ALJ Shaw Rules On Motions To Quash Subpoenas In Certain Standard Cell Libraries (337-TA-906)

Posted On: July 17, 2014   By:
Topics: ALJ Orders, ALJ Shaw

On July 11, 2014, ALJ David P. Shaw issued Order Nos. 23 and 24 in Certain Standard Cell Libraries, Products Containing or Made Using the Same, Integrated Circuits Made Using the Same, and Products Containing Such Integrated Circuits (Inv. No. 337-TA-906).

According to Order No. 23, non-party James H. Hogan filed a motion to quash and/or limit the subpoena duces tecum and ad testificandum issued upon request by respondents Taiwan Semiconductor Manufacturing Co., Ltd. and TSMC North America (collectively, “TSMC”).  Mr. Hogan argued that he was subject to the “apex deposition rule, which protects such executives from depositions when the executive has no unique first-hand knowledge of the facts of the case, or where the testimony would be repetitive.”  Accordingly, Mr. Hogan argued that he had limited knowledge of the facts at issue, no unique, first-hand knowledge relevant to any claims or defenses, and that TSMC did not exhaust other less intrusive discovery methods to get the information it seeks.  Mr. Hogan further argued that the subpoena’s definition of “Related Tela Patents” should be limited.  In opposition, TSMC asserted that Mr. Hogan has unique, first-hand knowledge of Complainant Tela Innovations Inc. (“Tela”) because he was one of the co-founders and is directly involved in Tela’s business decisions.

ALJ Shaw determined that Mr. Hogan was subject to the apex deposition rule and that TSMC failed to prove that his deposition is necessary.  Specifically, ALJ Shaw held that “TSMC has not established that Mr. Hogan has relevant information that could not be obtained from the other founders of Tela, or from other persons included on the emails and other communications attached as exhibits to TSMC’s opposition papers.”  As to Mr. Hogan’s request to limit the subpoena’s definition of “Related Tela Patents,” ALJ Shaw denied this request.  Accordingly, ALJ Shaw granted-in-part Mr. Hogan’s Motion.

According to Order No. 24, non-parties Rajiv Bhateja, Jacob Jacobsson, and Martine Penilla Group (“MPG”) (collectively, “movants”) filed a motion to quash subpoenas duces tecum and ad testificandum issued upon request by TSMC.  In opposition, TSMC argued that both Mr. Bhateja and Mr. Jacobsson had information relevant to TSMC’s defenses because the men were vice president and CEO, respectively, at Blaze DFM, Inc. (“Blaze”) and that Tela acquired Blaze’s assets in 2009, including the patents asserted in this investigation.  TSMC further argued that MPG possessed relevant information because MPG is Tela’s patent prosecution firm, and prosecuted the patents at issue in this investigation.  In support of the motion, movants argued that neither Mr. Bhateja nor Mr. Jacobsson were with Blaze when the inventors invented the claims of the asserted patents.  Additionally, MPG argued that their “email repository contains numerous privileged and confidential communications with clients other than Tela,” and that “TSMC’s subpoena would require MPG to either turn over its entire email repository containing these privileged communications to an outside vendor and its attorneys in this Investigation, or review and produce emails on its own.”

ALJ Shaw determined that Messrs. Bhateja and Jacobsson are in possession of information relevant to issues raised in this investigation based on their previous employment at Blaze.  As to MPG, ALJ Shaw held that MPG must produce the requested documents because “[t]he fact that MPG will have to perform screens for relevance and privilege before producing documents responsive to the subpoenas is not a reason to quash those subpoenas.”  ALJ Shaw also rejected movant’s request to limit the definitions of certain terms.  ALJ Shaw held that the definitions were not overly broad.  Accordingly, ALJ Shaw denied movant’s Motion.

ALJ Lord Sets 16-Month Target Date In Certain Integrated Circuits (337-TA-920)

Posted On: July 16, 2014   By:
Topics: ALJ Lord, ALJ Orders

On July 15, 2014, ALJ Dee Lord issued Order No. 3 in Certain Integrated Circuits and Products Containing the Same (Inv. No. 337-TA-920).

