Final Determinations

Commission enters final determination in certain ground fault circuit interrupters 337-TA-615

By Eric Schweibenz
|
Mar
11
On March 9, 2009, the Commission issued a Final Determination finding a violation of 19 U.S.C. § 1337 by the 9 remaining respondents -- General Protecht Group, Inc., Shanghai ELE Manufacturing Corporation, Shanghai Meihao Electric, Inc., Wenzhou Trimone Company, Cheetah USA Corp., Nicor, Inc., Orbit Industries, Inc., The Designer’s Edge, and Colacino Electric Supply, Inc. as a result of infringement of certain claims of the following U.S. Patents: (1) U.S. Patent No. 5,594,398; (2) U.S. Patent No. 7,283,340; (3) U.S. Patent No. 7,145,718; and (4) U.S. Patent No. 7,164,564. The investigation was instituted on September 18, 2007 based upon a complaint filed by Pass & Seymour, Inc.  In the ID, ALJ Carl. C. Charneski determined that the above 9 respondents violated section 337 based on the importation, sale for importation, and sale after importation of certain ground fault circuit interrupters and products containing the same for six different patents. On December 8, 2008, the Commission determined to review the ID in part, including the ALJ’s construction of six different claim limitations (and related issues of infringement, domestic industry, and validity), the ALJ’s validity determination with respect to two of the asserted patents, and the ALJ’s infringement determination of one patent regarding certain products of one of the respondents (ELE).  The Commission thereafter made certain modifications to the ALJ’s ID, finding that there was no violation of the asserted claims of two of the patents, but finding that the ALJ correctly determined that there was a violation of the asserted claims of four patents.  The Commission also (1) issued a limited exclusion order against the 9 respondents; (2) issued a cease-and-desist order against respondents Cheetah, Colacino, Nicor, Orbit and TDE; (3) found that the public interest factors do not preclude issuance of the remedial orders; and (4) found that the bond to permit temporary importation during Presidential review should be set at 100%.
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ITC Issues Notice Terminating Certain Tunable Laser Chips (337-TA-662)

By Eric Schweibenz
|
Jun
01
On May 29, 2009, the U.S. International Trade Commission issued a Notice determining to terminate Certain Tunable Laser Chips, Assemblies, and Products Containing Same (337-TA-662). By way of background, the ITC instituted this investigation on December 19, 2008 based on a complaint filed on November 7, 2008 by JDS Uniphase Corporation (“JDSU”).  The complaint alleged violations of section 337 in the importation into the U.S., the sale for importation, and the sale within the U.S. after importation of certain tunable laser chips, assemblies, and products containing same by reason of infringement of certain claims of U.S. Patent Nos. 6,658,035 and 6,687,278.  The complaint named numerous proposed respondents including Bookham, Inc. (“Bookham”). On April 15, 2009, JDSU and Bookham moved to terminate the investigation as to Bookham on the basis of a settlement agreement.  On May 1, 2009, Chief ALJ Paul J. Luckern issued an Initial Determination granting the joint motion for termination.  No party petitioned for review of the Initial Determination.  Accordingly, on May 19, 2009, the ITC issued a Notice of a Commission determination not to review an Initial Determination.
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ITC Issues Final Determination Of Violation In Certain Silicon Microphone Packages (337-TA-629)

By Eric Schweibenz
|
Jun
15
On June 12, 2009, the ITC issued a Notice of Final Determination in Certain Silicon Microphone Packages and Products Containing Same (337-TA-629) finding a violation of section 337 by MEMS Technology Berhad (“MemsTech”) as a result of infringement of certain claims of U.S. Patent No. 6,781,231 and 7,242,089.  Please note that Oblon Spivak represents MemsTech in this matter. As we explained in our March 16 post, this investigation was instituted on January 14, 2008, based on the complaint of Knowles Electronics, LLC of Itasca, Illinois. On January 12, 2009, ALJ Robert K. Rogers, Jr. issued his ID finding a violation of section 337.  On March 13, 2009, the Commission decided to review ALJ Rogers’ (1) infringement and validity determinations regarding Knowles’ ‘231 patent, and (2) claim construction, infringement, technical prong, and validity determinations regarding Knowles’ ‘089 patent. According to the Notice, the Commission determined to affirm the ID after making various modifications to ALJ Rogers’ infringement and validity determinations regarding Knowles’ ‘231 patent, as well as ALJ Rogers’ claim construction, infringement, and validity determinations regarding Knowles’ ‘089 patent.  The Commission also (1) issued a limited exclusion order against MemsTech; (2) found that the public interest factors do not preclude issuance of such order; and (3) found that there should be no bond during the Presidential review period.
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ITC Issues Final Determination Of Violation In Certain Liquid Crystal Display Devices (337-TA-631)

