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ALJ Orders

Update Regarding Certain Wireless Communications Devices (337-TA-675)

By Eric Schweibenz
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May
12
Further to our April 30 post, on May 1, 2009, ALJ E. James Gildea issued Order No. 2 – Notice of Ground Rules and Setting Target Date in Certain Wireless Communications Devices and Components Thereof (337-TA-675).

According to the Order, ALJ Gildea set August 27, 2010 as the target date for completion of the investigation (which is 16 months after institution of the investigation).  Also, any final initial determination is due to be issued no later than April 27, 2010. 
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Update Regarding Certain Adjustable Keyboard Support Systems (337-TA-670)

By Eric Schweibenz
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May
12
Further to our March 11 and April 13 posts, on April 20, 2009, Chief ALJ Paul J. Luckern issued Order No. 7 – setting procedural schedule in Certain Adjustable Keyboard Support Systems and Components Thereof (337-TA-670).

In the Order, ALJ Luckern sets the procedural schedule, including the schedule for the evidentiary hearing which will take place from December 1 – December 4, 2009.
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Update Regarding Certain Electronic Devices Having Image Capture Or Display Functionality (337-TA-672)

By Eric Schweibenz
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May
14
Further to our April 20 post, ALJ Carl C. Charneski issued Order No. 6 – Procedural Schedule in Certain Electronic Devices Having Image Capture or Display Functionality and Components Thereof (337-TA-672).

According to the Order, the evidentiary hearing in this matter will commence on February 1, 2010.
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Update Regarding Certain Digital Cameras (337-TA-671)

By Eric Schweibenz
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May
14
On May 5, 2009, ALJ Charles E. Bullock issued Order No. 5 – Setting the Procedural Schedule in Certain Digital Cameras (337-TA-671).

According to the Order, ALJ Bullock set a 14 month target date of May 24, 2010 for completion of this investigation in Order No. 2.  The parties thereafter submitted discovery statements and ALJ Bullock evaluated the various proposals in order to formulate the procedural schedule.  ALJ Bullock scheduled the evidentiary hearing for September 28, 2009.  The procedural schedule also provides that ALJ Bullock’s initial determination will be issued on January 24, 2010.
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ALJ Rogers Rules On Parties’ Requests For Receipt Of Evidence Without A Sponsoring Witness In Certain Semiconductor Integrated Circuits (337-TA-665)

By Eric Schweibenz
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May
15
On May 14, 2009, ALJ Robert K. Rogers, Jr. issued Order No. 43 in Certain Semiconductor Integrated Circuits and Products Containing Same (337-TA-665).  In the Order, ALJ Rogers ruled on requests filed by complainant Qimonda AG (“Qimonda”) and respondents LSI Corporation, Seagate Technology, Seagate Technology (US) Holdings Inc., Seagate Technology LLC, Seagate Memory Products (US) Corporation, and Seagate (US) LLC’s (collectively “Respondents”) for the receipt into evidence of certain proposed exhibits without a sponsoring witness.

ALJ Rogers first noted that the ITC’s rules provide that “[r]elevant, material, and reliable evidence shall be admitted.”  ALJ Rogers also noted that his Ground Rules provide that each exhibit that is offered into evidence must have a sponsoring witness and the only exception to this general rule is where the party wishing to have evidence admitted without a sponsoring witness shows good cause for admitting such evidence.
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ALJ Charneski Denies Respondents’ Motions In Limine In Certain Variable Speed Wind Turbines (337-TA-641)

By Eric Schweibenz
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May
18
On May 14, 2009, ALJ Carl C. Charneski issued the public versions of Order No. 37 (dated May 6, 2009) and Order No. 40 (dated May 7, 2009) in Certain Variable Speed Wind Turbines And Components Thereof (337-TA-641).  In the Orders, ALJ Charneski denied Respondents Mitsubishi Heavy Industries, Ltd., Mitsubishi Heavy Industries America, Inc., and Mitsubishi Power Systems Americas, Inc.’s (collectively, “MHI”) motions in limine seeking orders to preclude complainant General Electric Company (“GE”) from offering certain evidence relating to alleged inequitable conduct committed during prosecution of the patents-in-suit.

