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ITC Issues General And Limited Exclusion Orders In Certain Coaxial Cable Connectors (337-TA-650)

By Eric Schweibenz
|
Apr
01
On March 31, 2010, the International Trade Commission issued a notice determining to issue a general exclusion order (“GEO”) and a limited exclusion order (“LEO”), further extend the target date, and remand the investigation to ALJ E. James Gildea 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 the final initial determination (“ID”) finding that no violation of Section 337 had occurred in connection with the Active Respondents’ importation into the U.S., the sale for importation, or the sale within the U.S. after importation of certain coaxial cable connectors by reason of infringement of U.S. Patent No. 5,470,257 (the ‘257 patent).  The ID further found that the Defaulting Respondents were in violation of Section 337 for reasons of infringement of the ‘257 patent, U.S. Patent Nos. D440,539 (the ‘539 patent), 6,558,194 (the ‘194 patent), and D519,076 (the ‘076 patent).  See our November 10, 2009 post for more details.  On December 14, 2009, the ITC issued a notice determining to review a portion of the ID.  The notice also asked the parties and members of the public comment on “the interpretation of section 337(a)(3) as it pertains to licensing.”  See our December 16, 2009 post for more details. In the March 31 notice, the Commission determined to vacate in part ALJ Gildea’s finding that PPC established a domestic industry for the ‘539 patent and to issue an order remanding the portion of the investigation relating to the ‘539 patent to the ALJ for further proceedings.  The Commission also determined to modify ALJ Gildea’s constructions of “fastener means” and “engagement means” in the ‘257 patent and consequently reverse the ALJ’s finding that PPC established a domestic industry for the ‘257 patent and his finding that a violation has occurred with respect to the ‘257 patent.  Additionally, the Commission determined that the Defaulting Respondents violated Section 337 by reason of infringement of the ‘076 and ‘194 patents, and that Active Respondents did not violate Section 337. The Commission determined that the appropriate form of relief is an LEO and a GEO.  The LEO prohibits the unlicensed entry of coaxial cable connectors and components thereof and products containing the same that infringe the single claim of the ‘076 patent and are manufactured abroad by or on behalf of, or imported by or on behalf of, any of the Defaulting Respondents.  The GEO prohibits the unlicensed entry of coaxial cable connectors and components thereof and products containing the same that infringe claims 1 and/or 2 of the ‘194 patent.  The Commission further determined that the public interest factors do not preclude issuance of the exclusion orders, and that the bond during the Presidential review period should be set at 13 cents per coaxial connector of the Defaulting Respondents that is subject to the LEO or the GEO. Lastly, the Commission determined to extend the target date of the investigation to June 1, 2010, “to allow the ALJ time to consider the Commission’s remand instructions.”
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ITC Reverses and Remands Initial Determination In Certain Hybrid Electric Vehicles (337-TA-688)

By Eric Schweibenz
|
Apr
06
On April 2, 2010, the ITC issued a notice and opinion reversing and remanding ALJ Theodore R. Essex’s initial determination (“ID”) in Certain Hybrid Electric Vehicles and Components Thereof (Inv. No. 337-TA-688). By way of background, this investigation follows litigation between the parties in the U.S. District Court for the Eastern District of Texas (“EDTX”) in which certain Toyota hybrid vehicles were found to infringe U.S. Patent No. 5,343,970.  On March 3, 2010, ALJ Essex issued Order No. 6, which granted, on the basis of claim preclusion, Complainant Paice LLC’s (“Paice”) motion for summary determination of infringement, validity and enforceability, and denied Respondents Toyota Motor Corp., Toyota Motor North America, and Toyota Motor Sales, USA, Inc.’s (collectively, “Toyota”) cross-motion for summary determination terminating the investigation.  See our March 29, 2010 post for more details.  The parties contend that the district court’s ruling in Paice LLC v. Toyota Motor Corp. et al., C.A No. 2:04-cv-211-DF, should be afforded preclusive effect in this investigation, but disagree as to the operation and effect of the preclusion.  Having examined the record, the ID, Toyota’s petition for review, and Paice’s and the OUII’s responses thereto, the ITC determined to reverse the ID “because the variant of claim preclusion successfully urged upon the ALJ by Paice and the [OUII] constitutes legal error.”  The ITC remanded the ID to the ALJ “to determine whether and to what extent arguments regarding infringement and validity are barred by the doctrine of issue preclusion.” Citing the Restatement (Second) of Judgments (1982) (“Restatement”) to define the scope of claim preclusion, the ITC observed that “the only claim presented in this investigation is Paice’s, . . . and if the doctrine is to be applied at all in this investigation (upon which we take no position), it is to be applied against Paice.”  The opinion provided in relevant part:
For present purposes, it is sufficient to note that if this investigation is part of the same “claim” as the district court action, and if no exception to claim preclusion applies, then this investigation is precluded altogether.  If this investigation is not part of the same “claim” as the district court action, or if an exception to claim preclusion exists, then claim preclusion does not apply at all.
Since ALJ Essex found that claim preclusion does not bar Paice from seeking relief from the ITC, the ITC held that the ALJ erred as a matter of law by barring only re-litigation of certain issues.  The ITC rejected Paice’s and the OUII’s argument that references in the Restatement to “parts” and “phases” of a claim means that claim preclusion does not operate against Paice’s claim as a whole, stating that “[t]he Restatement is quite clear that each ‘part’ of a claim for its purposes is each theory of relief maintained on the same series of transactions, and not, as Paice and the [OUII] believe, any issue of any action,” and that “‘phases’ refers, essentially, to different actions in which different theories of relief are advanced.” The ITC also took issue with what Paice deemed binding Federal Circuit authority for its arguments.  First, the ITC found that Paice selectively quoted from Young Engineers, Inc. v. ITC, 721 F.2d 1305 (Fed. Cir. 1983), and thus misapplied that case’s holding, which merely “reiterates the basic function of claim preclusion to prevent a succession of lawsuits on a common claim” and “does not support a policy of encouraging serial filings by preventing a defendant from mounting a defense in subsequent actions.”  Second, the ITC observed that Farrel Corp. v. ITC, 949 F.2d 1147 (Fed. Cir. 1992), involved issue preclusion, not claim preclusion, and the brief discussion of res judicata in that case is therefore irrelevant to the claim preclusion matter in the instant investigation.  The third case relied upon by Paice is KSM Fastening Systems, Inc. v. H.A. Jones Co., 776 F.2d 1522 (Fed. Cir. 1985), which discusses preclusion in the context of contempt proceedings and like Farrel and Young Engineers, uses the term res judicata to include issue preclusion.  The ITC found that none of these cases support Paice’s theory of one-way operation of claim preclusion against Toyota.
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ITC Grants Amgen’s Motion For Partial Termination And Requests Additional Briefing In Certain Products Containing Recombinant Human Erythropoietin (337-TA-568)

