Commission Notices

ITC Issues Limited Exclusion Order And Cease And Desist Orders In Certain Automotive Vehicles (337-TA-722)

By Eric Schweibenz
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Mar
16
On March 10, 2011, the U.S. International Trade Commission issued a notice of issuance of a limited exclusion order and cease and desist orders in Certain Automotive Vehicles and Designs Therefore (Inv. No. 337-TA-722). By way of background, the Complainant in this investigation is Chrysler Group LLC of Auburn Hills, Michigan (“Chrysler”) and the Respondents are Xingyue Group Co., Ltd. of China, Shanghai Xingyue Power Machinery Co., Ltd. of China, Zhejiang Xingyue Vehicle Co. Ltd. of China, Shanghai Tandem Industrial Co., Ltd. of China, Shanghai Xingyue USA, Inc. of City of Industry, California, Boat N RV Supercenter of Rockwood, Tennessee, and Vehicles Online, Inc. of Charlotte, North Carolina. Chrysler filed a Section 337 complaint regarding certain automotive vehicles on May 14, 2010 (seeour May 18, 2010 post), and the ITC instituted an investigation on June 11, 2010 (see our June 15, 2010 post).  The subject matter of this investigation centers around the Jeep Hurricane, which is a 4x4 concept vehicle that was unveiled at the North American International Auto Show in Detroit, Michigan in 2005, by Jeep, a division of Chrysler Group LLC.  Chrysler obtained U.S. Design Patent No. D513,395 (the ‘395 patent) on January 3, 2006, which is directed to an automobile body corresponding to the Jeep Hurricane. On October 12, 2010, Chrysler and respondents including Xingyue Group Co., Ltd. filed an amended joint motion to terminate the pending investigation on the basis of a consent order, and the ALJ issued an order on October 27, 2010, granting the joint motion for termination.  The joint motion to terminate was based on a settlement agreement these respondents will not import, sell, etc. the accused XYJK800 vehicle manufactured by Xingyue, which was alleged to infringe the ‘395 patent. On October 29, 2010, Chrysler filed declarations requesting immediate relief against the then defaulting respondents (Vehicles Online, Inc. and Shanghai Tandem).  Having determined that the statutory requirements were met, the ITC issued a notice ordering relief on March 10, 2011. The relief included (1) cease and desist orders against Vehicles Online, Inc. and Shanghai Tandem concerning automotive vehicles and designs therefor that infringe the ‘395 patent, and (2) a limited exclusion order prohibiting unlicensed entry of automotive vehicles and designs therefor that infringe the ‘395 patent, which are manufactured abroad or imported by or on behalf of Shanghai Tandem (namely, the accused Tandem TDUV800-2).  Since no other issues remained pending, the ITC terminated the investigation.
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ITC Institutes Consolidated Advisory Opinion and Modification Proceeding In Certain Ink Cartridges (337-TA-565)

By Eric Schweibenz
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Mar
22
On March 18, 2011, the ITC issued an order and notice instituting a consolidated advisory opinion and modification proceeding in Certain Ink Cartridges and Components Thereof (Inv. No. 337-TA-565).  The order and notice were issued in response to a joint petition filed on December 13,2010, by two Respondents in the underlying Investigation No. 337-TA-565, Ninestar Technology Co., Ltd. of China, and Ninestar Technology Company, Ltd. of Walnut, California (collectively, “Ninestar”), and a further petition filed on February 3, 2011, by the Complainants in the underlying investigation, Epson Portland, Inc. of Hillsboro, Oregon, Epson America, Inc. of Long Beach, California, and Seiko Epson Corporation of Japan (collectively “Epson”). By way of background, on October 17, 2007, the ITC issued a general exclusion order in Investigation No. 337-TA-565 prohibiting the unlicensed entry of ink cartridges covered by one or more claims of U.S. Patent Nos. 5,615,957; 5,622,439; 5,158,377; 5,221,148; 5,488,401; 6,502,917; 6,550,902; 6,955,422; 7,008,053; and 7,011,397.  The ITC also issued cease and desist orders with respect to several of the above patents to Ninestar Technology Company, Ltd. Ninestar further was the subject of Enforcement Proceedings and a Commission Opinion dated September 24, 2009, determining that Ninestar violated the October 17, 2007, cease and desist orders.  See our September 28, 2009 post for more information. According to the March 18, 2011 Notice, the ITC instituted the consolidated advisory opinion and modification proceeding to determine whether Ninestar’s R-Series ink cartridges infringe any of the patent claims included in the October 17, 2007 general exclusion order or the cease and desist order issued to Ninestar Technology Company, Ltd. and what, if any, modifications to the general exclusion order and/or the cease and desist order issued to Ninestar Technology Company, Ltd. are appropriate. Lastly, Chief ALJ Paul J. Luckern issued a notice indicating that he will be the presiding Administrative Law Judge in this proceeding.
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ITC Decides To Review Initial Determination In Certain Mobile Telephones And Wireless Communication Devices Featuring Digital Cameras (337-TA-703)

By Eric Schweibenz
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Mar
29
On March 25, 2011, the International Trade Commission (the “Commission”) issued a notice determining to review an Initial Determination (“ID”) issued by Chief ALJ Paul J. Luckern on 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”).   In the ID, ALJ Luckern determined there was no violation of Section 337.  More specifically, ALJ Luckern determined that (i) none of Respondents’ accused products infringed the sole claim now at issue: claim 15 of U.S. Patent No. 6,292,218 (the ‘218 patent); (ii) claim 15 of the ‘218 patent is invalid for obviousness under 35 U.S.C. § 103; (iii) the domestic industry requirement is satisfied with respect to the ‘218 patent; and (iv) if the Commission disagrees with the finding of no violation, the Commission should issue a limited exclusion order and cease and desist orders directed to Respondents, and no bond should be required during the Presidential review period.  See our March 18, 2011 post for more details. According to the March 25 notice, Kodak, RIM, Apple, and the Commission Investigative Staff each filed petitions for review of the ID on February 7, 2011.   On February 15, 2011, the parties filed responses to the petitions. After examining the record of the investigation, including the ID and the parties’ submissions, the Commission determined to review the ID in its entirety.  The notice states that the parties are requested to submit briefing on the issues under review and on remedy, the public interest, and bonding.  The notice further states that the Commission is particularly interested in responses to the following questions:
1.  Kodak has argued in its petition for review that the ALJ made a ruling on obviousness with respect to prior art combinations that Kodak did not have an opportunity to address.  The parties should address whether the ALJ permissibly relied on these prior art combinations and whether these combinations render claim 15 invalid for obviousness. 2.  Kodak has argued in its petition for review that the ALJ did not address the claim constructions of the presiding ALJ in Inv. No. 337-TA-663. The parties should address whether the ALJ should have considered the claim constructions in Inv. No. 337-TA-663 and what effect those constructions should have in this case. 3.  Kodak has argued in its petition for review that the ALJ did not address the reexaminations at the U.S. Patent and Trademark Office of the ‘218 patent. The parties should address whether the ALJ should have considered the reexaminations and what effect those reexaminations should have in this case. 4.  Please explain whether, U.S. Patent No. 5,493,335 is prior art, and if so, on what statutory basis.
5.  What is the meaning of “color pixel value” in part (b) of claim 15?  Is it “the value of a color pixel”?  In your answer, address the patent’s discussion of each red, green, or blue element of a display being a “pixel” (column 8 lines 17-28).
Written submissions are due by April 8, 2011, with reply submissions due by April 15, 2011.
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ITC Reviews And Vacates Initial Determination Granting Motion For Summary Determination Of No Domestic Industry in Certain Video Game Systems and Controllers (Inv. No. 337-TA-743)

