Commission Notices

ITC Decides to Review Initial Determination and Remand the Investigation In Certain Static Random Access Memories (337-TA-792)

By Eric Schweibenz
|
Dec
28
On December 21, 2012, the International Trade Commission (the “Commission”) issued a notice and order in Certain Static Random Access Memories and Products Containing Same (Inv. No. 337-TA-792).  In the notice, the Commission determined to review Chief ALJ Charles E. Bullock’s October 25, 2013 initial determination (“ID”) which found no violation of Section 337.  Further, the Commission issued an order remanding the investigation back to ALJ Bullock. By way of background, the Complainant in this matter is Cypress Semiconductor Corporation (“Cypress”) and the remaining Respondents are GSI Technology, Inc. (“GSI”), Cisco Systems, Inc. (“Cisco”); and Avnet, Inc. (“Avnet”; collectively, the “Respondents”).  The patents at issue in the investigation are U.S. Patent Nos. 6,651,134 (the ‘134 patent); 6,262,937 (the ‘937 patent); 7,142,477 (the ‘477 patent); and 6,534,805 (the 805 patent).  See our July 26, 2011 post for more information about this investigation. In his October 25, 2015 ID, ALJ Bullock determined that the Respondents’ accused products do not infringe any of the four patents.  The ALJ also determined that Cypress failed to meet the technical prong of the domestic industry requirement for any of the four patents.  In light of these findings, the ALJ declined to make any findings regarding validity or enforcement of the patents in the interests of judicial economy.  See our December 21, 2012 post for additional details. According to the December 21, 2012 notice, the Commission has determined to review the “final ID in its entirety” and remand the investigation to the ALJ to consider the parties’ invalidity and unenforceability arguments and make appropriate findings.  The Commission specifically notes that “the ALJ should have resolved these issues given the procedural posture of this investigation.”  The Commission did not seek further briefing.  Specifically, the Commission held that briefings, if any, will await Commission consideration of ALJ Bullock’s remand ID.
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ITC Decides Not To Review Final ID In Certain Computer Forensic Devices (337-TA-799)

By Eric Schweibenz
|
Dec
31
On December 21, 2012, the International Trade Commission (“Commission”) issued a notice of its determination not to review the Initial Determination (“ID”) of Chief ALJ Charles E. Bullock finding no violation of Section 337 in Certain Computer Forensic Devices and Products Containing Same (Inv. No. 337-TA-799). By way of background, the Complainant in this investigation is MyKey Technology Inc. (“MyKey”) and the remaining Respondents are CRU Acquisitions Group LLC d/b/a CRU Data-Port LLC, Guidance Software, Inc., Guidance Tableau LLC, and Digital Intelligence, Inc.  MyKey filed a complaint on July 22, 2011 alleging violation of Section 337 in the importation and sale of certain computer forensic devices and products containing same that infringe one or more claims of U.S. Patent Nos. 6,813,682; 7,159,086 and 7,228,379.  See our August 26, 2011 post for more details. An evidentiary hearing was held from August 6 to August 10, 2012.  On October 26, 2012, ALJ Bullock issued a notice of his ID finding no violation of Section 337.  As stated in our October 31, 2012 post, the ALJ determined there is no violation of Section 337 with respect to the ‘682 and ‘379 patents.  According to the Commission’s notice, ALJ Bullock in the ID found that MyKey failed to satisfy the economic prong of the domestic industry requirement.  The Commission determined not to review the ID “based upon the extraordinary factual situation and the parties’ failure to file petitions for review.”  Accordingly, the investigation was terminated.
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ITC Rescinds Exclusion Order Directed To HTC In Certain Personal Data And Mobile Communications Devices (337-TA-710)

By Eric Schweibenz
|
Jan
17
On January 14, 2013, the International Trade Commission (“Commission”) issued a notice rescinding the limited exclusion order (“LEO”) previously issued and directed towards Respondents High Tech Computer Corp., HTC America, Inc. and Exedea, Inc. (collectively, “HTC”) in Certain Personal Data and Mobile Communications Devices and Related Software (Inv. No. 337-TA-710).      By way of background, the Complainants in this investigation are Apple Inc. and NeXT Software, Inc. (collectively, “Apple”) and the Respondents are HTC.  On July 15, 2011, ALJ Charneski determined that HTC violated Section 337 through its infringement of certain claims of U.S. Patent No. 5,946,647 (the ‘647 patent) and U.S. Patent No. 6,343,263.  See our September 2, 2011 post for more details about the ID.  On December 19, 2011, the Commission determined that HTC violated Section 337 by reason of its importation and sale of articles that infringe certain claims of the ‘647 patent.  Further, the Commission determined that the appropriate remedy is a LEO prohibiting the entry of HTC’s personal data and mobile communications devices and related software into the U.S. that infringe certain claims of the ‘647 patent.  See our January 11, 2012 post for more details about the Commission’s decision.  On June 4, 2012, Apple filed an enforcement complaint alleging that HTC violated the LEO in the underlying investigation.  See our June 6, 2012 post for more details on Apple’s enforcement complaint against HTC.  On December 7, 2012, Apple and HTC filed motions seeking to terminate the enforcement proceeding in light of a settlement agreement and to rescind the exclusion order.  On December 13, 2012, the ALJ granted the motion to terminate the investigation.  See our January 16, 2012 post for more details. According to the January 14, 2013 notice, the Commission determined to rescind the LEO.  The Commission also determined not to review the ALJ’s ID terminating the enforcement proceeding.
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ITC Issues Final Determination Of Section 337 Violation And General Exclusion Order In Certain LED Photographic Lighting Devices (337-TA-804)

