Commission Notices

ITC Decides To Affirm In Part And Reverse In Part The Initial Determination And Terminate The Investigation In Certain Rubber Resins (337-TA-849)

By Eric Schweibenz
|
Jan
16
On January 15, 2014, the International Trade Commission (the “Commission”) issued a notice determining to affirm in part and reverse in part the initial determination (“ID”) issued by ALJ Robert K. Rogers, Jr., and terminating the Investigation with a finding of violation in Certain Rubber Resins and Processes for Manufacturing Same (Inv. No. 337-TA-849). By way of background, this Investigation is based on a May 21, 2012 complaint filed on behalf of SI Group, Inc. (“SI Group”) alleging violation of Section 337 by a number of Respondents in the importation into the United States, sale for importation, or sale after importation of certain rubber resins by reason of misappropriation of trade secrets.  See our May 22, 2012 and June 22, 2012 posts for more details on SI’s complaint and Notice of Investigation, respectively.  On June 17, 2013 ALJ Rogers issued his ID finding a violation of Section 337.  See our June 28, 2013 post for more details on the notice of ID issued by ALJ Rogers.    According to the January 15, 2014 notice, the Commission determined that the following Respondents were in violation of Section 337:  Precision Measurement International LLC, Sino Legend (Zhangjiagang) Chemical Co. Ltd.; Sino Legend Holding Group, Inc. of Kowloon, Hong Kong; Sino Legend Holding Group Ltd.; Red Avenue Chemical Co. Ltd.; Shanghai Lunsai International Trading Company; Red Avenue Group Limited; and Sino Legend Holding Group, Inc. of Majuro, Marshall Islands.  The Commission issued a limited exclusion order for a period of ten (10) years prohibiting the unlicensed importation of rubber resins made using any of the SP-1068 Rubber Resin Trade Secrets that are manufactured by, for, or on behalf of the violating Respondents or any of their affiliated companies, licensees, other related business entities, or their successors or assigns.  The Commission also determined that the public interest factors did not preclude issuance of a remedy.  Lastly, the Commission determined that covered products may be imported during the period of Presidential review under bond in the amount of 19% of entered value.
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ITC Extends Target Date And Requests Additional Comments In Certain Digital Models, Digital Data, And Treatment Plans For Use, In Making Incremental Dental Positioning Adjustment Appliances Made Therefrom (337-TA-833)

By Eric Schweibenz
|
Jan
27
On January 17, 2014, the International Trade Commission (the “Commission”) issued a notice determining to extend the target date for completion of the investigation and to solicit additional briefing from the parties and the public in Certain Digital Models, Digital Data, and Treatment Plans for Use, in Making Incremental Dental Positioning Adjustment Appliances Made Therefrom, and Methods of Making the Same (Inv. No. 337-TA-833).  By way of background, the International Trade Commission instituted this investigation on March 20, 2012 based on a complaint filed by Complainant Align Technology, Inc. (“Align”).  In the Complaint, Align alleged that Respondents ClearCorrect Operating, LLC and ClearCorrect Pakistan (Private), Ltd. (collectively, “Respondents”) violated Section 337 in the importation into the U.S. and sale of certain digital models, digital data, or treatment plans for use in making incremental dental positioning adjustment appliances that infringe—or are made, produced, or processed by means of a process that infringes—one or more claims of U.S. Patent Nos. 6,217,325 (the ‘325 patent); 6,705,863 (the ‘863 patent); 6,626,666 (the ‘666 patent); 8,070,487 (the ‘487 patent); 6,471,511 (the ‘511 patent); 6,722,880 (the ‘880 patent); and 7,134,874 (the ‘874 patent).  See our March 2, 2012 and April 6, 2012 posts for more details on the complaint and Notice of Investigation, respectively. On May 6, 2013, ALJ Robert K. Rogers, Jr. issued the Initial Determination (“ID”) on violation of Section 337 and determined that (i) a domestic industry exists that exploits the ‘325, ‘880, ‘487, ‘511, ‘863, and ’874 patents; (ii) a domestic industry does not exist that exploits the ’666 patent; (iii) claims 1-3, 11, 13, 14, 21, 30-35, 38 and 39 of the ’325 patent are infringed and not invalid; (iv) claims 1 and 3 of the ’880 patent are infringed and not invalid; (v) claims 1, 3 and 5 of the ’487 patent are infringed and not invalid, and claims 7-9 of the ’487 patent are not infringed and not invalid; (vi) claim 1 of the ’511 patent is infringed and not invalid; (vii) claims 1, 3, 7 and 9 of the ’666 patent are infringed and not invalid; (viii) claims 1 and 4-8 of the ’863 patent are infringed and not invalid; (ix) claims 1,2, 38, 39, 41 and 62 of the ’874 patent are infringed and not invalid; and (x) there is a violation of Section 337 as to the ’325, ’880, ’487, ’511, ’863 and ’874 patents.  See our June 24, 2013 post for more details on the ID.  According to the January 17, 2014 notice, the Commission extended the target date for completion of the investigation to March 21, 2014.  Also, the Commission noted their interest in the following questions:
Question 1:  Are electronic transmissions ‘articles’ within the meaning of Section 337?  Please answer with respect to the text, structure, and legislative history of Section 337.  Also address any potentially relevant judicial precedent, such as Bayer AG v. Housey Pharmaceuticals, Inc., 340 F.3d 1367, 1373-74 (Fed. Cir. 2003), and Suprema, Inc. v. Int’l Trade Comm’n, ___F.3d___, Nos. 2012-1170, -1026, -1124, 2013 WL 6510929 (Fed. Cir. December 13, 2013); Commission decisions, including Certain Hardware Logic Emulation Systems and Components Thereof, Inv. No. 337-TA-383 (1998); and any other potentially informative decisions by other government agencies.  * * * Question 2:  In analyzing whether the term ‘articles’ encompasses electronic transmissions, should the Commission take into account whether the electronic transmission is of data that is directly representative of a physical article? Questions 3:  Does the term ‘processed’ in Section 337(a)(1)(B)(ii) include data processing by a computer? Question 4:  Does the term ‘a material’ in the phrase ‘a material or apparatus for use in practicing a patented process’ in 35 U.S.C. § 271(c) include electronic transmission?
Written submissions are due by February 3, 2014, with reply submissions due by February 10, 2014.
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ITC Institutes Advisory Opinion Proceeding In Certain Kinesiotherapy Devices (337-TA-823)

By Eric Schweibenz
|
Feb
10
On February 7, 2014, the ITC issued a notice instituting an advisory opinion proceeding in Certain Kinesiotherapy Devices and Components Thereof(Inv. No. 337-TA-823). By way of background, the investigation was based on a December 2, 2011 complaint filed by Standard Innovation Corporation and Standard Innovation (US) Corp. (collectively, "SIC") 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 and D605,779.  See our January 9, 2012 post for more details on the complaint.  SIC identified twenty-one proposed respondents in the complaint, including Lelo Inc. and Leloi AB (collectively, "Lelo").  On June 17, 2013, the ITC issued a final determination finding a violation of Section 337 based on the infringement of the '605 patent.  Based on evidence of a pattern of violation and difficulty ascertaining the source of infringing products, the Commission issued both a general exclusion order against certain kinesiotherapy devices that infringe the asserted claims of the '605 patent, as well as cease and desist orders against certain respondents, including Lelo.  See our June 27, 2013 post for more details. According to the notice, Lelo filed a request on September 30, 2013 asking the ITC to institute an advisory opinion proceeding as to whether Lelo's new kinesiotherapy devices are covered by the general exclusion order or the cease and desist order issued against Lelo.  SIC opposed the request.  Finding Lelo's request in compliance with Commission Rule 210.79, the ITC determined to institute the requested advisory opinion proceeding, naming SIC and Lelo as parties thereto.  Further, the notice stated that an advisory opinion will issue by June 30, 2014.
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ITC Institutes Advisory Opinion Proceeding In Certain Ground Fault Circuit Interrupters (337-TA-739)

