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ALJ Rogers Denies Motions to Compel In Certain Semiconductor Integrated Circuits (337-TA-665)

By Eric Schweibenz
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Jun
02
On May 29, 2009, ALJ Robert K. Rogers, Jr. issued public versions of Order No. 35, Order No. 36, Order No. 39, and Order No. 40 in Certain Semiconductor Integrated Circuits and Products Containing Same (337-TA-665).  In the Orders, ALJ Rogers denied Complainant Qimonda AG’s (“Qimonda”) motions to compel respondent LSI Corporation to produce certain documents.

In each order, ALJ Rogers determined that Qimonda violated his ground rules, including Ground Rules 3.2 and 3.5 (requiring parties to make good-faith efforts to resolve discovery disputes without ALJ intervention and to meet and confer to resolve discovery disputes at least two business days prior to filing a motion) in connection with its motions.
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ALJ Rogers Issues Orders Relating To Licenses In Certain Semiconductor Integrated Circuits (337-TA-665)

By Eric Schweibenz
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Jun
02
On May 28, 2009, ALJ Robert K. Rogers, Jr. issued the public versions of Order No. 20 (dated April 13, 2009) and Order No. 31 (dated May 4, 2009) in Certain Semiconductor Integrated Circuits and Products Containing Same (Inv. No. 337-TA-665).  In Order No. 20, ALJ Rogers granted-in-part and denied-in-part respondents LSI Corp., Seagate Technology (US) Holdings Inc., Seagate Technology LLC, Seagate Memory Products (US) Corp., Seagate Technologies International (Singapore), and Seagate (US) LLC’s (collectively “Respondents”) motion to preclude complainant Qimonda AG (“Qimonda”) from relying on licensees or licenses to establish standing or meet the domestic industry requirement.  Subsequently, in Order No. 31, ALJ Rogers granted-in-part and denied-in-part Qimonda’s motion to amend its complaint.

As to Order No. 20, Respondents argued that Qimonda had failed to comply with Commission Rules 210.12(a)(9)(iii)-(iv) and thus should be precluded from relying on any licensees or license agreements to show standing or meet the domestic industry requirement.  Rule 210.12(a)(9)(iii) requires that a 337 complaint include “[t]he identification of each licensee under each involved U.S. patent.”  Rule 210.12(a)(9)(iv) requires that the complaint include “[a] copy of each license agreement (if any) for each involved U.S. patent that complainant relies upon to establish its standing or to support its contention that a domestic industry…exists…”  Respondents argued that (1) Qimonda merely provided a list of companies that “may” be parties to licensing agreements that cover the asserted patents, and (2) Qimonda had not attached a single license agreement to its complaint.
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ALJ Rogers Orders Seagate To Produce Broader Discovery Regarding Downstream Products In Certain Semiconductor Integrated Circuits (337-TA-665)

By Eric Schweibenz
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Jun
03
On May 29, 2009, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 37 in Certain Semiconductor Integrated Circuits and Products Containing Same (337-TA-665).  In the Order, ALJ Rogers granted-in-part and denied-in-part Complainant Qimonda AG’s (“Qimonda”) motion to compel respondents Seagate Technology, Seagate Technology (US) Holdings Inc., Seagate Technology LLC, Seagate Memory Products (US) Corporation, and Seagate (US) LLC (“Seagate”) to produce documents and testimony regarding Seagate’s downstream products.

ALJ Rogers first determined that Qimonda met its meet and confer obligations under the ground rules by raising the issue of the scope of Seagate’s accused downstream products in an April 14, 2009 Discovery Committee Report.
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ALJ Rogers Denies Motion to Compel In Certain Semiconductor Integrated Circuits (337-TA-665)

By Eric Schweibenz
|
Jun
04
On May 29, 2009, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 38 in Certain Semiconductor Integrated Circuits and Products Containing Same (337-TA-665).  In the Order, ALJ Rogers denied Complainant Qimonda AG’s (“Qimonda”) motion to compel respondents LSI Corporation, Seagate Technology, Seagate Technology (US) Holdings Inc., Seagate Technology LLC, Seagate Memory Products (US) Corporation, and Seagate (US) LLC to produce knowledgeable witnesses.

