On June 11, 2009, the Commission issued a Notice determining that it would review Chief ALJ Paul J. Luckern’s May 8, 2009 Initial Determination in Certain Short-Wavelength Light Emitting Diodes, Laser Diodes and Products Containing Same (Inv. No. 337-TA-640).  As explained in our June 11 post, ALJ Luckern granted Complainant Professor Gertrude Neumark Rothschild’s motion for summary determination that she satisfied the domestic industry requirement.  According to the Notice, on May 18 and May 19, respondent Panasonic and the Commission Investigative Staff filed petitions for review of the May 8 Initial Determination, respectively.  Professor Rothschild filed a response on May 26.

The Commission’s Notice requests briefing on the following questions:

  • Does section 337 (including the legislative history and the case law) support the ALJ’s determination that complainant’s payments made to outside counsel for exploiting and licensing the ‘499 patent qualify as an “investment” under 337(a)(3)(C)?

  • Does the record indicate the extent of investment made and royalties received in connection with the licenses granted prior to litigation, as opposed to licenses entered into in order to settle litigation, and, if so, are such investments and royalties entered into prior to litigation entitled to more weight in the analysis?

  • Does it matter whether the investment in licensing is performed by in-house employees versus outside counsel?

  • For determining the sufficiency of investment in licensing, it is relevant that the party asserting the intellectual property right is an individual inventor?

Written submissions are due on June 26 and responsive submissions are due on July 10.