By Eric Schweibenz
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Apr
08
On April 6, 2010, the ITC issued a notice granting Amgen, Inc.’s motion for partial termination of the investigation in Certain Products and Pharmaceutical Compositions Containing Recombinant Human Erythropoietin (Inv. No. 337-TA-568).  In addition, the ITC requested briefing on issues relating to summary determination and to remedy, the public interest and bonding. By way of background, on May 12, 2006, the Commission instituted an investigation based on a complaint filed by Amgen asserting a violation of Section 337 in the importation into the United States, sale for importation, or sale within the United States after importation of certain products and pharmaceutical compositions containing recombinant human erythropoietin by reason of infringement of certain claims U.S. Patent No. 5,441,868 (the ‘868 patent), U.S. Patent No. 5,547,933 (the ‘933 patent), US. Patent No. 5,618,698 (the ‘698 patent), U.S. Patent No. 5,621,080 (the ‘080 patent), U.S. Patent No. 5,756,349 (the ‘349 patent), and U.S. Patent No. 5,955,422 (the ‘422 patent).  The notice of investigation named Roche Holding Ltd. of Basel, Switzerland; F. Hoffman-La Roche, Ltd. of Basel, Switzerland; Roche Diagnostics GmbH of Mannheim, Germany; and Hoffman La Roche, Inc. of Nutley, New Jersey (collectively, “Roche”) as respondents. On August 31, 2009, after a remand of the original investigation from the United States Court of Appeals for the Federal Circuit (see our May 1, 2009 post for more details), Amgen moved for summary determination that Roche violated Section 337 by importing and using a pegylated erythropoietin product that infringed claims of the ‘868 patent, the ‘933 patent, the ‘698 patent, and the ‘422 patent. Amgen also requested a limited exclusion order that would preclude importation of Roche’s product regardless of the party seeking to import such product.  Roche did not oppose Amgen’s motion for purposes of this investigation.  The Commission Investigative Staff (“OUII”) also did not oppose Amgen’s motion, but indicated that the motion did not resolve an asserted claim of the ‘349 patent or certain asserted claims of the ‘933 patent. On December 22, 2009, Amgen moved to terminate the investigation with respect to certain claims of the ‘933 patent, the ‘080 patent, and the ‘698 patent.  In addition, on December 31, 2009, Amgen filed a supplemental motion for summary determination with respect to an asserted claim of the ‘349 patent.  Roche did not oppose these motions.  OUII did not oppose Amgen’s motion to terminate the investigation in part, but did oppose Amgen’s supplemental motion for summary determination. According to the April 6 notice, the Commission has determined to grant Amgen’s motion to terminate the investigation with respect to claims 4, 5, and 11 of the ‘933 patent, claims 4 and 6 of the ‘080 patent, and claims 4 and 5 of the ‘698 patent.  The Commission has determined that further briefing is necessary to decide the motion for summary determination. The parties were requested to brief their positions on the following issues:
1)   How does the United States Court of Appeals for the Federal Circuit’s decision in Amgen Inc. v. F Hoffman-La Roche Ltd, 580 F.3d 1340 (Fed. Cir. 2009), vacating certain aspects of the decision by the United States District Court of Massachusetts in Amgen Inc. v. F Hoffinan-La Roche, Ltd., No. 05-12237-WGY (D. Mass. Oct. 2, 2008), affect Amgen’s original motion for summary determination filed on August 31,2009, for each asserted claim?  With respect to this issue, the parties were asked to address the Commission’s February 3, 2009 opinion in Certain Semiconductor Integrated Circuits Using Tungsten Metallization and Products Containing Same, Inv. No. 337-TA-648. 2)   If the Commission can proceed with respect to any claim(s), the parties were asked to explain whether the Commission should apply the principles of claim or issue preclusion to the district court case and what standard the Commission should apply. 3)  Can the Commission apply claim or issue preclusion to the permanent injunction order issued by the district court on December 22,2009, and if so, to what effect?  With respect to this issue, the parties were asked to address whether the signed stipulation formed part of the district court’s judgment, and, if so, does Amgen rely on the stipulation for claim or issue preclusion? 4)   If the Commission denies Amgen’s motions for summary determination with respect to any claims, how should the Commission proceed with respect to those claims?
The Commission also asked for written submissions that address the form of remedy, if any, that should be ordered, on public interest, and bonding.  If a party seeks exclusion of an article from entry into the United States for purposes other than entry for consumption, the Commission noted that the party should so indicate and provide information establishing that activities involving other types of entry either are adversely affecting it or likely to do so.
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ITC Decides To Review Initial Determination In Certain Adjustable Keyboard Support Systems (337-TA-670)

