In the Order, ALJ Gildea granted an application filed by Respondents Samsung Electro-Mechanics Co., Ltd. and Samsung Electro-Mechanics America, Inc. (collectively, “Samsung”).  Further to our January 27, 2010 post, Samsung’s application sought a recommendation to the U.S. District Court for the District of Columbia to order the deposition of an additional employee of Complainant Murata Manufacturing Co., Ltd. to proceed at the U.S. Consulate in Osaka, Japan.

By way of background, the Commission instituted the violation phase of the investigation on March 22, 2006 based on a complaint filed by Linear Technology Corporation (“Linear”) of Milpitas, California, naming Advanced Analogic Technologies, Inc. (“AATI”) of Sunnyvale, California as the sole respondent. On September 24, 2007, the Commission issued its Final Determination on the question of violation finding that certain AATI products infringed claims 2, 3, and 34 of U.S. Patent No. 6,580,258.  The Commission also issued a limited exclusion order directed toward AATI.  Linear thereafter filed a complaint requesting that the Commission institute a formal enforcement proceeding against AATI for alleged violation of the limited exclusion order.  On October 1, 2008, the Commission issued its Notice of Institution of Formal Enforcement Proceeding against AATI “to determine whether AATI is in violation of the Commission’s limited exclusion order issued in the investigation, and what, if any, enforcement measures are appropriate.”

ALJ Charneski’s March 18, 2010 EID is confidential, and we will provide additional information once the public version of the EID issues.

Pursuant to a further Bankruptcy Court order, and as confirmed by the parties in a conference with ALJ Charneski, the stay of the ITC action would be lifted, and the parties would be able to participate in the investigation no later than April 30, 2010.   “To assist the parties in preparing for the future conduct of the investigation,”  ALJ Charneski issued an initial determination “that the target date for completion of the investigation is June 28, 2011, and thus the initial determination on the question of violation of section 337 is due on February 28, 2011.”

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”).  At issue were two types of refrigerator products imported by LG:  side-by-side refrigerators and French door refrigerators.

The investigation was instituted on February 26, 2008.  On February 26, 2009, ALJ Theodore R. Essex issued his initial determination (“ID”), finding no violation of Section 337 with respect to United States Patent No. 6,082,130 (the ‘130 patent).  Upon review, the Commission modified the ID’s claim construction and remanded 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 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 that: (1) the accused refrigerators do not infringe the asserted claims of the ‘130 patent literally or under the doctrine of equivalents; (2) 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 its February 12 notice, the Commission affirmed the RID’s determination of no violation of the ‘130 patent and terminated the investigation.  The Commission modified a portion of the ALJ’s implied construction of certain claim terms, reversed-in-part the RID’s determination of non-infringement, and affirmed the RID’s determination of obviousness.  The March 12 opinion  set forth the Commission’s detailed bases for its final determination regarding claim interpretation, infringement, obviousness, and domestic industry.

Claim Construction

In his RID, the ALJ had concluded that independent claim 1 (the sole asserted independent claim of the ‘130 patent) was not infringed because the ice storage bin on the accused LG refrigerators “’does not have an auger that moves ice pieces from the ice storage bin through the bottom opening for dispensing from the ice storage bin’”  According to the final determination, the ALJ impliedly construed claim 1 as requiring that: (1) the ice pieces must “‘always be moving down as a result of the movement of the auger’”; and (2) “gravity may play no part in the passage of the ice pieces through the bottom opening when the auger is in a horizontal orientation as opposed to a vertical orientation.”  In its opinion, the Commission explained that neither of the ALJ’s implied constructions was justified based on the Commission’s previous claim construction rulings.  Furthermore, the Commission found that the ALJ’s implied constructions were contrary to the ordinary meaning of the claim language itself as well as to the specification of the ‘130 patent.  The Commission thus found that the claim limitation “the auger moves ice pieces from the ices storage bin through the bottom opening for dispensing . . .” does not require that the auger move ice from the storage bin in a continually downward direction and does not preclude the assistance of additional force (such as gravity) to effect movement of ice from the storage bin.