By Eric Schweibenz
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Apr
01
On March 30, 2011, the International Trade Commission (the “Commission”) issued a notice and order determining to review and vacate ALJ Robert K. Rogers, Jr.’s February 11, 2011 Initial Determination (“ID”) in Certain Video Game Systems and Controllers (Inv. No. 337-TA-743). By way of background, the Complainant in this matter is Motiva, LLC and the Respondents are Nintendo Co., Ltd. and Nintendo of America Inc. (collectively “Nintendo”).  On February 11, 2011, ALJ Rogers granted Nintendo’s motion for summary determination that the economic prong of the domestic industry requirement is not satisfied and terminated the investigation.  See our March 1, 2011 post for more details. According to the March 30 notice, “the Commission has determined to review and vacate the grant of summary determination in the subject ID with respect to the economic prong of the domestic industry requirement.”  The Commission further determined to “remand the investigation to the ALJ to complete the investigation.”  Lastly, the Commission indicated in the notice that an opinion “will issue shortly.”
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ITC Issues Final Determination Of No Violation In Certain Ceramic Capacitors (337-TA-692)

By Eric Schweibenz
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Apr
25
On April 22, 2011, the International Trade Commission (the “Commission”) issued a notice determining that there has been no violation of Section 337 in Certain Ceramic Capacitors and Products Containing Same (Inv. No. 337-TA-692). By way of background, the Complainants in this investigation are Murata Manufacturing Co., Ltd. and Murata Electronics North America, Inc. (collectively, “Murata”).  The Respondents are Samsung Electro-Mechanics Co., Ltd. and Samsung Electro-Mechanics America, Inc. (collectively, “Samsung”).  On December 22, 2010, ALJ E. James Gildea issued the Initial Determination (“ID”) finding that Samsung had not violated Section 337 in connection with the importation into the United States, sale for importation, or sale within the United States after importation of certain multi-layer ceramic capacitors by reason of infringement of certain claims of U.S. Patent Nos. 6,243,254 (the ‘254 patent), 6,014,309 (the ‘309 patent), and 6,266,229 (the ‘229 patent).  ALJ Gildea also determined that a domestic industry exists that practices the ‘254 patent and the ‘229 patent, but not the ‘309 patent.  See our December 22, 2010 post for more details. On February 23, 2011, the Commission issued a notice determining to review the ID in part.  In particular, the Commission determined to review the ID’s findings with respect to the ‘229 patent and specifically the finding that so-called Applicant Admitted Prior Art (the “AAPA”) does not invalidate the asserted claims of the ‘229 patent.  The Commission determined not to review any issues related to the ‘309 and ‘254 patents and terminated those patents from the investigation.  See our February 24, 2011 post for more details. According to the April 22 notice, on March 8, 2011, the parties filed written submissions on the issues under review, remedy, the public interest, and bonding.  The parties filed reply submissions on March 15, 2011. After examining the record of the investigation, the Commission determined that there has been no violation of Section 337.  Specifically, the Commission determined to (1) reverse ALJ Gildea’s finding to the extent that it suggests that the AAPA cannot constitute prior art, and (2) find that the asserted claims of the ‘229 patent are obvious in light of a combination of (i) the AAPA and the knowledge in the art at the time of filing the patent’s priority document, (ii) the AAPA and Nagakari (Japanese unexamined patent application H11-21429), or (iii) the AAPA and the deNeuf product (product samples sold by Murata and provided by Mr. deNeuf).  The Commission also determined to vacate ALJ Gildea’s finding that the AAPA does not anticipate the asserted claims of the ‘229 patent; however, given the Commission’s finding that the asserted claims of the ‘229 patent are invalid for obviousness, the Commission did not reach the issue of anticipation.  The Commission determined to adopt the ALJ’s findings regarding the ‘229 patent in all other respects.  Accordingly, the Commission determined that there has been no violation of Section 337, and terminated the investigation.
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ITC Decides Not To Review Remand Initial Determination In Certain Foam Footwear (337-TA-567)

By Eric Schweibenz
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Apr
27
On April 25, 2011, the International Trade Commission (the “Commission”) issued a notice determining not to review a Remand Initial Determination (“ID”) issued by ALJ Charles E. Bullock on February 9, 2011 in Certain Foam Footwear (Inv. No. 337-TA-567). By way of background, Complainant Crocs, Inc. (“Crocs”) filed a complaint with the ITC naming eleven respondents, alleging violations of Section 337 by infringement of U.S. Patent Nos. 6,993,858 (the ‘858 patent) and D517,789 (the '789 patent) and the Crocs trade dress.  All respondents except Double Diamond Distribution Ltd. and Effervescent, Inc. (collectively, “Respondents”) were terminated from the investigation on the basis of a consent order, settlement agreement, or an undisputed Commission determination of non-infringement.  On April 11, 2008, ALJ Bullock issued an initial determination finding no violation of Section 337 by reason of invalidity of the ‘858 patent and non-infringement/non-satisfaction of the technical prong of the domestic industry requirement concerning the ‘789 patent.  ALJ Bullock made no findings regarding the enforceability of the ‘858 and ‘789 patents.  On July 25, 2008, the ITC affirmed ALJ Bullock’s initial determination with certain modifications and clarifications.  Crocs appealed the ITC decision and on February 24, 2010, the Federal Circuit overturned the ITC’s findings regarding invalidity of the ‘858 patent and non-infringement/non-satisfaction of the technical prong of the domestic industry requirement concerning the ‘789 patent, remanding the investigation for a determination of infringement and any appropriate remedies.  See our February 24, 2010 post for more details.  ALJ Bullock determined in a notice dated August 26, 2010, that “the issue of enforceability was tried before the undersigned and fully briefed by the parties in their post-trial submissions…[and thus] the remand proceedings will proceed on the evidence already of record.”  On February 9, 2011, ALJ Charles E. Bullock issued the remand ID determining that Respondents had not shown by clear and convincing evidence that the ‘858 patent and the '789 patent are unenforceable due to inequitable conduct. In the April 25 notice, the Commission determined not to review the remand ID.  Also, the Commission determined “to reaffirm the ALJ’s previous ruling that claims 1 and 2 of the ‘858 patent are infringed by Effervescent’s accused products, and that claim 2 of the ‘858 patent is infringed by Double Diamond’s accused products.”  The Commission further determined that “[t]hese actions, along with the Federal Circuit’s decision, result in a finding of a violation of section 337 by [Respondents].” According to the April 25 notice, the parties' written submissions on the issues of remedy, the public interest, and bonding are due on May 6, 2011.  Reply submissions are due on May 13, 2011.
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ITC Extends Target Date And Makes Supplemental Briefing Request Relating To Domestic Industry Issues In Certain Multimedia Display And Navigation Devices And Systems (337-TA-694)

