Commission Orders

Commission Remands Investigation To ALJ Luckern After Federal Circuit Decision In Certain High-Brightness Light Emitting Diodes (337-TA-556)

By Eric Schweibenz
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Jul
28
On July 27, 2009, the Commission issued an order in which it remanded the investigation to Chief ALJ Paul J. Luckern in Certain High-Brightness Light Emitting Diodes and Products Containing Same (Inv. No. 337-TA-556).  The Complainant is Lumileds Lighting U.S., LLC and the named Respondents are Epistar Corporation and United Epitaxy Co. of Hsinchu, Taiwan (collectively referred to as Epistar since the respondents have merged). By way of background, on January 8, 2007, ALJ Sidney Harris found a violation of section 337 based on his findings that Epistar’s accused LED products infringe one or more of the asserted claims of U.S. Patent No. 5,008,718.  The Commission found that additional accused products infringe the ‘718 patent and issued an opinion and limited exclusion order (“LEO”) on May 9, 2007. Epistar appealed the Commission’s final determination.  As set forth in our May 26 post, the Federal Circuit issued its opinion in Epistar Corp. v. Int’l Trade Comm’n, No. 2007-1457, on May 22, 2009, reversing the Commission’s decision that Epistar could not raise the defense of patent invalidity, affirming the Commission’s claim construction, and reversing the grant of the LEO.  The Federal Circuit remanded the case to the ITC so that Epistar could raise its invalidity defense and reconsider the grant of the LEO. According to the order, the investigation was remanded to ALJ Luckern “for proceedings consistent with the May 22, 2009 judgment . . . including a final initial determination on violation and a recommended determination on remedy and bonding.”  The Commission noted the final ID was to be processed in accordance with the Commission Rules and that ALJ Luckern “may otherwise conduct the remand proceedings as he deems appropriate, including reopening the record.”
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Commission Agrees To Rescind Cease And Desist Order Against Motorola In Certain Semiconductor Chips (337-TA-605)

By Eric Schweibenz
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Aug
20
On August 18, 2009, the International Trade Commission issued an Order granting a joint motion filed by Complainant Tessera, Inc. and Motorola, Inc. to rescind the cease and desist order directed to Motorola in Certain Semiconductor Chips with Minimized Chip Package Size and Products Containing Same (Inv. No. 337-TA-605).  According to the Order, Tessera and Motorola filed the joint motion based upon a license agreement entered into between the two parties. For further information regarding this investigation, please see our May 22, June 11, July 21, and July 29 posts.
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Commission Grants Petitions For Reconsideration And Issues Revised Limited Exclusion Order And Opinion In Certain Silicon Microphone Packages (337-TA-629)

By Eric Schweibenz
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Aug
21
On August 18, 2009, the International Trade Commission issued an Order granting the private parties’ petitions for reconsideration in Certain Silicon Microphone Packages and Products Containing Same (Inv. No. 337-TA-629).  In connection with this Order, the Commission also issued a revised notice and limited exclusion order and a revised opinion in view of the parties’ petitions for reconsideration.  Please note that Oblon Spivak represents Respondent MEMS Technology Berhad (“MemsTech”) in this matter. In the Order, the Commission explained that both Complainant Knowles Electronics, LLC (“Knowles”) and MemsTech filed petitions for reconsideration on June 26, 2009.  Specifically, both Knowles and MemsTech requested that the Commission remove any reference in the opinion, notice, and limited exclusion order to claim 10 of the asserted ‘089 patent since the Commission had already determined that such claim was invalid.  Further, Knowles requested that the Commission reconsider certain wording in its June 12, 2009 opinion stating that MemsTech’s “chamber chip” products are not covered by the limited exclusion order.  MemsTech asked the Commission to strike the language “and products containing the same” from the limited exclusion order.  According to the Order, the Commission Investigative Staff opposed Knowles’ petition for reconsideration. Regarding Knowles’ request, the Commission removed certain language contained in its June 12, 2009 opinion and issued a revised opinion that added a sentence concerning MemsTech’s “chamber chip” products.  With respect to MemsTech’s petition, the Commission removed all instances of the wording “and products containing the same” from the limited exclusion order.  Finally, the Commission agreed to remove all references in the opinion, notice, and exclusion order to claim 10 of the asserted ‘089 patent. For further information regarding this investigation, please see our February 19, March 16, June 15, and July 21 posts.
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ITC Denies LG’s Request for Reconsideration In Certain Refrigerators (337-TA-632)