By Eric Schweibenz
|
Apr
27
On April 26, 2010, the International Trade Commission issued a notice determining to review in part the final Initial Determination (“ID”) issued by Chief ALJ Paul J. Luckern on February 23, 2010 in Certain Adjustable Keyboard Support Systems and Components Thereof (Inv. No. 337-TA-670). By way of background, the Complainant in this investigation is Humanscale Corporation (“Humanscale”) and the Respondents are CompX International, Inc. and Waterloo Furniture Components Limited d/b/a CompX Waterloo (collectively, “CompX”). ALJ Luckern issued the ID in this investigation on February 23, 2010, finding a violation of Section 337 in connection with the importation into the U.S., sale for importation, and sale within the U.S. after importation of certain adjustable keyboard support systems and components thereof.  According to the ID, ALJ Luckern found that CompX did not violate Section 337 with respect to its “Wedge-Brake” products because they did not infringe asserted claims 7 and 34 of U.S. Patent No. 5,292,097 (the ‘097 patent).  However, ALJ Luckern found that CompX did violate Section 337 with respect to its “Brake-Shoe” products because they infringed claim 34 of the ‘097 patent.  The ALJ also found that there was no violation with respect to claim 7 because CompX had established by clear and convincing evidence that claim 7 is invalid for obviousness under 35 U.S.C. § 103.  ALJ Luckern further found that CompX had not established any intervening rights.  Finally, the ALJ found that Humanscale had proved the existence of a domestic industry with respect to the ‘097 patent.  Accordingly, ALJ Luckern recommended that the Commission issue a limited exclusion order and a cease and desist order, and that the bond during the Presidential review period be set at 100 percent of the entered value of the infringing products.  See our March 15, 2010 post for more details. On March 9, 2010, Humanscale, CompX, and the Commission Investigative Staff (“OUII”) each filed a petition for review of the ID.  On March 17, 2010, CompX filed a reply to Humanscale’s petition, Humanscale filed a consolidated reply to CompX’s and OUII’s petitions, and OUII filed a consolidated reply to Humanscale’s and CompX’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 decided to review the ID in part.  In particular, the Commission determined to review: (i) the claim construction of the term “frictionally interengagable” recited in claim 34; (ii) infringement of claim 34 by the Brake-Shoe products; (iii) the priority date of claim 34; (iv) invalidity for anticipation and obviousness of claims 7 and 34; and (v) the defense of intervening rights.  The Commission further stated that the economic prong of the domestic industry requirement is already under review, and that “[n]o other issues are being reviewed.” Additionally, the notice requests briefing on seventeen questions of particular interest to the Commission. The parties’ briefs to the Commission are due by May 10, 2010, with reply submissions due by May 17, 2010.
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ITC Decides Not To Review Initial Determination In Certain Dual Access Locks (337-TA-689)

By Eric Schweibenz
|
May
06
On May 3, 2010, the International Trade Commission issued a notice determining not to review an initial determination (“ID”) issued by Chief ALJ Paul J. Luckern granting a motion for summary determination of non-infringement and terminating the investigation in Certain Dual Access Locks and Products Containing Same (Inv. No. 337-TA-689). By way of background, Complainants Safe Skies, LLC and David Tropp (collectively, “Safe Skies”) alleged violations of Section 337 against several respondents regarding certain dual access locks, which allegedly infringe U.S. Patent Nos. 7,021,537 and 7,036,728.  See our September 17, 2009 and October 19, 2009 posts for more details.  On March 18, 2010, ALJ Luckern granted a motion of the Commission Investigative Staff (“OUII”) and a joint motion of respondents for summary determination of non-infringement of all asserted claims.  See our March 30, 2010 post for more details. On April 1, 2010, Safe Skies filed a petition for review of the ID.  On April 8 and 9, 2010, OUII and respondents filed oppositions to the petition for review, respectively. According to the May 3 notice, the “Commission has determined not to review the ID and terminate[s] the investigation with a finding of no violation of section 337.”
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ITC Decides Not To Review Initial Determination In Certain Optoelectronic Devices (337-TA-669)

