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ITC Modifies Remedial Orders And Terminates Consolidated Advisory Opinion and Modification Proceedings In Certain Ink Cartridges (337-TA-565)

By Eric Schweibenz
|
Apr
24
On April 16, 2012, the ITC issued a notice that it modified a general exclusion order (GEO) and cease and desist order to cover components of ink cartridges and terminated consolidated advisory opinion and modification proceedings in Certain Ink Cartridges and Components Thereof (Inv. No. 337-TA-565).  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.  According to the April 16 notice, on December 13, 2010, 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”), filed a petition to modify the GEO and a cease and desist order to indicate that certain redesigned ink cartridges were not covered by the ITC’s orders.  On February 3, 2011, 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”) filed a petition to modify the GEO to indicate that components of certain ink cartridges were covered by the orders.  The requested advisory opinion from Ninestar and modification proceeding by Epson were instituted as consolidated proceedings on March 18, 2011.  See our March 22, 2011 post for more information. Further according to the notice, on February 8, 2012, Epson and Ninestar filed a joint motion requesting the Commission to terminate the advisory opinion proceeding requested by Ninestar based on a settlement agreement.  On the same day, Epson filed an unopposed motion for summary determination to modify the GEO and cease and desist order to include components of ink cartridges, in addition to the ink cartridges themselves, which the ALJ recommended to the Commission on February 21, 2012.  Based on undisputed facts and arguments of Epson and Ninestar, the Commission adopted the ALJ’s recommendation and modified the GEO and cease and desist orders as requested, and terminated the consolidated proceedings.
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ITC Issues Notice of Final Determination Finding Violation And Issuing General Exclusion and Cease and Desist Orders In Certain Ground Fault Circuit Interrupters (337-TA-739)

By Eric Schweibenz
|
May
03
On April 27, 2012, the International Trade Commission (the “Commission”) issued a notice determining that a violation of Section 337 exists, and that the Commission has issued a general exclusion order and cease and desist orders in Certain Ground Fault Circuit Interrupters and Products Containing Same (Inv. No. 337-TA-739). By way of background, the Complainant in this investigation is Leviton Manufacturing Co., Inc. (“Leviton”), which alleges violation of Section 337 with respect to certain ground fault circuit interrupters and products containing the same that infringe certain claims of U.S. Patent Nos. 7,463,124 (the ‘124 patent), 7,737,809 (the ‘809 patent), and 7,764,151 (the ‘151 patent).  Although the Notice of Investigation named numerous respondents, several were found in default or were terminated due to settlement, consent orders, or withdrawn allegations.  The seven remaining respondents were Zhejiang Trimone Electric Science & Technology Co. Ltd. (“Trimone”), Fujian Hongan Electric Co, Ltd. (“Hongan”), TDE, Inc. (“TDE”), Shanghai ELE Manufacturing Corp., Orbit Industries, Inc., American Electric Depot Inc., and Shanghai Jia AO Electrical Co. According to the April 27 notice, ALJ Bullock issued an initial determination (“ID”) on December 20, 2011 finding no violation of Section 337 on the grounds that Leviton had not sufficiently shown that a domestic industry exists with respect to the three asserted patents and/or articles protected by those patents.  On February 21, 2012, the Commission issued a notice that it had determined to review the ID in its entirety and requested submissions from the parties on certain issues under review, and from the parties and the public on the issues of remedy, the public interest, and bonding.  See our February 24, 2012 post for more details. According to the April 27 notice, upon review of the final ID, the submissions received in response to the Commission’s notice of review, and the record of the investigation, the Commission determined that a violation of Section 337 has been shown based on infringement of claims 1-4, 6, 8-11, 13, 15-16, 35-37, 39, and 41-46 of the ‘809 patent.  The Commission further determined that certain claims of the ‘124 and ‘151 patents are invalid and no violation based on those patents had been shown.  For relief, the Commission determined to issue a general exclusion order prohibiting the unlicensed entry of ground fault circuit interrupters and products containing same that infringe one or more of the above-enumerated claims of the ‘809 patent, as well as cease and desist orders against various defaulting respondents prohibiting them from importing, selling, marketing, distributing, offering for sale, and advertising such ground fault circuit interrupters and products containing same.  The Commission also determined that a bond of $0.25 per unit is required for temporary import of the articles in question during the Presidential review period.  According to the notice, the Commission additionally terminated the investigation.
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ITC Rescinds Remedial Orders In Certain Semiconductor Chips (337-TA-661)

By Eric Schweibenz
|
May
03
On May 1, 2012, the International Trade Commission (the “Commission”) issued a notice determining to rescind the exclusion order and cease and desist orders previously issued in Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same (Inv. No. 337-TA-661). By way of background, the Complainant in this investigation is Rambus Inc. (“Rambus”) and the Respondents are NVIDIA Corp. (“NVIDIA”), Asustek Computer Inc., ASUS Computer International, Inc., BFG Technologies, Inc., Biostar Microtech (U.S.A.) Corp., Biostar Microtech International Corp., Diablotek Inc., EVGA Corp., G.B.T. Inc., Giga-byte Technology Co., Ltd., Hewlett-Packard Co., MSI Computer Corp., Micro-star International Co., Ltd., Palit Multimedia Inc., Palit Microsystems Ltd., Pine Technology Holdings, Ltd., and Sparkle Computer Co., Ltd.  According to the May 1 notice, the Commission previously found a violation of Section 337 in this investigation by reason of infringement of certain patents, and on July 26, 2010, issued a limited exclusion order and cease and desist orders.  The parties appealed the Commission determination to the Federal Circuit and ultimately settled their dispute.  On February 10, 2012, Rambus and NVIDIA jointly moved to rescind the Commission’s remedial orders on the basis of settlement.  In addition, on April 3, 2012, the Federal Circuit dismissed the last-remaining appeal of the Commission determination in an order and remanded the appeal “to the ITC with instructions to vacate the exclusion orders at issue in this appeal.” Accordingly, the Commission “determined to rescind the exclusion order and cease and desist orders.”
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ITC Decides To Review Initial Determination In Certain Semiconductor Chips (337-TA-753)