By Eric Schweibenz
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Apr
28
On April 18, 2011, the International Trade Commission (the “Commission”) issued a notice determining to extend the target date for completion of the investigation from April 18, 2011 to June 17, 2011 in Certain Multimedia Display And Navigation Devices And Systems (337-TA-694).  In the notice, the Commission also requested supplemental briefing from the public and from the parties to the investigation with respect to certain domestic industry-related issues. By way of background, the Complainants in this investigation are Pioneer Corporation and Pioneer Electronics (USA), Inc. (collectively, “Pioneer”) and the Respondents are Garmin International, Inc. and Garmin Corp. (collectively, “Garmin”).  In the ID, ALJ Charneski determined there was no violation of Section 337.  Specifically, ALJ Charneski determined that (i) Garmin’s accused products do not infringe the asserted claims of the Patent Nos. 5,365,448, 5,424,951, and 6,122,592 (the ‘592 patent), (ii) Respondents did not show by clear and convincing evidence that any claim of the ‘592 patent is invalid due to obviousness or lack of written description, and (iii) Complainants satisfied the domestic industry requirement with respect to the asserted patents.  See our February 11, 2011 post for more details.  On February 23, 2011, the Commission determined to review the ID in part.  See our February 28, 2011 post for more details. The April 18 notice includes the following supplemental briefing request:
A domestic industry may be shown to exist, inter alia, by ‘substantial investment’ in the ‘exploitation’ of an asserted patent.  19 U.S.C. § 1337(a)(3)(C).  Such investment may take the form of ‘engineering, research and development, or licensing,’ but other kinds of investments are not precluded.  See Certain Coaxial Cable Connectors and Components Thereof and Products Containing Same, Inv. No. 337-TA-650, Comm’n Op. at 45 (Apr. 14, 2010).  The following questions explore the domestic industry requirement in the context of a complainant that invests in licensing a patent portfolio, which includes the asserted patent among the licensed patents. (1)  Assuming that the evidence in the record does not show the patent asserted in a section 337 investigation to have more or less value than the rest of the patents of a portfolio, to what extent should the Commission attribute total expenses in licensing the portfolio toward the complainant’s investment in exploitation of the asserted patent under section 337(a)(3)(C)?  Please comment on whether the statute authorizes the Commission to allocate to the asserted patent the amount of the total expenses divided by the number of patents in the portfolio? (2)  Assuming that the statute authorizes allocation of total licensing expenses across all of the patents in the portfolio, what is the significance of evidence demonstrating that at the time the licensing expenses were incurred, the complainant did or did not present information to potential licensees that the asserted patent was being practiced or infringed by the respondent or a third party?  What is the significance of evidence showing that the asserted patent was more or less important or valuable than the others in the portfolio?  What is the significance of evidence indicating that, while total expenses in licensing a portfolio may be substantial, the share of the expenses allocated to the asserted patent is not? (3)  In light of any practical benefits of licensing a group of patents in a portfolio rather than licensing patents individually, does the statute permit expenses in the licensing of an entire portfolio to be considered an investment in the exploitation of the individual asserted patent? (4)  How should licensing expenses and activities relating to (a) cross-licenses and (b) global portfolio licenses (i.e., U.S. and foreign patents) be treated under section 337(a)(3)(C)? (5)  What is the nature and extent of the ‘nexus’ between an asserted patent and a licensing expense or activity that is sufficient to prove that such expense or activity constitutes an investment in the asserted patent?  What factors should be considered in determining whether the required nexus is established?  What is the evidentiary showing required to prove a nexus between the asserted patent and the licensing activities and expenses in the context of a portfolio license? (6)  Is a ‘nexus’ between an asserted patent and a licensing activity sufficient to prove that expenses associated with that licensing activity are an investment in the asserted patent under section 337(a)(3)(C) even if other patents are involved?  See ID at 165 (citing Certain 3G Wideband Code Division Multiple Access (WCDMA) Handsets and Components Thereof, Inv. No. 337-TA-601, Order No. 20 (unreviewed ID) (June 24, 2010)).  If a ‘nexus’ is sufficient, is the strength of that nexus relevant in determining the amount of investment in the asserted patent(s)?  For example, is the number of patents included in a license relevant in determining the amount of investment in an asserted patent(s) compared to the expenses generally associated with licensing all of the patents?  Is the breadth of technology covered by the portfolio, as a whole, relative to the breadth of technology covered by the asserted patent(s) relevant in determining the amount of investment in the asserted patent(s)? (7)  In Certain Stringed Musical Instruments and Components Thereof, Inv. No. 337-TA-586, the Commission noted that ‘the requirement for showing the existence of a domestic industry will depend on the industry in question, and the complainant’s relative size.’  Comm’n Op. at 25-26 (May 16, 2008).  Please comment on the appropriate context for determining whether a complainant’s investments in licensing a portfolio of patents, which includes the asserted patent, is ‘substantial’ within the meaning of section 337(a)(3)(C) in a particular industry?  In other words, in determining whether appropriately identified investments in licensing the portfolio constitute a ‘substantial investment in [the asserted patent’s] exploitation’ within the meaning of the statute, against what specific measure should those investments be assessed?  In discussing the context for determining whether portfolio licensing investments are substantial, please discuss relevant factors, criteria, and evidence that should be considered in determining whether the complainant’s licensing investments are ‘substantial’ in the context of a portfolio license.  Please include in the discussion, how these factors, criteria, and evidence may vary depending on the industry in question and complainant’s relative size. (8)  Please comment on the significance of whether and to what extent the complainant receives royalties under the license agreement or acquires other rights or benefits as a result of a portfolio license in assessing whether the complainant’s licensing expenses and activities constitute a ‘substantial investment in [the asserted patent’s] exploitation.’ (9)  Please comment on the significance of whether and to what extent a complainant engages in ancillary exploitation activities that frequently accompany licensing efforts, such as development, engineering, or servicing of licensed articles, in assessing whether a complainant has made a ‘substantial investment in [the asserted patent’s] exploitation’ through licensing. (10)  For the parties to the investigation only: a.  Please cite and discuss the specific evidence of record in this investigation supporting your position as to each of the above questions. b.  Assuming the licensing efforts of complainant Pioneer and Discovision Associates are viewed together, to what extent did the expenses in licensing Pioneer’s navigation portfolio (before Pioneer retained outside counsel) represent Pioneer’s investment in licensing the asserted patents?  Please support your response with citations to the record. c.  Please comment on the weight that should be given to documents concerning complainant’s licensing activities and expenses from which information has been redacted.  Please discuss the significance, vel non, of the content of the redacted documents to the complainant’s licensing activities and investments in view of such redactions.
Written submissions of the parties to the investigation are due by May 3, 2011, with reply submissions due by May 17, 2011.  Written submissions from members of the public will be accepted anytime on or before May 17, 2011.
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ITC Extends Supplemental Briefing Schedule In Certain Multimedia Display And Navigation Devices And Systems (337-TA-694)

