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ITC Decides Not To Review Initial Determination In Certain Digital Set-Top Boxes (Inv. No. 337-TA-712)

By Eric Schweibenz
|
Jul
26
On July 21, 2011, the International Trade Commission (the “Commission”) issued a notice determining not to review ALJ E. James Gildea’s May 20, 2011 Initial Determination (“ID”) in Certain Digital Set-Top Boxes and Components Thereof (Inv. No. 337-TA-712). By way of background, the Complainants in this investigation are Verizon Communications Inc. and Verizon Services Corp. (collectively “Verizon”).  The Respondent is Cablevision Systems Corp. (“Cablevision”). According to the notice, on January 11, 2011, ALJ E. James Gildea granted Verizon’s motion for summary determination that Verizon satisfied the economic prong of the domestic industry requirement under 19 U.S.C. § 1337(a)(3).  See our February 3, 2011 post for more details.  On January 20, 2011, Cablevision filed a petition for review.  On January 27, 2011, Verizon and the Commission Investigative Staff filed a response to Cablevision’s petition for review.  On February 11, 2011, the Commission determined to review ALJ Gildea’s determination to grant Verizon’s motion for summary determination. In addition, ALJ Gildea issued the ID on May 20, 2011 determining that a violation of Section 337 had occurred by Cablevision in the importation into the United States, the sale for importation, or the sale within the United States after importation of certain digital set-top boxes and components thereof by reason of infringement of claim 13 of U.S. Patent No. 6,381,748 (the ‘748 patent).  ALJ Gildea further determined that no violation of Section 337 had occurred by Cablevision in connection with U.S. Patent Nos. 5,666,293 (the ‘293 patent), 5,635,979 (the ‘979 patent), 6,367,078 (the ‘078 patent), and 7,561,214 (the ‘214 patent).  ALJ Gildea also determined that a domestic industry exists that practices the ‘748 patent, but not the ‘293 patent, the ‘979 patent, the ‘078 patent, and the ‘214 patent.  See our May 23, 2011 and July 8, 2011 posts for more details. In the July 21 notice, the Commission determined not to review the ID.  Also, the Commission determined to affirm-in-part ALJ’s order granting Verizon’s motion for summary determination that it has satisfied the economic prong of the domestic industry requirement under 19 U.S.C. § 1337(a)(3).  Specifically, the Commission determined that “Verizon has satisfied the economic prong of the domestic industry requirement based on its investment in the software development and testing, installation, and support associated with the set-top boxes that were alleged to practice the asserted claims of the patents-in-suit because Verizon’s investments in those activities are ‘substantial’ within the meaning of Section 337(a)(3)(C).”  The Commission otherwise took no position on whether Verizon’s investments in the FiOS network satisfy the economic prong. According to the July 21 notice, the parties’ written submissions on the issues of remedy, the public interest, and bonding are due on August 4, 2011.  Reply submissions are due on August 12, 2011.
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ITC Reviews And Vacates ALJ Luckern Summary Determination Ruling On Domestic Industry In Certain Wireless Communication Devices, Portable Music And Data Processing Devices (337-TA-745)

By Eric Schweibenz
|
Jul
28
On July 22, 2011, the International Trade Commission (the “Commission”) issued a notice determining to review, vacate and remand for further proceedings an initial determination (“ID”) issued by Chief ALJ Paul J. Luckern granting a motion for summary determination on domestic industry issues in Certain Wireless Communication Devices, Portable Music And Data Processing Devices, Computers and Components Thereof (Inv. No. 337-TA-745).  By way of background, the Complainant in this investigation is Motorola Mobility, Inc. (“MMI”) and the Respondent is Apple Inc. (“Apple”).  The Commission instituted this investigation in November 2010.  See our November 5, 2010 post for more details.  On May 25, 2011, MMI filed a motion for summary determination that its domestic activities, including those of its predecessor Motorola Inc., satisfy the domestic industry requirement.  On June 6, 2011, the Commission Investigative Staff (“OUII”) supported MMI’s motion.  On June 6, 2011, Apple filed a response opposing the motion on the basis that there are genuine issues of material fact regarding whether MMI’s domestic investments satisfy Section 337(a)(3)(C).  On June 22, 2011, ALJ Luckern issued the ID, granting MMI’s summary determination motion that it satisfies the domestic industry requirement based on its licensing industry pursuant to Section 337(a)(3)(C).  On June 29, 2011, Apple filed a petition for review.  On July 7, 2011, MMI and OUII filed responses. In the July 22 notice, the Commission determined “to review and vacate the ID and to remand to the ALJ the issue of whether MMI has satisfied the domestic industry requirement in keeping with the Commission’s recent decision in Certain Multimedia Display and Navigation Devices and Systems, Components Thereof, and Products Containing Same, Inv. No. 337-TA-694, Comm’n Op. (July 1, 2011).”  The notice also indicates the “Commission’s reasoning is set forth in its confidential Order issued concurrently with this Notice.”  We will provide additional information after the public version of the Commission’s Order issues in its entirety.
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ITC Grants Motion For Leave To File Petition For Reconsideration In Certain Mobile Telephones And Wireless Communication Devices Featuring Digital Cameras (337-TA-703)