By Eric Schweibenz
|
Jun
26
On June 24, 2009, the ITC issued a Notice of Commission Decision to affirm-in-part and reverse-in-part a final Initial Determination (“ID”) finding a violation of section 337 by Sharp Corporation, Sharp Electronics Corporation, and Sharp Electronics Manufacturing Company of America, Inc. (collectively, “Sharp”) as a result of infringement of certain claims of U.S. Patent No. 6,771,344 (the “‘344 patent”). This investigation was instituted on January 25, 2008, based on a complaint filed by Samsung Electronics Co., Ltd. of Korea. On January 26, 2009, Chief ALJ Paul J. Luckern issued his final ID finding a violation of section 337 by Sharp as to the ‘344 patent and U.S. Patent No. 6,937,311 (the “‘311 patent”). On March 30, 2009, the Commission determined to review: (1) the ALJ’s construction of the claim term “domain dividers” found in the ‘311 patent; (2) the ALJ’s determination that Sharp’s LCD devices infringe the ‘311 patent; (3) the ALJ’s determination that the ‘311 patent is not unenforceable; and (4) the ALJ’s determination that the asserted claims of the ‘344 patent are not invalid as anticipated by U.S. Patent No. 5,309,264 (the “264 patent”). In the Notice, the Commission construed the term “domain dividers” in the ‘311 patent to mean “apertures formed in the conductive layer comprising the electrode.”  The Commission also reversed ALJ Luckern’s ruling that Sharp’s LCD devices infringed the asserted claims of the ‘311 patent in view of its new claim construction for the term “domain dividers.”  Further, the Commission took no position on the validity of the ‘311 patent under 35 U.S.C. § 112 ¶ 1, or the unenforceability of the ‘311 patent.  Additionally, the Commission affirmed ALJ Luckern’s finding that the asserted claims of the ‘344 patent are not invalid in view of the ‘264 patent.  The Commission also affirmed ALJ Luckern’s determination of a violation of section 337 with respect to the ‘344 patent. Regarding the issues of remedy, the public interest, and bonding, the Commission also (1) issued a limited exclusion order against Sharp; (2) issued cease and desist orders prohibiting Sharp Electronics Corp. and Sharp Electronics Manufacturing Co. from conducting certain activities in the U.S.; (3) found that the public interest factors do not preclude issuance of such orders; and (4) found that there should be no bond during the Presidential review period.
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Commission Enters Final Determination In Certain Silicon Microphone Packages (337-TA-629)

By Eric Schweibenz
|
Jul
21
Further to our June 15 post, on July 16, 2009, the International Trade Commission issued the public version of its Opinion in Certain Silicon Microphone Packages and Products Containing Same (Inv. No. 337-TA-629).  In the Opinion, the Commission affirmed ALJ Robert K. Rogers, Jr.’s determination that Respondent MEMS Technology Berhad (“MemsTech”) had violated Section 337.  Specifically, the Commission affirmed with certain modifications ALJ Rogers’ findings that Complainant Knowles Electronics, LLC’s (“Knowles”) U.S. Patent Nos. 6,781,231 (the “‘231 patent”) and 7,242,089 (the “‘089 patent”) are valid and that MemsTech’s silicon microphone packages infringe certain claims of those patents.  The Commission also issued a limited exclusion order against MemsTech.  Please note that Oblon Spivak represents MemsTech in this matter. With respect to infringement, the Commission affirmed with certain modifications ALJ Rogers’s finding that MemsTech’s silicon mircrophone packages infringe the asserted claims of the ‘231 and ‘089 patents.  With respect to the modifications, the Commission found that in making his infringement determination, ALJ Rogers had improperly relied on exhibits that were not admitted into evidence.  The Commission struck these improper references, but affirmed ALJ Rogers’ infringement determination because, according to the Opinion, there was alternative support for infringement in the record. The Commission also affirmed with certain modifications ALJ Rogers’ findings on claim construction and validity.  The Commission chose not to rely on all of ALJ Rogers’ reasoning, but affirmed his conclusion that the asserted claims of the ‘231 and ‘089 patents are not invalid. Finally, with respect to remedy, the Commission (1) issued a limited exclusion order against MemsTech; (2) found that the public interest factors do not preclude issuance of such an order; and (3) found that there should be no bond during the Presidential review period.
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ITC Issues Final Determination Of No Violation In Certain Flash Memory Controllers (337-TA-619)

By Eric Schweibenz
|
Oct
26
On October 23, 2009, the International Trade Commission issued a notice stating that it has determined that there has been no violation of Section 337 in Certain Flash Memory Controllers, Drives, Memory Cards, and Media Players and Products Containing Same (Inv. No. 337-TA-619). By way of background, and as explained in our April 14 and August 25 posts, this investigation was instituted on December 12, 2007, based on the complaint of SanDisk Corp. (“SanDisk”) of Milpitas, California.  According to the notice, over 50 respondents were named in the complaint, and approximately half of the named respondents either settled out of the investigation or defaulted.  On August 24, 2009, the International Trade Commission issued a notice determining to review in part the April 10 final Initial Determination issued by ALJ Charles E. Bullock. According to the October 23 notice, the Commission determined to “(1) reverse the ALJ’s finding that claim 17 of the ‘424 patent does not cover single-page updates; (2) reverse the ALJ’s finding that the claim term ‘reading and assembling data from the first and second plurality of pages’ as recited in claim 20 of the ‘424 patent excludes the so-called table method as disclosed in Figure 12; (3) affirm the ALJ’s finding that the accused products do not infringe the asserted claims of the ‘424 patent; and (4) affirm the ALJ’s finding that none of the asserted claims of the ‘424 patent were proven to be invalid as anticipated or obvious in view of the prior art considered by the ALJ.”  The Commission further determined that “[g]iven the Commission’s affirmance of the ALJ’s determination that SanDisk failed to establish that the accused controllers infringe claim 17 of the ‘424 patent, the Commission declines to reach the issue of whether the ALJ should have considered the Sinclair PCT publication as evidence of prior art to claim 17 of the ‘424 patent.”
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ITC Issues Final Determination Of Violation In Certain Liquid Crystal Display Modules (337-TA-634)