By Eric Schweibenz
|
Jan
22
On January 17, 2013, the International Trade Commission (the “Commission”) issued a notice in Certain LED Photographic Lighting Devices and Components Thereof (Inv. No. 337-TA-804).  In the notice, the Commission found a violation of Section 337 and issued a general exclusion order (“GEO”) prohibiting importation of infringing LED photographic lighting devices and components thereof. By way of background, the Commission instituted this investigation on September 7, 2011 based on a complaint filed by Litepanels, Inc. and Litepanels, Ltd. (collectively, “Litepanels”) alleging a violation of Section 337 by a number of respondents for the importation into the U.S. and sale of certain LED photographic lighting devices and components thereof.  Litepanels alleged that the Respondents violated Section 337 with respect to U.S. Patent Nos. 7,429,117 (terminated from investigation); 7,510,290 (terminated from investigation); 7,972,022 (the ‘022 patent); 7,318,652 (the ‘652 patent); and 6,948,823 (the ‘823 patent).  See our September 3, 2011 post for more details on this investigation.  On September 7, 2012, ALJ Theodore R. Essex issued the initial determination (“ID”) finding that that there has been a violation of Section 337 by the remaining Respondents in this investigation with respect to certain claims of the ‘022 patent; certain claims of the ‘652 patent; and claim 19 of the ‘823 patent.  ALJ Essex also determined that no violation of Section 337 occurred by the remaining Respondents with respect to claims 17 and 28 of the ‘823 patent.  See our September 13, 2012 post for more details on the ID.  On November 13, 2012, the Commission determined to review in part the ID.  See our November 15, 2012 post for more details on the scope of the Commission’s review. According to the January 17, 2013 notice, the Commission has determined that there is a violation of Section 337 with respect to the ‘022 and ‘652 patents.  The Commission also determined to reverse the ALJ’s finding of a violation based on the ‘823 patent because the only claim of the ‘823 patent that Litepanels alleged is practiced by the domestic industry products (i.e., claim 17) was found to be invalid.  In addition, the Commission determined to reverse the ALJ and find that the preambles of the asserted patents are limitations and should be construed based on their plain and ordinary meaning.  The details of the Commission’s decision, including certain modifications of the ALJ’s findings in the ID are explained in a forthcoming Commission opinion.  Regarding the appropriate remedy to be issued in this investigation, the Commission issued a GEO prohibiting from entry LED photographic lighting devices and components thereof that infringe certain claims of the ‘022 and ‘652 patents.  The Commission also noted that the public interest factors do not preclude issuance of the GEO.  Finally, the Commission determined that a bond in the amount of 43% of the entered value is required to permit temporary importation during the Presidential review period.
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ITC Decides to Review Initial Determination and Remand the Investigation in Certain Electronic Media Devices (337-TA-796)

By Eric Schweibenz
|
Jan
24
On January 23, 2013, the International Trade Commission (the “Commission”) issued a notice and remand order in Certain Electronic Digital Media Devices and Components Thereof (Inv. No. 337-TA-796).  In the notice, the Commission determined to review ALJ Thomas B. Pender’s October 24, 2012 initial determination (“ID”) which found a violation of Section 337.  Further, the Commission issued an order remanding the investigation back to ALJ Pender. By way of background, ALJ Pender determined that a violation of Section 337 had occurred in this investigation by Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively, “Samsung”) by reason of infringement of certain valid claims of U.S. Patent Nos. D618,678, 7,479,949, RE 41,922 (the ‘922 patent), and 7,912,501 (the ‘501 patent).  See our October 26, 2012 and January 22, 2013 posts for more details on the initial determination (“ID”) in this investigation. According to the January 23, 2013 notice, the Commission has determined to review the “final ID in its entirety” and remand the investigation to the ALJ to consider certain issues related to the ‘922 patent and the ‘501 patent.  The Commission did not seek further briefing.  Rather, the Commission stated that briefing “if any, on remanded and reviewed issues…will follow Commission consideration of the remand ID.” According to the remand order, the ALJ is to make findings regarding infringement of dependent claims 34 and 35 of the ‘922 patent based on apparent inconsistencies in portions of the ID.  Specifically, the order describes that “[t]he ID states (at page 261) that ‘dependent claims 34 and 35 are not infringed’ because ‘claim 33 is not infringed.’  The ALJ, however, found that ‘Samsung infringes claim 33 of the ‘922 patent.’”  Therefore, the infringement arguments for claims 34 and 35 must be considered.  The investigation is also remanded to the ALJ to make findings regarding infringement of claim 3 of the ‘501 patent in relation to the accused products represented by the Transform SPH-M920, as the ALJ “did not consider and make appropriate findings regarding infringement of claim 3” in relation to this line of products.
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ITC Decides To Review Initial Determination And Remand The Investigation In Certain Products Containing Interactive Program Guide And Parental Guide And Parental Control Technology (337-TA-820)

By Eric Schweibenz
|
Jan
31
On January 29, 2013, the International Trade Commission (the “Commission”) issued a notice and remand order in Certain Products Containing Interactive Program Guide and Parental Guide and Parental Control Technology (Inv. No. 337-TA-820).  In the notice, the Commission determined to review Chief ALJ Charles E. Bullock’s January 8, 2013 Initial Determination (“ID”) granting a joint motion for termination of the investigation based on a settlement agreement.  The Commission also issued an order remanding the investigation back to ALJ Bullock. By way of background, ALJ Bullock granted a joint motion filed by Complainants Rovi Corporation, Rovi Guides, Inc., United Video Properties, Inc., Gemstar Development Corporation, and Index Systems, Inc. (collectively, “Rovi”) and Respondent Vizio, Inc. (“Vizio”) to terminate the investigation based on a settlement agreement.  See our January 9, 2013 post for more details. According to the notice, the Commission determined that “the public version of the settlement agreement does not comply with Commission Rule 210.21(b)(1) because the redactions are not restricted to the types of confidential business information set forth in Commission Rule 201.6.” As stated in the remand order, ALJ Bullock is to “require Rovi and Vizio to file a renewed motion to terminate the investigation along with public and confidential versions of the settlement agreement that comply with Commission Rules 210.21 (b)(1) and 201.6.”
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ITC Decides To Review-In-Part Initial Determination And Terminate The Investigation In Certain Microprocessors (337-TA-781)

