By Eric Schweibenz and Christopher Ricciuti
On December 4, 2014, the International Trade Commission ("Commission") issued a notice modifying-in-part and vacating-in-part ALJ Dee Lord's initial determination terminating the investigation based on Complainant's lack of standing, and issued an order remanding the investigation to the ALJ in Certain Optical Disc Drives, Components Thereof, and Products Containing the Same (Inv. No. 337-TA-897).

By way of background, the investigation here is based on a September 3, 2013 complaint filed by Complainant Optical Devices, LLC ("Optical") alleging violation of Section 337 in the importation into the U.S. and sale of certain optical disc drives, components thereof, and products containing the same that infringe one or more claims of U.S. Patent Nos. 6,904,007; 7,196,979; 8,416,651; RE40,927; RE42,913; and RE43,681.  See our September 6, 2013 and October 23, 2013 posts for more details on the complaint and Notice of Investigation, respectively.

The Commission's Notice of Investigation named as respondents Lenovo Group Ltd. and Lenovo (United States) Inc.; LG Electronics, Inc. and LG Electronics U.S.A., Inc.; Panasonic Corp. and Panasonic Corporation of North America; Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.; and Toshiba Corporation and Toshiba America Information Systems, Inc. (collectively, "Respondents").  On May 6, 2014, Respondents filed a motion to terminate the investigation based on Optical's alleged lack of prudential standing to bring an infringement action with respect to the asserted patents.

On October 20, 2014, ALJ Lord found that Optical does not hold all substantial rights to the subject patents and, therefore, lacks prudential standing to maintain an action for infringement without joinder of other necessary parties.  Accordingly, the ALJ granted Respondents' motion to terminate the investigation.

On review, the Commission determined to vacate ALJ Lord's finding that Optical lacks standing with respect to the '007, '979, and '651 patents, and remanded the investigation for further proceedings consistent with the Commission's opinion and remand order.  However, with respect to the '927, '913, and '681 patents, the Commission agreed with ALJ Lord (on modified reasoning) that Optical lacks prudential standing with respect to these patents and that it would prejudice Respondents to allow Optical to join other necessary parties to remedy its lack of standing at the present time.  The Commission therefore terminated the investigation with respect to the '927, '913, and '681 patents.

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