By Eric Schweibenz
On March 11, 2013, ALJ Theodore R. Essex issued the public version of the Initial Determination on Remand regarding Validity and Enforceability (“RID”) (dated February 28, 2013) in Certain Devices for Improving Uniformity Used in a Backlight Module and Components Thereof and Products Containing Same (337-TA-805).

By way of background, the Complainants in this matter are Industrial Technology Research Institute and ITRI International, Inc. (collectively, “ITRI”) and the Respondents are LG Corporation, LG Electronics, Inc., and LG Electronics U.S.A., Inc. (collectively, “LG”).  ITRI alleged that LG violated Section 337 by the importation and/or sale of LCD televisions and monitors that infringed claims 6, 9, and 10 of U.S. Patent No. 6,883,932 (the ‘932 patent).  See our September 12, 2011 post for more details.

ALJ Essex’s October 22, 2012 Initial Determination (“ID”) in this case found no infringement and no domestic industry, and therefore ALJ Essex did not reach the issues of invalidity and unenforceability.  See our November 6, 2012 post for more details.  The International Trade Commission (the “Commission”) remanded-in-part the investigation back to ALJ Essex to consider the parties’ invalidity and unenforceability arguments and make appropriate findings.  See our December 27, 2012 post for more details on the Commission’s remand notice and order.

As described in our March 6, 2013 post, ALJ Essex issued a notice summarizing his holdings that the ‘932 patent is invalid under 35 U.S.C. § 102 and that no violation of Section 337 has occurred in this investigation.  We now provide additional details.


LG argued that eleven references separately anticipated the ‘932 patent.  ALJ Essex went through each reference and dismissed seven.  Specifically, ALJ Essex reasoned that neither LG nor the Commission Investigative Staff (“OUII”) presented anticipation arguments under the claim construction adopted by the ALJ and thus the arguments were not considered.  One reference was dismissed as ALJ Essex considered the arguments to have been waived by LG because they were not included in its pre-hearing brief.  The remaining three references were substantively analyzed by ALJ Essex, and LG was not considered to meet the burden of proving anticipation by clear and convincing evidence for two.  However, one reference was found to anticipate all asserted claims of the ‘932 patent based on an element by element analysis, and thus the ‘932 patent was determined to be invalid for anticipation.

LG argued “in the event that the ALJ should find any of the limitations from claims…missing from any of the anticipatory references discussed above, then any combination of those references renders obvious the asserted claims of the ‘932 patent.”  However, ALJ Essex rejected this “catch-all” argument and its “cursory discussion” as insufficient to prove obviousness by clear and convincing evidence.

LG also argued that the claims were invalid for failure to comply with the written description requirement regarding the claim term
“uniform.”  ITRI and the OUII countered this argument, and the ALJ agreed.  Specifically, ALJ Essex considered LG’s written description argument to be a “rehashing of its claim construction arguments regarding ‘uniform’” and to be without merit.


According to the RID, LG argued that the ‘932 patent is unenforceable due to inequitable conduct based on failure to disclose a material reference to the Patent Office.  ITRI and OUII counter-argued that LG has failed to prove the requisite specific intent and therefore LG does not demonstrate clearly and convincingly that the ‘932 patent is unenforceable.  ALJ Essex dismissed LG’s argument, determining “there is absolutely no evidence that would establish that ITRI ‘made a deliberate decision to withhold’” the reference in question.  Thus, the ‘932 patent was determined to be enforceable.