By Eric Schweibenz
|
Aug
02
On July 29, 2011, the International Trade Commission (the “Commission”) issued a notice determining to grant Respondents Research in Motion, Ltd. and Research in Motion Corp.’s (collectively, “RIM”) motion for leave to file a petition for reconsideration out of time 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 and the Respondents are RIM and Apple Inc.  On January 24, 2011, Chief ALJ Paul J. Luckern issued an initial determination (“ID”) finding that there was no violation of Section 337.  See our March 18, 2011 post for more details.  On June 30, 2011, the Commission issued a notice determining to affirm-in-part, reverse-in-part, and remand-in-part the findings in the ID.  See our July 6, 2011 post for more details.  The June 30 notice explained that the “Commission’s determination and reasons therefore will be further detailed in the Commission’s forthcoming opinion.”  On July 8, 2011, the Commission issued its opinion which “set[ ] out the reasons for the Commission’s action” in the notice. According to the July 29 notice, RIM filed a petition for reconsideration of certain issues on July 25, 2011 — which was within fourteen days of service of the Commission opinion, but not within fourteen days of service of the Commission notice.  On July 26, 2011, RIM filed a motion for leave to file its petition for reconsideration out of time.  The motion explained that good cause existed in light of the fact that the Commission opinion issued one week after the Commission notice, and the grounds for RIM’s petition were set forth substantially in the opinion rather than the notice. Under 19 C.F.R. § 210.47, a petition for reconsideration must be filed “[w]ithin 14 days after service of a Commission determination.”  In the July 29 notice, the Commission determined that while “[t]he Commission determination was the Commission notice” — and thus RIM’s petition was not timely under the rule —  RIM had nevertheless established good cause for filing its petition within fourteen days of the Commission opinion in this instance.  Accordingly, the Commission granted RIM’s motion for leave to file the petition and ordered that any responses to RIM’s petition be filed by August 5, 2011.
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ITC Announces Retirement Of Chief ALJ Luckern

By Eric Schweibenz
|
Aug
04
On August 3, 2011, the ITC issued a press release announcing the retirement of Chief ALJ Paul J. Luckern. 

Below is an excerpt from the ITC’s press release: 
Paul J. Luckern, Chief Administrative Law Judge at the U.S. International Trade Commission (USITC), is retiring from government service today, August 3, 2011.

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ITC Decides To Review In Part Initial Determination In Certain Ink Cartridges With Printheads (337-TA-723)

By Eric Schweibenz
|
Aug
16
On August 11, 2011, the International Trade Commission (the “Commission”) issued a notice determining to review in part an Initial Determination (“ID”) issued by ALJ Robert K. Rogers on June 10, 2011 finding a violation of Section 337 in Certain Inkjet Cartridges with Printheads and Components Thereof (Inv. No. 337-TA-723). By way of background, and according to the notice, Complainants Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. (collectively, “HP”) accused Respondents MicroJet Technology Co., Ltd. (“MicroJet”); Asia Pacific Microsystems, Inc. (“APM”); Mipo Technology Limited (“Mipo Tech”); Mipo Science & Technology Co., Ltd. (“Mipo”); Mextec d/b/a Mipo America Ltd. (“Mextec”); SinoTime Technologies, Inc. (“SinoTime”); and PTC Holdings Limited (“PTC”) of infringing certain claims of U.S. Patent Nos. 6,234,598; 6,309,053; 6,398,347; 6,481,817; 6,402,279; and 6,412,917 (the ’917 patent).  Respondents Mipo, Mipo Tech, SinoTime, and Mextec were subsequently terminated, and Respondent MicroJet defaulted.  HP withdrew allegations of infringement of the ‘917 patent. In his June 10, 2011 ID, ALJ Rogers found a violation of Section 337 and determined that MicroJet and PTC directly infringed the remaining asserted patents and found APM liable for contributory infringement (but not direct or induced infringement).  ALJ Rogers further determined that the asserted patents were not invalid and that a domestic industry existed with respect to these remaining asserted patents.  See our August 12, 2011 post for more information. According to the August 11 notice, on June 24, 2011, HP filed a contingent petition for review of the ID, and on June 27, 2011, APM and the Commission investigative attorney filed petitions for review of the ID.  On July 5, 2011, the parties filed responses to the various petitions and contingent petition for review. After examining the record of the investigation, including the ID and the parties’ submissions, the Commission determined to review the ID’s findings that HP failed to establish by a preponderance of the evidence that Respondent APM induced infringement of the asserted patents. The Commission determined not to review any other issues in the ID. 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 question: 1.  Does the record evidence demonstrate that APM’s conduct meets the “specific intent” requirement for inducement in light of the ALJ’s finding that “APM certainly had knowledge of the asserted patents and the infringement at issue once it was served with HP’s Complaint [a]nd APM continued to sell its components to MicroJet even after receiving HP’s Complaint”?  ID at 91; RX-69C. See DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1305 (Fed. Cir. 2006). Written submissions are due by August 25, 2011, with reply submissions due by September 1, 2011.
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ITC Decides To Review In Part Initial Determination In Certain Biometric Scanning Devices (337-TA-720)

By Eric Schweibenz
|
Aug
24
On August 18, 2011, the International Trade Commission (the “Commission”) issued a notice determining to review in part an Initial Determination (“ID”) issued by former Chief ALJ Paul J. Luckern on June 17, 2011, finding a violation of Section 337 in Certain Biometric Scanning Devices, Components Thereof, Associated Software, and Products Containing the Same(Inv. No. 337-TA-720).  By way of background, the Complainant in this investigation is Cross Match Technologies, Inc. (“Cross Match”) and the Respondents are Suprema, Inc. (“Suprema”) and Mentalix, Inc. (collectively, the “Respondents”).  In the ID, ALJ Luckern determined that a violation of Section 337 had occurred by Suprema through its infringement of one or more claims of U.S. Patent No. 5,900,993.  ALJ Luckern also found a violation of Section 337 by reason of infringement of claim 19 of U.S. Patent No. 7,203,344 (the ‘344 patent).  The ALJ found no violation of Section 337 with respect to U.S. Patent No. 6,483,932.  See our June 21, 2011 post for more details. According to the August 18 notice, Cross Match, the Respondents, and the Commission Investigative Staff each filed a petition for review of the ID on July 5, 2011.  On July 13, 2011, each party filed a response to the other party’s opposing petition.   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 finding of a violation of Section 337 based on infringement of claim 19 of the ‘344 patent.  The Commission determined not to review the remainder of the ID. 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, with respect to violation, the parties are requested to submit briefing limited to the following issues:

(1)   Who infringes claim 19 of the ‘344 patent and what type of infringement has occurred?  Please consider direct, contributory, and induced infringement.