By way of background, this investigation is based on a May 12, 2014 complaint filed by Freescale Semiconductor, Inc. alleging violation of Section 337 in the importation into the U.S. and sale of certain integrated circuits and products containing the same that infringe one or more claims of U.S. Patent Nos. 5,962,926; 7,158,432; 7,230,505; 7,518,947; 7,626,276; and 7,746,716.  See our May 14, 2014 and July 1, 2014 posts for more details on the complaint and Notice of Investigation, respectively.   

According to Order No. 3, ALJ Lord set November 2, 2015 as the target date for completing the investigation (which is approximately sixteen months after institution of the investigation).  In addition, ALJ Lord noted that the Initial Determination on alleged violation of Section 337 will be issued on July 2, 2015.

ALJ Gildea Denies Motion For Non-Monetary Sanctions In Certain Integrated Circuit Devices (337-TA-873)

On July 7, 2014, ALJ E. James Gildea issued Order No. 64 in Certain Integrated Circuit Devices and Products Containing the Same (Inv. No. 337-TA-873).

By way of background, the investigation is based on a complaint filed by Complainant Tela Innovations, Inc. (“Tela”) alleging violation of Section 337 in the importation into the U.S. and sale of certain integrated circuit devices and products containing the same that infringe one or more claims of U.S. Patent Nos. 8,264,049; 8,264,044; 8,258,550; 8,258,547; 8,217,428; 8,258,552; and/or 8,030,689.  See our February 11, 2013 and March 14, 2013 posts for more details on the complaint and the Notice of Investigation, respectively.

In the Order, Respondents filed a motion seeking non-monetary sanctions against Tela for failure to fully comply with Order No. 26, which required Tela to provide an affirmative statement of the date Tela first became aware of inventorship issues with respect to two of the asserted patents.  See our September 30, 2013 post for more information about ALJ Gildea’s ruling in Order No. 26.  Accordingly, Respondents sought a finding that Tela knew at the time the Complaint was filed that it did not own two asserted patents, which they say would mandate a finding of unclean hands.

ALJ Gildea held that Tela’s response was not made in bad faith, such that a finding of sanctions was appropriate.  Specifically, ALJ Gildea held that “[Tela’s] response, while not precisely what was ordered in Order No. 26, sufficiently shows here that [Tela] sought to comply to the extent it felt able.”  Accordingly, ALJ Gildea denied Respondents’ motion.

ITC Issues Public Version Of Opinion In Certain Compact Fluorescent Reflector Lamps (337-TA-872)

On July 3, 2014, the International Trade Commission (“the Commission”) issued the public version of its opinion in Certain Compact Fluorescent Reflector Lamps, Products Containing Same and Components Thereof (Inv. No. 337-TA-872).

By way of background, the investigation is based on a complaint filed by Andrzej Bobel and Neptun Light, Inc. (collectively, “Neptun”) alleging violation of Section 337 in the importation into the U.S. and sale of certain compact fluorescent reflector lamps (“reflector CFLs”), and products and components containing same, that infringe claims 1, 2, 10, and 11 of U.S. Patent No. 7,053,540 (the ‘540 patent).  See our January 30, 2013 and March 1, 2013 posts for more details on Neptun’s complaint and the Notice of Investigation, respectively.  On February 3, 2014, ALJ Shaw determined that Respondents Maxlite, Inc.; Satco Products, Inc.; and Litetronics International, Inc.’s (collectively, “Respondents”) importation and sale of certain reflector CFLs infringed asserted claims 1, 2, 10, and 11.  See our March 14, 2014 post for more details on the public version of the ID.  On April 8, 2014, the Commission issued a notice determining to review ALJ Shaw’s findings on the construction of “mating opening,” infringement, and the economic prong of the domestic industry requirement.  See our April 10, 2014 post for more details on the notice.

According to the Opinion, the Commission determined that the term “mating opening” needs no construction and should be given its plain and ordinary meaning. ALJ Shaw construed the term to mean “an area of the light source base (i.e., the portion through which the light source is inserted) is located,” which the Commission rejected as effectively eliminating the “mating opening” limitation.  As an initial matter, the Commission found that the “mating” portion of the term was not in dispute and, therefore, did not need to be construed.  As to the “opening” portion of the term, the Commission held that the term is a common and easily understood term. Additionally, the Commission determined that the term did not have a special meaning to those of ordinary skill in the art in the field of the ‘540 patent.  Accordingly, the Commission held that “opening” needs no construction, and should be given its plain and ordinary meaning.