According to Order No. 37, MHI sought to preclude an analysis performed by GE regarding a German Patent Office search report relating to a German patent application that corresponds to one of the U.S. patents being asserted by GE in the investigation.  Specifically, MHI sought to preclude GE from offering evidence purporting to show good faith in connection with its alleged failure to disclose the German Patent Office search report and references cited therein to the U.S. Patent and Trademark Office (“USPTO”).  ALJ Charneski denied MHI’s motion, determining that the facts were scarce and, to the extent they existed, such facts were in dispute.  ALJ Charneski further determined that MHI would be permitted to renew its objections at the evidentiary hearing.
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ALJ Charneski Denies Motion In Limine In Certain Variable Speed Wind Turbines (337-TA-641)

By Eric Schweibenz
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May
18
On May 14, 2009, ALJ Carl C. Charneski issued the public version of Order No. 35 (dated May 6, 2009) in Certain Variable Speed Wind Turbines and Components Thereof (Inv. No. 337-TA-641).  In the Order, ALJ Charneski denied complainant General Electric Co.’s (“GE”) motion in limine to prevent respondents Mitsubishi Heavy Industries, Ltd., Mitsubishi Heavy Industries America, Inc., and Mitsubishi Power Systems Americas, Inc.’s (collectively, “MHI”) expert, Dr. Thomas G. Habetler (“MHI’s expert”), from testifying as to invalidity positions presented initially in his “Contention Rebuttal Report.”

GE’s motion in limine sought to exclude new obviousness, written description, and enablement arguments that MHI’s expert presented for the first time in his February 3, 2009 Contention Rebuttal Report.
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ALJ Luckern Grants Motion To Consolidate Investigation Nos. 337-TA-640 and 337-TA-674

By Eric Schweibenz
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May
21
On May 19, 2009, Chief ALJ Paul J. Luckern issued an Order granting complainant Gertrude Neumark Rothschild’s motion to consolidate Certain Light Emitting Diode Chips, Laser Diode Chips and Products Containing Same (Inv. No. 337-TA-674) and Certain Short-Wavelength Light Emitting Diodes, Laser Diodes and Products Containing Same (Inv. No. 337-TA-640).

ALJ Luckern determined that “both the 640 Investigation and the 674 Investigation involve the same complainant (as well as the same administrative law judge and staff attorney), the same allegations of domestic industry, the same asserted patent (U.S. Patent No. 5,252,499), and the same asserted claims (independent claim 10 and dependent claims 12, 13 and 16).”  Thus, in view of the overlap in factual and legal issues between the two investigations, ALJ Luckern found that the most efficient course was to consolidate the two investigations.  ALJ Luckern also determined that consolidation “would (i) conserve the parties’ and the Commission’s resources, (ii) avoid the need for two hearings, and (iii) avoid potentially difficult procedural and legal complications that could arise by having to determine whether and to what extent any rulings in the 640 Investigation could affect issues in the 674 Investigation if the investigations proceed on separate, independent tracks.”
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ALJ Essex Grants Complainant’s Motion to Compel In Certain Automotive Multimedia Display and Navigation Systems (337-TA-657)

By Eric Schweibenz
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May
21
On May 20, 2009, ALJ Theodore R. Essex issued the public version of Order No. 22 (dated May 11, 2009) in Certain Automotive Multimedia Display and Navigation Systems, Components Thereof, and Products Containing Same (337-TA-657).  In the Order, ALJ Essex granted complainant Honeywell International, Inc.’s (“Honeywell”) motion to compel respondents Alpine Electronics, Inc. and Alpine Electronics of America, Inc. (collectively “Alpine”) to produce documents relating to “Mercedes-Benz Alpine navigation products” and a witness to testify regarding such documents.

