Commission Notices

ITC Decides to review initial determination in 337-TA-625 – certain self-cleaning litter boxes and components thereof

By Eric Schweibenz
|
Feb
11
On February 9, 2009, the U.S. International Trade Commission issued a Notice determining to review in part the final Initial Determination (“ID”) issued by Administrative Law Judge Robert K. Rogers, Jr. on December 1, 2008, in the matter of Certain Self-Cleaning Litter Boxes and Components Thereof (Inv. No. 337-TA-625). This investigation was instituted on December 28, 2007, based on the complaint of Applica Consumer Products, Inc. of Miramar, Florida and Waters Research Company of West Dundee, Illinois.  The respondents are Lucky Litter, L.L.C. of Chicago, Illinois and OurPet’s Company of Fairport Harbor, Ohio. On December 1, 2008, ALJ Rogers issued his ID, finding a violation of section 337 based on the importation, sale for importation, or sale after importation of certain self-cleaning litter boxes and components thereof by reason of infringement of claim 33 of U.S. Patent No. RE36,847.  The private parties and the Commission Investigative Staff each filed petitions for review of the ID on December 16, 2008 and responses on December 24, 2008.  On December 23, 2008, Complainants filed a motion to strike a declaration submitted with Respondent Lucky Litter’s petition for review, to which Lucky Litter and the Commission Investigative Staff filed oppositions on January 5, 2009. After examining the ID, the petitions for review, and the responses to the petitions for review, the Commission decided to review ALJ Rogers’ construction of six claim terms in the ‘847 patent, as well as ALJ Rogers’ infringement and validity findings.  In addition, the Notice requests briefing on nine questions of particular interest to the Commission. The Commission also granted Complainants’ motion to strike on the basis that the declaration and its exhibits were not part of the evidentiary record in the investigation. The parties’ briefs to the Commission are due by February 20, 2009, with reply submissions due by February 27, 2009.
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ITC Decides To Review Initial Determination In 337-TA-629 – Certain Silicon Microphone Packages

By Eric Schweibenz
|
Mar
16
On March 13, 2009, the U.S. International Trade Commission issued a Notice determining to review in part the final Initial Determination (“ID”) issued by Administrative Law Judge Robert K. Rogers, Jr. on January 12, 2009, in the matter of Certain Silicon Microphone Packages and Products Containing the Same (Inv. No. 337-TA-629).  Please note that Oblon Spivak represents MEMS Technology Berhad (“MemsTech”) in this matter.  This investigation was instituted on January 14, 2008, based on the complaint of Knowles Electronics, LLC of Itasca, Illinois.  The sole respondent is MemsTech of Malaysia. As indicated in our February 19 post, on January 12, 2009, ALJ Rogers issued his ID, finding a violation of section 337 based on the importation, sale for importation, and sale after importation of certain silicon microphone packages by literal infringement of certain claims of Knowles’ U.S. Patent Nos. 6,781,231 and 7,242,089.  The private parties and the Commission Investigative Staff each filed petitions for review of the ID on January 26, 2009 and responses on February 3, 2009. After examining the ID, the petitions for review, and the responses to the petitions for review, the Commission decided to review (i) ALJ Rogers’ infringement and validity determinations regarding Knowles’ ‘231 patent, and (ii) ALJ Rogers’ claim construction, infringement, technical prong, and validity determinations regarding Knowles’ ‘089 patent.  In addition, the Notice requests briefing on two questions (with a number of subparts) of particular interest to the Commission.   The parties’ briefs to the Commission are due by March 27, 2009, with reply submissions due by April 3, 2009.  Also, the Commission extended the target date for completion of the investigation by thirty days, from April 14 to May 14, 2009.
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Commission announces temporary change to filing procedures – EDIS unavailable from march 26-30, 2009

By Eric Schweibenz
|
Mar
16
According to an excerpt from the March 13, 2009 Federal Register, the U.S. International Trade Commission issued a notice indicating that its Electronic Document Information System (EDIS) will be unavailable for use from 6:00 p.m. on Thursday, March 26, 2009 until 6:00 a.m. on Monday, March 30, 2009. According to the notice, while EDIS is shut down the ITC plans to roll out EDIS3, a new and improved EDIS system with better technical performance. Also, during the shut down, the Commission “is temporarily suspending its filing procedures…specifically prohibiting electronic filing and access to electronic viewing of documents…”  Thus, during the shut down the Commission will only accept paper filings and parties will be required to complete a temporary EDIS Docket Cover Sheet available on the Commission website at: http://www.usitc.gov/docketservices/temporary_edis_cover.pdf.  Parties filing papers with the ITC during the shut down must submit with the filing a valid EDIS Docket Cover Sheet prepared using this temporary form.
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Commission Issues Final Determination in Certain Sucralose (337-TA-604)

