Commission Notices

Commission Decides Not To Review Initial Determination Granting Summary Determination Of No Violation In Certain Semiconductor Integration Circuits Using Tungsten Metallization (337-TA-648)

By Eric Schweibenz
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Jul
21
On July 20, 2009, the International Trade Commission issued a Notice determining not to review ALJ Carl C. Charneski’s June 26, 2009 Initial Determination (“ID”) in Certain Semiconductor Integration Circuits Using Tungsten Metallization and Products Containing Same (Inv. No. 337-TA-648) granting respondent STMicroelectronics N.V.’s (“ST”) motion for summary determination of no violation of section 337. The Commission instituted the 648 investigation on May 21, 2008 based on a complaint filed by LSI Corp. and Agere Systems Inc. for infringement of U.S. Patent No. 5,227,335.  The complaint named numerous respondents, including ST. On April 30, 2009, ST moved for summary determination of no violation of section 337.  ALJ Charneski issued his ID granting the motion on June 26, 2009.  No party petitioned for review of the ID, and the Commission found no basis for ordering review on its own initiative.  Accordingly, the Commission determined not to review the ID and terminated the investigation as to ST.
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ITC Denies Request To Stay Enforcement Of Limited Exclusion And Cease And Desist Orders In Certain Semiconductor Chips With Minimized Chip Package Size (337-TA-605)

By Eric Schweibenz
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Jul
21
On July 17, 2009, the International Trade Commission issued a Notice  in Certain Semiconductor Chips With Minimized Chip Package Size and Products Containing Same (Inv. No. 337-TA-605) denying a motion to stay enforcement of a limited exclusion order and cease and desist orders pending appeal of the Commission’s final determination of a violation of section 337 by Spansion, Inc. and Spansion, LLC (“Spansion”); Qualcomm, Inc. (“Qualcomm”); ATI Technologies (“ATI”); STMicroelectronics N.V. (“ST”); and Freescale Semiconductor, Inc. (“Freescale”) (collectively “Respondents”). As explained in our June 11 and May 22 posts, on May 20, 2009, the Commission reversed ALJ Theodore R. Essex’s December 1, 2008 Initial Determination (“ID”) finding no violation of section 337 and issued a Final Determination imposing a limited exclusion order against respondents Spansion, Qualcomm, ATI, Motorola, ST, and Freescale, and cease and desist orders against Motorola, Qualcomm, Freescale, and Spansion. As stated in the July 17 notice, on June 2, 2009, Respondents filed a joint motion to stay the limited exclusion and cease and desist orders pending appeal of the Commission’s determination to the U.S. Court of Appeals for the Federal Circuit.  Complainant Tessera, Inc. (“Tessera”) and the Commission Investigative Staff both opposed Respondents’ motion.  Respondents then moved for leave to file a joint reply in support of their motion, which was opposed by Tessera. In the July 17 Order denying Respondents’ motion for a stay, the Commission:  (1) denied Respondents’ motion; (2) denied Respondents’ motion for leave to file a joint reply; and (3) stated that “[n]otice of this Order and a Commission Opinion to be issued at a later date shall be served on the parties.”
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Commission Denies Motion To Stay Enforcement Of Remedial Orders In Certain Digital Television Products (337-TA-617)

By Eric Schweibenz
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Jul
29
On July 28, 2009, the International Trade Commission issued a Notice denying Respondents Vizio, Inc., AmTran Technology Co., Ltd., TPV Technology, Ltd., TPV International (USA), Inc., Top Victory Electronics (Taiwan) Co., Ltd., and Envision Peripherals, Inc.’s (collectively, “Respondents”) joint motion to stay enforcement of a limited exclusion order (“LEO”) and cease and desist orders (“C&D Orders”) in Certain Digital Television Products and Certain Products Containing Same and Methods of Using Same (Inv. No. 337-TA-617). By way of background, on April 10, 2009, the Commission terminated this investigation with a finding of violation of section 337 by reason of infringement of claims 1, 5, and 23 of U.S. Patent No. 6,115,074.  See our April 14 and May 5 posts for more information.  In connection with its Final Determination, the Commission issued an LEO against the Respondents, and C&D Orders directed to Vizio, TPV USA, and Envision, among others. On June 2, 2009, Respondents filed a joint motion to stay the LEO and C&D Orders pending appeal of the Commission’s determination to the Federal Circuit.  Complainants Funai Electric Co., Ltd. and Funai Corporation and the Commission Investigative Attorney opposed Respondents’ joint motion. According to the Notice, the “Commission has determined to deny Respondents’ motion for a stay pending appeal of the remedial orders.”
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Commission Reverses Remand Initial Determination And Finds No Violation In Certain R-134a Coolant (337-TA-623)

