By Eric Schweibenz and Alex Englehart
On December 15, 2016, Sony Corp. of Japan, Sony Storage Media and Devices Corp. of Japan, Sony DADC US Inc. of Terre Haute, Indiana, and Sony Latin America Inc. of Miami, Florida (collectively, “Sony”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that Fujifilm Holdings Corp. of Japan, Fujifilm Corp. of Japan, Fujifilm Holdings America Corp. of Valhalla, New York, and Fujifilm Recording Media U.S.A., Inc. of Bedford, Massachusetts (collectively, “Fujifilm”) unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain magnetic tape cartridges and components thereof that infringe one or more claims of Sony’s U.S. Patent Nos. 6,345,779 (the ’779 patent), 6,896,959 (the ’959 patent), 7,016,137 (the ’137 patent), and 7,115,331 (the ’331 patent) (collectively, the “asserted patents”).

According to the complaint, the asserted patents generally relate to magnetic tape cartridge technology. In particular, the ’779 patent relates to a data storage cartridge having a retainer for a leader pin and a two-piece housing that connects close to the leader pin. The ’959 patent relates to a magnetic layer of recording media, such as tape, with certain metallic pigments that meet various criteria. The ’137 patent relates to a tape cartridge equipped with a memory capable of storing “management information” and tape drives for use with such cartridges. Lastly, the ’331 patent relates to a dual-layer recording medium that includes a non-magnetic substrate having a front side and a back side, a lower support layer formed over the front side, and a magnetic upper recording layer formed over the lower layer.

In the complaint, Sony states that Fujifilm imports and sells products that infringe the asserted patents. The complaint specifically refers to Fujifilm-branded tape products that are compliant with LTO Ultrium generation 4, 5, and 6 formats, as well as the cartridge components, magnetic tape, and leader pins comprising such tape products, as infringing products.

Regarding domestic industry, Sony states that many of its own tape products practice claims of the asserted patents. Sony further states that it has made substantial investments in labor and facilities in the U.S. relating to management, logistics, supply chain, distribution, customer service, and support of Sony products that practice the asserted patents. Sony also states that it has licensees that maintain industries in the U.S. relating to products that practice the asserted patents.

As to related litigation, Sony states that on May 27, 2016, certain Fujifilm entities filed a complaint against certain Sony entities at the ITC alleging infringement of six patents relating to magnetic tape products. This complaint resulted in the institution of ITC Inv. No. 337-TA-1012. See our July 8, 2016 post for more details. Sony further states that Fujifilm filed a petition for inter partes review (IPR) of the ’137 patent, and the U.S. Patent and Trademark Office instituted the IPR on November 22, 2016. Sony also refers to additional IPRs filed by Fujifilm against certain Sony patents. Sony further refers to various ongoing litigations in Japan between Sony and Fujifilm relating to magnetic tape products. Sony further states that on July 27, 2016, it filed a complaint against certain Fujifilm entities in the U.S. District Court for the Southern District of New York alleging that these entities engaged in anticompetitive conduct in filing their complaint at the ITC that resulted in ITC Inv. No. 337-TA-1012, and that Fujifilm’s magnetic tape products infringe claims of certain Sony patents (other than the asserted patents). Lastly, Sony states that, concurrently with the filing of the instant ITC complaint, it is also filing a complaint against Fujifilm in the U.S. District Court for the Southern District of Florida, alleging infringement of the asserted patents.

With respect to potential remedy, Sony requests that the Commission issue a permanent limited exclusion order and a permanent cease and desist order directed at Fujifilm and related entities.