In the RID, the ALJ found that “the ice crushing region” in dependent claims 6 and 8 meant “an area defined by the circumference of the rotating ice crushing blades.”  Based on that construction, the ALJ concluded that claims 6 and 8 also were not infringed by the LG accused products.  In its opinion, the Commission concluded that the ALJ’s interpretation of “the ice crushing region” was directly contradictory to the language of claims 6 and 8 of the ‘130 patent, which defines “the ice crushing region” as “the ice storage bin” or “the lower ice bin,” respectively.  The Commission concluded that “the ice crushing region” should be construed as “‘an area defined by the ice storage bin (claim 6) or the lower ice bin member (claim 8) through which ice pieces must pass before being dispensed from the ice storage bin.’”

Infringement

Based on its modified claim construction, the Commission reversed a portion of the ALJ’s determination of non-infringement.  In particular, it found that the accused LG side-by-side models infringe independent claim 1 and dependent claims 2, 4, 6, and 9, of the ‘130 patent.  The Commission found that, in the side-by-side models, the “’auger moves ice pieces from the ice storage bin through the bottom opening for dispensing from the ice storage bin.’”  The Commission observed that the side-by-side LG models operates in similar fashion to the preferred embodiment described in the ‘130 patent.

The Commission affirmed the ALJ’s finding that the accused side-by-side model refrigerators do not infringe claim 8 of the ‘130 patent for at least two reasons: (1) they do not have an ice crushing region that is located “below the ice storage region”; and (2) they do not have “a lower ice bin member connected to the lower edge of the upper ice bin member.”

Regarding the accused French door model, the Commission affirmed the ALJ’s finding that this model did not infringe any of the six asserted claims of the ‘130 patent.  With respect to independent claim 1, the Commission noted that the claim term “freezer compartment” means “a section of a refrigerator cabinet kept at a below-freezing temperature, having an opening that provides access to the interior and a closure member that allows access to the access opening.”  Under this construction, the “freezer compartment” must be a part of the refrigerator cabinet.  The Commission concluded that the ice box of LG’s French Door model is not a part of the refrigerator cabinet, and thus, it does not infringe either literally or under the doctrine of equivalents.  Since independent claim 1 was not infringed by the French Door model, the other asserted claims of the ‘130 patent, each of which depend from claim 1, likewise were determined by the Commission not to infringe.

Invalidity

The Commission affirmed the ALJ’s finding that claims 1, 2, 4, 6, and 9 of the ‘130 patent are invalid for obviousness, and affirmed the ALJ’s finding that claim 8 is not invalid for obviousness.  In his RID, the ALJ concluded that these claims were obvious in light of the Hitachi reference combined with other prior art that was well known prior to the 1998 filing date of the ‘130 patent.  The Commission agreed.

Specifically, the Commission found (and the parties did not dispute) that the Hitachi reference disclosed every element of claim 1 other than an “ice maker mounted in the freezer” or an “ice storage bin below the ice maker.”  The Commission further found that the ALJ properly applied the KSR standard for obviousness.  In relevant part, the Commission concluded that, prior to 1998, automatic ice makers were well known in the art, and that persons of ordinary skill would be motivated to combine such prior art ice makers to improve the Hitachi invention.  Similarly, claim 2 was held to be invalid as obvious over the combination of the Hitachi reference and the Gould reference.  Likewise, claims 4, 6 and 9 were held to be invalid as obvious over the combination of the Hitachi reference with other prior art teachings and knowledge in the industry.  Finally, the Commission concluded that claim 8 was not invalid as obvious over the Hitachi reference.

The Commission rejected Whirlpool’s contention regarding secondary considerations of non-obviousness.  The Commission found that Whirlpool had failed to demonstrate any nexus between the patentable features of  the ‘130 patent claims and any alleged commercial success of its refrigerators.  The Commission also found that there was insufficient evidence of copying, long-felt need, or failure of others.  Accordingly, the Commission concluded that evidence of secondary considerations failed to overcome the ALJ’s finding that claims 1, 2, 4, 6 and 9 are invalid for obviousness.

Domestic Industry

Finally, the Commission affirmed the ALJ’s determination that Whirlpool had satisfied the domestic industry requirement.