By Eric Schweibenz
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Aug
04
On August 3, 2009, the Commission issued a Notice determining to reverse the conclusion reached in the April 1, 2009 Remand Initial Determination that the only remaining asserted claim is not obvious in Certain R-134a Coolant (Otherwise Known as 1,1,1,2-Tetrafluorothane) (Inv. No. 337-TA-623). As we explained in our April 6 post, this investigation was instituted in December 2007 based on a complaint filed by INEOS Fluor Holdings Ltd., INEOS Fluor Ltd. and INEOS Fluor Americas LLC (“INEOS”).  INEOS’ complaint alleged violations of Section 337 by respondents Sinochem Modern Environmental Protection Chemicals (Xi’an) Co. Ltd., Sinochem Ningbo Ltd., Sinochem Environmental Protection Chemicals (Taicang) Co., Ltd., and Sinochem (U.S.A.) Inc. (collectively, “Sinochem”) in the importation into the U.S., the sale for importation, and the sale within the U.S. after importation of certain R-134a coolant (otherwise known as 1,1,1,2-tetrafluorothane) by reason of infringement of certain patents, including U.S. Patent No. 5,559,276 (the “‘276 patent”). On December 1, 2008, Chief ALJ Paul J. Luckern issued a final initial determination (“ID”) that Sinochem infringed the ‘276 patent and the domestic industry requirement had been met.  ALJ Luckern further determined that Sincochem failed to establish that the ‘276 patent was invalid or unenforceable.  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.  On April 1, 2009, ALJ Luckern issued the Remand Initial Determination (“RID”) concluding that Sinochem’s arguments regarding anticipation and obviousness arguments were waived under the ground rules and, alternatively, that the arguments were without merit.  As explained in our June 3 post, on June 1, 2009, the ITC determined to review the RID in its entirety. In the August 3, 2009 notice, the Commission determined to “reverse the conclusion of nonobviousness of claim 1 of the ‘276 patent in the RID,” stating that “the Commission has determined to rely on certain party admissions and other evidence as to the state of the prior art.”  The Commission further “determined to take no position on the RID’s conclusions relating to obviousness arguments based on prior art references identified in the Commission’s remand instructions, including the RID’s conclusions on whether arguments as to those references have been waived.”  The notice also states that the Commission “determined not to rely on the RID’s conclusions as to anticipation and waiver of anticipation arguments.”  Finally, the Commission’s “findings terminate the Commission’s investigation.”
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Update Regarding Certain Lighting Control Devices Including Dimmer Switches (337-TA-676)

By Eric Schweibenz
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Aug
05
Further to our July 15 post, on August 4, 2009, the Commission issued a notice determining not to review ALJ Rogers’ July 14, 2009 initial determination terminating the investigation based on a consent order in Certain Lighting Control Devices Including Dimmer Switches and Parts Thereof (Inv. No. 337-TA-676).
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Update Regarding Certain Active Comfort Footwear (337-TA-660)

By Eric Schweibenz
|
Aug
05
Further to our July 14 post, on August 5, 2009, the Commission issued a notice determining not to review ALJ Gildea’s July 13, 2009 initial determination terminating the investigation based on a settlement agreement with Respondent RYN Korea Co. Ltd. and withdrawal of the complaint as to the remaining respondents in Certain Active Comfort Footwear (Inv. No. 337-TA-660).
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ITC Decides Not To Review Initial Determination Granting Joint Motion To Terminate Investigation In Certain Wireless Communications Devices (337-TA-675)