By Eric Schweibenz
|
May
07
On May 3, 2012, the International Trade Commission (the “Commission”) issued a notice determining to review in its entirety a Final Initial Determination (“ID”) issued by ALJ Theodore R. Essex on March 2, 2012 finding no violation of Section 337 in Certain Semiconductor Chips and Products Containing Same (Inv. No. 337-TA-753). By way of background, the Complainant in this investigation is Rambus Inc. of Sunnyvale, California (“Rambus”).  Rambus accused respondents of infringing certain claims of U.S. Patent Nos. 6,470,405, 6,591,353, and 7,287,109 (collectively, “the Barth patents”), and Nos. 7,602,857 and 7,715,494 (collectively, “the Dally patents”).  Although the Notice of Investigation named numerous respondents, many were terminated due to settlement.  In particular, Mediatek Inc., Audio Partnership PLC, and Oppo Digital, Inc. settled with Rambus following the ALJ’s issuance of the ID.  The two remaining respondents are LSI Corporation of Milpitas, California (“LSI”) and STMicroelectronics N.V. of Switzerland and STMicroelectronics Inc. of Carrollton, Texas (collectively, “STMicro”).  With LSI and STMicro as respondents are seven of their customers. According to the May 3 notice, ALJ Essex’s ID found no violation of Section 337 because “[a]ll of the asserted claims were found to be invalid or obvious in view of certain prior art under 35 U.S.C. §§ 102 and 103.  The Barth patents were found to be unenforceable under the doctrine of unclean hands by virtue of Rambus’s destruction of documents.  The ID also found that Rambus had exhausted its rights under the Barth patents as to certain products of one respondent.  The ID found that all of the asserted patent claims were infringed, and rejected numerous affirmative defenses raised by the respondents.”  See our March 7, 2012 post for more details.  On March 16, 2012, Rambus, the respondents, and the Commission investigative attorney filed petitions for review of the ID. After examining the record of the investigation, the Commission determined to review the ID in its entirety.  Specifically, the Commission requested briefing with respect to the following eight issues, in addition to issues on remedy, the public interest, and bonding:
  1. Claim construction of the term “output frequency” as used in the Dally patents.
  2. Validity of both the Barth and Dally patents in light of certain specified evidence and prior art.
  3. Infringement of the asserted Dally claims in light of certain specified evidence and case law.
  4. Unenforceability of the Barth patents under the doctrine of unclean hands.
  5. Unenforceability of the Barth patents under the doctrine of inequitable conduct. 
  6. Whether, given the particular scope of the licensed field of each Rambus license, Rambus should nonetheless be required to allocate licensing expenses on a patent-by-patent basis.
  7. Whether Rambus had exhausted its rights under the Barth patents in view of certain “Samsung memory products.”
  8. Whether Rambus has standing to sue for infringement of the Dally patents.
Written submissions are due by May 18, 2012, with reply submissions due by June 1, 2012.
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ITC Issues Final Determination Finding Violation And Issues Limited Exclusion Order Against Motorola In Certain Mobile Devices (337-TA-744)

By Eric Schweibenz
|
May
22
On May 18, 2012, the International Trade Commission (the “Commission”) issued a notice finding a violation of Section 337 and issuing a limited exclusion order in Certain Mobile Devices, Associated Software, and Components Thereof (Inv. No. 337-TA-744). By way of background, the Complainant in this investigation is Microsoft Corporation (“Microsoft”) and the Respondent is Motorola Mobility, Inc. (“Motorola”).  On December 20, 2011, ALJ Theodore R. Essex issued the initial determination (“ID”) finding that a violation of Section 337 occurred in connection with the importation into the U.S., sale for importation, or sale within the U.S. after importation of certain mobile devices, associated software, and components thereof by reason of infringement of claims 1, 2, 5, and 6 of U.S. Patent No. 6,370,566 (the ‘566 patent).  ALJ Essex further determined that no such violation of Section 337 had occurred with respect to certain claims of U.S. Patent Nos. 5,758,352 (the ‘352 patent); 6,826,762 (the ‘762 patent); 6,909,910 (the ‘910 patent); 7,644,376 (the ‘376 patent); 5,664,133 (the ‘133 patent); and 6,578,054 (the ‘054 patent).  See our December 21, 2011 post for more details.  Both Microsoft and Motorola filed petitions for review of the ID, as well as responses to the petitions.  The Commission determined to review the ID and a set a schedule for the filing of written submissions on the issues under review and on remedy, the public interest, and bonding.  The private parties submitted their respective briefs and public interest comments were also received from non-parties Association for Competitive Technology, Inc. and Google Inc. According to the May 18 notice, the Commission determined to “affirm with modifications the ALJ’s determination that Microsoft met the economic prong of the domestic industry requirement with respect to all of the presently asserted patents in this investigation…”  Regarding the technical prong of the domestic industry requirement, the Commission determined to (i) affirm with modifications the ALJ’s finding that Microsoft failed to meet the technical prong for the ‘054 patent; (ii) affirm the ALJ’s finding that Microsoft satisfied the technical prong for the ‘566, ‘133, and ‘910 patents; (iii) reverse the ALJ’s determination that Microsoft failed to meet the technical prong for the ‘352 patent; and (iv) affirm the ALJ’s determination that Microsoft failed to meet the technical prong for the ‘762 and ‘376 patents.  As to validity, the Commission determined to “affirm with modifications the ALJ’s determination that the asserted claims of the ‘566 patent are not invalid due to anticipation or obviousness.”  Lastly, regarding infringement, the Commission determined to (i) reverse the ALJ’s finding that Microsoft failed to carry its burden of showing that Motorola’s accused products infringe the asserted claims of the ‘352 patent, and (ii) affirm the ALJ’s determination that Microsoft failed to show that Motorola induced infringement of each of the ‘054, ‘762, ‘376, ‘133, and ‘910 patents, and to affirm with modifications the ALJ’s determination that Microsoft failed to show that Motorola induced infringement of each of the ‘566 and ‘352 patents.  Regarding the appropriate form of relief, the Commission determined to issue a limited exclusion order prohibiting the unlicensed entry for consumption of mobile devices, associated software and components thereof covered by claims 1, 2, 5, or 6 of the ‘566 patent.  The order provides an exception for service, repair, or replacement articles for use in servicing, repairing, or replacing mobile devices under warranty or insurance contract.  The Commission also determined that the public interest factors do not preclude issuance of the limited exclusion order. The Commission further determined that a bond of $0.33 per device is required for temporary import of the articles in question during the Presidential review period.  According to the notice, the Commission additionally terminated the investigation.
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Update Regarding Certain Drill Bits (337-TA-844)

