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ALJ Luckern

ALJ Luckern Rules On Collateral Estoppel Summary Determination Motion Regarding Claim Construction In Certain Electronic Devices With Multi-Touch Enabled Touchpads And Touchscreens (337-TA-714)

By Eric Schweibenz
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Sep
30
On September 28, 2010, Chief ALJ Paul J. Luckern issued Order No. 16, an Initial Determination (ID) in Certain Electronic Devices With Multi-Touch Enabled Touchpads and Touchscreens (Inv. No. 337-TA-714).  In the ID, ALJ Luckern granted Respondent Apple Inc.’s motion for summary determination seeking to preclude Complainant Elan Microelectronics Corporation (“Elan”) from arguing a different claim construction position than the one found by a district court in a prior litigation.

On July 14, 2010, Apple moved for summary determination that Elan was collaterally estopped from challenging the construction of terms from asserted claims 1 and 18 of U.S. Patent No. 5,825,352 (the ‘352 patent) that were construed in Elan’s favor in a prior district court litigation.

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ALJ Luckern Rules on Motion to Disqualify Counsel in Certain Electronic Imaging Devices (337-TA-726)

By Eric Schweibenz
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Oct
05
On September 29, 2010, Chief ALJ Paul J. Luckern issued the public version of Order No. 6 (dated September 1, 2010) granting in limited part Complainant Flashpoint Technology Inc.’s (“Flashpoint”) motion to disqualify Kirkland & Ellis (“Kirkland”) from representing Respondents Research in Motion, Ltd. and Research in Motion Corp. (collectively, “RIM”) in Inv. No. 337-TA-726.

On August 4, 2010, Flashpoint moved to disqualify Kirkland from representing RIM in Inv. No. 337-TA-726, arguing that Kirkland’s representation of RIM directly conflicted with Kirkland’s representation of Eric C. Anderson (“Anderson”) and Apple, Inc. in Inv. No. 337-TA-704.  According to the Order, Flashpoint argued that Anderson is the sole named inventor on at least one of the patents asserted in Inv. No. 337-TA-704, and is a named inventor on all three of the asserted patents asserted in Inv. No. 337-TA-726, and that Kirkland has had and continues to have access to Flashpoint’s confidential and privileged information by virtue of Kirkland representing Anderson and Apple, and Anderson being a part-time employee of Flashpoint.

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ALJ Luckern Denies Summary Determination of Noninfringement in Certain Mobile Telephones and Wireless Communication Devices Featuring Digital Cameras (337-TA-703)

By Eric Schweibenz
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Oct
06
On September 30, 2010, Chief ALJ Paul J. Luckern issued Order No. 22 (dated August 4, 2010) denying Respondent Apple Inc.’s motion for summary determination of noninfringement of U.S. Patent No. 6,292,218 (the ‘218 patent) in Certain Mobile Telephones and Wireless Communication Devices Featuring Digital Cameras, and Components Thereof (Inv. No. 337-TA-703).

By way of background, the Complainant in this investigation is Eastman Kodak Company (“Kodak”) and the Respondents are Research In Motion, Ltd., Research In Motion Corporation (collectively, “RIM”),  and Apple Inc. (“Apple”).  The Commission instituted the investigation on February 17, 2010.  A Markman hearing on claim construction was conducted on May 24-25, 2010 and ALJ Luckern issued an initial determination ("ID") construing claim terms on June 22, 2010.  See our July 21, 2010 and July 27, 2010 posts for more details. On July 2, 2010, Apple filed a summary determination of noninfringement of the ‘218 patent as to all three accused Apple devices: the iPhone 3G, iPhone 3GS, and iPhone 4.  On July 12, 2010, the Commission Investigative Staff (“OUII”) and Kodak filed responses asking that Apple’s motion be denied. At ALJ Luckern’s request, on July 29, 2010, Apple, Kodak, and the OUII provided further briefing on the issue.

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ALJ Luckern Rules on Motion for Sanctions in Certain DC-DC Controllers (Inv. No. 337-TA-698)

By Eric Schweibenz
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Oct
08
On October 2, 2010, Chief ALJ Paul J. Luckern issued the public version of Order No. 55 (dated August 17, 2010) in Certain DC-DC Controllers and Products Containing the Same (Inv. No. 337-TA-698).  Respondent uPI Semiconductor Corp. (“uPI”) moved for sanctions against counsel for Complainants Richtek Technology Corp. and Richtek USA, Inc. (“Richtek”) for alleged violations of the Protective Order issued in the investigation.  In Order No. 55, ALJ Luckern found no violation of the protective order or the Commission Rules and declined to impose sanctions against Richtek.