By Eric Schweibenz
|
Apr
08
On April 6, 2009, the Commission issued a Notice in the matter of Certain Sucralose, Sweeteners Containing Sucralose, and Related Intermediate Compounds Thereof (337-TA-604).  The Commission also issued a limited exclusion order against eleven companies that defaulted or failed to participate in the investigation. The full opinion of the Commission is confidential.  We will provide an update with more information once the public version of the opinion is issued.
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Commission Issues Final Determination In Certain Self-Cleaning Litter Boxes (337-TA-625)

By Eric Schweibenz
|
Apr
13
On April 8, 2009, the Commission issued a Notice of Commission Final Determination in Certain Self-Cleaning Litter Boxes and Components Thereof (337-TA-625) affirming ALJ Rogers’ finding that both  Respondents Lucky Litter, L.L.C. (“Lucky Litter”) and OurPet’s Company (“OurPet’s”) violated section 337 as a result of infringement of U.S. Patent No. RE36,847 (“the ‘847 patent”). As explained in our February 11 post, the investigation was instituted on December 28, 2007, based on the complaint of Applica Consumer Products, Inc. of Miramar, Florida and Waters Research Company of West Dundee, Illinois.  On December 1, 2008, ALJ Rogers determined that the Respondents Lucky Litter and OurPet’s violated section 337 based on the importation, sale for importation, or sale after importation of certain self-cleaning litter boxes and components thereof by reason of infringement of claim 33 of the ‘847 patent.  Thereafter, on February 9, 2009,  the Commission decided to review ALJ Rogers’ construction of six claim terms in the ‘847 patent, findings on infringement and validity and nine questions of particular interest to the Commission. In affirming ALJ Rogers’ findings, the Commission also (1) affirmed the construction of “comb drive,” “comb drive means,” “drive means,” and “mode selector switch . . moveable between a manual operation position … and an automatic operation position”; (2) modified the construction of “discharge position adjacent the discharge end wall”; (3) construed “coupled to” in the limitation “comb…coupled to the comb drive” as ‘coupled or connected, directly or indirectly;’” and (4) affirmed that infringed claim 33 of the ‘847 is not invalid due to anticipation or obviousness.  Further, the Commission issued both limited exclusion orders and cease-and-desist orders against Lucky Litter and OurPet’s, found that the public interest factors do not preclude issuance of the remedial orders, and found that the bond to permit temporary importation during Presidential review should be set at 100%. The Commission also issued a confidential opinion.  We will provide more details on this opinion after the public version is issued.
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Commission Enters Final Determination in Certain Digital Televisions (337-TA-617)

By Eric Schweibenz
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Apr
14
On April 10, 2009, the Commission issued a Notice of Commission Final Determination in Certain Digital Televisions and Certain Products Containing Same and Methods of Using Same (Inv. No. 337-TA-617) affirming ALJ Charneski’s finding that Respondents Vizio, Inc., AmTran Technology Co., Ltd., Syntax-Brillian Corp., Taiwan Kolin Co., Ltd., Proview International Holdings, Ltd., Proview Technology (Shenzhen) Co., Ltd., Proview Technology, Ltd., TPV Technology, Ltd., TPV International, Top Victory Electronics Co., Ltd., and Envision Peripherals, Inc. (“Respondents”) violated section 337 as a result of infringement of U.S. Patent No. 6,115,074. The investigation was instituted on November 15, 2007, based on the complaint of Funai Electric Co, Ltd. of Japan and Funai Corp. of Rutherford, NJ (“Funai”).  On November 17, 2008, ALJ Charneski determined that Respondents violated section 337 based on the importation, sale for importation, or sale after importation of certain digital televisions and certain products containing the same.  The ALJ found that all of the Respondents induce infringement of the ‘074 patent and that some of the respondents directly infringe the ‘074 patent.  Thereafter, on February 11, 2009, the Commission decided to review ALJ Charnseki’s infringement determination and requested written submissions on the issues under review, remedy, the public interest, and bonding.  On February 24, 2009, the parties filed opening submissions, and on March 3, 2009, the parties filed response submissions. After examining the parties’ submissions and the record of the investigation, the Commission determined to affirm the ALJ’s conclusion that all Respondents induce infringement of the ‘074 patent but reverse his finding that certain Respondents directly infringe the ‘074 patent. The Commission issued both a limited exclusion order and cease-and-desist orders against the Respondents.  It also found that the public interest factors do not preclude issuance of the remedial orders, and that the bond to permit temporary importation during Presidential review should be set at $2.50 per article subject to the limited exclusion order. The Commission also issued a confidential opinion in this matter on April 10.  We will provide additional information once the public version of the Commission’s opinion is available.
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ITC Decides To Review Initial Determination In 337-TA-643 – Certain Cigarettes And Packaging Thereof

