By Eric Schweibenz
On December 14, 2009, the International Trade Commission issued a notice determining to review a portion of the October 13, 2009 final initial determination (“ID”) issued by ALJ E. James Gildea in Certain Coaxial Cable Connectors and Components Thereof and Products Containing Same (Inv. No. 337-TA-650).  In the notice, the Commission also determined to extend the target date in this investigation to March 17, 2010.

By way of background, the Complainant in this investigation is John Mezzalingua Associates, Inc. d/b/a PPC, Inc. (“PPC”) and the Respondents are Fu Ching Technical Industry Co. Ltd.,  Gem Electronics, Inc. (collectively, “Respondents”), Hanjiang Fei Yu Electronics Equipment Factory, Zhongguang Electronics, Yangzhou Zhongguang Electronics Co., Ltd., and Yangzhou Zhongguang Foreign Trade Co., Ltd. (collectively, the “Defaulting Respondents”).  The investigation was instituted on May 30, 2008.  On October 13, 2009, ALJ Gildea issued the ID, finding that no violation of Section 337 had occurred in connection with Respondents’ importation into the U.S., the sale for importation, or the sale within the U.S. after importation of certain coaxial cable connectors by reason of infringement of U.S. Patent No. 5,470,257 (the ‘257 patent).  The ID further found that the Defaulting Respondents were in violation of Section 337 for reasons of infringement of the ‘257 patent, U.S. Patent Nos. 6,558,194; D440,539 (the ‘539 patent); and D519,076.  See our November 10 post for more details.

On October 30, 2009, PPC and the Commission Investigative Staff (the “Staff”) filed petitions for review of the ID, and Respondents filed a contingent petition for review of the ID.  On November 9, 2009, PPC, the Staff, and the Respondents each filed responses to the petitions for review.

After examining the record of the investigation, including the ID, the petitions for review, and the responses thereto, the Commission decided to review the ID in part.  Specifically, in the December 14 notice, the Commission determined to review “(1) the findings and conclusions relating to whether a violation of section 337 has occurred with respect to the ‘257 patent, including the issues of claim construction, infringement, validity, and domestic industry and (2) the ID’s finding that PPC has met the domestic industry requirement for the ‘539 patent.”  In addition, the notice requests briefing on nine questions of particular interest to the Commission.

Significantly, the Commission also asked in the notice that the parties and members of the public comment on “the interpretation of section 337(a)(3) as it pertains to licensing.”  More particularly, in the notice the Commission asks (1) “In determining whether ‘investment’ in ‘licensing’ is ‘substantial,’ is all spending in connection with licensing efforts by an intellectual property owner [ ] properly considered ‘investment’ and, if so, do some kinds of spending in connection with licensing efforts merit full weight in the Commission’s analysis of whether total investment is ‘substantial’ while others merit less weight?”; (2) “Does Congress’s use of the term ‘exploitation’ in section 337(a)(3)(C) require the Commission to give greater weight to licensing efforts directed to bringing the protected article to market as opposed to, for example, efforts seeking to require an existing producer to take a license for a product it already makes?”; (3) “Is it significant that Congress grouped ‘licensing’ with ‘engineering’ and ‘research and development’ in describing exploitation in section 337(a)(3)(C)?”; and (4) “To what extent do legal fees paid by an intellectual property rights holder in litigation with targeted licensees and/or infringers represent investments in the exploitation of an intellectual property right within the meaning of section 337(a)(3)(C)?”

Written submissions in response to the Commission’s December 14 notice are due by January 13, 2010, with reply submissions due by January 27, 2010.