(2)   Is there is [sic] a sufficient nexus between the infringer’s unfair acts and importation to find a violation of section 337?  See, e.g., Dynamic Random Access Memories, Components Thereof and Products Containing Same, Inv. No. 337-TA-242, Comm’n Op. (Sept. 21, 1987); Certain Cardiac Pacemakers and Components Thereof, Inv. No. 337-TA-162, 1984 WL 273827, Order No. 37 (March 21, 1984).

Written submissions are due by August 30, 2011, with reply submissions due by September 8, 2011.
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ITC Determines that ALJ Bullock’s July 19, 2011 Initial Determination (ID) Is An Order, Rather Than ID in Certain Automated Media Library Devices (337-TA-746)

By Eric Schweibenz
|
Aug
25
On August 18, 2011, the Commission issued a notice in Certain Automated Media Library Devices(Inv. No. 337-TA-746).  The notice stated that ALJ Bullock’s July 19, 2011 Order No. 19,  which granted-in-part Respondent IBM’s motion for partial summary determination and found that the asserted claims of U.S. Patent No. 6,328,766 (“the ’766 patent”) were not entitled to claim priority to an earlier application, should not have issued as an initial determination.  See our August 18, 2011 postfor more information on ALJ Bullock’s Order No. 19. 

The Commission determined that the priority matter decided in Order No. 19 was uncontested, and by operation of Commission Rule 210.31(d) (19 C.F.R. §210.31(d)), matters admitted in response to requests for admissions are conclusively established.  The Commission further determined that to the extent a ruling under Commission Rule 210.31(d) is appropriate, where uncontested, such ruling should be by order rather than summary determination under Commission Rule 210.18 (19 C.F.R. § 210.18).
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ITC Terminates Investigation and Issues Limited Exclusion Order And Cease And Desist Order in Certain Birthing Simulators (337-TA-759)

By Eric Schweibenz
|
Sep
05
On August 29, 2011, The U.S. International Trade Commission issued a notice of issuance of a limited exclusion order, a cease and desist order, and termination of the investigation in Certain Birthing Simulators and Associated Systems (Inv. No. 337-TA-759). By way of background, this investigation was based on a December 30, 2010 complaint filed by Gaumard Scientific Company of Miami, Florida alleging violations of Section 337 in the importation into the U.S. and sale of certain birthing simulators and associated systems that infringe U.S. Patent Nos. 6,503,087 (the ‘087 patent) and 7,114,954 (the ‘954 patent).  See our January 4, 2011 post for more details.  The ITC instituted this investigation on February 1, 2011, identifying Shanghai Honglian Medical Instrument Development Co., Ltd. (d/b/a General Doctor) of China and Shanghai Evenk International Trading Co., Ltd. of China as respondents.  See our February 2, 2011 post for more details. According to the August 29, 2011 notice, neither of the respondents answered the complaint or notice of investigation, nor did they respond to an order to show cause why they should not be held in default and judgment rendered for their failure to answer the complaint and notice of investigation.  On March 30, 2011, the ALJ issued an Initial Determination finding both respondents in default and terminating the investigation. After reviewing the record in this investigation, the Commission determined that the appropriate form of relief is a limited exclusion order prohibiting the unlicensed entry of birthing simulators covered by one or more of claims 16-20, 22-23, 25-28, 30-31, 33-34, and 36-38 of the ‘087 patent and claims 1, 2, 6, 7, and 10 of the ‘954 patent and that are manufactured by or on behalf of Shanghai Honglian and Shanghai Evenk, their affiliated companies, licensees, contractors, related business entities, successors or assigns. The Commission also determined to issue a cease and desist order that prohibits importing, selling for importation, marketing, advertising, distributing, offering for sale, selling, transferring (except for exportation), advertising, and soliciting United States agents or distributors for birthing simulators that are covered by one or more of the asserted claims.
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ITC Institutes Formal Enforcement Proceeding In Certain DC-DC Controllers (337-TA-698)

By Eric Schweibenz
|
Sep
05
On August 30, 2011, the U.S. International Trade Commission (“Commission”) issued a notice instituting a formal enforcement proceeding relating to consent orders issued in Certain DC-DC Controllers and Products Containing Same(Inv. No. 337-TA-698). By way of background, Richtek Technology Corp. of Taiwan and Richtek USA, Inc. of San Jose, California (collectively, “Richtek”) filed an enforcement complaint on July 21, 2011, against uPI Semiconductor Corp. of Taiwan (“uPI”) and Sapphire Technology Limited of Hong Kong (“Sapphire”) for alleged violations of consent orders that had been issued by the Commission on August 13, 2010.  See our July 25, 2011 post for more details. In the August 30, 2011 notice, the Commission determined to “institute formal enforcement proceedings to determine whether uPI and/or Sapphire are in violation of the August 13, 2010 consent orders issued in the investigation, and what, if any, enforcement measures are appropriate.”  The Commission named (1) Richtek, (2) respondents uPI and Sapphire, and (3) the Office of Unfair Import Investigations as parties to the formal enforcement proceeding.
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ITC Decides To Review Initial Determination In Certain Electronic Devices With Image Processing Systems (337-TA-724)