By Eric Schweibenz
|
Apr
16
On April 9, 2009, the U.S. International Trade Commission issued a Notice determining to review in its entirety the Initial Determination (“ID”) (Order No. 19) issued by Administrative Law Judge E. James Gildea on February 3, 2009, in Certain Cigarettes and Packaging Thereof (337-TA-643).  This investigation was instituted on April 4, 2008, based on the complaint of Philip Morris USA, Inc.  The respondents include Alcesia SRL; Emarket Systems Ltd. (d.b.a. all-discountcigarettes.com); Jamen Chong (d.b.a. asiadfs.com); Tri-kita (d.b.a. cheapcigarettes4all.com); Mr. Eduard Lee (d.b.a. cigarettesonlineshop.com); Zonitech Properties Limited (d.b.a. cigline.net); Zonitech Properties Limited (d.b.a. shopping-heaven.com); Cendano (d.b.a. galastore.com); Ms. Svetlana Trevinska (d.b.a. save-on-cigarettes.com); LMB Trading SA (d.b.a. k2smokes.ch); G.K.L. International SRL (d.b.a. allcigarettes-brandsxom); G.K.L. International SRL (d.b.a. smokerjim.net); and Best Product Solution Ltd.  On February 3, 2009, ALJ Gildea issued an ID, granting Phillip Morris’ motion for summary determination that Alcesia had violated Section 337 with respect to three trademarks: U.S. Trademark Registration Nos. 68,502; 378,340; and 894,450.  Alcesia filed a petition for review of the ID on February 17, 2009.  On February 23, 2009, both Phillip Morris and the Commission Investigative Staff filed responses to Alcesia’s petition.  Alcesia thereafter filed a motion for leave to file a reply on February 26, 2009 that was opposed by Phillip Morris on March 2, 2009. In its Notice, the Commission decided to review ALJ Gildea’s Order No. 19 and denied Alcesia’s motion for leave to file a reply.  In addition, the Notice requests briefing on three questions of particular interest to the Commission, including: (1) Does the Commission have the authority to find a foreign entity in violation of 19 U.S.C. 1337 (a)(1)(C) if that entity is not an ‘‘owner, importer or consignee’’ of the alleged gray market goods?; (2) What is the appropriate standard for the Commission to apply in gray market cases to determine whether two entities are affiliated for purposes of its ‘‘all or substantially all’’ analysis?; and (3) Is Phillip Morris International authorized and/or licensed to use the specific Phillip Morris USA trademarks at issue in this investigation in the manufacture and sale of cigarettes abroad?  If Phillip Morris International was not so authorized, was this case properly brought as a gray market case? The Commission also expressed an interest in receiving written submissions that address the form of remedy, if any, that should be ordered, as well as certain public interest factors regarding the remedy. The parties’ briefs to the Commission are due by May 8, 2009, with reply submissions due by May 29, 2009.
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ITC To Review Initial Determination in Certain Refrigerators and Components Thereof (337-TA-632)

By Eric Schweibenz
|
Apr
30
On April 27, 2009, the U.S. International Trade Commission issued a Notice determining to review the February 26, 2009 Initial Determination (“ID”) issued by Administrative Law Judge Theodore R. Essex in Certain Refrigerators and Components Thereof (Inv. No. 337-TA-632). The investigation was instituted on February 21, 2008, based on the complaint of Whirlpool Corp., Whirlpool Manufacturing Corp., Whirlpool Patent Corp., and Maytag Corp. (collectively “Whirlpool”).  The respondents are LG Electronics Corp., Inc., LG Electronics, USA, Inc., and LG Electronics Monterrey, Mexico S.A. de C.V. (collectively “LG”). As indicated in our April 10 post, on February 26, 2009, ALJ Essex issued his ID, finding no violation of section 337.  On March 11, 2009, the private parties each filed petitions for review of the ID, and they and the Commission Investigative Staff each filed responses shortly thereafter. After examining the ID, the petitions for review, and the responses thereto, the Commission decided to review the ID in its entirety and request briefing by the parties on the issue of claim construction.  In addition, the Notice requests that the parties address eight questions of particular interest to the Commission. The parties’ briefs to the Commission are due by May 8, 2009, with reply submissions due by May 15, 2009.
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Commission Declines Review Of Initial Determination In Certain Hair Irons (337-TA-637)

