Further to our March 25, 2013 post, on May 10, 2013, ALJ Theodore R. Essex issued Order No. 13 setting a target date and procedural schedule in Certain Products Having Laminated Packaging, Laminated Packaging, and Components Thereof (Inv. No. 337-TA-874).

According to the Order, ALJ Essex set July 28, 2014 as the target date for completion of the investigation (which is approximately 16 months after institution of the investigation).  ALJ Essex further indicated that the initial determination on alleged violation shall be due on March 28, 2014 and that the evidentiary hearing will commence on December 16, 2013.

Further to our April 15, 2013 post, on May 9, 2013, ALJ Thomas B. Pender issued Order No. 3 setting a target date and procedural schedule in Certain Electronic Devices Having Placeshifting or Display Replication Functionality and Products Containing Same (Inv. No. 337-TA-878).

According to the Order, ALJ Pender set August 18, 2014 as the target date for completion of the investigation (which is approximately 16 months after institution of the investigation).  ALJ Pender further indicated that the initial determination on alleged violation shall be due on April 17, 2014 and that the evidentiary hearing will commence on December 16, 2013.

On May 9, 2013, ALJ Charles E. Bullock issued the public version of Order No. 97 (dated April 23, 2013) in Certain Sintered Rare Earth Magnets, Methods of Making Same, and Products Containing Same (Inv. No. 337-TA-855).

According to the Order, Complainants Hitachi Metals, Ltd. and Hitachi Metals North Carolina, Ltd. (collectively, “Hitachi Metals”) moved to compel depositions from Respondent Yantai Zhenghai Magnetic Material Co., Ltd. (“Yantai”) and discovery responses from Respondents Yantai, Ningbo Jinji Strong Magnetic Material Co., Ltd. and Anhui Earth-Panda Advance Magnetic Material Co., Ltd. (collectively, “Respondents”).  Hitachi Metals argued that it complied with Ground Rule 3.2 by providing notice to Respondents on March 22, 2013 and by meeting and conferring on March 24, 2013.  In opposition, Respondents contended that Hitachi Metals failed to make a reasonable good-faith effort to resolve the issue.  Specifically, Respondents asserted that Hitachi Metals simply informed Respondents that they were moving to compel.

ALJ Bullock found that Hitachi Metals failed to comply with Ground Rule 3.2.  Specifically, the ALJ determined that Hitachi Metals should have met and conferred by March 22, 2013.  ALJ Bullock stated that Hitachi Metals should have filed a motion requesting an extension of time or, in the alternative, a motion to requesting a waiver of Ground Rule 3.2.  Accordingly, the motion was denied.

On May 9, 2013, ALJ E. James Gildea issued the public version of Order No. 35 (dated April 30, 2013) in Certain Wireless Consumer Electronics Devices and Components Thereof (Inv. No. 337-TA-853).

According to the Order, Respondents ZTE Corporation and ZTE (USA) Inc. (collectively, “ZTE”) moved to strike several of Complainants Technology Properties Limited, LLC, Phoenix Digital Solutions LLC, and Patriot Scientific Corporation’s (collectively, “Complainants”) discovery responses and related expert reports.  Specifically, ZTE argued that Complainants submitted untimely supplemental infringement contention responses which included previously unasserted infringement allegations and new accused products.  In opposition, Complainants maintained that they properly sought to provide representative charts of accused products and to supplement those charts when required.  Further, Complainants asserted that they were not required to disclose every detail of an expert’s analysis in advance.

ALJ Gildea found that Complainants gave ZTE proper notice of 29 accused products, but failed to provide proper notice to the five accused products first disclosed in Complainants’ expert reports.  Accordingly, the ALJ held that Complainants cannot rely on those five accused products in the investigation.  Further, the portions of the expert reports which discuss those five accused products were stricken.  Accordingly, ZTE’s motion was granted-in-part.

On May 9, 2013, ALJ E. James Gildea issued the public version of Order No. 38 (dated May 1, 2013) in Certain Wireless Consumer Electronics Devices and Components Thereof (Inv. No. 337-TA-853).