By Eric Schweibenz
|
Feb
14
On February 5, 2014, the ITC issued an order and notice instituting an advisory opinion proceeding in Certain Ground Fault Circuit Interrupters and Products Containing Same (Inv. No. 337-TA-739). By way of background, the original investigation was based on an October 8, 2010 complaint filed by Leviton Manufacturing Co., Inc. (“Leviton”) alleging violations of section 337 in the importation and/or sale of certain ground fault circuit interrupters (“GFCIs”) that infringe, among other patents, U.S. Patent No. 7,737,809 (“the ‘809 patent”).  The ITC issued cease and desist orders against numerous defaulting respondents, including Menard, Inc. (“Menard”).  The ITC also issued a general exclusion order.  Non-party Pass & Seymour, Inc. (“P&S”) had argued that the general exclusion should not reach P&S’s products, but the ITC rejected this argument.  Subsequently, on August 29, 2012, Leviton filed a complaint for an enforcement proceeding alleging, among other things, that Menard violated the cease and desist order by selling P&S GFCIs.  P&S joined the enforcement proceeding as an intervener, but the proceeding was later terminated following a settlement and licensing agreement between Leviton and P&S. According to the Order, P&S filed a request with the ITC for an advisory opinion as to whether the importation of certain redesigned P&S GFCIs violates the ITC’s remedial orders entered in the earlier proceedings.  The ITC granted P&S’s request and instituted an advisory opinion proceeding, ordering the presiding ALJ to “provide an opinion as to whether importation of P&S’s redesigned GFCls, without authorization from Leviton, would violate the Commission's remedial orders entered in this investigation on April 27, 2012.” Lastly, Chief ALJ Charles E. Bullock issued a notice indicating that he will be the presiding ALJ in this advisory opinion proceeding.
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ITC Remands Investigation In Certain 3G Mobile Handsets (337-TA-613)

By Eric Schweibenz
|
Feb
18
On February 12, 2014, the International Trade Commission (“the Commission”) issued a Notice and Order remanding the investigation in Certain 3G Mobile Handsets and Components Thereof (Inv. No. 337-TA-613). By way of background, the Commission instituted the investigation on September 11, 2007 based on a complaint filed by InterDigital Communications Corp. and InterDigital Technology Corp. (collectively, “InterDigital”).  The complaint, as amended, alleged violations of Section 337 in the importation and/or sale of certain 3G mobile handsets and components thereof that infringed certain claims of U.S. Patent Nos. 7,117,004 (the ‘004 patent), 7,190,966 (the ‘966 patent), 7,286,847 (the ‘847 patent), and 6,693,579 (the ‘579 patent) by Nokia Corporation and Nokia, Inc. (collectively, “Nokia”). On August 14, 2009, ALJ Luckern issued his final Initial Determination (“ID”) finding no violation of Section 337 on the grounds that asserted claims of the patents-in-suit were not invalid and not infringed.  Additionally, the ALJ found that the ‘004, ‘966, and ‘847 patents were not unenforceable due to prosecution laches, and that the ‘579 patent also was not unenforceable.  See our September 23, 2009 post for more details on the ID. The Commission reviewed the ID and on October 16, 2009 issued a notice modifying the ALJ’s construction of the term “access signal” in the asserted claims of the ‘847 and ‘004 patents.  The Commission also reviewed and took no position on the ALJ’s construction of the term “synchronize” in the asserted claims of the ‘847 patent.  Further, the Commission took no position on validity with respect to any of the asserted patents and did not review the ALJ’s construction of the terms “code” and “increased power level” in the asserted claims of the ‘966 and ‘847 patents.  See our October 19, 2009 post for more details. InterDigital appealed the Commission’s final determination, specifically regarding the unreviewed constructions of the “code” and “increased power level” limitations.  The Federal Circuit reversed the Commission’s construction of these terms, reversed the Commission’s determination of non-infringement as to the ‘966 and ‘847 patents, and remanded the case to the Commission for further proceedings.  Nokia subsequently filed a petition for panel rehearing and rehearing en banc on the issue of domestic industry which the Court denied. According to the Order, the investigation was remanded to the Chief ALJ for assignment to a presiding ALJ to make findings and issue a remand initial determination (“RID”) regarding:  (i) whether the accused Nokia handsets meet the “generated using a same code” or “the message being transmitted only subsequent to the subscriber unit receiving the indication” limitations in the asserted claims of the ‘966 patent; (ii) whether the accused Nokia handsets meet the “generated using a same code” or “function of a same code” limitations in the asserted claims of the ‘847 patent; (iii) whether the 3GPP standard supports a finding that the pilot signal satisfies the claim limitation “synchronized to a pilot signal” in the asserted claims of the ‘847 patent by synchronizing to the P-SCH or S-SCH signals; and (iv) whether, based on the ALJ’s construction of “access signal,” the PRACH message is transmitted during the power ramp up process in connection with the limitations “the message being transmitted only subsequent to the subscriber unit receiving the indication” and “transmitting, in response to receipt of said acknowledgement, an access signal” in the asserted claims of the ‘847 patent. The investigation was also remanded so that the presiding ALJ could reopen the evidentiary record and take evidence and/or briefing regarding Nokia’s currently imported products, the public interest factors enumerated in Section 337(d) and (f), whether the issue of the standard-essential nature of the patents-in-suit is contested, and whether there is patent hold-up or reverse hold-up in the investigation.  An analysis of the additional evidence and/or briefing was ordered to be included in the RID.
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ITC Terminates Investigation With Finding Of No Section 337 Violation In Certain Wireless Consumer Electronics Devices (337-TA-853)

By Eric Schweibenz
|
Feb
24
On February 19, 2014, the International Trade Commission (the “Commission”) issued a notice terminating the investigation with a finding of no violation of Section 337 in Certain Wireless Consumer Electronics Devices and Components Thereof (Inv. No. 337-TA-853). By way of background, this investigation is based on a July 24, 2012 complaint filed by Technology Properties Limited LLC and Phoenix Digital Solutions LLC, both of Cupertino, California, and Patriot Scientific Corporation of Carlsbad, California (collectively, “Complainants”) alleging violation of Section 337 in the importation into the U.S. and sale of certain wireless consumer electronics devices and components thereof that infringe one or more claims of U.S. Patent No. 5,809,336 (the ‘336 patent).  See our July 26, 2012 and August 24, 2012 posts for more details on the complaint and notice of investigation, respectively.  On September 6, 2013, ALJ E. James Gildea issued his initial determination (“ID”) finding no violation of Section 337 with respect to all of the named Respondents.  Specifically, ALJ Gildea found that (1) none of the accused products directly or indirectly infringed the asserted claims of the ‘336 patent, (2) the asserted claims of the ‘336 patent were not invalid, (3) the Respondents had not shown the accused LG product is covered by a license to the ‘336 patent, and (4) the Complainants had satisfied the domestic industry requirement.  See our November 5, 2013 post for more details  on ALJ Gildea’s ID.  On September 23, 2013, Complainants filed a petition for review of certain aspects of the final ID concerning asserted claims 6 and 13 of the ‘336 patent.  The Commission determined to review the final ID in part with respect to the claim construction and infringement of claims 6 and 13 of the ‘336 patent, as well as domestic industry.  See our December 2, 2013 post for more details on the Commission’s determination to review the ID.  According to the February 19, 2014 notice, the Commission determined that there was no violation of Section 337 with respect to the ‘336 patent.  Specifically, the Commission found that the Complainants satisfied the economic prong of the domestic industry requirement.  Further, the Commission affirmed the ID’s claim constructions as to claims 6 and 13 of the ‘336 patent.  The Commission also affirmed, with modification, ALJ Gildea’s finding that the accused products do not satisfy certain limitations of claims 6 and 13, and affirmed ALJ Gildea’s finding that Complainants failed to prove indirect infringement because they failed to prove direct infringement.  As such, the Commission terminated the investigation.
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ITC Decides To Review In Part Enforcement Initial Determination In Certain Dimmable Compact Fluorescent Lamps (337-TA-830)

