By Eric Schweibenz
On May 31, 2019, Honeywell International, Inc. of Morris Plains, New Jersey, Hand Held Products, Inc. (“Hand Held”) of Fort Mill, South Carolina, and Metrologic Instruments, Inc. (“Metrologic”) of Fort Mill, South Carolina (collectively, “Complainants”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that Opticon, Inc. of Renton, Washington (“Opticon USA”), Opticon Sensors Europe B.V. of the Netherlands (“Opticon Sensors”), OPTO Electronics Co., Ltd. of Japan (“OPTO”), and Hokkaido Electronic Industry Co., Ltd. of Japan (“Hokkaido”) (collectively, the “Proposed Respondents”) unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain barcode scanning devices, products containing same, and components thereof that infringe one or more claims of U.S. Patent Nos. 9,465,970 (“the ’970 patent”), 8,978,985 (“the ’985 patent”), 7,148,923 (“the ’923 patent”), 7,527,206 (“the ’206 patent”), 9,659,199 (“the ’199 patent”), 7,159,783 (“the ’783 patent”), and 8,794,520 (“the ’520 patent”) (collectively “Asserted Patents”).

According to the complaint, the Asserted Patents generally relate to a bar code scanning device. In particular, the ’970 patent concerns an apparatus using a CMOS image sensor in a global-shutter mode to decode a bar code. The ’985 patent concerns a barcode reading device using a CMOS image sensor in a global-shutter mode to decode a 1D or 2D barcode. The ’923 patent concerns a device and method for automated exposure control in a multi-tasking environment. The ’206 patent concerns a barcode reader with a modified imaging sensor to adjust to varied light conditions based on the environment around the barcode and reader. The ’199 patent concerns a device and method for activating a screen reading mode with reduced flickering to read an indicia. The ’783 patent concerns a device and method of customizing an optical reader. And the ’520 patent concerns a device and method of determining a parameter in a hand-held barcode reader.

Regarding domestic industry, Complainants allege that a domestic industry exists in the United States in connection with Honeywell’s scanner products that employ the technology protected by the Asserted Patents. In particular, Complainants point to their scanner products sold under the Granit and Xenon tradenames, such as Xenon 1900g, Xenon 1902g, Xenon 1900h, Xenon l902h, Granit 1910i, Granit 1911i, Granit 1920i, Vuquest 3320g, the N5600-series scan engines, the N6600-series engines the CK75, Dolphin 60s, Dolphin 75e, Dolphin 99, certain Dolphin 6110 products, Dolphin 7800, Dolphin ck65, Dolphin cn80, Dolphin ct40 products, Dolphin ct50, Dolphin ct60, and the Captuvo sleds, as domestic industry products.

In the complaint, Ethicon states that the Proposed Respondents import and sell products that infringe the Asserted Patents. The complaint specifically refers to L-50X, PX-20, L-46X, M-10, OPN-2006, OPN-3002i, MDI3100, MDI-4100, MDI-4050, and MDI-4150 products as infringing products.

As to related litigation, Complainants state that they have previously filed a complaint against the Proposed Respondents in the U.S. District Court for the District of Delaware alleging infringement of the Asserted Patents. Complainants further state that U.S. Patent No. 7,568,628 (“the ’628 patent”)—issued from the parent application of the applications that resulted in the’970 and ’985 patents—was the subject of inter partes review proceedings. The PTAB issued a final written decision on February 18, 2015, affirming the validity of claims 1, 18, 35, 36, 39, 44, and 46 of the ’628 patent. In addition, Complainants state that they have filed a complaint with the ITC against The Code Corporation (“Code”) and its subsidiary Cortex Ltd., asserting infringement of the ’923 patent, the ’206 patent, and four other patents. The Commission entered a Consent Order against Code, barring importation or the sale after importation, inter alia, of Code’s products that infringe claims 10, 19-21, 24-28, and 31 of the ’923 patent.

With respect to potential remedy, Complainants request that the Commission issue a limited exclusion order and a cease-and-desist order directed at the Proposed Respondents.