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ALJ Essex

ALJ Essex Rules on Toyota’s Motion for Interlocutory Appeal In Certain Hybrid Electric Vehicles (337-TA-688)

By Eric Schweibenz
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Jun
21
On June 16, 2010, ALJ Theodore R. Essex issued Order No. 14, denying Respondents Toyota Motor Corporation, Toyota Motor North America, Inc., and Toyota Motor Sales, USA, Inc.’s (collectively, “Toyota”) motion filed June 1, 2010, for leave to file an application for interlocutory review of Order No. 12 in Certain Hybrid Electric Vehicles and Components Thereof (Inv. No. 337-TA-688).

By way of background, ALJ Essex’s Order No. 12, which issued May 21, 2010, denied Toyota's renewed motion for summary determination terminating this investigation on the basis of claim preclusion.  See generally our April 6, 2010 and March 29, 2010 posts for further details on the claim preclusion issue.  In Order No. 12, ALJ Essex determined that an exception to claim preclusion applied in this investigation because Complainant Paice LLC (“Paice”) was unable to seek the remedy or form of relief in the district court that it could seek in this investigation, namely, the ITC's exclusion orders.

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ALJ Essex Sets Procedural Schedule In Certain Display Devices (337-TA-713)

By Eric Schweibenz
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Jun
21
On June 18, 2010, ALJ Theodore R. Essex issued Order No. 9 in Certain Display Devices, Including Digital Televisions and Monitors (Inv. No. 337-TA-713).

In the Order, ALJ Essex set the procedural schedule for the investigation, including a January 18, 2011 start date for the evidentiary hearing.

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ALJ Essex Issues Public Version Of Order Granting Rambus’s Motion For Summary Determination That Its Licensing Activities Satisfy The Domestic Industry Requirement In Certain Semiconductor Chips (337-TA-661)

By Eric Schweibenz
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Jun
28
On June 23, 2010, ALJ Theodore R. Essex issued the public version of Order No. 21 (dated October 7, 2009) in Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same (Inv. No. 337-TA-661).  In the Order, ALJ Essex granted Complainant Rambus, Inc.’s (“Rambus”) motion for summary determination that it satisfied the domestic industry requirement through its licensing activities in the U.S.

According to the Order, Rambus’s licensing activities are based in Los Altos, California, and allegedly include promoting Rambus technology, negotiating and drafting license agreements, ensuring compliance with those agreements, conducting market analysis, providing licensing and patent strategy, and providing technical licensing support.  The Order states that Rambus has multiple license agreements for its Concurrent Interface Technology and its XDR Technology, each of which includes several of the patents asserted in the investigation.  Rambus argued that it had demonstrated that the asserted patents were highlighted during actual licensing negotiations and, as such, were part of the portfolios ultimately licensed.  Accordingly, Rambus argued that the appropriate nexus exists between its licensing activities and the asserted patents and that it has therefore satisfied the domestic industry requirement.

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ALJ Essex Rules on Motion for Reconsideration In Certain Optoelectronic Devices (337-TA-669)

By Eric Schweibenz
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Jun
28
On June 23, 2010, ALJ Theodore R. Essex issued the public version of Order No. 12 (dated November 12, 2009) denying Respondent Emcore Corporation’s (“Emcore”) motion for reconsideration of Order No. 9, which denied Emcore’s request to supplement its Notice of Prior Art in Certain Optoelectronic Devices, Components Thereof, and Products Containing Same (Inv. No. 337-TA-669).

According to the Order, Emcore argued that its failure to include the Masahiro application in the Notice of Prior Art was “unintentional and inadvertent” because the omission stemmed from a clerical error in recording the application number for the Masahiro application, which ultimately lead to Emcore's failure to include it in its Notice of Prior Art.  Emcore further argued that since the Masahiro application was cited in the prosecution history of asserted U.S. Patent No. 5,761,229 (the ‘229 patent), there was no prejudice to the Complainants, who have been on notice of Emcore's intent since the filing of the original motion to supplement and the use of the prior art during inventor depositions.