By Eric Schweibenz
|
May
02
Further to our April 28, 2011 post, on April 29, 2011, the International Trade Commission issued a notice determining to extend the supplemental briefing schedule relating to certain domestic industry-related issues by seven days in Certain Multimedia Display And Navigation Devices And Systems (337-TA-694). According to the April 28 notice, written submissions of the parties to the investigation are now due by May 10, 2011, with reply submissions now due by May 24, 2011.  Written submissions from members of the public will now be accepted anytime on or before May 24, 2011.
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ITC Decides To Review Initial Determination In Certain Flash Memory And Products Containing Same (337-TA-685)

By Eric Schweibenz
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May
02
On April 29, 2011, the International Trade Commission (the “Commission”) issued a notice determining to review an Initial Determination (“ID”) issued by ALJ Carl C. Charneski on February 28, 2011 in Certain Flash Memory and Products Containing Same (Inv. No. 337-TA-685). By way of background, the Complainant in this investigation is Samsung Electronics, Co., Ltd. (“Samsung”) and the Respondents are Spansion, Inc. and Spansion LLC and D-Link Corp. and D-Link Systems, Inc. (collectively, “Respondents”).  In the ID, ALJ Charneski determined there is a violation of Section 337, and more specifically determined that (i) Respondents’ accused products infringe asserted claims 8 and 12 of U.S. Patent No. 5,740,065 (the ’065 patent); (ii) Respondents did not show by clear and convincing evidence that any claim of the ‘065 patent is invalid due to anticipation, indefiniteness, or lack or written description; and (iii) Samsung satisfied the domestic industry requirement with respect to the ‘065 patent.  See our April 1, 2011 post for more details. According to the April 29 notice, Respondents and the Commission Investigative Staff each filed petitions on March 14, 2011, for review of the ALJ’s findings on claim construction, infringement, invalidity, and domestic industry.   On March 22, 2011, Samsung filed responses to the petitions. After examining the record of the investigation, including the ID and the parties’ submissions, the Commission determined to review the following aspects of the ID: (1) the construction of the term “extracting an optimal working condition by accumulatively averaging working conditions of lots previously processed” of claim 8 of the ‘065 patent; (2) the finding that Spansion’s accused run-to-run alignment and exposure controllers infringe claims 8 and 12 of the ‘065 patent; (3) that Japanese Unexamined Patent Application Publication H5-47893, entitled “Adjustment Method for Semiconductor Manufacturing Apparatus” does not anticipate claim 8 of the ‘065 patent; (4) that claim 8 is not invalid for failing to satisfy the written description requirement; (5) that claims 1, 8, and 12 of the ‘065 patent are not invalid as indefinite; and (6) that Samsung’s Exposure Parameter Optimization System practices claim 1 of the ‘065 patent. The notice further requested the parties to submit briefing on the issues under review and on remedy, the public interest, and bonding.  The notice also stated that the Commission is particularly interested in responses to the following questions: 1.  Please address whether it is appropriate to apply a plain, ordinary meaning analysis in construing the claim term “accumulatively averaging” even though this term is admittedly a “coined term.” In discussing this issue, please address the following questions: 
  • If an ordinary meaning analysis of “accumulatively averaging” is appropriate, does the experts’ testimony concerning the understanding of one of ordinary skill in the art in any way conflict with the meaning of the claim language as informed by the intrinsic evidence? 
  • If an ordinary meaning analysis is appropriate, what is the definition of the word “accumulatively” and how does the meaning of the word “accumulatively” affect the correct construction of “accumulatively averaging?” 
  • If an ordinary meaning analysis is appropriate, how does the definition of “accumulatively” fit into the context of the purpose of the ‘065 invention in terms of effective automatic process control? 
  • If “accumulatively averaging” should be construed according to its ordinary meaning, how would such an analysis affect the validity of claim 1?
2.  Please address Samsung’s expert, Dr. Watts’ admission that, under Samsung’s broad interpretation of “accumulatively averaging” as encompassing all types of averaging, the limitation could read on averaging operations that are not useful for the process control procedure disclosed in the ’065 patent. See Watts, Tr. 861:16 - 862:3. 3.  With respect to the claim construction of the “working conditions” limitation, please address the following questions:
  • Should the “process parameter values” recited in claim 11 be read into claim 8?
  • How does the meaning of the phrase “according to” in col. 5, ln. 46 of the ‘065 specification inform the interpretation of the phrase “based on” recited in claim 8?
  • Are there any specific examples available from the evidence of record that may shed light on when a process parameter variable that is not specifically a machine setting may be used in a semiconductor manufacturing process as disclosed in the ‘065 patent?  In considering this question, please also address how such a parameter might then be converted to the proper units or axis for a particular piece of processing equipment.
4.  Please address in depth whether the particular type of averaging used in Spansion’s accused process satisfies the “accumulative1y averaging” limitation under the doctrine of equivalents. 5.  Please address whether claim 8 satisfies the written description requirement if the claim limitation “extracting an optimal working condition by accumulatively averaging” is limited to Equation (1) disclosed in the ‘065 patent, where Equation (1) may represent to one of ordinary skill in the art a moving average or a weighted or unweighted average. 6.  Please address whether claims 1, 8, and 12 of the ‘065 patent are indefinite if the “accumulatively averaging” limitation is construed to include a moving average or a weighted or unweighted average. Written submissions are due by May 16, 2011, with reply submissions due by May 23, 2011.
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ITC Issues Notice Regarding Reduced Role Of The Office Of Unfair Import Investigations In Section 337 Actions

