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ALJ Essex

ALJ Essex Issues Notice of Remand Initial Determination In Certain Devices For Improving Uniformity Used In A Backlight Module (337-TA-805)

By Eric Schweibenz
|
Mar
06
On February 28, 2013, ALJ Theodore R. Essex issued a notice in connection with the Initial Determination on Remand regarding Validity and Enforceability (“RID”) in Certain Devices for Improving Uniformity Used in a Backlight Module and Components Thereof and Products Containing Same (337-TA-805).  

By way of background, the Complainants in this matter are Industrial Technology Research Institute and ITRI International, Inc. (collectively, “ITRI”) and the Respondents are LG Corporation, LG Electronics, Inc., and LG Electronics U.S.A., Inc. (collectively, “LG”).  ITRI alleged that LG violated Section 337 by the importation and/or sale of LCD televisions and monitors that infringed claims 6, 9, and 10 of U.S. Patent No. 6,883,932 (the ‘932 patent).  The subject matter of the ‘932 patent is an apparatus for improving uniformity used in backlight modules using light sources, a reflective housing, and at least one structured arc sheet.  See our September 12, 2011 post for more details.  In his October 22, 2012 ID, ALJ Essex determined that LG’s accused products do not infringe the asserted claims of the ‘932 patent – either literally or under the doctrine of equivalents – because the accused products failed to meet the “structured arc sheet” limitation of independent claim 6.  Additionally, ALJ Essex found that ITRI’s domestic industry product does not satisfy the technical prong of the domestic industry requirement.  Based on his finding of no infringement and no domestic industry, ALJ Essex did not reach the issues of invalidity and unenforceability.  See our November 6, 2012 post for more details.  On December 21, 2012, the International Trade Commission (the “Commission”) issued a notice determining to review the “final ID in its entirety” and remand-in-part the investigation.  According to the accompanying order, the Commission remanded-in-part the investigation back to ALJ Essex to consider the parties’ invalidity and unenforceability arguments and make appropriate findings.  See our December 27, 2012 post for more details on the Commission’s remand notice and order.

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ALJ Essex Grants Motion To Terminate Investigation In Certain Electronic Imaging Devices (337-TA-850)

By Eric Schweibenz
|
Mar
11
On March 5, 2013, ALJ Theodore R. Essex issued Order No. 21 in Certain Electronic Imaging Devices (Inv. No. 337-TA-850).

By way of background, the investigation is based on a complaint filed by FlashPoint Technology, Inc. (“Flashpoint”) alleging violation of Section 337 in the importation into the U.S. and sale of certain electronic imaging devices that infringe one or more claims of U.S. Patent Nos. 6,400,471, 6,222,538, 6,504,575, and 6,223,190.  See our June 27, 2012 post for more details on this investigation.

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ALJ Essex Issues Public Version Of Remand Initial Determination Finding No Violation Of Section 337 in Certain Devices For Improving Uniformity Used In A Backlight Module (337-TA-805)

By Eric Schweibenz
|
Mar
13
On March 11, 2013, ALJ Theodore R. Essex issued the public version of the Initial Determination on Remand regarding Validity and Enforceability (“RID”) (dated February 28, 2013) in Certain Devices for Improving Uniformity Used in a Backlight Module and Components Thereof and Products Containing Same (337-TA-805).

By way of background, the Complainants in this matter are Industrial Technology Research Institute and ITRI International, Inc. (collectively, “ITRI”) and the Respondents are LG Corporation, LG Electronics, Inc., and LG Electronics U.S.A., Inc. (collectively, “LG”).  ITRI alleged that LG violated Section 337 by the importation and/or sale of LCD televisions and monitors that infringed claims 6, 9, and 10 of U.S. Patent No. 6,883,932 (the ‘932 patent).  Seeour September 12, 2011 post for more details.

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ALJ Essex Sets Date For Early Domestic Industry Submissions In Certain Products Having Laminated Packaging (337-TA-874)

By Eric Schweibenz
|
Mar
29
On March 28, 2013, ALJ Theodore R. Essex issued Order No. 3 in Certain Products Having Laminated Packaging, Laminated Packaging, and Components Thereof (Inv. No. 337-TA-874).

