By Eric Schweibenz
On April 20, 2010, the International Trade Commission issued an advisory opinion determining to grant the request of Atheros Communications, Inc. (“Atheros”) for an opinion that the importation of products containing Atheros GPS chips does not violate the Commission’s limited exclusion order (“LEO”) in Certain GPS Devices and Products Containing Same (Inv. No. 337-TA-602).

By way of background, the Complainant in the underlying investigation was Global Locate, Inc. (“GL”), and the Respondents were SiRF Technology, Inc. (“SiRF”), E-TEN Corp., Pharos Science & Applications, Inc., MiTAC International Corporation, and Mio Technology Limited (collectively, “Respondents”).  GL’s complaint was directed to “SiRF GPS Devices” and “downstream products using accused SiRF GPS devices” manufactured and/or distributed by the other Respondents.  Atheros was not named as a respondent.

The investigation was instituted on May 7, 2007.  On January 15, 2009, the Commission found a violation of Section 337 by Respondents and issued an LEO and several cease and desist orders.  The LEO called for the exclusion of infringing products “that are manufactured abroad by or on behalf of [Respondents] or any of their affiliated companies, parents, subsidiaries, or other related business entities, or their successors or assigns.”  SiRF appealed the ITC’s decision to the Federal Circuit, but the court affirmed the Commission’s findings.  See our April 12, 2010 post for more details.

On March 5, 2010, Atheros filed a request pursuant to Commission Rule 210.79 for an advisory opinion as to whether the importation, sale for importation, or sale after importation of GPS products incorporating Atheros GPS chips, rather than SiRF GPS chips, would violate the Commission’s LEO.  The Commission received no response to Atheros’s request, either from a party to the underlying investigation or from any member of the public.

In considering Atheros’s request, the Commission first found that the request met the requirements of Commission Rule 210.79 because it would “facilitate the enforcement of section 337 of the Tariff Act of 1930, would be in the public interest, and would benefit consumers and competitive conditions in the United States.”  Additionally, the Commission found that Atheros had shown “a compelling business need for the advice.”

The Commission then noted that LEOs generally apply to (1) articles explicitly found by the Commission to infringe, and (2) articles that are “essentially the same” as those articles.  In this case, since the Commission’s finding of infringement in the underlying investigation was based almost entirely on the operation of SiRF’s proprietary software, data services, and hardware, products containing Atheros GPS chips could not be considered to be “essentially the same” as products containing SiRF GPS chips.  Accordingly, Atheros’s products were not covered by the LEO in the underlying investigation, and the Commission determined to grant Atheros’s request for an advisory opinion that importation of products containing Atheros GPS chips does not violate the LEO.

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