The complaint alleges that Cablevision Systems Corp. of Bethpage, New York (“Cablevision”) unlawfully imports into the United States, sells for importation, and/or sells or leases within the United States after importation digital set-top boxes (“STBs”) that infringe certain claims of U.S. Patent Nos. 5,666,293 (the ‘293 patent), 5,635,979 (the ‘979 patent), 6,381,748 (the ‘748 patent), 6,367,078 (the ‘078 patent), and 7,561,214 (the ‘214 patent) (collectively, the “Asserted Patents”).

According to the complaint, (1) the ‘293 patent “describes an STB that downloads operating system software and application software through a digital broadband channel,” (2) the ‘979 patent “describes a dynamically programmable STB that can be updated with software to support additional functionality,” (3) the ‘748 patent “describes an STB that can be used to access content on the Internet,” (4) the ‘078 patent “describes an STB with user-interface software that allows users to navigate available content by category, as well as by channel,” and (5) the ‘214 patent “describes an STB with user-interface software that allows users to navigate available programs by channel, and through the selection of an ‘anchor’ channel, by category.”

The accused products identified in the complaint include STBs and software intended for use on or with the STBs.  The specific products named in the complaint include the Scientific Atlanta Explorer 4250HD, the Scientific Atlanta Explorer 8300HD, and the Scientific Atlanta Explorer 4200HD.

Verizon asserts that it satisfies the domestic industry (economic prong) requirement through its significant investments in plant and equipment, employment of labor and capital, and engineering, research and development activities related to products and services that embody the Asserted Patents.  With respect to the domestic industry (technical prong) requirement, Verizon identified its FiOS TV services and the STBs it purchases through third-party vendors (including the Motorola 7216, Motorola 6416, Motorola 7100, Motorola 6200, Motorola 2708, and Motorola 2500 products).

As to potential remedy, Verizon requests that the Commission issue a permanent exclusion order and a permanent cease and desist order directed to Cablevision.

The Complainants in this investigation are Avago Technologies Fiber IP Pte. Ltd., Avago Technologies General IP Pte. Ltd., and Avago Technologies Ltd.  The sole Respondent is Emcore Corporation.

According to the notice, ALJ Essex held that a violation of Section 337 occurred in connection with the importation into the U.S., sale for importation, or sale within the U.S. after importation of certain optoelectronic devices, components thereof, and products containing same by reason of infringement of claims 1, 2, 3, and 5 of U.S. Patent No. 5,359,447 (the ‘447 patent).  ALJ Essex further determined that no such violation of Section 337 had occurred with respect to U.S. Patent No. 5,761,229 (the ‘229 patent) and claim 6 of the ‘447 patent.

ALJ Essex also determined that the ‘447 patent is not invalid, not unenforceable, and a domestic industry exists with respect to the ‘447 patent.  The notice further stated that Respondent did not have an implied license to practice the asserted claims of the ‘447 patent.  ALJ Essex additionally determined that the asserted claim of the ‘229 patent was not invalid, but neither the asserted claim of the ‘229 patent nor claim 6 of the ‘447 patent were infringed.  Finally, ALJ Essex held that while the economic prong of the domestic industry requirement for the ‘229 patent had been satisfied, the technical prong for the ‘229 patent had not been satisfied.

The notice issued by ALJ Essex released only the title pages and conclusions of law sections of the ID.  We will provide additional information once the public version of the ID issues in its entirety.

By way of background, the Complainant in this investigation is Humanscale Corporation and the Respondents are CompX International, Inc. and Waterloo Furniture Corporation Ltd. d/b/a CompX Waterloo.

In the ID, ALJ Luckern found a violation of Section 337 in connection with the importation into the U.S., sale for importation, and sale within the U.S. after importation of certain adjustable keyboard support systems and components thereof.  The ID noted that the accused products met all limitations of both asserted claims 7 and 34 of U.S. Patent No. 5,292,097 (the ‘097 patent), but only claim 34 was not invalid.   ALJ Luckern also determined that Respondents had not established any intervening rights and a domestic industry exists with respect to the ‘097 patent.

The asserted patent relates to work surface support mechanisms adapted to be affixed to a base, one application of which is to support keyboards.

Claim Construction

ALJ Luckern construed nine terms from claim 7 of the ‘097 patent.