In the Order, ALJ Essex first recognized the ITC’s instructions in the Notice of Investigation to “hold an early evidentiary hearing, find facts, and issue an early decision, as to whether the complainant has satisfied the economic prong of the domestic industry requirement.”  See our March 25, 2013 post for more details on the Notice of Investigation.  Significantly, while deciding to follow the ITC’s instructions “at this time,” ALJ Essex noted in the Order that the ITC’s “decision to depart from its own rules and regulations without any justification is of questionable legality.”  ALJ Essex further noted that the ITC “has essentially ordered that the ALJ [must] give this investigation priority over his other investigations…[and therefore the ALJ] will clear his schedule as much as possible in order to meet the [ITC’s] timeline, including but not limited to extending the target dates in other investigations.” 

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ALJ Essex Sets 15-Month Target Date In Certain Wireless-Communication Base Stations (337-TA-871)

By Eric Schweibenz
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Apr
05
Further to our February 26, 2013 post, on April 2. 2013, ALJ Theodore R. Essex issued Order No. 4 in Certain Wireless-Communication Base Stations and Components Thereof (Inv. No. 337-TA-871).

In the Order, ALJ Essex set June 2, 2014 as the target date for completing the investigation (which is approximately fifteen months after institution of the investigation).  ALJ Essex directed the parties to submit proposed procedural schedules by April 12, 2013.  ALJ Essex further instructed the parties to anticipate that the evidentiary hearing in this investigation will commence on November 4, 2013 for purposes of preparing proposed procedural schedules.

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ALJ Essex Sets Procedural Schedule For Early Finding As To Economic Prong Of The Domestic Industry Requirement In Certain Products Having Laminated Packaging (337-TA-874)

By Eric Schweibenz
|
Apr
09
On April 8, 2013, ALJ Theodore R. Essex issued Order No. 4 in Certain Products Having Laminated Packaging, Laminated Packaging, and Components Thereof (Inv. No. 337-TA-874).

In the Order, ALJ Essex set the procedural schedule for this investigation which seeks to comply with the ITC’s instructions in the Notice of Investigation to “hold an early evidentiary hearing, find facts, and issue an early decision, as to whether the complainant has satisfied the economic prong of the domestic industry requirement.”  See our March 25, 2013 and March 29, 2013 posts for more details on the Notice of Investigation and the target date for this matter.   

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ALJ Essex Grants Motion To Compel And Denies Motion For Summary Determination In Certain Gaming And Entertainment Consoles (337-TA-752)

By Eric Schweibenz
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Apr
18
On April 12, 2013, ALJ Theodore R. Essex issued the public versions of Order No. 15 (dated August 31, 2011) and Order No. 18 (dated October 21, 2011) in Certain Gaming and Entertainment Consoles, Related Software, and Components Thereof (Inv. No. 337-TA-752).

According to Order No. 15, Complainants Motorola Mobility, Inc. and General Instrument Corporation (collectively, “Motorola”) moved to compel Respondent Microsoft Corporation (“Microsoft”) to provide adequate discovery on the H.264 digital video decoder functionality in the accused Xbox 360 products, arguing that although Microsoft provided source code files for inspection, it consistently failed to provide information necessary to confirm which files (or portions thereof) are compiled for use in the accused products.  Specifically, Motorola sought an order compelling Microsoft to provide a corporate witness to be deposed on the source code-level implementation of the H.264 decoder in its Xbox 360 products, including the identification of the source code files and functions that are compiled for use in the decoder, and a source code computer available for the witness’ use during the deposition.  Microsoft opposed the motion, contending that Motorola failed to take discovery when it had the chance during the deposition of a witness (Mr. Wu) designated on the topic of Microsoft’s implementation of the H.264 decoder, and that Microsoft offered Motorola a verified list identifying the source code files included in the Xbox binary that provide H.264 decoding support, which Motorola refused.  ALJ Essex found that neither Microsoft nor its technical witnesses provided Motorola with the identification of the requested source code files (or portions thereof), that Motorola’s counsel did in fact ask questions of Mr. Wu about the files that become part of the executable image, and that there appeared to be discrepancies between Mr. Wu’s deposition testimony and the report of Microsoft’s expert.  Accordingly, the ALJ granted the motion.