By Eric Schweibenz
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Jun
11
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Update Regarding Certain Products Containing Interactive Program Guide And Parental Control Technology (337-TA-845)

By Eric Schweibenz
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Jun
11
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ITC Issues Notice of Final Determination Finding Violation And General Exclusion Order In Certain Handbags And Luggage (337-TA-754)

By Eric Schweibenz
|
Jun
13
On May 30, 2012, the International Trade Commission (the “Commission”) issued a notice finding a violation of Section 337, and determining that a general exclusion order should issue in Certain Handbags and Luggage, Accessories, and Packaging Thereof (Inv. No. 337-TA-754). By way of background, Louis Vuitton filed a complaint requesting the ITC to commence an investigation pursuant to Section 337 against a host of respondents from Guangzhou China, Texas and California, for the unlawful import into the U.S., sale for importation, and/or sale within the U.S. after importation of certain handbags, luggage, accessories and packaging thereof that infringe U.S. Trademark Registration Nos. 297,594; 1,643,625; 1,653,663; 2,773,107; 2,177,828; 2,181,753; and 1,519,828.  In effect, the respondents were alleged to be in the business of manufacturing, and/or purchasing counterfeit or trademark-infringing Louis Vuitton bags and accessories from China and selling them in the United States.  Seeour December 8, 2010 post for more details.  On June 10, 2011, former Chief ALJ Luckern issued an initial determination finding that Louis Vuitton satisfied the domestic industry requirement. See our July 27, 2011 post for more details.  During the course of this Investigation, all respondents either settled or were found in default.  The defaulting respondents were identified as House of Bags, Ronett Trading, Inc., EZ Shine Group, Inc., Master of Handbags, Choice Handbags, Handbag Warehouse, T&T, and The Inspired Bagger (collectively, “the Defaulting Respondents”).  On March 5, 2012, Chief ALJ Charles E. Bullock granted Louis Vuitton’s motion for summary determination that the Defaulting Respondents violated section 337, and further recommended a general exclusion order (GEO) and a bond in the amount of 100% of the value of imported products. See our March 20, 2012 post for more details. According to the May 30 notice, the Commission determined not to review Chief ALJ Bullock’s March 5, 2012 Initial Determination, and requested briefing on remedy, the public interest, and bonding.  In Louis Vuitton’s April 26, 2012 brief, it indicated it was no longer requesting relief based on U.S. Trademark Registrations 1,643,625 and 1,653,663, but it requested a GEO and a bond of 100 percent, which was supported by the Commission Investigative Attorney.  Upon review of the submissions received in response to the Commission’s notice of review, and the record of the investigation, the Commission determined to issue a general exclusion order prohibiting the unlicensed entry of excluded handbags, luggage, accessories, and packaging that infringe any of the following U.S. Trademark Registration Nos.:  297,594; 2,773,107; 2,177,828; 2,181,753; and 1,519,828.  The Commission also determined that a bond in the amount of 100% of an article’s value is required for temporary import during the Presidential review period.  According to the notice, the Commission additionally terminated the investigation.
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ITC Decides Not To Review Issues Relating To Beacon Navigation’s Withdrawal Of Complaint In Certain Automotive GPS Navigation Systems (337-TA-814)

By Eric Schweibenz
|
Jun
15
On June 7, 2012, the International Trade Commission (the “Commission”) issued a notice determining not to review certain orders issued by ALJ Thomas B. Pender in Certain Automotive GPS Navigation Systems, Components Thereof, and Products Containing Same (Inv. No. 337-TA-814). By way of background, this investigation was instituted in November 2011 based on a complaint filed by Beacon Navigation GmbH (“Beacon”) alleging violation of Section 337 in the importation into the U.S. and sale of certain automotive GPS navigation systems, components thereof, and products containing same that infringe certain patents.  Beacon named numerous automobile manufacturers as proposed respondents, including Toyota, General Motors, Ford, Honda, Nissan, Hyundai, Kia, Mercedes-Benz, and BMW.  On April 13, 2012, Beacon filed a motion to withdraw its complaint.  On April 20, 2012, certain Respondents, including Suzuki, Mercedes-Benz, Ford, Chrysler, Nissan, Honda, General Motors, Mazda, Jaguar, Toyota, Volvo, Hyundai, Kia and BMW filed a response indicating that they did not oppose the motion to terminate, but requested that it not be granted until these respondents investigate whether Beacon violated Rule 210.21(a)(9)(iii) (relating generally to the termination of investigations) and/or Rule 210.4(c) (relating generally to written submissions, representations and sanctions) concerning the veracity of licensing information in its complaint.  On the same day, respondents filed a motion requesting that the ALJ sua sponteissue a show cause order directing Beacon and its counsel to (1) identify all licensees that Beacon and its counsel are currently aware of and knew of at the time the Complaint was filed, (2) provide details of Beacon’s pre-filing investigation, and (3) show cause why Beacon did not violate Commission Rule 210.4(c) by identifying only MiTAC International Inc. as a licensed entity.  On May 8, 2012, the ALJ issued Order No. 8 denying the motion for a sua sponteshow cause order, as well as two other motions to recover from complainant costs incurred in preparing for cancelled depositions.  See our May 10, 2012 post for more details.  On the same day, the ALJ issued Order No. 9 granting Beacon’s motion to terminate the investigation based on a withdrawal of the complaint.  See our May 8, 2012 post for more details.  On May 15, 2012, several respondents filed a joint petition for review of both orders and argued that there is a split in Commission authority concerning the application of the safe harbor provision which is at issue in Order No. 8.  The petition also sought review of Order No. 9 to enable the Commission to grant the relief sought with respect to Order No. 8.  According to the June 7 notice, the Commission decided not to review either of ALJ Pender’s orders: 
The Commission does not agree that there is a split in Commission precedent regarding application of the safe harbor provision of 19 C.F.R. § 210.4(d)(1).  The Commission investigations cited by petitioners each represent the exercise of discretion by the presiding ALJ in determining whether to issue a show cause order.
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ITC Terminates Investigation With Final Determination Of No Violation In Certain Reduced Ignition Proclivity Cigarette Paper Wrappers (337-TA-756)