By Eric Schweibenz
|
Mar
05
On February 26, 2014, the International Trade Commission (the “Commission”) issued a Notice determining to review in part an Enforcement Initial Determination (“EID”) issued by ALJ Thomas B. Pender on January 10, 2014 finding a violation of a consent order in Certain Dimmable Compact Fluorescent Lamps and Products Containing Same (Inv. No. 337-TA-830). By way of background, the Commission instituted an investigation based on a complaint filed by the Complainants in this investigation, Andrzej Bobel and Neptun Light, Inc. (collectively, “Neptun”), alleging the importation into the U.S., sale for importation, and sale within the U.S. after importation of certain dimmable compact fluorescent lamps (“CFLs”) that infringe claim 9 of U.S. Patent No. 5,434,480 (the ‘480 patent).  The complaint named numerous respondents, including MaxLite, Inc. (“MaxLite”).  On July 25, 2012, the Commission terminated the investigation with respect to MaxLite and entered a consent order preventing MaxLite from importing dimmable CFLs that infringe claim 9 of the ‘480 patent.  MaxLite petitioned the Commission for a modification of the consent order based on a district court proceeding regarding a covenant not to sue.  Additionally, Neptun filed a complaint requesting that the Commission institute a formal proceeding to investigate a violation of the consent order.  The Commission instituted a consolidated formal enforcement and modification proceeding to determine whether MaxLite was in violation of the consent order.  In the EID, ALJ Pender found that MaxLite’s accused CFL bulbs infringed claim 9 of the ‘480 patent, but that Neptun had not demonstrated infringement by MaxLite’s “dimmable CFL Faux Cans” (“Faux Cans”).  See our January 14, 2014 post for more details on this investigation. According to the Notice, Neptun filed a petition for review of the ALJ’s determination regarding claim construction and noninfringement by the Faux Cans.  After examining the record of the investigation, including the EID and parties’ submissions, the Commission determined to review the EID in part.  In particular, the Commission determined to review ALJ’s construction of the “resonant boosting circuit” limitation and ALJ Pender’s findings that Neptun did not demonstrate infringement by the Faux Cans because Neptun failed to adequately show that (i) there is resonance between the accused boosting capacitor and boosting inducer, and (ii) “the boosting capacitor stores and releases energy to improve the power factor.”  The Notice also states that the parties are requested to provide further briefing regarding the issues under review.  Additionally, the Notice provides that the Commission is particularly interested in responses to the questions listed in the Notice.  Written submissions are due by March 10, 2014 and reply submissions are due by March 17, 2014.
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ITC Decides Not to Review Initial Determination in Certain Electronic Digital Media Devices (337-TA-796)

By Eric Schweibenz
|
Mar
13
On March 5, 2014, the International Trade Commission (the “Commission”) issued a Notice determining not to review an Initial Determination (“ID”) issued by ALJ Thomas B. Pender denying Respondents’ motion for partial return of bonds and denying Complainant’s motion for forfeiture of bonds in Certain Electronic Digital Media Devices and Components Thereof (Inv. NO. 337-TA-796). By way of background, this investigation is based on a complaint filed by Apple Inc. (“Apple”) alleging violations of Section 337 by Respondents Samsung Electronics Co, Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively, “Samsung”) for the importation into the U.S., sale for importation, and the sale within the U.S. after importation of certain electronic digital media devices and components thereof by reason of infringement of certain claims of U.S. Patent Nos. 7,479,949 (the ‘949 patent), RE 41,922 (the ’922 patent), 7,863,533 (the ‘533 patent), 7.789,697 (the ‘697 patent), 7,912,510 (the ‘501 patent), D558,757 (the D’757 patent), and D618,678 (the D’678 patent).  On October 24, 2012 ALJ Pender issued his final ID in the investigation finding a violation of Section 337 with respect to certain asserted claims of the D’678, the ‘949, the ‘922, and the ‘501 patents.  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, and also 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.  On May 28, 2013, the Commission issued a notice determining to review the Remand ID in its entirety.  See our May 31, 2013 post for more details.  On August 9, 2013, the Commission issued a notice finding a violation of Section 337 and issuing a limited exclusion order and cease and desist order against Samsung.  Specifically, the Commission found that certain Samsung smartphones and tablet computers infringe claims 1, 4-6, 10 and 17-20 of the ‘949 patent and claims 1-4 and 8 of the ‘501 patent, that the asserted claims of the ‘949 and ‘501 patents have not been proven to be invalid, and that a domestic industry exists relating to articles protected by the ‘949 and ‘501 patents.  See our August 12, 2013 post for more details.  In light of the Commission’s final determination, it set a bond of 1.25% of the entered value during the period of Presidential review.  On August 12, 2013, two of the Respondents posted a bond with the Commission and on October 9, 2013, the U.S. Trade Representative issued a notice determining not to disapprove of the Commission’s remedial orders.  See our October 16, 2013 post for more details.  On December 23, 2013, Samsung filed a motion for partial return of its bonds and on January 6, 2014, Apple filed a motion for forfeiture of bonds and an opposition to Samsung’s motion for partial return of its bonds.  On January 17, 2014, ALJ Pender issued Order No. 29 denying both motions.  No party petitioned for review, and the Commission determined not to review the Order.
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ITC Reverses Finding Of Violation Of Section 337 And Terminates Investigation In Certain Electronic Imaging Devices (337-TA-850)

By Eric Schweibenz
|
Mar
19
On March 14, 2014, the International Trade Commission (the “Commission”) issued a notice in Certain Electronic Imaging Devices (Inv. No. 337-TA-850).  In the notice, the Commission determined to reverse the Initial Determination (“ID”) issued by ALJ Theodore R. Essex on September 30, 2013—which had found a violation of Section 337—and terminated the investigation. By way of background, the investigation is based on a complaint filed by Flashpoint Technology, Inc. (“Flashpoint”) alleging a violation of Section 337 in the importation and sale of certain electronic imaging devices that infringe one or more claims of U.S. Patent Nos. 6,504,575 (the ‘575 patent), 6,222,538 (the ‘538 patent), 6,400,471 (the ‘471 patent), and 6,223,190 (the ‘190 patent).  See our May 25, 2012 post for more details on the complaint and our June 27, 2012 post for more information about the Notice of Investigation.  The ITC instituted an investigation on June 25, 2012.  The ‘575 patent was later terminated from the investigation.  The remaining Respondents as of the time of the ID were HTC Corp. and HTC America, Inc. (collectively, “HTC”), Huawei Technologies Co., Ltd. and FutureWei Technologies, Inc. d/b/a Huawei Technologies (USA) (collectively, “Huawei”), and ZTE Corp. and ZTE (USA) Inc. (collectively, “ZTE”). In the ID, ALJ Essex determined that a violation of Section 337 had occurred with respect to the ‘538 patent.  See our October 18, 2013 post for more details.  Specifically, the ALJ concluded that two of the accused HTC smartphones (the HTC Vivid and HTC Droid Incredible 4G LTE) infringed the asserted claims, but that none of the other accused devices infringed the asserted patents.  The ALJ also determined that Flashpoint met the economic prong of the domestic industry requirement as to all asserted patents, and that the smartphones of Flashpoint’s licensees met the technical prong of the domestic industry requirement as to the ‘538 patent, but not as to the ‘471 or ‘190 patents.  Finally, the ALJ determined that the asserted patents were not invalid in view of the prior art or the on-sale bar and that the ‘190 and ‘538 patents were not unenforceable for failure to name an inventor. On December 16, 2013, the Commission determined to review certain findings in the ID and issued a notice requesting briefing from the parties on fourteen specific questions.  See our December 23, 2013 post for more details. According to the March 14 notice, after examining the record of the investigation, including the ID and the parties’ submissions, the Commission determined to reverse ALJ Essex’s finding of a violation of Section 337 and to find no violation of Section 337 with respect to the asserted patents.  In particular, the Commission found that:  (1) the HTC Vivid and HTC Droid Incredible 4G LTE smartphones do not infringe the asserted claims of the ‘538 patent; (2) Flashpoint has met the technical prong of the domestic industry requirement for the ‘538 patent; (3) Respondents have not shown that the asserted claims of the ‘538 patent are obvious; (4) the ALJ correctly construed the term “operating system” in the asserted claims of the ‘471 patent; (5) the accused HTC, Huawei, and ZTE products do not infringe the asserted claims of the ‘471 patent; (6) Flashpoint has not proved the technical prong of the domestic industry requirement for the ‘471 patent; (7) Respondents have not shown that the asserted claims of the ‘471 patent are anticipated; (8) the accused HTC, Huawei, and ZTE products do not infringe the asserted claim of the ‘190 patent; (9) Flashpoint has not proved the technical prong of the domestic industry requirement for the ‘190 patent; (10) Respondents have not shown that the asserted claim of the ‘190 patent is anticipated or rendered obvious; (11) Respondents have not shown that the asserted claims of the ‘538, ‘471, and ‘190 patents are invalid in view of the on-sale bar; (12) Respondents have not shown that claim 19 of the ‘538 patent is unenforceable due to failure to name an inventor; and (13) Flashpoint has proved the economic prong of the domestic industry requirement with respect to the ‘538, ‘471, and ‘190 patents.  The Commission further determined to take no position on whether the asserted claim of the ‘190  patent is anticipated or rendered obvious by certain additional prior art. In view of these findings, the Commission reversed ALJ Essex’s ID, found no violation of Section 337, and terminated the investigation.  The notice states that a Commission opinion will issue promptly.  We will provide additional information once the public version of the opinion issues.
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ITC Decides To Review Initial Determination Granting Summary Determination In Certain Crawler Cranes (337-TA-887)

