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.

ITC Issues Public Version Of Opinion Regarding $6.2 Million Dollar Civil Penalty For Consent Order Violation In Certain Two-Way Global Satellite Communication Devices (337-TA-854)

On July 2, 2014, the International Trade Commission (“the Commission”) issued the public version of its opinion in the enforcement proceeding in Certain Two-Way Global Satellite Communication Devices, System and Components Thereof  (Inv. No. 337-TA-854) determining to impose a civil penalty on Respondents in the amount of $6,242,500.00

By way of background, the Commission instituted the underlying investigation on September 18, 2012 based on BriarTek IP, Inc.’s (“BriarTek”) complaint of August 17, 2012.  See our September 19, 2012 post for more details.  On March 15, 2013, former ALJ Robert K. Rogers, Jr. granted a motion by DeLorme Publishing Co., Inc. and DeLorme InReach, LLC (collectively, “DeLorme”) to terminate the investigation and for entry of a proposed consent order (“the consent order”).  See our March 19, 2013 post for more details.  In the consent order, DeLorme agreed that it would not import or sell two-way global satellite communication devices, systems, or components thereof that infringe BriarTek’s U.S. Patent No. 7,991,380 (the ‘380 patent) after April 1, 2013.  On April 10, 2013, BriarTek filed an enforcement complaint alleging that DeLorme violated the consent order.  See our April 11, 2013 post for more details.

In the enforcement initial determination (“EID”), ALJ Dee Lord found that DeLorme had violated the consent order with respect to its sale after importation of accused components of the InReach 1.5 device, but found no violation of the consent order with respect to the InReach SE device and to activation of InReach devices after the effective date of the consent order, where those devices had been sold prior to the effective date of the consent order.  ALJ Lord further found that enforcement measures are appropriate for DeLorme’s violation of the consent order, and recommended a civil penalty of $637,500.

As reported in our June 13, 2014 post, on review, the Commission determined to reverse-in-part and vacate-in-part the EID’s findings.  We now provide the details of the Commission’s opinion.

As an initial point, although the Commission adopted the ALJ’s findings with regard to direct infringement of the InReach 1.5 devices, the Commission vacated portions of the EID where the ALJ relied on Akamai Techs, Inc. v. Limelight Networks, Inc., 692 F.3d 1301 (Fed. Cir. 2012) because the Supreme Court subsequently reversed the Federal Circuit Akamai decision in Limelight Networks, Inc. v. Akamai Techs., Inc., 134 S. Ct. 2111 (2014).

According to the opinion, the Commission determined that the ALJ erred in finding no induced infringement, and therefore no violation of the Consent Order, with respect to the accused InReach SE devices.  Specifically, the Commission disagreed with the ALJ’s “component comparison test” and found that both the specific intent and direct infringement prongs of induced infringement were met by DeLorme importing components, incorporating them into domestically-assembled InReach SE devices, and then selling the devices to end users via distributors with instructions to use the devices in an infringing manner.  With regard to specific intent, the Commission noted that DeLorme’s “business model is predicated on the activation and use of the InReach SE devices by the end users” and that DeLorme was aware, or at least willfully blind to the fact, that it was inducing the end users to infringe the ‘380 patent.  The Commission determined that the record established direct infringement of the asserted claims with respect to the InReach SE devices through use of the accused system by an end user, as set forth under Centillion Data Systems, LLC v. Qwest Communications Int’l, Inc., 631 F.3d 1279 (Fed. Cir. 2011).  As such, DeLorme’s conduct “constitutes a violation of the Consent Order for InReach SE devices sold after the effective date of the Consent Order.”

The Commission also reviewed violation of the Consent Order with regard to InReach 1.5 and SE devices sold before, and activated after, the effective date of the Consent Order.  According to the opinion, ALJ Lord erroneously failed to distinguish between infringement and violation of the Consent Order.  The Commission reversed the ALJ’s finding of no induced infringement with respect to both devices, since DeLorme’s activation activity, combined with the end user’s direct infringement, established induced infringement.  However, since this activation activity did not involve any post-Consent Order sale of imported components, the Commission affirmed the ALJ’s ultimate determination of no violation of the Consent Order.

With regard to the enforcement measures recommended by the ALJ, the ALJ’s recommendation was for $637,500 ($12,500 per day for 51 days of violation).  DeLorme argued that a nominal penalty of one dollar a day would be appropriate.  However, both BriarTek and the Commission Investigative Staff (“OUII”) asserted that the Commission should impose a substantial penalty, and should consider the cost of the subscription fees in addition to the cost of the devices.  After considering the factors of good or bad faith, injury to BriarTek, DeLorme’s ability to pay, benefit to DeLorme (in terminating the proceeding and profits made by violation), vindicating the Commission’s authority, and the public interest, the Commission determined to modify the ALJ’s recommended enforcement measure.  Of particular interest, the Commission held that a combined cost of the device and subscription should be considered, and that the evidence supported a finding of bad faith by DeLorme’s violation of the consent order.  Accordingly, the Commission determined to impose a civil penalty of $6,242,500.00 based on an amount of $27,500 a day over 227 days of violation.

ALJ Lord Grants Motion To Terminate Investigation As To Garmin In Certain Navigation Products (337-TA-900)

Posted On: July 8, 2014   By:

On June 30, 2014, ALJ Dee Lord issued Order No. 23 in Certain Navigation Products, Including GPS Devices, Navigation and Display Systems, Radar Systems, Navigational Aids, Mapping Systems and Related Software (Inv. No. 337-TA-900).

By way of background, this investigation is based on a September 23, 2013 complaint filed by Furuno Electric Co., Ltd. and Furuno U.S.A., Inc. (collectively, “Furuno”) alleging violation of Section 337 in the importation into the U.S. and sale of certain navigation products, including GPS devices, navigation and display systems, radar systems, navigational aids, mapping systems, and related software that infringe one or more claims of U.S. Patent Nos. 6,084,565, 6,424,292, 7,161,561, and 7,768,447.  See our September 25, 2013 and November 12, 2013 posts for more details on the complaint and Notice of Investigation, respectively.

According to Order No. 23, ALJ Lord granted a joint motion filed by Furuno and Respondents Garmin Ltd., Garmin International, Inc., Garmin North America, Inc., and Garmin USA, Inc. (collectively “Garmin”) to terminate the investigation based on a settlement agreement between Furuno and Garmin.

The investigation remains pending against other Respondents.