By Eric Schweibenz
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Sep
01
On August 28, 2009, the U.S. International Trade Commission issued an Order denying the petition for reconsideration filed by Respondents LG Electronics Corp., Inc., LG Electronics, USA, Inc., and LG Electronics Monterrey, Mexico S.A. de C.V. (collectively “LG”) in Certain Refrigerators and Components Thereof (Inv. No. 337-TA-632). As explained in our July 8 post, the investigation was instituted on February 21, 2008, based on the complaint of Whirlpool Corp., Whirlpool Manufacturing Corp., Whirlpool Patent Corp., and Maytag Corp. (collectively “Whirlpool”).  On February 26, 2009, ALJ Theodore R. Essex issued his ID, finding no violation of Section 337 with respect to United States Patent No. 6,082,130.  On April 27, the Commission decided to review the ID in its entirety and requested briefing by the parties on the issue of claim construction.  In its July 8 Opinion, the Commission modified the ID’s claim construction for the terms “freezer compartment,” “disposed within the freezer department,” and “ice storage bin having a bottom opening.”  The Commission affirmed the ID’s construction of the term “ice maker.” On July 22, 2009, LG filed a petition for reconsideration of the Commission’s decision to modify the claim construction for “freezer compartment” and “disposed within the freezer compartment.”  Whirlpool opposed the petition, and the Commission Investigative Staff opposed the petition in part and supported the petition in part. The Commission found that LG’s petition for reconsideration did not raise any new questions and that LG had made the same arguments in previous briefing before the ALJ and the Commission.  Accordingly, the Commission found that LG’s petition did not satisfy the requirements of Commission Rule 210.47, and denied the petition.
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ITC Issues Remand Order In Certain Connecting Devices (337-TA-587)

By Eric Schweibenz
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Oct
01
On October 1, 2009, the International Trade Commission issued an order in Certain Connecting Devices (“Quick Clamps”) For Use With Modular Compressed Air Conditioning Units, Including Filters, Regulators, and Lubricators (“FRL’s”) That Are Part Of Larger Pneumatic Systems and the FRL Units They Connect (Inv. No. 337-TA-587).  Please note that Oblon Spivak represents Respondents SMC Corporation and SMC Corporation of America in this matter. In the order, the ITC states that its final determination of no violation based on non-infringement in this investigation was reversed by the Federal Circuit on May 26, 2009 (see our May 28 post for more details) and remanded with instructions “to evaluate obviousness in the first instance based upon the [Federal Circuit’s] construction of the claim term ‘generally rectangular ported flange.’”  The order also remands the investigation to Chief ALJ Paul J. Luckern for designation of a presiding administrative law judge to conduct proceedings consistent with the Federal Circuit’s May 26, 2009 decision.  Further, the order provides that the “ALJ may otherwise conduct the remand proceedings as he deems appropriate, including reopening the record.”
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ITC Issues Seizure And Forfeiture Order In Certain Digital Television Products (337-TA-617)

By Eric Schweibenz
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Oct
27
On October 23, 2009, the ITC issued a Seizure and Forfeiture Order in Certain Digital Television Products and Certain Products Containing Same and Methods of Using Same (Inv. No. 337-TA-617). In the order, the ITC stated that the “U.S. Bureau of Customs and Border Protection (‘Customs’) has informed the Commission that (i) the owner, importer or consignee (or the agent of such person) of certain digital television products covered by a limited exclusion order attempted to import the articles into the United States; (ii) Customs denied entry of the articles into the United States by reason of a final exclusion order; and (iii) upon such denial of entry, Customs provided the owner, importer, or consignee of the articles (or the agent of such person) with written notice of the aforesaid exclusion order and the fact that seizure and forfeiture would result from any further attempt to import the articles into the United States.” Accordingly, the ITC ordered that “[d]igital television products that are imported in violation of the limited exclusion order issued in the above-captioned investigation are to be seized and forfeited to the United States, if imported by the following firm:  Fed Ex Trade Networks T & B, Inc., 170 Cooper Ave., Ste. 104, Tonawanda, New York 14150, or any affiliated companies, parents, subsidiaries, or other related business entities, or any of their successors or assigns.”
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ITC Denies Request For Reconsideration In Certain Cigarettes (337-TA-643)