By Eric Schweibenz
|
Sep
07
On September 2, 2011, the International Trade Commission (the “Commission”) issued a notice determining to review an Initial Determination (“ID”) issued by ALJ E. James Gildea on July 1, 2011 finding a violation of Section 337 in Certain Electronic Devices With Image Processing Systems, Components Thereof, and Associated Software (Inv. No. 337-TA-724). By way of background, the Complainants in this investigation are S3 Graphics Co. Ltd. and S3 Graphics Inc. (collectively, “S3G”) and the Respondent is Apple Inc. (“Apple”).  In the ID, ALJ Gildea determined that a violation Section 337 had occurred by Apple through its infringement of certain claims of U.S. Patent Nos. 6,683,978 and 6,658,146.  The ID further found that a patent exhaustion defense relieved Apple of liability for some of its infringing products, but not others.  Additionally, the ID found no violation of Section 337 with respect to U.S. Patent Nos. 7,043,087 and 6,775,417 because the asserted claims of those patents are invalid.  See our July 6, 2011 post for more details. According to the September 2 notice, S3G, Apple, and the Commission Investigative Staff (“OUII”) filed petitions for review of the ID on July 18, 2011.  S3G, Apple, and OUII each filed responses to the petitions for review on July 26, 2011. 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 briefing on thirteen specific issues listed in the notice. Written submissions are due by September 16, 2011, with reply submissions due by September 23, 2011.
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ITC Decides To Review In Part Initial Determination In Certain Personal Data And Mobile Communications Devices (337-TA-710)

By Eric Schweibenz
|
Sep
19
On September 15, 2011, the International Trade Commission (the “Commission”) issued a notice determining to review in part an Initial Determination (“ID”) issued by ALJ Carl C. Charneski on July 15, 2011 finding a violation of Section 337 in Certain Personal Data and Mobile Communications Devices and Related Software (Inv. No. 337-TA-710). By way of background, the Complainants in this investigation are Apple Inc. and NeXT Software, Inc. (collectively, “Apple”) and the Respondents are High Tech Computer Corp., HTC America Inc., and Exedia, Inc. (collectively, “HTC”).  In the ID, ALJ Charneski determined that a violation of Section 337 had occurred by HTC through its infringement of certain claims of U.S. Patent Nos. 5,946,647 (the ‘647 patent) and 6,343,263 (the ‘263 patent).  The ID found no violation of Section 337 with respect to U.S. Patent Nos. 5,481,721 (the ‘721 patent) and 6,275,983 (the ‘983 patent) because Apple had not demonstrated that HTC infringed the asserted claims of these patents or that Apple had satisfied the domestic industry requirement with respect to these patents.  The ID concluded that HTC had not demonstrated that any of the asserted patent claims are invalid.  See our September 2, 2011 post for more details. According to the September 15 notice, HTC, Apple, and the Commission Investigative Staff (“OUII”) filed petitions for review of the ID on August 1, 2011.  HTC, Apple, and OUII each filed responses to the petitions for review on August 9, 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, for the ‘263, ‘721, and ‘983 patents, the Commission determined to review certain claim constructions, as well as the ID’s determinations of infringement, domestic industry, and validity, as set forth in more detail in the notice.  For the ‘647 patent, the Commission determined to review the ID’s determinations of infringement and validity, again as set forth in more detail in the notice.  The Commission determined not to review the remainder of the ID.  In connection with its determination not to review the remainder of the ID, the Commission stated that it had rejected “HTC’s attempt to ‘incorporate[] by … reference in their entirety all of the arguments … with respect to all issues decided adversely to HTC’s positions’ from the thousands of pages of briefing before the ALJ, ‘pre-hearing motions in limine and other evidentiary submissions, hearing transcripts, and hearing exhibits.’”  The Commission found that HTC’s purported incorporation did not satisfy 19 C.F.R. § 210.43(b)(1), frustrated any meaningful opposition by the other parties, and made Commission review of the purportedly incorporated matter impossible.  Accordingly, the Commission deemed such issues to have been abandoned by HTC. 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 five specific questions listed in the notice. Written submissions are due by October 6, 2011, with reply submissions due by October 17, 2011.
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ITC Grants Petition For Reconsideration And Terminates Investigation With Finding Of No Violation In Certain Digital Set-Top Boxes (337-TA-712)

By Eric Schweibenz
|
Sep
21
On September 20, 2011, the International Trade Commission (the “Commission”) issued a notice determining to grant Respondent Cablevision Systems Corp.’s (“Cablevision”) petition for reconsideration of the Commission’s decision not to review the Initial Determination (“ID”) issued by ALJ E. James Gildea on May 20, 2011 finding a violation of Section 337 in Certain Digital Set-Top Boxes and Components Thereof (Inv. No. 337-TA-712).  The Commission further determined to terminate the investigation with a finding of no violation of Section 337. By way of background, the Complainants in this investigation are Verizon Communications Inc. and Verizon Services Corp. (collectively “Verizon”) and the Respondent is Cablevision.  In the ID, ALJ Gildea determined that a violation of Section 337 had occurred by Cablevision through its infringement of claim 13 of U.S. Patent No. 6,381,748 (the ‘748 patent).  See our July 8, 2011 post for more details.  On July 21, 2011, the Commission determined not to review the ID.  See our July 26, 2011 post for more details. According to the September 20 notice, on August 8, 2011, Cablevision filed a petition for reconsideration of the Commission’s determination not to review the ID.  In particular, Cablevision sought reconsideration of the Commission’s determination based on the August 2, 2011 entry of final judgment by the U.S. District Court for the Eastern District of Virginia in ActiveVideo Networks, Inc. v. Verizon Commc’ns Inc., No. 2:10-cv-248, and the previous ruling in that action that claim 13 of the ‘748 patent is invalid.  Verizon opposed Cablevision’s petition but the Commission Investigative Staff filed a response supporting the petition. After examining the record of the investigation, the Commission determined to grant Cablevision’s petition for reconsideration and waive the requirement that any petition for reconsideration be filed within 14 days of the action taken.  Accordingly, the Commission determined to review the ID and, on review, to find that there has been no violation of Section 337 in the investigation based on the preclusive effects of the district court’s finding of invalidity.  The Commission further determined to terminate the investigation.  Lastly, the Commission stated that “[a] Commission opinion in support of this determination will be issued shortly.”
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ITC Issues General Exclusion Order In Certain Coaxial Cable Connectors (337-TA-650)