By Eric Schweibenz
|
May
05
On April 23, 2009, the Commission issued a Notice determining not to review the initial determination of ALJ Carl C. Charneski granting Complainant Farouk System, Inc.’s (“FSI”) motion for summary determination of violation of section 337 in Certain Hair Irons and Packaging Thereof (Inv. No. 337-TA-637). By way of background, on March 14, 2008, the Commission instituted the investigation based upon FSI’s complaint.  The named respondents were:  CHI Systems Singapore Pte. Ltd. of Singapore (“CHI Systems”); Princess Silk, LLC of Lake Forest, California (“Princess Silk”); Kamashi International of Hong Kong, China (“Kamashi”); Mount Rise, Ltd. of Dongguan, China (“Mount Rise”); and Dongguan Fumeikang Electrical Technology Co., Ltd. of Dongguan, China (“Dongguan Fumeikang”).  Dongguan Fumeikang and Princess Silk were terminated from the investigation on the basis of a consent order on May 21, 2008 (Order No. 8 ) and December 4, 2008 (Order No. 11), respectively.  On January 30, 2009, ALJ Charneski granted FSI’s motion (Order No. 13) to find Mount Rise, Kamashi, and CHI Systems in default for failure to respond to the complaint and Notice of Investigation. FSI also filed a motion for summary determination of violation against Mount Rise, Kamashi, and CHI Systems.  ALJ Charneski issued an initial determination granting the motion for summary determination on March 10, 2009. The Commission extended the period for completion of the investigation 17 days to June 29, 2009.  The Commission is soliciting written submissions that address the form of remedy (if any should be ordered), public interest, and bonding.  Written submissions must be filed by May 8, 2009 and replies must be filed by May 15, 2009.
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ITC Decides Not To Review Initial Determination On Economic Prong In Certain Variable Speed Wind Turbines (337-TA-641)

By Eric Schweibenz
|
May
05
On April 21, 2009, the U.S. International Trade Commission issued a Notice determining not to review the April 2, 2009 Initial Determination (“ID”) issued by Administrative Law Judge Carl C. Charneski in Certain Variable Speed Wind Turbines and Components Thereof (Inv. No. 337-TA-641). The investigation was instituted on March 31, 2008, based on the complaint of General Electric Co (“GE”).  The respondents are Mitsubishi Heavy Industries, Ltd., Mitsubishi Heavy Industries of America, Inc., and Mitsubishi Power Systems Americas, Inc (collectively, “MHI”). On December 4, 2008, GE filed a motion for summary determination that it satisfied the economic prong of the domestic industry requirement.  On January 26, 2009, MHI filed a response in opposition to the motion.  On March 2, 2009, the Commission Investigative Staff filed a response in support of the motion. On April 2, 2009, ALJ Charneski issued his ID, granting GE’s motion and finding that GE satisfied the economic prong of the domestic industry requirement.  No petitions for review were filed.  The Commission provided notice on April 21, 2009, that it would not review the ID.
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ITC Decides Not To Review Initial Determination In Certain Coaxial Cable Connectors (337-TA-650)