By Eric Schweibenz
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Oct
29
On October 28, 2009, the United States International Trade Commission issued an Order denying a petition for reconsideration filed by Respondent Alcesia SRL (“Alcesia”) in Certain Cigarettes and Packaging Thereof (Inv. No. 337-TA-643). By way of background, this investigation was instituted on April 4, 2008, based on the complaint of Philip Morris USA, Inc.  On February 3, 2009, ALJ E. James Gildea issued an initial determination granting Phillip Morris’ motion for summary determination that Alcesia had violated Section 337.  On September 21, 2009, the Commission issued its final determination, affirming the ALJ’s summary determination finding of violation of Section 337 by Alcesia.  See our September 22 post for more details.  On October 2, 2009, Alcesia filed a petition for reconsideration requesting reconsideration of certain findings that formed the basis for the Commission’s conclusion that Alcesia violated Section 337. In the October 28 Order, the Commission determined that “Alcesia’s petition for reconsideration of the Commission’s final determination neither raises new questions nor presents arguments that Alcesia has not made in previous briefing before the ALJ and the Commission.”  Accordingly, the Commission denied Alcesia’s petition for reconsideration for failure to satisfy the requirements of Commission Rule 210.47.
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ITC Issues Order Requesting Parties’ Comments Following Federal Circuit Decision In Certain Voltage Regulators (337-TA-564)

By Eric Schweibenz
|
Nov
11
On November 5, 2009, the International Trade Commission issued an order in Certain Voltage Regulators, Components Thereof, and Products Containing Same (Inv. No. 337-TA-564).  In the order, the ITC stated that on May 21, 2009, the Federal Circuit reversed and vacated parts of the Commission’s September 24, 2007 final determination in the investigation.  See our May 26 post for more details.  Additionally, the ITC stated in the order that prior to the issuance of the Federal Circuit’s May 21 decision, the original Complainant, Linear Technology Corporation, filed a new complaint requesting that the Commission institute a formal enforcement proceeding against Respondent Advanced Analogic Technologies, Inc (“AATI”).  The Commission instituted the requested enforcement proceeding on October 1, 2008, but the proceeding was partially terminated on September 9, 2009 based on the entry of a consent order relating to certain AATI products. Against this background, the Commission ordered that within 14 days of its order, the parties are required to submit joint comments regarding whether, for what issues, and for which accused products, it is warranted that further proceedings be conducted consistent with both the Federal Circuit’s May 21 decision and the parties’ September 9, 2009 consent order in the enforcement proceeding.  Further, the Commission ordered the parties to explain in their joint comments whether it is appropriate for the Commission to decide such matters itself without remand to Chief ALJ Luckern for assignment, whether the matters should be remanded to ALJ Luckern to be consolidated with the enforcement proceeding pursuant to Commission rule 201.7(a), or whether the matters should be remanded to ALJ Luckern for assignment, but not consolidated with the enforcement proceeding.
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ITC Issues Seizure And Forfeiture Order In Certain Recordable Compact Discs And Rewritable Compact Discs (337-TA-474)