In the Order, ALJ Rogers determined that Qimonda violated Ground Rules 3.2 and 3.5 (requiring parties to make good-faith efforts to resolve discovery disputes without ALJ intervention and to meet and confer to resolve discovery disputes at least two business days prior to filing a motion) in connection with its motion.
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ALJ Rogers Rules On Motions For Summary Determination Of Non-Infringement In Certain Semiconductor Integrated Circuits (337-TA-665)

By Eric Schweibenz
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Jun
05
On May 29, 2009, ALJ Robert K. Rogers, Jr. issued the public versions of Order No. 28 (dated April 30, 2009) and Order No. 34 (dated May 6, 2009) in Certain Semiconductor Integrated Circuits and Products Containing Same (Inv. No. 337-TA-665).  In Order No. 28, ALJ Rogers denied respondent LSI Corp.’s (“LSI”) motion for summary determination that it does not infringe the asserted claims of complainant Qimonda AG’s (“Qimonda”) U.S. Patent No. 5,213,670 (the “‘670 patent”).  In Order No. 34, ALJ Rogers granted-in-part and denied-in-part LSI’s motion for summary determination that it does not infringe the asserted claims of Qimonda’s U.S. Patent No. 6,103,456 (the “‘456 patent”).  The public versions of the orders are heavily redacted.

LSI filed both motions for summary determination on April 8, 2009.  Qimonda filed oppositions on April 20, 2009.  The Commission Investigative Staff filed responses opposing the motion for summary determination of non-infringement of the ‘670 patent but supporting the motion for summary determination of non-infringement of the ‘456 patent on April 20, 2009.
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ALJ Rogers Grants-In-Part Complainant’s Motion to Compel And Grants-In-Part A Non-Party Motion To Quash Subpoena In Certain Semiconductor Integrated Circuits (337-TA-665)

By Eric Schweibenz
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Jun
05
On May 29, 2009, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 23 (dated April 28, 2009) in Certain Semiconductor Integrated Circuits and Products Containing Same (337-TA-665).  In the Order, ALJ Rogers granted-in-part and denied-in-part Complainant Qimonda AG’s (“Qimonda”) motion to compel Respondent LSI Corporation (“LSI”) to produce certain documents and witnesses and granted-in-part and denied-in-part non-party Chartered Semiconductor Manufacturing Inc.’s (“Chartered USA”) motion to quash and/or limit a subpoena served by Qimonda.

As an initial matter, ALJ Rogers analyzed Qimonda’s and Chartered USA’s motions together because they both related to the definition of the term “Relevant Products” used in Qimonda’s discovery requests.  Qimonda’s definition of the term “Relevant Products” included seven defined categories.
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Update Regarding Certain Course Management System Software Products (337-TA-677)

By Eric Schweibenz
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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.”
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ALJ Essex Rules On Motions For Summary Determination Of Invalidity In Certain Automotive Multimedia Display and Navigation Systems (337-TA-657)

By Eric Schweibenz
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Jun
09
On June 3, 2009, ALJ Theodore R. Essex issued Order No. 25 in Certain Automotive Multimedia Display and Navigation Systems, Components Thereof, and Products Containing Same (Inv. No. 337-TA-657).  In the Order, ALJ Essex denied three separate motions for summary determination of invalidity filed by certain respondents determining for each that “summary determination is not appropriate” since “every aspect of the motion[s]” was opposed by Complainant Honeywell International, Inc., and “genuine issues of material facts remain.”

In the order, ALJ Essex first denied respondents Denso Corporation, Denso International America, Inc., Alpine Electronics, Inc., Alpine Electronics of America, Inc., Pioneer Corporation, and Pioneer Electronics (USA) Inc.’s motion for summary determination of invalidity of claims 1-7 and 17 of U.S. Patent No. 6,308,132.
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ALJ Rogers Grants-In-Part Motion To Quash Subpoena In Certain Non-Shellfish Derived Glucosamine (337-TA-668)

By Eric Schweibenz
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Jun
09
On June 5, 2009, ALJ Robert K. Rogers, Jr. issued Order No. 16 in Certain Non-Shellfish Derived Glucosamine and Products Containing Same (337-TA-668).  In the Order, ALJ Rogers granted-in-part and denied-in-part TSI Health Sciences, Inc.’s (“TSI”) motion to quash a subpoena served by respondent Nantong Foreign Trade Medicines & Health Products Co., Ltd. (“NFT”).

According to the Order, TSI was previously a respondent in the investigation, but settled with complainant Cargill, Incorporated (“Cargill”).  Based on ALJ Rogers’ previously issued Order No. 11, the remaining respondents in the investigation did not receive the full settlement agreement between Cargill and TSI.
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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
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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.
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ALJ Gildea Denies Motion For Summary Determination Of Non-Infringement In Certain Active Comfort Footwear (337-TA-660)

By Eric Schweibenz
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Jun
12
On June 10, 2009, ALJ E. James Gildea issued the public version of Order No. 8 (dated June 1, 2009) in Certain Active Comfort Footwear (Inv. No. 337-TA-660).  In the Order, ALJ Gildea denied Respondent RYN Korea Co. Ltd.’s (“RYN”) motion for summary determination of non-infringement of U.S. Patent No. 6,341,432 (the “‘432 patent”).