By Eric Schweibenz
|
Aug
10
On August 7, 2009, the Commission issued a notice determining not to review the ALJ’s July 20, 2009 initial determination granting a joint motion to terminate the investigation in Certain Wireless Communications Devices and Components Thereof (Inv. No. 337-TA-675). By way of background, on July 2, 2009, Complainant SPH America, LLC (“SPH”) and Respondents Kyocera Corporation, Kyocera Wireless Corporation, Kyocera Sanyo Telecom, Inc., MetroPCS Communications, Inc., Metro PCS Wireless, Sprint Nextel Corporation, América Móvil, TracFone Wireless, Inc., and Virgin Mobile USA, Inc. (collectively, “Respondents”) filed a joint motion to terminate the investigation in its entirety based on withdrawal of the complaint by SPH as to all Respondents. According to the notice, the “Commission has determined not to review the ID” and “this investigation is terminated.”
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ITC Decides Not To Review Initial Determination Granting Motion To Terminate Investigation In Certain Semiconductor Chips With Minimized Chip Package Size (337-TA-649)

By Eric Schweibenz
|
Aug
11
On August 7, 2009, the Commission issued a notice determining not to review the ALJ’s July 17, 2009 Order No. 25 granting Complainant Tessera, Inc.’s (“Tessera”) motion to terminate the investigation based on withdrawal of the complaint in Certain Semiconductor Chips with Minimized Chip Package Size and Products Containing Same (Inv. No. 337-TA-649). By way of background, on May 28, 2008, the Commission instituted this investigation based on Tessera’s complaint alleging violation of Section 337.  The following entities were named in the notice of investigation as Respondents: ASE Inc. of Taiwan; ASE Test Limited of Taiwan; ASE (U.S.) Inc. of Santa Clara, California; ChipMOS Technologies Inc. of Taiwan; ChipMOS Technologies (Bermuda) of Taiwan; ChipMOS USA Inc. of San Jose, California; Siliconware Precision Industries Co., Ltd. of Taiwan; Siliconware USA Inc. of San Jose, California; STATS Chippac (BVI) Limited of Tortola, British Virgin Islands; STATS Chippac, Ltd. of Singapore; and STATS Chippac, Inc. of Fremont, California. According to the August 7 notice, the “Commission has determined not to review the ID” and thus the investigation has been terminated.
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ITC Issues Notice Of Determinations On Civil Penalties In Certain Ink Cartridges (337-TA-565)

By Eric Schweibenz
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Aug
18
On August 17, 2009, the International Trade Commission issued a notice providing its determinations on civil penalties in Certain Ink Cartridges and Components Thereof (Inv. No. 337-TA-565).  As explained in our June 22 and July 16 posts, on June 19, 2009, the Commission issued a notice determining not to review the April 17, 2007 Enforcement Initial Determination (“EID”) issued by Chief ALJ Paul J. Luckern.  The Commission also requested separate briefing concerning the imposition of civil penalties for violation of the cease and desist orders and a consent order. According to the August 17 notice, the Commission determined to impose joint and several civil penalties against (1) Ninestar Technology Co., Ltd., Ninestar Technology Co., Ltd. and Town Sky, Inc. in the amount of $11,110,000; (2) Mipo America Ltd. and Mipo International, Ltd. in the amount of $9,700,000; and (3) Ribbon Tree USA, Inc. (d/b/a Cana-Pacific Ribbons) and Apex Distributing Inc. in the amount of $700,000.
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Commission Grants Petitions For Reconsideration And Issues Revised Limited Exclusion Order And Opinion In Certain Silicon Microphone Packages (337-TA-629)