By Eric Schweibenz
|
Jan
15
On January 14, 2010, the ITC issued a Seizure and Forfeiture Order in Certain Recordable Compact Discs and Rewritable Compact Discs (Inv. No. 337-TA-474). In the order, the ITC stated that the “U.S. Bureau of Customs and Border Protection (‘Customs’) has informed the Commission that (i) the owner, importer or consignee (or the agent of such person) of certain recordable compact discs and rewritable compact discs covered by a general exclusion order attempted to import the articles into the United States; (ii) Customs denied entry of the articles into the United States by reason of a final exclusion order; and (iii) upon such denial of entry, the Secretary of the Treasury provided the owner, importer, or consignee of the articles (or the agent of such person) with written notice of the aforesaid exclusion order and the fact that seizure and forfeiture would result from any further attempt to import the articles into the United States.” Accordingly, the ITC ordered that “Recordable and Rewritable Compact Discs that are imported in violation of the general exclusion order issued in the above-captioned investigation are to be seized and forfeited to the United States, if imported by the following firm:  Unique Media, Inc., 2991 Corvin Dr., Santa Clara, California 95051, or any affiliated companies, parents, subsidiaries, or other related business entities, or any of their successors or assigns.”
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ITC Reverses Supplemental Initial Determination and Remands Investigation In Certain Encapsulated Integrated Circuit Devices (337-TA-501)

By Eric Schweibenz
|
Feb
22
On February 18, 2010, the International Trade Commission issued a notice determining to reverse ALJ Charles E. Bullock’s October 30, 2009 Supplemental Initial Determination (“Supplemental ID”) and remand the investigation in Certain Encapsulated Integrated Circuit Devices and Products Containing Same (Inv. No. 337-TA-501). By way of background, the Complainant in this investigation is Amkor Technology, Inc. (“Amkor”) and the Respondents are Carsem (M) Sdn Bhd, Carsem Semiconductor Sdn Bhd, and Carsem, Inc. (collectively “Carsem”).  On November 9, 2005, ALJ Bullock issued a Remand Initial Determination, finding that (1) there was a violation of Section 337 in connection with U.S. Patent No. 6,433,277 (the ‘277 patent); and (2) no violation of Section 337 had occurred in connection with U.S. Patent No. 6,630,728 and U.S. Patent No. 6,455,356.  On July 1, 2008, the U.S. District Court for the District of Columbia granted the Commission’s petition to enforce subpoenas duces tecum and ad testificandum to non-party ASAT.  In response, Carsem renewed its motion to remand the investigation and reopen the record to include any new evidence obtained as a result of the enforcement of the subpoenas.  The Commission issued a Remand Order on July 1, 2009, ordering that (1) the investigation be remanded to reopen the record to admit any new evidence obtained as a result of the enforcement of the subpoena duces tecum to ASAT, and (2) the ALJ revise or supplement the Initial Determination as appropriate, in light of the supplemental evidence, making all necessary findings concerning Carsem’s invalidity defenses for which the subpoena was obtained.  At a September 10-11, 2009 hearing, Carsem’s invalidity arguments were limited to 35 U.S.C. §§ 102(g) and 103(a).  On October 30, 2009, ALJ Bullock issued the Supplemental ID reaffirming his finding of a violation of Section 337.  See our November 27, 2009 post for more details.  On December 16, 2009, the Commission issued a notice determining to review the Supplemental ID.  See our December 17, 2009 post for more details. The Commission’s order accompanying the February 18 notice stated that the “ALJ’s finding that the ASAT LPCC invention is not prior art to the Amkor asserted patents-in-suit is legally erroneous, and is reversed.”  The order further held that the ASAT LPCC invention “is prior art to the Amkor asserted patents.”  The order then remanded the investigation to the ALJ to make “necessary findings on anticipation and obviousness in view of the Commission’s determination that the ASAT LPCC invention is prior art to Amkor’s asserted patents.”  The Commission further determined that the ALJ must issue findings in accordance with the order by March 22, 2010.  The Commission also extended the target date for completion of this investigation to July 20, 2010.
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ITC Issues Order Remanding Investigation Following Federal Circuit Decision In Certain Foam Footwear (337-TA-567)