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ALJ Essex Sets Procedural Schedule In Certain Wireless-Communication Base Stations (337-TA-871)

By Eric Schweibenz
|
May
03
Further to our February 26, 2013 and April 5, 2013 posts, on April 16. 2013, ALJ Theodore R. Essex issued Order No. 5 in Certain Wireless-Communication Base Stations and Components Thereof (Inv. No. 337-TA-871).

In the Order, ALJ Essex determined that the evidentiary hearing will commence on November 4, 2013.  The Initial Determination is due on February 3, 2014 and the target date for completing the investigation is June 2, 2014 (approximately 15 months after institution of the investigation).

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ALJ Essex Denies Motion For Leave To Supplement Notice Of Prior Art In Certain Reduced Folate Nutraceutical Products (337-TA-857)

By Eric Schweibenz
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May
10
On May 8, 2013, ALJ Theodore R. Essex issued Order No. 10 denying Respondents Macoven Pharmaceuticals, LLC and Viva Pharmaceuticals, Inc.'s (collectively, "Respondents") motion seeking leave to submit a supplemental notice of prior art in Certain Reduced Folate Nutraceutical Products and L-Methylfolate Raw Ingredients Used Therein (Inv. No. 337-TA-857).

According to the Order, Respondents sought to supplement their notice of prior art to add U.S. Patent No. 6,008,221 ("the '221 patent"), arguing that good cause existed because (1) the '221 patent was buried among hundreds of thousands of documents produced by Complainants Merck and Cie ("Merck"), South Alabama Medical Science Foundation, and Pamlab LLC (collectively, "Complainants"); (2) Merck failed to identify the '221 patent in its interrogatory response identifying all prior art to the '040 patent-in-suit; (3) Merck failed to identify the '221 patent in reexamination of the '040 patent until after it was identified by Respondents; and (4) it is in the public interest to fully assess the validity of the patents, and Complainants would not be prejudiced by the supplementation due to the length of time before the exchange of expert reports and the evidentiary hearing.  In opposition, Complainants contended that Respondents failed to show good cause to permit the supplementation, and that the failure to disclose the '221 patent in the '040 patent reexamination was a "red herring."

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ALJ Essex Sets Target Date And Procedural Schedule In Certain Products Having Laminated Packaging (337-TA-874)

By Eric Schweibenz
|
May
14
Further to our March 25, 2013 post, on May 10, 2013, ALJ Theodore R. Essex issued Order No. 13 setting a target date and procedural schedule in Certain Products Having Laminated Packaging, Laminated Packaging, and Components Thereof (Inv. No. 337-TA-874).

According to the Order, ALJ Essex set July 28, 2014 as the target date for completion of the investigation (which is approximately 16 months after institution of the investigation).  ALJ Essex further indicated that the initial determination on alleged violation shall be due on March 28, 2014 and that the evidentiary hearing will commence on December 16, 2013.

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ALJ Essex Grants Motions To Terminate Investigation As To Camus And Sidney Frank In Certain Products Having Laminated Packaging (337-TA-874)

By Eric Schweibenz
|
May
16
On May 8, 2013, ALJ Theodore R. Essex issued the public version of Order No. 10 and Order No. 11 (both dated May 7, 2013) in Certain Products Having Laminated Packaging, Laminated Packaging, and Components Thereof (Inv. No. 337-TA-874).

According to Order No. 10, ALJ Essex granted a joint motion filed by Complainant Lamina Packaging Innovations, LLC (“Lamina”) and Respondent Camus Wines and Spirits Group (“Camus”) to terminate the investigation as to Camus based on good cause and a mutual release agreement.  The remaining Respondents filed an opposition to the motion arguing that, given the redactions of the agreement, they could not determine whether it was a “sham.”  The ALJ found this argument unpersuasive, stating that Respondents had failed to set forth a good basis as to why the amount of consideration exchanged between Lamina and Camus was critical and failed to clearly set out how the agreement could be a “sham.

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ALJ Essex Grants New Motion To Terminate Investigation As To Pantech In Certain Electronic Imaging Devices (337-TA-850)

By Eric Schweibenz
|
May
21
On May 13, 2013, ALJ Theodore R. Essex issued Order No. 26 (dated May 10, 2013) in Certain Electronic Imaging Devices (Inv. No. 337-TA-850).