By Eric Schweibenz
|
Aug
21
On August 18, 2009, the International Trade Commission issued an Order granting the private parties’ petitions for reconsideration in Certain Silicon Microphone Packages and Products Containing Same (Inv. No. 337-TA-629).  In connection with this Order, the Commission also issued a revised notice and limited exclusion order and a revised opinion in view of the parties’ petitions for reconsideration.  Please note that Oblon Spivak represents Respondent MEMS Technology Berhad (“MemsTech”) in this matter. In the Order, the Commission explained that both Complainant Knowles Electronics, LLC (“Knowles”) and MemsTech filed petitions for reconsideration on June 26, 2009.  Specifically, both Knowles and MemsTech requested that the Commission remove any reference in the opinion, notice, and limited exclusion order to claim 10 of the asserted ‘089 patent since the Commission had already determined that such claim was invalid.  Further, Knowles requested that the Commission reconsider certain wording in its June 12, 2009 opinion stating that MemsTech’s “chamber chip” products are not covered by the limited exclusion order.  MemsTech asked the Commission to strike the language “and products containing the same” from the limited exclusion order.  According to the Order, the Commission Investigative Staff opposed Knowles’ petition for reconsideration. Regarding Knowles’ request, the Commission removed certain language contained in its June 12, 2009 opinion and issued a revised opinion that added a sentence concerning MemsTech’s “chamber chip” products.  With respect to MemsTech’s petition, the Commission removed all instances of the wording “and products containing the same” from the limited exclusion order.  Finally, the Commission agreed to remove all references in the opinion, notice, and exclusion order to claim 10 of the asserted ‘089 patent. For further information regarding this investigation, please see our February 19, March 16, June 15, and July 21 posts.
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ITC Determines Not To Review Initial Determination Staying Investigation Pending Federal Circuit Appeal In Certain Course Management System Software Products (337-TA-677)

By Eric Schweibenz
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Aug
25
On August 24, 2009, the International Trade Commission issued a notice determining not to review the July 24, 2009 Initial Determination (“ID”) of ALJ Theodore R. Essex staying the investigation in Certain Course Management System Software Products (Inv. No. 337-TA-677).  By way of background, and as explained in our April 22 and June 5 posts, Complainant Blackboard, Inc. accused Respondent Desire2Learn Incorporated of violating Section 337 based on infringement of U.S. Patent No. 6,988,138 (the ‘138 patent).  The ‘138 patent is currently involved in a reexamination proceeding at the U.S. Patent and Trademark Office and an appellate proceeding before the Federal Circuit. As explained in our July 27 post, on July 24, 2009, ALJ Essex agreed to stay the investigation pending the resolution of the Federal Circuit appeal but not reexamination. According to the August 24 notice, the “Commission has determined not to review the subject ID.”
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ITC Decides To Review Initial Determination In Certain Flash Memory Controllers (337-TA-619)

By Eric Schweibenz
|
Aug
25
On August 24, 2009, the International Trade Commission issued a notice determining to review in part the April 10, 2009 final Initial Determination (“ID”) issued by ALJ Charles E. Bullock in Certain Flash Memory Controllers, Drives, Memory Cards, and Media Players and Products Containing Same (Inv. No. 337-TA-619). This investigation was instituted on December 12, 2007, based on the complaint of SanDisk Corp. of Milpitas, California.  According to the Notice, over 50 respondents were named in the complaint, and approximately half of the named respondents either settled out of the investigation or defaulted. As indicated in our April 14 post, on April 10, 2009, ALJ Bullock issued his ID, finding no violation of Section 337 had occurred based on the importation, sale for importation, and sale after importation of certain flash memory controllers, drives, memory cards, and media players and products containing same of claims 17, 24, and 30 of SanDisk’s U.S. Patent No. 6,763,424 (the ‘424 patent) or claim 8 of SanDisk’s U.S. Patent No. 7,137,011 (the ‘011 patent).  On May 4, 2009, SanDisk and the Commission Investigative Staff filed petitions for review of the ID, the remaining respondents in the investigation filed a collective contingent petition for review of the ID with respect to the ‘424 patent, and respondents Symedi Corporation and Imation, in addition to joining the collective contingent petition for review, filed individual contingent petitions for review.  On May 18, 2009, the parties filed responses to the various petitions and contingent petitions for review. After examining the ID, the petitions for review, and the responses to the petitions for review, the Commission decided to review the final ID in part.  In particular, the Commission determined to review:  (i) ALJ Bullock’s claim construction of claims 17, 24, and 30 of the ‘424 patent; (ii) infringement of the asserted claims of the ‘424 patent; (iii) validity of the ‘424 patent; and (iv) ALJ Bullock’s decision not to consider the Sinclair PCT publication as evidence of prior art to claim 17 of the ‘424 patent.  In addition, the Notice requests briefing on five questions of particular interest to the Commission.  The parties’ briefs to the Commission are due by September 3, 2009, with reply submissions due by September 12, 2009.  As set forth in the Notice, on May 28, 2009, the Commission extended the target date for completion of the investigation from August 10 to October 23, 2009.
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Commission To Review Initial Determination Terminating Investigation Based On A Settlement Agreement In Certain Non-Shellfish Derived Glucosamine (337-TA-668)