By Eric Schweibenz
|
Feb
19
On February 15, 2013, the International Trade Commission (the “Commission”) issued a notice and terminated the investigation in Certain Microprocessors, Components Thereof, and Products Containing Same(Inv. No. 337-TA-781). By way of background, ALJ David P. Shaw found that Respondents Intel Corporation, Componentes Intel de Costa Rica S.A., Intel Malaysia Sdn. Bhd, Intel Products (Chengdu) Ltd., Intel Products (Shanghai) Ltd., Apple Inc., and Hewlett-Packard Company did not violate Section 337 by reason of infringement of the asserted claims of U.S. Patent Nos. 8,023,241 (the ‘241 patent); 7,916,444 (the ‘444 patent); and 7,609,500 (the ‘500 patent).  ALJ Shaw also determined that claims 20 and 28–31 of the ‘241 patent and claims 29, 31, 33, and 36 of the ‘444 patent are invalid.  Further, ALJ Shaw found that Complainant X2Y Attenuators, LLC (“X2Y”) satisfied the domestic industry requirement with respect to all of the patents-in-suit.  See our January 25, 2013 post for more details. According to the February 15, 2013 Notice, the Commission determined to review certain claim construction issues raised in X2Y’s petition for review.  The Commission reversed ALJ Shaw’s finding of indefiniteness as to the term “portion” and afforded the term its ordinary meaning.  Further, the Commission determined to review and reverse ALJ Shaw’s finding that all of the asserted patent claims have a “capacitance” requirement.  Based upon these changes to claim construction, the Commission decided not to review ALJ Shaw’s non-infringement finding.  Lastly,  the Commission determined to review and vacate, without reaching the merits, ALJ Shaw’s finding that “X2Y demonstrate[d] the existence of a domestic industry under section 337(a)(3)(C) through the engineering, research and development activities and investments of X2Y’s licensee.”  The Commission determined not to review the remainder of the ID.  Accordingly, the Commission terminated the investigation with a finding of no violation.
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ITC Decides To Review Initial Determination And Remand The Investigation In Certain Wiper Blades (337-TA-816)

By Eric Schweibenz
|
Feb
20
On February 15, 2013, the International Trade Commission (the “Commission”) issued a notice in Certain Wiper Blades(Inv. No. 337-TA-816). By way of background, Chief ALJ Charles E. Bullock issued Order No. 63 granting Respondents Corea Autoparts Producing Corporation, CAP America, and PIAA Corporation USA’s (collectively, “CAP”) motion for summary determination of non-infringement of all asserted claims of U.S. Patent No. 6,675,434 for the accused CAP wiper blades. According to the Notice, the Commission determined to review Order No. 63 because the disputed claim term relied on by ALJ Bullock in making his determination was legally erroneous.  ALJ Bullock had construed disputed claim term “pointing toward the other end portion is disposed on each of the two end portions of the support element” as “projecting beyond the support element such that it can point towards the other end of the support element.”  The Commission held that ALJ Bullock’s construction erroneously included a “projecting” limitation from the preferred embodiments.  The Commission made no determination of non-infringement based on its claim construction; instead, the Commission remanded the investigation back to ALJ Bullock for a non-infringement determination in light of the new claim construction.
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ITC Decides To Review In Part Initial Determination In Certain Wireless Communication Devices (337-TA-745)

By Eric Schweibenz
|
Mar
04
On February 19, 2013, the International Trade Commission (“the Commission”) issued a notice in Certain Wireless Communication Devices, Portable Music and Data Processing Devices, Computers and Components Thereof (Inv. No. 337-TA-745).  In the notice, the Commission determined to review in part ALJ Thomas B. Pender’s remand initial determination (“Remand ID”) finding no violation of Section 337. By way of background, the Investigation is based on a Complaint filed by Motorola Mobility, Inc. (“Motorola”) against Respondent Apple Inc. (“Apple”).  On May 16, 2012, ALJ Pender issued the public version of an initial determination (“ID”) finding a violation of Section 337 as to U.S. Patent No. 6,246,697, but no violation of Section 337 with respect to U.S. Patent Nos. 6,272,333, 6,246,862 (the ‘862 patent), and 5,636,223.  See our May 31, 2012 post for more details on the ID.  On September 17, 2012, the Commission issued the public version of its opinion affirming-in-part, reversing-in-part, and remanding-in-part the findings in the ID.  Specifically, the Commission remanded the case to the ALJ with respect to the ‘862 patent.  See our September 20, 2012 post for more details on the Commission’s decision.  On December 18, 2012, ALJ Pender issued his Remand ID, finding no violation of Section 337 as to the ‘862 patent.  In particular, the ALJ determined that although claim 1 of the ‘862 patent was infringed by the accused products, it was invalid as anticipated by U.S. Patent No. 6,052,464 to Harris (“Harris”).  The ALJ further found that claim 1 was not invalid for obviousness in light of Harris in combination with the knowledge of one of ordinary skill in the art or in combination with U.S. Patent No. 5,894,298 to Hoeksma (“Hoeksma”).  See our January 2, 2013 post for more details on the Remand ID. On January 7, 2013, Motorola filed a petition for review of certain aspects of the Remand ID’s findings and Apple filed a petition for review of certain aspects of the original ID’s findings.  Each party submitted responses to the other’s petition. After examining the Remand ID, the petitions for review, and the responses, the Commission determined to review the Remand ID in-part.  Specifically, the Commission determined to review the Remand ID’s construction of the limitation “touch sensitive input device,” its finding that the accused products literally infringe claim 1 of the ‘862 patent, its finding that Harris anticipates claim 1 of the ‘862 patent, and finally its finding regarding non-obviousness.  The Commission asked the parties to brief their positions on these issues.  The Commission indicated to the parties that it was particularly interested in whether the evidence in the record supported a finding that claim 1 of the ‘862 patent was obvious in view of Harris in combination with the knowledge of one of ordinary skill in the art or Hoeksma where the evidence demonstrated that the existence of portable communication devices using “touch sensitive input devices,” including touch screens, were known in the art prior to the filing of the application leading to the ‘862 patent and were disclosed in Hoeksma.  The Commission asked that the parties refer to the teachings of the references, the knowledge of one of ordinary skill in the art at the time of filing, the evidence in the record regarding the motivations to combine, and whether any secondary considerations would prevent a finding of obviousness.
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ITC Extends Target Date And Requests Additional Submissions In Certain Electronic Devices, Including Wireless Communication Devices, Portable Music And Data Processing Devices, And Tablet Computers (337-TA-794)