By Eric Schweibenz
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May
06
On May 2, 2011, the International Trade Commission (the “Commission”) issued a notice in the Federal Register stating that the Commission is adopting a rule amendment whereby the Office of Unfair Import Investigations (the “Commission Investigative Staff” or “OUII”) will be reducing its role in Section 337 actions.  In particular, the notice states that, going forward, OUII will not participate in a subset of Section 337 cases and will only participate selectively in another subset of cases.  By way of background, see our June 17, 2010 post for more details on the origins and historical role of OUII. The May 2 notice follows the issuance of the Commission’s Supplement to the Strategic Human Capital Plan 2009-2013 (the “Report”) on January 18, 2011, which called for a reduction in OUII’s role in view of budget constraints.  The Report states that, going forward, “OUII will give the highest priority to certain functions that draw upon its particular expertise while eliminating or reducing efforts devoted to other functions.”  To that end, OUII will continue to review draft complaints prior to filing and advise the Commission on whether to institute investigations.  However, after an investigation is instituted, the Report requests that “OUII place the highest priority on issues unique to section 337 and continue its efforts:  a) to ensure that the investigation is fully developed, b) to resolve procedural disputes without the need to resort to the presiding ALJ, and c) to facilitate settlement.” Accordingly, the Report states that “in certain investigations, OUII will participate in a selective manner on those issues on which it is able to provide the greatest added value and expertise.”  Additionally, “OUII will cease to be a party altogether in a subset of section 337 cases, which are less likely to draw upon its expertise.” The Report states that these changes are “in no way an adverse reflection on the quality or importance of OUII’s past contributions, but rather an effort by the Commission to take a balanced approach to adequately funding the ITC’s statutory missions and meeting government-wide obligations in a prudent, fiscally responsible manner.” In view of the above, the Report states that the Commission will allow a vacant OUII supervisory attorney slot to be filled, and two OUII staff attorneys that were brought on pursuant to over-hire authority, to remain.  However, the number of OUII staff attorneys will be allowed to fall from the current 17 (which includes the two over-hires) to 15 through attrition. The new rule took effect as of May 2, the date of the notice.  According to the notice, “[t]he new rule will have no substantive effect on Commission practice in conducting Section 337 investigations” but “will allow OUII the flexibility to reassign attorneys to cases as necessary without having to publish notices announcing the change in the Federal Register.”
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ITC Decides To Review Initial Determination Finding That Complainants Satisfy The Economic Prong Of The Domestic Industry Requirement In Certain Personal Data And Mobile Communications Devices (337-TA-710)

By Eric Schweibenz
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May
10
On May 9, 2011, the International Trade Commission (the “Commission”) issued a notice determining to review an Initial Determination (“ID”) issued by ALJ Carl C. Charneski on April 7, 2011 finding that Complainants Apple Inc. and NeXT Software, Inc. (collectively, “Apple”) have satisfied the economic prong of the domestic industry requirement in Certain Personal Data and Mobile Communications Devices and Related Software (337-TA-710).  On review, the Commission determined to modify the ID on the basis that the disputed issue is moot. By way of background, the Commission instituted this investigation on April 6, 2010, based on Apple’s complaint alleging a violation of Section 337 by Respondents High Tech Computer Corp., HTC America Inc., and Exedia, Inc. (collectively, “HTC”).  According to the May 9 notice, several patents originally asserted by Apple in the investigation were earlier asserted by Apple against Nokia Corp. and Nokia Inc. (collectively, “Nokia”) in Inv. No. 337-TA-704.  On motion by the Commission Investigative Staff (“OUII”) and by the Respondents in both investigations, Chief ALJ Paul J. Luckern transferred Apple’s assertion of overlapping patents against Nokia from the 704 investigation into the 710 investigation. On February 18, 2011, Apple moved for summary determination that the economic prong of the domestic industry requirement was satisfied by virtue of, inter alia, Apple’s research and development (“R&D”) and engineering activities.  On March 3, 2011, Nokia filed an opposition to Apple’s motion, which HTC subsequently joined.  OUII also opposed Apple’s motion.  OUII argued that the Commission’s opinion in Certain Printing and Imaging Devices and Components Thereof, Inv. No. 337-TA-690 (Feb. 17, 2011), requires a context-dependent analysis of the marketplace, which Apple had not provided.  See our February 22, 2011 post for more details on the Commission opinion in the 690 investigation.  On March 9, 2011, Apple filed a reply noting that the Printing and Imaging Devices opinion had been released only the day before Apple filed its motion.  The reply also clarified Apple’s factual assertions so as to provide context for the engineering and R&D expenditures. On April 6, 2011, ALJ Charneski granted Apple’s motion as an ID.  The ALJ held that to “the extent that the Staff argues that a context-dependent analysis is required by the Commission in the Printing and Imaging Devices case, the Staff is wrong.”  ALJ Charneski distinguished the Printing and Imaging Devices opinion on the basis that, among other things, the products there “were no longer sold and were never manufactured in the United States.” On April 8, 2011, OUII petitioned for review of the ID.  OUII noted that the ID, after stating that a context-dependent analysis was unnecessary, proceeded to perform such a context-dependent analysis using information included in Apple’s reply.  OUII recommended that the ID be modified to remove the suggestion that a context-dependent analysis is unnecessary. On April 15, 2011, Apple filed an opposition agreeing with OUII that ALJ Charneski performed the appropriate context-dependent inquiry, but arguing that as a result Commission review was inappropriate.  Nokia and HTC neither petitioned for review of the ID nor responded to OUII’s petition. According to the May 9 notice, after reviewing the record of the investigation, the Commission determined to review the ID and, upon review, to modify it.  In particular, the Commission determined to strike certain language from the ID relating to ALJ Charneski’s analysis of OUII”s argument relating to the Printing and Imaging Devices opinion and its effect on the instant investigation.  The notice states that “the Commission has determined that the issue raised by [OUII] is moot.”  According to the notice, “[t]here is no dispute that Apple has satisfied the economic prong of the domestic industry requirement; there is only a now-academic dispute about the methodology the ALJ should have followed in reaching his unchallenged conclusion.”  Accordingly, the Commission determined to modify the ID to remove the discussion relating to this “now-academic dispute.”
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ITC Issues Final Determination Of Violation In Certain MEMS Devices (337-TA-700)