By Eric Schweibenz
|
Nov
10
On November 9, 2009, the International Trade Commission issued a notice of Final Commission Determination of Violation; Issuance of a Limited Exclusion Order and Cease and Desist Orders; and Termination of the Investigation in Certain Liquid Crystal Display Modules, Products Containing Same, and Methods Using the Same (Inv. No. 337-TA-634). By way of background, the Complainant in this investigation is Sharp Corporation (“Sharp”) and the Respondents are Samsung Electronics Co., Ltd., Samsung Electronics America, Inc. (“SEAI”), and Samsung Semiconductor, Inc. (“SSI”) (collectively, “Samsung”).  The Commission instituted this investigation based on a March 4, 2008 complaint filed by Sharp alleging violations of Section 337 based on the importation into the U.S., the sale for importation, and the sale within the U.S. after importation of certain liquid crystal display devices, products containing same, and methods for using the same by reason of infringement of certain claims of U.S. Patent Nos. 6,879,364 (the ‘364 patent); 6,952,192 (the ‘192 patent); 7,304,703 (the ‘703 patent); and 7,304,626 (the ‘626 patent).  On June 12, 2009, Chief ALJ Paul J. Luckern issued an Initial Determination (“ID”) finding violation of Section 337.  See our June 16 and August 7 posts for more details.  On September 9, 2009, the Commission issued a notice of its determination not to review the ID and requested written submissions on the issues of remedy, the public interest, and bonding.  See our September 11 post for more details. In the November 9 notice, the Commission determined “that the appropriate form of relief is both 1) a limited exclusion order prohibiting the unlicensed entry of LCD devices, including display panels and modules, and products containing the same that infringe one or more of (i) claims 5-7 of the ‘364 patent; (ii) claims 1 and 4 of the ‘192 patent; (iii) claims 1-2, 6-8, 13-14, and 16-17 of the ‘703 patent; and (iv) claims 10, 17, and 20 of the ‘626 patent, where the infringing LCD devices are manufactured abroad by or on behalf of, or are imported by or on behalf of, related business entities, or successors or assigns; and (2) cease and desist orders prohibiting [SEAI] and [SSI] 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, LCD devices, including display panels and modules, and products containing the same that infringe one or more of (i) claims 5-7 of the ‘364 patent; (ii) claims 1 and 4 of the ‘192 patent; (iii) claims 1-2, 6-8, 13-14, and 16-17 of the ‘703 patent; and (iv) claims 10, 17, and 20 of the ‘626 patent.” The Commission also determined in the November 9 notice that the public interest factors do not preclude issuance of the limited exclusion order or the cease and desist order.  Finally, the Commission determined that 100 percent bond of the entered value of the covered products is required to permit temporary importation during the Presidential review period.
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ITC Issues Final Determination Of No Violation In Certain Probe Card Assemblies (337-TA-621)

By Eric Schweibenz
|
Nov
13
On November 12, 2009, the International Trade Commission issued a notice determining that there has been no violation of Section 337 in Certain Probe Card Assemblies, Components Thereof and Certain Tested DRAM and NAND Flash Memory Devices and Products Containing Same (Inv. No. 337-TA-621). By way of background, and as explained in our July 23 and September 22 posts, this investigation was instituted on December 19, 2007, based on the complaint of FormFactor, Inc. (“FormFactor”) of Livermore, California.  On December 5, 2008, Respondents Phicom Corp. and Phiam Corp. (collectively, “Phicom”) jointly filed a motion for partial summary determination that certain claims of U.S. Patent No. 6,624,648 are invalid as indefinite under 35 U.S.C. § 112.  ALJ Charles E. Bullock granted this motion on February 11, 2009 in Order No. 46.  Subsequently, on June 29, 2009, ALJ Bullock issued his initial determination (“ID”) finding no violation of Section 337 by Respondents Micronics Japan Co., Ltd.; MJC Electronics Corp. (collectively, “Micronics”); and Phicom.  On September 14, 2009, the Commission issued a notice determining to review in part ALJ Bullock’s ID. According to the November 12 notice, the Commission determined to: (1) “reverse the ALJ’s determination that Japanese Patent Application Publication H10-31034 to Amamiya et al. (RX-166) does not anticipate the asserted claims of the ‘751 patent under 35 U.S.C. § 102;” (2) “reverse in part the ID’s conclusion that, inter alia, Phicom’s accused products do not infringe claims 1-3, 12, 24, and 25 of U.S. Patent No. 6,509,751, see ID at 197, and, accordingly, to modify the ID’s conclusion of law at issue by substituting the following: ‘Respondents Micronics’ accused products do not infringe claims 1-3, 12, 24, and 25 of U.S. Patent No. 6,509,751 in violation of 35 U.S.C. § 271(a).  Respondent Phicom’s (old) Type B and Type C accused products infringe claims 1-3, 12, 24, and 25 of U.S. Patent No. 6,509,751 in violation of 35 U.S.C. § 271(a); Phicom’s new Type B and Type C accused products do not infringe.’;” (3) “strike the ID’s statement ‘Since three bases for no violation of claim 21 have been determined, no analysis of the invalidity arguments related to anticipation and obviousness of the dependent claims will be made,’ see ID at 191, and to take no position with respect to the validity of the dependent claims of the ‘152 patent;” and (4) “to affirm and adopt the ALJ’s other findings contained in the final ID under review except insofar as they are inconsistent with the Commission Opinion to be issued later.” Additionally, the Commission determined to “affirm ALJ Order No. 46 with certain modifications as will be detailed in the Commission’s Opinion.” Finally, the Commission determined that there has been no violation of Section 337, and terminated the investigation.
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ITC Issues Final Determination Of No Violation In Certain Semiconductor Chips With Minimized Chip Package Size (337-TA-630)

