ALJ Lord Sets Procedural Schedule In Certain Television Sets (337-TA-910)

Posted On: April 11, 2014   By:
Topics: ALJ Lord, ALJ Orders

On April 2, 2014, ALJ Dee Lord issued Order No. 7 in Certain Television Sets, Television Receivers, Television Tuners, and Components Thereof (Inv. No. 337-TA-910).

By way of background, this investigation is based on a January 28, 2014 complaint filed by Cresta Technology Corp. of Santa Clara, California alleging violation of Section 337 in the importation into the U.S. and sale of certain television sets, television receivers, television tuners, and components thereof that infringe one or more claims of U.S. Patent Nos. 7,075,585, 7,265,792, and 7,251,466.  See our January 30, 2014 and March 24, 2014 posts for more details on the complaint and Notice of Investigation, respectively.

According to Order No. 7, ALJ Lord set the procedural schedule for this investigation and  determined that the evidentiary hearing will commence on December 1, 2014; the Initial Determination on alleged violation of Section 337 will be issued on February 27, 2015; and the target date for completing the investigation is June 29, 2015 (which is approximately sixteen months after institution of the investigation).

ITC Institutes Investigation (337-TA-914) Regarding Certain Sulfentrazone

Posted On: April 11, 2014   By:

On April 9, 2014, the U.S. International Trade Commission issued a press release announcing their vote to institute an investigation of Certain Sulfentrazone, Sulfentrazone Compositions, and Processes for Making Sulfentrazone (Inv. No. 337-TA-914).

The investigation is based on a March 5, 2014 complaint and March 26, 2014 letter clarifying the complaint filed by FMC Corp. of Philadelphia, Pennsylvania (“FMC”) alleging violation of Section 337 in the importation into the U.S. and sale of certain certain sulfentrazone active ingredient and formulated sulfentrazone compositions made by a process that infringes one or more claims of U.S. Patent No. 7,169,952.  See our March 6, 2014 post for more details. 

According to the Notice of Investigation, the Commission has identified Beijing Nutrichem Science and Technology Stock Co., Ltd. of China, Summit Agro USA, LLC of Cary, North Carolina, Summit Agro North America Holding Corp. of New York, New York, and Jiangxi Heyi Chemicals Co. Ltd. of China as the respondents in this investigation.  The Notice of Investigation further indicates that FMC’s motion for temporary relief filed concurrently with the complaint has been provisionally accepted.

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

ITC Decides To Review In Part Final Initial Determination In Certain Compact Fluorescent Reflector Lamps (337-TA-872)

On April 8, 2014, the International Trade Commission (“the Commission”) issued a notice in Certain Compact Fluorescent Reflector Lamps, Products Containing Same and Components Thereof (Inv. No. 337-TA-872).  In the notice, the Commission determined to review, in part, ALJ David P. Shaw’s Final Initial Determination (“ID”) finding a violation of Section 337 by Respondents Maxlite, Inc. (“Maxlite”), Satco Products, Inc. (“Satco”), and Litetronics International, Inc. (“Litetronics”) (collectively, “Respondents”). 

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.  In Order No. 20, ALJ Shaw terminated the investigation as to Respondent Technical Consumer Products, Inc. based on a settlement agreement.  Thus, Maxlite, Satco, and Litetronics remained as respondents to the investigation.

On February 3, 2014, ALJ Shaw determined that Respondents importation and sale of certain reflector CFLs infringed asserted claims 1, 2, 10, and 11.  Respondents did not contest that the accused products satisfied the limitations of dependent claims 2, 10, and 11.  See our March 14, 2014 post for more details on the public version of the ID.

On February 18, 2014, Respondents petitioned the Commission for review of several of ALJ Shaw’s findings.  Neptun also petitioned for review of the ALJ’s finding that it failed to demonstrate specific investments in licensing activities under 337(a)(3)(C)—ALJ Shaw otherwise found that Neptun had satisfied the economic prong of the domestic industry requirement through plant and equipment, and labor and capital.

The Commission determined to review ALJ Shaw’s findings on the economic prong of the domestic industry requirement, the construction of the term “mating opening,” and the ALJ’s finding on infringement.