By way of background, on April 23, 2013, ALJ Gildea had issued Order No. 27 which granted-in-part Respondents Garmin Ltd., Garmin International, Inc., Garmin U.S.A., Inc., ZTE Corporation, and ZTE (USA) Inc.’s (collectively, “Respondents”) motion to compel discovery.  Before ruling on Respondents’ request for unredacted attorney invoices, ALJ Gildea requested further briefing on the issue of whether Complainants Technology Properties Limited LLC, Phoenix Digital Solutions, LLC (“PDS”), and Patriot Scientific Corporation (collectively, “Complainants”) had waived the right to rely on legal fees and/or litigation expenses to prove domestic industry.

According to Order No. 38, Respondents submitted a supplemental memorandum asserting that Complainants waived the right to rely on legal fees and litigation expenses to establish a domestic industry.  Specifically, Respondents argued that Complainants stated in a letter and in interrogatory responses that they did not intend to rely on legal fees to prove domestic industry.  Further, Respondents stated that Complainants waited until two weeks after the deadline for contention interrogatory responses to assert the use of legal fees to prove domestic industry.

In opposition, Complainants filed a supplemental memorandum arguing that they should be able to use attorney invoices which documented the legal fees, and PDS financial documents to support their domestic industry case.  Specifically, Complainants asserted that they should be able to rely on these documents to prove their domestic industry case because they were produced before the close of fact discovery.

ALJ Gildea held that the Complainants unequivocally waived their right to use the attorney invoices.  Further, the ALJ determined that Complainants could not rely on the PDS financial documents because their request to use those documents was already denied in Order No. 28.  Accordingly, ALJ Gildea denied Respondents’ request for unredacted attorney invoices as moot on the grounds that Complainants waived their right to rely on them to prove the domestic industry requirement.

On May 8, 2013, the International Trade Commission (the “Commission”) issued the public version of its opinion affirming-in-part and reversing-in-part the Remand Initial Determination (“RID”) in Certain Wireless Communication Devices, Portable Music and Data Processing Devices, Computers and Components Thereof (Inv. No. 337-TA-745), although the ultimate conclusion of no violation of Section 337 was affirmed.

By way of background, the Complainant in this investigation is Motorola Mobility, Inc. (“Motorola”) and the Respondent is Apple Inc. (“Apple”).  On May 16, 2012, ALJ Pender issued the public version of an Initial Determination (“ID”) finding a violation of Section 337 as to U.S. Patent No. 6,246,697, but no violation of Section 337 with respect to U.S. Patent Nos. 6,272,333, 6,246,862 (the ‘862 patent), and 5,636,223.  See our May 31, 2012 post for more details on the ID.  On September 17, 2012, the Commission issued the public version of its opinion affirming-in-part, reversing-in-part and remanding-in-part the findings in the ID.  Specifically, the Commission remanded the case to the ALJ with respect to the ‘862 patent.  See our September 20, 2012 post for more details on the Commission’s decision.

On December 18, 2012, ALJ Pender issued his RID finding no violation of Section 337 as to the ‘862 patent.  In particular, the ALJ determined that although claim 1 of the ‘862 patent was infringed by the accused products, it was invalid as anticipated by U.S. Patent No. 6,052,464 to Harris (“Harris”).  The ALJ further found that claim 1 was not invalid for obviousness in light of Harris in combination with the knowledge of one of ordinary skill in the art or in combination with U.S. Patent No. 5,894,298 to Hoeksma (“Hoeksma”).  See our January 2, 2013 post for more details on the RID.

As reported in our March 4, 2013 post, after examining the RID, the petitions for review filed by Motorola and Apple, and the responses, the Commission determined to review the RID in-part.  We now provide the details of the Commission’s opinion.