By Eric Schweibenz
|
Dec
30
On December 29, 2009, the International Trade Commission issued a notice determining that there has been no violation of Section 337 in Certain Semiconductor Chips With Minimized Chip Package Size and Products Containing Same (Inv. No. 337-TA-630). By way of background, this investigation was instituted on January 14, 2008, based on the complaint of Tessera, Inc. of San Jose, California.  Eighteen respondents were named in the complaint, and several of the named respondents either settled out of the investigation or defaulted.  According to the December 29 notice, the following Respondents remained in the investigation:  Acer, Inc., Acer America Corporation, Nanya Technology Corporation, Nanya Technology Corporation U.S.A., Powerchip Semiconductor Corporation, Elpida Memory, Inc., Elpida Memory (USA), Inc., ProMOS Technologies, Inc., Kingston Technology Co., Inc., Ramaxel Technology Ltd., Centon Electronics, Inc., and SMART Modular Technologies, Inc.  On August 28, 2009, ALJ Theodore R. Essex issued his initial determination (“ID”), finding no violation of Section 337 had occurred based on the importation into the U.S., the sale for importation, or the sale within the U.S. after importation of certain semiconductor chips with minimized chip package size and products containing same in connection with certain claims of U.S. Patent No. 5,663,106 (the ‘106 patent), U.S. Patent No. 5,679,977 (the ‘977 patent), and U.S. Patent No. 6,133,627.  Further, ALJ Essex determined that a domestic industry exists that practices the patents-in-suit.  See our September 1 and October 1 posts for more details.  On October 30, 2009, the Commission issued a notice determining to review in part the ID.  See our November 2 post for more details. According to the December 29 notice, the Commission determined to: “(1) modify the ALJ’s construction of the claim terms ‘top layer’ and ‘thereon’ recited in claim 1 of the ‘106 patent; (2) reverse the ALJ’s finding that the accused μBGA products do not meet all of the limitations of the asserted claims of the ‘106 patent but affirm his finding that there is no infringement due to patent exhaustion; (3) affirm the ALJ’s finding that the accused wBGA products do not infringe the asserted claims of the ‘106 patent; (4) affirm the ALJ’s validity and domestic industry analyses pertaining to the asserted claims of the ‘106 patent; (5) affirm the ALJ’s finding that the Direct Loading testing methodology employed by Tessera’s expert fails to prove infringement; and (6) affirm the ALJ’s finding that the 1989 Motorola OMPAC 68-pin chip package fails to anticipate claims 17 and 18 of the ‘977 patent under the on-sale bar provision of 35 U.S.C. § 102(b), but modify a portion of the ID.” Finally, the Commission determined that there has been no violation of Section 337 and terminated the investigation.
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ITC Issues Final Determination Of No Violation In Certain Variable Speed Wind Turbines (337-TA-641)

By Eric Schweibenz
|
Jan
09
On January 8, 2010, the International Trade Commission issued a notice determining that there has been no violation of Section 337 in Certain Variable Speed Wind Turbines and Components Thereof (Inv. No. 337-TA-641). By way of background, the Complainant in this investigation is General Electric Co. and the Respondents are Mitsubishi Heavy Industries, Ltd. (“MHI”), Mitsubishi Heavy Industries America, Inc. (“MHIA”), and Mitsubishi Power System, Inc. (“MPSA”).  On August 7, 2009, ALJ Carl C. Charneski issued the Initial Determination (“ID”) finding that a violation of Section 337 had occurred by MHI and MPSA with respect to claim 121 of the asserted ‘039 patent, and claim 15 of the asserted ‘985 patent.  ALJ Charneski further determined in the ID that there was no violation with respect to these claims by MHIA.  Additionally, ALJ Charneski determined in the ID that there was no violation of Section 337 by any party with respect to claims 5, 7, and 8 of the asserted ‘221 patent.  See our October 29, 2009 post for more details.  On October 8, 2009, the Commission issued a notice determining to review the ID, except the issue of importation and the intent finding underlying the ALJ’s inequitable conduct determination.  See our October 8, 2009 post for more details. According to the January 8 notice, the Commission “determined to terminate the investigation with a final determination of no violation.”  The Commission further stated in the notice that a “Commission opinion will issue shortly.”
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ITC Issues Final Determination Of No Violation In Certain Refrigerators (337-TA-632)

By Eric Schweibenz
|
Feb
15
On February 12, 2010, the International Trade Commission issued a notice determining that there has been no violation of Section 337 in Certain Refrigerators and Components Thereof (Inv. No. 337-TA-632). By way of background, the Complainants in this investigation were Whirlpool Corp., Whirlpool Manufacturing Corp., Whirlpool Patents Co., and Maytag Corp. (collectively, “Whirlpool”) and the Respondents were LG Electronics Corp., Inc., LG Electronics, USA, Inc., and LG Electronics Monterrey, Mexico S.A. de C.V. (collectively, “LG”).  The investigation was instituted on February 26, 2008.  On February 26, 2009, ALJ Theodore R. Essex issued the initial determination, finding no violation of Section 337 with respect to United States Patent No. 6,082,130 (the ‘130 patent).  On April 27, 2009, 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, 2009 opinion, the Commission (i) modified the ID’s claim construction for the terms “freezer compartment,” “disposed within the freezer department,” and “ice storage bin having a bottom opening,” (ii) affirmed the ID’s construction of the term “ice maker,” and (iii) determined to remand the investigation to the ALJ to make findings regarding infringement, validity, and domestic industry consistent with the Commission’s claim constructions.  See our July 8, 2009  post for more details.  On July 22, 2009, LG filed a petition for reconsideration of the Commission’s decision to modify the ALJ’s claim constructions of the phrases “freezer compartment” and “disposed within the freezer compartment.”  On August 28, 2009, the Commission denied LG’s petition.  See our September 1, 2009 post for more details.  On October 9, 2009, ALJ Essex issued his initial determination on remand (“RID”), finding no violation of Section 337.  Specifically, in the RID, ALJ Essex determined (1) that the accused refrigerators and components thereof do not infringe the asserted claims of the ‘130 patent literally or under the doctrine of equivalents; (2) that claims 1, 2, 4, 6, and 9 of the ‘130 patent are invalid under 35 U.S.C. § 103 for obviousness, but that claim 8 of the ‘130 patent is not invalid under 35 U.S.C. § 103; and (3) a domestic industry exists.  On December 14, 2009, the Commission issued a notice determining to review the RID.  See our December 16, 2009 post for more details. In the February 12 notice, the Commission “determined to affirm the RID’s determination of no violation of the ‘130 patent” and terminated the investigation.  Specifically, the Commission determined to (1) “modify the ALJ’s implied construction of the claim limitations ‘the auger moves ice pieces from the ice storage bin through the bottom opening for dispensing from the ice storage bin’ and ‘ice crushing region,’” (2) “reverse a portion of the ALJ’s determination of non-infringement and find that the accused side-by-side models infringe claims 1, 2, 4, 6, and 9 of the ‘130 patent,” (3) “affirm[ ] the ALJ’s finding that the accused side-by-side model refrigerators do not infringe claim 8 of the ‘130 patent,” (4) “affirm[ ] the ALJ’s finding that the accused French Door model refrigerators do not infringe any of the asserted claims of the ‘130 patent,” (5) “affirm[ ] the ALJ’s finding that claims 1, 2, 4, 6, and 9 of the ‘130 patent are invalid for obviousness with several modifications to the analysis concerning claims 1 and 2,” (6) affirm[ ] the ALJ’s finding that claim 8 is not invalid for obviousness,” and (7) affirm[ ] the ALJ’s finding that there is a domestic industry.”
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ITC Issues Limited Exclusion Order In Certain Cast Steel Railway Wheels (337-TA-655)