By Eric Schweibenz
|
May
13
On May 13, 2010, the International Trade Commission issued a notice determining not to review an initial determination (“ID”) issued by ALJ Theodore R. Essex on March 12, 2010 in Certain Optoelectronic Devices, Components Thereof, and Products Containing Same (Inv. No. 337-TA-669). By way of background, the Complainants in this investigation are Avago Technologies Fiber IP Pte. Ltd., Avago Technologies General IP Pte. Ltd., and Avago Technologies Ltd. (collectively, “Avago”).  The sole Respondent is Emcore Corporation (“Emcore”).  On March 12, 2010, ALJ Essex issued the 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 optoelectronic devices, components thereof, and products containing same by reason of infringement of claims 1, 2, 3, and 5 of U.S. Patent No. 5,359,447 (the ‘447 patent).  ALJ Essex further determined that no such violation of Section 337 had occurred with respect to U.S. Patent No. 5,761,229 and claim 6 of the ‘447 patent.  See our April 1, 2010 post for more details. On March 29, 2010, Emcore and the Commission Investigative Staff (“OUII”) filed petitions for review of the ID.  On April 6, 2010, Avago and OUII filed responses to the petitions. According to the May 13 notice, the “Commission has determined not to review the subject ID.”
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ITC Decides Not To Review Initial Determination In Certain Energy Drink Products (337-TA-678)

By Eric Schweibenz
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May
17
On May 14, 2010, the International Trade Commission issued a notice determining not to review an Initial Determination (“ID”) issued by Chief ALJ Paul J. Luckern on March 30, 2010 in Certain Energy Drink Products (Inv. No. 337-TA-678). By way of background, the Complainants in this investigation are Red Bull GmbH and Red Bull North America, Inc.  The Respondents are Avalon International General Trading, LLC (“Avalon”), Posh Nosh Imports (USA), Inc. (“Posh Nosh”), Greenwich, Inc. (“Greenwich”), Advantage Food Distributers (“Advantage Food”), Central Supply, Inc. (“Central Supply”), Chicago Import Inc. (“Chicago Import”), and Lamont Dist., Inc. (“Lamont”).  On March 30, 2010, ALJ Luckern issued the ID finding that Avalon, Posh Nosh, Greenwich, Advantage Food, Central Supply, and Chicago Import violated Section 337 in connection with the importation into the U.S., sale for importation, or sale within the U.S. after importation of certain energy drink products that infringe U.S. Trademark Reg. Nos. 3,092,197, 2,946,045, 2,994,429, and 3,479,607 and U.S. Copyright Reg. No. VA0001410959.  See our April 16, 2010 post for more details. According to the May 14 notice, no petitions for review of the ID were filed, and the Commission determined not to review the ID.
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ITC Decides Not To Review Enforcement Initial Determination In Certain Voltage Regulators (337-TA-564)

By Eric Schweibenz
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May
17
On May 14, 2010, the International Trade Commission issued a notice determining not to review an Enforcement Initial Determination (“EID”) issued by ALJ Carl C. Charneski on March 18, 2010 in Certain Voltage Regulators, Components Thereof and Products Containing Same (Inv. No. 337-TA-564). By way of background, the Complainant in this investigation is Linear Technology Corporation (“Linear”) and the Respondent is Advanced Analogic Technologies, Inc. (“AATI”).  The ITC issued its Final Determination on September 24, 2007 finding that a representative AATI voltage regulator infringed certain claims of Linear’s U.S. Patent No. 6,580,258.  The ITC issued a limited exclusion order (“LEO”) directed to AATI with respect to voltage regulators covered by the asserted claims.  Linear thereafter filed a complaint requesting that the ITC institute a formal enforcement proceeding against AATI for alleged violation of the LEO.  The ITC issued a Notice of Institution of Formal Enforcement Proceeding on October 1, 2008.  On March 18, 2010, ALJ Charneski issued the EID finding a violation of the LEO.  See our April 2, 2010 post for more details. According to the May 14 notice, AATI filed a petition for review of certain aspects of the EID, and Linear filed a contingent petition for review of the EID.  AATI and Linear filed responses to each others’ petitions, and the Commission Investigative Staff filed a joint response to the private parties’ petitions. After reviewing the record of the enforcement proceeding, including the petitions for review and the responses thereto, the Commission determined not to review the EID.
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ITC Decides Not To Review Initial Determination On Invalidity In Certain Printing And Imaging Devices (337-TA-690)