According to the notice, the Commission requested briefing from the parties on the following issues:

  • The portion of Neptun’s investments and expenditures associated with the articles protected by the ‘540 patent.
  • Whether Neptun’s investments and expenditures are “significant” under 337(a)(3)(A) and (B).
  • Whether Neptun made substantial investment in engineering or research and development under 337(a)(3)(C).
  • The proper construction of the term “mating opening.”
  • An explanation of how Respondents accused products satisfy (or do not satisfy) the claim limitations “said cavity having a first circumferential flange” and “the first circumferential flange of the reflector cavity.”
  • An explanation of how Respondents accused products satisfy (or do not satisfy) the claim limitation “said base being inside said defined cavity of said reflector and located inside said mating opening.”
  • An explanation of how Respondents accused products satisfy (or do not satisfy) the claim limitations “said base having a second circumferential flange” and “the second circumferential flange of the light source base.”

In addition, the Commission requested written submissions from the parties, interested government agencies, and any other interested persons on the form of remedy, if any, that should be ordered, the public interest factors associated with that determination, and bonding.

Written submissions are due by April 22, 2014, with reply submissions due by April 29, 2014.

ALJ Lord Denies Motion To Compel Deposition In Certain Optical Disc Drives (337-TA-897)

Topics: ALJ Lord, ALJ Orders

On March 25, 2014, ALJ Dee Lord issued Order No. 42 denying Respondents’ motion to compel Complainant’s employee Ryan Fry for an additional day of deposition and to reimburse fees and costs associated therewith in Certain Optical Disc Drives, Components Thereof, and Products Containing the Same (Inv. No. 337-TA-897).

By way of background, the investigation in this case is based on a September 3, 2013 complaint and September 20, 2013 letter supplementing the complaint filed by Optical Devices, LLC (“Optical”) alleging violation of Section 337 in the importation into the U.S. and sale of certain optical disc drives, components thereof, and products containing the same that infringe one or more claims of U.S. Patent Nos. 6,904,007; 7,196,979; 8,416,651; RE40,927; RE42,913; and RE43,681.  See our September 6, 2013 and October 23, 2013 posts for more details on the complaint and Notice of Investigation, respectively.

According to the Order, Respondents filed a motion to compel Optical to make its employee Ryan Fry available for an extra day of deposition, to reimburse fees and costs for the same, and to prohibit Optical and its counsel from giving “improper instructions” to Mr. Fry.  Specifically, Respondents argued that when Mr. Fry was deposed, he was instructed not to answer questions based on relevance in violation of Commission rules, or was instructed not to answer based on erroneous privilege claims.  As such, Respondents sought an extra day of deposition to rectify this issue.  Respondents also requested a shortened response time, which Optical opposed. 

The parties participated in a teleconference where they “were instructed on the expected conduct and form of depositions” in this Investigation.  After the teleconference, Optical filed its opposition to Respondents’ motion, stating that it is willing to produce Mr. Fry for a second day limited to the topics on which he was instructed not to answer, and that the motion is now moot.  AJL Lord agreed, and as such, denied the motion, while reminding the parties to be mindful of the instructions provided during the teleconference.

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

Posted On: April 9, 2014   By:

On April 8, 2014, ALJ Dee Lord issued Order No. 14 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. 14, ALJ Lord granted a joint motion filed by Furuno and Respondents Navico Holding AS, Navico UK Limited, and Navico Inc. (collectively, “Navico”) to terminate the investigation based on a settlement agreement between Furuno and Navico.

The investigation remains pending against other Respondents.

ALJ Lord Denies Third Party Motion To Quash Or Limit Subpoena In Certain Optical Disc Drives (337-TA-897

Topics: ALJ Lord, ALJ Orders

On March 27, 2014, ALJ Dee Lord issued Order No. 44 denying third party Flashpoint Technologies Inc.’s Motion to Quash or Limit Subpoena in Certain Optical Disc Drives, Components Thereof, and Products Containing the Same (Inv. No. 337-TA-897).