By Eric Schweibenz
|
Feb
19
On February 16, 2010, the International Trade Commission issued a notice of Issuance Of A Limited Exclusion Order and Cease and Desist Order; Termination of the Investigation in Certain Cast Steel Railway Wheels, Certain Processes For Manufacturing Or Relating To Same And Certain Products Containing Same (Inv. No. 337-TA-655). By way of background, the Complainant in this investigation is Amsted Industries Inc.  The Respondents are Tianrui Group Co. Ltd, Tianrui Group Foundry Co. Ltd., Standard Car Truck Company, Inc., and Barber Tianrui Railway Supply.  On October 16, 2009, ALJ Charneski issued an Initial Determination (“ID”) finding that a violation of Section 337 had occurred in the importation into the U.S., the sale for importation, and the sale within the U.S. after importation of certain cast steel railway wheels or products containing the same by reason of trade secret misappropriation.  See our October 19, 2009 and December 4, 2009 posts for more details.  On December 17, 2009, the Commission issued a notice determining not to review the ID.  See our December 18, 2009 post for more details. In its limited exclusion order, the Commission determined that “the appropriate form of relief is a limited exclusion order prohibiting the entry of unlicensed cast steel railway wheels or products containing same manufactured using the ABC Trade Secrets, by or on behalf of Respondents, or their affiliated companies, parents, subsidiaries, licensees, contractors, or other related business entities, or successors or assigns.”  Additionally, the Commission determined that “the appropriate form of relief includes cease and desist orders” against each of the Respondents, “preventing them from importing, selling, marketing, advertising, distributing, offering for sale, transferring (except for exportation), or soliciting U.S. agents or distributors for cast steel railway wheels and products containing the same, in violation of section 337.”  The exclusion of the above-identified products will be “for a period of ten (10) years from the effective date of this order, except under license of the owner of the ABC Trade Secrets asserted in this investigation, or as provided by law.” The Commission further determined that the public interest factors enumerated in 19 U.S.C. §§ 1337(d) and (f) did not preclude issuance of the limited exclusion order or cease and desist orders. Lastly, regarding the need for the appropriate amount of bond during the 60-day Presidential review period, the Commission determined that “bond shall be in the amount of 5% of the entered value of cast steel railway wheels and products containing same that are subject to this Order.”
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ITC Issues Final Determination Of No Violation In Certain Encapsulated Integrated Circuit Devices (337-TA-501)

By Eric Schweibenz
|
Jul
28
On July 20, 2010, the International Trade Commission issued a notice determining not to review the findings in ALJ Charles E. Bullock’s March 22, 2010 Second Supplemental Initial Determination (“Second Supplemental ID”) and November 9, 2005 Remand Initial Determination (“Remand ID”) collectively finding no violation of Section 337 in Certain Encapsulated Integrated Circuit Devices and Products Containing Same (Inv. No. 337-TA-501).  As a result, the Commission determined that there has been no violation of Section 337, and terminated the investigation. 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”).  The Commission instituted the investigation on December 19, 2003.  On November 9, 2005, ALJ Bullock issued the Remand ID 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) there was no violation of Section 337 in connection with U.S. Patent Nos. 6,630,728 and 6,455,356. After ALJ Bullock issued the Remand ID, the investigation was delayed in connection with obtaining certain alleged prior art documents from non-party ASAT, Inc. (“ASAT”).  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 ASAT in connection with the alleged prior art.  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 Remand ID as appropriate, in light of the supplemental evidence, making all necessary findings concerning Carsem’s invalidity defenses.  On October 30, 2009, ALJ Bullock issued a First Supplemental Initial Determination (“First Supplemental ID”) reaffirming his finding of a violation of Section 337 despite the new evidence obtained from ASAT.  See our November 27, 2009 post for more details. On February 18, 2010, the Commission issued an order reversing ALJ Bullock’s First Supplemental ID and remanding the investigation to the ALJ to make necessary findings on anticipation and obviousness in view of the Commission’s determination that the ASAT disclosures included additional prior art to Amkor’s asserted patents.  See our February 22, 2010 post for more details.  On March 22, 2010, ALJ Bullock issued the Second Supplemental ID finding no violation of Section 337 due to the anticipation and obviousness of various claims of the asserted patents in view of the ASAT prior art.  See our March 23, 2010 and April 9, 2010 posts for more details. According to the July 20 notice, Amkor and Carsem filed initial comments seeking review of various portions of the Second Supplemental ID, and all parties filed response comments. After examining the record of the investigation, including the Remand ID, the Second Supplemental ID, the comments, and the response comments, the Commission determined not to review the findings made in the Remand ID and Second Supplemental ID.  Accordingly, the Commission determined that there has been no violation of Section 337, and terminated the investigation.  Lastly, the notice states that “an opinion supporting the Commission’s determination will be issued.”
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ITC Issues Final Determination And Terminates Investigation In Certain Semiconductor Chips (337-TA-661)