Claim Construction

In the RID, the ALJ construed the limitation “touch sensitive input device” in the ‘862 patent to have its plain and ordinary meaning, but specified that this was not limited to a touchscreen or touch pad (i.e., included physical keypads).  The Commission agreed that “touch sensitive input device” should have its plain and ordinary meaning, but reversed the RID to the extent that this meaning included keypads.  Specifically, the Commission noted that the specification described the touch sensitive input device as an improvement over conventional user interfaces (such as keypads), and dependent claims stated that the user interface could further include a keypad.  As such, the Commission concluded that the patentee intended a keypad to be a separate element, and thus not included in the “touch sensitive input device” element.

Infringement

The Commission affirmed the RID’s finding that Apple’s accused products literally infringe the ‘862 patent.  The key element was “a sensor … to disable communication of the input signal to the processing section when the portable communication device is positioned in close proximity to a user, thereby preventing inadvertent actuation of the touch sensitive input device.”  However, the details of the Commission’s reasoning are redacted in the public version of the opinion.

Anticipation

The RID found that the ‘862 patent was anticipated by Harris’s disclosure of either push-button keys or a “touch writable display.”  However, since the Commission altered the construction of the term “touch sensitive input device” to exclude keypads, the Commission reversed the determination that the push-buttons anticipated the ‘862 patent.  The Commission also determined that the “touch writable display” did not anticipate the ‘862 patent as the orientation of this display did not clearly meet the other elements of the claim as required to prevent inadvertent actuation.

Obviousness

In the RID, the ALJ found that Apple failed to prove obviousness by clear and convincing evidence.  However, the Commission reversed this determination after considering the additional briefing on this issue.  The prior art included examples of mobile telephones with touch-sensitive screens subject to inadvertent actuation, and Apple argued that the problem to be solved by the ‘862 patent was well known in the art.  Although Motorola presented some evidence of secondary considerations based on praise by those skilled in the art and commercial success, the Commission did not consider the “slim evidence” provided sufficient to overcome the “strong showing of prima facie obviousness in this case.”  Therefore, the Commission determined that the ‘862 patent was invalid as obvious over Harris either in view of the common general knowledge or in view of Hoeksma.

As such, the Commission affirmed the RID’s finding of no violation of section 337 with respect to the ‘862 patent.

On May 9, 2013, Federal-Mogul Corporation of Southfield, Michigan and Federal-Mogul S.A. of Belgium (collectively, “Federal-Mogul”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that Trico Corporation of Rochester Hills, Michigan, Trico Products of Brownsville, Texas, and Trico Components SA de CV of Mexico (collectively, “Trico”) unlawfully import into the U.S., sell for importation and/or sell within the U.S. after importation certain windshield wiper devices and components thereof that infringe claims 1-14 of U.S. Patent No. 8,347,449 (“the ‘449 patent”).

According to the complaint, the ‘449 patent generally relates to “a wiper device having a spoiler as a separate constructional element that is detachably connected to the metal carrier strip(s) of the wiper blade.”  Federal-Mogul asserts in the complaint that Trico manufacturers, assembles, packages and/or tests the accused products in Mexico and imports them into the U.S., sells them for importation into the U.S. and/or sells them after importation into the U.S.  The complaint specifically refers to Trico’s Force, Ice, NeoForm, ExactFit, Flex and Onyx wiper devices.

Regarding domestic industry, Federal-Mogul states that its ANCO Profile, ANCO Contour, NAPA Vista, NAPA AccuFit and Tesla Model S products practice one or more claims of the ‘449 patent.  Federal-Mogul further states that it makes significant investments in facilities, equipment, and labor in the U.S.

With respect to potential remedy, Federal-Mogul requests that the Commission issue a limited exclusion order and a cease and desist order directed to each named Respondent and its subsidiaries and affiliates.

On May 8, 2013, ALJ Theodore R. Essex issued Order No. 10 denying Respondents Macoven Pharmaceuticals, LLC and Viva Pharmaceuticals, Inc.’s (collectively, “Respondents”) motion seeking leave to submit a supplemental notice of prior art in Certain Reduced Folate Nutraceutical Products and L-Methylfolate Raw Ingredients Used Therein (Inv. No. 337-TA-857).