By Eric Schweibenz
|
Jun
15
On June 5, 2012, the International Trade Commission (the “Commission”) issued a notice determining to terminate the investigation with a final determination of no violation in Certain Reduced Ignition Proclivity Cigarette Paper Wrappers and Products Containing Same (Inv. No. 337-TA-756).  By way of background, the Complainant in this investigation is Schweitzer-Mauduit International, Inc. (“Schweitzer”) and the remaining Respondents are Julius Glatz GmbH, LIPtec GmbH, and KneX Worldwide LLC (collectively, “Glatz”).  In the ID, ALJ Gildea determined that no violation of Section 337 had occurred by Glatz in the importation into the U.S., sale for importation, or sale within the U.S. after importation of certain reduced ignition proclivity cigarette paper wrappers and products containing same that allegedly infringe U.S. Patent Nos. 5,878,753 (the ‘753 patent) and 6,725,867 (the ‘867 patent).  See our February 29, 2012 post for more details.  On April 2, 2012, the Commission issued a notice determining to review the ID in part.  See our April 4, 2012 post for more details. According to the June 5 notice, the Commission “determined to terminate the investigation with a final determination of no violation of section 337.”
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ITC Issues Final Determination Of No Violation As To Certain Patents And Remands In Certain Liquid Crystal Display Devices (337-TA-741/749)

By Eric Schweibenz
|
Jun
21
On June 14, 2012, the International Trade Commission (the “Commission”) issued a notice determining that there has been no violation of Section 337 with respect to U.S. Patent Nos. 5,978,063 (the ‘063 patent), 5,648,674 (the ‘674 patent), 5,621,556 (the ‘556 patent), and 5,375,006 (the ‘006 patent) in Certain Liquid Crystal Display Devices, Including Monitors, Televisions, Modules, and Components Thereof(Inv. No. 337-TA-741/749).  The Commission also determined to remand the investigation to ALJ Robert K. Rogers, Jr. with respect to U.S. Patent No. 6,121,941 (the ‘941 patent).  By way of background, the Complainants in this investigation are Thomson Licensing SAS and Thomson Licensing LLC (collectively, “Thomson”), and the Respondents are Chimei InnoLux Corp. and InnoLux Corp. (collectively, “CMI”); Qisda Corp. and Qisda America Corp. (collectively, “Qisda”); BenQ Corp., BenQ America Corp., and BenQ Latin America Corp. (collectively, “BenQ”); AU Optronics Corp. and AU Optronics Corp. America; Realtek Semiconductor Corp.; and MStar Semiconductor Inc. (all collectively, the “Respondents”).  Thomson accused the Respondents of infringing certain claims of the ‘063, ‘674, ‘556, ‘006, and ‘941 patents. On January 12, 2012, ALJ Rogers issued an Initial Determination (“ID”) finding a violation of Section 337 with respect to the ‘674 patent.  Specifically, the ALJ found that the CMI accused products including the Type 2 Array Circuitry and any Qisda or BenQ accused products incorporating these CMI accused products infringe the asserted claims of the ‘674 patent.  No other accused products were found to infringe the ‘674 patent or the other patents at issue.  ALJ Rogers also determined that the asserted claims of the ‘674, ‘556, and ‘941 patents are not invalid, but that certain claims of the ‘063 and ‘006 patents are invalid for obviousness and anticipation, respectively.  Lastly, the ALJ found that a domestic industry exists with respect to the asserted patents.   See our January 17, 2012 post for more details.  On March 26, 2012, the Commission issued a notice determining to review the ID in part.  In particular, the Commission determined to review sixteen individual findings in the ID including, inter alia, issues related to anticipation and obviousness of the asserted claims, the status of certain references as prior art, claim construction, infringement, the exclusion of certain evidence, and the economic prong of the domestic industry requirement.  The Commission requested briefing from the parties on the issues under review, as well as on remedy, the public interest, and bonding.  See our April 3, 2012 post for more details. According to the June 14 notice, after examining the record of the investigation, including the ID and the submissions of the parties, the Commission determined to reverse ALJ Rogers’s finding of a violation of Section 337 with respect to the ‘674 patent and affirm, with modifications, the findings of no violation of Section 337 with respect to the ‘006, ‘063, and ‘566 patents.  Accordingly, the Commission terminated the investigation as to the ‘006, ‘063, ‘556, and ‘674 patents with a finding of no violation.  With respect to the ‘941 patent, the Commission affirmed that the Respondents do not infringe the asserted claims of the ‘941 patent and that the Respondents had not shown that the asserted claims of the ‘941 patent are obvious in view of a prior art patent to Baba.  However, the Commission reversed the ALJ’s ruling to exclude from the record evidence of so-called ViewFrame II+2 prior art, and remanded to the ALJ to decide whether the ViewFrame II+2 prior art anticipates the asserted claims of the ‘941 patent.
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ITC Decides To Review In Part Initial Determination In Certain Wireless Communication Devices (337-TA-745)