By Eric Schweibenz
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May
21
On May 21, 2010, the International Trade Commission issued a notice determining not to review an Initial Determination (“ID”) issued by ALJ Robert K. Rogers, Jr. on May 4, 2010 granting-in-part a motion for summary determination of invalidity in Certain Printing and Imaging Devices and Components Thereof (Inv. No. 337-TA-690). By way of background, the Complainants in this investigation are Ricoh Company, Ltd., Ricoh Americas Corporation, and Ricoh Electronics, Inc. (collectively, “Ricoh”).  The Respondents are Oki Data Corporation and Oki Data Americas, Inc (collectively, “Oki Data”).  On March 15, 2010, Oki Data filed a motion for summary determination of invalidity, alleging that certain claims of U.S. Patent Nos. 5,764,866; 6,388,771 (the ‘771 patent); and 6,209,048 recite means-plus-function language and that those claims are invalid for failing to comply with 35 U.S.C. § 112, sixth paragraph.  Ricoh filed a response opposing the motion and the Commission Investigative Staff filed a response in support of the motion.  On May 4, 2010, ALJ Rogers issued the ID granting Oki Data’s motion in part.  Specifically, the ALJ found that the claim term “means for preparing” recited in asserted claim 3 of the ‘771 patent lacks adequate description in the specification of a structure that performs the claimed function, and found the claim invalid.  See our May 7, 2010 post for more details. According to the May 21 notice, no petitions for review of the ID were filed, and the Commission determined not to review the ID.
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ITC Decides To Review In Part Initial Determination Denying Temporary Relief And On Review To Take No Position On Likelihood Of Success On The Merits In Certain Silicon Microphone Packages (337-TA-695)

By Eric Schweibenz
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May
24
On May 21, 2010, the International Trade Commission issued a notice determining to review in part an Initial Determination (“ID”) issued by ALJ Robert K. Rogers, Jr. on March 24, 2010 denying a motion for temporary relief in Certain Silicon Microphone Packages and Products Containing the Same (Inv. No. 337-TA-695), and on review, to take no position on likelihood of success on the merits.

By way of background, the Complainant in this investigation is Knowles Electronics LLC (“Knowles”), and the Respondent is Analog Devices, Inc. (“ADI”).  On November 12, 2009, Knowles filed a complaint requesting that the ITC commence an investigation pursuant to Section 337 concerning certain ADI silicon microphone packages and products containing the same that allegedly infringe U.S. Patent Nos. 6,781,231 and 7,242,089.  On the same day, Knowles also filed a motion for temporary relief seeking a temporary exclusion order and a temporary cease and desist order against ADI.  The investigation was formally instituted on December 17, 2009, and an evidentiary hearing regarding Knowles’s motion for temporary relief was held from February 17-19, 2010.  On March 24, 2010, ALJ Rogers issued the ID denying Knowles’s motion for temporary relief.  See our April 15, 2010 postfor more details.
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ITC Institutes Investigation (337-TA-719) Regarding Certain Lighting Products

By Eric Schweibenz
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May
28
On May 26, 2010, the U.S. International Trade Commission issued a press releaseannouncing that it voted to institute an investigation of Certain Lighting Products (Inv. No. 337-TA-719).

The investigation is based on a May 3, 2010 complaint and a May 24, 2010 letter supplementing the complaint filed by Blumberg Industries, Inc. d/b/a Fine Art Lamps of Miami Lakes, Florida, alleging violation of Section 337 in the importation into the U.S. and sale of decorative lighting fixtures that allegedly infringe U.S. Patent No. D570,038, U.S. Copyright Registration Nos. VA 1-399-618 and VA 1-415-353, and U.S. Trademark Registration Nos. 3,703,710, 3,703,711, 3,700,479, and 3,700,480.  See our May 6, 2010 postfor more details.
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Commissioner Okun Becomes Chairman Of ITC

By Eric Schweibenz
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Jun
21
On June 17, 2010, the ITC issued a press release announcing that Deanna Tanner Okun is serving as Chairman of the ITC.  According to the press release, Okun became Chairman when outgoing Chairman Shara L. Aranoff’s term expired on June 16, 2010 and will serve until President Obama designates a Chairman of the Commission. Chairman Okun, the senior Republican on the Commission, was nominated to the ITC by President Clinton on November 10, 1999, and confirmed by the U.S. Senate on November 19, 1999.
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ITC Issues Final Determination Of No Violation In Certain Cold Cathode Fluorescent Lamp (“CCFL”) Inverter Circuits (337-TA-666)

By Eric Schweibenz
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Jun
21
On June 18, 2010, the International Trade Commission (the “Commission”) issued a notice determining to review in part ALJ E. James Gildea’s April 19, 2010 Initial Determination (“ID”) finding no violation of Section 337 in Certain Cold Cathode Fluorescent Lamp (“CCFL”) Inverter Circuits and Products Containing the Same (Inv. No. 337-TA-666).  On review, the Commission determined to reverse some of ALJ Gildea’s findings but to affirm his ultimate holding of no violation of Section 337 on modified grounds. By way of background, the Complainants in this investigation are O2 Micro International Ltd. and O2 Micro Inc. (collectively, “O2 Micro”).  The Respondents are Monolithic Power Systems Inc. (“MPS”), ASUSTek Computer Inc. and ASUS Computer International America (collectively, “ASUS”), and Microsemi Corporation (“Microsemi”).  On April 19, 2010, ALJ Gildea issued the ID finding no violation of Section 337 by reason of infringement of the asserted claims of U.S. Patent No. 7,417,382 (the ‘382 patent).  In particular, ALJ Gildea determined, inter alia, that Microsemi’s LX1691 and LX1693 products infringe the asserted claims of the ‘382 patent but that O2 Micro has not satisfied the domestic industry requirement with respect to the ‘382 patent.  See our May 24, 2010 post for more details. According to the June 18 notice, O2 Micro, MPS and ASUS, Microsemi, and the Commission Investigative Staff (“OUII”) each filed petitions for review of the ID on May 3, 2010.  On May 11, 2010, O2 Micro, MPS and ASUS, Microsemi, and OUII each filed responses to the petitions for review. 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.  In particular, the Commission determined to review:  (1) the ID’s findings that Microsemi’s LX1691 and LX1693 products infringe the asserted claims of the ‘382 patent; and (2) the ID’s finding that O2 Micro has not satisfied the domestic industry requirement. The notice states that upon review, the Commission determined to reverse ALJ Gildea’s findings that the LX1691 and LX1693 products infringe the asserted claims of the ‘382 patent but also to reverse the ALJ’s determination that O2 Micro has not satisfied the domestic industry requirement.  Accordingly, the Commission upheld ALJ Gildea’s ultimate finding of no violation of Section 337 — albeit on modified grounds — and terminated the investigation.  Lastly, the notice states that an "opinion will issue shortly."
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ITC Requests Further Briefing On Patent Exhaustion In Certain Semiconductor Chips (337-TA-661)