By Eric Schweibenz
|
Mar
20
On March 19, 2014, the International Trade Commission (the “Commission”) issued a notice in Certain Crawler Cranes and Components Thereof (Inv. No. 337-TA-887).  In the notice, the Commission determined to review in part Order No. 17 granting Complainant Manitowoc Cranes, LLC’s (“Manitowoc”) motion that it satisfied the economic prong of the domestic industry requirement as to its patent infringement allegations and that it has satisfied the requirement for injury to a domestic industry for its trade secret misappropriation allegations.  Specifically, the Commission determined to review the findings in Order No. 17 as to the economic prong of the domestic industry requirement.   By way of background, this investigation is based on a June 12, 2013 complaint filed by Manitowoc alleging violation of Section 337 by Respondents Sany Heavy Industry Co., Ltd. and Sany America, Inc. in the importation into the U.S. and sale of certain crawler cranes and components thereof that infringe one or more claims of U.S. Patent Nos. 7,546,928 and 7,967,158, and that were designed and manufactured using Manitowoc Cranes’ misappropriated trade secrets.  See our June 14, 2013 and July 15, 2014 posts for more details on the complaint and Notice of Investigation, respectively.  As explained in our February 19, 2014 post, ALJ Shaw granted Manitowoc’s summary determination motion finding that Manitowoc had satisfied the economic prong of the domestic industry requirement and the domestic industry requirement for trade secret misappropriation. According to the March 19, 2014 notice, the Commission determined to review the ID in part with respect to the ALJ’s findings regarding subsection 337(a)(3).  Specifically, the Commission modified ALJ Shaw’s findings to specifically note the particular evidentiary support showing how Manitowoc satisfied the economic prong of the domestic industry requirement under sections 337(a)(3)(A) and (B).  Also, the Commission took no position on whether Manitowoc satisfied the economic prong of the domestic industry requirement under section 337(a)(3)(C).
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ITC Finds Violation Of Section 337 And Issues Cease And Desist Orders In Certain Digital Models, Digital Data, And Treatment Plans For Use, In Making Incremental Dental Positioning Adjustment Appliances Made Therefrom (337-TA-833)

By Eric Schweibenz
|
Apr
07
On April 3, 2014, the International Trade Commission (the “Commission”) issued a notice in Certain Digital Models, Digital Data, and Treatment Plans for Use in Making Incremental Dental Positioning Adjustment Appliances, the Appliances Made Therefrom, and Methods of Making the Same (Inv. No. 337-TA-833).  In the notice, the Commission determined to affirm-in-part, modify-in-part, and reverse-in-part the Initial Determination (“ID”) issued by former ALJ Robert K. Rogers, Jr. on May 6, 2013.  In addition, the Commission found a violation of Section 337, issued cease and desist orders, and terminated the investigation. By way of background, the Commission instituted this investigation on March 30, 2012 based on a complaint filed by Align Technology, Inc. (“Align”).  In the Complaint, Align alleged that Respondents ClearCorrect Operating, LLC and ClearCorrect Pakistan (Private), Ltd. (collectively, “Respondents”) violated Section 337 in the importation into the U.S. and sale of certain digital models, digital data, or treatment plans for use in making incremental dental positioning adjustment appliances that infringe—or are made, produced, or processed by means of a process that infringes—one or more claims of U.S. Patent Nos. 6,217,325 (the ‘325 patent); 6,705,863 (the ‘863 patent); 6,626,666 (the ‘666 patent); 8,070,487 (the ‘487 patent); 6,471,511 (the ‘511 patent); 6,722,880 (the ‘880 patent); and 7,134,874 (the ‘874 patent).  See our March 2, 2012 and April 6, 2012 posts for more details on the complaint and Notice of Investigation, respectively. On May 6, 2013, ALJ Rogers issued the ID.  In the ID, the ALJ found that Respondents had violated Section 337 with respect to the ‘325, ‘880, ‘487, ‘511, ‘863, and ‘874 patents.  However, the ALJ found no violation with respect to the ‘666 patent.  ALJ Rogers also recommended the issuance of cease and desist orders directed to Respondents.  See our June 24, 2013 post for more details on the ID. On July 25, 2013, the Commission determined to review the ID in its entirety and requested briefing on the issues on review and on remedy, the public interest, and bond.  The Commission then extended the target date for completion of the investigation on four separate occasions, first to November 1, 2013, then to January 17, 2014, then to March 21, 2014, and finally to April 3, 2014.  As part of the third such extension, the Commission requested additional briefing from the parties and the public.  See our January 27, 2014 post for more details. According to the April 3 notice, after considering the ID, the relevant portions of the record, and the submissions of the parties and the public, the Commission determined to affirm-in-part, modify-in-part, and reverse-in-part the ID and to find a violation of Section 337.  In particular, the Commission affirmed the ALJ’s conclusion that the accused products are “articles” within the meaning of Section 337(a)(1)(B) and that the mode of bringing the accused products into the U.S. constitutes importation of the accused products into the U.S. pursuant to Section 337(a)(1)(B).  The Commission further determined to find a violation of Section 337 with respect to (i) claims 1 and 4-8 of the ‘863 patent; (ii) claims 1, 3, 7, and 9 of the ‘666 patent; (iii) claims 1, 3, and 5 of the ‘487 patent; (iv) claims 21, 30, 31, and 32 of the ‘325 patent; and (v) claim 1 of the ‘880 patent.  The Commission also issued cease and desist orders directed to the Respondents, with an exemption for activities related to treatment of existing patients in the U.S.  Lastly, the Commission terminated the investigation. The notice states that the Commission issued an opinion setting forth the reasons for its determination.  According to the notice, Commissioner Johanson dissented and filed a dissenting opinion.  We will provide additional information once the public version of the Commission opinion and dissenting opinion issue.
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ITC Decides To Review In Part Final Initial Determination In Certain Compact Fluorescent Reflector Lamps (337-TA-872)

By Eric Schweibenz
|
Apr
10
On April 8, 2014, the International Trade Commission (“the Commission”) issued a notice in Certain Compact Fluorescent Reflector Lamps, Products Containing Same and Components Thereof (Inv. No. 337-TA-872).  In the notice, the Commission determined to review, in part, ALJ David P. Shaw’s Final Initial Determination (“ID”) finding a violation of Section 337 by Respondents Maxlite, Inc. (“Maxlite”), Satco Products, Inc. (“Satco”), and Litetronics International, Inc. (“Litetronics”) (collectively, “Respondents”).  By way of background, the investigation is based on a complaint filed by Andrzej Bobel and Neptun Light, Inc. (collectively, “Neptun”) alleging violation of Section 337 in the importation into the U.S. and sale of certain compact fluorescent reflector lamps (“reflector CFLs”), and products and components containing same, that infringe claims 1, 2, 10, and 11 of U.S. Patent No. 7,053,540 (the ‘540 patent).  See our January 30, 2013 and March 1, 2013 posts for more details on Neptun’s complaint and the Notice of Investigation, respectively.  In Order No. 20, ALJ Shaw terminated the investigation as to Respondent Technical Consumer Products, Inc. based on a settlement agreement.  Thus, Maxlite, Satco, and Litetronics remained as respondents to the investigation. On February 3, 2014, ALJ Shaw determined that Respondents importation and sale of certain reflector CFLs infringed asserted claims 1, 2, 10, and 11.  Respondents did not contest that the accused products satisfied the limitations of dependent claims 2, 10, and 11.  See our March 14, 2014 post for more details on the public version of the ID. On February 18, 2014, Respondents petitioned the Commission for review of several of ALJ Shaw’s findings.  Neptun also petitioned for review of the ALJ’s finding that it failed to demonstrate specific investments in licensing activities under 337(a)(3)(C)—ALJ Shaw otherwise found that Neptun had satisfied the economic prong of the domestic industry requirement through plant and equipment, and labor and capital. The Commission determined to review ALJ Shaw’s findings on the economic prong of the domestic industry requirement, the construction of the term “mating opening,” and the ALJ’s finding on infringement. According to the notice, the Commission requested briefing from the parties on the following issues:
  • The portion of Neptun’s investments and expenditures associated with the articles protected by the ‘540 patent.
  • Whether Neptun’s investments and expenditures are “significant” under 337(a)(3)(A) and (B).
  • Whether Neptun made substantial investment in engineering or research and development under 337(a)(3)(C).
  • The proper construction of the term “mating opening.”
  • An explanation of how Respondents accused products satisfy (or do not satisfy) the claim limitations “said cavity having a first circumferential flange” and “the first circumferential flange of the reflector cavity.”
  • An explanation of how Respondents accused products satisfy (or do not satisfy) the claim limitation “said base being inside said defined cavity of said reflector and located inside said mating opening.”
  • An explanation of how Respondents accused products satisfy (or do not satisfy) the claim limitations “said base having a second circumferential flange” and “the second circumferential flange of the light source base.”
In addition, the Commission requested written submissions from the parties, interested government agencies, and any other interested persons on the form of remedy, if any, that should be ordered, the public interest factors associated with that determination, and bonding. Written submissions are due by April 22, 2014, with reply submissions due by April 29, 2014.
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ITC Finds Violation Of Consent Order And Issues Civil Penalty In Certain Dimmable Compact Fluorescent Lamps (337-TA-830)