The Commission reversed ALJ Shaw’s infringement determination, holding that Respondents products do not infringe the ‘540 patent either literally or under the doctrine of equivalents.  Specifically, the Commission determined that Respondents’ products do not satisfy the “mating opening,” “said base being inside said defined cavity of said reflector and located inside said mating opening,” “first circumferential flange of the reflector cavity,” and “second circumferential flange of the light source base” limitations.

As to the economic prong of the domestic industry requirement, the Commission took no position on the issue of whether Neptun satisfied the economic prong of the domestic industry requirement.

Accordingly, the Commission determined that Neptun failed to prove a violation of Section 337.

ALJ Shaw Denies Motion For Summary Determination In Certain Multiple Mode Outdoor Grills (337-TA-895)

Posted On: July 15, 2014   By:
Topics: ALJ Orders, ALJ Shaw

On July 9, 2014, ALJ David P. Shaw issued Order No. 44 denying Respondents’ motion for summary determination of no infringement at the time of importation in Certain Multiple Mode Outdoor Grills and Parts Thereof (Inv. No. 337-TA-895).

By way of background, this investigation is based on a complaint filed by A&J Manufacturing, LLC and A&J Manufacturing, Inc. (collectively, “A&J”) alleging violation of Section 337 by several respondents in the importation and sale of certain multiple mode outdoor grills and parts thereof that infringe one or more claims of U.S. Patent Nos. 8,381,712 (the ‘712 patent), D660,646 and D662,773.  See our August 22, 2013 and September 23, 2013 posts for more details on the complaint and notice of investigation, respectively.

According to the Order, Respondents Char-Broil, LLC; Rankam Metal Products Manufactory Limited, USA, Zhejiang Fudeer Electric Appliance Co., Ltd.; Outdoor Leisure Products, Inc.; Academy Ltd. (d/b/a Academy Sports + Outdoors); Ningbo Huige Outdoor Products Co., Ltd.; GHP Group, Inc.; and The Brinkmann Corporation (the “Moving Respondents”) filed a motion for summary determination of no infringement at the time of importation.  A&J and the Commission Investigative Attorney filed responses opposing the motion.

In support of their motion, the Moving Respondents primarily relied on the Federal Circuit’s vacated opinion in Suprema v. ITC, 742 F.3d 1350 (Fed. Cir. 2013).  Specifically, the Moving Respondents argued that A&J could not establish that any of the accused products infringe any of the claims of the ‘712 patent at the time of importation since the accused products were imported in an unassembled state and thus required assembly after importation.  In the Order, ALJ Shaw noted as a threshold matter that the Federal Circuit ordered rehearing en banc and vacated the panel’s decision in Suprema on the same day that the Moving Respondents filed their instant motion.  ALJ Shaw further noted that an unassembled device may be found to infringe.  In any event, ALJ Shaw held that genuine issues of material fact exist and thus denied the Moving Respondents motion.

ALJ Shaw Issues Notice Of Initial Determination Finding Violation Of Section 337 In Certain Crawler Cranes (337-TA-887)

Posted On: July 14, 2014   By:

On July 14, 2014, ALJ David P. Shaw issued a notice of the Initial Determination (“ID”) (dated July 11, 2014) in Certain Crawler Cranes and Components Thereof (Inv. No. 337-TA-887).

By way of background, this investigation is based on a June 12, 2013 complaint filed by Complainant Manitowoc Cranes, LLC (“Manitowoc”) alleging violation of Section 337 by Respondents Sany Heavy Industry Co., Ltd. and Sany America, Inc. in the importation into the U.S. and sale of certain crawler cranes and components thereof that infringe one or more claims of U.S. Patent Nos. 7,546,928 (the ‘928 patent) and 7,967,158, and that were designed and manufactured using Manitowoc Cranes’ misappropriated trade secrets.  See our June 14, 2013 and July 15, 2013 posts for more details on the complaint and Notice of Investigation, respectively. 