By Eric Schweibenz
|
Aug
26
On August 24, 2009, the International Trade Commission issued a notice determining that it would review ALJ Robert K. Rogers’ Initial Determination granting a joint motion to terminate the investigation as to respondent Ethical Naturals, Inc. (“ENI”) based on a settlement agreement in Certain Non-Shellfish Derived Glucosamine and Products Containing Same (Inv. No. 337-TA-668). As set forth in our July 14 post, ALJ Rogers denied a first joint motion filed by Complainant Cargill, Inc. (“Cargill”) and Respondent ENI to terminate the investigation as to ENI (Order No. 23).  The Commission Investigative Staff opposed the motion.  ALJ Rogers determined that the settlement agreement was contrary to the public interest because the definition of “non-shellfish glucosamine” included “products containing non-shellfish glucosamine, and shall mean glucosamine derived from fungal or microbial biomass or other vegetarian sources.”  ALJ Rogers found that this provision “can be construed as an attempt by Cargill to expand its monopoly to cover an unpatented product manufactured by a process other than that covered by the [asserted patent]” and that “[s]uch a result could arguably be construed as patent misuse.”  Accordingly, he denied Cargill and ENI’s joint motion to terminate the investigation as to ENI because he could not “find that the settlement agreement will have no harmful effect on the public health and welfare, competitive conditions in the U.S. economy, the production of like or directly competitive articles in the United States, or U.S. consumers.” On July 13, 2009, Cargill and ENI filed a second joint motion to terminate the investigation based upon a revised settlement agreement and license agreement.  The Staff filed a response in support of the motion.  On July 24, 2009, ALJ Rogers issued Order No. 26: Initial Determination Granting Joint Motion.  In the ID, ALJ Rogers found that the settlement agreement had been revised to narrow the definition of “non-shellfish glucosamine” and that this narrower definition “does not raise the same concerns that led to the denial of the parties’ previous motion to terminate.” In the notice, the Commission determined to review ALJ Rogers’ July 24, 2009 ID.  The Commission noted it was particularly interested in responses to certain questions, but the questions were redacted because they contain confidential information.  Written submission are due by September 7 and reply submission are due on September 17.
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Commission Upholds ALJ’s Denial Of Law Firm’s Motion to Intervene and to Preclude Disclosure of Confidential Business Information in Certain CCFL Inverter Circuits (337-TA-666)

By Eric Schweibenz
|
Aug
28
On August 28, 2009, the International Trade Commission issued a notice denying an application filed by Finnegan, Henderson, Farabow, Garrett & Dunner LLP (“Finnegan”) for review of an August 6 order issued by ALJ E. James Gildea denying Finnegan’s motion to intervene for the purpose of enforcing the terms of a retainer agreement in Certain Cold Cathode Fluorescent Lamp (“CCFL”) Inverter Circuits and Products Containing the Same (Inv. No. 337-TA-666). As we explained in our August 7 post, the retainer agreement at issue is between Finnegan and Melvin Ray Mercer and was entered into on behalf of Finnegan’s clients in a prior litigation, Sony Corporation, Sony EMCS Corporation, and Sony Electronic Inc. (collectively, “Sony”). Finnegan represents respondents Monolithic Power Systems, Inc., ASUSTeK Computer Inc., and ASUS Computer International America (collectively, “MPS and ASUS”) in the investigation.  Finnegan argued that Mercer has a conflict of interest that prevents him from serving as a technical consultant to Complainants 02 Micro International Ltd. and 02 Micro Inc. (collectively, “O2 Micro”).  Mercer was retained by Finnegan to assist the firm in defending Sony in a patent infringement lawsuit in the Eastern District of Texas regarding three patents that, although different than the patent asserted in the investigation, share the same specification with the asserted patent.  Finnegan argued that Mercer was privy to Finnegan’s work product that is potentially applicable to defenses that MPS and ASUS may assert in this investigation, and that O2 Micro was seeking to gain an unfair advantage by gaining access to that work product. After ALJ Gildea denied Finnegan’s motion to intervene, Finnegan filed an application for Commission review on July 24.  On July 31, O2 Micro and the Commission Investigative Staff filed oppositions to Finnegan’s application for review. According to the August 28 notice, the “Commission has determined to deny Finnegan’s application for Commission review of Order No. 15, finding no error by the ALJ.”
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ITC Institutes Investigation (337-TA-686) Regarding Certain Bulk Welding Wire Containers