By way of background, ALJ Essex issued Order No. 21 granting Complainant FlashPoint Technology, Inc. (“Flashpoint”) and Respondents Pantech., Co., Ltd. and Pantech Wireless, Inc.’s (collectively, “Pantech”) joint motion to terminate the investigation as to Pantech based on entry of a consent order and an associated letter of intent to execute a final patent license agreement.  See our March 11, 2013 post.  Subsequently, the International Trade Commission remanded the initial determination back to ALJ Essex to allow for FlashPoint and Pantech to file a new motion to terminate after the parties have executed their final patent license agreement.

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ALJ Essex Grants Motion To Terminate Investigation As To L’Oreal In Certain Products Having Laminated Packaging (337-TA-874)

By Eric Schweibenz
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Jun
17
On June 11, 2013, ALJ Theodore R. Essex issued Order No. 14 in Certain Products Having Laminated Packaging, Laminated Packaging, and Components Thereof (Inv. No. 337-TA-874).

According to the Order, ALJ Essex granted a joint motion filed by Complainant Lamina Packaging Innovations, LLC (“Lamina”) and Respondent L’Oreal USA, Inc. (“L’Oreal”) to terminate the investigation as to L’Oreal based on a settlement agreement between Lamina and L’Oreal.  ALJ Essex determined that the settlement agreement would not adversely impact the public interest and thus granted the joint motion.

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ALJ Essex Rules On Motions to Strike In Certain Optoelectronic Devices For Fiber Optic Communications (337-TA-860)

By Eric Schweibenz
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Jun
18
On June 12, 2013 ALJ Theodore R. Essex issued the public versions of Order No. 13 (dated April 23, 2013), Order No. 14 (dated May 29, 2013), and Order No. 15 (dated May 29, 2013) in Certain Optoelectronic Devices for Fiber Optic Communications, Components Thereof, and Products Containing Same (Inv. No. 337-TA-860).

By way of background, the investigation is based on a complaint and letters supplementing the complaint filed by Avago Technologies Fiber IP (Singapore) Pte. Ltd., Avago Technologies General IP (Singapore) Pte. Ltd., and Avago Technologies U.S. Inc. (collectively, “Avago”) alleging violation of Section 337 in the importation into the U.S. and sale of certain optoelectronic devices for fiber optic communications, components thereof, and products containing the same that infringe one or more claims of U.S. Patent Nos. 6,947,456 (“the ‘456 patent”) and 5,596,595 (“the ‘595 patent”).  See our September 26, 2012 post for more details.

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ALJ Essex Terminates Investigation In Certain Reduced Folate Nutraceutical Products (337-TA-857)

By Eric Schweibenz
|
Jun
20
On June 11, 2013, ALJ Theodore R. Essex issued Order Nos. 14 and 15 in Certain Reduced Folate Nutraceutical Products and L-Methylfolate Raw Ingredients Used Therein(Inv. No. 337-TA-857).

According to Order No. 14, Complainants South Alabama Medical Science Foundation, Merck & Cie, Nestle Health Science-Pamlab, Inc. and Camline LLC (collectively, “Complainants”) and Respondents Macoven Pharmaceuticals LLC (“Macoven”) and Viva Pharmaceutical, Inc. (“Viva”) filed a joint motion to terminate the investigation based upon a settlement agreement.  ALJ Essex granted the motion, agreeing that the terms of the settlement have no negative effect on the public health and welfare or competitive conditions in the U.S.

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ALJ Essex Grants Motion To Terminate Investigation As To Dell In Certain Computers and Computer Peripheral Devices (337-TA-841)

By Eric Schweibenz
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Jun
26
On June 19, 2013, ALJ Theodore R. Essex issued Order No. 46 in Certain Computers and Computer Peripheral Devices and Components Thereof and Products Containing the Same (Inv. No. 337-TA-841).

In the Order, ALJ Essex granted a joint motion filed by Complainant Technology Properties Limited LLC and Respondent Dell Inc. (“Dell”) to terminate the investigation as to Dell based on a settlement agreement. 

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ALJ Essex Denies Respondents’ Motion To Compel Privileged Documents In Certain Optoelectronic Devices For Fiber Optic Communications (337-TA-860)

By Eric Schweibenz
|
Jun
27
On June 12, 2013, ALJ Theodore R. Essex issued the public version of Order No. 12 (dated April 17, 2013) in Certain Optoelectronic Devices for Fiber Optic Communications, Components Thereof, and Products Containing Same (Inv. No. 337-TA-860).

