On May 28, 2013, the International Trade Commission (“the Commission”) issued a notice in Certain Electronic Digital Media Devices and Components Thereof (Inv. No. 337-TA-796).  In the notice, the Commission determined to review ALJ Thomas B. Pender’s remand initial determination (“Remand ID”) in its entirety, requested briefing from the parties on certain issues under review, and also requested briefing from the public and the parties on the issues of remedy, bond, and the public interest. 

By way of background, the investigation is based on a complaint filed by Apple, Inc. (“Apple”) alleging a violation of Section 337 by Respondents Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc.; and Samsung Telecommunications America, LLC (collectively, “Samsung”) for importation into the U.S. and sale of certain electronic digital media devices.  See our August 2, 2011 post for more details on the Notice of Investigation in this matter.

On October 24, 2012, ALJ Pender issued an Initial Determination (“ID”), which found that Samsung violated Section 337 by infringement of certain valid claims of U.S. Patent Nos. D618,678; 7,479,949 (the ‘949 patent); RE 41,922 (the ‘922 patent); and 7,912,501 (the ‘501 patent).  See our January 22, 2013 post for more details on the public version of the ID.  On January 23, 2013, the Commission issued a notice determining to review the ID in its entirety.  Additionally, the Commission remanded the investigation to ALJ Pender to consider certain issues related to the ‘922 patent and the ‘501 patent.  See our January 24, 2013 post for more details.

On March 26, 2013, ALJ Pender issued the subject Remand ID finding that claims 34 and 35 of the ‘922 patent are infringed by the text-selection feature of Samsung’s accused products and that claim 3 of the ‘501 patent is not infringed.  See our April 8, 2013 post for more details.  Both Apple and Samsung petitioned for review of the Remand ID.

According to the notice, the Commission requested briefing from the parties on the following issues:

• Substantial noninfringing uses and the “material or apparatus” used in practicing the patented methods that are relevant to this analysis.


• The requirement, if any, that the “material or apparatus” relevant to a substantial noninfringing use analysis must be “separate and distinct” from all other functions of a larger product.


• Evidentiary support showing that a third party performed each and every step of asserted claims 29-35 of the ‘922 patent.


• Evidentiary support showing that Samsung actively and knowingly aided and abetted another’s direct infringement of the above claims.


• Evidentiary support showing that Samsung actively and knowingly aided and abetted another’s direct infringement of claims 11-16 of the ‘949 patent. 


• Evidentiary support that would narrow the construction of the “feature of interest” limitation in claims 31 and 32 of the ‘922 patent to exclude certain control elements and what impact, if any, do the additions in the specification added during reissue have on the construction of the claims added during reissue.


• Evidentiary support regarding whether a person of ordinary skill in the art would understand from the disclosure of U.S. Patent No. 7,789,697 (the ‘697 patent) that a “signal path” exists even in the absence of a plug in receptacle. 


• Samsung’s argument that Apple’s petition for review as to the ‘697 patent relies on a newly proffered claim construction.


• Lastly, assuming arguendo that Apple’s proposed construction is adopted, the evidentiary support showing that this limitation is disclosed or suggested in the prior art.

In addition, the Commission requested written submissions from the parties, interested government agencies, and any other interested persons on the following issues:

• The form of remedy, if any, that should be ordered and the public interest factors associated with this determination.


• In particular, the Commission is interested in how a remedial order barring the entry and further distribution of Samsung’s accused products would affect the public interest as identified in Section 337(d)(1) and (f)(1); and


• What ways, if any, a remedy with respect to infringement of one or more of the asserted patents should be specifically tailored to avoid harm to the public interest.

Written submissions are due by June 11, 2013, with reply submissions due by June 19, 2013.