By Eric Schweibenz
On May 15, 2014, ALJ Thomas B. Pender issued Order No. 12 (dated May 1, 2014) in Certain Wireless Devices, Including Mobile Phones and Tablets II (Inv. No. 337-TA-905).

By way of background, this investigation is based on a complaint filed by Pragmatus Mobile, LLC (“Pragmatus”) alleging violations of Section 337 in the importation into the U.S. and sale of certain wireless devices, including mobile phones and tablets, that infringe one or more claims of U.S. Patent Nos. 8,149,124 and 8,466,795 (the “Asserted Patents”).  See our December 19, 2013 and January 23, 2014 posts for more details on the complaint and notice of investigation, respectively.  The Complaint alleges, inter alia, that Pragmatus holds all rights, title, and interest to the Asserted Patents by way of assignment from Hoffman Resources LLC.  However, the Complaint included a document that appeared to contradict the public assignment records.  Accordingly, after inquiry into the issue by the Commission Investigative Staff, Pragmatus submitted a supplemental assignment assigning “all right, title, and interest that exist today and may exist in the future” from Pragmatus LLC to Pragmatus Mobile.  The Commission instituted the investigation after Pragmatus’ supplemental assignment was submitted.

According to the Order, Respondents Samsung Electronics Co. Ltd.; Samsung Electronics America, Inc.; Samsung Telecommunications America, LLC; Sony Corp.; Sony Mobile Communications AB; Sony Mobile Communications (USA), Inc.; Nokia Corp.; Nokia Inc.; ZTE Corp.; and ZTE (USA) Inc. (collectively, the “Respondents”) filed a motion to terminate the investigation for lack of standing and lack of domestic industry.  Specifically, Respondents argued that the Asserted Patents were not properly assigned to Pragmatus at the time the Complaint was filed.  Accordingly, ALJ Pender determined that Respondents’ motion raised three distinct questions of law and fact: “(1) Whether standing in a 337 investigation must be evaluated at the time of the filing of the complaint or at the time of institution; (2) Whether ownership rights for the Asserted Patents were assigned in 2011 from Hoffman Resources LLC to Pragmatus Mobile; and (3) Whether Complainant’s license agreements regarding the Asserted Patents are valid for establishing a domestic industry.”

Regarding the first issue, Respondents argued that standing must exist at the time of the filing of the complaint, whereas Complainant asserted that standing should be evaluated at the time of institution.  ALJ Pender held that the proper timeframe to determine standing in a Section 337 investigation is at the institution of the investigation.  ALJ Pender rejected Respondents’ arguments based on civil actions in district courts because Commission precedent established that institution and not the filing of the complaint serves as the proper time to evaluate standing.

With respect to the second issue, Respondents argued that the 2011 assignment failed to properly assign the Asserted Patents to Pragmatus.  In its opposition, Pragmatus cited assignment documents and declarations to establish that the disputed 2011 assignment was a proper assignment.  ALJ Pender held that Pragmatus’ evidence raised genuine issues of material fact that precluded a summary determination regarding the ownership of the Asserted Patents.

Regarding the last issue, Respondents similarly argued that the 2011 assignment failed to properly assign the Asserted Patents to Pragmatus and, therefore, the licensing activity that occurred after the 2011 assignment and before the assignment issue was recently corrected cannot be used to establish domestic industry.  ALJ Pender noted his previous determination that issues of material fact remain as to the proper ownership of the Asserted Patents.  ALJ Pender thus determined that additional issues of material fact exist based on Pragmatus’ argument that, even if the 2011 assignment failed to properly assign the Asserted Patents, the licensing activity was done on behalf of Pragmatus and, therefore, can be used by Pragmatus to establish the domestic industry requirement.  Accordingly, ALJ Pender denied Respondents’ Motion to Terminate the Investigation.