According to the Order, Honeywell asserted that documents related to the “Mercedes-Benz Alpine navigation products” were responsive to its discovery requests.  Specifically, Honeywell requested documents related to products sold for importation as part of certain Mercedes-Benz vehicles and products imported into the U.S. for testing purposes.  In opposition, Alpine argued that the documents Honeywell sought were irrelevant to the investigation because they related to “a product that has not been released commercially” and “products that Alpine never imported for the sale in the United States.”  Alpine further argued that the documents were irrelevant because Honeywell was not seeking a general exclusion order nor a remedy against downstream products or parties other than Alpine.  The Commission Investigative Staff argued that the documents Honeywell sought were subject to discovery because certain products are “imported as part of assembled Mercedes-Benz vehicles and, thus might be considered as sold for importation” and other products are sufficiently close to completion to be relevant to the investigation.
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ALJ Essex Grants Motion To Compel Production Of Source Code In Certain Automotive Multimedia Display And Navigation Systems (337-TA-657)

By Eric Schweibenz
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May
26
On May 19, 2009, ALJ Theodore R. Essex issued the public version of Order No. 21 (dated May 11, 2009) in Certain Automotive Multimedia Display and Navigation Systems, Components Thereof, and Products Containing Same (Inv. No. 337-TA-657).  In the Order, ALJ Essex granted complainant Honeywell International Inc.’s (“Honeywell”) motion to compel respondents Pioneer Corp. and Pioneer Electronics (USA), Inc. (collectively, “Pioneer”) to produce source code for their OEM products made for Honda.

According to the order, Honeywell argued that the source code was discoverable because it controls various functions within the accused products and is relevant to whether certain claim elements were met.  Pioneer argued that since the source code was for OEM products made for non-party Honda, and the products of non-parties could not be excluded by an ITC limited exclusion order under Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340 (Fed. Cir. 2008), the source code was irrelevant.
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ALJ Charneski Denies Motions For Summary Determination In Certain Semiconductor Integrated Circuits Using Tungsten Metallization (337-TA-648)

By Eric Schweibenz
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May
27
On May 20, 2009, ALJ Carl C. Charneski issued Order No. 80 and Order No. 81 in Certain Semiconductor Integrated Circuits Using Tungsten Metallization and Products Containing Same (Inv. No. 337-TA-648).  In the Orders, ALJ Charneski denied five motions for summary determination relating to the validity or invalidity of U.S. Patent No. 5,227,335.

Order No. 80 addresses four motions for summary determination concerning alleged anticipation and/or obviousness of certain claims of the ‘335 patent in light of prior work conducted at non-party IBM (“IBM Prior Art”).  According to the Order, Respondents National Semiconductor Corp., Integrated Device Technology, Inc., STMicroelectronics N.V., Grace Semiconductor Manufacturing Corp., Spansion Inc., Nanya Technology Corp., Powerchip Semiconductor Corp., Cypress Semiconductor Corp. and Elpida Memory, Inc. moved for summary determination of invalidity of claims 1, 3, and 4 of the ‘335 patent for anticipation and obviousness.  Complainants LSI Corp. and Agere Systems, Inc. (“Complainants”) filed a response and cross motion for summary determination of validity of claims 1, 3, and 4.  Complainants also filed a separate motion for summary determination that the IBM Prior Art does not anticipate claims 1, 3, or 4 of the ‘335 patent against respondents Microchip Technology, Inc., ProMOS Technologies, Inc., United Microelectronics Corp., Micronas Holding AG, NXP Semiconductors USA, Inc., Vanguard International Semiconductor Corp., Dongbu HiTek Semiconductor Business, Qimonda AG, Jazz Semiconductor, Tower Semiconductor, Ltd. and ON Semiconductor Corp.  Lastly, Complainants filed an additional motion for summary determination that the IBM Prior Art does not anticipate or render obvious claims 1, 3, or 4 of the ‘335 patent against respondent Magnachip Semiconductor, Ltd.
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ALJ Rogers Denies Motions to Compel In Certain Semiconductor Integrated Circuits (337-TA-665)

By Eric Schweibenz
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Jun
02
On May 29, 2009, ALJ Robert K. Rogers, Jr. issued public versions of Order No. 35, Order No. 36, Order No. 39, and Order No. 40 in Certain Semiconductor Integrated Circuits and Products Containing Same (337-TA-665).  In the Orders, ALJ Rogers denied Complainant Qimonda AG’s (“Qimonda”) motions to compel respondent LSI Corporation to produce certain documents.