By Eric Schweibenz
|
May
11
On May 10, 2011, the International Trade Commission (the “Commission”) issued a notice determining to affirm-in-part and reverse-in-part ALJ Robert K. Rogers, Jr.’s December 23, 2010 Initial Determination (“ID”) in Certain MEMS Devices and Products Containing Same (Inv. No. 337-TA-700).  The Commission further determined to terminate the investigation with a final determination of violation of Section 337, and to issue a limited exclusion order. By way of background, the Complainant in this investigation is Analog Devices, Inc.  The Respondents are Knowles Electronics LLC and Mouser Electronics, Inc. (collectively, the “Respondents”).  In the ID, ALJ Rogers determined that the Respondents had violated Section 337 with respect to U.S. Patent No. 7,364,942 (the ‘942 patent) but had not violated Section 337 with respect to U.S. Patent No. 7,220,614 (the ‘614 patent).  See our February 4, 2011 post for more details. On March 7, 2011, the Commission determined to review certain findings in the ID and to request that the parties prepare written submissions responding to various questions concerning the issues under review.  The Commission also requested written submissions on remedy, the public interest, and bonding.  See our March 8, 2011 post for more details. After examining the record of the investigation, including the ID and the parties’ written submissions, the Commission determined to affirm-in-part and reverse-in-part the ID’s findings under review.  In particular, the Commission determined to reverse ALJ Rogers’s finding that U.S. Patent No. 5,597,767 does not incorporate by reference U.S. Patent Nos. 5,331,454 and 5,512,374, but to affirm all of the other issues under review.  Accordingly, the Commission found a violation of Section 337 with respect to claims 2-6 and 8 of the ‘942 patent, and terminated the investigation. The Commission additionally determined that the appropriate form of relief is a limited exclusion order prohibiting the unlicensed entry of MEMS devices and products containing the same that infringe claims 2-6 and 8 of the ‘942 patent that are manufactured abroad by or on behalf of, or are imported by or on behalf of, the Respondents or any of their affiliated companies, parents, subsidiaries, licensees, contractors, or other related business entities, or successors or assigns. Lastly, the Commission determined that the public interest factors do not preclude issuance of the limited exclusion order and that no bond is required to permit temporary importation during the Presidential review period.
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OUII Issues Notice Regarding Partial Participation In Certain Digital Televisions (337-TA-764)

By Eric Schweibenz
|
May
18
On May 16, 2011, the Office of Unfair Import Investigations (“OUII”) issued a notice in Certain Digital Televisions and Components Thereof, and Certain Electronic Devices Having a Blu-Ray Disc Player and Components Thereof (Inv. No. 337-TA-764).  According to the notice, OUII’s participation in this investigation will be limited to issues relating to U.S. Patent No. 7,701,835, 7,577,080, 7,619,961, and 7,756,398.  Thus, OUII will only participate on issues dealing with four of the eight asserted patents. According to the notice, the supplement to the Strategic Human Capital Plan 2009-2013, issued by the Commission on January 18, 2011, mandated that on a trial basis, OUII will implement a number of alternative staffing approaches in Section 337 investigations.  “One such staffing approach is that OUII will participate in a ‘selective manner’ in certain investigations.”  For more details regarding OUII’s reduced role in Section 337 investiations, see our May 6, 2011 post.
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ITC Decides To Review In Part Initial Determination In Certain Electronic Devices (337-TA-701)

By Eric Schweibenz
|
May
27
On May 26, 2011, the International Trade Commission (the “Commission”) issued a notice determining to review in part an Initial Determination (“ID”) issued by ALJ E. James Gildea on March 25, 2011 finding no violation of Section 337 in Certain Electronic Devices, Including Mobile Phones, Portable Music Players, and Computers (Inv. No. 337-TA-701). By way of background, the Complainants in this investigation are Nokia Corporation and Nokia Inc (collectively, “Nokia”) and the Respondent is Apple Inc. (“Apple”).  In the ID, ALJ Gildea determined that no violation of Section 337 had occurred by Apple in the importation into the U.S., sale for importation, or sale within the U.S. after importation of certain electronic devices, including mobile phones, portable music players, or computers by reason of infringement of U.S. Patent Nos. 6,518,957 (the ‘957 patent), 6,714,091 (the ‘091 patent), 6,834,181 (the ‘181 patent), 6,895,256 (the ‘256 patent), or 6,924,789 (the ‘789 patent).  See our May 11, 2011 post for more details. According to the May 26 notice, Nokia and the Commission Investigative Staff (“OUII”) each filed petitions for review of the ID on April 11, 2011.  That same day, Apple filed a contingent petition for review of the ID.  On April 19, 2011, Nokia and Apple filed responses to the various petitions and contingent petition for review.  OUII filed a combined response to Nokia’s petition for review and Apple’s contingent petition for review on April 22, 2011. After examining the record of the investigation, including the ID and the parties’ submissions, the Commission determined to review the ID in part.  In particular, the Commission determined to review the ID’s findings related to the ‘181 and ‘256 patents.  The Commission determined not to review any issues related to the ‘957, ‘091, and ‘789 patents, and terminated those patents from the investigation. The notice states that the parties are requested to submit briefing on the issues under review and on remedy, the public interest, and bonding.  The notice further states that the Commission is particularly interested in responses to the following questions: (1) Does the claim term “multiple acoustic cavities each having an acoustic volume” recited in asserted claim 1 of the ‘181 patent require each “acoustic cavity” to possess any particular acoustic property? (2) Assuming that the ‘181 patent does not require each “acoustic cavity” to possess any particular acoustic properties, does Marqvardsen (International Publication No. WO 00/38475) anticipate asserted claim 1?  See ID at 117. (3) Do the accused products satisfy the “Integrated Mobile Terminal Processor” limitation recited in asserted claim 1 of the ‘256 patent under the ALJ’s construction of that limitation?  See Markman Order (Order No. 53) at 41-43. Written submissions are due by June 9, 2011, with reply submissions due by June 16, 2011.
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ITC Issues Final Determination Of No Violation In Certain Multimedia Display And Navigation Devices And Systems (337-TA-694)