By Eric Schweibenz
|
May
07
On April 28, 2009, the U.S. International Trade Commission issued a Notice determining not to review the Initial Determination (“ID”) (Order No. 18) issued by Administrative Law Judge E. James Gildea on April 6, 2009, in Certain Coaxial Cable Connectors and Components Thereof and Products Containing the Same (Inv. No. 337-TA-650). As explained in our April 21 post, Complainant John Mezzalingua Associates, Inc. d/b/a PPC, Inc. (“PPC”) had moved for summary determination against Respondents Fu Ching Technical Industry Co. Ltd. and Gem Electronics, Inc. (“Respondents”) on importation, infringement, domestic industry, and for a general exclusion order.  Respondents opposed and raised a number of arguments regarding invalidity and non-infringement, but did not dispute PPC’s assertions relating to domestic industry (economic prong) and importation of the accused products.  The Commission Investigative Staff filed a response in support of PPC’s motion for summary determination on only the importation and economic prong issues. While ALJ Gildea found in his initial determination that PPC was entitled to summary determination on the importation and domestic industry (economic prong) issues, he denied summary determination “[w]ith respect to infringement and validity as they relate to Respondents” since there were genuine issues of material fact remaining on these issues.  ALJ Gildea also declined to evaluate the remedy issues raised in connection with PPC’s motion for summary determination.
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Commission Reverses ALJ and Finds Violation in Certain Semiconductor Chips with Minimized Chip Package Size (337-TA-605)

By Eric Schweibenz
|
May
22
On May 20, 2009 the International Trade Commission reversed ALJ Theodore R. Essex’s December 1, 2008 Initial Determination (“ID”) finding no violation of the ‘326 and ‘419 patents in Certain Semiconductor Chips with Minimized Chip Package Size and Products Containing Same (337-TA-605) and issued a Notice of Commission Final Determination of Violation of Section 337.  The Commission issued a limited exclusion order against respondents Spansion, Qualcomm, ATI, Motorola, STMicroelectronics-NV, and Freescale, and cease and desist orders against Motorola, Qualcomm, Freescale, and Spansion. In the ID, ALJ Essex found that the respondents did not infringe the asserted claims of the ‘326 and ‘419 patents; that the patents were not invalid under §§ 102, 103, or 112; and that a domestic industry existed with respect to the patents.  The ALJ issued an RD in which he recommended a limited exclusion order if the Commission determined a violation existed. On December 15, 2008 Complainant Tessera and the Commission Investigative Staff petitioned for review of the ID, and the Commission decided to review: 1) the ALJ’s finding that Respondents’ accused devices do not infringe the asserted claims the ’326 and ’419 patents; 2) the ALJ’s finding that Tessera had waived any argument that the accused products indirectly infringe the ’419 patent; 3) the ALJ’s finding that Motorola’s OMPAC invention does not anticipate the asserted patents under 35 U.S.C. § 102(b); and 4) the ALJ’s finding that Motorola’s OMPAC invention does not anticipate the asserted patents under 35 U.S.C. § 102(g). After reviewing the record, the Commission reversed the finding of no violation.  In particular, the Commission:
  • Reversed the ALJ’s finding that the Respondents did not infringe asserted claims 1, 2, 6, 12, 16-19, 21, 24-26, and 29 of the ’326 patent and claims 1-11, 14, 15, 19, and 22-24 of the ’419 patent;
  • Reversed the ALJ’s determination that Tessera had waived any argument that the accused products indirectly infringe the ‘419 patent;
  • Found the Respondents had contributorily infringed the ‘419 patent; and
  • Modified the ALJ’s analysis holding the patents were not invalid under 35 U.S.C. § 102(b) to clarify that the statute requires comparing on-sale dates against the priority date of the patents, not the conception date of the asserted patents.
The parties in the 605 investigation also filed written submissions on remedy, the public interest, and bonding, as did several respondents from the co-pending investigation Certain Semiconductor Chips with Minimized Chip Package Size (337-TA-649).  Tessera requested that the Commission issue a “tailored” general exclusion order (“GEO”), or that the Commission issue a limited exclusion order (“LEO") immediately, and hold further proceedings regarding a tailored GEO.  The Staff agreed with Tessera, while the respondents in the 605 investigation and the 649 investigation opposed. The Commission subsequently requested additional briefing on whether it had the authority to issue a “tailored” GEO “which would ostensibly reach only specified downstream products” and whether it had the authority to issue an LEO immediately and issue a GEO at a later date.  The Notice does not address these issues.  As a remedy, the Commission imposed a limited exclusion order prohibiting the unlicensed entry of infringing semiconductor chips with limited chip package size and products incorporating those chips that are manufactured abroad for all of the respondents, and cease and desist orders to Motorola, Qualcomm, Freescale and Spansion. The Commission allowed the parties to continue the activities barred by the cease and desist order during the 60 days in which the order is under review by the U.S. Trade Representative, subject to posting a bond of 3.5% of the per unit value of the products.
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Commission To Review Remand Initial Determination In Certain R-134a Coolant (337-TA-623)