By Eric Schweibenz
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Jun
22
On June 22, 2010, the International Trade Commission (the “Commission”) issued a notice determining to request further briefing on the issue of patent exhaustion 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 (collectively, “Respondents”).  On January 22, 2010, ALJ Theodore R. Essex issued an Initial Determination (“ID”) finding a violation of Section 337 through the importation, sale for importation, or sale within the U.S. after importation of certain semiconductor chips having synchronous dynamic random access memory controllers and products containing same that infringe one or more claims of U.S. Patent Nos. 6,470,405; 6,591,353 and 7,287,109.  The ALJ further found no infringement of the asserted claims of U.S. Patent Nos. 7,177,998 and 7,210,016.  See our May 4, 2010 post for more details. On March 25, 2010, the Commission issued a notice determining to review the ID in part.  See our March 26, 2010 post for more details.  On May 26, 2010, the Commission issued an additional notice requesting further briefing on the impact of a license between Rambus and Samsung on the ALJ’s finding and conclusions.  In particular, in the May 26 notice, the Commission stated that it “is particularly interested in briefing on the issue of patent exhaustion that Respondents raised in their petition for review and remedy submissions as it relates to the license.” In the June 22 notice, the Commission notes that it received the additional briefing requested in the May 26 notice, but that in that additional briefing, “no party includes a discussion or citation to Fujifilm Corp. v. Benum [(2009-1487)], which was issued by the United States Court of Appeals for the Federal Circuit on May 27, 2010, which includes a discussion of patent exhaustion.”  Accordingly, the Commission determined “to allow additional briefing to discuss the relevance and effect of the Fujifilm case, if any, on the arguments and analysis provided in the briefing on patent exhaustion.” The notice states that the briefing shall be limited to a single brief per party, shall be no more than 8 pages in length, and that “[a]ny briefing responsive to this notice shall be submitted by Friday, June 25, 2010.”
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ITC Affirms Initial Determination In Certain Hybrid Electric Vehicles (337-TA-688)

By Eric Schweibenz
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Jun
28
On June 22, 2010, the ITC issued a notice and opinion affirming ALJ Theodore R. Essex’s initial determination (“ID”) in Certain Hybrid Electric Vehicles and Components Thereof (Inv. No. 337-TA-688). By way of background, this investigation follows litigation between Complainant Paice LLC (“Paice”) and Respondents Toyota Motor Corp., Toyota Motor North America, and Toyota Motor Sales, USA, Inc. (collectively, “Toyota”) in the U.S. District Court for the Eastern District of Texas in which certain Toyota hybrid vehicles were found to infringe U.S. Patent No. 5,343,970 (the ‘970 patent).  On April 2, 2010, the ITC reversed the ALJ’s summary determination that the doctrine of claim preclusion prevented Toyota from arguing noninfringement, invalidity or unenforceabilty of the asserted patent claims.  See our April 6, 2010 post for more details.  The April 2 opinion took no position, however, on the application of the doctrine of issue preclusion.  Subsequently, on remand from the ITC, ALJ Essex issued an Initial Determination (“ID”) granting Paice’s motion to bar, on the basis of issue preclusion, relitigation of the validity of the ‘970 patent. The Opinion noted that the parties did not dispute that Paice made out a prima facie case for issue preclusion, or that ALJ Essex had correctly recited the law.  The parties disputed, rather, whether an exception to the issue preclusion doctrine was applicable.  Namely, whether an intervening change in the law, the decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), warranted the retrial of issues previously adjudged.  Both ALJ Essex and the ITC agreed that it did not. In the Opinion, the ITC noted several reasons for the inapplicability of the exception.  In addition to the grounds cited in ALJ Essex’s ID, the ITC indicated that even if KSR constituted a change in the law for purposes of providing an exception to issue preclusion, Toyota did not raise any genuine issues of material fact in opposition of Paice’s motion, thus Toyota did not satisfy its burden to support an exception to issue preclusion.  Specifically, Toyota relied only on an erroneous jury instruction.  The ITC stated that a “mere error in a jury instruction, while enough in some cases to warrant a new trial on direct review, cannot suffice to enable collateral review of a final judgment.”  The Opinion provided that the jury instruction in question did not require an express motivation to combine and that the Supreme Court in KSR recognized that many pre-KSR decisions, with likely the same instruction as in Paice v. Toyota, applied the obviousness test correctly. The Opinion also stated that Toyota knew or should have known to challenge the obviousness determination directly in its district court litigation, instead of collaterally in the ITC.  The ITC observed that numerous prominent briefs had been submitted to the Supreme Court urging the reversal of KSR preceding Toyota’s Rule 59 deadline.  According to the Opinion, under these circumstances, where a party has chosen not to preserve or pursue an appealable matter, it is unreasonable to argue that there has been manifest inequity.
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ITC Reverses Initial Determination And Finds No Violation In Certain Adjustable Keyboard Support Systems (337-TA-670)