According to the Order, RYN argued that certain of its shoe products (“Accused Shoes”) did not literally infringe the ‘432 patent because the Accused Shoes did not “have the claimed structure for ‘recess (13)’ and ‘material element (25)’” limitations.  RYN also argued that Complainants Masai Marketing & Trading AG and Masai USA Corp. (collectively, “Masai”) were estopped from asserting infringement under the doctrine of equivalents because of certain claim amendments Masai made during prosecution of the patent-in-suit.  In opposition, Masai asserted that RYN’s motion was insufficient because it did not “provide adequate factual evidence of the level of skill in the relevant art” and that there were genuine issues of material fact as to whether the Accused Shoes had a “material element” and a “recess ‘between’ the sole body and covering” as claimed in the patent-in-suit.  Further, Masai argued that RYN was incorrect in asserting that Masai alleged infringement under the doctrine of equivalents.  The Commission Investigative Staff (“Staff”) opposed RYN’s motion for summary determination of non-infringement arguing that Masai did not assert infringement under the doctrine of equivalents and that RYN’s non-infringement arguments with respect to literal infringement were not based on factual evidence but rather, on conclusory expert statements.  Staff also argued that there was “a genuine issue of material fact as to the structure of the sole and location of the ‘tunnel’ or ‘recess’ in the Accused Shoes.”
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Update Regarding Certain Wireless Communications Devices And Components Thereof (337-TA-675)

By Eric Schweibenz
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Jun
15
Further to our May 12 post, on June 11, 2009, ALJ E. James Gildea issued Order No. 7: Setting Procedural Schedule in Certain Wireless Communications Devices and Components Thereof (337-TA-675).

According to the Order, the evidentiary hearing in this matter will commence on January 19, 2010.
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ALJ Luckern Issues Initial Determination in Certain Liquid Crystal Display Modules (337-TA-634)

By Eric Schweibenz
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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.”
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ALJ Essex Requests Supplemental Briefing In Certain Semiconductor Chips With Minimized Chip Package Size (337-TA-630)

By Eric Schweibenz
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Jun
17
On June 12, 2009, ALJ Theodore R. Essex issued Order No. 43 in Certain Semiconductor Chips with Minimized Chip Package Size and Products Containing Same (337-TA-630).  In the Order, ALJ Essex requested that the parties provide supplemental briefing in connection with the Commission’s recently issued opinion in Certain Semiconductor Chips with Minimized Chip Package Size and Products Containing Same (337-TA-605) (see our June 11 post for details about this opinion).

Specifically, ALJ Essex sought “the parties’ arguments on how the Commission’s Opinion in the ‘605 Investigation and its findings on Dr. Qu’s infringement analysis will affect the ALJ’s analysis in this investigation, if at all.”  ALJ Essex further noted that “[t]he parties should limit their briefing to the infringement analysis for the ‘627 and the ‘977 Patents in this investigation.”
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ALJ Rogers Denies NFT’s Motion For Summary Determination Of Invalidity In Certain Non-Shellfish Derived Glucosamine (337-TA-668)

By Eric Schweibenz
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Jun
23
On June 22, 2009, ALJ Robert K. Rogers, Jr. issued Order No. 20 in Certain Non-Shellfish Derived Glucosamine and Products Containing Same (337-TA-668).  In the Order, ALJ Rogers denied respondent Nantong Foreign Medicines & Health Product Co., Ltd.’s (NFT) motion for summary determination of invalidity.

According to the Order, complainant Cargill, Inc. asserts that NFT infringes claims 1-10 of U.S. Patent No. 7,049,433 (the ‘433 patent), which are directed to a method of making glucosamine.  Claim 1 is an independent claim, and claims 2-10 depend from claim 1.
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Update Regarding Certain Products Advertised As Containing Creatine Ethyl Ester (337-TA-679)

By Eric Schweibenz
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Jun
24
Further to our June 18 post, ALJ Charles E. Bullock issued Order No. 2 on June 23, 2009.  In the Order, ALJ Bullock issued notice of his ground rules, set the target date for the investigation, and set a date for submission of discovery statements. 