By Eric Schweibenz
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Jul
09
On July 6, 2010, the ITC issued an order in Certain Foam Footwear (Inv. No. 337-TA-567).  The order followed a February 24, 2010 judgment of the Federal Circuit overturning the ITC’s July 25, 2008 final determination of no violation of Section 337 and remanding the investigation.  See our February 24, 2010 post for more details.  In the Order, the ITC remanded the investigation to Chief ALJ Paul J. Luckern for assignment. By way of background, Complainant Crocs, Inc. (“Crocs”) filed a complaint and an amended complaint with the ITC, alleging violations of Section 337 by reason of infringement of U.S. Patent Nos. 6,993,858 (the ‘858 patent) and D517,789 (the ‘789 patent) and the Crocs trade dress.  The ITC instituted an investigation on May 11, 2006.  On April 11, 2008, ALJ Charles E. Bullock issued an initial determination (“ID”) finding no violation of Section 337 by reason of invalidity of the ‘858 patent and non-infringement/non-satisfaction of the technical prong of the domestic industry requirement concerning the ‘789 patent.  ALJ Bullock made no findings regarding the enforceability of the ‘858 and ‘789 patents.  On July 25, 2008, the ITC affirmed ALJ Bullock’s ID with certain modifications and clarifications, terminating the investigation.  Like ALJ Bullock, the ITC took no position regarding the issue of enforceability of the ‘858 and ‘789 patents.  Crocs appealed the ITC decision and on February 24, 2010, the Federal Circuit issued its judgment overturning the ITC’s findings regarding invalidity of the ‘858 patent and non-infringement/non-satisfaction of the technical prong of the domestic industry requirement concerning the ‘789 patent, remanding the investigation for a determination of infringement and any appropriate remedies. Against this background, the ITC ordered that the investigation be remanded to the chief ALJ, Paul J. Luckern, for assignment to a presiding ALJ and proceedings consistent with the February 24,2010 judgment of the Federal Circuit in Crocs, Inc. v. United States Int'l Trade Comm'n, 598 F.3d 1294 (Fed. Cir. 2010), including a determination regarding the outstanding issue of enforceability of the ‘858 and ‘789 patents and issuance of a final initial determination.  The order stated that the final initial determination would be processed in accordance with Commission Rules 210.42(a) and 210.43-46 and noted that the assigned ALJ could otherwise conduct the remand proceedings as he deemed appropriate, including reopening the record.
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ITC Institutes Consolidated Advisory Opinion and Modification Proceeding In Certain Ink Cartridges (337-TA-565)

By Eric Schweibenz
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Mar
22
On March 18, 2011, the ITC issued an order and notice instituting a consolidated advisory opinion and modification proceeding in Certain Ink Cartridges and Components Thereof (Inv. No. 337-TA-565).  The order and notice were issued in response to a joint petition filed on December 13,2010, by two Respondents in the underlying Investigation No. 337-TA-565, Ninestar Technology Co., Ltd. of China, and Ninestar Technology Company, Ltd. of Walnut, California (collectively, “Ninestar”), and a further petition filed on February 3, 2011, by the Complainants in the underlying investigation, Epson Portland, Inc. of Hillsboro, Oregon, Epson America, Inc. of Long Beach, California, and Seiko Epson Corporation of Japan (collectively “Epson”). By way of background, on October 17, 2007, the ITC issued a general exclusion order in Investigation No. 337-TA-565 prohibiting the unlicensed entry of ink cartridges covered by one or more claims of U.S. Patent Nos. 5,615,957; 5,622,439; 5,158,377; 5,221,148; 5,488,401; 6,502,917; 6,550,902; 6,955,422; 7,008,053; and 7,011,397.  The ITC also issued cease and desist orders with respect to several of the above patents to Ninestar Technology Company, Ltd. Ninestar further was the subject of Enforcement Proceedings and a Commission Opinion dated September 24, 2009, determining that Ninestar violated the October 17, 2007, cease and desist orders.  See our September 28, 2009 post for more information. According to the March 18, 2011 Notice, the ITC instituted the consolidated advisory opinion and modification proceeding to determine whether Ninestar’s R-Series ink cartridges infringe any of the patent claims included in the October 17, 2007 general exclusion order or the cease and desist order issued to Ninestar Technology Company, Ltd. and what, if any, modifications to the general exclusion order and/or the cease and desist order issued to Ninestar Technology Company, Ltd. are appropriate. Lastly, Chief ALJ Paul J. Luckern issued a notice indicating that he will be the presiding Administrative Law Judge in this proceeding.
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ITC Reviews And Vacates Initial Determination Granting Motion For Summary Determination Of No Domestic Industry in Certain Video Game Systems and Controllers (Inv. No. 337-TA-743)