• First, the claim terms “support means” and “locking means” were construed to overcome their statutory presumption of a “means-plus-function” element under 35 U.S.C. §112 ¶ 6, because, among other reasons, claim 7 recited “definite structures in such detail that said claim can not be interpreted as a means-plus-function claim.”
• Second, the claim term “at least partially below the fixed base” was construed to mean “at least partially below the level of, but not necessarily underneath or beneath, the fixed base.” 
• Third, the claim term “”fixed base” was construed to mean “the structure to which the claimed support means is adapted to be attached.”
• Fourth, the claim term “displaceable longitudinally” was construed to mean “capable of movement in the direction of the line connecting the location of the pivot to the location of the pivot on the other end of the link element.”
• Fifth, the term “pivotally fixed” connection was construed to mean “capable of rotational movement about one axis and not capable of other movement.”
• Sixth, the term “pivotally mounted” connections was construed to mean “capable of rotational movement about an axis, but not necessarily restricted from other movement.”
• Seventh, the term “pivotal connection” was construed to mean “coincident with the location of the pivotal axis, where the pivot pin is located.”
• Eighth, the term “throughout such movement the attitude of said support platform remains substantially constant” was construed to mean “when moving between the first and second positions, the angle between the support platform and a reference, such as the horizontal plane, the plane of a tabletop, or the horizon, stays substantially the same.”
• Ninth, the terms “supported on” and “provided on” were construed to mean “integral with or attached to.”

ALJ Luckern construed one term from claim 34 of the ‘097 patent.

• The term “frictionally interengagable” was construed to mean “capable of locking engagement by application of only a frictional force sufficient to maintain a locked position during normal use.”

Infringement

The ID organized the accused products into three categories: (1) rear wedge brake products, in which the wedge lock is located at the fixed base side of the assembly; (2) front wedge-lock products, in which the wedge lock is located at the support platform side of the assembly; and (3)  brake-shoe products.  Based on the above claim constructions, ALJ Luckern determined that rear and front wedge type products did not meet all limitations of claim 7 of the ‘097 patent (either literally or through the doctrine of equivalents).  On the other hand, ALJ Luckern found that the brake-shoe products practice each element of claim 7.  Since claim 34 depends from claim 7, only the brake-shoe products required analysis with respect to infringement of claim 34, and ALJ Luckern found those products infringed claim 34.

Invalidity

As a threshold issue, ALJ Luckern first determined the effective filing dates of the asserted claims, since the underlying application was a continuation-in-part.  ALJ Luckern found that the Complainant “satisfied its burden of producing evidence that claim 7 of the ‘097 patent is entitled to the benefit of an effective filing date of October 31, 1990, the filing date of the earlier ‘448 parent application to which the ‘097 patent claims priority,” but that Complainant did not satisfy its burden regarding claim 34 of the ‘097 patent which will therefore have “an effective filing date of July 1, 1992, the filing date of the continuation-in-part application that led to the ‘097 patent.”

The ID proceeded to hold that neither claim 7 nor claim 34 were anticipated by the Kompauer reference under 35 U.S.C. § 102.  With regard to 35 U.S.C. § 103, however, ALJ Luckern held “that the combination of Kompauer and Adam does render claim 7 of the ‘097 patent obvious.”  Claim 7 was similarly held obvious under 35 U.S.C. § 103 through a combination of Kompauer and Holtz, or a combination of Kompauer and Hood.   ALJ Luckern found that secondary considerations did not exhibit a sufficient nexus with claim 7 of the ‘097 patent, and therefore did not support patentability.  As to claim 34 of the ‘097, the ID found this claim not invalid under 35 U.S.C. § 103 with regard to the prior art asserted by Respondents.

Intervening Rights

Respondents argued that no injunction should issue under the doctrine of intervening rights because the scope of claim 34 changed during reexamination, and the accused products have been sold without significant change since prior to reexamination.  However, ALJ Luckern found that Respondents had “not established, by clear and convincing evidence, that products substantially identical to the accused products were made, purchased, used, or imported into the United States prior to the issuance of the reexamination certificate of the ‘097 patent.”

Domestic Industry

Based on ALJ Luckern’s examination of Complainant’s KM product, he found “that the KM product meets the limitations of both claim 7 and claim 34, and therefore that complainant has met its burden to prove the technical prong of domestic industry.”  With respect to the economic prong,  Complainant previously moved for summary determination that the economic prong of the domestic industry had been satisfied.  Order No. 27 granted this motion, and Respondents petitioned to the Commission for review of that initial determination.  That petition for review is currently before the Commission.