By Eric Schweibenz
|
Jun
27
On June 24, 2011, the International Trade Commission (the “Commission”) issued a notice determining to affirm, on modified grounds, ALJ Carl C. Charneski’s December 16, 2010 Initial Determination (“ID”) finding no violation of Section 337 in Certain Multimedia Display and Navigation Devices and Systems, Components Thereof, and Products Containing Same (Inv. No. 337-TA-694).  The Commission further determined to terminate the investigation. By way of background, the Complainants in this investigation are Pioneer Corporation and Pioneer Electronics (USA) Inc. (collectively, “Pioneer”) and the Respondents are Garmin International, Inc. and Garmin Corporation (collectively, “Garmin”).  In the ID, ALJ Charneski determined that there was no violation of Section 337.  Specifically, ALJ Charneski determined that (i) Garmin’s accused products do not infringe the asserted claims of U.S. Patent Nos. 5,365,448 (the ‘448 patent), 5,424,951 (the ‘951 patent), and 6,122,592 (the ‘592 patent), (ii) Garmin did not show by clear and convincing evidence that any claim of the ‘592 patent is invalid due to obviousness or lack of written description, and (iii) Pioneer satisfied the domestic industry requirement with respect to the asserted patents.  See our February 11, 2011 post for more details.  On February 23, 2011, the Commission determined to review the ID in part and to request that the parties prepare written submissions responding to various questions concerning the issues under review.  The Commission also requested briefing on remedy, the public interest, and bonding.  See our February 28, 2011 post for more details.  On April 18, 2011, the Commission determined to extend the target date and to request supplemental briefing in connection with certain issues relating to domestic industry.  Seeour April 28, 2011 post for more details. After examining the record of the investigation, including the ID and the parties’ written submissions, the Commission determined to affirm, on modified grounds, ALJ Charneski’s finding that Garmin has not violated Section 337.  In particular, the Commission determined to reverse ALJ Charneski’s finding that Garmin’s products do not infringe the asserted claims of the ‘951 patent, affirm the ALJ’s finding that Garmin’s products do not infringe the asserted claims of the ‘592 patent, reverse the ALJ’s finding that the asserted claims of the ‘592 patent are not invalid under the written description requirement, and reverse the ALJ’s finding that Pioneer has established a licensing-based domestic industry for the ‘951 and ‘592 patents.  The notice states that the ‘448 patent is no longer asserted in the investigation.  Accordingly, the Commission terminated the investigation with a final determination of no violation of Section 337.
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ITC Issues Final Determination Of No Violation In Certain Electronic Devices With Multi-Touch Enabled Touchpads And Touchscreens (337-TA-714)

By Eric Schweibenz
|
Jul
06
On June 30, 2011, the International Trade Commission (the “Commission”) issued a notice determining to review in part an Initial Determination (“ID”) issued by Chief ALJ Paul J. Luckern on April 29, 2011 finding no violation of Section 337 in Certain Electronic Devices with Multi-Touch Enabled Touchpads and Touchscreens (Inv. No. 337-TA-714).  In particular, the Commission determined to review and take no position on ALJ Luckern’s claim construction finding that the “scanning” step of independent claim 1 requires a specific temporal order, and the ALJ’s related finding of collateral estoppel.  The Commission further determined to adopt the remainder of the ID to the extent that it is not based on these claim construction rulings, and to terminate the investigation with a final determination of no violation of Section 337. By way of background, the Complainant in this investigation is Elan Microelectronics Corporation (“Elan”) and the Respondent is Apple Inc (“Apple”).  In the ID, ALJ Luckern determined that no violation of Section 337 had occurred by Apple in the importation into the U.S., the sale for importation, or the sale within the U.S. after importation of certain electronic devices with multi-touch enabled touchpads and touchscreens by reason of infringement of U.S. Patent No. 5,825,352 (the ‘352 patent).  In particular, the ALJ found that Elan had failed to show that any of Apple’s accused products infringe the asserted claims of the ‘352 patent and that Apple had failed to establish that the asserted claims of the ‘352 patent are invalid.  ALJ Luckern also determined that Elan had not established a domestic industry.  See our May 2, 2011 post for more details. According to the June 30 notice, Elan filed a petition for review on May 16, 2011.  That same day, Apple filed a contingent petition for review.  On May 24, 2011, Elan, Apple, and the Commission Investigative Staff responded to the petitions for review. After examining the record of the investigation, including the ID and the submissions of the parties, the Commission determined to review and take no position on ALJ Luckern’s claim construction ruling in his Order No. 17 that the “scanning” step of independent claim 1 requires a specific temporal order for elements (a) to (c), and his related finding of collateral estoppel.  See our May 5, 2011 post for more details on Order No. 17.  The Commission also determined to adopt the remainder of the ID to the extent that it is not based on these claim construction rulings.  Lastly, the Commission determined to terminate the investigation with a final determination that Apple has not violated Section 337.
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ITC Reverses-In-Part And Remands Initial Determination In Certain Mobile Telephones And Wireless Communication Devices Featuring Digital Cameras (337-TA-703)

By Eric Schweibenz
|
Jul
06
On June 30, 2011, the International Trade Commission issued a notice determining to reverse-in-part, affirm-in-part, and remand for further proceedings an initial determination (“ID”) issued by Chief ALJ Paul J. Luckern on January 24, 2011 in Certain Mobile Telephones and Wireless Communication Devices Featuring Digital Cameras, and Components Thereof (Inv. No. 337-TA-703).  In the notice, the Commission determined to modify ALJ Luckern’s construction of various claim terms and remand questions of infringement, invalidity, and/or waiver of certain infringement arguments. 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”).   In the ID, ALJ Luckern determined there was no violation of Section 337.  More specifically, ALJ Luckern determined, inter alia, that (i) none of Respondents’ accused products infringed the sole claim now at issue: claim 15 of U.S. Patent No. 6,292,218 (the ‘218 patent); (ii) claim 15 of the ‘218 patent is invalid for obviousness under 35 U.S.C. § 103; and (iii) the domestic industry requirement is satisfied with respect to the ‘218 patent.  See our March 18, 2011 post for more details.  On March 25, 2011, the Commission issued a notice determining to review ALJ Luckern’s ID in its entirety and requesting further briefing with respect to invalidity and claim construction.  See our March 29, 2011 post for more details. In the June 30 notice, the Commission modified ALJ Luckern’s construction of the claim terms “motion processor” and “still processor,” and remanded the issue of infringement of these limitations.  The Commission also modified the construction of “at least three different colors” in the limitation “a second number of color pixel values provided in a second color pattern having at least three different colors,” and determined that the accused products infringe this limitation.  The Commission also modified the construction of “initiating capture of a still image while previewing a motion image,” and found that the Apple iPhone 3G and the RIM accused products practice this limitation, but affirmed ALJ Luckern’s determination that Kodak has waived the argument that in a flash-photography mode of operation the Apple iPhone 3GS and Apple iPhone 4 practice this limitation. The Commission found that the Apple iPhone 3GS and iPhone 4 do not literally infringe the asserted claim in their non-flash-photography modes of operation, and remanded to ALJ Luckern to determine whether Kodak waived its opportunity to argue that the iPhone 3GS and iPhone 4 in their non-flash modes infringe this limitation under the doctrine of equivalents, and if not, whether these products practice the limitation under the doctrine of equivalents.   Based on the above claim construction modifications, the Commission also provided ALJ Luckern and Respondents an opportunity to revisit invalidity under 35 U.S.C. §§ 102 and 103 on remand. The Commission affirmed the remaining matters in ALJ Luckern’s ID, including the constructions of other claim terms, validity under 35 U.S.C. § 112, enforceability, domestic industry, and exhaustion. Finally, the Commission extended the target date by two months, to August 30, 2011, to provide the ALJ with sufficient time to extend the target date for himself based on further remand proceedings.
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ITC Issues Proposed Rules and Procedures for Electronic Filing