In each order, ALJ Rogers determined that Qimonda violated his ground rules, including Ground Rules 3.2 and 3.5 (requiring parties to make good-faith efforts to resolve discovery disputes without ALJ intervention and to meet and confer to resolve discovery disputes at least two business days prior to filing a motion) in connection with its motions.
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ALJ Rogers Issues Orders Relating To Licenses In Certain Semiconductor Integrated Circuits (337-TA-665)

By Eric Schweibenz
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Jun
02
On May 28, 2009, ALJ Robert K. Rogers, Jr. issued the public versions of Order No. 20 (dated April 13, 2009) and Order No. 31 (dated May 4, 2009) in Certain Semiconductor Integrated Circuits and Products Containing Same (Inv. No. 337-TA-665).  In Order No. 20, ALJ Rogers granted-in-part and denied-in-part respondents LSI Corp., Seagate Technology (US) Holdings Inc., Seagate Technology LLC, Seagate Memory Products (US) Corp., Seagate Technologies International (Singapore), and Seagate (US) LLC’s (collectively “Respondents”) motion to preclude complainant Qimonda AG (“Qimonda”) from relying on licensees or licenses to establish standing or meet the domestic industry requirement.  Subsequently, in Order No. 31, ALJ Rogers granted-in-part and denied-in-part Qimonda’s motion to amend its complaint.

As to Order No. 20, Respondents argued that Qimonda had failed to comply with Commission Rules 210.12(a)(9)(iii)-(iv) and thus should be precluded from relying on any licensees or license agreements to show standing or meet the domestic industry requirement.  Rule 210.12(a)(9)(iii) requires that a 337 complaint include “[t]he identification of each licensee under each involved U.S. patent.”  Rule 210.12(a)(9)(iv) requires that the complaint include “[a] copy of each license agreement (if any) for each involved U.S. patent that complainant relies upon to establish its standing or to support its contention that a domestic industry…exists…”  Respondents argued that (1) Qimonda merely provided a list of companies that “may” be parties to licensing agreements that cover the asserted patents, and (2) Qimonda had not attached a single license agreement to its complaint.
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ALJ Rogers Orders Seagate To Produce Broader Discovery Regarding Downstream Products In Certain Semiconductor Integrated Circuits (337-TA-665)

By Eric Schweibenz
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Jun
03
On May 29, 2009, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 37 in Certain Semiconductor Integrated Circuits and Products Containing Same (337-TA-665).  In the Order, ALJ Rogers granted-in-part and denied-in-part Complainant Qimonda AG’s (“Qimonda”) motion to compel respondents Seagate Technology, Seagate Technology (US) Holdings Inc., Seagate Technology LLC, Seagate Memory Products (US) Corporation, and Seagate (US) LLC (“Seagate”) to produce documents and testimony regarding Seagate’s downstream products.

ALJ Rogers first determined that Qimonda met its meet and confer obligations under the ground rules by raising the issue of the scope of Seagate’s accused downstream products in an April 14, 2009 Discovery Committee Report.
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ALJ Rogers Denies Motions For Summary Determination On Economic Prong In Certain Semiconductor Integrated Circuits (337-TA-665)