Remedy and Bond

With respect to remedy, ALJ Luckern recommended that if the Commission finds a violation of Section 337, it should issue a limited exclusion order directed to “infringing articles whether they are private label products or brand-name products….[S]aid order should not be limited to specifically-identified products, but rather extend to all infringing products.”  Additionally, ALJ Luckern recommended a certification provision to facilitate Custom’s enforcement of any recommended exclusion order.  Finally, ALJ Luckern recommended, if necessary, “any bond be set at 100 percent of the entered value of the infringing products imported, during the Presidential period, should a violation be found.”

By way of background, the Complainant in this investigation is Eastman Kodak Company (“Kodak”).  The original Respondents were Samsung Electronics Company, Ltd., Samsung Electronics America, Inc., Samsung Telecommunications America, LLC (collectively, “Samsung”), LG Electronics, Inc., LG Electronics USA, Inc., and LG Electronics MobileComm USA, Inc. (collectively, “LGE”).  Prior to the issuance of the ID, LGE was terminated from the investigation.

ALJ Charneski issued the ID in this investigation on December 17, 2009, finding there was a violation of Section 337 in connection with the importation into the United States, the sale for importation, or the sale within the United States after importation of certain Samsung mobile telephones or wireless communication devices featuring digital cameras, or components thereof, that infringe certain claims of U.S. Patent Nos. 5,493,335 (the ‘335 patent) and 6,292,218 (the ‘218 patent).  Further, ALJ Charneski held that certain claims of the ‘335 and ‘218 patents are not invalid due to anticipation, obviousness, obvious-type double patenting, failure to comply with the written description requirement of 35 U.S.C. § 112, and that the claims of the ‘218 patent were not unenforceable.  Finally, ALJ Charneski found that a domestic industry existed for the ‘335 and ‘218 patents based on Samsung’s licensing of the patents and substantial investments in research and development that exploit the patents.  See our December 21, 2009 post for more details.

U.S. Patent No. 5,493,335

Regarding claim construction in connection with the ‘335 patent, ALJ Charneski construed nine claim terms.

• First, the claim term “a baseband image signal representative of color image pixels” was construed to mean “image data values that have not undergone image compression, each of which corresponds to a color image pixel.”
• Second, the claim term “a buffer memory having sufficient capacity for storing the color image pixel as baseband signals corresponding to at least one image” was construed to mean “memory for temporary storage having sufficient capacity to store baseband signals corresponding to at least one color image.”
• Third, the claim term “processed image signals obtained from the buffer memory” was construed to mean “image signals taken from the buffer memory that are subjected to image compression.”
• Fourth, the claim term “selecting a pixel resolution of the image by specifying an order in which the color image pixels are selected for storage in both vertical and horizontal directions” was construed to mean “a full resolution mode in which all color image pixels are selected and at least one reduced resolution mode in which less than all color image pixels are selected.”
• Fifth, the claim term “a full resolution mode in which all color image pixels are selected” was construed to mean “a mode with the largest number of color pixels selectable by the user.”
• Sixth, the claim term “subsampling of the color image pixels” was construed to mean “reducing the number of color image pixels by pixel selection, averaging of pixel values, or a combination thereof.”
• Seventh, the claim term “means for storing the selected color image” was construed as a means-plus-function limitation and the claimed function for the “means for storing the selected color image” is “storing the selected color image pixels in said output memory” and the structure is the latching and decoding circuit.
• Eighth, the claim term “compressing the baseband image signal” was construed to mean “applying an image compression algorithm in the baseband signal.”
• Ninth, the claim term “averaging at least some of the color image pixels” was construed to mean “creating a color pixel average based on two or more color pixel values.”

In light of these claim constructions, ALJ Charneski determined that Kodak had demonstrated that Samsung’s products infringed all the asserted claims of the ‘335 patent.