By Eric Schweibenz
|
Sep
22
On September 13, 2011, the International Trade Commission (the “Commission”) issued a notice of issuance of a general exclusion order for U.S. Patent No. 5,470,257 in Certain Coaxial Cable Connectors and Components Thereof and Products Containing Same (Inv. No. 337-TA-650). By way of background, the Complainant in this investigation is John Mezzalingua Associates, Inc. d/b/a PPC, Inc. (“PPC”) and the Respondents are Fu Ching Technical Industry Co. Ltd., Gem Electronics, Inc. (collectively, the “Active Respondents”), Hanjiang Fei Yu Electronics Equipment Factory, Zhongguang Electronics, Yangzhou Zhongguang Electronics Co., Ltd., and Yangzhou Zhongguang Foreign Trade Co., Ltd. (collectively, the “Defaulting Respondents”).  The investigation was instituted on May 30, 2008.  On October 13, 2009, ALJ Gildea issued his Initial Determination (“ID”) finding, inter alia, that the Defaulting Respondents were in violation of Section 337 by reason of infringement of U.S. Patent Nos. 5,470,257, 6,558,194, D519,076, and D440,539 (the ‘539 patent).  See our November 10, 2009 post for more details. Upon reviewing the ID, the ITC adopted a different construction of claim 1’s “engagement means” limitation than ALJ Gildea, concluded that PPC’s CMP connector did not practice this limitation, and thus held that PPC had not satisfied the technical prong of the domestic industry requirement for the ‘257 patent. On appeal, the parties agreed that the “engagement means” limitation is a means-plus-function limitation, and agreed upon the function, but disagreed with respect to the corresponding structure in the specification.  The Federal Circuit agreed with PPC (and with ALJ Gildea) that the “engagement means” limitation “should be construed to include only what is necessary to perform the function, and not import structures that, though present in the preferred embodiment, are not actually necessary.”  Accordingly, the Federal Circuit found that PPC satisfied the technical prong of the domestic industry requirement, removing “the final bar to finding violation of  § 337 as to the defaulting respondents.”  It entered judgment of a violation by the Defaulting Respondents, and remanded for further proceedings consistent with its opinion.  The Federal Circuit declined PPC’s invitation to direct entry of a general exclusion order, finding that this would be premature, “at least because the ITC has not made findings on the proper remedy and bonding.”  See our April 28, 2011 post for more details.  The Federal Circuit’s mandate issued on June 30, 2011. On July 18, 2011, the Commission issued a notice requesting comments from the parties regarding how to proceed with the investigation following the remand from the Federal Circuit.  On July 29, 2011, PPC filed a response to the Commission’s notice.  On August 1, 2011, the Commission investigative attorney filed a response to the Commission’s notice. According to the September 13, 2011 notice, “the Commission has determined that the appropriate form of remedy is a general exclusion order…[that] prohibits the unlicensed entry of coaxial cable connectors and components thereof and products containing the same that infringe claim 1 and/or 5 of the ‘257 patent.”  The Commission further determined that the public interest factors set forth in 19 U.S.C. § 1337(d) do not preclude issuance of the general exclusion order.  Finally, the Commission determined that amount of bond during the Presidential review period shall be in the amount of thirteen cents per coaxial connector of the Defaulting Respondents.  A bond in the amount of zero is required for any other coaxial cable connector or component thereof or product containing the same covered by the general exclusion order.
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ITC Decides To Review In Part Initial Determination In Certain Electronic Imaging Devices (337-TA-726)

By Eric Schweibenz
|
Sep
27
On September 26, 2011, the International Trade Commission (the “Commission”) issued a notice determining to review in part an Initial Determination (“ID”) issued by former Chief ALJ Paul J. Luckern on July 27, 2011 finding no violation of Section 337 in Certain Electronic Imaging Devices (Inv. No. 337-TA-726). By way of background, the Complainant in this investigation is FlashPoint Technology, Inc. (“Flashpoint”) and the remaining Respondents are HTC Corp. and HTC America, Inc. (collectively, “HTC”).  The patents-in-suit are U.S. Patent Nos. 6,262,769 (the ‘769 patent) and 6,163,816 (the ‘816 patent).  According to the ID, ALJ Luckern determined that no violation of Section 337 occurred by HTC.  Specifically, ALJ Luckern determined, inter alia, that (i) Flashpoint failed to show that the asserted claims of the ‘796 and ‘816 patents are infringed, (ii) it has been established that the asserted claims of the ‘816 patent are invalid under 35 U.S.C. § 102(b) (on sale bar), (iii) it was not established that the asserted claims of the ‘769 and ‘816 patents are invalid in view of prior art, (iv) Flashpoint’s rights under the ‘816 and ‘769 patents were not exhausted with respect to HTC’s accused Windows Phone 7 products, and (v) Flashpoint did not establish a domestic industry with respect to either of the ‘769 or ‘816 patents.  See our August 1, 2011 post for more details.     After examining the record of the investigation, the Commission determined to review the ID in part.  In particular, the Commission determined to review (1) infringement of the asserted claims of the ‘769 patent by the accused HTC Android smartphones, (2) infringement of the asserted claims of the ‘769 patent by the accused HTC WP7 smartphones, (3) the technical prong of the domestic industry requirement for the ‘769 patent with respect to the licensed Motorola smartphones, (4) the technical prong of the domestic industry requirement for the ‘769 patent with respect to the licensed Apple smartphones, and (5) the enforceability of the asserted patents under the doctrines of implied license and exhaustion.  The Commission also determined to review and take no position on (a) anticipation of the asserted claims of the ‘816 patent under 35 U.S.C. § 102 in view of the prior art references, and (b) obviousness of the asserted claims of the ‘816 patent under 35 U.S.C. § 103 in view of the prior art references. 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 19 specific questions listed in the notice. Written submissions are due by October 10, 2011, with reply submissions due by October 17, 2011.
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ITC Issues Final Determination Of Violation And General Exclusion Order In Certain Toner Cartridges (337-TA-740)