By Eric Schweibenz
|
Mar
21
On March 13, 2013, the International Trade Commission (“the Commission”) issued a notice in Certain Electronic Devices, Including Wireless Communication Devices, Portable Music and Data Processing Devices, and Tablet Computers(Inv. No. 337-TA-794).  In the notice, the Commission determined to extend the target date for completion of the investigation until May 31, 2013, and requested additional written submissions from the parties and the public on the issues set forth below. By way of background, the investigation is based on a complaint filed by Samsung Electronics Co., Ltd. and Samsung Telecommunications America, LLC (collectively, “Samsung”) alleging violation of Section 337 by Respondent Apple Inc. (“Apple”) in the importation and sale of certain electronic devices, including wireless communication devices, portable music and data processing devices, and tablet computers that infringe one or more claims of certain U.S. patents.  See our August 1, 2011 post for more details.  On September 14, 2012, ALJ E. James Gildea issued a final initial determination (“ID”) finding no violation of Section 337 by Apple in this investigation.  Specifically, the ALJ found that U.S. Patent Nos. 7,706,348 (the ‘348 patent), 7,486,644 (the ‘644 patent) and 6,771,980 (the ‘980 patent) are valid but not infringed, and that U.S. Patent No. 7,450,114 (the ‘114 patent) is both invalid and not infringed.  ALJ Gildea also determined that the economic prong of the domestic industry requirement is satisfied for all four patents at issue, but that the technical prong is not satisfied for any of the asserted patents.  On November 19, 2012, the Commission determined to review the ID in its entirety and issued a notice requesting written submissions from the parties and the public on certain patent issues, the assertion of FRAND-related patents at the Commission, and on the issues of remedy, public interest and bonding.  See our November 20, 2012 post for more details. According to the notice, the Commission determined to seek additional information on the potential effect on the public interest if the Commission were to order remedies against articles alleged to infringe the asserted claims of the ‘348 patent.  In particular, the Commission requested written submissions from the parties, interested government agencies, the Office of Unfair Import Investigations, and any other interested persons on the following issues:
  • How would remedial orders barring the entry and further distribution of the accused Apple articles affect the public interest, particularly with respect to (a) the percentage of the total number of imported mobile telephone handsets that would be affected by such orders, (b) the percentage of the total number of imported cellular-network-enabled tablets that would be affected by such orders, (c) the qualitative impact of exclusion of such handsets and tablets, and (d) any other relevant market information bearing on the four statutory public interest factors.
  • Whether third, fourth, and later generation products (if any) are currently available in the U.S. market that are authorized by Samsung to utilize the technology covered by the asserted claims of the ‘348 patent, whether these products are acceptable substitutes for the accused iPhones and iPads, and whether they are widely viewed to be acceptable substitutes.
  • In what ways, if any, a remedy with respect to infringement of the ‘348 patent should be specifically tailored to avoid harm to the public interest.
In addition, the parties were requested to brief the following issues:
  • If the Commission were to issue remedial orders covering articles covered by the asserted claims of the ‘348 patent, whether such an order would cover (a) Apple products that operate on wireless networks in the U.S. other than AT&T, and (b) later generation Apple products (e.g., iPhone 5 and later iPad versions).
  • The history to date of negotiations between Samsung and Apple concerning any potential license to the ‘348 patent, either alone or in conjunction with other patents.
  • All licenses to the ‘348 patent granted by Samsung to any entity.
  • Specific licensing terms for the ‘348 patent that each party believes are fair, reasonable and non-discriminatory, whether Samsung’s terms would change if the Commission were to enter remedial orders against Apple’s accused products, and if so, whether such an offer would be fair, reasonable and non-discriminatory.
  • The Georgia-Pacific factors most relevant to determining whether Samsung has offered to license the ‘348 patent to Apple on fair, reasonable and non-discriminatory terms, and what other factors, if any, are relevant in determining whether Samsung has made a fair, reasonable and non-discriminatory offer.
The Commission requested written submissions by April 3, 2013, and reply submissions by April 10, 2013. Commissioner Aranoff dissented from the notice, issuing a memorandum stating that in her view, the parties and the public have already had several opportunities to present evidence and argument on the public interest issues relevant to this investigation.
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ITC Decides To Review Initial Determination And Extend Target Date In Certain Kinesiotherapy Devices (337-TA-823)

By Eric Schweibenz
|
Mar
27
On March 25, 2013, the International Trade Commission (“the Commission”) issued a notice in Certain Kinesiotherapy Devices and Components Thereof (Inv. No. 337-TA-823).  In the notice, the Commission determined to review ALJ Thomas B. Pender’s final initial determination (“ID”) in its entirety, and to extent the target date for completion of the investigation by two weeks to June 17, 2013. By way of background, the investigation is based on a December 2, 2011 complaint filed by Standard Innovation Corporation and Standard Innovation (US) Corp. (collectively, “Standard Innovation”) alleging violation of Section 337 in the importation into the U.S. and sale of certain kinesiotherapy devices and components thereof that infringe one or more claims of U.S. Patent Nos. 7,931,605 (the ‘605 patent) and D605,779 (the ‘779 patent).  Standard Innovation withdrew the ‘779 patent from the investigation.  An evidentiary hearing was held in August 2012.  On February 8, 2013, ALJ Pender issued the ID construing the terms of the asserted claims and finding the ‘605 patent valid and infringed, but finding no violation of Section 337 on the grounds that Standard Innovation did not satisfy the economic prong of the domestic industry requirement.  See our February 11, 2013 post for more details. According to the notice, the Commission requested briefing from the parties on the following issues:
  • Evidentiary support in the record showing U.S. investments relating to the components that are relied on by Standard Innovation to meet the domestic industry requirement, including information relating to component providers, contractors, and subcontractors as appropriate.
  • The significance of the relative contribution of domestic inputs compared to total production (domestic and foreign) of Standard Innovation’s products alleged to practice the ‘605 patent.
  • Evidentiary support in the record regarding whether the U.S. investments alleged by Standard Innovation are significant or substantial in the context of its business, the relevant industry, and market realities.
  • How the component purchasing expenditures for U.S. components not made specifically for the domestic industry products constitute an investment in plant and equipment, employment of labor and capital, or an investment in exploitation under 19 U.S.C. § 1337(a)(3).
In addition, the Commission requested written submissions from the parties, interested government agencies, and any other interested persons on the following issues:
  • The form of remedy, if any, that should be ordered.  If a party seeks exclusion of an article from entry into the U.S. for purposes other than entry for consumption, the party should so indicate and provide information establishing that activities involving other types of entry either are adversely affecting it or are likely to do so.
  • The effect that an exclusion order and/or cease and desist orders will have on (1) the public health and welfare, (2) competitive conditions in the U.S. economy, (3) U.S. production of articles that are like or directly competitive with those that are subject to investigation, and (4) U.S. consumers.
  • The amount of the bond that should be imposed if a remedy is ordered.
Standard Innovation and the Commission Investigative Attorney were also requested to submit proposed remedial orders for the Commission’s consideration.  Finally, Standard Innovation was requested to supply the expiration date of the ‘605 patent and the HTSUS numbers under which the accused products are imported.
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ITC Institutes Consolidated Enforcement and Modification Proceedings In Certain Dimmable Compact Fluorescent Lamps (337-TA-830)

