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ALJ Shaw

ALJ Shaw Denies Respondents’ Motion For Summary Determination Of Invalidity In Certain Microprocessors (337-TA-781)

By Eric Schweibenz
|
Aug
08
On August 6, 2012, ALJ David P. Shaw issued Order No. 48 in Certain Microprocessors, Components Thereof, and Products Containing Same(Inv. No. 337-TA-781).

According to the order, Respondents filed a motion for summary determination of invalidity of certain claims of U.S. Patent Nos. 7,733,621, 7,916,444, and 8,023,241, arguing that the asserted claims are indefinite under 35 U.S.C. § 112, ¶ 2 because the way in which the word “portion” is used in the claims renders them insolubly ambiguous.  ALJ Shaw denied Respondents’ request, finding that summary determination is not appropriate because outstanding factual questions remain regarding how a person of ordinary skill in the art would understand and interpret the term “portions.”
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ALJ Shaw Issues Recommended Determination On Remedy And Bonding In Certain Light-Emitting Diodes (337-TA-784)

By Eric Schweibenz
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Aug
15
On August 8, 2012, ALJ David P. Shaw issued the public version of the Recommended Determination on Remedy and Bonding (“RD”) (dated July 23, 2012) in Certain Light-Emitting Diodes and Products Containing the Same (Inv. No. 337-TA-784).  In the RD, ALJ Shaw recommended that should the Commission find a violation, a limited exclusion order (“LEO”) should issue directed to Respondents’ infringing LEDs, and that the LEO should not cover Respondents’ downstream products.  ALJ Shaw further recommended that the Commission not issue any cease and desist order, and also recommended that Respondents post a bond during the Presidential review period.

By way of background, the investigation is based on a June 3, 2011 complaint filed by OSRAM GmbH (“OSRAM”) alleging that Respondents LG Electronics, Inc., LG Innotek Co., Ltd., LG Electronics U.S.A., Inc., and LG Innotek U.S.A., Inc. (collectively, “LG”) violated Section 337 by infringing various patents.  See our July 7, 2011 post for more details.  On July 9, 2012, ALJ Shaw issued a notice holding that a violation of Section 337 had occurred in this investigation by LG by reason of infringement of certain valid claims of U.S. Patent No. 7,151,283.  See our July 12, 2012 post for more details.
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ALJ Shaw Grants Motion To Terminate Investigation In Certain Products Containing Interactive Program Guide And Parental Control Technology (337-TA-845)

By Eric Schweibenz
|
Sep
07
On September 4, 2012, ALJ David P. Shaw issued Order No. 9 in Certain Products Containing Interactive Program Guide And Parental Control Technology(Inv. No. 337-TA-845).

In the Order, ALJ Shaw granted a consent motion filed by Respondents Mitsubishi Electric US Holdings, Inc. (“MEUH”), Mitsubishi Electric and Electronics USA, Inc. (“MEUS”), and Mitsubishi Digital Electronics America, Inc. (“MDEA”) to terminate MEUH, MEUS, and MDEA as respondents in this investigation. 
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ALJ Shaw Denies Motion To Compel In Certain Wireless Devices With 3G Capabilities (337-TA-800)

By Eric Schweibenz
|
Sep
11
On August 29, 2012, ALJ David P. Shaw issued the public version of Order No. 37 (dated July 17, 2012) denying Complainants InterDigital Communications, LLC, InterDigital Technology Corporation, and IPR Licensing’s (collectively, “InterDigital”) motion to compel in Certain Wireless Devices With 3G Capabilities and Components Thereof(Inv. No. 337-TA-800).

According to the Order, InterDigital argued that Respondents Huawei Technologies Co., Ltd. and Futurewei Technologies, Inc. (collectively, “Huawei”) improperly limited the scope of discovery to accused devices planned for importation prior to the evidentiary hearing, and withheld discovery on accused devices planned for importation during the pendency of the investigation but after the hearing.  Hence, InterDigital sought an order compelling Huawei to (1) identify all 3G-capable devices already imported, intended or planned for importation, or likely to be imported during the pendency of the investigation; and (2) produce source code and responsive documents as to each identified device.  Huawei responded that it has already agreed to provide discovery for all products that it is likely to import in the future, and that it is not aware of any products likely to be imported after the evidentiary hearing for which it refused to provide discovery.
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ALJ Shaw Denies Motion To Compel In Certain Audiovisual Components (337-TA-837)

