On January 11, 2011, ALJ Robert K. Rogers, Jr. issued Order No. 31: Initial Determination Granting Complainants’ Motion for Summary Determination on Patent Validity in Certain Inkjet Ink Cartridges with Printheads and Components Thereof (Inv. No. 337-TA-723).

According to the Order, Complainants Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. (collectively, “HP”) filed a motion for summary determination that the following patents-in-suit are not invalid: U.S. Patent Nos. 6,309,053; 6,398,347; 6,412,917; 6,481,817; and 6,402,279, on the grounds that no respondents offered any invalidity defense for these patents and the time for discovery and initial expert reports had passed.  Respondent Asia Pacific Microsystems, Inc. (“APM”) opposed the motion, arguing that although it already agreed not to introduce evidence at trial to invalidate these five patents, a stipulation or an unopposed in limine motion would be more appropriate, and that even if HP’s motion were granted, any resulting order should state it has no preclusive effect in any other forum.  The Commission Investigative Staff supported HP’s motion, noting that since HP does not have the burden of proof regarding validity, it has no affirmative duty to present evidence to prevail on its motion.

ALJ Rogers determined that HP is entitled to summary determination of no invalidity, on the grounds that patents are presumed valid, fact discovery is closed, the deadline for initial expert reports has passed, and the parties are in agreement that no respondent offered an invalidity defense for the five patents.  ALJ Rogers determined that APM offered no legal authority for the proposition that this invalidity issue cannot be resolved on summary determination, and found to the contrary that such a determination is supported by 19 CFR § 210.18(a) & (b).  ALJ Rogers further denied, as unnecessary, APM’s request that any order granting HP's motion include a statement clarifying that APM is not precluded from challenging the validity of these five patents in district court, in view of caselaw stating: “decisions of the ITC involving patent issues have no preclusive effect in other forums,” citing Texas Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1569 (Fed. Cir. 1996).