By Eric Schweibenz
On June 3, 2014, ALJ Thomas B. Pender issued Order No. 6 in Certain Earpiece Devices Having Positioning and Retaining Structure and Components Thereof (Inv. No. 337-TA-912).

By way of background, this investigation is based on a February 26, 2014 complaint filed by Bose Corp. (“Bose”) alleging violation of Section 337 by Monster, Inc., Monster, LLC, and Monster Technology International, Ltd. by way of importation into the U.S. and sale of certain earpiece devices having positioning and retaining structure and components thereof that infringe one or more claims of U.S. Patent No. 8,311,253.  See our February 27, 2014 and March 31, 2014 posts for more details on Bose’s complaint and the Notice of Investigation, respectively.

According to the Order, Respondent Monster Technology International, Ltd. (“MTIL”) filed a motion for summary determination of Section 337 for lack of importation and also for termination of the investigation as to MTIL.  MTIL also attached a Statement of Undisputed Material Facts (“SMF”), a Memorandum of Law, and a supporting declaration by David Tognotti to the motion.  Bose opposed MTIL’s motion and the SMF.

In its motion, MTIL argued that it lacks any U.S. offices, any direction or control over its U.S. affiliates, and any product sales or distribution outside of Europe.  Bose contended that Mr. Tognotti’s LinkedIn profile listing his current position as “General Manager, Vice President of Operations and General Counsel at Monster Cable Products, Inc.” and his current residence as the “San Francisco Bay Area” demonstrated MTIL’s involvement and influence in the U.S. market.  Bose also contended that Mr. Tognotti’s declaration raised genuine disputes as to his position in MTIL because he was referred to by multiple titles without clarification. 

ALJ Pender found that based on the arguments and evidence it was unclear what Mr. Tognotti’s involvement is with MTIL.  ALJ Pender noted that MTIL only provided minimal evidence to demonstrate that Mr. Tognotti is a Director and Secretary of MTIL and thus would have knowledge regarding the facts in his declaration.  ALJ Pender also noted that MTIL did not clarify Mr. Tognotti’s actual role in MTIL and failed to address the contradictory information provided on Mr. Tognotti’s LinkedIn profile.  While ALJ Pender agreed with Bose that there are questions regarding the propriety of Mr. Tognotti’s declaration, he did not agree that the evidence demonstrated MTIL’s involvement and influence in the U.S. market.

MTIL also contended that it lacked any involvement in the manufacture, importation, distribution, or sale of the allegedly infringing products in the U.S.  Bose argued that the MTIL’s address appearing on the accused Monster iSport Intensity headphone’s packaging raised a dispute regarding MTIL’s involvement in the U.S. market.  MTIL did not dispute the appearance of its international address on the packaging, instead arguing that the address appears alongside their domestic affiliate’s address on U.S. packaging because the companies use the same “global packaging” to reduce costs and that its “principal activity” is for European and Canadian markets, as well as business support activities outside of the Americas. 

ALJ Pender found that, while MTIL asserted that its address was on the packaging in order to reduce costs, MTIL failed to provide any evidence to substantiate that claim.  Additionally, ALJ Pender found that while the newspaper article that MTIL relied on stated that the principal activity of MTIL occurs in the European and Canadian markets, it did not rule out MTIL having activities in the U.S.   Therefore, ALJ Pender found that the presence of MTIL’s address on the packaging of the accused product called into question the veracity of Mr. Tognotti’s statements and created a genuine dispute of material fact as to MTIL’s involvement in the sale and/or importation of the accused product.  Accordingly, ALJ Pender denied the motion.