In the Order, ALJ Bullock granted a joint motion filed by Complainant Cypress Semiconductor Corporation (“Cypress”) and Respondent Alcatel-Lucent (“ALU”) to terminate the investigation based upon Cypress’s withdrawal of the First and Second Amended Complaint, in their entirety, as against ALU.

The Investigation remains pending against several other Respondents.

According to the article, 70 new investigations were instituted under Section 337 during FY 2011, which is up from 51 new investigations in FY 2010.  Despite the record number of new filings, the average completion time for investigations concluded during FY 2011 was 13.7 months.  This is down from 18.4 months in FY 2010 and 17.9 months in FY 2009. 

As expected, the majority of cases instituted under Section 337 involved allegations of patent infringement.  Lynn Levine, Director of the ITC’s Office of Unfair Imports Investigations, indicates that attorneys who practice before the ITC attribute the agency’s ever increasing Section 337 docket to the ITC’s ability to issue exclusion orders and to quickly complete investigations.

Further, during FY 2011, the ITC increased the number of attorneys in its Office of the Administrative Law Judges and Office of the General Counsel, hired two new administrative law judges to replace two that had retired, and allocated funds to build a third courtroom and related work areas.

According to the article, the ITC has been examining issues relating to e-discovery for nearly a year, gathering input from litigants, academics, district court judges, and bar associations.  In 2010, Chief Judge Rader asked the Federal Circuit Advisory Council to study e-discovery issues and develop an e-discovery model order for consideration by district courts in patent cases.  On January 11, 2012, Chief Judge Rader and three members of the Council came to the ITC to present an analogous proposal for Section 337 investigations.

The article states that the proposal tracks the approach of the district court e-discovery model order.  In particular, litigants would:

• indicate whether electronic documents such as e-mail are being sought or not;
• presumptively limit the number of custodians whose files will be searched, the locations of those documents, and the search terms that will be used (if litigants exceed the specified limits, they would assume the additional costs);
• use focused search terms limited to specific contested issues; and
• allow privileged documents to be exchanged without losing privilege.

Chief ALJ Charles E. Bullock and ITC Chairman Deanna Tanner Okun both expressed their appreciation for Chief Judge Rader and the Council’s presentation.  After the presentation, ALJ Bullock stated that he is “optimistic that the USITC will come up with a suitable approach to address litigants’ legitimate discovery needs while balancing the costs associated with e-discovery in section 337 investigations.”

In the Order, ALJ Shaw set April 19, 2013 as the target date for completing the investigation (which is fifteen months after institution of the investigation).  ALJ Shaw further determined that the initial determination on violation shall be due on December 19, 2012.

By way of background, the Complaint in this investigation is Schweitzer-Mauduit International Inc.  The Respondents are Julius Glatz GmbH, LIPtec GmbH, and KneX Worldwide LLC (collectively, the “Respondents”). 

According to the notice, ALJ Gildea determined that no violation of Section 337 had occurred by the Respondents in the importation into the United States, the sale for importation, or the sale within the United States after importation of certain reduced ignition proclivity cigarette paper wrappers by reason of infringement of (i) claims 1-6, 10-18, and 22-25 of U.S. Patent No. 5,878,753 (the ‘753 patent), and (ii) claims 36, 43, and 45 of U.S. Patent No. 6,725,867 (the ‘867 patent). 

ALJ Gildea further determined that a domestic industry does not exist that practices the ‘753 patent.  ALJ Gildea also determined that a domestic industry does exist that practices the ‘867 patent. 

With respect to the public interest, ALJ Gildea determined that enforcement of a remedy in this investigation would not raise public interest issues.

The notice issued by ALJ Gildea released only the first two pages of the ID.  We will provide additional information after the public version of the ID issues in its entirety.

In the Order, ALJ Rogers granted a joint motion filed by Complainant Technology Properties Limited LLC (“TPL”) and Respondent ViewSonic Corporation (“ViewSonic”) to terminate the investigation based on a settlement agreement.  After reviewing the confidential and non-confidential versions of the agreement, ALJ Rogers granted the joint motion filed by TPL and ViewSonic.