According to the Order, Respondents sought to supplement their notice of prior art to add U.S. Patent No. 6,008,221 (“the ’221 patent”), arguing that good cause existed because (1) the ’221 patent was buried among hundreds of thousands of documents produced by Complainants Merck and Cie (“Merck”), South Alabama Medical Science Foundation, and Pamlab LLC (collectively, “Complainants”); (2) Merck failed to identify the ’221 patent in its interrogatory response identifying all prior art to the ’040 patent-in-suit; (3) Merck failed to identify the ’221 patent in reexamination of the ’040 patent until after it was identified by Respondents; and (4) it is in the public interest to fully assess the validity of the patents, and Complainants would not be prejudiced by the supplementation due to the length of time before the exchange of expert reports and the evidentiary hearing.  In opposition, Complainants contended that Respondents failed to show good cause to permit the supplementation, and that the failure to disclose the ’221 patent in the ’040 patent reexamination was a “red herring.”

ALJ Essex denied the motion on the grounds that Respondents failed to show why they could not have found the ’221 patent earlier by simply conducting a prior art search, noting that rather than being “an obscure piece of prior art,” the ’221 patent has a similar date to the ’040 patent, it has key subject matter (folic acid) in the title of the patent, and it shares the same prior art classes as the ’040 patent.  The ALJ disagreed, however, with Complainants’ argument that merely producing the ’221 patent among hundreds and thousands of pages of documents and identifying a Bates range of tens of thousands of pages constitutes identifying the patent and providing Respondents with a copy.

On May 7, 2013, Chief ALJ Bullock issued Order No.102 and Order No. 103 in Certain Sintered Rare Earth Magnets, Methods of Making Same, and Products Containing Same (Inv. No. 337-TA-855).

According to Order No. 102, Respondents Bose Corporation (“Bose”) and Bosch Security Systems, Inc. moved for summary determination of noninfringement of U.S. Patent No. 6,527,874.  ALJ Bullock found that summary determination was not appropriate in view of genuine issues of material fact that may remain, and denied the motion.

According to Order No. 103, Bose and Respondents DeWALT Industrial Co. (“DeWALT”) moved for summary determination of noninfringement of any asserted claims on the grounds of exhaustion and equitable estoppel.  ALJ Bullock denied the motion as moot in view of Order Nos. 98 and 100 (granting joint motions to terminate the investigation as to DeWALT and Bose, respectively, based on settlement agreements).

On May 7, 2013, ALJ E. James Gildea issued the public version of Order No. 29 (dated April 17, 2013) denying Respondents LG Electronics, Inc. and LG Electronics USA, Inc.’s (collectively, “LG”) motion for summary determination of noninfringement in Certain Wireless Consumer Electronic Devices and Components Thereof (Inv. No. 337-TA-853).

According to the Order, LG filed a motion for summary determination that its products containing certain hardware and/or software are licensed to the asserted patent through a 2004 agreement with Complainant Technology Properties Limited LLC (“TPL”) and a 2005 agreement with Complainant Patriot Scientific Corporation (“Patriot”).  As a result of these agreements, LG argues that all of its mobile phones containing this hardware and/or software are noninfringing.  The details of the specific hardware and software were redacted from the public version of the Order.

In opposition, Complainants argued that the terms of the two license agreements do not cover the hardware and software at issue and that “the phone itself is an LG product and is not exempt from liability for infringing the accused patent.”  Thus, in view of the parties conflicting interpretations of the agreements, Complainants argued that summary determination was inappropriate.  The Commission Investigative Staff (“OUII”) also opposed LG’s motion, arguing that the motion turned on the interpretation of a specific term (redacted from the public version of the Order) which could take on multiple meanings and, thus, presented a genuine issue of material fact warranting denial of the motion.

Having considered the parties arguments, ALJ Gildea denied LG’s motion, agreeing with the OUII that there appeared to be a fundamental ambiguity in the agreements regarding the dispositive term and, therefore, that a trial on the merits is warranted to determine whether any LG products are covered by the licenses.  In particular, the ALJ found that under Delaware contract law, which governs the interpretation of the licenses at issue, extrinsic evidence should be considered to interpret the meaning of the contested term.