By Eric Schweibenz
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Jun
27
On June 25, 2012, the International Trade Commission (the “Commission”) issued a notice determining to review in part an Initial Determination (“ID”) issued by ALJ Thomas B. Pender on April 24, 2012 finding a violation of Section 337 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. (“Motorola”) and the Respondent is Apple Inc. (“Apple”).  In the ID, ALJ Pender determined that a violation of Section 337 had occurred by Apple in the importation into the U.S. and sale of certain wireless communication devices, portable music and data processing devices, computers, and components thereof that infringe U.S. Patent No. 6,246,697 (the ‘697 patent).  However, ALJ Pender found no violation of Section 337 with respect to U.S. Patent Nos. 6,272,333 (the ‘333 patent), 6,246,862 (the ‘862 patent), and 5,636,223 (the ‘223 patent).  See our May 31, 2012 post for more details. According to the June 25 notice, Motorola filed a joint petition for review and contingent petition for review of certain aspects of the ID’s findings concerning claim construction, infringement, validity, and domestic industry.  Apple filed a joint petition for review and contingent petition for review of certain aspects of the ID’s findings concerning claim construction, infringement, validity, and unenforceability.  Each party filed a response to the other party’s 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, with respect to the ‘223 patent, the Commission determined to review certain issues of claim construction, validity, infringement, and domestic industry.  With respect to the ‘697 patent, the Commission determined to review certain issues of claim construction, validity, direct and induced infringement, and domestic industry.  With respect to the ‘862 patent, the Commission determined to review certain issues of claim construction and validity.  Finally, with respect to the ‘333 patent, the Commission determined to review certain issues of claim construction, validity, infringement, and domestic industry. The notice states that the parties are requested to brief their positions on thirteen questions listed in the notice.  The notice also requests briefing on remedy, the public interest, and bonding.  Written submissions are due by July 9, 2012, with reply submissions due by July 16, 2012.
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ITC Determines To Review Initial Determination And Remand The Investigation To The ALJ In Certain Gaming And Entertainment Consoles (337-TA-752)

By Eric Schweibenz
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Jul
03
On June 29, 2012, the International Trade Commission (the “Commission”) issued a notice determining to review the final initial determination (“ID”) issued by ALJ David P. Shaw on April 23, 2012 finding a violation of Section 337 in Certain Gaming and Entertainment Consoles, Related Software, and Components Thereof(Inv. No. 337-TA-752).  The Commission’s notice also included an order remanding the investigation to the ALJ. By way of background, the investigation is based on a complaint filed by Motorola Mobility, Inc. and General Instrument Corporation (collectively, “Motorola”) alleging violation of Section 337 by Respondent Microsoft Corp. (“Microsoft”) for its importation into the U.S. and sale of certain models of Microsoft’s popular Xbox product.  See our November 24, 2010 post for more details.  On April 23, 2012, ALJ Shaw issued an ID which found that a violation of Section 337 occurred by reason of infringement of certain valid claims of U.S. Patent Nos. 5,357,571 (the ‘571 patent); 6,069,896 (the ‘896 patent); 6,980,596 (the ‘596 patent); and 7,162,094 (the ‘094 patent).  See our May 24, 2012 post for more details on the public version of the ID. According to the notice, on May 7, 2012, Microsoft filed a petition for review of the ID and Motorola filed a petition and contingent petition for review.  Each party filed a response to the other party’s petition.  Microsoft, along with several non-parties, also filed statements on the public interest in response to the ALJ’s recommended determination (“RD”) on remedy and bonding.  See our May 31, 2012 post for more details on the RD.  On June 22, 2012, Microsoft filed a motion for partial termination of the investigation as to the ‘094 and ‘596 patents.   After examining the record of the investigation, the Commission determined to review the ID in its entirety.  The Commission also remanded the investigation to the ALJ to “(1) apply the Commission’s opinion in Certain Electronic Devices with Image Processing Systems, Components Thereof, and Associated Software, Inv. No. 337-TA-724, Comm’n Op. (Dec. 21, 2011); (2) rule on Microsoft’s motion for partial termination of the investigation …; and (3) set a new target date for completion of the investigation,” which allows four months for Commission review.
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ITC Decides To Review In Part Initial Determination Finding Respondents In Default In Certain Ink Application Devices (337-TA-832)

By Eric Schweibenz
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Jul
06
On June 29, 2012, the International Trade Commission (the “Commission”) issued a notice determining to review in part an Initial Determination (“ID”) issued by Chief ALJ Charles E. Bullock on May 31, 2012 finding Respondents in default for failing to respond to the complaint and notice of investigation in Certain Ink Application Devices and Components Thereof and Methods of Using The Same(Inv. No. 337-TA-832). By way of background, the investigation is based on a January 13, 2012 complaint filed by MT.Derm GmbH of Germany and Nouveau Cosmetique USA Inc. of Orlando, Florida alleging violation of Section 337 in the importation into the U.S. and sale of certain ink application devices and components thereof that infringe one or more claims of U.S. Patent Nos. 6,345,553 and 6,505,530.  The named Respondents are T-Tech Tattoo Device Inc. (“T-Tech”), Yiwu Beyond Tattoo Equipments Co., Ltd. (“Yiwu”), and Guangzhou Pengcheng Cosmetology Firm (“Guangzhou”).  See our February 1, 2012 post for more details. According to the notice, on April 16, 2012, Complainants filed a motion with the ALJ seeking a default determination against T-Tech, Yiwu, and Guangzhou for their failure to respond to the complaint and the notice of investigation.  On May 1, 2012, ALJ Bullock issued an order requesting Respondents to show cause as to why they should not be found in default.  No responses were received and, on May 31, 2012, the ALJ granted Complainants motion for default.  In response to the ID, T-Tech submitted a letter to the Commission arguing that the default finding against it should be reviewed because it never received any correspondence from the Commission.  Upon further investigation into T-Tech’s allegations, the Commission Investigative Attorney learned that the complaint and notice of investigation were incorrectly addressed and never received by T-Tech.  Under Commission Rule 210.11(a), the Commission must serve copies of the complaint and notice of investigation on all proposed respondents named in the complaint.      After considering the arguments, the Commission determined to reverse the finding of default against T-Tech and to re-serve T-Tech pursuant to Rule 210.11(a).  The Commission also determined not to review the ALJ’s findings with respect to Yiwu and Guangzhou.  Lastly, the notice requests briefing on remedy, the public interest, and bonding in connection with Yiwu and Guangzhou.  Written submissions are due by July 13, 2012, with reply submissions due by July 20, 2012.
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ITC Issues Notice Denying Motion To Stay Enforcement Of Remedial Orders In Certain Ground Fault Circuit Interrupters (337-TA-739)