By Eric Schweibenz
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Jul
12
On July 9, 2010, the International Trade Commission issued a notice determining to reverse Chief ALJ Paul J. Luckern’s February 23, 2010 final Initial Determination (“ID”) in Certain Adjustable Keyboard Support Systems and Components Thereof (Inv. No. 337-TA-670).  According to the notice, the ITC terminated the investigation finding that the asserted claims were not infringed and were invalid. By way of background, the Complainant in this investigation is Humanscale Corporation (“Humanscale”) and the Respondents are CompX International, Inc. and Waterloo Furniture Components Limited d/b/a CompX Waterloo (collectively, “CompX”). ALJ Luckern issued the ID finding a violation of Section 337 in connection with the importation into the U.S., sale for importation, and sale within the U.S. after importation of certain adjustable keyboard support systems and components thereof.  According to the ID, ALJ Luckern found that CompX did not violate Section 337 with respect to its “Wedge-Brake” products because they did not infringe asserted claims 7 and 34 of U.S. Patent No. 5,292,097 (the ‘097 patent).  However, ALJ Luckern found that CompX did violate Section 337 with respect to its “Brake-Shoe” products because they infringed claim 34 of the ‘097 patent.  The ALJ also found that there was no violation with respect to claim 7 because CompX had established by clear and convincing evidence that claim 7 is invalid for obviousness under 35 U.S.C. § 103.  ALJ Luckern further found that CompX had not established any intervening rights.  Finally, the ALJ found that Humanscale had proved the existence of a domestic industry with respect to the ‘097 patent.  See our March 15, 2010 post for more details. On March 9, 2010, Humanscale, CompX, and the Commission Investigative Staff (“OUII”) each filed a petition for review of the ID.  On March 17, 2010, CompX filed a reply to Humanscale’s petition, Humanscale filed a consolidated reply to CompX’s and OUII’s petitions, and OUII filed a consolidated reply to Humanscale’s and CompX’s petitions.  On April 26, 2010, the ITC issued a notice determining to review in part the ID.  See our April 27, 2010 post for more details. According to the July 9 notice, “the Commission has determined to reverse the ALJ’s determination that the respondents violated section 337.  The Commission finds the asserted claims are not infringed and are invalid.”
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ITC Issues Notice Of Delegation Of Authority To Secretary To Publish Receipt Of Complaints In Order To Solicit Comments Relating To Public Interest

By Eric Schweibenz
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Jul
13
On July 8, 2010, the International Trade Commission issued a notice determining to delegate authority to the Secretary of the Commission to publish notice of the receipt of future complaints under Section 337.  According to the notice, these notices will be issued to solicit comments on any public interest issues raised by the complaints.
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ITC Issues Limited Exclusion Order, Cease And Desist Order, and Terminates Investigation In Certain Optoelectronic Devices (337-TA-669)

By Eric Schweibenz
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Jul
13
On July 12, 2010, the International Trade Commission issued a notice determining to issue a limited exclusion order (“LEO”), and a cease and desist order (“CDO”), and terminating the Investigation in Certain Optoelectronic Devices, Components Thereof, and Products Containing the Same (Inv. No. 337-TA-669). By way of background, the Complainants in this investigation are Avago Technologies Fiber IP Pte. Ltd., Avago Technologies General IP Pte. Ltd., and Avago Technologies Ltd.  The sole Respondent is Emcore Corporation (“Emcore”).  On March 12, 2010, ALJ 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 optoelectronic devices, components thereof, and products containing same by reason of infringement of claims 1, 2, 3, and 5 of U.S. Patent No. 5,359,447 (the ‘447 patent).  See our April 1, 2010 post for more details. On May 13, 2010, the Commission issued notice of its determination not to review the ALJ’s final ID finding a violation of section 337, and requested written submissions on the issues of remedy, the public interest, and bonding.  See our May 13, 2010 post for more details. The Commission determined that the appropriate form of relief is an LEO and a CDO.  The LEO prohibits the unlicensed entry of optoelectronic devices, components thereof, and products containing the same that are covered by one or more of claims 1, 2, 3 and 5 of the ‘447 patent, where the infringing optoelectronic devices, components thereof, and products containing the same are manufactured abroad by or on behalf of, or are imported by or on behalf of, Emcore, or any of its affiliated companies, parents, subsidiaries, licensees, contractors, or other related business entities, or successors or assigns.  The CDO prohibits Emcore from conducting the following activities in the United States: importing, selling, marketing, advertising, distributing, offering for sale, transferring (except for exportation), and soliciting U.S. agents or distributors for, optoelectronic devices, components thereof, and products containing the same that are covered by one or more of claims 1, 2, 3, and 5 of the ‘447 patent.  The Commission further determined that the public interest factors do not preclude issuance of these LEO or CDO orders, and that the bond during the Presidential review period should be set at three percent of the entered value of the covered products.
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Vizio Files New 337 Complaint Regarding Certain Flat Panel Digital Televisions