By Eric Schweibenz
|
Jun
03
On June 1, 2009, the ITC issued a Notice determining to review the April 1, 2009 Remand Initial Determination (“RID”) in Certain R-134a Coolant (Otherwise Known as 1,1,1,2-Tetrafluorothane) (337-TA-623). By way of background, this investigation was instituted in December 2007 based on a complaint filed by INEOS Fluor Holdings Ltd., INEOS Fluor Ltd. and INEOS Fluor Americas LLC (“INEOS”).  INEOS’ complaint alleged violations of section 337 by respondents Sinochem Modern Environmental Protection Chemicals (Xi’an) Co. Ltd., Sinochem Ningbo Ltd., Sinochem Environmental Protection Chemicals (Taicang) Co., Ltd., and Sinochem (U.S.A.) Inc. (collectively, “Sinochem”) in the importation into the U.S., the sale for importation, and the sale within the U.S. after importation of certain R-134a coolant (otherwise known as 1,1,1,2-tetrafluorothane) by reason of infringement of certain patents, including U.S. Patent No. 5,559,276 (the “‘276 patent”). On December 1, 2008, Chief ALJ Paul J. Luckern issued a final initial determination (“ID”) that Sinochem infringed the ‘276 patent and the domestic industry requirement had been met.  ALJ Luckern further determined that Sincochem failed to establish that the ‘276 patent was invalid or unenforceable.  Following submissions by the parties, the Commission reviewed the ID with respect to invalidity and issued an order on January 30, 2009 remanding the investigation to the ALJ for further proceedings related to anticipation and obviousness because the disposition of these issues was unclear from the ALJ’s ID. As explained in our April 6 post, on April 1, 2009, ALJ Luckern issued the Remand Determination concluding that Sinochem’s arguments regarding anticipation and obviousness were waived under the ground rules and, alternatively, that the arguments were without merit.  Sinochem subsequently filed a petition for review. Through its June 1, 2009 notice, the ITC has determined to review the RID in its entirety.  The ITC also requested further briefing on five questions relating to obviousness and waiver issues.  According to the Notice, written submissions are due on June 15, 2009; and reply submissions are due on June 25, 2009. The ITC also extended the target date for completion of this investigation to August 3, 2009.
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Commission To Review ALJ Luckern’s Initial Determination that Professor Rothschild’s Licensing Activities Satisfy the Domestic Industry Requirement In Certain Short-Wavelength Light Emitting Diodes (337-TA-640)

By Eric Schweibenz
|
Jun
11
On June 11, 2009, the Commission issued a Notice determining that it would review Chief ALJ Paul J. Luckern’s May 8, 2009 Initial Determination in Certain Short-Wavelength Light Emitting Diodes, Laser Diodes and Products Containing Same (Inv. No. 337-TA-640).  As explained in our June 11 post, ALJ Luckern granted Complainant Professor Gertrude Neumark Rothschild’s motion for summary determination that she satisfied the domestic industry requirement.  According to the Notice, on May 18 and May 19, respondent Panasonic and the Commission Investigative Staff filed petitions for review of the May 8 Initial Determination, respectively.  Professor Rothschild filed a response on May 26. The Commission’s Notice requests briefing on the following questions:
  • Does section 337 (including the legislative history and the case law) support the ALJ’s determination that complainant’s payments made to outside counsel for exploiting and licensing the ‘499 patent qualify as an “investment” under 337(a)(3)(C)?
  • Does the record indicate the extent of investment made and royalties received in connection with the licenses granted prior to litigation, as opposed to licenses entered into in order to settle litigation, and, if so, are such investments and royalties entered into prior to litigation entitled to more weight in the analysis?
  • Does it matter whether the investment in licensing is performed by in-house employees versus outside counsel?
  • For determining the sufficiency of investment in licensing, it is relevant that the party asserting the intellectual property right is an individual inventor?
Written submissions are due on June 26 and responsive submissions are due on July 10.
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ITC Decides Not To Review Enforcement Initial Determination In Certain Ink Cartridges (337-TA-565)