By Eric Schweibenz
|
Sep
30
On September 27, 2011, the International Trade Commission (the “Commission”) issued a notice determining to terminate the investigation in Certain Toner Cartridges and Components Thereof (Inv. No. 337-TA-740) with a finding of a violation of Section 337.  The Commission further determined to issue a general exclusion order (“GEO”) and cease and desist orders (“CDOs”). By way of background, the Complainant in this investigation is Lexmark International, Inc. (“Lexmark”).  The Commission’s notice of investigation named the following 24 entities as Respondents:  Ninestar Image Co. Ltd. (a/k/a Ninestar Technology Co., Ltd.), Ninestar Image Int’l, Ltd., Seine Image International Co., Ltd., Ninestar Technology Company, Ltd., Ziprint Image Corporation, Nano Pacific Corporation, IJSS Inc. (d/b/a TonerZone.com Inc. and Inkjet Superstore), Chung Pal Shin (d/b/a Ink Master), Nectron International, Inc., Quality Cartridges Inc., Direct Billing International Incorporated (d/b/a Office Supply Outfitter and The Ribbon Connection), E-Toner Mart, Inc., Alpha Image Tech, ACM Technologies, Inc., Virtual Imaging Products Inc., Acecom Inc-San Antonio (d/b/a inksell.com), Ink Technologies Printer Supplies, LLC (d/b/a Ink Technologies LLC), Jahwa Electronics Co., Ltd., Huizhou Jahwa Electronics Co., Ltd, Copy Technologies, Inc., Laser Toner Technology, Inc., C & R Services, Inc., Print-Rite Holdings Ltd., and Union Technology Int’l, (M.C.O.) Co.  Respondent Print-Rite Holdings Ltd. was terminated from the investigation based on a settlement agreement, but the other 23 entities (collectively, the “Defaulting Respondents”) were ultimately found to be in default.  On April 25, 2011, Lexmark filed a motion for summary determination of violation of Section 337 and requested issuance of a GEO and CDOs against the Defaulting Respondents.  On June 1, 2011, ALJ Carl C. Charneski issued an Initial Determination (“ID”) granting Lexmark’s motion and recommending that the Commission issue a GEO and CDOs.  The ALJ found that the Defaulting Respondents’ products infringe certain claims of U.S. Patent Nos. 5,337,032, 5,634,169, 5,758,233, 5,768,661, 5,802,432, 5,875,378, 6,009,291, 6,078,771, 6,397,015, 6,459,876, 6,816,692, 6,871,031, 7,139,510, 7,233,760, and 7,305,204 (collectively, “the asserted patents”).  See our June 24, 2011 post for more details. On July 12, 2011, the Commission determined not to review the ID and called for briefing on remedy, the public interest, and bonding.  On August 1, 2011, Lexmark submitted a brief on remedy, the public interest, and bonding, requesting that the Commission issue a GEO and CDOs and set a bond of 100 percent during the Presidential review period.  Also on August 1, 2011, the Commission Investigative Staff submitted a brief on remedy, the public interest, and bonding, supporting Lexmark’s requests for a GEO and CDOs and for a bond of 100 percent. In the September 27 notice, the Commission determined to terminate the investigation with a finding of a violation of Section 337.  The Commission further determined that the appropriate form of relief is:  (1) a GEO prohibiting the unlicensed entry into the U.S. of toner cartridges and components thereof that infringe certain claims of the asserted patents; and (2) CDOs directed at the domestically-based Defaulting Respondents and certain of the foreign-based Defaulting Respondents.  Lastly, the Commission determined that the public interest factors do not preclude issuance of the GEO and the CDOs and that the bond during the Presidential review period should be set at 100 percent of the value of the imported articles that are subject to the GEO.
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ITC Decides To Review In Part Initial Determination In Certain Integrated Circuits (337-TA-786)