By Eric Schweibenz
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Jul
19
On July 16, 2010, Vizio, Inc. of Irvine, California (“Vizio”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337. The complaint alleges that LG Electronics, Inc. of South Korea and LG Electronics U.S.A., Inc. of Englewood Cliffs, New Jersey (collectively, “LGE”) have sold for importation, imported, and/or sold within the U.S. after importation certain flat panel digital televisions and components thereof that infringe certain claims of U.S. Patent Nos. 5,511,096, 5,621,761, 5,703,887, 5,745,522, 5,511,082, 5,396,518, and 5,233,629 (collectively, “the Asserted Patents). According to the complaint, the “general technology at issue in this case involves the transmission and reception of digital television (‘TV’) signals via cable delivery systems.  More specifically, all of the Asserted Patents relate to the decoding and demodulation of digital TV signals transmitted via digital cable TV delivery system to a TV receiver.” In the complaint, Vizio alleges that LGE’s digital television products are manufactured, assembled, and/or packaged and tested overseas, at least in Mexico. Regarding related litigation, Vizio lists in its complaint a number of U.S. district court cases involving the asserted patents, including a pending litigation in the U.S. District Court for the District of Maryland against LGE, filed on June 5, 2009. With respect to domestic industry, Vizio asserts that an industry exists in the U.S. relating to its digital televisions.  Specifically, Vizio alleges that its digital televisions practice at least one claim of each of the Asserted Patents.  In addition, Vizio asserts that its significant employment of labor and capital, and its substantial investment in exploitation of the Asserted Patents, constitute a domestic industry under 19 U.S.C. §§ 1337(a)(3)(B) and (C). With respect to potential remedy, Vizio requests that the ITC issue a permanent limited exclusion order and permanent cease-and-desist orders directed to LGE. Also on July 16, the Commission issued its first notice of receipt of a complaint.  As we explained in our July 13, 2010 post, the Commission will now issue these notices upon receipt of a Section 337 complaint to solicit comments from the complainant, proposed respondents, other interested parties, and members of the public on any public interest issues raised by the complaints.  According to the July 16 notice, the Commission is interested in comments that (i) explain how the articles potentially subject to the orders are used in the U.S., (ii) identify any public health, safety, or welfare concerns in the U.S. relating to the potential orders, (iii) indicate the extent to which like or directly competitive articles are produced in the U.S. or are otherwise available in the U.S., with respect to the articles potentially subject to the orders, and (iv) indicate whether Complainant, its licensees, and/or third party suppliers have the capacity to replace the volume of articles potentially subject to an exclusion order and a cease and desist order within a commercially reasonable time.  The July 16 notice further indicates that written submissions must be filed no later than by close of business, five business days after the date of publication of the notice in the Federal Register.
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ITC Decides To Review Initial Determination On Claim Construction In Certain Mobile Telephones And Wireless Communication Devices Featuring Digital Cameras (337-TA-703)

By Eric Schweibenz
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Jul
27
On July 22, 2010, the International Trade Commission issued a notice determining to review in its entirety an Initial Determination (“ID”) issued by Chief ALJ Paul J. Luckern on June 22, 2010 construing various claim terms of U.S. Patent No. 6,292,218 (the ‘218 patent) 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 Research In Motion, Ltd., Research In Motion Corporation, and Apple Inc. (collectively, “Respondents”).  The Commission instituted the investigation on February 17, 2010.  On April 26, 2010, ALJ Luckern issued an order granting Respondents’ motion requesting a Markman hearing, and a Markman hearing was conducted on May 24–25, 2010.  The ALJ issued the ID construing claim terms on June 22, 2010.  See our July 21, 2010 post for more details. According to the July 22 notice, the parties each filed petitions for review of various portions of the ID. After examining the record of the investigation, including the ID and petitions for review, the Commission determined to review the ID in its entirety and to solicit briefing with respect to the issues on review.  The Commission stated that it was “particularly interested in briefing on the question of the legal authority for addressing the issue of claim construction as a matter for summary determination and treating the claim construction ruling as an initial determination under the Commission’s rules of practice and procedure as currently written.” In this connection, the Commission requested that the parties respond to a hypothetical analysis of Commission Rule 210.18(a) whereby that rule’s restriction on motions for summary determination to “issues to be determined in the investigation” or parts thereof is interpreted so as to exclude claim construction from the universe of questions that can form the subject of a motion for summary determination.  In particular, the Commission stated in its hypothetical analysis that “[c]laim construction may be a necessary underpinning to the resolution of certain issues or elements, and may be part of a summary determination that addresses an issue or element.  On its own, however, claim construction might not be viewed as constituting such an issue or element.” Written submissions in response to the Commission’s July 22 notice are due on August 5, 2010, with reply submissions due on August 16, 2010.
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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.