By Eric Schweibenz
|
Sep
11
On August 29, 2012, ALJ David P. Shaw issued the public version of Order No. 15 (dated August 22, 2012) denying complainants LSI Corporation and Agere Systems Inc.’s (collectively, “LSI”) motion to compel respondents Funai Electric Company, Ltd., Funai Corporation, Inc., P&F USA, Inc., and Funai Service Corporation (collectively, “Funai”) to supplement certain interrogatory responses and other discovery requests in Certain Audiovisual Components and Products Containing the Same(Inv. No. 337-TA-837).

According to the Order, LSI argued that Funai improperly withheld discovery on accused products other than those incorporating components purchased from MediaTek Inc., MediaTek USA Inc., MediaTek Wireless, Inc. (USA), Ralink Technology Corporation, Ralink Technology Corporation (USA), or Ralink Semiconductor Corporation (collectively, “co-respondents”), and that discovery should not be so limited.  Funai responded that LSI’s discovery requests are improper because the seek information beyond the scope of the investigation as defined by the notice of investigation and the amended complaint, the latter of which limits accused products to those that incorporate co-respondents’ components.
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ALJ Shaw Sets Target Date In Certain Video Analytics Software (337-TA-852)

By Eric Schweibenz
|
Sep
13
Further to our July 30, 2012 post, on September 7, 2012, ALJ David P. Shaw issued Order No. 5 in Certain Video Analytics Software, Systems, Components Thereof, and Products Containing Same(Inv. No. 337-TA-852). 

According to the Order, ALJ Shaw set December 2, 2013 as the target date (which is approximately 16 months after institution of the investigation).  ALJ Shaw further indicated that the initial determination on alleged violation shall be due on August 2, 2013.
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ALJ Shaw Denies Motion For Stay In Certain Video Analytics Software (337-TA-852)

By Eric Schweibenz
|
Sep
13
On September 10, 2012, ALJ David P. Shaw issued Order No. 4 denying respondent PELCO Inc.’s (“PELCO”) motion for a temporary stay in Certain Video Analytics Software, Systems, Components Thereof, and Products Containing Same (Inv. No. 337-TA-852). 

According to the Order, PELCO moved for a temporary stay of the investigation pending the issuance of an initial determination (“ID”) in Investigation No. 337-TA-795, in which complainant ObjectVideo, Inc. (“ObjectVideo”) asserted the four patents at issue in this investigation against respondents unrelated to PELCO.  PELCO argued that a stay would simplify the issues in this investigation because any finding that an ObjectVideo patent asserted in the 795 investigation is invalid would apply equally in this investigation, and because all four asserted patents are currently undergoing reexamination at the USPTO which has rejected all claims asserted in the investigation as invalid over the prior art.
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ALJ Shaw Denies Motion To Amend Complaint In Certain Devices With Secure Communication Capabilities (337-TA-818)

By Eric Schweibenz
|
Sep
14
On September 7, 2012, ALJ David P. Shaw issued Order No. 9 denying complainant VirnetX, Inc.’s (“VirnetX”) motion for leave to amend the complaint in Certain Devices with Secure Communication Capabilities, Components Thereof, and Products Containing the Same (Inv. No. 337-TA-818).

According to the Order, VirnetX sought to add Science Applications International Corporation (“SAIC”) as a complainant, arguing that good cause exists under Commission Rule 210.14(b)(1) based on the fact that in litigation brought by VirnetX against Cisco Systems and others in the Eastern District of Texas involving patents related to the patent at issue in the investigation (the ‘181 patent), the district court ruled in a March 2012 order that VirnetX was required to join SAIC as a party.  Virnet also argued that no party would be prejudiced by the addition of SAIC because SAIC agreed to join the investigation, and because respondent Apple Inc. (“Apple”) previously asked VirnetX to confirm that SAIC would be joining the investigation, and has had access to any discovery from SAIC that Apple might need.  Apple argued in opposition that VirnetX cannot show good cause because (1) VirnetX failed to join SAIC in the original complaint despite indications in district court litigation that SAIC is a necessary party, (2) VirnetX failed to disclose in its complaint that SAIC has an interest in the ‘181 patent, and (3) VirnetX failed to seek to join SAIC in a timely manner even after the district court determined that SAIC is a necessary party in the Eastern District of Texas.  Apple also contended that it would be prejudiced by the addition of SAIC because fact discovery will be closed by the time SAIC could be joined as a party, and that it would still need to conduct discovery of SAIC relating to domestic industry (e.g., whether VirnetX was formed to develop and practice the patented technology, or merely to license and litigate in infringement actions).
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ALJ Shaw Denies Motion To Compel In Certain Audiovisual Components (337-TA-837)