By Eric Schweibenz
|
Apr
11
On April 10, 2014, the International Trade Commission (the “Commission”) issued a notice in Certain Dimmable Compact Fluorescent Lamps and Products Containing Same (Inv. No. 337-TA-830).  In the notice, the Commission determined to affirm-in-part and reverse-in-part the Enforcement Initial Determination (“EID”) issued by ALJ Thomas B. Pender on January 10, 2014.  In addition, the Commission found a violation of a consent order, issued a civil penalty order, and terminated the enforcement proceeding. By way of background, the Commission instituted an investigation based on a complaint filed by the Complainants in this investigation, Andrzej Bobel and Neptun Light, Inc. (collectively, “Neptun”), alleging the importation into the U.S., sale for importation, and sale within the U.S. after importation of certain dimmable compact fluorescent lamps (“CFLs”) that infringe claim 9 of U.S. Patent No. 5,434,480 (the ‘480 patent).  The complaint named numerous respondents, including MaxLite, Inc. (“MaxLite”).  On July 25, 2012, the Commission terminated the investigation with respect to MaxLite and entered a consent order preventing MaxLite from importing dimmable CFLs that infringe claim 9 of the ‘480 patent.  MaxLite petitioned the Commission for a modification of the consent order based on a district court proceeding regarding a covenant not to sue.  Additionally, Neptun filed a complaint requesting that the Commission institute a formal proceeding to investigate a violation of the consent order.  The Commission instituted a consolidated formal enforcement and modification proceeding to determine whether MaxLite was in violation of the consent order.  In the EID, ALJ Pender found that MaxLite’s accused CFL bulbs infringed claim 9 of the ‘480 patent, but that Neptun had not demonstrated infringement by MaxLite’s “dimmable CFL Faux Cans” (“Faux Cans”).  See our January 14, 2014 post for more details on the EID.  On February 26, 2014, the Commission determined to review the EID in part and requested briefing on certain patent-related issues and on assessment of the civil penalty.  See our March 5, 2014 post for more details. According to the April 10 notice, after considering the record of the investigation, including the EID, the petitions for review and responses thereto, and the parties’ briefing in response to the Commission’s notice of review, the Commission determined to affirm-in-part and reverse-in-part the EID.  In particular, the Commission reversed ALJ Pender’s finding that claim 9 has a “bi-directionality” requirement imposed by disavowal in the patent specification.  The Commission also reversed the portion of the non-infringement determination regarding the Faux Cans predicated on this claim construction.  However, the Commission affirmed the ALJ’s determination that Neptun had failed to demonstrate infringement by the Faux Cans even absent such a “bi-directionality” requirement.  The Commission also determined to impose a civil penalty of $10,000 on MaxLite for violation of the consent order as to the accused CFL bulbs. The notice states that a Commission opinion is forthcoming.  We will provide additional information once the public version of the opinion issues.
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ITC Finds Violation of Section 337, Issues A Limited Exclusion Order, And Terminates Investigation In Certain Encapsulated Integrated Circuit Devices (337-TA-501)

By Eric Schweibenz
|
Apr
14
On April 4, 2014, the International Trade Commission (the “Commission”) issued a notice in Certain Encapsulated Integrated Circuit Devices and Products Containing Same (Inv. No. 337-TA-501).  In the notice, the Commission found a violation of Section 337 by Respondents Carsem (M) SdnBhd, Carsem Semiconductor Sdn Bhd, and Carsem, Inc. (collectively, “Carsem”).  The Commission issued a limited exclusion order and terminated the investigation. By way of background, the Commission instituted an investigation based on a complaint filed by Amkor Technology Inc. (“Amkor”), alleging the importation into the U.S., sale for importation, and sale within the U.S. after importation of certain encapsulated integrated circuit devices that infringe claims of U.S. Patent Nos. 6,433,277 (the ‘277 patent), 6,630,728 (the ‘728 patent), and 6,455,356 (the ‘356 patent) (collectively, “the Asserted Patents”).  The investigation also concerned a third-party, ASAT, Inc. (“ASAT”) and its invention (the “ASAT invention”), which Carsem argued was invalidating prior art to Amkor’s Asserted Patents. On November 18, 2004, ALJ Charles E. Bullock issued a final initial determination (“Final ID”) finding no violation of Section 337.  After reviewing the Final ID, the Commission modified ALJ Bullock’s claim construction and remanded the investigation, instructing ALJ Bullock “to conduct further proceedings and make any new findings or changes to his original findings that are necessitated by the Commission’s new claim construction.”  On November 9, 2005, ALJ Bullock issued a remand initial determination (“Remand ID”) finding a violation of Section 337 with regard to six claims of the ‘277 patent and finding no violation of the ‘728 or ’356 patents.  The investigation was delayed due to difficulty obtaining certain documents from ASAT that Carsem asserted were critical for its affirmative defenses.  On July 1, 2009, after ASAT had complied with a subpoena requesting the documents, the Commission issued a notice and order remanding the investigation to ALJ Bullock in order for the ASAT documents to be considered.  On October 30, 2009, ALJ Bullock issued a supplemental ID (“First Supplemental ID”), finding that the ASAT invention was not prior art and reaffirming the Section 337 violation.  On February 18, 2010, the Commission revered ALJ Bullock’s finding that the ASAT invention was not prior art to the Asserted Patents and remanded the investigation for ALJ Bullock to make necessary findings in light of the determination that the ASAT invention was prior art.  On March 22, 2010, ALJ Bullock issued a Supplemental ID (“Second Supplemental ID”), finding that the ‘277 and ‘728 patents were invalid in view of the ASAT prior art and determining that there was no violation of section 337.  The Commission determined not to review the ALJ’s Remand ID and Second Supplemental ID and determined that there was no violation of Section 337.  Amkor appealed the Commission’s decision to the U.S. Court of Appeals for the Federal Circuit (the “Federal Circuit”), which reversed the Commission’s determination that the ‘277 patent is invalid under 35 U.S.C. §102(g), declined to affirm the invalidity determination on alternative grounds raised by Carsem, and remanded for further proceedings.  On October 5, 2012, Carsem filed a combined petition for panel rehearing and for rehearing en banc, which the Federal Circuit denied.  On January 14, 2013, the Commission issued an Order directing the parties to submit their comments regarding what further proceedings must be conducted to comply with the Federal Circuit’s judgment.  On June 5, 2013, the Commission issued a Notice requesting briefing on remedy, bonding, and public interest, as well as responses to certain questions regarding the economic prong of the domestic industry requirement and the public interest.  See our July 28, 2010, September 7, 2010, and August 27, 2012 posts for more background details on this matter.    According to the April 4, 2014 notice, after considering the record of the investigation, including the parties’ submissions in response to the Commission’s Order and Notice, the Commission determined to affirm ALJ Bullock’s First Supplemental ID and Remand ID finding a violation of Section 337.  The Commission also determined to:
  • Affirm ALJ Bullock’s determination that claims 2-4 and 21-23 of the ‘277 patent are not invalid over the ASAT invention;
  • Affirm ALJ Bullock’s determination that Carsem failed to show that the equitable estoppel defense based applied in this investigation;
  • Affirm that Carsem failed to prove that Amkor had deceived the standard setting body or that the’277 patent is necessary to practice JEDEC’s standards and that Carsem failed to show that its legal estoppel defense applied in this investigation;
  • Affirm with modifications ALJ Bullock’s finding that Amkor satisfied the economic prong of the domestic industry requirement under subsection 337(a)(3)(A);
  • Affirm with modifications ALJ Bullock’s finding that Amkor failed to satisfy the economic prong of the domestic industry requirement under subsection 337(a)(3)(B);
  • Take no position on ALJ Bullock’s findings with respect to whether Amkor satisfied the economic prong of the domestic industry requirement under subsection 337(a)(3)(C).
Accordingly, the Commission determined that the appropriate form of relief in the investigation was a limited exclusion order prohibiting the unlicensed entry of certain encapsulated integrated circuit devices covered by claims 2-4 and 21-23 of the ‘277 patent that are manufactured abroad by, or on behalf of, or imported by, or on behalf of, Carsem.  The Commission also determined that the public interest factors did not preclude issuing the limited exclusion order and that Amkor was required to post a bond in the amount of a reasonable royalty rate of $0.00025 per contact per covered encapsulated integrated circuit device imported during the period of Presidential review.
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ITC Issues Final Determination Of Violation and Issues Remedial Orders In Certain Optoelectronic Devices for Fiber Optic Communications (337-TA-860)