By Eric Schweibenz
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Sep
03
On September 2, 2009, the ITC issued a Notice of Investigationconcerning Certain Bulk Welding Wire Containers and Components Thereof and Welding Wire (Inv. No. 337-TA-686).The investigation is based on a complaint filed by The Lincoln Electric Company, Inc. of Cleveland, Ohio and Lincoln Global Inc. of City of Industry, California (collectively, "Lincoln"). As we explained in our August 7 post, the complaint alleges unlawful importation into the U.S., sale for importation, and sale within the U.S. after importation, of certain bulk welding wire containers and components thereof and welding wire, which allegedly infringe U.S. Patent Nos. 6,260,781, 6,648,141, 6,708,864, 6,913,145, 7,309,038, 7,398,881, and 7,410,111. According to the Notice, the Commission has named the following respondents in the investigation: • Atlantic China Welding Consumables, Inc. of China • ESAB AB of Sweden • Hyundai Welding Co., Ltd of South Korea • Kiswel Co., Ltd. of South Korea • Sidergas SpA of Italy The Notice identifies Benjamin Levi of the Office of Unfair Import Investigations as the Investigative Attorney assigned to handle this investigation.
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ITC Institutes Formal Enforcement Proceeding In Certain Digital Televisions (337-TA-617)

By Eric Schweibenz
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Sep
08
On September 4, 2009, the U.S. International Trade Commission issued a notice instituting a formal enforcement proceeding relating to the limited exclusion order and cease and desist orders issued in Certain Digital Televisions and Certain Products Containing Same and Methods of Using Same (Inv. No. 337-TA-617). As we explained in our April 14 and May 5 posts, on April 10, 2009, the Commission issued a notice of Commission Final Determination in this matter affirming ALJ Carl C. Charneski’s finding that Respondents Vizio, Inc., AmTran Technology Co., Ltd., Syntax-Brillian Corp., Taiwan Kolin Co., Ltd., Proview International Holdings, Ltd., Proview Technology (Shenzhen) Co., Ltd., Proview Technology, Ltd., TPV Technology, Ltd., TPV International (USA), Inc., Top Victory Electronics Co., Ltd., and Envision Peripherals, Inc. (collectively, “Respondents”) violated Section 337 as a result of infringement of U.S. Patent No. 6,115,074.  The Commission issued both a limited exclusion order and cease-and-desist orders against the Respondents. On August 14, 2009, Complainants Funai Electric Co., Ltd. and Funai Corporation (collectively, “Funai”) filed a complaint seeking enforcement proceedings under Commission Rule 210.75.  The complaint alleges that Respondents have violated the limited exclusion order and/or the cease and desist orders issued at the conclusion of the original investigation. In its September 4 notice, the Commission determined that Funai’s complaint complied with the requirements of Commission Rule 210.75 and thus “the Commission has determined to institute a formal enforcement proceeding to determine whether the [R]espondents are in violation of the Commission’s limited exclusion order and cease and desist orders issued in the investigation, and what, if any enforcement measures are appropriate.”
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ITC Decides Not To Review Initial Determination In Certain Liquid Crystal Display Modules (337-TA-634)

