requirement In Certain Semiconductor Chips (337-TA-661)

By Eric Schweibenz
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Jun
28
On June 23, 2010, ALJ Theodore R. Essex issued the public version of Order No. 21 (dated October 7, 2009) in Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same (Inv. No. 337-TA-661).  In the Order, ALJ Essex granted Complainant Rambus, Inc.’s (“Rambus”) motion for summary determination that it satisfied the domestic industry requirement through its licensing activities in the U.S.

According to the Order, Rambus’s licensing activities are based in Los Altos, California, and allegedly include promoting Rambus technology, negotiating and drafting license agreements, ensuring compliance with those agreements, conducting market analysis, providing licensing and patent strategy, and providing technical licensing support.  The Order states that Rambus has multiple license agreements for its Concurrent Interface Technology and its XDR Technology, each of which includes several of the patents asserted in the investigation.  Rambus argued that it had demonstrated that the asserted patents were highlighted during actual licensing negotiations and, as such, were part of the portfolios ultimately licensed.  Accordingly, Rambus argued that the appropriate nexus exists between its licensing activities and the asserted patents and that it has therefore satisfied the domestic industry requirement.

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ALJ Essex Rules on Motion for Reconsideration In Certain Optoelectronic Devices (337-TA-669)

By Eric Schweibenz
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Jun
28
On June 23, 2010, ALJ Theodore R. Essex issued the public version of Order No. 12 (dated November 12, 2009) denying Respondent Emcore Corporation’s (“Emcore”) motion for reconsideration of Order No. 9, which denied Emcore’s request to supplement its Notice of Prior Art in Certain Optoelectronic Devices, Components Thereof, and Products Containing Same (Inv. No. 337-TA-669).

According to the Order, Emcore argued that its failure to include the Masahiro application in the Notice of Prior Art was “unintentional and inadvertent” because the omission stemmed from a clerical error in recording the application number for the Masahiro application, which ultimately lead to Emcore's failure to include it in its Notice of Prior Art.  Emcore further argued that since the Masahiro application was cited in the prosecution history of asserted U.S. Patent No. 5,761,229 (the ‘229 patent), there was no prejudice to the Complainants, who have been on notice of Emcore's intent since the filing of the original motion to supplement and the use of the prior art during inventor depositions.

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ALJ Essex Rules On Motion To Stay Investigation In Certain Authentication Systems (337-TA-697)

By Eric Schweibenz
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Jun
28
On June 23, 2010, ALJ Theodore R. Essex issued Order No. 11 (dated April 27, 2010) in Certain Authentication Systems, Including Software and Handheld Electronic Devices (Inv. No. 337-TA-697).  In the Order, ALJ Essex denied Complainant Prism Technologies, LLC (“Prism”) motion to stay the investigation for 45 days pending action by the U.S. Patent & Trademark Office (“PTO”) in an ex parte reexamination proceeding involving the patent-at-issue, U.S. Patent No. 7,290,288 (the ‘288 patent).

According to the Order, the present issue arose as a result of Respondents Research in Motion Limited and Research in Motion Corporation’s (collectively, “RIM”) pending Motion for Summary Determination of Invalidity (“RIM’s MSD”).  In particular, RIM’s MSD argued that the ‘638 application which became the ‘288 patent did not claim priority to the ‘710 application and, as a result the ‘288 patent was invalid under the on-sale bar of 35 U.S.C. § 102(b).  RIM further argued that the ‘638 application was filed on August 29, 2002, and did not contain language that it was a continuation-in-part of the ‘710 application, which issued as U.S. Patent No. 6,516,416.  According to the Order, Prism had made and marketed Internet Subscription Access products since as early as 1996 and admitted that such products practice the asserted claims of the ‘288 patent.  The ‘710 application was filed on June 11, 1997, and had the ‘288 patent been a continuation of the ‘710 application, the on-sale bar might be defeated.  Prism filed an amendment in a reexamination proceeding involving the ‘288 patent that would claim priority based on the ‘710 application.  Prism filed this amendment on April 2, 2010 and moved for a stay of 45 days to await the results of PTO reexamination.  RIM opposed Prism’s motion to stay.  The Commission Investigative Staff also opposed the stay, but supported Prism’s request in the alternative to defer a ruling on RIM’s MSD.

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ALJ Rogers Rules On Motion For Summary Determination In Certain Printing And Imaging Devices (337-TA-690)

By Eric Schweibenz
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Jun
28
On April 9, 2010, ALJ Robert K. Rogers, Jr. issued Order No. 21 in Certain Printing and Imaging Devices and Components Thereof (Inv. No. 337-TA-690).  In the Order, ALJ Rogers denied Respondent’s motion for summary determination of non-infringement of claims not asserted in expert reports.