By Eric Schweibenz
|
Apr
23
On April 17, 2014, the International Trade Commission (the “Commission”) issued a notice in Certain Optoelectronic Devices for Fiber Optic Communications, Components Thereof, and Products Containing the Same (Inv. No. 337-TA-860).  In the notice, the Commission affirmed the Initial Determination (“ID”) that was issued by ALJ Theodore R. Essex on December 13, 2013, finding a violation of Section 337.  As such, the Commission determined to issue a limited exclusion order and cease and desist orders, and also terminated the investigation. By way of background, this investigation is based on a complaint filed by Avago Technologies Fiber IP (Singapore) Pte. Ltd., Avago Technologies General IP (Singapore) Pte. Ltd., and Avago Technologies U.S. Inc. (collectively, “Avago”) alleging violation of Section 337 in the importation and sale of certain optoelectronic devices for fiber optic communications, components thereof, and products containing the same that infringe one or more claims of U.S. Patent Nos. 6,947,456 (the ‘456 patent) and 5,596,595 (the ‘595 patent).  See our September 26, 2012 and October 30, 2012 posts for more details about the complaint and Notice of Investigation, respectively.  On December 13, 2013, ALJ Essex issued a final ID determining that a violation of section 337 had occurred by reason of infringement of certain claims of the ‘595 patent and recommended cease and desist orders against respondents FCI SA, FCI Deutschland GmdH,  FCI USA, LLC (collectively, “FCI”), Mellanox Technologies, Ltd., and Mellanox Technologies, Inc. (collectively, “Mellanox”).  See our January 22, 2014 post for more details on the ID.  On February 12, 2014, the Commission determined to review the ID in-part and requested briefing on the issues on review and on remedy, the public interest, and bond.  According to the April 17, 2014 notice, after examining the record in the investigation, including the parties’ submissions, the Commission determined to (a) affirm the ALJ’s claim construction of the ‘595 patent’s limitation “current-spreading layer” and infringement and domestic industry determinations relating to that limitation with certain modifications, (b) affirm the ALJ’s finding that Avago met the economic prong with respect to the ‘595 patent under U.S.C. 1337(a)(3)(C), (c) affirm the ALJ’s infringement and domestic industry (technical prong) determinations as to the ‘456 patent with certain modifications in rationale, and (d) affirm the ALJ’s finding that Avago met the economic prong with respect to the ‘456 patent under U.S.C. 1337(a)(3)(C). As to relief, the notice states that the Commission determined the appropriate relief includes (1) a limited exclusion order prohibiting the unlicensed entry of certain optoelectronic devices for fiber optic communications, components thereof, and products containing the same covered by one or more of claims 14 and 19 of  the ‘595 patent and that are manufactured abroad by or on behalf of, or imported by or on behalf of, respondents IPtronics A/S, IPtronics Inc., FCI and Mellanox and (2) cease and desist orders prohibiting importing, selling, marketing, advertising, distributing, transferring (except for exportation), and soliciting U.S. agents or distributors for, optoelectronic devices for fiber optic communications, components thereof, and products containing the same covered by one or more of claims 14 and 19 of the ‘595 patent and that are manufactured abroad by or on behalf of, or imported by or on behalf of, respondents FCI USA, LLC and Mellanox.  The Commission also determined that the public interest factors did not preclude issuance of the limited exclusion order and that the respondents should be required to post a bond in the amount of 3 percent of the entered value of the products covered by the exclusion order and cease and desist orders during the Presidential review period.
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ITC Issues Public Version Of Opinion In Certain Dimmable Compact Fluorescent Lamps (337-TA-830)