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ALJ Essex Rules On Motion To Stay Investigation In Certain Authentication Systems (337-TA-697)

By Eric Schweibenz
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Jun
28
On June 23, 2010, ALJ Theodore R. Essex issued Order No. 11 (dated April 27, 2010) in Certain Authentication Systems, Including Software and Handheld Electronic Devices (Inv. No. 337-TA-697).  In the Order, ALJ Essex denied Complainant Prism Technologies, LLC (“Prism”) motion to stay the investigation for 45 days pending action by the U.S. Patent & Trademark Office (“PTO”) in an ex parte reexamination proceeding involving the patent-at-issue, U.S. Patent No. 7,290,288 (the ‘288 patent).

According to the Order, the present issue arose as a result of Respondents Research in Motion Limited and Research in Motion Corporation’s (collectively, “RIM”) pending Motion for Summary Determination of Invalidity (“RIM’s MSD”).  In particular, RIM’s MSD argued that the ‘638 application which became the ‘288 patent did not claim priority to the ‘710 application and, as a result the ‘288 patent was invalid under the on-sale bar of 35 U.S.C. § 102(b).  RIM further argued that the ‘638 application was filed on August 29, 2002, and did not contain language that it was a continuation-in-part of the ‘710 application, which issued as U.S. Patent No. 6,516,416.  According to the Order, Prism had made and marketed Internet Subscription Access products since as early as 1996 and admitted that such products practice the asserted claims of the ‘288 patent.  The ‘710 application was filed on June 11, 1997, and had the ‘288 patent been a continuation of the ‘710 application, the on-sale bar might be defeated.  Prism filed an amendment in a reexamination proceeding involving the ‘288 patent that would claim priority based on the ‘710 application.  Prism filed this amendment on April 2, 2010 and moved for a stay of 45 days to await the results of PTO reexamination.  RIM opposed Prism’s motion to stay.  The Commission Investigative Staff also opposed the stay, but supported Prism’s request in the alternative to defer a ruling on RIM’s MSD.

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ALJ Essex Issues Public Version Of Order Denying Toyota’s Renewed Motion for Summary Determination In Certain Hybrid Electric Vehicles (337-TA-688)

By Eric Schweibenz
|
Jun
29
On June 23, 2010 ALJ Theodore R. Essex issued the public version of Order No. 12 (dated May 21, 2010) denying Respondents Toyota Motor Corporation, Toyota Motor North America, Inc., and Toyota Motor Sales, USA, Inc.’s (collectively, “Toyota”) renewed motion for summary determination filed April 12, 2010 in Certain Hybrid Electric Vehicles and Components Thereof (Inv. No. 337-TA-688).

By way of background, this investigation follows litigation between Complainant Paice LLC (“Paice”) and Toyota in the U.S. District Court for the Eastern District of Texas in which certain Toyota hybrid vehicles were found to infringe U.S. Patent No. 5,343,970 (the ‘970 patent).  On March 3, 2010, ALJ Essex issued an Initial Determination (“ID”) granting Paice’s motion for summary determination regarding infringement, validity and unenforceability and denying Toyota’s cross motion for summary determination terminating the investigation for claim preclusion.  See our March 29, 2010 post for more details.  On April 2, 2010, the ITC reversed and remanded the ID.  See our April 6, 2010 post for more details.  After remand, on April 6, 2010, ALJ Essex notified the parties that Toyota would be permitted to renew its motion for summary determination terminating the investigation for claim preclusion.  On April 12, 2010, Toyota filed its motion.