By Eric Schweibenz
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Apr
11
On April 11, 2013, the U.S. International Trade Commission issued a notice and order instituting consolidated enforcement and modification proceedings in Certain Dimmable Compact Fluorescent Lamps and Products (Inv. No. 337-TA-830). By way of background, the Commission instituted this investigation on February 22, 2012 based on a complaint filed by Neptun Light, Inc. and Andrzej Bobel (collectively, “Neptun”) alleging violation of Section 337 by reason of infringement of various claims of U.S. Patent Nos. 5,434,480 and 8,035,318 by several respondents, including MaxLite, Inc. (“MaxLite”).  See our February 23, 2012 post for more details.  On July 25, 2012, the Commission terminated the investigation as to MaxLite and entered a consent order preventing MaxLite from importing dimmable compact fluorescent lamps (“CFLs”) that infringed claim 9 of the ‘480 patent. On February 6, 2013, MaxLite petitioned the Commission under Rule 210.76 for modification of the consent order on the basis of a recent decision by the Northern District of Illinois that dimmable CFLs purchased by MaxLite from a certain third party are subject to a covenant not to sue and thus do not infringe claim 9 of the ‘480 patent.  On February 18, 2013, Neptun filed a complaint requesting that the Commission institute a formal enforcement proceeding under Rule 210.75 to investigation and confirm violations of the consent order by MaxLite.  The Commission determined that both MaxLite’s petition and Neptune’s complaint complied with the requirements for institution of a modification and enforcement proceeding, respectively. Lastly, Chief ALJ Charles E. Bullock issued a notice indicating that Thomas B. Pender will be the presiding Administrative Law Judge in this investigation.
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ITC Issues Notice Reversing Initial Determinations And Remanding For Further Proceedings In Certain Wiper Blades (337-TA-816)

By Eric Schweibenz
|
Apr
17
On April 9, 2013, the International Trade Commission (the “Commission”) issued a notice in Certain Wiper Blades (Inv. No. 337-TA-816).  In the notice, the Commission reversed two of Chief ALJ Charles E. Bullock’s Initial Determinations (“ID”).  By way of background, the investigation is based on a complaint filed by Robert Bosch LLC (“Bosch”) alleging violation of Section 337 in the importation and sale of certain “flat” or “beam-type” wiper blade devices that infringe one or more claims of the asserted patents.  See our October 27, 2011 post for more details. As explained in our November 2, 2012 post, the Commission determined to review Order Nos. 51 and 52 and claim constructions as necessary.  We now provide the results of this review. The first ID, issued as Order No. 51 on October 2, 2012, found that claims 1-6 and 8-10 of U.S. Patent No. 6,611,988 and all claims of U.S. Patent Nos. 6,553,607, 6,836,926 and 6,973,698 were invalid as indefinite under § 112.  See our October 5, 2012 post for more details.  According to the notice, the Commission determined that the Respondents “have not provided clear and convincing evidence that any of the claim terms at issue are invalid as indefinite under 35 U.S.C. § 112(b).”  The Commission based this conclusion on differently construing claim terms that were found indefinite by the ALJ, including the terms “securing means,” “means for securing,” “considerably shallower,” “where Fwf is an actual contact force exerted on the wiper blade by the wiper arm (18) in condition when it is pressed against its window,” “wiper strip having a center section and two end sections, said contact force of said wiper strip being greater in said center section than at least one of said end two sections,” and “a concave curvature that is sharper than the sharpest curvature of a spherically curved window in a region of a wiping field that can be swept across by said wiper blade.”  As such, the Commission reversed the ALJ’s summary determination of invalidity. The second ID, issued as Order No. 52 on October 25, 2012, found that Respondents Danyang UPC Auto Parts Co., Ltd., Pylon Manufacturing Corp., and Scan Top Enterprise Co., Ltd.’s accused products do not infringe the asserted claims of the ‘988 and ‘926 patents, or the asserted claims of U.S. Patent Nos. 6,944,905, 7,293,321 and 7,523,520.  See our October 29, 2012 post for more details. According to the notice, the Commission also reversed the ALJ’s finding of noninfringement based on the legal requirement of a disclaimer.  Specifically, the ALJ found that the specifications “disclaimed” the use of any brackets to hold the wiper blades, but the Commission noted that criticism is not sufficient to rise to the level of clear disavowal, and the statements pointed to in the asserted patents “are insufficient here to provide the clear disavowal required to imbue the term ‘support element’ with a meaning at odds with, and narrower than, that term’s ordinary meaning.”  Therefore, construing “support element” to have its plain and ordinary meaning necessitated reversing the ALJ’s ID of no infringement.
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ITC Decides To Review In Part Remand Initial Determination On Validity and Enforceability In Certain Static Random Access Memories (337-TA-792)

