Further to our April 14 post, on April 23, 2009, the Commission issued the public version of its confidential April 10 Opinion affirming ALJ Charneski’s finding that Respondents Vizio, Inc., AmTran Technology Co., Ltd., Syntax-Brillian Corp., Taiwan Kolin Co., Ltd., Proview International Holdings, Ltd., Proview Technology (Shenzhen) Co., Ltd., Proview Technology, Ltd., TPV Technology, Ltd., TPV International, Top Victory Electronics Co., Ltd., and Envision Peripherals, Inc. (“Respondents”) violated section 337 as a result of inducing infringement of U.S. Patent No. 6,115,074 held by Funai Electric Co., Ltd. of Japan and Funai Corp. of Rutherford, NJ (“Funai”).  The Commission reversed ALJ Charneski’s finding, however, that certain respondents directly infringed the ‘074 patent.

The ‘074 patent is directed to a method and apparatus for decoding a datastream of MPEG compatible packetized information to provided decoded program data for use in changing the channel on digital televisions (“DTVs”).  According to the Opinion, the Commission found that substantial evidence does not support the ALJ’s inference that the TPV and Proview respondents directly infringe claim 23 of the ‘074 patent by testing their DTVs in the United States.  With respect to inducement, the Commission rejected Respondents’ argument that they did not possess the requisite intent since they did not make the semiconductor chipsets that perform the infringing method.  Instead, the Commission determined that there was inducement since Respondents select and combine the chipsets with other components in designing their DTVs, which they market for the specific purpose of receiving ATSC-compliant broadcast signals.  The Commission also rejected Respondents’ argument that their introduction of “work-around” products demonstrated a good faith effort to avoid infringement because Respondents relied on a claim construction of “suitable for use” that is contrary to the well-known and ordinary meaning of the disputed language.  The Commission then made additional findings supporting the ALJ’s conclusion that Respondents knew or should have known that their acts would cause their customers to infringe, including:  (1) Prior to filing its complaint with the Commission, Funai contacted each of the Respondents to offer licenses; (2) Respondents were aware that the ‘074 patent had been designated as essential to practice the ATSC standard since before the investigation; and (3) Respondents continued to sell the older “legacy” DTVs after the investigation began.


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On April 29, 2009, ALJ E. James Gildea issued the public version of Order No. 7 (dated April 17, 2009) denying a motion by Complainants 02 Micro International Ltd. and 02 Micro Inc. to disqualify counsel for Respondents LG Electronics Inc., LG Electronics USA, Inc., LG Display Co., Ltd., and LG Display America, Inc. in Certain Cold Cathode Fluorescent Lamp (“CCFL”) Inverter Circuits and Products Containing the Same (337-TA-666).

O2 Micro argued that Morgan Lewis & Bockius LLP (“MLB”), the firm representing LG, had two conflicts of interest which should prevent it from representing LG in the investigation: (1) prior to joining LG’s law firm, MLB attorney Daniel Johnson had been lead counsel for O2 Micro in a lawsuit against Monolithic Power Systems (the “MPS Litigation”) involving a patent in the same family as the patent at issue in the Investigation, and (2) MLB represented O2 Micro in the MPS Litigation after Mr. Johnson joined the firm.  O2 Micro argued that MLB’s representation of LG violated loyalties and ethical obligations owed to O2 Micro and that confidences and secrets O2 Micro might have conveyed to Mr. Johnson and MLB during the MPS Litigation might give LG an unfair advantage.


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By Eric Schweibenz
|
May
05
On April 21, 2009, the U.S. International Trade Commission issued a Notice determining not to review the April 2, 2009 Initial Determination (“ID”) issued by Administrative Law Judge Carl C. Charneski in Certain Variable Speed Wind Turbines and Components Thereof (Inv. No. 337-TA-641).

The investigation was instituted on March 31, 2008, based on the complaint of General Electric Co (“GE”).  The respondents are Mitsubishi Heavy Industries, Ltd., Mitsubishi Heavy Industries of America, Inc., and Mitsubishi Power Systems Americas, Inc (collectively, “MHI”).


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On April 23, 2009, the Commission issued a Notice determining not to review the initial determination of ALJ Carl C. Charneski granting Complainant Farouk System, Inc.’s (“FSI”) motion for summary determination of violation of section 337 in Certain Hair Irons and Packaging Thereof (Inv. No. 337-TA-637).

By way of background, on March 14, 2008, the Commission instituted the investigation based upon FSI’s complaint.  The named respondents were:  CHI Systems Singapore Pte. Ltd. of Singapore (“CHI Systems”); Princess Silk, LLC of Lake Forest, California (“Princess Silk”); Kamashi International of Hong Kong, China (“Kamashi”); Mount Rise, Ltd. of Dongguan, China (“Mount Rise”); and Dongguan Fumeikang Electrical Technology Co., Ltd. of Dongguan, China (“Dongguan Fumeikang”).  Dongguan Fumeikang and Princess Silk were terminated from the investigation on the basis of a consent order on May 21, 2008 (Order No. 8 ) and December 4, 2008 (Order No. 11), respectively.  On January 30, 2009, ALJ Charneski granted FSI’s motion (Order No. 13) to find Mount Rise, Kamashi, and CHI Systems in default for failure to respond to the complaint and Notice of Investigation.


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On April 23, 2009, ALJ Robert K. Rogers, Jr. issued Order No. 27 in Certain Electronic Devices Including Handheld Wireless Communications Devices (337-TA-667) denying Complainant Saxon Innovations, LLC’s (“Saxon”) unopposed motion to seek a recommendation to the U.S. District Court for the District of Columbia to issue a letter rogatory to allow Saxon to obtain deposition testimony in Japan.

Saxon sought to depose corporate representatives of Respondents Panasonic Corporation, Panasonic Corporation of North America, and Panasonic Consumer Electronics (collectively “Panasonic”) in Japan on or about May 7, 8, and 11, 2009.  Panasonic’s representative volunteered to sit for the depositions.  Under Japanese law and practice and the mutually agreed interpretation of the U.S. – Japan Bilateral Consular Convention concerning the obtaining of evidence in Japan, a deposition of a willing witness may be taken in Japan: (1) if the deposition is presided over by a U.S. consular official; (2) is conducted on U.S. consular premises; (3) is taken pursuant to an American court order or commission; and (4) if any non-Japanese participant travelling to Japan applies for and obtains a Japanese Special Deposition visa.  The U.S. State Department recommends that one must apply for a Special Deposition visa at least two weeks prior to departure for Japan.  A copy of the court order or commission must accompany the application for the Special Deposition visa.


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