By Eric Schweibenz
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Jul
10
On July 5, 2012, the International Trade Commission (the “Commission”) issued a notice determining to deny a motion filed by certain respondents to stay the general exclusion order and cease and desist orders issued by the Commission in Certain Ground Fault Circuit Interrupters and Products Containing Same (Inv. No. 337-TA-739). By way of background, the Complainant in this investigation is Leviton Manufacturing Co., Inc. (“Leviton”), which alleged violation of Section 337 with respect to certain ground fault circuit interrupters and products containing the same that infringe certain claims of U.S. Patent Nos. 7,463,124 (the ‘124 patent), 7,737,809 (the ‘809 patent), and 7,764,151 (the ‘151 patent). Although the Notice of Investigation named numerous respondents, several were found in default or were terminated due to settlement, consent orders, or withdrawn allegations.  The seven remaining respondents were Zhejiang Trimone Electric Science & Technology Co. Ltd. (“Trimone”), Fujian Hongan Electric Co, Ltd. (“Hongan”), TDE, Inc., Shanghai ELE Manufacturing Corp., Orbit Industries, Inc., American Electric Depot Inc., and Shanghai Jia AO Electrical Co.  ALJ Bullock issued an initial determination (“ID”) on December 20, 2011 finding no violation of Section 337 on the grounds that Leviton had not sufficiently shown that a domestic industry exists with respect to the three asserted patents and/or articles protected by those patents.  On February 21, 2012, the Commission issued a notice that it had determined to review the ID in its entirety and requested submissions from the parties on certain issues under review, and from the parties and the public on the issues of remedy, the public interest, and bonding.  See our February 24, 2012 post for more details.  Upon review, the Commission determined that a violation of Section 337 has been shown based on infringement of claims 1-4, 6, 8-11, 13, 15-16, 35-37, 39, and 41-46 of the ‘809 patent.  Regarding a remedy, the Commission determined to issue a general exclusion order prohibiting the unlicensed entry of ground fault circuit interrupters and products containing same that infringe one or more of the above-enumerated claims of the ‘809 patent, as well as cease and desist orders against various defaulting respondents prohibiting them from importing, selling, marketing, distributing, offering for sale, and advertising such ground fault circuit interrupters and products containing same.  See our May 3, 2012 notice for more details.  According to the July 5 notice, on May 10, 2012, Respondents Trimone and Hongan filed a motion with the Commission seeking to stay the Commission’s remedial orders pending appeal to the U.S. Court of Appeals for the Federal Circuit.  On May 21, 2012, Leviton and the Commission Investigative Attorney filed oppositions to the motion.  After considering the motions and reviewing the record, the Commission determined to deny the motion.  In support of its decision, the Commission’s order denying the motion cited the Federal Circuit’s 1990 decision in Standard Havens Prods. Inc. v. Gencor Indus. Inc.
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ITC Issues Final Determination Of No Violation In Certain Mobile Telephones And Wireless Communication Devices Featuring Digital Cameras (337-TA-703)

By Eric Schweibenz
|
Jul
23
On July 20, 2012, the International Trade Commission (the “Commission”) issued a notice determining to review in part ALJ Thomas B. Pender’s May 21, 2012 Remand Initial Determination (“RID”) finding no violation of Section 337 in Certain Mobile Telephones and Wireless Communication Devices Featuring Digital Cameras, and Components Thereof(Inv. No. 337-TA-703).  On review, the Commission determined to affirm ALJ Pender’s finding of no violation of Section 337. By way of background, the Complainant in this investigation is Eastman Kodak Company (“Kodak”).  The Respondents are Apple Inc. (“Apple”) and Research in Motion, Ltd. and Research in Motion Corp. (collectively, “RIM”).  On January 24, 2011, former Chief ALJ Paul J. Luckern issued an Initial Determination (“ID”) finding 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 ID.  See our July 6, 2011 and August 8, 2011 posts for more details.  After remand, former Chief ALJ Luckern retired, and the investigation was reassigned to ALJ Pender.  On May 21, 2012, ALJ Pender issued the RID finding no violation of Section 337.  Specifically, ALJ Pender determined that (1) the accused Apple iPhone 3G infringes claim 15 of U.S. Patent No. 6,292,218 (the ‘218 patent); (2) the accused Apple iPhone 3GS and iPhone 4 do not infringe claim 15 of the ‘218 patent; (3) the accused RIM products infringe claim 15 of the ‘218 patent; and (4) claim 15 of the ‘218 patent is invalid as obvious in view of a Japanese patent application to Mori and a U.S. patent to Parulski.  See our July 2, 2012 post for more details. According to the July 20 notice, Kodak, Apple, RIM, and the Commission Investigative Staff (“OUII”) each filed petitions for review of the RID.  OUII, Apple, and RIM each filed responses to Kodak’s petition for review.  OUII and Kodak each filed responses to Apple’s and RIM’s petitions for review. After examining the record of the investigation, including the parties’ petitions for review and responses thereto, as well as the parties’ submissions to the ALJ—both before and after the remand—and the transcripts of the hearing conducted by the ALJ, the Commission determined to review the RID in part.  In particular, the Commission determined to review:  (1) ALJ Pender’s finding of infringement of the ‘218 patent by the accused RIM products and the iPhone 3G; and (2) the ALJ’s finding that claim 15 is invalid as obvious in view of the Mori and Parulski references. The notice states that upon review, the Commission determined to (1) find that the accused RIM products and the Apple iPhone 3G infringe claim 15; and (2) affirm the ALJ’s invalidity findings regarding the Mori and Parulski combination on modified grounds.  Accordingly, the Commission upheld ALJ Pender’s ultimate finding of no violation of Section 337, and terminated the investigation.
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ITC Issues Final Determination Of No Violation In Certain Semiconductor Chips (337-TA-753)