By Eric Schweibenz
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Jun
03
On May 29, 2009, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 21 (dated April 16, 2009) in Certain Semiconductor Integrated Circuits and Products Containing Same (Inv. No. 337-TA-665).  In the Order, ALJ Rogers denied (1) complainant Qimonda AG’s (“Qimonda”) motion for summary determination that it meets the economic prong of the domestic industry requirement and (2) respondents LSI Corp., Seagate Technology (US) Holdings Inc., Seagate Technology LLC, Seagate Memory Products (US) Corp., Seagate Technologies International (Singapore), and Seagate (US) LLC’s (collectively “Respondents”) motion for summary determination that Qimonda cannot meet the economic prong of the domestic industry requirement. The parties disputed the law on the proper timing for determining whether a complainant satisfies the domestic industry requirement.  Qimonda argued that the domestic industry analysis should focus on the time the complaint was filed, while Respondents argued that events taking place after the filing of the complaint could also be considered in the analysis.  This issue is important in this investigation because Qimonda’s domestic activities had decreased after the complaint was filed, due to the company’s bankruptcy. In addition to the legal dispute, the parties also disputed the facts concerning the nature and extent of Qimonda’s post-bankruptcy domestic activities.  Qimonda stated that it continued to employ some manufacturing personnel for the purpose of “ramping down, stabilizing, and securing its fabs and equipment to put them in a ‘warm idle’ status.”  Further, Qimonda asserted that it continued to engage in sales and customer support operations post-bankruptcy.  Respondents, however, claimed that Qimonda had permanently terminated all manufacturing and research and development activities in the United States, was backing out of its contracts, and was liquidating all of its assets. ALJ Rogers determined that “while Qimonda’s domestic activities prior to its bankruptcy will be one factor considered in determining whether or not it satisfies the economic prong, Commission precedent establishes that Qimonda’s post-bankruptcy activities will also be a factor in the analysis.”  However, since the parties strongly disputed the nature and extent of Qimonda’s post-bankruptcy activities, there was a genuine issue of material fact that precluded granting either motion for summary determination.  Accordingly, ALJ Rogers denied both motions.
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ALJ Rogers Denies Motion to Compel In Certain Semiconductor Integrated Circuits (337-TA-665)

By Eric Schweibenz
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Jun
04
On May 29, 2009, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 38 in Certain Semiconductor Integrated Circuits and Products Containing Same (337-TA-665).  In the Order, ALJ Rogers denied Complainant Qimonda AG’s (“Qimonda”) motion to compel respondents LSI Corporation, Seagate Technology, Seagate Technology (US) Holdings Inc., Seagate Technology LLC, Seagate Memory Products (US) Corporation, and Seagate (US) LLC to produce knowledgeable witnesses.

In the Order, ALJ Rogers determined that Qimonda violated Ground Rules 3.2 and 3.5 (requiring parties to make good-faith efforts to resolve discovery disputes without ALJ intervention and to meet and confer to resolve discovery disputes at least two business days prior to filing a motion) in connection with its motion.
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ALJ Rogers Orders That Documents Produced In Discovery Should Not Be Redacted For Relevance Purposes In Certain Semiconductor Integrated Circuits (337-TA-665)

By Eric Schweibenz
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Jun
04
On May 29, 2009, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 41 (dated May 12, 2009) in Certain Semiconductor Integrated Circuits and Products Containing Same (337-TA-665).  In the Order, ALJ Rogers granted-in-part and denied-in-part Complainant Qimonda AG’s (“Qimonda”) motion to compel respondent LSI Corporation (“LSI”) to produce certain documents as kept in the ordinary course of business. ALJ Rogers first determined that Qimonda met its meet and confer obligations under the ground rules by raising the issue of LSI’s purported failure to produce documents as they are kept in the ordinary course of business during a Discovery Committee meeting and a follow-up letter. In its motion, Qimonda raised four issues regarding LSI’s document production.  Specifically, Qimonda asserted that LSI: (1) produced Microsoft Excel spreadsheets in TIFF format, making them difficult to understand and manage; (2) improperly redacted certain documents for relevance purposes; (3) withheld document file names for the documents that it produced; and (4) produced incomplete documents that are excerpts from larger documents. Regarding TIFF documents, ALJ Rogers found that the parties agreed in a January 2009 Discovery Committee Report to exchange documents in TIFF format, provided that the documents are searchable.  ALJ Rogers therefore determined that he would not disturb the parties’ agreement by requiring LSI to produce the subject Microsoft Excel worksheets in native format. With respect to redacted documents, LSI argued that some of its documents included information about accused products and non-accused products, so it was proper to redact the information relating to the non-accused products, because such information was not relevant.  ALJ Rogers rejected this argument and held that “it is improper practice to redact documents based on relevance, as LSI has admittedly done.”  ALJ Rogers further determined that there is no requirement in the Commission Rules that every document produced only contain relevant information and the fact that “some documents may contain both relevant and irrelevant information is not a valid basis for a party to redact data from documents required to be produced.” As to file names, ALJ Rogers found that LSI was not required to produce such file names since LSI had previously provided the necessary correlation information in its interrogatory responses. Lastly, regarding allegedly incomplete documents, ALJ Rogers determined that LSI produced exactly what its employees maintained in the usual course of business and it was not required to “provide an entire document when only a portion is retained by its employees in the usual course of business."
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ALJ Rogers Rules On Motions For Summary Determination Of Non-Infringement In Certain Semiconductor Integrated Circuits (337-TA-665)