On April 16, 2010, Richtek commenced the deposition of a uPI witness in Investigation No. 337-TA-698 (“the ITC investigation”).  At counsel for uPI’s request, the deposition transcript of the uPI witness was marked as containing “Confidential Business Information Subject to Protective Order.”  Pursuant to this designation, uPI’s counsel permitted the deponent to give four days of testimony in response to Richtek’s questions, with the understanding that uPI’s confidential business information would be protected from disclosure.

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ALJ Luckern Rules On Motion for Summary Determination In Certain Mobile Telephones And Wireless Communication Devices Featuring Digital Cameras (337-TA-703)

By Eric Schweibenz
|
Nov
04
On October 28, 2010, Chief ALJ Paul J. Luckern issued the public version of Order No. 24 (dated August 13, 2010) denying Respondents Research In Motion, Ltd. and Research In Motion Corp.’s (collectively, “RIM”) motion for summary determination that Complainant Eastman Kodak Co. (“Kodak”) failed to establish the technical prong of its domestic industry requirement and for non-infringement of U.S. Patent No. 6,292,218 (the ‘218 patent) in Certain Mobile Telephones and Wireless Communication Devices Featuring Digital Cameras, and Components Thereof (Inv. No. 337-TA-703).

By way of background, the Commission instituted this investigation on February 17, 2010, based on Kodak’s complaint against Respondents RIM and Apple Inc.  A claim construction hearing was conducted on May 24-25, 2010 and ALJ Luckern issued an initial determination (ID) construing the disputed claim terms on June 22, 2010.  See our July 21, 2010 and July 27, 2010 posts for more details.  On July 1, 2010, RIM filed for summary determination regarding the technical prong of the domestic industry requirement and for non-infringement of the ‘218 patent as to all of its accused devices, which include certain of the BlackBerry Curve, Pearl, Bold, Storm, and Tour series.  On July 12, 2010, the Commission Investigative Staff (“OUII”) and Kodak filed responses.  At ALJ Luckern’s request, on July 29, 2010, RIM, Kodak, and the OUII provided further briefing on the issues.

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ALJ Luckern Sets Target Date In Certain Components For Installation Of Marine Autopilots with GPS or IMU (337-TA-738)

By Eric Schweibenz
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Nov
08
Further to our September 24, 2010 post, on November 2, 2010, Chief ALJ Paul J. Luckern issued Order No. 3: Setting Target Date and Requiring Proposed Procedural Schedule(s) in Certain Components For Installation Of Marine Autopilots with GPS or IMU (Inv. No. 337-TA-738).

According to the Order, ALJ Luckern set January 30, 2012 as the target date (which is 16 months after institution of the investigation).  ALJ Luckern further determined that the evidentiary hearing in this matter will commence on June 27, 2011.

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ALJ Luckern Sets Target Date In Certain Wireless Communication Devices, Portable Music And Data Processing Devices (337-TA-745)

By Eric Schweibenz
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Dec
21
Further to our November 5, 2010 post, on December 14, 2010, Chief ALJ Paul J. Luckern issued Order No. 4 in Certain Wireless Communication Devices, Portable Music And Data Processing Devices, Computers and Components Thereof (Inv. No. 337-TA-745).

According to the Order, ALJ Luckern set March 8, 2012 as the target date (which is 16 months after institution of the investigation).  ALJ Luckern further determined that any final initial determination on violation should be filed no later than November 8, 2011 and the evidentiary hearing will commence on July 25, 2011.

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ALJ Luckern Sets Procedural Schedule In Certain Wireless Communication Devices, Portable Music And Data Processing Devices (337-TA-745)

By Eric Schweibenz
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Dec
23
On December 23, 2010, Chief ALJ Paul J. Luckern issued Order No. 5 in Certain Wireless Communication Devices, Portable Music And Data Processing Devices, Computers and Components Thereof (Inv. No. 337-TA-745).

In the Order, ALJ Luckern set the procedural schedule for the investigation and included provisions for the early exchange of claim construction terms and proposed constructions.  Also, according to the Order, the evidentiary hearing in this matter will commence on July 25, 2011.