By way of background, the Complainants in this investigation are Ricoh Co., Ltd., Ricoh Americas Corp., and Ricoh Electronics, Inc. (collectively “Ricoh”); and the Respondents are Oki Data Corp. and Oki Data Americas, Inc (collectively “Oki Data”).  The investigation was instituted on October 20, 2010 based on Ricoh’s complaint of September 18, 2010.  See our October 21, 2009 post for more details.

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ALJ Essex Issues Public Version Of Order Denying Toyota’s Renewed Motion for Summary Determination In Certain Hybrid Electric Vehicles (337-TA-688)

By Eric Schweibenz
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Jun
29
On June 23, 2010 ALJ Theodore R. Essex issued the public version of Order No. 12 (dated May 21, 2010) denying Respondents Toyota Motor Corporation, Toyota Motor North America, Inc., and Toyota Motor Sales, USA, Inc.’s (collectively, “Toyota”) renewed motion for summary determination filed April 12, 2010 in Certain Hybrid Electric Vehicles and Components Thereof (Inv. No. 337-TA-688).

By way of background, this investigation follows litigation between Complainant Paice LLC (“Paice”) and Toyota in the U.S. District Court for the Eastern District of Texas in which certain Toyota hybrid vehicles were found to infringe U.S. Patent No. 5,343,970 (the ‘970 patent).  On March 3, 2010, ALJ Essex issued an Initial Determination (“ID”) granting Paice’s motion for summary determination regarding infringement, validity and unenforceability and denying Toyota’s cross motion for summary determination terminating the investigation for claim preclusion.  See our March 29, 2010 post for more details.  On April 2, 2010, the ITC reversed and remanded the ID.  See our April 6, 2010 post for more details.  After remand, on April 6, 2010, ALJ Essex notified the parties that Toyota would be permitted to renew its motion for summary determination terminating the investigation for claim preclusion.  On April 12, 2010, Toyota filed its motion.

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ALJ Rogers Denies Motion For Summary Determination In Certain Printing And Imaging Devices (337-TA-690)

By Eric Schweibenz
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Jun
29
On June 24, 2010, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 24 (dated April 21, 2010) in Certain Printing and Imaging Devices and Components Thereof (Inv. No. 337-TA-690) denying Complainants Ricoh Company, Ltd., Ricoh Americas Corporation, and Ricoh Electronics, Inc.’s (collectively, “Ricoh”) motion for summary determination that Ricoh met the economic prong of the domestic industry requirement.

In support of its motion, Ricoh asserted that it satisfied the economic prong of the domestic industry requirement through its significant investments in plant and equipment, significant employment of labor or capital, and substantial investment in the exploitation of the asserted patents.  Respondents Oki Data Corporation and Oki Data Americas, Inc.’s (collectively “Oki Data”) opposed the motion arguing that genuine issues of material fact remained in dispute.  Specifically, Oki Data argued that the motion improperly relied on declarations provided after the close of fact discovery and that Ricoh failed to provide necessary deductive steps to demonstrate that the claimed investments actually related to the asserted domestic products, and not to other products.  Oki Data’s response also included a cross-motion to preclude Ricoh from relying on the late-produced discovery.  The Commission Investigative Staff filed a response opposing the motion, arguing that the information Ricoh relied on was previously requested by Oki Data and that Ricoh should not be rewarded for withholding information relating to its alleged domestic activities.

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ALJ Essex Issues Public Version Of Order Granting-In-Part Rambus’s Motion To Compel In Certain Semiconductor Chips (337-TA-661)

By Eric Schweibenz
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Jun
29
On June 23, 2010, ALJ Theodore R. Essex issued the public version of Order No. 19 (dated September 17, 2009) in Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same (Inv. No. 337-TA-661).  In the Order, ALJ Essex granted Complainant Rambus, Inc.’s (“Rambus”) motion to compel testimony from a document collection witness and for supplemental responses to interrogatories, and denied as moot its motion to compel source code documents, and communications between Rambus and Respondent nVidia Corporation (“NVIDIA”).

According to the Order, Rambus filed a motion on June 16, 2009 to compel NVIDIA to: (1) produce all source code bearing on the operation of the memory controllers contained in the accused products; (2) produce all technical documents describing the accused products; (3) produce all communications between Rambus and NVIDIA and documents relating to those communications; (4) provide a witness competent to testify on NVIDIA's document collection in response to Rambus's discovery requests; and (5) supplement its responses to Rambus's Interrogatory Nos. 1, 75, and 142.