By Eric Schweibenz
|
Sep
14
On September 7, 2012, ALJ David P. Shaw issued the public version of Order No. 17 (dated August 23, 2012) denying Complainants LSI Corporation and Agere Systems Inc.’s (collectively, “LSI”) motion to compel Respondent Realtek Semiconductor Corporation (“Realtek”) to respond to and supplement certain discovery requests in Certain Audiovisual Components and Products Containing the Same(Inv. No. 337-TA-837).

According to the Order, LSI argued that Realtek refused to provide discovery with respect to accused products other than “the identified Realtek WiFi component.”  LSI further argued that Realtek must identify (i) all Realtek accused WiFi products and downstream goods incorporating such products, and (ii) any accused AVC products and accused decoder products that it manufacturers and sells (directly or indirectly) to Funai entities.  In response, Realtek argued that it already agreed to provide discovery on (i) all accused Wi-Fi products that it currently sells, and (ii) all accused Wi-Fi products sold by Realtek since at least January 2011.  Realtek also argued that it had no obligation to provide discovery regarding accused AVC products or accused decoder products because the patents that allegedly implicate such products were not asserted against Realtek in the amended complaint. 
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ALJ Shaw Rules On Discovery Motions in Certain Wireless Devices With 3G Capabilities (337-TA-800)

By Eric Schweibenz
|
Sep
19
On September 12 and 13, 2012, ALJ David P. Shaw issued the public versions of Order Nos. 41, 42, and 43 (all dated August 7, 2012) in Certain Wireless Devices with 3G Capabilities and Components Thereof (Inv. No. 337-TA-800).

By way of background, this investigation is based on a July 26, 2011 complaint filed on behalf of InterDigital alleging violation of Section 337 by named Respondents Huawei Technologies Co., Ltd., FutureWei Technologies, Inc. d/b/a Huawei Technologies (USA),  ZTE Corp., ZTE (USA) Inc., and Nokia (collectively, “Respondents”) in the importation into the U.S. and sale of certain wireless devices with 3G capabilities and components thereof that infringe one or more claims of U.S. Patent Nos. 7,349,540; 7,502,406; 7,536,013; 7,616,970 (the ‘970 patent); 7,706,332; 7,706,830; and 7,970,127.  See our July 28, 2011 post for more details.
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ALJ Shaw Grants Motion To Compel Discovery In Certain Products Containing Interactive Program Guide And Parental Control Technology (337-TA-845)

By Eric Schweibenz
|
Sep
24
On September 18, 2012, ALJ David P. Shaw issued the public version of Order No. 10 (dated September 12, 2012) in Certain Products Containing Interactive Program Guide And Parental Control Technology (Inv. No. 337-TA-845).

In the Order, ALJ Shaw granted Respondent Netflix, Inc.’s (“Netflix”) motion to compel Complainants Rovi Corporation; Rovi Guides, Inc.; Rovi Technologies Corporation; Starsight Telecast, Inc.; United Video Properties, Inc.; and Index Systems, Inc. (collectively, “Rovi”) to provide documents and interrogatory responses related to Netflix’s patent misuse defense.
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ALJ Shaw Denies Motion To Compel In Certain Audiovisual Components (337-TA-837)

By Eric Schweibenz
|
Oct
09
On October 5, 2012, ALJ David P. Shaw issued the public version of Order No. 34 (dated September 19, 2012) denying Complainants LSI Corporation and Agere Systems Inc.’s (collectively, “LSI”) motion to compel Respondent Funai Electric Company Ltd. (“Funai”) to produce corporate witnesses outside of Japan in Certain Audiovisual Components and Products Containing the Same (Inv. No. 337-TA-837).