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ALJ Luckern Issues Public Version Of Order Granting Motion For Summary Determination Of Non-Infringement In Certain Integrated Circuits (337-TA-709)

By Eric Schweibenz
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Jan
19
On January 13, 2011, Chief ALJ Paul J. Luckern issued the public version of Order No. 34 (dated January 5, 2011) in Certain Integrated Circuits, Chipsets, and Products Containing Same Including Televisions, Media Players, and Cameras (Inv. No. 337-TA-709).  In the order, ALJ Luckern granted Respondents Panasonic Corporation, Panasonic of North America, Victor Company of Japan Limited, JVC America Corp., Best Buy Purchasing, LLC, BestBuy.Com, LLC, and Best Buy Stores, L.P., B&H Foto & Electronics Corp., Buy.com Inc., QVC, Inc. Crutchfield Corporation, and Computer Nerds International, Inc.’s (collectively, the “Respondents”) motion for summary determination that certain Panasonic integrated circuits and products containing the same do not infringe claim 1 of U.S. Patent No. 7,199,306 (the ‘306 patent) either literally or under the doctrine of equivalents.

In support of their motion, Respondents cited to intrinsic and extrinsic evidence that supported the assertion that the patentee had disclaimed in claim 1 of the ‘306 patent, printed circuit boards (“PCBs”) “thinner than 0.35 mm” or “PCBs having a thickness of less than 0.35 mm.”  In particular, Respondents argued that thicknesses of less than 0.35 mm were disclaimed during the prosecution of U.S. Patent No. 6,465,743 (the ‘743 patent), which issued from a parent application to the ‘306 patent.  In this regard, Respondents asserted that the patentee distinguished “prior art substrates less than 0.35 mm thick [because they] required metal support pallets which ‘prevented the use of automated equipment’ and ‘the invention of pending claims 13-20 allows manufacturers to use automated equipment.’” (original brackets omitted).  In opposing the motion, Complainant Freescale Semiconductor, Inc. (“Freescale”) asserted, inter alia, that “the statements relied upon by the Respondents do not ‘even impl[y] that the word ‘thickness’ means ‘greater than ‘0.35 mm’ let alone constitute the clear unequivocal disavowal required by the courts.”  Rather, Freescale argued that the statements were a “discussion of the background [that] was intended to help the Board [of Patent Appeals and Interferences] understand the general technology at issue, not to distinguish the claims from the references used to reject the claims.”  According to Freescale, the word thickness should be construed according to its “plain and ordinary meaning.”  The Commission Investigative Staff filed a memorandum in support of the Respondents’ motion.

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ALJ Luckern Issues Initial Determination In Certain Mobile Telephones And Wireless Communication Devices Featuring Digital Cameras (337-TA-703)

By Eric Schweibenz
|
Jan
26
On January 24, 2011, Chief ALJ Paul J. Luckern issued a notice regarding the Initial Determination (ID) in Certain Mobile Telephones And Wireless Communication Devices Featuring Digital Cameras, and Components Thereof (Inv. No. 337-TA-703).

By way of background, the Complainant in this investigation is Eastman Kodak Company (“Kodak”) and the Respondents are Research In Motion, Ltd., Research In Motion Corporation (collectively, “RIM”), and Apple Inc. (“Apple”).  The Commission instituted the investigation on February 17, 2010.

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ALJ Luckern Sets Target Date In Certain Handbags And Luggage (337-TA-754)

By Eric Schweibenz
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Feb
10
Further to our January 5, 2011 post, on February 8, 2011 Chief ALJ Paul J. Luckern issued Order No. 3 in Certain Handbags, Luggage, Accessories, and Packaging Thereof (Inv. No. 337-TA-754).

According to the Order, ALJ Luckern set February 20, 2012 as the target date (which is 13.5 months after institution of the investigation).  ALJ Luckern further determined that any final initial determination on violation should be filed no later than October 19, 2011 and the evidentiary hearing will commence on August 15, 2011.

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Update Regarding Certain Handbags And Luggage (337-TA-754)

By Eric Schweibenz
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Feb
16
Further to our February 10, 2011 post, on February 10, 2011, Chief ALJ Paul J. Luckern issued a notice in Certain Handbags, Luggage, Accessories, and Packaging Thereof (Inv. No. 337-TA-754).

According to the notice, ALJ Luckern issued a corrected version of Order No. 3 to correct certain typographical errors that were included in the original version of such order.

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ALJ Luckern Rules On Witness Statements And Expert Reports In Certain Electronic Imaging Devices (337-TA-726)

By Eric Schweibenz
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Feb
18
On February 17, 2011, Chief ALJ Paul J. Luckern issued Order No. 22 in Certain Electronic Imaging Devices (Inv. No. 337-TA-726).  In the order, ALJ Luckern ruled that no expert reports will be received into evidence at the evidentiary hearing and that witness statements may be offered when they only involve uncontroverted facts.