With respect to validity, ALJ Charneski determined that Samsung had not shown that any of the asserted claims of the ‘335 patent were invalid due to anticipation, obviousness, or obvious-type double patenting.  First, ALJ Charneski rejected Samsung’s assertion that the ‘335 patent was anticipated by the Gouhara reference.  In particular, ALJ Charneski determined that the Gouhara reference was not prior art and does not disclose the “reduced resolution mode,” the “resolution mode switch,” or the “means for storing” limitations of independent claim 1 nor the “burst mode” limitation of dependent claim 4.  Second, ALJ Charneski rejected Samsung’s assertion that claim 12 the ‘335 patent was obvious in view of the combination of the Gouhara reference with the Sasaki or Bayer references because the combination of these references “does nothing to address the fact that . . . Gouhara lacks the ‘reduced resolution mode,’ and ‘resolution mode switch’ limitations” present in claim 12.  ALJ Charneski also rejected Samsung’s assertion that certain claims of the ‘335 patent were obvious in view of the use of a color filter in combination with the Tsukamoto reference because there was no evidence that “one of ordinary skill would have any reason to combine Tsukamoto with a color filter array, and would even be able to make it work, let alone to meet all the limitations” of the claims.  Third, ALJ Charneski rejected Samsung’s argument that a later filed, but earlier issued, patent rendered claim 1 of the ‘335 patent invalid due to double patenting because there was no evidence that one of ordinary skill in the art “could have bridged the gap between the techniques” used in both patents.

U.S. Patent No. 6,292,218

Regarding claim construction in connection with the ‘218 patent, ALJ Charneski construed seven claim terms.

• First, the claim term “captured image” was construed to mean “an image of a scene captured by the electronic still camera.”
• Second, the claim term “first number of color pixel values” was construed to mean “the number of color pixel values generated by the photosites on the image sensor.”
• Third, the claim term “first color pattern” was construed to mean “the color pattern of the image as generated by the photosites on the image sensor.”
• Fourth, the claim term “generating” was construed to mean “creating.”
• Fifth, the claim term “third number of color pixel values” was construed to mean “the number of color pixel values generated by the still processor for each still image.”
• Sixth, the claim term “motion processor” was construed to mean “a digital processor that processes a series of motion images.”
• Seventh, the claim term “still processor” was construed to mean “a digital processor that processes a captured still image.”

In light of these claim constructions, ALJ Charneski determined that Kodak had shown that Samsung’s products infringed all the asserted claims of the ‘218 patent.

With respect to validity, ALJ Charneski determined that Samsung had not shown that the asserted claims of the ‘218 patent were invalid for failure to satisfy the written description requirement of 35 U.S.C. § 112.  In particular, ALJ Charneski found that “physically separate hardware for use as the motion and still processors” was not, as asserted by Samsung, part of the claimed invention and thus was not necessary to be taught in the specification.

Regarding unenforceability, ALJ Charneski determined there was no evidence of intent to deceive the PTO on the part of either the inventors or anyone connected with the prosecution of the ‘218 patent.

Domestic Industry

Regarding domestic industry, ALJ Charneski determined that Kodak demonstrated “substantial domestic investment in the exploitation of the ‘335 patent and the ‘218 patent through licensing.  Consequently, pursuant to 19 U.S.C. § 1337(a)(3)(c), it is found that the domestic industry requirement is satisfied as to both patents asserted in the investigation.”  ALJ Charneski further determined that “in addition to the evidence discussed above relating to Kodak’s exploitation of the asserted patents through licensing, it has also been shown that Kodak has satisfied the domestic industry requirement through substantial investments in research and development that exploit the patents.”

By way of background, the Complainant in this investigation is General Electric Company (“GE”).  The Respondents are Mitsubishi Heavy Industries, Ltd., Mitsubishi Heavy Industries, America, Inc., and Mitsubishi Power Systems, Inc. (collectively, “MHI”).

According to the Order, MHI’s inequitable conduct defense was based on the fact that “Wilkens was [originally] listed as one of six named inventors” and that GE’s “counsel removed [] Wilkens from the [application-at-issue] subsequent to its filing.”

Although the Order is heavily redacted, MHI opposed the motion because “there are a number of facts that indicate an intent to deceive” in removing Wilkens from the application.  The Commission Investigative Staff also opposed the motion because  “there is evidence from which one could reasonably infer that Wilkens contributed to the claimed subject matter and should have remained a named inventor.”

In the Order, ALJ Charneski denied GE’s motion because “there is need for a factual development of this inequitable conduct issue.”