By Eric Schweibenz
On July 8, 2013, the International Trade Commission (the “ITC” or the “Commission”) issued a notice in Certain Video Game Systems and Wireless Controllers and Components Thereof (337-TA-770).  In the notice, the Commission determined to review in part Chief ALJ Charles E. Bullock’s May 7, 2013 remand initial determination (“RID”), which found no violation of Section 337 by the Respondents in this investigation.

By way of background, this investigation was instituted on April 20, 2011 based on a complaint filed by Creative Kingdoms, LLC and New Kingdoms, LLC (collectively, “CK”) alleging a violation of Section 337 by Respondents Nintendo of America, Inc. and Nintendo Co., Ltd. (collectively, “Nintendo”) for the importation into the U.S. and sale of certain video game systems and wireless controllers and components thereof including Nintendo’s Wii wireless game system and controllers.  CK alleged that Nintendo violated Section 337 with respect to U.S. Patent Nos. 7,850,527 (the ‘527 patent), 7,500,917 (the ‘917 patent), and 7,896,742 (the ‘742 patent).  See our March 23, 2011 and April 21, 2011 posts for more details on the complaint and notice of investigation.

On August 31, 2012, ALJ Bullock issued an initial determination (“ID”) finding no violation of Section 337 by Nintendo in this investigation with respect to the patents-at-issue.  See our October 12, 2012 post for more details.  On November 6, 2012, the Commission issued a notice indicating that the Commission revised the claim construction of “toy wand,” and in light of this construction, remanded the case to ALJ Bullock to determine infringement, validity, and domestic industry of the ‘917 and ‘742 patents.  See our November 8, 2012 and November 12, 2012 posts for more information about the Commission’s prior notice and opinion.

ALJ Bullock determined on remand that Nintendo does not infringe claim 7 of the ‘917 patent and does not contributorily infringe claim 24 of the ‘742 patent.  The ALJ also held that claim 7 of the ‘917 patent is neither anticipated not obvious, and that claim 24 of the ‘742 patent is not obvious.  Further, ALJ Bullock held that the technical prong of the domestic industry requirement is satisfied for both patents (although he previously determined that the economic prong was not met).  See our May 9, 2013 post for more details on the remand determination.

According to the notice, CK filed a petition for review of the remand ID regarding the economic prong of the domestic industry requirement, as well as the findings in the RID related to infringement.  Nintendo also filed a petition for review challenging the ALJ’s findings with regard to the nonobviousness of claim 24 of the ‘742 patent.

The Commission has determined to review the following issues from the RID:  (i) direct infringement of the ‘917 patent; (ii) indirect infringement of the ‘742 patent; (iii) nonobviousness of claim 24 of the ‘742 patent; and (iv) whether the technical prong of the domestic industry requirement is met for both patents.  The Commission also noted that several issues from the ID are still under review, including direct infringement of the ‘742 patent, validity in relation to enablement and written description, and the economic prong of the domestic industry requirement. 

The notice states that the parties are requested to brief their positions on the issues under review.  The notice further states that the Commission is particularly interested in responses to ten specific questions listed in the notice.  The notice also requests briefing on remedy, the public interest, and bonding issues.

Written submissions are due by July 18, 2013, with reply submissions due by July 25, 2013.