By Eric Schweibenz
|
Apr
01
On March 30, 2011, the International Trade Commission (the “Commission”) issued a notice and order determining to review and vacate ALJ Robert K. Rogers, Jr.’s February 11, 2011 Initial Determination (“ID”) in Certain Video Game Systems and Controllers (Inv. No. 337-TA-743). By way of background, the Complainant in this matter is Motiva, LLC and the Respondents are Nintendo Co., Ltd. and Nintendo of America Inc. (collectively “Nintendo”).  On February 11, 2011, ALJ Rogers granted Nintendo’s motion for summary determination that the economic prong of the domestic industry requirement is not satisfied and terminated the investigation.  See our March 1, 2011 post for more details. According to the March 30 notice, “the Commission has determined to review and vacate the grant of summary determination in the subject ID with respect to the economic prong of the domestic industry requirement.”  The Commission further determined to “remand the investigation to the ALJ to complete the investigation.”  Lastly, the Commission indicated in the notice that an opinion “will issue shortly.”
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ITC Issues Seizure And Forfeiture Order In Certain Inkjet Ink Supplies (337-TA-691)

By Eric Schweibenz
|
Aug
08
On August 2, 2011, the ITC issued a Seizure and Forfeiture Order in Certain Inkjet Ink Supplies and Components Thereof(Inv. No. 337-TA-691). In the order, the ITC stated that the “U.S. Bureau of Customs and Border Protection (‘Customs’) has informed the Commission that (i) the owner, importer or consignee (or the agent of such person) of certain inkjet ink supplies and components thereof covered by a general exclusion order attempted to import the articles into the United States; (ii) Customs denied entry of the articles into the United States by reason of a final exclusion order; and (iii) upon such denial of entry, Customs provided the owner, importer, or consignee of the articles (or the agent of such person) with written notice of the aforesaid exclusion order and the fact that seizure and forfeiture would result from any further attempt to import the articles into the United States.” Accordingly, the ITC ordered that “Inkjet Ink Supplies and components thereof that are imported in violation of the general exclusion order issued in the above-captioned investigation are to be seized and forfeited to the United States, if imported by the following firm:  E Top LLC, 2240 NE Griffin Oaks St., Suit 300, Hillsboro, Oregon 97124, or any affiliated companies, parents, subsidiaries, or other related business entities, or any of their successors or assigns.”
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ITC Rules On Petitions For Reconsideration In Certain Automated Media Library Devices (337-TA-746)