According to the Order, subpoenas duces tecum and ad testificandum were issued and served upon third party Flashpoint Technologies Inc. (“Flashpoint”) by Respondents MediaTek, Inc., MediaTek USA, Inc., Panasonic Corporation, Panasonic Corporation of North America, Nintendo Co., Ltd., Nintendo of America, Inc., Samsung Electronics Co. Ltd., Samsung Electronics America, Inc., LG Electronics, Inc., LG Electronics, U.S.A., Inc., Lenovo Group Ltd., Lenovo (United States) Inc., Toshiba Corporation, and Toshiba America Information Systems Inc. (collectively, the “Respondents”).  Flashpoint filed a motion to quash the subpoenas and Respondents filed a response to Flashpoint’s motion to quash. 

On March 20, 2014, a telephone conference occurred during which counsel for LG Electronics, Inc. and LG Electronics, U.S.A., Inc. stated that the parties would provide an update regarding the motion via letter after the deposition of Stanley Fry.  On March 27, 2014, Respondents submitted a letter stating that they were satisfied with Flashpoint’s responses to the subpoenas and that no further action on the motion to quash was necessary.  On the same day, Flashpoint submitted a letter stating that the motion to quash should be granted based on Respondents’ acceptance of Flashpoint’s responses to the subpoenas and also added that it had no objection to the motion to quash being denied as moot.

Based on the Respondents’ representation that they were satisfied with Flashpoint’s response and Flashpoint’s representation that it did not object to the motion to quash being denied, ALJ Lord found that all issues regarding the subpoenas appeared to have been resolved.  Accordingly, ALJ Lord denied Flashpoint’s motion to quash as moot.

ALJ Essex Grants Complainants’ Motion to Strike in Certain Wireless Devices With 3G And/Or 4G Capabilities (337-TA-868)

On March 28, 2014, ALJ Theodore R. Essex issued the public version of Order No. 111 (dated March 6, 2014) granting Complainants’ Motion to Strike in Certain Wireless Devices With 3G And/Or 4G Capabilities And Components Thereof (Inv. 337-TA-868).

By way of background, the investigation in this matter is based on a January 2, 2013 complaint filed by InterDigital Communications, Inc., InterDigital Technology Corporation, IPR Licensing, Inc., and InterDigital Holdings, Inc. (collectively, “InterDigital”) alleging violation of Section 337 in the importation into the U.S. and sale of certain wireless devices with 3G and/or 4G capabilities and components thereof that infringe one or more claims of U.S. Patent Nos. 7,190,966 (the ‘966 patent); 7,286,847 (the ‘847 patent); 8,009,636; 7,706,830; 7,941,151; 7,616,970 and 7,502,406.  See our January 3, 2013 and February 1, 2013 posts for more details on the complaint and Notice of Investigation, respectively.

According to Order No. 111, InterDigital moved to strike new arguments contained in Respondents’ supplemental pre-hearing brief regarding the ‘966 and ‘847 patents. 

InterDigital argued that Respondents raised a new argument and that Respondents were previously aware of InterDigital’s infringement theory as it was raised in InterDigital’s summary determination motions, pre-hearing brief, and witness statements.  InterDigital further asserted that the limited supplementation allowed by Order No. 109 did not permit a party to “reserve” the right to make unspecified arguments without the requisite particularity.  Respondents asserted that InterDigital’s infringement theory was not raised in its contentions, expert reports, and witness statement, and did not appear in the investigation until the summary determination motions were filed.  Respondents argued that they had already moved to strike the new theory and had provided notice in their pre-hearing brief that they would address the untimely theory if InterDigital asserted it and if Respondents’ motion in limine was denied.  Respondents further argued that InterDigital’s infringement theory was belated and that “it would be contrary to principles of fundamental fairness to prevent respondents from defending against InterDigital’s new theory.”

ALJ Essex stated that Order No. 109 gave the parties a limited opportunity to supplement their pre-hearing briefs regarding how they intended to rely on the 337-TA-613 Remand Opinion, and noted that Order No. 109 was not a “carte blanche” for the parties to include arguments that they knew of but chose not to include in their pre-hearing brief.  ALJ Essex additionally noted that the paragraph InterDigital sought to strike did not contain any references to the 337-TA-613 Remand Opinion, instead it contained citations to Respondents’ expert rebuttal witness statements and responses to the infringement argument InterDigital raised in its pre-hearing brief and motions for summary determination.  ALJ Essex found that this contested paragraph was not proper supplementation under Order No. 109, and that if Respondents wanted to supplement their pre-hearing brief because their motions for summary determination and in limine were denied, they should have sought leave to do so.  Accordingly, ALJ Essex granted the motion to strike.