According to the Order, Respondents filed a joint motion to compel Complainants Avago Technologies General IP (Singapore) Pte. Ltd. and Avago Technologies U.S. Inc. (collectively, “Avago”) to produce all communications involving non-party Agilent Technologies, Inc. (“Agilent”) that have been withheld from production on the basis of attorney-client privilege.  The documents at issue all relate to the patents-at-issue, but were created while the asserted patents were owned by Agilent.  Respondents argued that the decision in Certain Hardware Logic Emulation Systems and Components Thereof, Inv. No. 337-TA-383, Order No. 25 (April 17, 1996) (“Hardware Logic Emulation Systems”) dictates that the transfer of documents from Agilent to Avago waived the attorney-client privilege.  According to Respondents, Hardware Logic Emulation Systems held that transferring a part of a corporation was insufficient to transfer attorney-client privilege if the part of the corporation transferred was merely a group of assets.  Therefore, Respondents argued that attorney-client privilege was waived because Avago only conducted an asset purchase from Agilent. 

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ALJ Essex Grants-In-Part Motion To Quash Subpoena In Certain Products Having Laminated Packaging (337-TA-874)

By Eric Schweibenz
|
Jul
01
On June 12, 2013 ALJ Theodore R. Essex issued the public version of Order No. 9 (dated May 1, 2013) granting-in-part non-party Atlas Holdings LLC’s (“Atlas”) motion to quash multiple subpoenas filed by Respondents in Certain Products Having Laminated Packaging, Laminated Packaging, and Components Thereof (Inv. No. 337-TA-874).

By way of background, the investigation is based on a complaint and amended complaint filed by Lamina Packaging Innovations LLC (“Lamina”) alleging violation of Section 337 in the importation into the U.S. and sale of certain products having laminated packaging, laminated packaging and components thereof that infringe one or more claims of U.S. Patent Nos. 6,207,242 and 7,348,067.  See our February 21, 2013 and March 25, 2013 posts for more details on Lamina's complaint and the ITC's notice of investigation.

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ALJ Essex Issues Early Initial Determination Finding No Domestic Industry In Certain Products Having Laminated Packaging (337-TA-874)

By Eric Schweibenz
|
Jul
05
On July 5, 2013, ALJ Theodore R. Essex issued a notice Regarding the Initial Determination  (“ID”) on the Economic Prong of the Domestic Industry Requirement in Certain Products Having Laminated Packaging, Laminated Packaging, and Components Thereof(Inv. No. 337-TA-874).

By way of background, the investigation is based on a complaint and amended complaint filed by Lamina Packaging Innovations LLC (“Lamina”) alleging violation of Section 337 in the importation into the U.S. and sale of certain products having laminated packaging, laminated packaging and components thereof that infringe one or more claims of U.S. Patent Nos. 6,207,242 and 7,348,067.  See our February 21, 2013 and March 25, 2013 posts for more details on Lamina’s complaint and the ITC’s notice of investigation.

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ALJ Essex Issues Public Version Of Early Initial Determination Noting Objection To Use Of ITC Pilot Program In Certain Products Having Laminated Packaging (337-TA-874)

By Eric Schweibenz
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Jul
15
Further to our July 5, 2013 post, on July 12, 2013, ALJ Theodore R. Essex issued the public version of the Initial Determination (“ID”) (dated July 5, 2013) on the Economic Prong of the Domestic Industry Requirement in Certain Products Having Laminated Packaging, Laminated Packaging, and Components Thereof(Inv. No. 337-TA-874).

By way of background, the Complainant in this investigation is Lamina Packaging Innovations LLC (“Lamina”).  In its complaint and amended complaint, Lamina alleged a violation of Section 337 in the importation into the U.S. and sale of certain products having laminated packaging, laminated packaging and components thereof that infringe one or more claims of U.S. Patent Nos. 6,207,242 and 7,348,067.  See our February 21, 2013 post for more details on Lamina’s complaint.

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The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important ITC issues. These postings are in no way representative of the opinions of the Oblon firm, or its clients, but rather the personal views of the individual authors.