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ALJ Essex Issues Public Version Of Order Granting-In-Part Rambus’s Motion To Compel In Certain Semiconductor Chips (337-TA-661)

By Eric Schweibenz
|
Jun
29
On June 23, 2010, ALJ Theodore R. Essex issued the public version of Order No. 19 (dated September 17, 2009) in Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same (Inv. No. 337-TA-661).  In the Order, ALJ Essex granted Complainant Rambus, Inc.’s (“Rambus”) motion to compel testimony from a document collection witness and for supplemental responses to interrogatories, and denied as moot its motion to compel source code documents, and communications between Rambus and Respondent nVidia Corporation (“NVIDIA”).

According to the Order, Rambus filed a motion on June 16, 2009 to compel NVIDIA to: (1) produce all source code bearing on the operation of the memory controllers contained in the accused products; (2) produce all technical documents describing the accused products; (3) produce all communications between Rambus and NVIDIA and documents relating to those communications; (4) provide a witness competent to testify on NVIDIA's document collection in response to Rambus's discovery requests; and (5) supplement its responses to Rambus's Interrogatory Nos. 1, 75, and 142.

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ALJ Essex Rules On Motion For Forfeiture of Respondents’ Bonds In Certain Semiconductor Chips with Minimized Chip Package Size (Inv. No. 337-TA-605)

By Eric Schweibenz
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Jul
01
On June 23, 2010, ALJ Theodore R. Essex issued Order No. 65 (dated December 30, 2009), denying a motion filed by Complainant Tessera, Inc. (“Tessera”) on October 16, 2009, for forfeiture of Respondents' bonds, limited discovery and evidentiary hearing in Certain Semiconductor Chips with Minimized Chip Package Size and Products Containing Same (337-TA-605).

By way of background, this investigation was instituted in May 2007 based on Tessera’s complaint against Respondents Spansion, Inc., Spansion, LLC, Qualcomm, Inc., ATI Technologies, Motorola, Inc., STMicroelectronics N.V., and Freescale Semiconductor, Inc. (collectively “Respondents”) alleging violation of Section 337 by reason of infringement of U.S. Patent Nos. 5,852,326 and 6,433,419.  On May 20, 2009, the Commission issued its final disposition of the investigation, finding a violation of Section 337 and issuing a limited exclusion order against the Respondents and cease and desist orders against several domestic Respondents.  See our May 22, 2009 and June 11, 2009 and May 28, 2010 posts for more details.

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ALJ Essex Grants Motion To Terminate Investigation In Certain Dynamic Random Access Memory Semiconductors (337-TA-707)

By Eric Schweibenz
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Jul
02
On June 29, 2010, ALJ Theodore R. Essex issued Order No. 10 in Certain Dynamic Random Access Memory Semiconductors and Products Containing Same, Including Memory Modules (Inv. No. 337-TA-707).

According to the Order, Complainants Infineon Technologies AG (“IFX”) and Infineon Technologies North America Corp. and Respondents Elpida Memory Inc. (“Elpida”), Elpida Memory (USA) Inc., Rexchip Electronics Corp., Kingston Technology Co. Inc., Kingston Technology (Shanghai) Co. Ltd., Kingston Technology Far East Co. Ltd., Kingston Technology Far East (M) Sdn. Bhd., Payton Technology Corp., Apacer Technology Inc., Apacer Memory America Inc., Corsair Memory, Corsair Memory (Taiwan), Mushkin Inc., Mushkin APAC, Transcend Information Inc., and Transcend USA (collectively, “Respondents”) filed a joint motion to terminate the investigation on the basis of a settlement agreement.  Further, the agreement is between IFX and Elpida and, while the other remaining Respondents are not party to the agreement, the motion requests that the investigation be terminated against those remaining Respondents as well.

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ALJ Essex Sets Target Date In Certain Lighting Products (337-TA-719)

By Eric Schweibenz
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Jul
15
Further to our May 28, 2010 post, on July 15, 2010, ALJ Theodore R. Essex issued Order No. 4:  Setting the Target Date and Date for Submission of Proposed Procedural Schedules in Certain Lighting Products (Inv. No. 337-TA-719).