By Eric Schweibenz
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Sep
11
Further to our June 16 post, on September 9, 2009, the International Trade Commission issued a notice determining not to review Chief ALJ Paul J. Luckern’s June 12, 2009 final initial determination finding a violation of section 337 by Samsung in Certain Liquid Crystal Display Modules, Products Containing Same, and Methods Using the Same (Inv. No. 337-TA-634). In the notice, the Commission requested that the parties file written submissions regarding remedy, bonding, and the public interest by September 16, 2009, with reply submissions due by September 23, 2009.  The Commission further requested that the complainant  and the Commission Investigative Staff file proposed remedial orders with their written submissions.
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ITC Issues Final Determination And General Exclusion Order In Certain Cigarettes (337-TA-643)

By Eric Schweibenz
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Sep
22
On September 21, 2009, the United States International Trade Commission issued a Notice of Commission Final Determination of Violation of Section 337 in Certain Cigarettes and Packaging Thereof (Inv. No. 337-TA-643).  In the notice, the Commission affirmed the ALJ’s Initial Determination (“ID”) that Alcesia SRL (“Alcesia”) violated Section 337 and issued a general exclusion order. As explained in our April 16 post, this investigation was instituted on April 4, 2008, based on the complaint of Philip Morris USA, Inc.  The respondents include Alcesia SRL; Emarket Systems Ltd. (d.b.a. all-discountcigarettes.com); Jamen Chong (d.b.a. asiadfs.com); Tri-kita (d.b.a. cheapcigarettes4all.com); Mr. Eduard Lee (d.b.a. cigarettesonlineshop.com); Zonitech Properties Limited (d.b.a. cigline.net); Zonitech Properties Limited (d.b.a. shopping-heaven.com); Cendano (d.b.a. galastore.com); Ms. Svetlana Trevinska (d.b.a. save-on-cigarettes.com); LMB Trading SA (d.b.a. k2smokes.ch); G.K.L. International SRL (d.b.a. allcigarettes-brandsxom); G.K.L. International SRL (d.b.a. smokerjim.net); and Best Product Solution Ltd. On February 3, 2009, ALJ E. James Gildea issued his ID granting Phillip Morris’ motion for summary determination that Alcesia had violated Section 337 with respect to three trademarks: U.S. Trademark Registration Nos. 68,502; 378,340; and 894,450.  After receiving Alcesia’s petition for review of the ID (and the responses thereto), the Commission determined to review the ID. In the September 21 notice, the Commission affirmed ALJ Gildea’s finding that Alcesia violated Section 337 by selling for importation into the U.S. gray market cigarettes that infringe Phillip Morris’s Marlboro®, Parliament®, and Virginia Slims® trademarks.  In addition, the Commission adopted the ALJ’s finding that a lack of English-language warning labels from the Surgeon General on the gray market cigarette packages makes them materially different from the U.S. market cigarettes.  However, the Commission declined to adopt the ID’s finding that the gray market cigarettes’ susceptibility to seizure under the Imported Cigarette Compliance Act makes them materially different from U.S. market cigarettes.  Further, the Commission took no position on the ID’s finding that a material difference exists between the gray market and U.S. market cigarettes because Phillip Morris exercises quality control over procedures for distribution, storage, and transportation of the U.S. market cigarettes, while it does not exercise this control over the gray market cigarettes. With respect to remedy, the Commission issued a general exclusion order prohibiting the unlicensed entry of Marlboro®, Parliament®, or Virginia Slims® branded cigarettes that (a) infringe one or more of U.S. Trademark Reg. Nos. 68,502, 378,340, and 894,450 and (b) are materially different from cigarettes manufactured by or under authority of Phillip Morris for sale and use in the U.S.
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ITC Decides To Review Initial Determination In Certain Probe Card Assemblies (337-TA-621)