By Eric Schweibenz
|
Jul
30
On July 26, 2010, the International Trade Commission issued a notice finding a violation of 19 U.S.C. § 1337, and determining to issue a limited exclusion order (“LEO”), cease and desist orders (“CDO”), and terminating the Investigation in Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same (Inv. No. 337-TA-661). By way of background, the Complainant in this investigation is Rambus Inc. and the Respondents are NVIDIA Corp., Asustek Computer Inc., ASUS Computer International, Inc., BFG Technologies, Inc., Biostar Microtech (U.S.A.) Corp., Biostar Microtech International Corp., Diablotek Inc., EVGA Corp., G.B.T. Inc., Giga-byte Technology Co., Ltd., Hewlett-Packard Co., MSI Computer Corp., Micro-star International Co., Ltd., Palit Multimedia Inc., Palit Microsystems Ltd., Pine Technology Holdings, Ltd., and Sparkle Computer Co., Ltd. (collectively, “Respondents”).  On January 22, 2010, ALJ Theodore R. Essex issued an Initial Determination (“ID”) finding a violation of Section 337 through the importation, sale for importation, or sale within the U.S. after importation of certain semiconductor chips having synchronous dynamic random access memory controllers and products containing same that infringe one or more claims of U.S. Patent Nos. 6,470,405, 6,591,353 and 7,287,109.  The ALJ further found no infringement of the asserted claims of U.S. Patent Nos. 7,177,998 and 7,210,016.  See our May 4, 2010 post for more details. On March 25, 2010, the Commission issued a notice determining to review the ID in part.  See our March 26, 2010 post for more details. After requesting briefing with respect to remedy, the public interest, bonding, and licensing issues (seeour June 22, 2010 post) the Commission determined to affirm ALJ Essex’s ID. The Commission determined that the appropriate form of relief is an LEO and a CDO against Respondents NVIDIA Corp., Hewlett-Packard Co., ASUS Computer International, Inc., Palit Multimedia Inc., Palit Microsystems Ltd., MSI Computer Corp., Micro-Star International, EVGA Corp., DiabloTek, Inc., Biostar Microtech Corp., and BFG Technologies, Inc.  The Commission further determined that the public interest factors did not preclude issuance of these LEO or CDO orders, and that the bond during the Presidential review period should be set at 2.65 percent of the entered value of the imported products.
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ITC Issues Notice of Final Determination Finding Violation And Issuing General Exclusion and Cease and Desist Orders In Certain Ground Fault Circuit Interrupters (337-TA-739)

By Eric Schweibenz
|
May
03
On April 27, 2012, the International Trade Commission (the “Commission”) issued a notice determining that a violation of Section 337 exists, and that the Commission has issued a general exclusion order and cease and desist orders in Certain Ground Fault Circuit Interrupters and Products Containing Same (Inv. No. 337-TA-739). By way of background, the Complainant in this investigation is Leviton Manufacturing Co., Inc. (“Leviton”), which alleges violation of Section 337 with respect to certain ground fault circuit interrupters and products containing the same that infringe certain claims of U.S. Patent Nos. 7,463,124 (the ‘124 patent), 7,737,809 (the ‘809 patent), and 7,764,151 (the ‘151 patent).  Although the Notice of Investigation named numerous respondents, several were found in default or were terminated due to settlement, consent orders, or withdrawn allegations.  The seven remaining respondents were Zhejiang Trimone Electric Science & Technology Co. Ltd. (“Trimone”), Fujian Hongan Electric Co, Ltd. (“Hongan”), TDE, Inc. (“TDE”), Shanghai ELE Manufacturing Corp., Orbit Industries, Inc., American Electric Depot Inc., and Shanghai Jia AO Electrical Co. According to the April 27 notice, ALJ Bullock issued an initial determination (“ID”) on December 20, 2011 finding no violation of Section 337 on the grounds that Leviton had not sufficiently shown that a domestic industry exists with respect to the three asserted patents and/or articles protected by those patents.  On February 21, 2012, the Commission issued a notice that it had determined to review the ID in its entirety and requested submissions from the parties on certain issues under review, and from the parties and the public on the issues of remedy, the public interest, and bonding.  See our February 24, 2012 post for more details. According to the April 27 notice, upon review of the final ID, the submissions received in response to the Commission’s notice of review, and the record of the investigation, the Commission determined that a violation of Section 337 has been shown based on infringement of claims 1-4, 6, 8-11, 13, 15-16, 35-37, 39, and 41-46 of the ‘809 patent.  The Commission further determined that certain claims of the ‘124 and ‘151 patents are invalid and no violation based on those patents had been shown.  For relief, the Commission determined to issue a general exclusion order prohibiting the unlicensed entry of ground fault circuit interrupters and products containing same that infringe one or more of the above-enumerated claims of the ‘809 patent, as well as cease and desist orders against various defaulting respondents prohibiting them from importing, selling, marketing, distributing, offering for sale, and advertising such ground fault circuit interrupters and products containing same.  The Commission also determined that a bond of $0.25 per unit is required for temporary import of the articles in question during the Presidential review period.  According to the notice, the Commission additionally terminated the investigation.
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ITC Issues Notice of Final Determination Finding Violation And General Exclusion Order In Certain Handbags And Luggage (337-TA-754)