By Eric Schweibenz
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Jun
22
On June 19, 2009, the International Trade Commission issued a notice determining not to review the April 17, 2007 Enforcement Initial Determination (“ED”) issued by Chief Administrative Law Judge Paul J. Luckern in Certain Ink Cartridges and Components Thereof (337-TA-565). As explained in our April 21 post, ALJ Luckern determined that enforcement respondents Ninestar Technology Company Ltd., Ninestar Technology Co., Ltd. and Town Sky, Incorporated violated the orders issued at the conclusion of Investigation No. 337-TA-565.  ALJ Luckern further determined that Mipo International, Mipo America, Ribbon Tree USA, and Apex Distributing Inc. sold compatible and remanufactured cartridges that were “covered products” under the cease and desist order issued by the Commission.  ALJ Luckern also recommended that the Commission impose civil penalties for such violations. According to the notice, the “Commission may levy civil penalties for violation of the cease and desist orders and consent order,” and thus “[p]arties to the investigation, interested government agencies, and any other interested parties are encouraged to file written submissions on the amount of civil penalties to be imposed.”  Written submissions on this issue are due on July 3, 2009 and reply submissions are due on July 13, 2009.
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Commission Remands Investigation To Presiding ALJ And Extends Target Date In Certain Encapsulated Integrated Circuit Devices (337-TA-501)

By Eric Schweibenz
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Jul
02
On July 1, 2009, the Commission issued a Notice and Order remanding the investigation to the presiding ALJ and extending the target date in Certain Encapsulated Integrated Circuit Devices and Products Containing Same (337-TA-501). Complainant Amkor Technology, Inc. accused respondents Carsem (M) Sdn Bhd, Carsem Semiconductor Sdn Bhd, and Carsem, Inc. (“Carsem”) of infringing claims of two patents.  The Commission has been unable to complete the investigation due to an ongoing effort to enforce a non-party subpoena.  The Commission issued a subpoena to non-party ASAT, Inc. for documents Carsem alleged were vital to its defense.  On August 11, 2004 the Commission petitioned the United States District Court for the District of Columbia for enforcement of the subpoena.  ASAT opposed the petition.  The district court granted the petition, but the United States Court of Appeals for the D.C. Circuit reversed.  Eventually, another petition was filed after further fact-finding by the ALJ.  Again, the district court granted the petition.  ASAT appealed, but eventually withdrew the appeal on December 31, 2008.  The appeal was dismissed January 9, 2009. While the subpoena enforcement issue was being litigated, the underlying case continued.  On November 18, 2004 the ALJ issued a final initial determination finding no violation.  The Commission modified the ALJ’s claim construction and remanded.  On November 9, 2005, the ALJ found a violation with respect to four claims of one patent but found no violation for two claims of another patent. On January 9, 2006, Carsem filed a motion to extend the target date.  This motion was granted on February 9, 2006, with the Commission stating that the new target date would be three months after completion of the pending ASAT subpoena enforcement proceeding. On April 20, 2009, after final disposition of the subpoena enforcement issue, Carsem filed a motion to extend the target date and remand the investigation to the ALJ.  Amkor filed a response and Carsem filed a motion for leave to reply to Amkor’s response. The Commission ordered that (1) the investigation is to be remanded to the ALJ to admit new evidence discovered as a result of the ASAT subpoena; (2) the ALJ is to revise or supplement his November 9 Remand Initial Determination in light of the supplemented record to make appropriate findings concerning Carsem’s invalidity defenses; (3) the ALJ is to issue a revised or supplemental Initial Determination no later than three months prior to the target date for completion of the investigation (which was moved to September 1, 2009); (4) the ALJ shall have the authority to address any issues that may arise regarding enforcement of the subpoena; (5) Carsem’s motion for leave to reply is granted; and (6) Carsem’s motion for leave to file a supplemental motion in support of its motion to remand is denied.
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Commission Issues General Exclusion Order In Certain Hair Irons (337-TA-637)