By Eric Schweibenz
|
Dec
12
On December 11, 2012, the International Trade Commission (“Commission”) issued a notice and order granting petitions for reconsideration filed by Complainant Overland Storage, Inc. (“Overland”) and Respondents BDT AG, BDT Automation Technology (Zhuhai FTZ), Co., Ltd., BDT de Mexico, S. de R.L. de C.V., and BDT Products, Inc.’s (“BDT”) in Certain Automated Media Library Devices (Inv. No. 337-TA-746). By way of background, Chief ALJ Charles E. Bullock issued an Initial Determination (“ID”) on June 20, 2012 finding that (1) U.S. Patent Nos. 6,328,766 and 6,353,581 are not infringed by BDT; (2) the patents are not invalid except for claim 15 of the ‘581 patent; and (3) a domestic industry in the United States exists for the ‘766 patent, but not for the ‘581 patent.  See our July 27, 2012 post for more details.  In its October 25, 2012 order, the Commission remanded the investigation with respect to the ‘766 and ‘581 patents.  Regarding the ‘766 patent, the Commission affirmed -- with modified reasoning -- the ALJ’s finding that BDT did not contributorily infringe the asserted claims, and remanded the investigation for consideration of whether certain IBM documents deemed to qualify as printed publications under § 102 teach or suggest the features of the asserted claims, either alone or in combination with other prior art.  With respect to the ‘581 patent, the Commission modified ALJ Bullock’s construction of the term “linear array,” determining that it means “media element storage locations [or cells] arranged in one or more straight lines.”  In light of this modification, the Commission reconsidered the ALJ’s infringement determination and found that the accused products meet the limitation of “linear array.”  However, the Commission ultimately affirmed the ALJ’s finding of noninfringement of the ‘581 patent because the accused products do not satisfy the limitation of a “manually movable towards said door” mail slot.  The Commision also affirmed the ALJ’s finding that the ‘581 patent is not invalid.  Further, the Commission affirmed -- with modified reasoning -- ALJ Bullock’s rejection of BDT’s patent exhaustion defense, reversed the ALJ’s finding that Overland failed to satisfy the technical prong of the domestic industry requirement as to the ‘581 patent, and remanded the investigation for consideration of whether Overland satisfied the economic prong.  See our November 28, 2012 post for more details. According to the notice and order, Overland filed a petition for reconsideration of the Commission’s determination that BDT does not infringe claims 10, 12 and 16 of the ‘581 patent.  BDT filed a petition for reconsideration of the Commission’s determination that BDT waived the testimony of Mr. Fago and Mr. Siegle in support of its invalidity arguments regarding the ‘581 patent by failing to cite the testimony in pre-hearing or post-hearing briefs. Having considered the matter, the Commission granted Overland’s petition for reconsideration in view of the Commission’s determination that the accused products meet its modified construction of “linear array.”  Thus, in addition to the issues to be considered on remand in the Commission’s October 25, 2012 order, the investigation was further remanded for ALJ Bullock to make all findings regarding direct infringement and, if necessary, indirect infringement, of claims 10, 12 and 16 of the ‘581 patent.  The ALJ was also directed to construe the “manually moveable towards said opening” and “manually moveable towards a doorway” limitations in claims 10, 12 and 16 in accordance with their plain and ordinary meaning.  BDT’s request for reconsideration of the Commission’s determination that BDT waived the testimony of Mr. Fago and Mr. Siegle was denied.
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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 Limited Exclusion Order And Cease And Desist Orders In Certain Electronic Devices Having Placeshifting Or Display Replication Functionality (337-TA-878)

By Eric Schweibenz
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Dec
03
On December 2, 2013, the International Trade Commission (the “Commission”) issued a notice in Certain Electronic Devices Having Placeshifting or Display Replication Functionality and Products Containing Same (Inv. No. 337-TA-878). By way of background, this investigation is based on a March 12, 2013 complaint filed by Complainant Sling Media, Inc. (“Sling Media”).  The respondents in the investigation were Monsoon Multimedia, Inc. (“Monsoon”); C2 Microsystems, Inc. (“C2 Microsystems”) (collectively “the Defaulting Respondents”); and Belkin International, Inc. (“Belkin”).  See our April 15, 2013 post for more details on this investigation.  On June 5, 2013, ALJ Pender issued an initial determination terminating the investigation as to Belkin based on a settlement agreement.  See our June 7, 2013 post for more details.  In response to a show cause order, Monsoon moved to terminate the investigation based on a consent order.  ALJ Pender rejected this motion and found Monsoon in default.  See our July 16, 2013 post for more details.  C2 Microsystems did not respond to their show cause order and, likewise, were found in default.  According to the Order, the Commission determined to issue a limited exclusion order and cease and desist orders directed to the Defaulting Respondents.  The Limited Exclusion Order prohibits the unlicensed entry of Defaulting Respondents’ infringing products.  The Cease and Desist Orders “prohibit, inter alia, the importation, sale, advertising, marketing, and distribution of covered products in the United States by the Defaulting Respondents.”  Lastly, the Commission ordered that the bond for importation during the period of Presidential review be set at 100 percent of the entered value of Defaulting Respondents’ imported products.
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ITC Issues Cease And Desist Orders In Certain Ground Fault Circuit Interrupters (337-TA-739)