According to the Order, ALJ Essex set October 3, 2011 as the target date (which is 16 months after institution of the investigation).  ALJ Essex further indicated that any final initial determination on violation should be filed no later than June 2, 2011.  In addition, ALJ Essex noted that the evidentiary hearing in this matter will commence on March 17, 2011.

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ALJ Essex Grants Motion To Terminate Investigation In Certain Hybrid Electric Vehicles (337-TA-688)

By Eric Schweibenz
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Jul
22
On July 22, 2010, ALJ Theodore R. Essex issued Order 16 in Certain Hybrid Electric Vehicles and Components Thereof (Inv. No. 337-TA-688).

In the Order, ALJ Essex granted a joint motion filed by Complainant Paice LLC and Respondents Toyota Motor Corporation, Toyota Motor North America, Inc., and Toyota Motor Sales, USA, Inc. based on a settlement agreement.

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ALJ Essex Grants Motion to Terminate Investigation As To Certain Respondents In Certain Display Devices (337-TA-713)

By Eric Schweibenz
|
Sep
14
On September 7, 2010, ALJ Theodore R. Essex issued the public version of Order No. 15 in Certain Display Devices, Including Digital Televisions and Monitors (Inv. No. 337-TA-713).

In the Order, ALJ Essex granted a motion filed by Complainant Sony Corporation to terminate the investigation as to Respondents TPV Technology Limited, Top Victory Electronics (Taiwan) Co., Ltd., TPV International (USA), Inc., Envision Peripherals, Inc., Top Victory Investments Ltd., TPV Electronics (Fujian) Co., Ltd., TPV Display Technology (Wuhan) Co., Ltd., and TPV Technology (Beijing) Co., Ltd. on the basis of a settlement agreement.

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ALJ Essex Sets Target Date In Certain Inkjet Ink Supplies (337-TA-730)

By Eric Schweibenz
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Sep
15
Further to our July 29, 2010 post, on September 10, 2010, ALJ Theodore R. Essex issued Order No. 3:  Setting the Target Date and Date for Submission of Proposed Procedural Schedule in Certain Inkjet Ink Supplies And Components Thereof (Inv. No. 337-TA-730).

According to the Order, ALJ Essex set December 5, 2011 as the target date (which is approximately 16 months after institution of the investigation).  ALJ Essex further indicated that any final initial determination on violation should be filed no later than August 5, 2011.  In addition, ALJ Essex noted that the evidentiary hearing in this matter will commence on April 25, 2011.

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ALJ Essex Sets Procedural Schedule In Certain Inkjet Ink Supplies (337-TA-730)

By Eric Schweibenz
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Oct
07
On October 4, 2010, ALJ Theodore R. Essex issued Order No. 4:  Setting the Procedural Schedule in Certain Inkjet Ink Supplies And Components Thereof (Inv. No. 337-TA-730).

In the Order, ALJ Essex set the procedural schedule for the investigation, including an April 25, 2011 start date for the evidentiary hearing.

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ALJ Essex Sets Target Date In Certain Liquid Crystal Display Devices (337-TA-737)

By Eric Schweibenz
|
Nov
10
Further to our September 23, 2010 post, on November 4, 2010, ALJ Theodore R. Essex issued Order No. 3 in Certain Liquid Crystal Display Devices and Products Interoperable With The Same (Inv. No. 337-TA-737).

According to the Order, ALJ Essex set January 27, 2012 as the target date (which is approximately 16 months after institution of the investigation).  ALJ Essex further indicated that any final initial determination on violation should be filed no later than September 27, 2011.  In addition, ALJ Essex noted that the evidentiary hearing in this matter will commence on July 11, 2011.