According to the order, Complainant FlashPoint Technology, Inc. (“FlashPoint”) represented in a submission dated February 14, 2011 that it does not intend to offer expert reports into evidence, although attachments to expert reports, if independently admissible, may be offered into evidence at the hearing subject to the normal procedures for offering materials into evidence, including rulings on any related objections raised; that FlashPoint also reserves the right to use any expert report submitted in the investigation for purposes of impeachment at the hearing; that FlashPoint further reserves the right to use any additional expert reports submitted in the investigation up to the time of the evidentiary hearing for purposes of impeachment at the hearing; and that FlashPoint has met and conferred with Respondents and the Commission Investigative Staff (“OUII”) on these issues and understands that none of the parties intend to offer expert reports into evidence.

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ALJ Luckern Grants Motion To Compel Discovery In Certain Components For Installation Of Marine Autopilots With GPS Or IMU (337-TA-738)

By Eric Schweibenz
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Mar
07
On March 1, 2011, Chief ALJ Paul J. Luckern issued the public version of Order No. 12 (dated February 9, 2011) granting Complainant AGNC Corporation’s (“AGNC”) motion to compel in Certain Components For Installation Of Marine Autopilots With GPS Or IMU  (Inv. No. 337-TA-738).

According to the order, AGNC moved to compel Respondents Navico Holding AS, Navico UK, Ltd. and Navico Inc. (collectively, “Navico”) to provide responses to certain interrogatories and to produce files relating to and including source code for the accused autopilot products.  In support of its motion, AGNC asserted, inter alia, that the source code may be necessary to verify the operation of the accused products in NAV mode, which is relevant to the “computing rotation commands” and “pointing controller for computing rotation command” elements of certain of the asserted claims, and “to verify the use and/or processing of the attitude information from the compass and/or autopilot.”  AGNC also asserted that Navico should produce its source code under the existing protective order because AGNC had already done so after the parties failed to agree on a mutually acceptable source code addendum to the Protective Order.  Navico opposed the motion asserting that its proposed addendum to the Protective Order should be entered and that AGNC should be directed to proceed in accordance the addendum.  The Commission Investigative Staff supported the motion.

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ALJ Luckern Grants Motion For Summary Determination On Economic Prong of Domestic Industry Requirement In Certain Electronic Imaging Devices (337-TA-726)

By Eric Schweibenz
|
Mar
14
On March 8, 2011, Chief ALJ Paul J. Luckern issued the public version of Order No. 18 (dated February 7, 2011) in Certain Electronic Imaging Devices (Inv. No. 337-TA-726) granting Complainant FlashPoint Technology, Inc.’s (“FlashPoint”) motion for summary determination that it satisfies the economic prong of the domestic industry requirement.

According to the Order, FlashPoint relied primarily on the domestic activities of its licensees – which include investments in plant and equipment, labor and capital, engineering, and research and development – to satisfy the economic prong.  Respondents Nokia Corp., Nokia, Inc., Research in Motion Ltd., Research in Motion Corp., HTC Corp., HTC America, Inc., LG Electronics, Inc., LG Electronics U.S.A., Inc., and LG Electronics MobileComm U.S.A., Inc. (collectively, the “Respondents”) argued in opposition that: (1) with respect to one licensee, the investments relied on by FlashPoint cannot be allocated to its domestic industry because they either predate the license or postdate the filing of the original complaint; (2) FlashPoint did not sufficiently segregate the activities of another licensee by specific product or geography; and (3) another licensee “strategically avoided submitting to depositions within the bounds of Order No. 11” and therefore findings about its domestic activities should be deferred until the evidentiary hearing.  The Commission Investigative Staff supported FlashPoint’s motion in part, contending that summary determination should be granted based only on certain licensee activities, and that even though the investment occurred after the filing of the original complaint, prior Federal Circuit and Commission decisions do not preclude such activities when evaluating domestic industry.

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ALJ Luckern Issues Public Version Of Initial Determination In Certain Mobile Telephones And Wireless Communication Devices Featuring Digital Cameras (337-TA-703)

By Eric Schweibenz
|
Mar
18
Further to our January 26, 2011 post, on March 8, 2011, Chief ALJ Paul J. Luckern issued the public version of the Initial Determination (“ID”) (dated January 24, 2011) in Certain Mobile Telephones and Wireless Communication Devices Featuring Digital Cameras, and Components Thereof (Inv. No. 337-TA-703).