By Eric Schweibenz
|
Jun
13
On May 30, 2012, the International Trade Commission (the “Commission”) issued a notice finding a violation of Section 337, and determining that a general exclusion order should issue in Certain Handbags and Luggage, Accessories, and Packaging Thereof (Inv. No. 337-TA-754). By way of background, Louis Vuitton filed a complaint requesting the ITC to commence an investigation pursuant to Section 337 against a host of respondents from Guangzhou China, Texas and California, for the unlawful import into the U.S., sale for importation, and/or sale within the U.S. after importation of certain handbags, luggage, accessories and packaging thereof that infringe U.S. Trademark Registration Nos. 297,594; 1,643,625; 1,653,663; 2,773,107; 2,177,828; 2,181,753; and 1,519,828.  In effect, the respondents were alleged to be in the business of manufacturing, and/or purchasing counterfeit or trademark-infringing Louis Vuitton bags and accessories from China and selling them in the United States.  Seeour December 8, 2010 post for more details.  On June 10, 2011, former Chief ALJ Luckern issued an initial determination finding that Louis Vuitton satisfied the domestic industry requirement. See our July 27, 2011 post for more details.  During the course of this Investigation, all respondents either settled or were found in default.  The defaulting respondents were identified as House of Bags, Ronett Trading, Inc., EZ Shine Group, Inc., Master of Handbags, Choice Handbags, Handbag Warehouse, T&T, and The Inspired Bagger (collectively, “the Defaulting Respondents”).  On March 5, 2012, Chief ALJ Charles E. Bullock granted Louis Vuitton’s motion for summary determination that the Defaulting Respondents violated section 337, and further recommended a general exclusion order (GEO) and a bond in the amount of 100% of the value of imported products. See our March 20, 2012 post for more details. According to the May 30 notice, the Commission determined not to review Chief ALJ Bullock’s March 5, 2012 Initial Determination, and requested briefing on remedy, the public interest, and bonding.  In Louis Vuitton’s April 26, 2012 brief, it indicated it was no longer requesting relief based on U.S. Trademark Registrations 1,643,625 and 1,653,663, but it requested a GEO and a bond of 100 percent, which was supported by the Commission Investigative Attorney.  Upon review of the submissions received in response to the Commission’s notice of review, and the record of the investigation, the Commission determined to issue a general exclusion order prohibiting the unlicensed entry of excluded handbags, luggage, accessories, and packaging that infringe any of the following U.S. Trademark Registration Nos.:  297,594; 2,773,107; 2,177,828; 2,181,753; and 1,519,828.  The Commission also determined that a bond in the amount of 100% of an article’s value is required for temporary import during the Presidential review period.  According to the notice, the Commission additionally terminated the investigation.
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ITC Issues Final Determination Of No Violation In Certain Integrated Circuits (337-TA-786)

By Eric Schweibenz
|
Sep
17
On September 13, 2012, the International Trade Commission (the “Commission”) issued a corrected notice in Certain Integrated Circuits, Chipsets, and Products Containing Same Including Televisions(Inv. No. 337-TA-786).  In the notice, the Commission determined to review ALJ Robert K. Rogers, Jr.’s July 12, 2012 Initial Determination on Violation (“ID”), affirm the ultimate finding of no violation, and terminate the investigation. By way of background, the investigation is based on a complaint filed by Complainant Freescale Semiconductor, Inc. (“Freescale”) alleging violation of Section 337 in the importation into the U.S., sale for importation, and/or sale within the U.S. after importation of certain integrated circuits, integrated circuit chipsets, and products containing the same, including televisions, that infringe one or more claims of U.S. Patent No. 5,467,455.  See our December 2, 2011 post for more details on Freescale's complaint.  The remaining respondents in this investigation are MediaTek Inc. and Zoran Corp.  On July 12, 2012, ALJ Rogers issued his final ID, finding no violation of Section 337 with respect to U.S. Patent No. 5,467,455 (the ‘455 patent).  More specifically, ALJ Rogers found that an industry does not exist in the U.S. that exploits the ‘455 patent.  ALJ Rogers also found claims 9 and 10 of the ‘455 patent to be invalid under 35 U.S.C. § 103.  See our July 16, 2012 post for more details. According to the September 13 notice, the Commission determined:
to review, and on review, reverse[ ] the ALJ’s finding that Japanese Patent Application JP H05-83113-A to Kuboki (“Kuboki”) discloses the limitation “[a] data processor within an integrated circuit package comprising:…a plurality of bus termination circuits” of claim 9 of the ‘455 patent.  The Commission has also determined to review, and on review, affirms with modification the ID’s finding that Kuboki in combination with the knowledge of one of ordinary skill in the art renders obvious claims 9 and 10 of the ‘455 patent.  The Commission has further determined to review the ID’s finding that the Kuboki reference in combination with U.S. Patent No. 5,479,123 to Gist (“Gist”) renders obvious claims 9 and 10, and on review, finds that the Kuboki reference in combination with Gist and the knowledge of one of ordinary skill in the art renders obvious claims 9 and 10 of the ‘455 patent.  The Commission has also determined to review the ID’s finding that Freescale failed to establish the existence of a domestic industry based on its licensing activities, and on review, affirm the ID’s finding with modification.  The Commission has further determined to review the ID’s finding that Freescale has failed to show that the Accused Zoran Hybrid Termination Circuits infringe claims 9 and 10 of the ‘455 patent and on review, affirms the ID’s finding with modification.
Lastly, the Commission noted that it determined not to review the remaining issues decided in the ID and will issue its opinion in the near future.
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ITC Issues Final Determination Of Section 337 Violation And General Exclusion Order In Certain LED Photographic Lighting Devices (337-TA-804)