By Eric Schweibenz
|
Apr
29
Further to our April 11, 2014 post, on April 25, 2014, the International Trade Commission (the “Commission”) issued the public version of its opinion finding a violation of a consent order and issuing a civil penalty in Certain Dimmable Compact Fluorescent Lamps and Products Containing Same (Inv. No. 337-TA-830). By way of background, the Commission instituted an investigation based on a complaint filed by the Complainants in this investigation, Andrzej Bobel and Neptun Light, Inc. (collectively, “Neptun”), alleging the importation into the U.S., sale for importation, and sale within the U.S. after importation of certain dimmable compact fluorescent lamps (“CFLs”) that infringe claim 9 of U.S. Patent No. 5,434,480 (the ‘480 patent).  The complaint named numerous Respondents, including MaxLite, Inc. (“MaxLite”).  On July 25, 2012, the Commission terminated the investigation with respect to MaxLite and entered a consent order preventing MaxLite from importing dimmable CFLs that infringe claim 9 of the ‘480 patent.  MaxLite petitioned the Commission for a modification of the consent order based on a district court proceeding regarding a covenant not to sue.  Additionally, Neptun filed a complaint requesting that the Commission institute a formal proceeding to investigate a violation of the consent order.  The Commission instituted a consolidated formal enforcement and modification proceeding to determine whether MaxLite was in violation of the consent order.  On January 10, 2014, ALJ Thomas B. Pender issued an Enforcement Initial Determination (“EID”) in the investigation.  In the EID, ALJ Pender found that MaxLite’s accused CFL bulbs infringed claim 9 of the ‘480 patent, but that Neptun had not demonstrated infringement by MaxLite’s “dimmable CFL Faux Cans” (“Faux Cans”).  See our January 14, 2014 post for more details on the EID.  On February 26, 2014, the Commission determined to review the EID in part and requested briefing on certain patent-related issues and on assessment of the civil penalty.  See our March 5, 2014 post for more details. In the opinion, the Commission determined to affirm-in-part and reverse-in-part the EID.  In particular, the Commission reversed ALJ Pender’s finding that claim 9 has a “bi-directionality” requirement imposed by disavowal in the patent specification.  The Commission also reversed the portion of the non-infringement determination regarding the Faux Cans predicated on this claim construction.  However, the Commission affirmed the ALJ’s determination that Neptun had failed to demonstrate infringement by the Faux Cans even absent such a “bi-directionality” requirement.  The Commission also determined to impose a civil penalty of $10,000 on MaxLite for violation of the consent order as to the accused CFL bulbs. Claim Construction ALJ Pender had found that claim 9 of the ‘480 patent includes a “bi-directionality” requirement for the claimed “resonant boosting circuit.”  Specifically, the ALJ had found that the claim required that energy flow back and forth between a boosting inductor and a boosting capacitor, rather than only in one direction from the boosting inductor to the boosting capacitor.  This was based on the ALJ’s determination that the patentee had disavowed non-bi-directional embodiments by stating in the specification that “the boosting inductance and the boosting capacitance are operable to resonantly interact.” The Commission reversed the ALJ’s determination that the patentee had disavowed non-bi-directional embodiments.  In particular, the Commission reviewed Federal Circuit case law concerning disavowal, and determined that the statement in the ‘480 patent specification did not constitute a clear disavowal such that the patentee had surrendered claim scope.  Accordingly, the Commission reversed the ALJ’s imposition of a “bi-directionality” requirement in claim 9. Infringement With respect to infringement, the Commission noted that the EID had presented two independent bases for finding that the Faux Cans do not infringe claim 9 of the ‘480 patent.  The first was the “bi-directionality” requirement, which, as discussed above, the Commission had reversed as a matter of claim construction.  Since the Commission had found that there was no “bi-directionalty” requirement in claim 9, the Commission reversed this first basis for finding non-infringement. However, there was a second independent basis for finding non-infringement, namely that Neptun had failed to demonstrate that the accused boosting capacitor in the Faux Cans stores and releases energy to improve power factor.  In particular, ALJ Pender had found that Neptun had failed to present sufficient evidence to demonstrate infringement of this aspect of the claim, and that Neptun’s expert’s testimony on the issue was conclusory.  The Commission affirmed this finding, and thus affirmed the ultimate finding of non-infringement by the Faux Cans even absent a “bi-directionality” requirement. Civil Penalty Even though the Commission had found that the Faux Cans did not infringe claim 9, there was still a violation of the consent order because it was undisputed that the accused CFL bulbs infringe claim 9.  However, MaxLite had only sold twenty such bulbs on a single day after the issuance of the consent order in the underlying investigation.  Moreover, this sale of the twenty bulbs in violation of the consent order was apparently inadvertent. In determining an appropriate civil penalty for MaxLite’s violation of the consent order, the Commission analyzed the so-called EPROMs factors set forth in Certain Erasable Programmable Read Only Memories (“EPROMS”), Inv. No. 337-TA-276 (Enforcement), Comm’n Op. at 23-24, 26 (July 19, 1991).  Those factors are:  (1) the good or bad faith of the respondent; (2) any injury due to the infringement; (3) the respondent’s ability to pay the assessed penalty; (4) the extent to which the respondent has benefited from its violations; (5) the need to vindicate the authority of the Commission; and (6) the public interest. The Commission analyzed each of these factors, and found that:  (1) MaxLite’s sale of the twenty CFL bulbs was inadvertent, and there was no bad faith; (2) Neptun had failed to demonstrate any specific injury from the sale of the twenty bulbs; (3) MaxLite would be able to pay the maximum penalty of $100,000 for the one-day violation of the consent order, if necessary; (4) MaxLite had not obtained any specific benefit from the sale of the twenty bulbs; (5) although MaxLite’s sale of the twenty bulbs appeared to have been accidental, the need to vindicate the Commission’s authority to remediate the violation of the consent order was a serious concern; and (6) public interest considerations did not weigh against the imposition of a meaningful civil penalty under the present circumstances. Based on these six factors, the Commission determined that a reduction in the maximum permissible penalty was appropriate under the present circumstances.  Accordingly, the Commission determined to impose a civil penalty of $10,000.
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ITC Issues Public Version Of Opinion Finding No Violation Of Section 337 In Certain Electronic Imaging Devices (337-TA-850)

By Eric Schweibenz
|
May
02
On April 21, 2014, the International Trade Commission (the “Commission”) issued the public version of its opinion finding no violation of Section 337 in Certain Electronic Imaging Devices (Inv. No. 337-TA-850). By way of background, the investigation is based on a complaint filed by Flashpoint Technology, Inc. (“Flashpoint”) alleging a violation of Section 337 in the importation and sale of certain electronic imaging devices that infringe one or more claims of U.S. Patent Nos. 6,504,575 (the ‘575 patent), 6,222,538 (the ‘538 patent), 6,400,471 (the ‘471 patent), and 6,223,190 (the ‘190 patent).  See our May 25, 2012 post for more details on the complaint and our June 27, 2012 post for more information about the Notice of Investigation.  The ‘575 patent was later terminated from the investigation.  The remaining Respondents at the time of the ID were HTC Corp. and HTC America, Inc. (collectively, “HTC”), Huawei Technologies Co., Ltd. and FutureWei Technologies, Inc. d/b/a Huawei Technologies (USA) (collectively, “Huawei”), and ZTE Corp. and ZTE (USA) Inc. (collectively, “ZTE”). In the ID, ALJ Essex determined that a violation of Section 337 had occurred with respect to the ‘538 patent.  See our October 18, 2013 post for more details.  Specifically, the ALJ concluded that two of the accused HTC smartphones (the HTC Vivid and HTC Droid Incredible 4G LTE (“HTC Incredible”)) infringed the asserted claims, but that none of the other accused devices infringed the asserted patents.  The ALJ also determined that Flashpoint met the economic prong of the domestic industry requirement as to all asserted patents, and that the smartphones of Flashpoint’s licensees met the technical prong of the domestic industry requirement as to the ‘538 patent, but not as to the ‘471 or ‘190 patents.  Finally, the ALJ determined that the asserted patents were not invalid in view of the prior art or the on-sale bar and that the ‘190 and ‘538 patents were not unenforceable for failure to name an inventor. On December 16, 2013, the Commission determined to review certain findings in the ID and issued a notice requesting briefing from the parties on fourteen specific questions.  See our December 23, 2013 post for more details.  According to a Notice issued on March 14, 2014, the Commission determined to reverse ALJ Essex’s finding of a violation of Section 337 and to find no violation of Section 337 with respect to the asserted patents.  See our March 19, 2014 post for more information about the Notice.  We now provide additional details of the opinion. The ‘538 Patent The Commission reversed the ALJ’s finding of induced infringement, determining that Flashpoint did not present sufficient evidence to show that HTC possessed specific intent to induce infringement.  Specifically, the Commission determined that information in instruction manuals that could lead to direct infringement was insufficient without additional evidence showing that HTC intended the devices to be used in an infringing manner.  The Commission agreed with the ALJ that the accused HTC devices do not directly infringe any of the asserted patents, reviewing the ALJ’s findings with respect to each of the accused devices in view of particular claim limitations.  In particular, the Commission affirmed the ALJ’s determination that the HTC Vivid practices claims 1 and 19 of the ‘538 patent and that the HTC Incredible infringed claim 19 of the ‘538 patent.  However, the Commission held that the HTC Incredible does not infringe claim 1 of the ‘538 patent, determining that the ALJ’s analysis of the claim limitation “overlay bar” was incorrect.  Specifically, the “overlay bar” of claim 1 requires interactive instructions, and the HTC Incredible includes an overlay bar, but not an overlay bar with interactive instructions. HTC’s obviousness argument was based primarily on prior art that was considered by the U.S. Patent & Trademark Office during reexamination of the ‘538 patent, with three additional references cited to allegedly show the “overlay bar” limitation.  The Commission determined that none of the secondary references show an “overlay bar” as recited by the claims of the asserted patents, and therefore the Commission affirmed the ALJ’s finding of non-obviousness.  The Commission also affirmed the ALJ’s finding that there was no “on-sale” bar, as the product at issue was not “ready for patenting,” as required by case law. The Commission also affirmed the ALJ’s findings that Flashpoint proved the technical prong of the domestic industry requirement with respect to the ‘538 patent, based on its licensed Apple and Motorola smart phones. Lastly, the Commission affirmed the ALJ’s findings that Respondents failed to show by clear and convincing evidence that the ‘538 patent was unenforceable for failure to name an inventor. The ‘471 Patent The parties’ dispute as to infringement was centered on the construction of the term “operating system.”  According to Flashpoint, “operating system” does not include the kernel or device drivers, although HTC argued that it included at least the kernel.  The Commission noted that “Flashpoint’s own witnesses confirmed that the kernel is understood to be the core of the operating system,” and agreed with the ALJ’s determination that the term “operating system” had its plain and ordinary meaning.  The plain and ordinary meaning included the kernel, while device drivers may or may not be included, depending on whether or not they manage hardware resources of the digital device.  With that claim construction, the Commission affirmed the ALJ’s finding that the accused products do not infringe the ‘471 patent.  Specifically, “the operating system in the accused devices is not independent of the image processing mode, as required by the asserted claims of the ‘471 patent.”  For the same reason, the Commission agreed with the ALJ’s finding that Flashpoint has not shown that the licensed Apple and Motorola products practice the ‘471 patent, and the technical prong of the domestic industry requirement was not met.  The Commission affirmed the ALJ’s finding that the ‘471 patent was not anticipated, as Respondents “acknowledged that [the reference] does not anticipate the asserted claims.”  The Commission also affirmed the ALJ’s finding that there was no “on-sale” bar, as the product at issue was not “ready for patenting.” The ‘190 Patent The Commission affirmed the ALJ’s finding that the accused products did not infringe the ‘190 patent.  Specifically, the Commission held that Flashpoint did not show that the accused products met the limitation “wherein the formatted document is formatted in accordance with a predefined model,” as there is no predefined model in the accused products.  Rather, Respondents “presented compelling evidence that a user of the accused products—not any predefined model—determines the desired formatting.”  Based on a similar analysis, the Commission affirmed (with slightly modified reasoning) the ALJ’s determination that the licensed Apple and Motorola products did not meet the technical prong of the domestic industry requirement. In the ID, the ALJ determined that the Saito reference did not anticipate or render obvious the asserted claim of the ‘190 patent because it did not disclose the limitation “in response to the user performing the specific operations, automatically updating the interactive instructions, such that a user is guided through a sequence of interactive instructions adapted to capture information from the user.”  Upon review, the Commission agreed with the ALJ with slightly modified reasoning, holding that Saito does not describe all aspects of the interactive instructions as described by the claims.  The Commission also affirmed the ALJ’s finding that there was no “on-sale” bar, as the product at issue was not “ready for patenting.” Economic Prong of the Domestic Industry Requirement The economic prong of the domestic industry requirement was considered together for all patents.  The Commission reviewed the investments Flashpoint detailed for its licensees, Motorola and Apple, and determined that both have made significant employment of labor and substantial investment through research and development with respect to all three asserted patents.  As such, the economic prong of the domestic industry requirement was met.
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ITC Terminates Investigation Based On Expired Patent In Certain Mobile Devices (337-TA-744)