By way of background, the Complainant in this investigation is Eastman Kodak Company (“Kodak”) and the Respondents are Research In Motion, Ltd., Research In Motion Corporation (collectively, “RIM”), and Apple Inc. (“Apple”) (RIM and Apple collectively, the “Respondents”).  The Commission instituted the investigation on February 17, 2010.  A claim construction hearing was conducted on May 24-25, 2010 and ALJ Luckern issued an initial determination construing certain claim language of asserted claim 15 of U.S. Patent No. 6,292,218 (the ‘218 patent) on June 22, 2010.  See our July 21, 2010 and July 27, 2010 posts for more details.  On October 20, 2010, the Commission issued a notice that ALJ Luckern’s June 22, 2010 initial determination on claim construction is actually an order rather than an initial determination.  See our October 20, 2010 post for more details.   A prehearing conference was conducted on September 1, 2010, and an evidentiary hearing was conducted on September 1, 2, 3, 7, 8, and 9, 2010.

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ALJ Luckern Sets Procedural Schedule In Certain Ink Cartridges (337-TA-565)

By Eric Schweibenz
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Apr
05
Further to our March 22, 2011 post, on April 1, 2011, Chief ALJ Paul J. Luckern issued Order No. 54 in Certain Ink Cartridges and Components Thereof (Inv. No. 337-TA-565).

In Order No. 54, ALJ Luckern set the procedural schedule which provides for the submission of disputed claim terms and proposed claim constructions and a four-day evidentiary trial commencing on November 14, 2011.

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ALJ Luckern Grants Motion to Terminate Investigation As To Certain Respondents, Patents, and Claims In Certain Integrated Circuits (337-TA-709)

By Eric Schweibenz
|
Apr
05
On April 1, 2011, Chief ALJ Paul J. Luckern issued the public version of Order No. 50 (dated March 3, 2011) in Certain Integrated Circuits, Chipsets, and Products Containing Same Including Televisions, Media Players, and Cameras (Inv. No. 337-TA-709).

In the Order, ALJ Luckern granted joint motions filed by Complainant Freescale Semiconductor, Inc. and Respondents Panasonic Corporation and Panasonic Corporation of North America (jointly, “Panasonic Respondents”) to terminate the investigation as to the Panasonic Respondents based on a settlement and license agreement.

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ALJ Luckern Issues Initial Determination In Certain Integrated Circuits (337-TA-709)

By Eric Schweibenz
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Apr
06
On April 4, 2011, Chief ALJ Paul J. Luckern issued a notice regarding the Initial Determination (ID) in Certain Integrated Circuits, Chipsets, and Products Containing Same Including Televisions, Media Players, and Cameras (Inv. No. 337-TA-709), finding no violation of Section 337.

By way of background, the Commission instituted this investigation on March 29, 2010.  The Complainant is Freescale Semiconductor, Inc. (“Freescale”) and the Respondents remaining in the investigation are Funai Electric Co., Ltd., Funai Corporation, Inc., Wal-Mart Stores, Inc., Best Buy Purchasing, LLC, BestBuy.Com, LLC, and Best Buy Stores, L.P.  Only claims 9 and 10 of U.S. Patent No. 5,467,455 (the ‘455 patent) remain at issue.  See our April 5, 2011 post for more information.

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ALJ Luckern Grants Motions to Terminate Investigation As To Nokia and RIM And Redact Settlement Terms In Certain Electronic Imaging Devices (337-TA-726)

By Eric Schweibenz
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Apr
06
On April 4, 2011, Chief ALJ Paul J. Luckern issued Order No. 35 in Certain Electronic Imaging Devices (Inv. No. 337-TA-726).  In the Order, ALJ Luckern granted joint motions filed by Complainant Flashpoint Technology, Inc. (“Flashpoint”) and Respondents Nokia Corp. and Nokia Inc. (collectively, “Nokia”) and by Flashpoint and Respondents Research in Motion Limited and Research in Motion Corporation (collectively, “RIM”) to terminate the investigation as to the Nokia and RIM Respondents based on settlement and license agreements.

According to the Order, non-settling Respondents HTC Corporation and HTC America, Inc. (collectively “HTC”) and LG Electronic, Inc., LG Electronics U.S.A., Inc., and LG Electronics MobileComm U.S.A. (collectively “LG”) opposed requests by Flashpoint, Nokia and RIM to keep the “Settlement and Licensing Agreements” confidential between the parties to those agreements by redacting sections relating to Licensed Products and License Fees, because those sections were alleged to be highly relevant to matters of bonding, non-infringement and the public interest that are still in the Investigation.  These non-settling Respondents requested unredacted versions of the settlement/license agreements pursuant to the Protective Order in this investigation and thereafter be afforded an opportunity to comment on its impact on the public interest. 

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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.