According to the notice, ALJ Shaw determined that a violation of Section 337 has been found in this investigation.  Specifically, ALJ Shaw determined that Manitowoc demonstrated  (i) that “certain accused products infringe claims of the ‘928 patent,” and (ii) “misappropriation of certain asserted trade secrets.”

The notice issued by ALJ Shaw released only limited information.  We will provide additional information once the public version of the ID issues in its entirety.

ITC Decides To Review-In-Part ALJ Bullock’s Initial Determination Finding A Violation Of Section 337 In Certain Windshield Wipers (337-TA-881)

Posted On: July 11, 2014   By: and

On July 9, 2014, the International Trade Commission (“the Commission”) issued a notice that it determined to review Chief ALJ Charles E. Bullock’s Initial Determination (“ID”) finding a violation of Section 337 in Certain Windshield Wiper Devices and Components Thereof (Inv. No. 337-TA-881).

By way of background, this investigation was instituted by the Commission on June 11, 2013 based on a complaint filed by Federal-Mogul Corporation and Federal-Mogul S.A. (collectively, “Federal-Mogul”) alleging violation of Section 337 by Respondents Trico Corporation, Trico Products, and Trico Components SA de CV (collectively, “Trico”) in the importation and/or sale of certain windshield wiper devices and components thereof that infringe claims 1-14 of U.S. Patent No. 8,347,449 (“the ‘449 patent”).  See our May 13, 2013 and June 10, 2013 posts for more details on the complaint and notice of investigation, respectively.

ALJ Bullock issued his final ID on May 8, 2014, finding that Trico’s accused products infringe claims 1 and 5 of the ’449 patent, but not claims 2-4 and 6-14.  The ALJ also found that the asserted claims of the ’449 patent are not invalid for obviousness or lack of written description.  The ALJ further found that Federal-Mogul satisfied the domestic industry requirement.  See our May 29, 2014 post for more details on the ID.

According to the July 9, 2014 notice, the Commission determined to review the ALJ’s omission of the caveat “without damage” in the construction of the limitations “detachable therefrom,” “detachably engage,” “detachably connected,” and “releasably secure” recited in claims 1, 2, 8 and 12.  The Commission will also review the construction of the “clamping” limitation recited in claims 2, 3, 6, 7 and 12.  With respect to infringement, the Commission will review the ALJ’s finding that the accused Ford F-Series and Chrysler 200 wiper blades satisfy the “detachable” limitation of claims 1 and 5, as well as the finding of no infringement with respect to claims 2-4 and 6-14.  Further, the Commission will review the finding that the asserted domestic industry products satisfy the technical prong with respect to claim 1.  Finally, the Commission will review the finding that Trico failed to show that the asserted claims of the ’449 patent are obvious in view of U.S. Patent No. 5,713,099 in combination with U.S. Patent No. 6,799,348.

Accordingly, the parties were requested to brief their positions on the issues under review, particularly in response to the following questions:

  1. Whether the claim limitations “clamping features,” “clamping members,” and “clamping edge portions” should be construed independently of the generic term “clamping” and, if so, how the Commission should construe those limitations.
  2. Whether the accused wiper blades satisfy the “clamping features” limitation in claim 2 and the “clamping members” limitation in claims 3, 6 and 7 under the proper construction of those limitations, including whether the terms “clamping features” and “clamping members” should be construed independently of the generic term “clamping.”
  3. Whether the accused wiper blades infringe claims 8-14 in light of the Commission’s decision to review the construction of the limitations “detachably connected” (relevant to claims 8-11), “releasably secure” (relevant to claims 12-14), and “clamping edge portions” (relevant to claims 12-14).  The parties were also asked to address whether “clamping edge portions” should be construed independently of the generic term “clamping.”

Finally, the Commission asked the parties to address the form of remedy, if any, that should be ordered.  In particular, the Commission requested written submissions addressing the effect that an exclusion order and/or cease and desist orders would have on (1) the public health and welfare, (2) competitive conditions in the U.S. economy, (3) U.S. production of articles that are like or directly competitive with those that are subject to investigation, and (4) U.S. consumers.