By Eric Schweibenz
|
Oct
14
On October 13, 2011, the International Trade Commission (the “Commission”) issued a notice determining to review in part an Initial Determination (“ID”) issued by ALJ Robert K. Rogers, Jr. on August 29, 2011 granting-in-part Respondents’ motion for summary determination that Complainant Freescale Semiconductor, Inc.’s (“Freescale”) claims against Respondents Funai Electric Co., Ltd. and Funai Corporation, Inc (collectively, “Funai”) are precluded in Certain Integrated Circuits, Chipsets, and Products Containing Same Including Televisions (Inv. No. 337-TA-786). By way of background, the Complainant in this investigation is Freescale and the Respondents are Funai, MediaTek Inc. (“MediaTek”), and Zoran Corporation (“Zoran”) (collectively, the “Respondents”).  On July 19, 2011, Funai filed a motion for summary determination that Freescale’s allegations against it in the instant ITC investigation are precluded under the doctrines of issue preclusion and claim preclusion based on the Commission’s determination of no violation in a previous ITC investigation, Inv. No. 337-TA-709.  Funai also requested that Freescale be judicially estopped from arguing that the Funai products at issue in the present investigation are different from those at issue in the 709 investigation.  Funai further requested that the instant investigation be terminated in its entirety.  MediaTek and Zoran ultimately joined in Funai’s motion. In the ID, ALJ Rogers granted-in-part Funai’s motion for summary determination that Freescale’s claims against it in the instant investigation are precluded with respect to certain Funai products that contain integrated circuits that were at issue in the 709 investigation.  However, the ALJ denied Funai’s motion with respect to those accused products that were not at issue in the 709 investigation, and denied Funai’s request to terminate the investigation in its entirety. According to the October 13 notice, Freescale filed a petition for review of the ID on September 7, 2011, arguing that the ALJ’s finding of claim preclusion was erroneous.  Funai and MediaTek also filed petitions for review on September 7, 2011, requesting review of the ALJ’s denial of Funai’s request to terminate the investigation in its entirety.  On September 14, 2011, Funai, MediaTek, and the Commission Investigative Staff each filed a response to Freescale’s petition, and Freescale filed responses to Funai’s and MediaTek’s petitions. After examining the record of the investigation, including the ID, the petitions for review, and the responses to the petitions for review, the Commission determined to review the ID in part.  Specifically, the Commission determined to review the ID’s statement that new importations do not create a new cause of action.  The Commission also determined to review the ID to clarify specifically which products were adjudicated in the 709 investigation.  The Commission further determined to review the ID to consider whether the non-Zoran integrated circuits at issue in the present investigation are a part of the same claim or cause of action as the Zoran circuits that were actually adjudicated in the 709 investigation.  The Commission also determined to review the ID as to the aspects of Funai’s motion that concern issue preclusion and judicial estoppel. The Commission determined not to review the ID’s finding of claim preclusion with respect to Funai products containing Zoran integrated circuits identified in the 709 investigation.  Additionally, after finding that ALJ Rogers’s denial of Funai’s motion to terminate the investigation was not actually part of the ID, the Commission declined to consider Funai’s and MediaTek’s petitions and Freescale’s responses to those petitions, citing Commission Rules 210.42(c) and 210.43(a). The notice states that the parties are requested to submit briefing on the issues under review.  The notice further states that the Commission is particularly interested in responses to a question relating to whether the Funai products that contain the Zoran integrated circuits identified in the ID of the 709 investigation are “essentially the same” as any of the remaining products at issue in the present investigation under Federal Circuit precedent. Written submissions are due by October 24, 2011, with reply submissions due by October 31, 2011.
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ITC Names Two New Administrative Law Judges

By Eric Schweibenz
|
Oct
19
On October 17, 2011, the International Trade Commission issued press releases announcing that Thomas Bernard Pender and David P. Shaw will become administrative law judges at the ITC effective October 24, 2011. The press release relating to ALJ Pender states:
Deanna Tanner Okun, Chairman of the United States International Trade Commission (USITC), announced today that Judge Thomas Bernard Pender will become an Administrative Law Judge (ALJ) at the USITC effective October 24, 2011. Pender will manage litigation, preside over evidentiary hearings, and make initial determinations in the agency's investigations involving unfair practices in import trade. These investigations most often involve allegations of patent, trademark, and copyright infringement. Prior to joining the USITC, Pender served as an ALJ in the Office of Disability Adjudication and Review with the Social Security Administration in Richmond, VA. From July 2005 to September 2010, he was an Administrative Judge with the Office of Hearings and Appeals for the Small Business Administration in Washington, DC. He served as Chief Trial Attorney and the Director of the Contract Disputes Resolution Center for Defense Contract Management Agency from January 2002 to July 2005. Previously, Pender served as a Senior Trial Attorney in the Office of the Chief Trial Attorney of the Air Force at Wright-Patterson Air Force Base, OH; as a Deputy District Counsel for the U.S. Army Engineer District in Baltimore, MD; as a General Attorney/Trial Attorney for the U.S. Army Engineer District in Fort Worth, TX; and while on active duty in the U.S. Army, he served as Assistant Staff Judge Advocate in Bayonne, NJ, and as a Trial Defense Counsel in Tongduchon, South Korea. Pender received his JD from Emory University Law School, Atlanta, GA, and holds a bachelor's degree from the Virginia Military Institute. He is a member of the State Bar of Georgia.
The press release relating to ALJ Shaw states:
Deanna Tanner Okun, Chairman of the United States International Trade Commission (USITC), announced today that Judge David P. Shaw will become an Administrative Law Judge (ALJ) at the USITC effective October 24, 2011. Shaw will manage litigation, preside over evidentiary hearings, and make initial determinations in the agency's investigations involving unfair practices in import trade. These investigations most often involve allegations of patent, trademark, and copyright infringement. Prior to joining the USITC, Shaw served as an ALJ with the Social Security Administration's Office of Disability Adjudication and Review (National Hearing Center) in Baltimore, MD. Prior to that, he was an ALJ with the Social Security Administration's Office of Disability Adjudication and Review in Fayetteville, NC. Shaw served from 1987 to 2010 as an Attorney-Advisor in the USITC's Office of Administrative Law Judges. Shaw holds a juris doctor degree from the Washington College of Law at The American University and a bachelor's degree from George Mason University. He is a member of the Bar of the District of Columbia.
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Charles E. Bullock Named Chief Administrative Law Judge At The ITC

By Eric Schweibenz
|
Oct
20
On October 20, 2011, the International Trade Commission issued a press release announcing that Charles E. Bullock has been named the Chief Administrative Law Judge at the ITC. 

The ITC’s press release states:
Deanna Tanner Okun, Chairman of the United States International Trade Commission (USITC), announced today that Judge Charles E. Bullock has been named the Chief Administrative Law Judge at the USITC.