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

By Eric Schweibenz
|
Jun
27
On June 17, 2013, the International Trade Commission (the “Commission”) issued a notice in Certain Kinesiotherapy Devices and Components Thereof (Inv. No. 337-TA-823).  In the notice, the Commission determined that Respondents LELO Inc.; PHE, Inc. d/b/a Adam & Eve; Nalpac Enterprises, Ltd.; E.T.C. Inc.; Honey’s Place Inc.; and Lover’s Lane & Co. violated Section 337 in connection with the importation and sale of kinesiotherapy devices that infringe certain claims of U.S. Patent No. 7,931,605 (the ‘605 patent).  The Commission issued a general exclusion order, cease and desist orders against Respondents, and terminated the investigation. By way of background, the investigation is based on a December 2, 2011 complaint filed by Standard Innovation Corporation and Standard Innovation (US) Corp. (collectively, “Standard Innovation”) alleging violation of Section 337 in the importation into the U.S. and sale of certain kinesiotherapy devices and components thereof that infringe one or more claims of the ‘605 patent and U.S. Patent No. D605,779 (the D‘779 patent).  Standard Innovation withdrew the D‘779 patent from the investigation.  An evidentiary hearing was held in August 2012.  On February 8, 2013, ALJ Pender issued an Initial Determination (“ID”) construing the terms of the asserted claims and finding the ‘605 patent valid and infringed, but finding no violation of Section 337 on the grounds that Standard Innovation did not satisfy the economic prong of the domestic industry requirement.  See our February 11, 2013 post for more details. On March 25, 2013, the Commission determined to review the ID in its entirety.  See our March 27, 2013 post for more details.  After examining the record, petitions for review, and the parties’ submissions, the Commission determined that Standard Innovation satisfied both the technical and economic prongs of the domestic industry requirement and that there is a violation of Section 337 with respect to claims 1-7, 9-21, 23, 24, 33-40, 42-54, 56, 57, 66-73, 75-87, 89, and 90 of the ‘605 patent. The notice further states that the Commission determined that the appropriate remedy is both a general exclusion order prohibiting the unlicensed entry into the United States of kinesiotherapy devices and components thereof that infringe any of the above claims, and cease and desist orders prohibiting each of the remaining Respondents from importing, selling, marketing, advertising, distributing, offering for sale, transferring (except for exportation), and soliciting U.S. agents or distributors for infringing kinesiotherapy devices.  The Commission also determined that the public interest factors enumerated in Section 337(d)(1) and (f)(1) do not preclude the issuance of a general exclusion order and the cease and desist orders.  As to the issuance of a general exclusion order, the Commission determined that there is a pattern of violation of Section 337 and that it is difficult to identify the source of the infringing products.  Finally, the Commission determined that a bond in the amount of zero percent of the entered value is required to permit temporary importation during the Presidential review period.
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ITC Finds No Violation Of Section 337 In Certain Products Containing Interactive Program Guide And Parental Control Technology (337-TA-845)

By Eric Schweibenz
|
Nov
13
On November 1, 2013, the International Trade Commission (the “ITC” or the “Commission”) issued a notice in Certain Products Containing Interactive Program Guide and Parental Control Technology (Inv. No. 337-TA-845).  In the notice, the Commission determined to affirm with modified reasoning the ALJ’s finding of no violation of Section 337. By way of background, the investigation is based on a May 1, 2012 complaint filed by Rovi Corporation; Rovi Guides, Inc.; Rovi Technologies Corporation; Starsight Telecast, Inc.; United Video Properties, Inc.; and Index Systems, Inc. (collectively, “Rovi”) alleging violation of Section 337 in the importation into the U.S. and sale of certain products containing interactive program guide and parental control technology that infringe one or more claims of U.S. Patent Nos. 6,701,523; 6,898,762; 7,065,709; 7,103,906; 7,225,455; 7,493,643; and 8,112,776.  See our May 3, 2012 and June 4, 2012 posts for more details on the complaint and notice of investigation, respectively.  Numerous Respondents have been terminated from the investigation, and only Netflix Inc. (“Netflix”) and Roku, Inc. (“Roku”) remain.  On June 7, 2013, ALJ David P. Shaw issued his initial determination (“ID”) finding no violation of Section 337 by Netflix and Roku based upon findings of invalidity and non-infringement of the asserted patents.  He also found that none of the accused products met the importation requirement of Section 337.  ALJ Shaw also found that, while the technical prong of the domestic industry requirement was met, the economic prong, based on licensing the asserted patents, was not.  See our June 11, 2013 post for more details on the ID. On August 9, 2013, the Commission determined to review the ID in its entirety, and requested written submissions on seven issues, as well as on remedy, bond, and the public interest.  After examining the record of the investigation, including the ID and the parties’ submissions, the Commission determined that Rovi did not prove a violation of Section 337.  More particularly, the Commission affirmed the ALJ’s finding that the importation requirement was not met, though with modified reasoning.  The Commission also affirmed with modified reasoning the ALJ’s determinations of validity and noninfringement.  In addition, the Commission modified the ALJ’s claim construction, and under this modified claim construction, reversed the ALJ’s determination that the technical prong of the domestic industry requirement was met by Rovi with regard to one of the patents.  However, the finding that a domestic industry exists with regard to the remaining patents was affirmed, with the Commission noting that both prongs were met without reaching the issue of substantial investments in licensing.  Lastly, the notice indicated that a Commission opinion will issue shortly.
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