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ALJ Essex Sets Procedural Schedule In Certain Liquid Crystal Display Devices (337-TA-737)

By Eric Schweibenz
|
Nov
23
On November 22, 2010, ALJ Theodore R. Essex issued Order No. 4 in Certain Liquid Crystal Display Devices and Products Interoperable With The Same (Inv. No. 337-TA-737).

In the Order, ALJ Essex set the procedural schedule for the investigation, including a July 11, 2011 start date for the evidentiary hearing.

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ALJ Essex Grants-In-Part Motion To Compel In Certain Semiconductor Chips (337-TA-661)

By Eric Schweibenz
|
Dec
17
On December 10, 2010, ALJ Theodore R. Essex issued the public version of Order No. 15 (dated July 23, 2009) granting-in-part Respondent NVIDIA Corporation’s (“NVIDIA”) motion to compel in Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same (Inv. No. 337-TA-661).

According to the order, NVIDIA moved to compel Complainant Rambus, Inc. (“Rambus”) to produce (i) “[a]ll materials that Rambus has been ordered to produce pursuant to privilege piercing orders in [other cases]”, (ii) “[a]ll discovery and testimony taken in connection with such materials”, and (iii) “[a]ll other documents related to Rambus’ document destruction or document retention policy.”  In support of its motion, NVIDIA asserted “that it is entitled to the requested documents either (1) under the crime fraud exception, or (2) because Rambus has waived its rights to assert that the requested documents are still privileged.”  Specifically with respect to its assertion of the crime fraud exception, “NVIDIA argues that [Rambus’s] spoliation of documents constitutes fraud, which warrants piercing Rambus’s claims of privilege” and for support pointed to the piercing orders of three district courts.  The Commission Investigative Staff supported NVIDIA’s motion, but opposed NVIDIA’s request that Rambus be required to file a certification of compliance.

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ALJ Essex Sets Target Date In Certain Mobile Devices (337-TA-744)

By Eric Schweibenz
|
Dec
21
Further to our November 3, 2010 post, on December 17, 2010, ALJ Theodore R. Essex issued Order No. 3 in Certain Mobile Devices, Associated Software, and Components Thereof (Inv. No. 337-TA-744).

According to the Order, ALJ Essex set March 5, 2012 as the target date (which is approximately 16 months after institution of the investigation).  ALJ Essex further indicated that any final initial determination on violation should be filed no later than November 4, 2011.  In addition, ALJ Essex noted that the evidentiary hearing in this matter will commence on August 22, 2011.  ALJ Essex also noted that a Markman hearing will commence on March 1, 2011 and a Markman order will be issued no later than April 15, 2011.

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ALJ Essex Grants Motion To Terminate Investigation In Certain MLC Flash Memory Devices (337-TA-683)

By Eric Schweibenz
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Jan
05
On January 3, 2011, ALJ Theodore R. Essex issued Order No. 29 in Certain MLC Flash Memory Devices and Products Containing Same (Inv. No. 337-TA-683).

In the Order, ALJ Essex granted a joint motion filed by Complainant BTG International and Respondents Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung Semiconductor, Inc., Samsung Telecommunications America, LLC, Apple, Inc., ASUStek Computer, Inc., ASUS Computer International, Inc., Dell Inc., Lenovo (United States) Inc., Lenovo (Singapore) Pte. Ltd., PNY Technologies, Inc., Sony Corporation, Sony Electronics Inc., and Transcend Information, Inc., to terminate the investigation as to all respondents based on a settlement agreement.

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ALJ Essex Grants Motion To Terminate Investigation In Certain Display Devices (337-TA-713)

By Eric Schweibenz
|
Jan
05
On January 3, 2011, ALJ Theodore R. Essex issued Order No. 25 in Certain Display Devices Including Digital Televisions and Monitors (Inv. No. 337-TA-713).

In the Order, ALJ Essex granted a joint motion filed by Complainant Sony Corporation and Respondents Chimei Innolux Corporation and Innolux Corporation to terminate the investigation based on a settlement agreement.

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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.