ALJ Bullock Denies Motion For Summary Determination Of Violation Of Section 337 In Certain Tires (337-TA-894)

On April 4, 2014, Chief ALJ Charles E. Bullock issued the public version of Order No. 41 (dated March 14, 2014) in Certain Tires and Products Containing Same (Inv. No. 337-TA-894).  In the Order, ALJ Bullock denied Complainants Toyo Tire & Rubber Co., Ltd., Toyo Tire Holdings of Americas Inc., Toyo Tire U.S.A. Corp., Nitto Tire U.S.A. Inc., and Toyo Tire North America Manufacturing Inc.’s (collectively, “Toyo”) motion for summary determination of a violation of Section 337 by reason of infringement of the asserted patents by eight defaulting Respondents.

By way of background, Toyo’s complaint in the investigation had only requested a limited exclusion order and/or cease and desist orders, and had not requested a general exclusion order (“GEO”).  See our August 15, 2013 post for more details.  According to Order No. 41, Toyo had moved to amend its complaint to seek a GEO more than three months after the institution of the investigation, but ALJ Bullock had denied that motion after finding that Toyo lacked good cause to amend.  However, in a subsequent motion to terminate Respondent Shandong Hengyu Science and Technology Co., Ltd. (“Shandong Hengyu”)—the last remaining Respondent in the investigation—Toyo stated that it still intended to seek a GEO.  In making this assertion, Toyo cited to Commission Rule 210.16(c)(2), which requires that “[i]n any motion requesting the entry of default or the termination of the investigation with respect to the last remaining respondent in the investigation, the complainant shall declare whether it is seeking a general exclusion order.”  Toyo then filed the instant motion for summary determination of violation based on infringement by eight defaulting Respondents, and sought a GEO.

In the Order, ALJ Bullock found that Toyo’s statement in its motion to terminate Shandong Hengyu did not give Toyo the ability to seek a GEO in the investigation in spite of the ALJ’s previous order denying Toyo’s motion to amend the complaint.  In particular, ALJ Bullock found that Commission Rule 210.16(c)(2) presupposes that a GEO is an available form of relief in the investigation (i.e., that a GEO was requested in the complaint or brought in via a successful motion to amend the complaint), which was not the case in the instant investigation.  ALJ Bullock further found that the instant motion for summary determination of violation of Section 337 based on infringement by the eight defaulting Respondents was not the proper mechanism for Toyo to seek further relief, and that instead Toyo could file a declaration with the Commission pursuant to Commission Rule 210.16(c)(1).  Accordingly, ALJ Bullock denied Toyo’s motion for summary determination.

ALJ Pender Denies Motion For Summary Determination Of Invalidity In Certain Sleep-Disordered Breathing Treatment Systems (337-TA-890)

On March 26, 2014, ALJ Thomas B. Pender issued Order No. 14 (dated March 18, 2014) denying Respondents’ motion for summary determination of invalidity of U.S. Patent No. RE 44,453 (“the ‘453 patent”) in Certain Sleep-Disordered Breathing Treatment Systems and Components Thereof (Inv. No. 337-TA-890).

By way of background, the investigation is based on a complaint filed by ResMed Corporation, ResMed Incorporated, and ResMed Limited (collectively, “ResMed”) alleging violation of Section 337 by BMC Medical Co., Ltd., 3B Medical, Inc., and 3B Products, L.L.C. (collectively, “Respondents”) in the importation and/or sale of certain sleep-disordered breathing treatment systems and components thereof that infringe one or more claims of various patents.  See our July 22, 2013 and August 20, 2013 posts for more details on ResMed’s complaint and the Notice of Investigation, respectively.

According to the Order, Respondents moved for summary determination on three issues: (1) anticipation based on German patent application DE 199 36 499 A1 to Schatzl (“Schatzl”); (2) anticipation based on a REMstar Heated Humidifier (“REMstar device”); and (3) the priority date for the ‘453 patent. 

