On March 9, 2010, ALJ Carl C. Charneski issued the public version of the Initial Determination (“ID”) (dated December 17, 2009) in Certain Mobile Telephones and Wireless Communications Devices Featuring Digital Cameras, and Components Thereof (Inv. No. 337-TA-663).

By way of background, the Complainant in this investigation is Eastman Kodak Company (“Kodak”).  The original Respondents were Samsung Electronics Company, Ltd., Samsung Electronics America, Inc., Samsung Telecommunications America, LLC (collectively, “Samsung”), LG Electronics, Inc., LG Electronics USA, Inc., and LG Electronics MobileComm USA, Inc. (collectively, “LGE”).  Prior to the issuance of the ID, LGE was terminated from the investigation.

ALJ Charneski issued the ID in this investigation on December 17, 2009, finding there was a violation of Section 337 in connection with the importation into the United States, the sale for importation, or the sale within the United States after importation of certain Samsung mobile telephones or wireless communication devices featuring digital cameras, or components thereof, that infringe certain claims of U.S. Patent Nos. 5,493,335 (the ‘335 patent) and 6,292,218 (the ‘218 patent).  Further, ALJ Charneski held that certain claims of the ‘335 and ‘218 patents are not invalid due to anticipation, obviousness, obvious-type double patenting, failure to comply with the written description requirement of 35 U.S.C. § 112, and that the claims of the ‘218 patent were not unenforceable.  Finally, ALJ Charneski found that a domestic industry existed for the ‘335 and ‘218 patents based on Samsung’s licensing of the patents and substantial investments in research and development that exploit the patents.  See our December 21, 2009 post for more details.

U.S. Patent No. 5,493,335

Regarding claim construction in connection with the ‘335 patent, ALJ Charneski construed nine claim terms.

• First, the claim term “a baseband image signal representative of color image pixels” was construed to mean “image data values that have not undergone image compression, each of which corresponds to a color image pixel.”


• Second, the claim term “a buffer memory having sufficient capacity for storing the color image pixel as baseband signals corresponding to at least one image” was construed to mean “memory for temporary storage having sufficient capacity to store baseband signals corresponding to at least one color image.”


• Third, the claim term “processed image signals obtained from the buffer memory” was construed to mean “image signals taken from the buffer memory that are subjected to image compression.”


• Fourth, the claim term “selecting a pixel resolution of the image by specifying an order in which the color image pixels are selected for storage in both vertical and horizontal directions” was construed to mean “a full resolution mode in which all color image pixels are selected and at least one reduced resolution mode in which less than all color image pixels are selected.”


• Fifth, the claim term “a full resolution mode in which all color image pixels are selected” was construed to mean “a mode with the largest number of color pixels selectable by the user.”


• Sixth, the claim term “subsampling of the color image pixels” was construed to mean “reducing the number of color image pixels by pixel selection, averaging of pixel values, or a combination thereof.”


• Seventh, the claim term “means for storing the selected color image” was construed as a means-plus-function limitation and the claimed function for the “means for storing the selected color image” is “storing the selected color image pixels in said output memory” and the structure is the latching and decoding circuit.


• Eighth, the claim term “compressing the baseband image signal” was construed to mean “applying an image compression algorithm in the baseband signal.”


• Ninth, the claim term “averaging at least some of the color image pixels” was construed to mean “creating a color pixel average based on two or more color pixel values.”

In light of these claim constructions, ALJ Charneski determined that Kodak had demonstrated that Samsung’s products infringed all the asserted claims of the ‘335 patent.

With respect to validity, ALJ Charneski determined that Samsung had not shown that any of the asserted claims of the ‘335 patent were invalid due to anticipation, obviousness, or obvious-type double patenting.  First, ALJ Charneski rejected Samsung’s assertion that the ‘335 patent was anticipated by the Gouhara reference.  In particular, ALJ Charneski determined that the Gouhara reference was not prior art and does not disclose the “reduced resolution mode,” the “resolution mode switch,” or the “means for storing” limitations of independent claim 1 nor the “burst mode” limitation of dependent claim 4.  Second, ALJ Charneski rejected Samsung’s assertion that claim 12 the ‘335 patent was obvious in view of the combination of the Gouhara reference with the Sasaki or Bayer references because the combination of these references “does nothing to address the fact that . . . Gouhara lacks the ‘reduced resolution mode,’ and ‘resolution mode switch’ limitations” present in claim 12.  ALJ Charneski also rejected Samsung’s assertion that certain claims of the ‘335 patent were obvious in view of the use of a color filter in combination with the Tsukamoto reference because there was no evidence that “one of ordinary skill would have any reason to combine Tsukamoto with a color filter array, and would even be able to make it work, let alone to meet all the limitations” of the claims.  Third, ALJ Charneski rejected Samsung’s argument that a later filed, but earlier issued, patent rendered claim 1 of the ‘335 patent invalid due to double patenting because there was no evidence that one of ordinary skill in the art “could have bridged the gap between the techniques” used in both patents.

U.S. Patent No. 6,292,218

Regarding claim construction in connection with the ‘218 patent, ALJ Charneski construed seven claim terms.

• First, the claim term “captured image” was construed to mean “an image of a scene captured by the electronic still camera.”


• Second, the claim term “first number of color pixel values” was construed to mean “the number of color pixel values generated by the photosites on the image sensor.”


• Third, the claim term “first color pattern” was construed to mean “the color pattern of the image as generated by the photosites on the image sensor.”


• Fourth, the claim term “generating” was construed to mean “creating.”


• Fifth, the claim term “third number of color pixel values” was construed to mean “the number of color pixel values generated by the still processor for each still image.”


• Sixth, the claim term “motion processor” was construed to mean “a digital processor that processes a series of motion images.”


• Seventh, the claim term “still processor” was construed to mean “a digital processor that processes a captured still image.”

In light of these claim constructions, ALJ Charneski determined that Kodak had shown that Samsung’s products infringed all the asserted claims of the ‘218 patent.

With respect to validity, ALJ Charneski determined that Samsung had not shown that the asserted claims of the ‘218 patent were invalid for failure to satisfy the written description requirement of 35 U.S.C. § 112.  In particular, ALJ Charneski found that “physically separate hardware for use as the motion and still processors” was not, as asserted by Samsung, part of the claimed invention and thus was not necessary to be taught in the specification.

Regarding unenforceability, ALJ Charneski determined there was no evidence of intent to deceive the PTO on the part of either the inventors or anyone connected with the prosecution of the ‘218 patent.

Domestic Industry

Regarding domestic industry, ALJ Charneski determined that Kodak demonstrated “substantial domestic investment in the exploitation of the ‘335 patent and the ‘218 patent through licensing.  Consequently, pursuant to 19 U.S.C. § 1337(a)(3)(c), it is found that the domestic industry requirement is satisfied as to both patents asserted in the investigation.”  ALJ Charneski further determined that “in addition to the evidence discussed above relating to Kodak’s exploitation of the asserted patents through licensing, it has also been shown that Kodak has satisfied the domestic industry requirement through substantial investments in research and development that exploit the patents.”