By Eric Schweibenz
|
May
01

On April 26, 2013, the International Trade Commission (“the Commission”) issued a notice in Certain Static Random Access Memories and Products Containing Same (Inv. No. 337-TA-792).  In the notice, the Commission determined to review Chief ALJ Charles E. Bullock’s remand initial determination (“RID”) in relation to validity. By way of background, the Complainant in this matter is Cypress Semiconductor Corporation (“Cypress”) and the remaining Respondents are GSI Technology, Inc., Cisco Systems, Inc., and Avnet, Inc. (collectively, “Respondents”).  The patents at issue in the investigation are U.S. Patent Nos. 6,651,134 (the ‘134 patent); 6,262,937 (the ‘937 patent); 7,142,477 (the ‘477 patent); and 6,534,805 (the ‘805 patent).  See our July 26, 2011 post for more information about this investigation. In his October 25, 2012 Initial Determination (“ID”), ALJ Bullock determined that the Respondents’ accused products do not infringe any of the four patents.  The ALJ also determined that Cypress failed to meet the technical prong of the domestic industry requirement for any of the four patents.  In light of these findings, the ALJ declined to make any findings regarding validity or enforcement of the patents in the interests of judicial economy.  See our December 21, 2012 post for additional details.  After the case was remanded, ALJ Bullock issued a RID finding that the asserted patents are enforceable and not invalid.  See our December 28, 2012 post discussing the remand and our March 20, 2013 post for details on the RID opinion.  According to the notice, the Commission has determined to review the RID with respect to validity.  The Commission declined to request additional briefing.
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ITC Decides To Review In Part Remand Initial Determination Finding No Violation Of Section 337 In Certain Automated Media Library Devices (337-TA-746)

By Eric Schweibenz
|
May
20
On May 10, 2013, the International Trade Commission (“the Commission”) issued a notice determining to review in part the Remand Initial Determination (“RID”) issued by Chief ALJ Charles E. Bullock on March 26, 2013 finding no violation of Section 337 in Certain Automated Media Library Devices (Inv. No. 337-TA-746). By way of background, the Complainant in this matter is Overland Storage, Inc. (“Overland”) and the remaining Respondents are BDT AG, BDT-Solutions GmbH & Co. KG, BDT Products, Inc., BDT Automation Technology (Zhuhai FTZ) Co., Ltd., and BDT de México, S. de R.L. de C.V. (collectively, “Respondents”).  Overland asserted U.S. Patent Nos. 6,328,766 (the ‘766 patent) and 6,353,581 (the ‘581 patent) which are directed to automated media library devices, also known as tape libraries.  In his June 20, 2012 Initial Determination, ALJ Bullock determined that (1) the ‘766 and ‘581 patents are not infringed by BDT; (2) the patents are not invalid except for claim 15 of the ‘581 patent; and (3) a domestic industry exists for the ‘766 patent, but not for the ‘581 patent.  See our July 27, 2012 post for more details.  On October 25, 2012, the Commission issued a notice and order remanding the investigation.  See our October 31, 2012and November 28, 2012 posts for additional information. According to the RID, ALJ Bullock found no violation of Section 337 with respect to claims 10, 12 and 16 of the ‘581 patent.  The ALJ further determined that there is no violation of Section 337 with respect to claims 1-3 and 7-9 of the ‘766 patent as these claims were found to be invalid as anticipated.  ALJ Bullock also determined that the economic prong of the domestic industry requirement has been satisfied for the ‘581 patent.  See our April 29, 2013 post for more details. On April 8, 2013, Overland petitioned for review of the RID, requesting that the Commission review and reverse the ALJ’s finding that (1) claims 10, 12 and 16 of the ‘581 patent are not infringed by the accused devices, and (2) the asserted claims of the ‘766 patent are invalid as anticipated.  Respondents opposed Overland’s petition for review. After examining the record of the investigation and the parties’ submissions, the Commission determined to review the finding in the RID that Overland had not shown by a preponderance of the evidence that the accused products infringe claim 16 of the ‘581 patent.  The Commission also determined to review the finding that the asserted claims of the ‘766 patent are invalid as anticipated. The Commission determined not to review the remaining issues decided by the ALJ and did not request briefing on the reviewed issues or additional briefing on remedy, bonding, and the public interest.
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ITC Institutes Enforcement Proceedings in Certain Two-Way Global Satellite Communication Devices (337-TA-854)

By Eric Schweibenz
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May
23
On May 20, 2013, the U.S. International Trade Commission (“the Commission”) issued a notice and order instituting enforcement proceedings in Certain Two-Way Global Satellite Communication Devices, System and Components Thereof(Inv. No. 337-TA-854).  By way of background, on April 10, 2013, BriarTek IP, Inc. of Alexandria, Virginia (“BriarTek”) filed an enforcement complaint alleging that DeLorme Publishing Co., Inc. and DeLorme InReach LLC d/b/a InReach LLC (collectively, “DeLorme”)—both of Yarmouth, Maine—violated the consent order entered in the underlying investigation.  See our April 11, 2013 post for additional details. In view of these alleged violations of the consent order, BriarTek requested that the Commission institute a formal enforcement proceeding pursuant to 19 C.F.R. § 210.75.  The Commission determined that BriarTek’s complaint, asserting that DeLorme continues to sell global satellite communication systems in the United States, complies with the requirements for instituting a formal enforcement proceeding.  As such, the proceeding has been commenced in order to determine what, if any, enforcement measures are appropriate.  Last, Chief ALJ Charles E. Bullock issued a notice indicating that Robert K Rogers, Jr. will be the presiding Administrative Law Judge in this investigation.
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ITC Issues Final Determination Of No Violation In Certain Automated Media Library Devices (337-TA-746)