In the Order, ALJ Gildea set the procedural schedule for the investigation and provided for the early exchange of claim terms for construction.  ALJ Gildea also determined that the evidentiary hearing will commence on December 10, 2012, any final initial determination will issue no later than March 26, 2013, and the target date for completion of the investigation is July 26, 2013 (which is 19 months after institution of the investigation).

By way of background, this investigation was instituted on April 20, 2011 based on CK’s complaint alleging a violation of Section 337 by Respondents Nintendo of America, Inc. and Nintendo Co., Ltd. (collectively, “Nintendo”) for the importation into the U.S. and sale of certain video game systems and wireless controllers and components thereof, including Nintendo’s Wii wireless game system and controllers.  See our March 23, 2011 and April 21, 2011 posts for more information. 

According to the Order, CK filed a motion to serve a supplemental expert report alleging “Nintendo introduced certain claim construction arguments for the first time in the rebuttal expert report” and “Nintendo improperly refused to agree to a mutual exchange of claim constructions and signaled an intent to withhold its claim construction until the due date for rebuttal expert reports and the close of fact discovery.”  As a result, CK argued that it did not have an opportunity to take fact discovery or have its experts analyze these untimely constructions.  In response, Nintendo countered that both sides should be required to submit supplemental expert reports since neither side exchanged claim constructions at an early point.  Nintendo also argued that its claim construction position was not due any earlier according to the procedural schedule, and that it is unnecessary to seek leave to supplement an expert report since “supplementation is allowable under the Ground Rules and Commission Rules.” 

ALJ Bullock determined that CK had the better position on this issue, specifically rejecting Nintendo’s argument that the motion seeking leave to file a supplemental expert report was unnecessary.  The ALJ stated that he “generally requires parties to move for leave to serve supplemental expert reports” and that “CK has good cause to supplement its expert report.”  Accordingly, CK’s motion for leave to serve a supplemental report was granted.

CK argued to strike Nintendo’s supplemental expert report, asserting that it was served “long after the due date for opening and rebuttal expert reports” and “Nintendo failed to seek leave to file the supplemental report, even though it was outside of the time permitted by the procedural schedule.”  Nintendo opposed this motion, contending that there was no deadline for supplemental reports, and again asserting that “parties were permitted to supplement their expert reports without motions practice.” 

In this instance, ALJ Bullock found Nintendo’s arguments persuasive, noting that “contrary to CK’s assertions, the procedural schedule does not set forth any deadline for serving supplemental reports” and thus, Nintendo’s supplemental report was not untimely.  Therefore, even though the ALJ’s general practice is to require parties to move for leave to serve supplemental reports, CK’s motion to strike the expert report filed without such leave was denied.

According to the Order, ALJ Essex reviewed the memoranda submitted by B&N in support of its motion (joined by Respondent Inventec Corp. (“Inventec”)) for summary determination that U.S. Patent No. 5,889,522 is invalid, as well as those submitted by Complainant Microsoft Corp. (“Microsoft”) and the Commission Investigative Staff (“OUII”) in opposition, and found that summary determination was inappropriate because every aspect of B&N’s motion was opposed by Microsoft and OUII and genuine issues of material fact remain.  The ALJ denied B&N’s motion (also joined by Inventec) for summary determination of noninfringement of U.S. Patent No. 6,597,233 on the same grounds.

In Order No. 23, ALJ Bullock granted a joint motion filed by Complainant Cypress Semiconductor Corporation (“Cypress”) and Respondent Alcatel-Lucent USA, Inc. (“ALU USA”) to terminate the Investigation based on a settlement agreement between Cypress and ALU USA.

In Order No. 25, ALJ Bullock granted a joint motion filed by Cypress and Respondents Nokia Siemens Networks BV and Nokia Siemens Networks US LLC (collectively, “NSN”) to terminate the Investigation based on a settlement agreement between Cypress and NSN.