By Eric Schweibenz
|
Jul
07
On July 6, 2011, the International Trade Commission (the “Commission”) issued a Notice of Proposed Rulemaking and a Notice of Proposed Handbook on Filing Procedures.  These notices are directed to proposed amendments of the Commission’s rules of practice and procedure and electronic filing procedures, respectively. Under the Commission’s proposed amendments, most documents would be required to be filed electronically.  Certain filings would require electronic filing, followed by a paper filing.  The notices provide that the amendments are intended to “increase efficiency in processing documents filed with the Commission, reduce Commission expenditures, and conform agency processes to Federal Government initiatives.”  Under the proposed amendments, parties would continue to electronically file both public and confidential documents using the Commission’s Electronic Document Information System (EDIS).  EDIS, upon submission of a document, would transmit a notice of electronic receipt to the parties.  That notice, however, will not necessarily constitute service of the document.  Specifically, with regard to Section 337 investigations, the presiding ALJ will determine whether electronic service should be permitted and parties will be required to provide written consent in order to be served electronically. The Commission indicated it would accept written comments regarding these proposed amendments from the public until August 5, 2011.  The Commission encouraged the public to provide commentary on whether the language of the proposed amendments is sufficiently clear and on how the proposed amendments could be improved, providing specific constructive alternatives where appropriate.  Such comments may be submitted to the Commission via its website, by mail, or by hand delivery.  All comments received regarding these amendments will be posted on the Commission's website.
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ITC Terminates Investigation And Issues General Exclusion and Cease and Desist Orders In Certain Foam Footwear (337-TA-567)

By Eric Schweibenz
|
Jul
20
On July 15, 2011, the International Trade Commission (the “Commission”) issued a notice terminating the investigation and issuing general exclusion and cease and desist orders in Certain Foam Footwear (Inv. No. 337-TA-567).   By way of background, Complainant Crocs, Inc. (“Crocs”) filed a complaint with the ITC naming eleven respondents, alleging violations of Section 337 by infringement of U.S. Patent Nos. 6,993,858 (the ’858 patent), and D517,789 (the ’789 patent).  All respondents except Double Diamond Distribution Ltd., Holey Soles Holding Ltd., and Effervescent, Inc. (collectively, “Respondents”) had been terminated from the investigation on the basis of a consent order, settlement agreement, or an undisputed Commission determination of non-infringement.  On April 11, 2008, ALJ Bullock issued an initial determination finding no violation of Section 337 by reason of invalidity of the ’858 patent and non-infringement/non-satisfaction of the technical prong of the domestic industry requirement concerning the ’789 patent.  ALJ Bullock made no findings regarding the enforceability of the ’858 and ’789 patents.  On July 25, 2008, the ITC affirmed ALJ Bullock’s initial determination with certain modifications and clarifications.  Crocs appealed the ITC decision and on February 24, 2010, the Federal Circuit overturned the ITC’s findings regarding invalidity of the ’858 patent and non-infringement/non-satisfaction of the technical prong of the domestic industry requirement concerning the ’789 patent, remanding the investigation for a determination of infringement and any appropriate remedies.  See our February 24, 2010 post for more details.  On February 9, 2011, ALJ Charles E. Bullock issued the remand ID determining that his first ID with respect to findings of Effervescent’s and Double Diamond’s infringement of the ’858 patent need not be revisited, and that Respondents had not shown by clear and convincing evidence that the ’858 or ’789 patents are unenforceable due to inequitable conduct.  See our April 1, 2011 post for more details.  On April 25, 2011, the Commission determined not to review the remand ID and determined “to reaffirm the ALJ’s previous ruling that claims 1 and 2 of the ‘858 patent are infringed by Effervescent’s accused products, and that claim 2 of the ‘858 patent is infringed by Double Diamond’s accused products.”  The Commission further determined that “[t]hese actions, along with the Federal Circuit’s decision, result in a finding of a violation of section 337 by [Effervescent’s and Double Diamond’s] accused products.”  Seeour April 27, 2011 post for more details. According to the July 15 notice, the Commission determined that Holey Soles infringed the ’789 patent based on the Federal Circuit’s reversal of non-infringement as to the ‘789 patent. The Commission therefore determined that as to remedy, it would issue both: (1) a general exclusion order prohibiting the unlicensed entry of foam footwear that infringe (i) claims 1-2 of the ’858 patent, and/or and (ii) the claimed design of the ’789 patent; and (2) cease and desist orders prohibiting Double Diamond, Effervescent, and Holey Soles from importing, selling, marketing, advertising, distributing, offering for sale, transferring (except for exportation), and soliciting U.S. agents or distributors for foam footwear that infringe (i) claims 1-2 of the ’858 patent, and/or (ii) the claimed design of the ’789 patent. The Commission further determined to require no bond for Double Diamond’s covered products, a bond of $0.01 per pair of shoes for Holey Soles products, a bond of $0.05 per pair of shoes for Effervescent’s products, and a bond of 100% of the entered value for all other covered products to permit temporary importation during the Presidential review period. Finally, the Commission terminated the investigation.
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ITC Decides Not To Review Initial Determination In Certain Digital Imaging Devices And Related Software (337-TA-717)

By Eric Schweibenz
|
Jul
26
On July 18, 2011, the International Trade Commission (the “Commission”) issued a notice determining not to review an Initial Determination (“ID”) issued by ALJ Robert K. Rogers, Jr. on May 12, 2011 determining that there is no violation of Section 337 in Certain Digital Imaging Devices and Related Software (Inv. No. 337-TA-717). By way of background, the Complainant in this matter is Apple, Inc.  The Respondent is Eastman Kodak Company (“Kodak”).     According to the notice, ALJ Rogers issued the ID on May 12, 2011 determining that there is no violation of Section 337 with respect to U.S. Patent Nos. 6,031,964 (the ‘964 patent) and RE38,911 (the ‘911 patent).  See our May 16, 2011 post for more details.  On June 1, 2011, Apple filed a petition for review of the ID relating to the ‘964 patent, but did not petition for review of the ID relating to the ‘911 patent.  On June 9, 2011, the Commission Investigative Staff (“OUII”) and Kodak filed respective responses to Apple’s petition for review.  Neither OUII nor Kodak filed petitions or contingent petitions for review of the ID. In the notice, the Commission stated that it has determined not to review the ID.  This effectively ends the 717 investigation.
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