By Eric Schweibenz
|
Jul
27
On July 25, 2012, the International Trade Commission (the “Commission”) issued a notice determining to terminate the investigation with a finding of no violation of Section 337 in Certain Semiconductor Chips and Products Containing Same (Inv. No. 337-TA-753). By way of background, the Complainant in this investigation is Rambus Inc. of Sunnyvale, California (“Rambus”).  Rambus accused respondents of infringing certain claims of U.S. Patent Nos. 6,470,405, 6,591,353, and 7,287,109 (collectively, “the Barth patents”), and Nos. 7,602,857 and 7,715,494 (collectively, “the Dally patents”).  Although the Notice of Investigation named numerous respondents, many were terminated due to settlement.  In particular, Mediatek Inc., Audio Partnership PLC, and Oppo Digital, Inc. settled with Rambus following the ALJ’s issuance of the ID.  The two remaining respondents are LSI Corporation of Milpitas, California (“LSI”) and STMicroelectronics N.V. of Switzerland and STMicroelectronics Inc. of Carrollton, Texas (collectively, “STMicro”).  With LSI and STMicro as respondents are seven of their customers.  On March 2, 2012, ALJ Theodore R. Essex  issued the Final Initial Determination (“ID”) finding no violation of Section 337 because all of the asserted claims were found to be invalid or obvious in view of certain prior art under 35 U.S.C. §§ 102 and 103.  The Barth patents were found to be unenforceable under the doctrine of unclean hands by virtue of Rambus’s destruction of documents.  The ID also found that Rambus had exhausted its rights under the Barth patents as to certain products of one respondent.  The ID found that all of the asserted patent claims were infringed, and rejected numerous affirmative defenses raised by the respondents.  See our March 7, 2012 post for more details.  On May 3, 2012, the Commission issued a notice determining to review the ID.  See our May 7, 2012 post for more details. According to the July 25 notice, the Commission determined to find no violation of Section 337 for the following reasons:
We affirm the ALJ’s conclusion that all of the asserted patent claims are invalid under 35 U.S.C. § 102 or 103, except for the asserted Dally multiple-transmitter claims (‘857 claims 11-13, 32-34, 50-52), for which we find that Rambus has not demonstrated infringement.  We reverse the ALJ’s determination that Rambus has demonstrated the existence of a domestic industry under 19 U.S.C. § 1337(a) for both the Barth patents and Dally patents.  We affirm the ALJ’s determination that the Barth patents are unenforceable under the doctrine of unclean hands.  We affirm the ALJ’s finding of exhaustion of the Barth patents as to one respondent.  The Commission’s determinations, including non-dispositive findings not recited above, will be set forth more fully in the Commission’s opinion.   
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ITC Decides To Review ALJ’s Granting Of Summary Determination Motion In Certain Lighting Control Devices (337-TA-776)

By Eric Schweibenz
|
Aug
01
On July 19, 2012, the International Trade Commission (the “Commission”) issued a notice determining to review in part an Initial Determination (“ID”) issued by ALJ Theodore R. Essex on June 7, 2012 granting in part Complainant Lutron Electronics Co., Inc’s (“Lutron”) motion for summary determination of violation of Section 337 in Certain Lighting Control Devices Including Dimmer Switches and Parts Thereof (Inv. No. 337-TA-776).  By way of background, the investigation is based on a May 16, 2011 complaint filed by Lutron alleging violation of Section 337 in the importation into the U.S. and sale of certain lighting control devices including dimmer switches and parts thereof that infringe U.S. Patent Nos. 5,248,919 (“the ‘919 patent”) and 5,637,930 (“the ‘930 patent”).  The Commission’s notice of investigation named ten separate respondents.  See our June 13, 2011 post for more details.  According to the July 19 notice, two of the respondents were terminated from the investigation based on consent orders, while the remaining respondents were found in default.  On January 20, 2012, “Lutron filed a motion for summary determination of violation of Section 337 pursuant to Commission rule 210.16(c)(2) and requested entry of a general exclusion order with respect to the ‘930 patent.  Lutron also requested entry of a limited exclusion order with respect to the ‘919 patent directed against the accused products of all defaulting respondents.  Lutron further requested cease and desist orders with respect to both asserted patents against all defaulting respondents,” expect for Respondent Westgate Manufacturing, Inc.  On June 7, 2012, ALJ Essex issued Order No. 18 granting in part Lutron’s motion for summary determination.  In particular, the ALJ found that Lutron satisfied the domestic industry requirement, that all defaulting respondents met the importation requirement, and that each of the defaulting respondents’ accused products infringed at least one claim of both asserted patents.  As to remedy, the ALJ recommended that a limited exclusion order issue with respect to all defaulting respondents for the asserted claims of both patents, and that cease and desist orders issue against three of the defaulting respondents.  As to bonding, ALJ Essex recommended a bond of 100 percent of the entered value of the covered products.  After examining the record of the investigation, including the subject ID of June 7, 2012, the Commission determined to vacate all portions of the ID relating to the ‘919 patent as moot because the patent expired on March 31, 2012, thereby terminating the Commission’s jurisdiction under 19 U.S.C. § 1337(a)(1)(B)(i).  The Commission determined not to review the remainder of the ID.       The notice requests briefing on remedy, the public interest, and bonding.  Written submissions are due by August 2, 2012, with reply submissions due by August 9, 2012.
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ITC Decides To Partially Review And Partially Vacate Initial Determination In Certain Polyimide Films (337-TA-772)