By Eric Schweibenz
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May
30
On May 28, 2013, the International Trade Commission (the “Commission”) issued a notice determining to modify in part Chief ALJ Charles E. Bullock’s Remand Initial Determination (“RID”) finding no violation of Section 337 in Certain Automated Media Library Devices (Inv. No. 337-TA-746).  The Commission terminated the investigation with a finding of no violation. By way of background, the Complainant in this investigation is Overland Storage, Inc. (“Overland”) and the remaining Respondents are BDT AG, BDT Products, Inc., BDT Automation Technology (Zhuhai FTZ) Co., Ltd., and BDT de México, S. de R.L. de C.V. (collectively, the “BDT Respondents”).  On June 20, 2012, ALJ Bullock issued an Initial Determination (“ID”) finding that (1) the BDT Respondents do not infringe U.S. Patent Nos. 6,328,766 (the ‘766 patent) and 6,353,581 (the ‘581 patent); (2) the ‘766 and ‘581 patents are not invalid, except for claim 15 of the ‘581 patent; and (3) a domestic industry exists for the ‘766 patent, but not for the ‘581 patent.  See our July 27, 2012 post for more details.  On August 20, 2012, the Commission determined to review the ID in part.  On review, the Commission determined, inter alia, to remand the investigation to ALJ Bullock to consider whether certain prior art anticipates or renders obvious the asserted claims of the ‘766 patent, and to consider whether Overland has satisfied the economic prong of the domestic industry requirement with respect to the ‘581 patent.  See our October 31, 2012 post for more details.  The Commission subsequently determined to also remand with respect to whether the BDT Respondents infringe claims 10, 12, and 16 of the of the ‘581 patent. In the RID, ALJ Bullock found no violation of Section 337.  In particular, the ALJ found that the BDT Respondents do not infringe claims 10, 12, and 16 of the ‘581 patent, and that claims 1, 2, 3, and 7-9 of the ‘766 patent are invalid as anticipated.  ALJ Bullock also determined that Overland has satisfied the economic prong of the domestic industry requirement with respect to the ‘581 patent.  See our April 29, 2013 post for more details. On April 8, 2013, Overland petitioned for review of certain aspects of the RID.  In particular, Overland requested that the Commission review and reverse the ALJ’s findings that (1) claims 10, 12 and 16 of the ‘581 patent are not infringed, and (2) the asserted claims of the ‘766 patent are invalid as anticipated.  The BDT Respondents opposed Overland’s petition for review.  On May 10, 2013, the Commission determined to review the RID in part.  Specifically, the Commission determined to review the infringement finding with respect to claim 16 of the ‘581 patent, as well as the anticipation finding with respect to the asserted claims of the ‘766 patent.  See our May 20, 2013 post for more details. According to the May 28 notice, on review, the Commission  determined to affirm, based on the Commission’s own construction of the limitation “cells in fixed relative position,” the RID’s finding that the BDT Respondents do not infringe claim 16 of the ‘581 patent.  The Commission also determined to affirm the RID’s finding that the asserted claims of the ‘766 patent are invalid as anticipated.  Accordingly, the Commission upheld ALJ Bullock’s ultimate finding of no violation of Section 337, and terminated the investigation.
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ITC Decides To Review Remand Initial Determination In Certain Electronic Digital Media Devices (337-TA-796)

By Eric Schweibenz
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May
31
On May 28, 2013, the International Trade Commission (“the Commission”) issued a notice in Certain Electronic Digital Media Devices and Components Thereof(Inv. No. 337-TA-796).  In the notice, the Commission determined to review ALJ Thomas B. Pender’s remand initial determination (“Remand ID”) in its entirety, requested briefing from the parties on certain issues under review, and also requested briefing from the public and the parties on the issues of remedy, bond, and the public interest.  By way of background, the investigation is based on a complaint filed by Apple, Inc. (“Apple”) alleging a violation of Section 337 by Respondents Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc.; and Samsung Telecommunications America, LLC (collectively, “Samsung”) for importation into the U.S. and sale of certain electronic digital media devices.  See our August 2, 2011 post for more details on the Notice of Investigation in this matter. On October 24, 2012, ALJ Pender issued an Initial Determination (“ID”), which found that Samsung violated Section 337 by infringement of certain valid claims of U.S. Patent Nos. D618,678; 7,479,949 (the ‘949 patent); RE 41,922 (the ‘922 patent); and 7,912,501 (the ‘501 patent).  See our January 22, 2013 post for more details on the public version of the ID.  On January 23, 2013, the Commission issued a notice determining to review the ID in its entirety.  Additionally, the Commission remanded the investigation to ALJ Pender to consider certain issues related to the ‘922 patent and the ‘501 patent.  See our January 24, 2013 post for more details. On March 26, 2013, ALJ Pender issued the subject Remand ID finding that claims 34 and 35 of the ‘922 patent are infringed by the text-selection feature of Samsung’s accused products and that claim 3 of the ‘501 patent is not infringed.  See our April 8, 2013 post for more details.  Both Apple and Samsung petitioned for review of the Remand ID. According to the notice, the Commission requested briefing from the parties on the following issues:
  • Substantial noninfringing uses and the “material or apparatus” used in practicing the patented methods that are relevant to this analysis.
  • The requirement, if any, that the “material or apparatus” relevant to a substantial noninfringing use analysis must be “separate and distinct” from all other functions of a larger product.
  • Evidentiary support showing that a third party performed each and every step of asserted claims 29-35 of the ‘922 patent.
  • Evidentiary support showing that Samsung actively and knowingly aided and abetted another’s direct infringement of the above claims.
  • Evidentiary support showing that Samsung actively and knowingly aided and abetted another’s direct infringement of claims 11-16 of the ‘949 patent. 
  • Evidentiary support that would narrow the construction of the “feature of interest” limitation in claims 31 and 32 of the ‘922 patent to exclude certain control elements and what impact, if any, do the additions in the specification added during reissue have on the construction of the claims added during reissue.
  • Evidentiary support regarding whether a person of ordinary skill in the art would understand from the disclosure of U.S. Patent No. 7,789,697 (the ‘697 patent) that a “signal path” exists even in the absence of a plug in receptacle. 
  • Samsung’s argument that Apple’s petition for review as to the ‘697 patent relies on a newly proffered claim construction.
  • Lastly, assuming arguendo that Apple’s proposed construction is adopted, the evidentiary support showing that this limitation is disclosed or suggested in the prior art.
In addition, the Commission requested written submissions from the parties, interested government agencies, and any other interested persons on the following issues:
  • The form of remedy, if any, that should be ordered and the public interest factors associated with this determination.
  • In particular, the Commission is interested in how a remedial order barring the entry and further distribution of Samsung’s accused products would affect the public interest as identified in Section 337(d)(1) and (f)(1); and
  • What ways, if any, a remedy with respect to infringement of one or more of the asserted patents should be specifically tailored to avoid harm to the public interest.
Written submissions are due by June 11, 2013, with reply submissions due by June 19, 2013.
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ITC Decides To Not Review Remand Initial Determination In Certain Gaming And Entertainment Consoles (337-TA-752)