By Eric Schweibenz
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Sep
22
On September 14, 2009, the International Trade Commission issued a notice determining to review in part ALJ Bullock’s June 29, 2009 initial determination (“ID”) finding no violation of Section 337 by Respondents Phicom Corp., Phiam Corp., Micronics Japan Co., Ltd., and MJC Electronics Corp. (“Respondents”) 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). By way of background, and as explained in our July 23 post, ALJ Bullock determined in the ID that there was no violation of Section 337 by Respondents for importation into the U.S., the sale for importation, or the sale within the U.S. after importation of certain probe card assemblies and components thereof, certain probe card assemblies and components thereof, and certain tested DRAM and NAND flash memory devices and products containing same, in connection with claims 1, 3, 4, 18, 19, 23, 24, 29, 32, 33, 36, 37, and 41 of U.S. Patent No. 6,615,485 (the ‘485 patent); claims 1-3, 12, 24, and 25 of U.S. Patent No. 6,509,751 (the ‘751 patent); claim 19 of U.S. Patent No. 7,225,538 (the ‘538 patent); and claims 21-23, 27-37, and 33-35 of U.S. Patent No. 5,994,152 (the ‘152 patent).  Further, the ALJ determined that Complainant FormFactor, Inc. had satisfied the domestic industry requirement with respect to the ‘751 patent, but that it had not satisfied the domestic industry requirement for the ‘485, ‘538, and ‘152 patents. In the September 14 notice, the Commission determined to review: (1) “the ID’s finding that Japanese Patent Application Publication H10-31034 to Amamiya et al. (‘Amamiya’ or RX-166) does not anticipate the asserted claims of the ‘751 patent under 35 U.S.C. § 102; (2) the ID’s conclusion of law regarding non-infringement of the ‘751 patent by Phicom’s accused products; (3) the ID’s conclusion that no analysis of the validity of the asserted claims that depend from claim 21 of the ‘152 patent is needed.”  The Commission also “determined not to review the remainder of the final ID.”  In addition, the notice requests briefing on two questions of particular interest to the Commission. The parties’ briefs to the Commission are due by September 25, 2009, with reply submissions due by October 2, 2009.
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ITC To Review Initial Determination In Certain Laser Imageable Lithographic Printing Plates (337-TA-636)

By Eric Schweibenz
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Sep
25
On September 24, 2009, the  Commission issued a notice determining to review in part ALJ E. James Gildea’s July 24, 2009 Initial Determination (“ID”) finding a violation of Section 337 by the respondents in Certain Laser Imageable Lithographic Printing Plates (Inv. No. 337-TA-636).  In the notice, the Commission indicated that it intends to modify ALJ Gildea’s claim construction but affirmed the ALJ’s determination of a violation of Section 337. As indicated in our July 28 and August 13 posts, the complainant in the 636 investigation is Presstek, Inc., and the respondents are VIM Technologies, Inc.; Hanita Coatings RCA, Ltd.; AteCe Canada; Guaranteed Service & Supplies, Inc.; Recognition Systems, Inc.; and Spicers Paper, Inc. (collectively, “Respondents”).  On July 24, 2009, ALJ Gildea issued his ID finding that a violation of Section 337 occurred in the importation into the U.S., the sale for importation, or the sale within the U.S. after importation of certain laser imageable lithographic printing plates by reason of infringement of one or more of claims 1, 10, and 27 of U.S. Patent No. 5,339,737, and one or more of claims 20, 21, and 23 of U.S. Patent No. 5,487,338.  Respondents then filed a combined petition for review of the ID, which was opposed by Presstek and the Commission Investigative Staff.  In response to the petition, the Commission decided to review certain aspects of the ID relating to claim construction. On review, the Commission determined to modify the ID by supplementing the ALJ’s claim construction analysis for reasons that will be provided in the Commission’s opinion on remedy, the public interest, and bonding; and to affirm ALJ Gildea’s determination of violation of Section 337.  The Commission stated that it may (1) issue an order that could result in the exclusion of the subject articles from entry into the U.S. and/or (2) issue one or more cease-and-desist orders.  Accordingly, the Commission requested the parties to submit written submissions addressing the form of remedy, if any, that should be ordered.  The Commission stated that it would consider the effect of an exclusion order and/or cease-and-desist order on the public health and welfare, competitive conditions in the U.S. economy, U.S. production of articles that are like or directly competitive with those that are subject to the investigation, and U.S. consumers.  It requested written submissions on the aforementioned public interest issues by October 6, 2009.
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