By Eric Schweibenz
|
Aug
03
On August 1, 2012, the International Trade Commission (the “Commission”) issued a notice determining to partially review and partially vacate the Final Initial Determination (“ID”) issued by ALJ Robert K. Rogers, Jr. on May 10, 2012 finding no violation of Section 337 in Certain Polyimide Films, Products Containing Same, and Related Methods(Inv. No. 337-TA-772).  By way of background, this investigation is based on an April 1, 2011 complaint filed by Kaneka Corporation of Japan (“Kaneka”) alleging violation of Section 337 in the importation into the U.S. and sale of certain polyimide films, products containing same, and related methods that infringe U.S. Patent Nos. 6,264,866 (“the ‘866 patent”), 6,746,639 (“the ‘639 patent”), 7,018,704 (“the ‘704 patent”), and 7,691,961 (“the ‘961 patent”).  The Respondents in this investigation are SKC Kolon PI, Inc. (“SKPI”) and SKC, Inc. (collectively, “SKC”).  Seeour April 4, 2011 post for more details.    On May 10, 2012, ALJ Rogers issued the subject ID finding no violation of Section 337 by SKC with respect to the above-listed patents.   See our June 25, 2012 post for more details regarding the public version of the ID.  On May 22, 2012, Kaneka petitioned for review of the ID, with SKC filing a contingent petition for review the following day.  The Commission Investigative Staff did not participate in the investigation. After examining the record of the investigation, including the ID and the parties’ petitions for review and responses thereto, the Commission determined to partially review and partially vacate the ID as follows:
[w]ith respect to the ’866 patent, the Commission has determined to review the finding that Kaneka does not satisfy the technical prong of the domestic industry requirement. With respect to the ‘704 patent, the Commission has determined to review and vacate as moot the ALJ’s alternative findings that the accused products do not infringe, that claim 1 is not invalid for anticipation or obviousness, and that Kaneka does not satisfy the technical prong or the economic prong of the domestic industry requirement. The Commission has determined not to review the ALJ’s conclusion that the asserted claims of the ‘704 patent are invalid for indefiniteness. With respect to the ‘961 patent, the Commission has determined to review the ALJ’s finding that certain of the accused products infringe and certain of the accused products do not infringe claim 9.
The parties are requested to brief their positions on two questions listed in the notice.  The notice also requests briefing on remedy, the public interest, and bonding. Written submissions are due by August 15, 2012, with reply submissions due by August 22, 2012.
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ITC To Review Enforcement Initial Determination In Certain DC-DC Controllers (337-TA-698)

By Eric Schweibenz
|
Aug
17
On August 9, 2012, the International Trade Commission (“the Commission”) issued a notice of its decision to review in part an enforcement initial determination (“EID”) finding a violation of the August 13, 2010 consent order in Certain DC-DC Controllers and Products Containing Same (Inv. No. 337-TA-698). By way of background, the Commission instituted this enforcement proceeding on September 6, 2011 based on an enforcement complaint filed by Richtek Technology Corp. and Richtek USA, Inc. (collectively, “Richtek”) alleging violations of the August 13, 2010 consent orders in the underlying investigation by respondents uPI Semiconductor Corp. (“uPI”) and Sapphire Technology Limited (“Sapphire”) through the continued importing, offering for sale, and selling for importation of DC-DC controllers that infringe one or more of U.S. Patent Nos. 7,315,190; 6,414,470 and 7,132,717.  See our July 25, 2011 and September 5, 2011 posts for more details.  On March 20, 2012, ALJ David P. Shaw issued an initial determination granting a joint motion to terminate the enforcement proceeding as to Sapphire based on a settlement agreement.  See our March 22, 2012 post for more details.  The ALJ issued his EID on June 8, 2012 finding a violation of the August 13, 2010 consent order by uPI in connection with certain infringing uPI DC-DC controllers and downstream products containing accused uPI controllers that had been imported and/or sold in the U.S. without Richtek’s consent.  The recommendations in ALJ Shaw’s EID included modifying the consent order to clarify that it applies (and has always applied) to all uPI affiliates, and imposing a civil penalty of $750,000 against uPI.  On June 25, 2012, uPI and Richtek each filed a petition for review of the EID. After reviewing the parties’ filings, the Commission determined to review the EID in part.  Specifically, the Commission determined to review the ALJ’s finding of infringement of the ‘470 patent, infringement of the ‘190 patent, and that uPI violated the August 13, 2010 consent order.  The Commission requested that the parties’ submit briefing limited to the following issues:  (1) the test for determining whether uPI violated the consent order prohibition against “knowingly aid[ing], abet[ting], encourag[ing], participat[ing] in, or induc[ing]” importation, sale, sale for importation, or use after importation of infringing controllers; (2) whether there is a factual basis in the evidentiary record proving that a violation of the foregoing consent order prohibition occurred in light of the evidence of uPI’s efforts to comply with the consent order; (3) whether there is a factual basis in the evidentiary record proving that uPI violated the consent order prohibition against “import[ing] into the United States, sell[ing] for importation into the United States, or sell[ing] or offer[ing] for sale in the United States after importation” any controllers or products containing same that infringe the asserted patent claims or contain Richtek’s asserted trade secrets; and (4) the specific date(s) on which an importation or sale in the U.S. occurred for each line item of the table included in the EID.  The Commission also requested written submissions addressing the form of remedy, if any, that should be ordered, particularly how revocation of the consent order and issuance of an exclusion order would effect the public health and welfare, competitive conditions in the U.S. economy, domestic production of articles that are like or directly competitive with those at issue in the investigation, and U.S. consumers.
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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.