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ALJ Rogers Issues Public Version Of Order Denying Motion To Compel In Certain Silicon Microphones (337-TA-695)

By Eric Schweibenz
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Jun
30
On June 24, 2010, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 18 (dated May 10, 2010) in Certain Silicon Microphone Packages and Products Containing the Same (Inv. No. 337-TA-695).  In the Order, ALJ Rogers denied Respondent Analog Devices, Inc.’s (“Analog”) motion to compel Complainant Knowles Electronics LLC (“Knowles”) to produce documents and things.

According to the Order, Analog sought an order compelling Knowles to produce documents and things related to the following categories: “(1) the SOIC8 and DIP packages that Dr. Loeppert developed prior to 2003 that Analog claims are prior art to the asserted patents; (2) Knowles’ interactions with the Institute of Microelectronics (‘IME’); and (3) Mr. Minervini’s and Dr. Loeppert’s participation in the prosecution of the asserted patents.”  Analog argued that Knowles had refused to produce the information based on Knowles’s belief that the information is not relevant to the investigation.

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ALJ Rogers Sets Target Date In Certain Inkjet Ink Cartridges With Printheads (337-TA-723)

By Eric Schweibenz
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Jun
30
Further to our June 22, 2010 post, on June 28, 2010, ALJ Robert K. Rogers, Jr. issued Order No. 4:  Setting Target Date in Certain Inkjet Ink Cartridges With Printheads and Components Thereof (Inv. No. 337-TA-723).

According to the Order, ALJ Rogers set October 24, 2011, as the target date (which is 16 months after institution of the investigation).  ALJ Rogers further indicated that any final initial determination on violation shall be due on June 24, 2011.

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ALJ Rogers Rules On Motion To Strike In Certain MEMS Devices (337-TA-700)

By Eric Schweibenz
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Jun
30
On June 29, 2010, ALJ Robert K. Rogers, Jr. issued Order No. 7 in Certain MEMS Devices and Products Containing the Same (Inv. No. 337-TA-700).  In the Order, ALJ Rogers granted-in-part and denied-in-part Complainant Analog Devices, Inc.’s (“Analog”) motion to strike the rebuttal expert reports of Respondents Knowles Electronics LLC and Mouser Electronics, Inc.’s (collectively, “Respondents”) experts, Drs. Wallace and Vander Veen, and the “errata” to Dr. Wallace’s initial expert report.

According to the Order, Analog argued that Respondents’ rebuttal expert reports were improper because those reports were directed exclusively to the issue of commercial success in connection with Respondents’ invalidity arguments.  Analog took the position that since Analog’s initial expert reports dealt only with infringement and domestic industry, it was improper for Respondents’ experts to address an invalidity issue in their rebuttal expert reports.  According to Analog, Respondents should have addressed all invalidity issues -- including secondary considerations of nonobviousness -- in their initial expert reports.  In support of its argument, Analog pointed to deposition testimony by Dr. Wallace where Dr. Wallace stated that he had started his commercial success analysis prior to the initial expert report deadline, but that he could not finish in time.

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ALJ Rogers Denies Motion For Summary Determination In Certain Printing And Imaging Devices (337-TA-690)

By Eric Schweibenz
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Jul
01
On June 24, 2010, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 23 (dated April 16, 2010) in Certain Printing and Imaging Devices and Components Thereof (Inv. No. 337-TA-690) denying Respondents Oki Data Corporation and Oki Data Americas, Inc.’s (collectively “Oki Data”) motion for summary determination of non-infringement as to certain accused products.

In support of its motion, Oki Data asserted that Complainants Ricoh Company, Ltd., Ricoh Americas Corporation, and Ricoh Electronics, Inc. (collectively, “Ricoh”) identified over 90 accused Oki Data products in response to an interrogatory, many of which were not addressed by Ricoh’s experts on infringement via report or deposition.  Oki Data thus sought summary determination of non-infringement regarding the accused products not addressed by Ricoh’s experts, or alternatively an order precluding Ricoh’s experts from testifying at the evidentiary hearing about such products.  In opposition, Ricoh asserted that Oki Data mischaracterized the facts and sought summary determination regarding non-accused products.  Ricoh stated that the complete list of accused products is found in the parties’ Joint Statement of Contested Issues, and argued that product numbers are largely irrelevant to this investigation because Oki Data frequently changes model names and numbers without altering functionality.  According to Ricoh, the remedy it requests was tied to the functionality that infringed the asserted patents, not necessarily to specific model numbers.  The Commission Investigative Staff supported the motion in part, arguing that Ricoh’s experts should be precluded from testifying at trial regarding any accused products not previously addressed in their reports or depositions, but pointing out that Ricoh may be able to demonstrate infringement without resorting to expert testimony.