ITC Institutes Investigation (337-TA-921) Regarding Certain Marine Sonar Imaging Devices, Including Downscan And Sidescan Devices

Posted On: July 11, 2014   By:

On July 9, 2014, the U.S. International Trade Commission issued a press release announcing their vote to institute an investigation of Certain Marine Sonar Imaging Devices, Including Downscan And Sidescan Devices, Products Containing the Same, and Components Thereof (Inv. No. 337-TA-921).

The investigation is based on a June 9, 2014 complaint filed by Navico, Inc. of Tulsa, Oklahoma and Navico Holding AS of Norway alleging violation of Section 337 in the importation into the U.S. and sale of certain marine sonar imaging devices, including downscan and sidescan devices, products containing the same, and components thereof that infringe one or more claims of U.S. Patent Nos. 8,305,840; 8,300,499; and 8,605,550.  See our June 10, 2014 post for more details on the complaint.   

According to the Notice of Investigation, the Commission has identified Garmin International, Inc., Garmin North America, Inc., and Garmin USA, Inc.—all of Olathe, Kansas—and Garmin (Asia) Corp. of Taiwan as the respondents in this investigation.

Lastly, Chief ALJ Charles E. Bullock issued a notice indicating that David P. Shaw will be the presiding Administrative Law Judge in this investigation.

ALJ Shaw Terminates Investigation As To Ninestar Image Tech. and Seine Image Int’l In Certain Toner Cartridges (337-TA-918)

Posted On: July 10, 2014   By:
Topics: ALJ Orders, ALJ Shaw

On July 9, 2014, ALJ David P. Shaw issued Order No. 4 in Certain Toner Cartridges and Components Thereof (Inv. No. 337-TA-918).

By way of background, this investigation is based on a May 7, 2014 complaint filed by Canon Inc., Canon U.S.A., Inc., and Canon Virginia, Inc. (collectively, “Canon”) alleging violation of Section 337 in the importation into the U.S. and sale of certain toner cartridges and components thereof, namely photosensitive drum units, that infringe one or more claims of U.S. Patent Nos. 8,280,278; 8,630,564; 8,682,215; 8,676,090; 8,369,744; 8,565,640; 8,676,085; 8,135,304; and 8,688,008.  See our May 8, 2014  and June 11, 2014 posts for more details on the complaint and the notice of investigation, respectively.   

According to Order No. 4, ALJ Shaw granted a motion filed by Canon to terminate the investigation based on the withdrawal of its complaint as to Respondents Ninestar Image Tech., Ltd. and Seine Image Int’l Co., Ltd.

ALJ Shaw Issues Notice Of Initial Determination In Certain Digital Media Devices (337-TA-882)

Posted On: July 10, 2014   By:

On July 7, 2014, ALJ David P. Shaw issued the public version of a notice of the Initial Determination (“ID”) in Certain Digital Media Devices, Including Televisions, Blu-Ray Disc Players, Home Theater Systems, Tablets and Mobile Phones, Components Thereof and Associated Software (Inv. No. 337-TA-882).

By way of background, this investigation was instituted on June 12, 2013 and is based on a May 13, 2013 complaint filed by Black Hills Media, LLC alleging violation of Section 337 in the importation into the U.S. and sale of certain digital media devices that infringe one or more claims of U.S. Patent Nos. 8,028,323; 8,214,873 (the ‘873 patent); 8,230,099; 8,045,952 (the ‘952 patent); 8,050,652 (the ‘652 patent) and 6,618,593 (the ‘593 patent).  See our May 16, 2013 and June 20, 2013 posts for more details on the complaint and the notice of investigation, respectively.

According to the notice, ALJ Shaw determined that no violation of Section 337 has been found in this investigation.  Specifically, ALJ Shaw determined that (i) the accused Samsung, LG, and Toshiba products do not infringe the asserted patents; (ii) the domestic industry requirement has not been satisfied with respect to any asserted patent; (iii) the asserted claims of the ‘873 patent are invalid under 35 U.S.C. § 112, ¶ 1; (iv) the asserted claims of the ‘593 patent are invalid in view of the prior art; and (v) the asserted claims of the ‘952 and ‘652 patents are not invalid.   

The notice issued by ALJ Shaw released only limited information.  We will provide additional information once the public version of the ID issues in its entirety.