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ITC Issues Final Rules For Gathering Information on Public Interest Issues

By Eric Schweibenz
|
Oct
21
On October 19, 2011, the International Trade Commission (the “Commission”) published a Notice of Final Rulemaking (“Notice”) to amend rules “to aid the Commission in identifying investigations that require further development of public interest issues in the record, and to identify and develop information regarding the public interest at each stage of the investigation.”  These amended rules take effect November 18, 2011. The Notice stated that these amendments do not change “the Commission’s substantive practice with respect to its consideration of the public interest factors in its determinations relating to the appropriate remedy.”  Rather, the Notice stated that the rules are amended to “increase the efficiency of its Section 337 investigations,” and “improve[e] the Commission’s procedures and ensur[e] the completeness of the record with respect to the required analysis concerning the public interest under Sections 337(d)(1) and (f)(1).” New rule 210.8(b) provides that a complainant must file concurrently with its complaint a separate statement of public interest, not exceeding five pages (including attachments), addressing how the requested relief (i.e., general or limited exclusion order, and/or cease and desist orders) could affect the public health and welfare of the U.S.  In particular, the complainant’s submission is to:
(1) Explain how the articles potentially subject to the requested remedial orders are used in the United States; (2) Identify any public health, safety, or welfare concerns relating to the requested remedial orders; (3) Identify like or directly competitive articles that complainant, its licensees, or third parties make which could replace the subject articles if they were to be excluded; (4) Indicate whether the complainant, its licensees, and/or third parties have the capacity to replace the volume of articles subject to the requested remedial orders in a commercially reasonable time in the United States; and (5) State how the requested remedial orders would impact consumers.
New rule 210.8(c)(1) provides that upon the complaint’s filing, the Commission will publish a notice in the Federal Registerinviting comments from the public and proposed respondents on any public interest issues.  The public and proposed respondents may respond within eight calendar days of the notice’s publication, and the submission is again five or fewer pages (including attachments) and should address the same five subjects identified above from §210.8(b).  §210.8(c)(2) provides the complainant with an opportunity to reply within three calendar days to any responses submitted by the public or proposed respondents under new rule 210.8(c)(1). Based at least on the above information submitted by the complainant, and any submissions by  the public or proposed respondents under rule 210.8(c)(1), the Commission, when instituting the investigation and publishing a notice thereof in the Federal Register under §210.10(b), can “order the administrative law judge to take evidence and to issue a recommended determination on the public interest based generally on the submissions of the parties and the public under § 210.8(b) and (c).” §210.10(b) also provides that if the Commission orders the administrative law judge to take evidence with respect to the public interest, discovery is to be appropriately limited, particularly as to third parties, and ensured not to delay the investigation or be used improperly.  If the Commission does not specifically order an ALJ to take evidence on these public interest issues, they will not be within the scope of discovery. §210.14(f) is added and provides that if the Commission orders an administrative law judge to take evidence with respect to the public interest under § 210.50(b)(1), respondents must submit a statement concerning the public interest, including any response to the issues raised by the complainant pursuant to § 210.8(b) and (c)(2), at the same time that their response to the complaint is due. Amended § 210.42(a)(1)(ii)(C) clarifies that when ordered to take evidence on the public interest, an ALJ shall include analysis of the public interest in their recommended determination (“RD”). The Commission’s comments within the Notice and the text of final rule 210.50(a)(4) indicate that the Commission will maintain its current practice of requesting party comments on the public interest within thirty (30) days after the RD issues, and solicitation of these comments is not limited to cases in which the Commission delegated the public interest issue to the ALJ.  Final rule 210.50(a)(4) has been amended to clarify that the parties are requested, but not required, to file comments under this provision (again limited to five pages, including attachments).  While this final rule does not allow members of the public to submit similar comments, the Commission will issue a Federal Registernotice soliciting comments from the public after an RD issues.
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ITC Issues Notice of Final Determination In Certain Ink Cartridges With Printheads (337-TA-723)

By Eric Schweibenz
|
Oct
25
On October 24, 2011, the International Trade Commission (the “Commission”) issued a notice of final determination finding a violation of Section 337, issuing a general exclusion order, and terminating the investigation in Certain Inkjet Cartridges with Printheads and Components Thereof(Inv. No. 337-TA-723). By way of background, and according to the notice, Complainants Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. (collectively, “HP”) accused Respondents MicroJet Technology Co., Ltd. (“MicroJet”); Asia Pacific Microsystems, Inc. (“APM”); Mipo Technology Limited (“Mipo Tech”); Mipo Science & Technology Co., Ltd. (“Mipo”); Mextec d/b/a Mipo America Ltd. (“Mextec”); SinoTime Technologies, Inc. (“SinoTime”); and PTC Holdings Limited (“PTC”) of infringing certain claims of U.S. Patent Nos. 6,234,598; 6,309,053; 6,398,347; 6,481,817; 6,402,279; and 6,412,917 (the ’917 patent).  Respondents Mipo, Mipo Tech, SinoTime, and Mextec were subsequently terminated, and Respondent MicroJet defaulted.  HP withdrew allegations of infringement of the ‘917 patent. In his June 10, 2011 Initial Determination (“ID”), ALJ Rogers found a violation of Section 337 and determined that MicroJet and PTC directly infringed the remaining asserted patents and found APM liable for contributory infringement (but not direct or induced infringement).  ALJ Rogers further determined that the asserted patents were not invalid and that a domestic industry existed with respect to these remaining asserted patents.  See our August 12, 2011 post for more information. The Commission determined to review a single issue, namely, the ID’s findings that HP failed to establish by a preponderance of the evidence that Respondent APM induced infringement of the asserted patents.  See our August 16, 2011 post for more information. Having examined the record of this investigation, the Commission determined there was a violation of Section 337.  The Commission reversed the ALJ’s finding with respect to Respondent APM’s induced infringement of the asserted patents, finding instead that HP established by a preponderance of the evidence that APM induced infringement of the asserted patents.  The Commission adopted ALJ Rogers’ ID in all other respects.  The Commission further determined that the appropriate remedy was a general exclusion order prohibiting the entry of inkjet ink cartridges with printheads and components thereof that infringe any of the asserted claims.  Finally, the Commission determined that a bond of 100 percent of the entered value was required to permit temporary importation during the Presidential review period.
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The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important ITC issues. These postings are in no way representative of the opinions of the Oblon firm, or its clients, but rather the personal views of the individual authors.