By Eric Schweibenz
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Jun
03
On May 23, 2013, the International Trade Commission (“the Commission”) issued a notice determining not to review the Remand Initial Determination (“RID”) in Certain Gaming and Entertainment Consoles, Related Software, and Components Thereof (Inv. No. 337-TA-752). By way of background, the investigation was instituted on December 23, 2010 based on a complainant filed by Motorola Mobility, Inc. and General Instrument Corporation (collectively “Motorola”) against Respondent Microsoft Corporation (“Microsoft”).  Motorola alleged a violation of Section 337 in the importations into the U.S., the sale for importation, and the sale within the U.S. after importation of certain gaming and entertainment consoles, related software, and components thereof that infringe one or more claims of U.S. Patent Nos. 6,069,896 (the ‘896 patent); 7,162,094 (the ‘094 patent); 6,980,596 (the ‘596 patent); 5,357,571 (the ‘571 patent); and 5,319,712 (the ‘712 patent).  See our November 24, 2010 post for more details on Motorola’s complaint.  On April 23, 2012, ALJ David P. Shaw issued his final Initial Determination (“ID”), finding a violation of Section 337 by Microsoft of the assert claims of the ‘896, ‘094, ‘596, and ‘571 patents.  See our May 24, 2012 post for more details on the public version of the ID.  The Commission determined to review the ID in its entirety and remanded to the investigation back to ALJ Shaw to apply recent ITC case law.  See our July 3, 2012 post for more details.  In the months following the Commissions remand determination, ALJ Shaw granted two separate motions by Motorola, which terminated the investigation as to the ‘712, ‘571, ‘596, and ‘094 patents.  On March 22, 2013, ALJ Shaw issued his RID, which found no violation of Section 337 with respect to the asserted claims of the only remain patent, the ‘896 patent.  See our April 5, 2013 post for more details regarding the RID.  Following a review of the parties’ petitions for review and responses, the Commission determined not to review the RID.  The Commission affirmed ALJ Shaw’s findings that:  (1) Motorola waived its indirect infringement argument, (2) Motorola failed to prove indirect infringement on the merits, and (3) Motorola failed to prove indirect infringement on the merits during the remand proceeding.  Accordingly, the Commission held that there is no violation of Section 337 with respect to the ‘896 patent and terminated the investigation.
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ITC Issues Limited Exclusion Order And Cease And Desist Order After Finding Violation Of Section 337 In Certain Electronic Devices, Including Wireless Communication Devices, Portable Music And Data Processing Devices, And Tablet Computers (337-TA-794)

By Eric Schweibenz
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Jun
06
On June 4, 2013, the International Trade Commission (the “Commission”) issued a notice in Certain Electronic Devices, Including Wireless Communication Devices, Portable Music and Data Processing Devices, and Tablet Computers (Inv. No. 337-TA-794).  In the notice, the Commission determined that Respondent Apple Inc. (“Apple”) had violated Section 337 in connection with the importation and sale of wireless communication devices, portable music and data processing devices, and tablet computers that infringe certain claims of U.S. Patent No. 7,706,348 (the ‘348 patent).  The Commission issued a limited exclusion order and a cease and desist order directed at Apple, and terminated the investigation. By way of background, the Complainants in this investigation are Samsung Electronics Co., Ltd. and Samsung Telecommunications America, LLC (collectively, “Samsung”).  On September 14, 2012, ALJ E. James Gildea issued an Initial Determination (“ID”) finding no violation of Section 337 with respect to the ‘348 patent or U.S. Patent Nos. 7,486,644 (the ‘644 patent), 7,450,114 (the ‘114 patent), and 6,771,980 (the ‘980 patent).  Specifically, ALJ Gildea found that the ‘348, ‘644, and ‘980 patents were valid but not infringed and that the ‘114 patent was both invalid and not infringed.   The ALJ also found that the economic prong of the domestic industry requirement was satisfied with respect to each of the patents, but that the technical prong was not satisfied for any of the patents. On November 19, 2012, the Commission determined to review the ID in its entirety and issued a notice requesting written submissions from the parties and the public on certain patent issues, the assertion of FRAND-related patents at the Commission, and on the issues of remedy, public interest and bonding.  See our November 20, 2012 post for more details. On March 13, 2013, the Commission issued another notice requesting written submissions from the parties and the public on various additional topics, including some FRAND-related topics.  See our March 21, 2013 post for more details.  According to the June 4 notice, the Commission received written submissions from Samsung, Apple, and the Commission Investigative Staff addressing all of the Commission’s questions.  With respect to the FRAND-related topics, the Commission received additional responses from the Association for Competitive Technology, Business Software Alliance, Cisco Systems, Inc., Hewlett Packard Company, Innovation Alliance, Micron Technology, Inc., and Retail Industry Leaders Association. According to the June 4 notice, after examining the record of the investigation, including the ID and the submissions from the parties and the public, the Commission determined that Apple had violated Section 337 based on the importation and sale of articles that infringe claims 75-76 and 82-84 of the ‘348 patent.  In particular, the Commission determined to modify the ALJ’s construction of certain terms in the asserted claims of the ‘348 patent, and to find that, under the modified constructions, Apple’s iPhone 4 (AT&T models), iPhone 3GS (AT&T models), iPhone 3 (AT&T models), iPad 3G (AT&T models), and iPad 2 3G (AT&T models) infringe the asserted claims of the ‘348 patent.  The Commission further determined that the properly construed claims had not been proven by Apple to be invalid and that Samsung had proven that a domestic industry exists with respect to the ‘348 patent.  The Commission also determined that Apple had failed to prove an affirmative defense based on Samsung’s FRAND declarations.  However, the Commission determined that Samsung had not proven a violation of Section 337 with respect to the ‘644, ‘980, and ‘114 patents. The notice further states that the Commission determined that the appropriate remedy is a limited exclusion order and a cease and desist order prohibiting Apple from importing into the U.S. or selling or distributing within the U.S. wireless communication devices, portable music and data processing devices, and tablet computers that infringe claims 75-76 and 82-84 of the ‘348 patent.  The Commission further determined that the public interest factors enumerated in Section 337(d)(1) and (f)(1) do not preclude issuance of the limited exclusion order and cease and desist order.  The Commission also determined that Samsung’s FRAND declarations do not preclude those remedies.  Finally, the Commission determined that a bond in the amount of zero percent of the entered value is required to permit temporary importation during the Presidential review period. According to the notice, Commissioner Pinkert dissented on public interest grounds from the determination to issue an exclusion order and cease and desist order.
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