24
Apr
By Eric Schweibenz
As indicated in our March 18 post, on March 16, 2009, ALJ Theodore R. Essex issued his initial determination (“ID”) in the matter of Certain Computer Products, Computer Components and Products Containing Same (Inv. No. 337-TA-628).  On April 14, ALJ Essex issued the public version of his 172-page ID.

In the ID, ALJ Essex held that no violation of section 337 has occurred by respondents ASUSTeK Computer, Inc. and ASUS Computer International (“Respondents”) because the accused products do not infringe U.S. Patent Nos. 5,008,829, 5,249,741, and 5,371,852.  ALJ Essex further determined that the patents-in-suit are valid and that Complainant International Business Machines (“IBM”) satisfied the domestic industry requirement of section 337 for each of the patents-in-suit.

The ID describes the asserted patents as follows:

  • the ‘852 patent “provides a method and apparatus for enabling a cluster of computers to appear as a single computer to host      computers outside the cluster”;

  • the ‘829 patent “relates to personal computer power supplies for supplying electrical power to electrically operated components that manipulate or store digital data”; and

  • the ‘741 patent “relates to a method of cooling a computer having a plurality of components and at least one variable rate cooling unit, e.g., a fan.”


ALJ Essex first noted that the parties filed a stipulation agreeing that IBM satisfied the importation requirement.  ALJ Essex further determined that IBM had standing to assert the patents-in-suit despite Respondents’ arguments to the contrary.  Specifically, ALJ Essex found that IBM met its burden to show ownership of the patents-in-suit and that Respondents “have failed to meet [their] burden of rebutting the presumption that IBM owns the patents in suit.”

With respect to infringement, ALJ Essex determined that Respondents did not literally infringe the asserted claims of the ‘852 patent since he adopted Respondents’ proposed claim constructions and “the parties generally agree that should the ALJ adopt[] [Respondents’] claim construction, then the Accused Routers do not infringe.”  ALJ Essex further determined that Respondents did not infringe the ‘852 patent under the doctrine of equivalents since the analysis of IBM’s expert was “cursory at best and, instead, relies only upon conclusory statements.”  ALJ Essex also determined that Respondents did not induce infringement of the ‘852 patent because IBM failed to show that Respondents’ products directly infringe the ‘852 patent.  Further, even if IBM had met its burden of proving direct infringement, ALJ Essex found that IBM failed to show Respondents knowingly induced infringement or that Respondents possessed the requisite specific intent to induce another to infringe.

ALJ Essex determined that Respondents’ accused products did not literally infringe the ‘829 patent “because no such product meets each and every limitation of [independent] claim 1.”  ALJ Essex found no infringement under the doctrine of equivalents because the analysis of IBM’s expert was insufficient and “failed to offer a complete analysis of how each accused product performs the same function as the invention of claim 1 of the ‘829 Patent, in substantially the same way, to achieve substantially the same results.”  Because ALJ Essex determined that Respondents’ accused products did not directly infringe the ‘829 patent, Respondents “cannot be found to induce or contribute to the infringement of the ‘829 Patent.”

ALJ Essex determined that Respondents’ products did not literally infringe the ‘741 patent since such products do not practice a “method for cooling a computer having a plurality of components and at least one variable rate fan cooling unit” as required by claim 1.  ALJ Essex further found no infringement under the doctrine of equivalents because of the “conclusory testimony” of IBM’s expert “who fails to provide an element by element analysis showing how the limitations in claim 1 of the ‘741 Patent are equivalent to elements in the accused products.”  Similar to his analysis in connection with the ‘852 and ‘829 patents, ALJ Essex determined that because Respondents’ accused products did not directly infringe the ‘741 patent, Respondents did not indirectly infringe the ‘741 patent.

With respect to invalidity, ALJ Essex first reviewed Respondents’ arguments that the ‘852 patent was anticipated by three separate prior art references.  Regarding the first prior art reference, ALJ Essex noted that the only invalidity evidence presented was based upon IBM’s proposed claim construction, not Respondents’.  However, since ALJ Essex adopted Respondents’ and the Commission Investigative Staff’s claim construction, he determined that Respondents did not meet their burden of showing, by clear and convincing evidence, that the ‘852 patent was anticipated.  As to the remaining two prior art references, ALJ Essex determined that Respondents waived their arguments with respect to these prior art references under Ground Rule 11.1 by only incorporating by reference arguments made in their pre-hearing brief.  ALJ Essex determined that “simply referencing a pre-hearing brief and incorporating those arguments by reference is insufficient to constitute a discussion of the issue in the post-hearing brief.”

Regarding the ‘829 patent, ALJ Essex evaluated six prior art references that Respondents argued anticipated the asserted claims.  Although he determined that IBM had waived certain validity arguments by failing to raise them in its initial post-hearing brief and raising for the first time in its post-hearing reply brief, ALJ Essex found that Respondents failed to demonstrate by clear and convincing evidence that any of the asserted prior art references disclose each element of the asserted claims.  ALJ Essex further found that “by simply making cursory assertions and conclusory arguments,” Respondents “blatantly failed to meet the clear and convincing standard necessary to invalidate the ‘829 Patent based on obviousness.”

With respect to the ‘741 patent, ALJ Essex determined that Respondents failed to demonstrate by clear and convincing evidence that any of the asserted prior art references anticipate and/or render obvious the asserted claims.  Regarding Respondents’ arguments that the ‘741 patent is invalid for lack of sufficient written description and enablement, ALJ Essex determined that such arguments lacked merit since it depended on a claim construction that was not adopted.

ALJ Essex further determined that to the extent that Respondents incorporate open source programs, namely iptables and/or netfilters, in its accused routers, Respondents have an implied license under the General Public License (“GPL”).  Thus, ALJ Essex held that “IBM is bound by its agreement under the GPL and is, therefore, barred from its infringement claims under the ‘852 Patent against those accused products that contain this open source code.”

Lastly, ALJ Essex determined that IBM satisfied the domestic industry requirement through its licensing program.  Specifically, ALJ Essex held that IBM made substantial investments in its licensing program and that there was a sufficient nexus between its licensing activities and the patents-in-suit.
Share
www.xxx-clips-online.com