By Eric Schweibenz
|
May
05
On April 30, 2014, the International Trade Commission (the “Commission”) issued a notice terminating the investigation in Certain Mobile Devices, Associated Software, and Components Thereof (Inv. No. 337-TA-744) because the only remaining asserted patent has expired. By way of background, the Commission instituted this investigation based on a complaint filed by Microsoft Corporation (“Microsoft”) in October 2010 alleging violations of Section 337 by Motorola, Inc. and Motorola Mobility, Inc. (collectively, “Motorola”) in the importation and/or sale of certain mobile devices, associated software, and components thereof that infringe nine Microsoft patents.  The presiding ALJ issued a final Initial Determination on December 20, 2011 finding that Motorola infringed claims 1, 2, 5 and 6 of U.S. Patent No. 6,370,566 (“the ‘566 patent”) only, and the Commission affirmed, issuing a limited exclusion order.  See our June 18, 2012 postfor more details regarding the Commission’s opinion. Microsoft appealed to the Federal Circuit for review of the Commission’s determination of no violation with respect to four asserted patents.  On October 3, 2013, the Federal Circuit affirmed the Commission’s determination as to three of those patents, but remanded consideration of U.S. Patent No. 5,664,133 (“the ‘133 patent”) to the Commission with instructions to apply a different claim construction.  See our October 10, 2013 post for more details regarding the Federal Circuit’s decision.  The Federal Circuit affirmed the Commission’s exclusion order based on infringement of the ‘566 patent.  See our December 24, 2013 post for more details. The remanded ‘133 patent expired on December 13, 2013.  Motorola moved the Federal Circuit for dismissal of Microsoft’s appeal based on mootness due to the expiration of the ‘133 patent, but the court denied the motion in a non-precedential order, which stated that the decision was not dependent on “whether the Commission can any longer take action on the ‘133 patent or otherwise has any continuing interest in this matter.”  See our January 8, 2014 post for more details. According to the notice, “[b]ecause the ‘133 patent has expired, the Commission has determined no remedy may issue in this investigation.”  Thus, the investigation was terminated.
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ITC Decides To Review Initial Determination In Certain Integrated Circuit Chips (337-TA-859)

By Eric Schweibenz
|
May
23
On May 22, 2014, the International Trade Commission (“the Commission”) issued a notice in Certain Integrated Circuit Chips and Products Containing the Same (Inv. No. 337-TA-859).  In the notice, the Commission determined to review in part ALJ Dee Lord’s Final Initial Determination (“ID”) finding no violation of Section 337. By way of background, the investigation is based on a complaint filed by Realtek Semiconductor Corporation (“Realtek”) alleging violation of Section 337 in the importation into the U.S., sale for importation, or sale within the U.S. after importation of certain integrated circuit chips and products containing the same that infringe one or more of claims 1-22 of U.S. Patent No. 6,787,928 and claims 1-22 of U.S. Patent No. 6,963,226 (the ‘226 patent).  See our September 20, 2012 and October 22, 2012 posts for more details on Realtek’s complaint and the Notice of Investigation, respectively.  The respondents in the investigation are LSI Corporation and Seagate Technology (collectively, the “Respondents”).  On January 30, 2013, former ALJ Robert K. Rogers, Jr. partially terminated the investigation with respect to the ‘226 patent.  See our February 1, 2013 post for more details.  On March 21, 2014, ALJ Lord issued the ID finding no violation of Section 337 had occurred with respect to the ‘928 patent.  Specifically, the ALJ determined that Realtek had not satisfied the domestic industry requirement with respect to the ‘928 patent.  The ALJ also found that certain claims of the ‘928 patent are invalid under 35 U.S.C. §§ 102 and 103, but that one claim is not invalid under 35 U.S.C. § 112.  ALJ Lord further found that certain of Respondents’ accused products literally infringe various claims of the ‘928 patent.  The ALJ also found that the importation requirement has been satisfied for most (but not all) of the accused products.  See our May 7, 2014 post for more details regarding the ID. According to the May 22, 2014 notice, the Commission determined to review in part the ID.  Specifically, the Commission determined “to review the ID with the exception of the following:  (1) construction of the term ‘second pad layer,’ (2) findings on jurisdiction, and (3) level of one of ordinary skill in the art.”  The notice also requested the parties to brief seventeen enumerated issues relating to a variety of topics, including claim construction, invalidity, domestic industry, and potential remedy.  The Commission also stated that it is interested in receiving written submissions that address the form of remedy, if any, that should be ordered, the effects of any such remedy on the public interest, and the amount of bond that should be imposed if remedy is ordered. Written submissions are due by June 5, 2014, with reply submissions due by June 16, 2014.
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ITC Decides To Review ALJ Shaw’s Summary Determination Ruling Regarding Noninfringement In Certain Multiple Mode Outdoor Grills (337-TA-895)

By Eric Schweibenz
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May
28
On May 21, 2014, the International Trade Commission (“the Commission”) issued a notice in Certain Multiple Mode Outdoor Grills and Parts Thereof (Inv. No. 337-TA-895).  In the notice, the Commission determined to review ALJ David P. Shaw’s Initial Determination (“ID”) granting in part a motion for summary determination of non-infringement.  By way of background, this investigation is based on a complaint filed by A&J Manufacturing, LLC and A&J Manufacturing, Inc. alleging violation of Section 337 by over 20 proposed respondents in the importation and sale of certain multiple mode outdoor grills and parts thereof that infringe one or more claims of U.S. Patent Nos. 8,381,712, D660,646 and D662,773.  See our August 22, 2013 and September 23, 2013 posts for more details on the complaint and notice of investigation, respectively. On March 5, 2014, Respondents filed a motion for summary determination of non-infringement of the asserted claims of the ‘712 patent.  On April 17, 2014, ALJ Shaw granted Respondents’ motion in part finding that certain products do not infringe claims 1-20 of the ‘712 patent and that a genuine issue of material fact exists with respect to an additional product.  See our May 6, 2014 post for more details about ALJ Shaw’s summary determination ruling.    According to the May 21, 2014 notice, the Commission determined to review the ID in its entirety.  Specifically the Commission requested that the parties brief their positions on the issues under review and noted a particular interest in responses to certain topics, including issues relating to whether claim 10 of the ‘712 patent should be treated as a means-plus-function claim. Written submissions are due by May 28, 2014, with reply submissions due by June 2, 2014.
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