By Eric Schweibenz
On July 18, 2011, Chief ALJ Paul J. Luckern issued the public versions of Order No. 25 (dated March 2, 2011), Order No. 27 (dated March 10, 2011), and Order No. 28 (dated March 10, 2011) in Certain Electronic Imaging Devices (Inv. No. 337-TA-726).

By way of background, the Complainant in this investigation is Flashpoint Technology, Inc. (“Flashpoint”) and Respondents are Nokia Corp. and Nokia Inc. (collectively, “Nokia”); Research in Motion Limited and Research in Motion Corporation (collectively, “RIM”); HTC Corp. and HTC America, Inc. (collectively, “HTC”); and LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics MobileComm U.S.A., Inc. (collectively, “LG”).  In its May 13, 2010 complaint and June 16, 2010 amended complaint, Flashpoint alleges a violation of Section 337 in the importation into the U.S. and sale of certain electronic imaging devices that infringe U.S. Patent Nos. 6,134,606 (“the ‘606 patent), 6,163,816 (“the ‘816 patent), and 6,262,769 (“the ‘769 patent).  See our July 9, 2010 post for more details.

Order No. 25 relates to a motion for summary determination filed by all Respondents, asserting that the claims of the ‘769 patent are invalid for failure to disclose the best mode of the claimed invention.  According to the Order, the Respondents argued that Dr. George Dalke, one of the inventors of the ‘769 patent, had an idea for improving image display which the inventors failed to disclose in the ‘769 patent. Both Flashpoint and the Commission Investigative Staff (“OUII”) opposed the motion. In the Order, ALJ Luckern determined that Dalke’s testimony, relied on by Respondents, related to digital imaging technology “as a whole and was not limited to Dalke’s work related to the… ‘769 patent.”  The ALJ also noted that Dalke did not appear to believe there was any necessary connection between his idea and the relevant functionality of the ‘769 patent. Accordingly, ALJ Luckern denied Respondents motion.   

Order No. 27 relates to a motion for summary determination filed by HTC and LG alleging that their Windows-based mobile phones are licensed to practice the asserted claims of the ‘606, ‘816, and ‘769 patents.  Specifically, according to the order, HTC and LG asserted that Microsoft has a license to practice the asserted claims of the ‘606, ‘816, and ’769 patents, and that, as bonafide purchasers of the Microsoft Windows Phone 7 Operating System, they are protected by the first sale doctrine and cannot be barred from importation.  Both Flashpoint and the OUII opposed the motion. In the Order, ALJ Luckern found that certain genuine issues of material fact remained as to several contractual issues and denied the motion.

Finally, Order No. 28 relates to a motion for summary determination filed by Nokia, asserting that its products do not infringe the ‘816 patent.  In support of its motion, Nokia argued that the ‘816 patent required stores of “Lists of Values” and “Range of Values” for digital camera parameters within the same storage location.  According to the Order, Nokia asserted that its products lacked such a storage location.  Flashpoint opposed Nokia’s motion and no response was filed by the OUII.  In the Order, ALJ Luckern denied the motion, determining that genuine issues of material fact remained relating to claim interpretation of at least the terms “capability parameters” and “a series of capability parameter storage locations” and to the ultimate issue of infringement.