The parties dispute whether or not Schatzl discloses a “seal” disposed between a “top cover” and a “base.”  Specifically, ResMed argued that the structure alleged to be a seal in Schatzl is rigid, and thus does not create a “seal” as required by the claim, supporting this position by reference to additional O rings used for sealing in Schatzl.  The Office of Unfair Import Investigations (“OUII”) agreed with ResMed’s interpretation of Schatzl, and noted that expert testimony at the evidentiary hearing may clarify the issue.  Although ALJ Pender noted that Respondents’ arguments that Schatzl discloses a “seal” are “compelling,” he determined that he “cannot find that there is clear and convincing evidence of this fact without considering expert testimony.”

Respondents also argued that the ‘453 patent is anticipated by the REMstar device sold in the United States by at least May, 2001, supported by invoices.  ResMed disputed that this evidence was publicly available, and whether or not the public sale of the REMstar device predated reduction to practice of the claimed invention.  In addition, ResMed disputed that the REMstar device teaches a “retaining mechanism” as recited in the claims.  Although Respondents pointed to two pegs as alleged retaining mechanisms, the ALJ noted that the pegs “may not satisfy the claim limitation,” and did not consider there to be clear and convincing evidence that the REMstar device met this element of the ‘453 claims.

Lastly, in order for the REMstar device to qualify as prior art, Respondents moved for summary determination that the priority date of the ‘453 patent is no earlier than February 14, 2002, alleging that several limitations of the ‘453 patent are missing from the Australian provisional application filed in 2001 and that the earlier conception documents are incomplete.  ResMed countered this argument with an expert declaration identifying the allegedly missing elements in its conception documents.  OUII agreed with ResMed that a genuine issue of material fact exists regarding when the ResMed inventors reduced the invention to practice.  As Respondents offered no counter-evidence, ALJ Pender agreed with ResMed and declined to grant summary determination on this issue.

ALJ Bullock Grants Motion To Compel Production Of Samples In Certain Antivenom Compositions (337-TA-903)

On April 4, 2014, Chief ALJ Charles E. Bullock issued the public version of Order No. 17 (dated March 14, 2014) in Certain Antivenom Compositions and Products Containing the Same (Inv. No. 337-TA-903).  In the Order, ALJ Bullock granted Complainant BTG International Inc.’s (“BTG”) motion to compel Respondents Laboratorios Silanes, S.A. de C.V., Instituto Bioclon, S.A. de C.V., and Rare Disease Therapeutics, Inc. (collectively, “Silanes”) to produce samples of the accused snake antivenom compositions.

According to the Order, BTG asserted that Silanes had failed to comply with a Request for Production (“RFP”) that sought ten samples of each composition of snake antivenom manufactured, imported, offered for sale, sold for importation into the U.S., or sold or offered for sale after importation into the U.S. after January 1, 2010.  BTG argued that FDA regulations did not prevent importation of the samples.  BTG further argued that the safe harbor provision of 35 U.S.C. § 271(e)(1) could not be used to refuse production of samples that were being held within the U.S.  BTG also argued that the production of the requested samples would not be an infringing importation because the samples would only be used for testing purposes in the investigation.

Silanes opposed the motion.  In particular, Silanes argued that the RFP at issue was overbroad, that the requested samples would need to be imported from Mexico and that this was unduly burdensome, and that BTG had failed to articulate any reason why it needed to test the samples, as Silanes had already provided BTG with the accused products’ molecular compositions and other test results.

The Commission Investigative Staff (“OUII”) supported BTG’s motion.  OUII argued that Silanes had failed to show that the samples were outside the scope of the RFP and had failed to cite any specific statute or FDA regulation that prevented importation of the samples.  OUII further argued that BTG has the right to perform its own testing and should not be forced to rely on the test results provided by Silanes.

After considering the arguments, ALJ Bullock determined to grant BTG’s motion.  The ALJ ordered Silanes to produce samples responsive to the RFP within ten days of BTG’s identifying a person who could lawfully accept the samples.  ALJ Bullock further ordered that BTG and Silanes should each bear half of the total cost of producing the samples.