According to the Order, LSI argued that they suffered a hardship or other unusual circumstance justifying their request in light of the difficulties they have encountered and the impending discovery deadline.  More particularly, LSI asserted that they had been diligent in their efforts to take Funai’s depositions in Japan since June 2012, but were unsuccessful due to Funai’s “dilatory tactics.”  Funai opposed LSI’s motion and argued that “LSI’s discovery problems are solely the result of its noncompliance (or persistently late compliance) with the applicable rules – rules that Funai explained to it multiple times – and LSI’s own changing position regarding the information sought by its own Amended Notce.”
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ALJ Shaw Denies Motion To Compel In Certain Audiovisual Components (337-TA-837)

By Eric Schweibenz
|
Oct
11
On October 5, 2012, ALJ David P. Shaw issued the public version of Order No. 22 (dated September 6, 2012) denying Complainants LSI Corporation and Agere Systems Inc.’s (collectively, “LSI”) motion to compel Realtek Semiconductor Corp. (“Realtek”) to produce a corporate witness for additional deposition testimony in Certain Audiovisual Components and Products Containing the Same(Inv. No. 337-TA-837).

In the Order, LSI argued that they were entitled to additional testimony on various deposition topics.  On each of the topics, LSI complained that Realtek’s deponent was not fully prepared to discuss certain topics at his deposition and thus failed to provide the requested discovery.  In response, Realtek argued that the deponent fully answered LSI’s questions and provided the requested information.  According to the Order, ALJ Shaw agreed with Realtek’s arguments and found that LSI was not entitled to a second deposition regarding the disputed topics.  Accordingly, ALJ Shaw denied LSI’s motion.
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ALJ Shaw Grants Motion to Terminate Investigation As To OnlineTechStores in Certain Toner Cartridges (337-TA-829)

By Eric Schweibenz
|
Oct
15
On October 11, 2012, ALJ David P. Shaw issued Order No. 18 in Certain Toner Cartridges and Components Thereof  (Inv. No. 337-TA-829).

According to the order, Respondent OnlineTechStores.com, Inc. filed a motion to terminate this investigation based on a consent order stipulation and proposed consent order.  The Commission Investigative Staff supported the motion and no other response was filed.  Based on his review of the motion papers and the consent order stipulation and proposed consent order, ALJ Shaw did not find any evidence that granting the motion was contrary to the public interest, and he determined that the consent order stipulation and proposed order complied with Commission rules.  ALJ Shaw therefore provided an initial determination granting the motion and terminating the investigation as to OnlineTechStores.com, Inc.
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ALJ Shaw Grants Motions To Terminate Investigation As To Clover In Certain Toner Cartridges (337-TA-829)

By Eric Schweibenz
|
Oct
31
On October 25, 2012, ALJ David P. Shaw issued Order Nos. 19 and 20 in Certain Toner Cartridges and Components Thereof(Inv. No. 337-TA-829).

In Order No. 19, ALJ Shaw granted a joint motion filed by Complainants Canon Inc., Canon U.S.A., Inc., and Canon Virginia, Inc. (collectively, “Canon”) and Respondents Clover Holdings, Inc.; Clover Technologies Group, LLC d/b/a Depot International f/k/a Depot America f/k/a Image1 Products; Clover Vietnam Co., Ltd., Dataproducts USA, LLC, Dataproducts Imaging Solutions S.A. de C.V., and CAU Acquisition Co., LLC d/b/a Cartridges Are Us (collectively, “Clover”) to terminate the investigation based on a consent order stipulation and proposed consent order.  ALJ Shaw determined that the consent order stipulation complied with Commission Rule 210.21(c)(3), and that there is no evidence of record that terminating the investigation as to Clover would be contrary to the public interest.
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ALJ Shaw Grants Motion To Terminate Investigation As To Mitsubishi Electric In Certain Products Containing Interactive Program Guide And Parental Control Technology (337-TA-845)

By Eric Schweibenz
|
Nov
08
On November 6, 2012, ALJ David P. Shaw issued Order No. 16 in Certain Products Containing Interactive Program Guide And Parental Control Technology(Inv. No. 337-TA-845).