Specifically, ALJ Bullock set October 25, 2010 as the target date for completion of the investigation (which is 16 months after institution of the investigation).  ALJ Bullock further indicated in the Order that the evidentiary hearing in this matter will start on January 11, 2010.
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ALJ Bullock Issues Initial Determination in Certain Probe Card Assemblies (337-TA-621)

By Eric Schweibenz
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Jun
29
On June 29, 2009, ALJ Charles E. Bullock issued a notice regarding his Final Initial Determination and Recommended Determination on Remedy and Bond in Certain Probe Card Assemblies, Components Thereof and Certain Tested DRAM and NAND Flash Memory Devices and Products Containing Same (Inv. No. 337-TA-621). 

According to the notice, ALJ Bullock held that there is no violation of section 337 in this investigation by respondents Phicom Corp., Phiam Corp., Micronics Japan Co., Ltd., and MJC Electronics Corp. 
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ALJ Essex Issues Claim Construction Order in Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers (337-TA-661)

By Eric Schweibenz
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Jun
29
On June 22, 2009, ALJ Theodore R. Essex issued Order No. 12, construing the disputed terms of the asserted claims of the patents-in-suit in Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same (Inv. No. 337-TA-661).

In this investigation, Complainant Rambus, Inc. (“Rambus”) alleges that respondents NVIDIA Corp.; Asustek Computer Inc.; ASUS Computer International, Inc.; BFG Technologies, Inc.; Biostar Microtech (U.S.A.) Corp.; Biostar Microtech International Corp.; Diablotek Inc.; EVGA Corp.; G.B.T. Inc.; Giga-byte Technology Co., Ltd.; Hewlett-Packard Co.; MSI Computer Corp.; Micro-star International Co., Ltd.; Palit Multimedia Inc.; Palit Microsystems Ltd.; Pine Technology Holdings, Ltd.; and Sparkle Computer Co., Ltd. (“Respondents”) infringe certain claims of U.S. Patent Nos., 7,177,998; 7,210,016; 6,470,405; 6,591,353; 7,287,109; 7,287,119; 7,330,952; 7,330,953; and 7,360,050.  The patents-in-suit are generally directed to memory controllers for controlling data transfers to and from dynamic random access memory in computer systems.  A Markman hearing was held on March 24, 2009.
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ALJ Bullock Extends Target Date In Certain Flash Memory Chips (337-TA-664)

By Eric Schweibenz
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Jul
01
On June 30, 2009, ALJ Charles E. Bullock issued Order No. 9 in Certain Flash Memory Chips and Products Containing The Same (Inv. No. 337-TA-664).

According to the Order, complainants Spansion, Inc. and Spansion LLC filed a motion to lift the stay and establish a new schedule for the investigation “due to the bankruptcy court’s disapproval of the proposed settlement agreement.”  In view of the parties’ submissions regarding proposed procedural schedules, ALJ Bullock extended the target date in the investigation by seven months, or until January 18, 2011.  In addition, the revised procedural schedule issued by ALJ Bullock includes a schedule for the exchange of claim construction briefs and a claim construction hearing.  Further, ALJ Bullock provides in the procedural schedule that he will “make every attempt to issue the claim construction order by [two months before the evidentiary hearing].”
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ALJ Luckern Requires Submissions from Complainant, Respondents and Commission Investigative Staff in Certain Video Games (337-TA-658)

By Eric Schweibenz
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Jul
02
On July 2, 2009, Chief ALJ Paul J. Luckern issued the public version of Order No. 37 (dated April 23, 2009) in Certain Video Games and Related Three-Dimensional Pointing Devices (337-TA-658).  In the Order, ALJ Luckern required Complainant Hillcrest Laboratories, Inc. (“Hillcrest”), Respondents Nintendo Co., Ltd. and Nintendo of America, Inc. (collectively “Nintendo”), and the Commission Investigative Staff (“Staff”) to answer questions and provide submissions “as an educational vehicle” in lieu of a tutorial on the subject matter of the investigation.

According to the Order, the ALJ required Hillcrest to answer 50 questions about the disclosure and claims of the patents-in-suit.  Specifically, the ALJ’s questions related to, among other things, the prosecution history of the patents-in-suit, an equation referenced in the patents-in-suit, the accuracy of statements in the specification of the patents-in-suit, the disputed claim terms and their interpretation, the evidence Hillcrest would offer at the evidentiary hearing in support of its positions, the understanding of a person of ordinary skill in the art with respect to certain issues, and various assertions made in Nintendo’s pre-hearing statement.
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The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important ITC issues. These postings are in no way representative of the opinions of the Oblon firm, or its clients, but rather the personal views of the individual authors.