By Eric Schweibenz
|
Jul
07
On June 29, 2009, the Commission issued a Notice entitled “Issuance Of A General Exclusion Order; Termination Of The Investigation” in Certain Hair Irons and Packaging Thereof (Inv. No. 337-TA-637).  By way of background, and as explained in our May 5 post, on March 14, 2008, the Commission instituted the investigation based upon a complaint filed by Farouk Systems, Inc. (“FSI”).  The respondents named in the Notice of Investigation were:  CHI Systems Singapore Pte. Ltd. of Singapore (“CHI Systems”); Princess Silk, LLC of Lake Forest, California (“Princess Silk”); Kamashi International of Hong Kong, China (“Kamashi”); Mount Rise, Ltd. of Dongguan, China (“Mount Rise”); and Dongguan Fumeikang Electrical Technology Co., Ltd. of Dongguan, China (“Dongguan Fumeikang”).  Dongguan Fumeikang and Princess Silk were terminated from the investigation on the basis of a consent order on May 21, 2008 and December 4, 2008, respectively.  On January 30, 2009, ALJ Carl C. Charneski granted FSI’s motion (Order No. 13) and found that Mount Rise, Kamashi, and CHI Systems were in default for failure to respond to the complaint and Notice of Investigation. FSI also filed a motion for summary determination of violation against Mount Rise, Kamashi, and CHI Systems and declared that it would seek a general exclusion order (“GEO”) in connection with such motion.  ALJ Charneski issued an initial determination granting the motion for summary determination on March 10, 2009 (Order No. 14).  On April 22, 2009, the Commission determined not to review Order No. 14, and issued a notice requesting briefing on the ALJ’s recommended determination on remedy and bonding and the public interest.  FSI and the Commission Investigative Attorney filed submissions on May 8, 2009.  No other submissions were received. Accordingly, the Commission determined that the appropriate form of relief is a GEO prohibiting the unlicensed entry of hair irons that infringe U.S. Registered Trademark No. 2,660,257 (“CHI®”).  The Commission further determined that the public interest factors did not preclude issuance of a GEO.  Lastly, the Commission determined that the amount of bond to permit temporary importation during the Presidential review period shall be 100 percent of the value of the hair irons that are subject to the order.
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ITC Decides Not To Review Initial Determination In Certain Composite Wear Components (337-TA-644)

By Eric Schweibenz
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Jul
08
On July 7, 2009, the International Trade Commission issued a notice determining not to review the May 8, 2009 Initial Determination (“ID”) issued by ALJ Theodore R. Essex in Certain Composite Wear Components and Products Containing Same (337-TA-644).

In the ID, ALJ Essex found respondents AIAE Engineering Limited and Vega Industries (collectively, “respondents”) in default under Commission Rule 210.16(a)(2) based on respondents failure to participate in discovery.  ALJ Essex further found that respondents’ conduct in the investigation warranted adverse inferences under Commission Rule 210.17, and on that basis found respondents in violation of Section 337.

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ITC Modifies Certain Claim Constructions And Remands Investigation To ALJ Essex In Certain Refrigerators (337-TA-632)

By Eric Schweibenz
|
Jul
08
On July 8, 2009, the U.S. International Trade Commission issued a Notice of its decision to modify certain claim constructions made in the final initial determination; an Order remanding the case to Administrative Law Judge Theodore R. Essex to make findings regarding infringement, validity, and domestic industry that are consistent with the modified claim constructions; and an Opinion setting forth the modified claim constructions in Certain Refrigerators and Components Thereof(Inv. No. 337-TA-632).

The investigation was instituted on February 21, 2008, based on the complaint of Whirlpool Corp., Whirlpool Manufacturing Corp., Whirlpool Patent Corp., and Maytag Corp. (collectively “Whirlpool”).  The respondents are LG Electronics Corp., Inc., LG Electronics, USA, Inc., and LG Electronics Monterrey, Mexico S.A. de C.V. (collectively “LG”).

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Commission Decides Not To Review Initial Determination in Certain Computer Products (337-TA-628)

By Eric Schweibenz
|
Jul
14
On July 13, 2009, the International Trade Commission issued a notice determining not to review the March 16, 2009 Initial Determination (“ID”) in the matter of Certain Computer Products, Computer Components and Products Containing Same (Inv. No. 337-TA-628).  ALJ Theodore R. Essex issued the public version of the ID on April 14.  See our April 24 post.  The Commission instituted the 628 investigation on January 14, 2008 based on a complaint filed by IBM for infringement of three patents -- U.S. Patent Nos. 5,008,829, 5,249,741, and 5,371,852.   The respondents were ASUSTeK Computer, Inc., ASUS Computer International, Pegatron Technology Corp., and Unihan Technology Corp. (collectively, ASUS). In the ID, ALJ Essex found no violation of Section 337 by ASUS because he found that the accused products did not infringe any of the asserted claims of any of the three patents.  On March 30, 2009, IBM filed a petition seeking review of the ID with respect to the finding of infringement.  On that same day, ASUS filed a contingent petition seeking review of the ID with respect to the finding that the ‘829 and ‘741 patents were not invalid. After examining the record, the petitions for review, and the responses thereto, the Commission determined not to review the ID and terminated the investigation.
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