In the Order, ALJ Shaw granted a motion filed by Respondents Mitsubishi Electric Corp. and Mitsubishi Electric Visual Solutions America, Inc. (collectively, “Mitsubishi”) to terminate the investigation as to U.S. Patent No. 6,701,523 (the ‘523 patent) based on a consent order.  According to the Order, the ‘523 patent has been asserted only against Mitsubishi in the investigation.  None of the other parties to the investigation opposed Mitsubishi’s motion.  
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ALJ Shaw Rules On Motion To Compel In Certain Audiovisual Components (337-TA-837)

By Eric Schweibenz
|
Nov
14
On November 7, 2012, ALJ David P. Shaw issued the public version of Order No. 43 (dated October 2, 2012) in Certain Audiovisual Components and Products Containing the Same(Inv. No. 337-TA-837).  In the Order, ALJ Shaw granted-in-part Respondents MediaTek Inc., MediaTek USA Inc., MediaTek Wireless, Inc., Ralink Technology Corporation, and Ralink Technology Corporation (USA)’s (collectively, “MediaTek”) motion to compel Complainants LSI Corporation and Agere Systems LLC (collectively, “Complainants”) to provide supplementary discovery responses.

According to the Order, MediaTek argued that Complainants had refused to provide the following information:  (1) a complete response to requests to identify prior litigation materials involving the patents-in-suit; (2) factual information relating to Complainants’ domestic industry assertions, and information on whether Complainants’ own products practice the asserted patents; and (3) a complete response to requests for information on Complainants’ interactions with standards bodies.  In particular, with respect to (1), MediaTek argued that Complainants had only produced a small number of documents from two previous litigations even though they had been involved in at least five previous litigations, and that Complainants’ response was facially deficient in view of public records of the prior litigations.  With respect to (2), MediaTek argued that Complainants had not responded to multiple interrogatories regarding domestic industry with sufficient detail to comply with Commission Rule 210.29(c), which states that the responding party must “specify the records from which the answer may be derived or ascertained.”  With respect to (3), MediaTek argued that Complainants had not provided a complete response to an interrogatory requesting information regarding the possible existence of licenses to Complainants’ patents on reasonable and non-discriminatory (RAND) terms.
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ALJ Shaw Grants Motions To Terminate Investigation As To Green Project In Certain Toner Cartridges (337-TA-829)

By Eric Schweibenz
|
Nov
19
On November 13, 2012, ALJ David P. Shaw issued Order No. 22 in Certain Toner Cartridges and Components Thereof (Inv. No. 337-TA-829).

In the Order, ALJ Shaw granted a joint motion filed by Complainants Canon Inc., Canon U.S.A., Inc., and Canon Virginia, Inc. (collectively, “Canon”) and Respondent Green Project, Inc. (“GP”) to terminate the investigation based on a consent order stipulation and proposed consent order.  ALJ Shaw determined that the consent order stipulation complied with Commission Rule 210.21(c)(3), and that there is no evidence of record that terminating the investigation as to GP would be contrary to the public interest.  Lastly, ALJ Shaw noted that Canon’s request that a general exclusion order be issued in this investigation “will be ruled upon separately.”
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ALJ Shaw Grants Motion To Terminate Investigation In Certain Video Analytics Software (337-TA-795)

By Eric Schweibenz
|
Nov
20
On November 14, 2012, ALJ David P. Shaw issued Order No. 39 in Certain Video Analytics Software, Systems, Components Thereof, and Products Containing Same (Inv. No. 337-TA-795).

According to the Order, ALJ Shaw granted a joint motion filed by Complainant ObjectVideo, Inc. (“ObjectVideo”) and Respondents Robert Bosch GmbH, Bosch Security Systems, Inc., Bosch Sicherheissysteme GmbH, Bosch Security Systems B.V., Bosch Sicherheitssysteme Engineering GmbH, Bosch Security Systems – Sistemas de Seguranca, S.A., Bosch (Zhuhai) Security Systems, Co., Ltd., and Extreme CCTV, Inc. (collectively, “Bosch”) to terminate the investigation as to Bosch based on a license agreement. 
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ALJ Shaw Grants Motion To Terminate Investigation In Certain Video Analytics Software (337-TA-852)

By Eric Schweibenz
|
Dec
03
On November 27, 2012, ALJ David P. Shaw issued Order No. 7 in Certain Video Analytics Software, Systems, Components Thereof, and Products Containing Same (Inv. No. 337-TA-852).

According to the Order, ALJ Shaw granted a joint motion filed by Complainant ObjectVideo, Inc. (“ObjectVideo”) and Respondent PELCO, Inc. (“PELCO”) to terminate the investigation as to PELCO 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.