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ALJ Essex Rules On Motion For Forfeiture of Respondents’ Bonds In Certain Semiconductor Chips with Minimized Chip Package Size (Inv. No. 337-TA-605)

By Eric Schweibenz
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Jul
01
On June 23, 2010, ALJ Theodore R. Essex issued Order No. 65 (dated December 30, 2009), denying a motion filed by Complainant Tessera, Inc. (“Tessera”) on October 16, 2009, for forfeiture of Respondents' bonds, limited discovery and evidentiary hearing in Certain Semiconductor Chips with Minimized Chip Package Size and Products Containing Same (337-TA-605).

By way of background, this investigation was instituted in May 2007 based on Tessera’s complaint against Respondents Spansion, Inc., Spansion, LLC, Qualcomm, Inc., ATI Technologies, Motorola, Inc., STMicroelectronics N.V., and Freescale Semiconductor, Inc. (collectively “Respondents”) alleging violation of Section 337 by reason of infringement of U.S. Patent Nos. 5,852,326 and 6,433,419.  On May 20, 2009, the Commission issued its final disposition of the investigation, finding a violation of Section 337 and issuing a limited exclusion order against the Respondents and cease and desist orders against several domestic Respondents.  See our May 22, 2009 and June 11, 2009 and May 28, 2010 posts for more details.

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ALJ Rogers Denies Motions For Summary Determination and For Reconsideration In Certain Printing And Imaging Devices (337-TA-690)

By Eric Schweibenz
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Jul
01
On June 24, 2010, ALJ Robert K. Rogers, Jr. issued the public versions of Order No. 22 (dated April 12, 2010), Order No. 26 (dated April 22, 2010); Order No. 27 (dated April 22, 2010) and Order No. 28 (dated April 28, 2010) in Certain Printing and Imaging Devices and Components Thereof (Inv. No. 337-TA-690).

In Order No. 22, ALJ Rogers denied Respondents Oki Data Corporation and Oki Data Americas, Inc.’s (collectively “Oki Data”) motion for summary determination of non-infringement of certain claims of U.S. Patent No. 5,863,690.  In its motion Oki Data asserted that its accused products did not meet “the thermofusible toner has softening point of less than [a]bout 80ºC” limitation, under any proposed construction, because the thermofusible toner of its accused products has a softening point that exceeds about 80ºC.  In its opposition, Respondents Ricoh Company, Ltd., Ricoh Americas Corporation, and Ricoh Electronics, Inc. (collectively “Ricoh”) asserted that Oki Data’s testing of its toner was flawed and when properly measured “the softening point of the accused toner [meets the limitation].”  The Commission Investigative Staff (“OUII”) supported the motion asserting that “Ricoh’s construction of the term ‘softening point’ . . . should be rejected because it would result in a lack of utility.”  In denying the motion, ALJ Rogers found that disagreement existed between the parties on the proper method for determining the softening point of the accused toners and therefore summary determination was inappropriate.

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ALJ Essex Grants Motion To Terminate Investigation In Certain Dynamic Random Access Memory Semiconductors (337-TA-707)

By Eric Schweibenz
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Jul
02
On June 29, 2010, ALJ Theodore R. Essex issued Order No. 10 in Certain Dynamic Random Access Memory Semiconductors and Products Containing Same, Including Memory Modules (Inv. No. 337-TA-707).

According to the Order, Complainants Infineon Technologies AG (“IFX”) and Infineon Technologies North America Corp. and Respondents Elpida Memory Inc. (“Elpida”), Elpida Memory (USA) Inc., Rexchip Electronics Corp., Kingston Technology Co. Inc., Kingston Technology (Shanghai) Co. Ltd., Kingston Technology Far East Co. Ltd., Kingston Technology Far East (M) Sdn. Bhd., Payton Technology Corp., Apacer Technology Inc., Apacer Memory America Inc., Corsair Memory, Corsair Memory (Taiwan), Mushkin Inc., Mushkin APAC, Transcend Information Inc., and Transcend USA (collectively, “Respondents”) filed a joint motion to terminate the investigation on the basis of a settlement agreement.  Further, the agreement is between IFX and Elpida and, while the other remaining Respondents are not party to the agreement, the motion requests that the investigation be terminated against those remaining Respondents as well.

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ALJ Charneski Grants Motion To Terminate Investigation In Certain Flash Memory (337-TA-685)

By Eric Schweibenz
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Jul
02
On July 1, 2010, ALJ Carl C. Charneski issued Order No. 16 in Certain Flash Memory and Products Containing Same (Inv. No. 337-TA-685).

In the Order, ALJ Charneski granted a joint motion filed by Complainant Samsung Electronics Co., Ltd and Respondents Synology Inc. and Synology America Corporation to terminate the investigation based on a consent order stipulation.

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