By Eric Schweibenz
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Dec
03
On December 2, 2013, the International Trade Commission (the “Commission”) issued a notice regarding the issuance of cease and desist orders and termination of the investigation in Certain Ground Fault Circuit Interrupters and Products Containing Same (Inv. No. 337-TA-739). By way of background, the Commission issued its final determination on April 27, 2012 finding a violation of Section 337 with respect to U.S. Patent No. 7,737,809 (the ‘809 patent).  Regarding remedy, the Commission issued a general exclusion order and a cease and desist order.  See our February 27, 2013 post for more details.  On August 29, 2012, Complainant Leviton Manufacturing Co., Inc. (“Leviton”) filed a complaint to institute enforcement proceedings.  Following settlement by several respondents, Respondents American Electric Depot Inc. (“AED”); Shanghai ELE Manufacturing Corp. (“Shanghai ELE”); and Shanghai Jia AO Electrical Co., Ltd. (“Shanghai Jia AO”) (collectively, the “Defaulting Respondents”) remained in the proceeding.  On May 22, 2013, ALJ Bullock issued a recommended determination on remedy, which recommended that the Commission issue a cease and desist order prohibiting AED from selling or distributing infringing articles in the U.S.  See our July 9, 2013 post for more details. According to the Commission’s notice, the Commission determined that the appropriate form of relief consists of cease and desist orders direct to the Defaulting Respondents.  Specifically, the Commission’s Order prohibits the Defaulting Respondents from “conducting any of the following activities in the United States: importing, selling, marketing, advertising, distributing, offering for sale, transferring (except for exportation), and soliciting U.S. agents or distributors for ground fault circuit interrupters and products containing the same that infringe one or more of claims 1-4, 6, 8-11, 13, 15-16, 35-37, 39, and 41-46 of the ’809 patent.”  Having resolved all remaining issues in the investigation, the Commission terminated the investigation.
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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 Issues $6.2 Million Dollar Civil Penalty For Consent Order Violation In Certain Two-Way Global Satellite Communication Devices (337-TA-854)

By Eric Schweibenz
|
Jun
13
On June 9, 2014, the International Trade Commission (“the Commission”) issued a notice and order in Certain Two-Way Global Satellite Communication Devices, System and Components Thereof (Inv. No. 337-TA-854) determining to impose a civil penalty on Respondents in the amount of $6,242,500. By way of background, the Commission instituted the underlying investigation on September 18, 2012 based on BriarTek IP, Inc.’s (“BriarTek”) complaint of August 17, 2012.  See our September 19, 2012 post for more details.  On March 15, 2013, former ALJ Robert K. Rogers, Jr. granted a motion by DeLorme Publishing Co., Inc. and DeLorme InReach, LLC (collectively, “DeLorme”) to terminate the investigation and for entry of a proposed consent order (“the consent order”).  See our March 19, 2013 post for more details.  In the consent order, DeLorme agreed that it would not import or sell two-way global satellite communication devices, systems, or components thereof that infringe BriarTek’s U.S. Patent No. 7,991,380 (the ‘380 patent) after April 1, 2013.  On April 10, 2013, BriarTek filed an enforcement complaint alleging that DeLorme violated the consent order.  See our April 11, 2013 post for more details. In the enforcement initial determination (“EID”), ALJ Dee Lord found that DeLorme had violated the consent order with respect to its sale after importation of accused components of the InReach 1.5 device.  However, the ALJ found no violation of the consent order with respect to the InReach SE device.  ALJ Lord also found no violation with respect to activation of InReach devices after the effective date of the consent order, where those devices had been sold prior to the effective date of the consent order.  ALJ Lord further found that enforcement measures are appropriate for DeLorme’s violation of the consent order, and recommended a civil penalty of $637,500.  Seeour March 24, 2014 post for more details on the EID. According to the notice and order, on April 23, 2014, the Commission determined to review the EID in part, and on review, determined to reverse-in-part and vacate-in-part the EID’s findings.  Although the ALJ’s finding of a violation with respect to infringing InReach 1.5 devices was not reviewed, the Commission reversed the ALJ’s finding of no induced infringement and thus no violation of the Consent Order with respect to InReach SE devices and InReach devices sold before and activated after the effective date of the Consent Order.  The Commission requested briefing on the amount of the civil penalty to be imposed and on the public interest.  After reviewing the record, including the EID and the parties’ submissions, the Commission determined to impose a civil penalty of $6,242,500 on DeLorme for violation of the Consent Order on 227 separate days.  The Commission also terminated the enforcement proceeding.
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