By Eric Schweibenz
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Jun
05
On May 29, 2009, ALJ Robert K. Rogers, Jr. issued the public versions of Order No. 28 (dated April 30, 2009) and Order No. 34 (dated May 6, 2009) in Certain Semiconductor Integrated Circuits and Products Containing Same (Inv. No. 337-TA-665).  In Order No. 28, ALJ Rogers denied respondent LSI Corp.’s (“LSI”) motion for summary determination that it does not infringe the asserted claims of complainant Qimonda AG’s (“Qimonda”) U.S. Patent No. 5,213,670 (the “‘670 patent”).  In Order No. 34, ALJ Rogers granted-in-part and denied-in-part LSI’s motion for summary determination that it does not infringe the asserted claims of Qimonda’s U.S. Patent No. 6,103,456 (the “‘456 patent”).  The public versions of the orders are heavily redacted.

LSI filed both motions for summary determination on April 8, 2009.  Qimonda filed oppositions on April 20, 2009.  The Commission Investigative Staff filed responses opposing the motion for summary determination of non-infringement of the ‘670 patent but supporting the motion for summary determination of non-infringement of the ‘456 patent on April 20, 2009.
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ALJ Rogers Grants-In-Part Complainant’s Motion to Compel And Grants-In-Part A Non-Party Motion To Quash Subpoena In Certain Semiconductor Integrated Circuits (337-TA-665)

By Eric Schweibenz
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Jun
05
On May 29, 2009, ALJ Robert K. Rogers, Jr. issued the public version of Order No. 23 (dated April 28, 2009) in Certain Semiconductor Integrated Circuits and Products Containing Same (337-TA-665).  In the Order, ALJ Rogers granted-in-part and denied-in-part Complainant Qimonda AG’s (“Qimonda”) motion to compel Respondent LSI Corporation (“LSI”) to produce certain documents and witnesses and granted-in-part and denied-in-part non-party Chartered Semiconductor Manufacturing Inc.’s (“Chartered USA”) motion to quash and/or limit a subpoena served by Qimonda.

As an initial matter, ALJ Rogers analyzed Qimonda’s and Chartered USA’s motions together because they both related to the definition of the term “Relevant Products” used in Qimonda’s discovery requests.  Qimonda’s definition of the term “Relevant Products” included seven defined categories.
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ALJ Essex Rules On Motions For Summary Determination Of Invalidity In Certain Automotive Multimedia Display and Navigation Systems (337-TA-657)

By Eric Schweibenz
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Jun
09
On June 3, 2009, ALJ Theodore R. Essex issued Order No. 25 in Certain Automotive Multimedia Display and Navigation Systems, Components Thereof, and Products Containing Same (Inv. No. 337-TA-657).  In the Order, ALJ Essex denied three separate motions for summary determination of invalidity filed by certain respondents determining for each that “summary determination is not appropriate” since “every aspect of the motion[s]” was opposed by Complainant Honeywell International, Inc., and “genuine issues of material facts remain.”

In the order, ALJ Essex first denied respondents Denso Corporation, Denso International America, Inc., Alpine Electronics, Inc., Alpine Electronics of America, Inc., Pioneer Corporation, and Pioneer Electronics (USA) Inc.’s motion for summary determination of invalidity of claims 1-7 and 17 of U.S. Patent No. 6,308,132.
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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.