How to Search
Commission Opinions

ITC Issues Opinion In Certain Semiconductor Integration Circuits Using Tungsten Metallization (337-TA-648)

By Eric Schweibenz
|
Apr
22
Further to our March 23, 2010 post, on April 20, 2010, the International Trade Commission (“Commission”) issued its Opinion in Certain Semiconductor Integration Circuits Using Tungsten Metallization and Products Containing Same (Inv. No. 337-TA-648).  In the Opinion, the Commission affirmed the ALJ’s ultimate determination of no violation, but on different grounds with respect to claim 4 of U.S. Patent No. 5,227,335 (the ‘335 patent). By way of background, this investigation was instituted on May 21, 2008.  Complainants LSI Corporation and Agere Systems Inc alleged a violation of Section 337 in the importation into the US, the sale for importation, and the sale within the US after importation of certain semiconductor integrated circuits using tungsten metallization and products containing the same by reason of infringement of claims 1, 3, and 4 of the ‘335 patent.  Several of the originally named respondents were terminated from the investigation and the remaining Respondents in this investigation are Tower Semiconductor, Ltd., Jazz Semiconductor (“Jazz”), Powerchip Semiconductor Corporation; Grace Semiconductor Manufacturing Corporation; Integrated Device Technology, Inc.; and Nanya Technology Corporation (collectively, “Respondents”). On September 21, 2009, ALJ Charneski issued a final Initial Determination (“ID”) finding that claims 1, 3, and 4 of the ‘335 patent were anticipated in view of IBM process A, and thus that no violation of Section 337 had occurred.  See our February 2, 2010 post for more details.  On November 23, 2009, the Commission determined to review-in-part the ID.  Specifically, the Commission determined to review: (1) the invalidity of claims 1, 3, and 4 of the ‘335 patent with respect to IBM Process A, IBM Process B, and a specific piece of prior art (“the AMD prior art”), and (2) Jazz’s stipulation regarding whether its process met one of the steps of claim 1.  The Commission also issued an order remanding the investigation to the ALJ for further proceedings relating to whether claim 4 is obvious in light of IBM Process A and the other prior art Asserted by Respondents and the Commission Investigative Attorney (“IA”).  See our November 30, 2009 post for more details.  On January 15, 2010, ALJ Charneski issued a Remand Initial Determination (“Remand ID”) determining that claim 4 was not rendered obvious by the relevant prior art.  See our January 29, 2010 post for more details. In the Opinion, the Commission reversed the Remand ID, determining that claim 4 was invalid due to obviousness in view of IBM Process A in combination with other prior art. Additionally, the Commission affirmed-in-part, reversed-in-part, and modified-in-part the ID, determining that there was no violation of Section 337 by the Respondents. Anticipation In the ID, ALJ Charneski determined that IBM Process A anticipated claims 1, 3, and 4 of the ‘335 patent under 35 U.S.C. § 102(g).  In the Opinion, the Commission affirmed this determination with regard to claims 1 and 3.  However, the Commission did not find anticipation under 35 U.S.C. § 102(g) with regard to claim 4.  Specifically, the Commission disagreed with ALJ Charneski’s determination that the step of “etching said tungsten and said glue layer to form a planar surface of said dielectric and said tungsten in said hole, said tungsten being etched before said glue layer” was disclosed by teaching that IBM Process A is integratable with metal “chemical mechanical polishing (CMP).”  ALJ Charneski relied on inventor testimony as to the definition of CMP.  The Commission determined there was insufficient evidence to corroborate the inventor testimony and that the discussion of CMP in connection with IBM Process A was insufficient to suggest to one of ordinary skill in the art that etching of both the tungsten and glue layers was disclosed and reduced to practice. Obviousness In the Remand ID, ALJ Charneski determined that claim 4 was not obvious in view of IBM Process A in combination with other prior art asserted by the IA and Respondents.  The Commission disagreed. In the Opinion, the Commission found that three references disclosed the “etching” step of claim 4, missing from IBM Process A, by disclosing “tungsten plugs.”  The Commission determined that in discussing “tungsten plugs,” Smith and Sachdev “disclose[d] etching back a tungsten layer and a glue layer to form a planar surface.”  The third reference, Chow, also described “tungsten plugs,” however without the use of a glue layer.  The Commission also noted that during prosecution, the inventors stated that the dependent claims stood or fell with claim 1, thereby admitting that the etching step of dependent claim 4 was not novel.  The Commission thus determined that the recited “etching” step of claim 4 was simply an application of a well-known technique to prior art ready for the improvement. The Commission also found that one skilled in the art would be motivated to combine any of these three references with IBM Process A, and that nothing suggested doing so would be beyond such a person’s skill.  The Commission noted that Smith, Sachdev, and Chow use the etching back of tungsten plugs to form a planar surface in order to improve tungsten metallization semiconductor devices.  According to the Commission, tungsten metallization semiconductor devices (Smith, Sachdev, and Chow) are so similar to tungsten metallization semiconductor integrated circuits (IBM Process A) that one skilled in the art would recognize it could improve tungsten metallization semiconductor integrated circuits (IBM Process A) in the same manner disclosed in Smith, Sachdev, and Chow.  The Commission added that one of ordinary skill in the art would have been further motivated to combine IBM Process A with Smith, Sachdev, or Chow because they all cover the same subject matter.  Ultimately, the Commission reversed ALJ Charneski’s Remand ID, finding claim 4 obvious under 35 U.S.C. § 103 in view of IBM Process A in combination with Smith, Sachdev, or Chow. Other Issues Based on the invalidity of all asserted claims in view of IBM Process A, the Commission determined it was unnecessary to evaluate the validity of the claims in view of IBM Process B or the AMD prior art.  Accordingly, the Commission took no position on that issue. Lastly, in the ID, ALJ Charneski determined that Jazz stipulated to practicing both portions of the third recited step of claim 1 of the ‘335 patent.  In the Opinion, the Commission modified the ALJ’s determination, finding that Jazz only stipulated to the first portion of the step, and not both portions.
Share

Read More

ITC Issues Opinion Regarding Sanctions In Certain Composite Wear Components (337-TA-644)

By Eric Schweibenz
|
Jun
10
On June 7, 2010, the International Trade Commission issued its Opinion granting in part a motion for sanctions filed by complainants Magotteaux International S/A and Magotteaux Inc. (collectively, “Magotteaux”) in Certain Composite Wear Components and Products Containing Same (Inv. No. 337-TA-644).  In the Opinion, the Commission adopted the recommendation of ALJ Theodore R. Essex to award Magotteaux attorney’s fees, but reduced the amount. By way of background, the Commission instituted this investigation on April 25, 2008, in response to a complaint filed by Magotteaux.  The complaint alleged a violation of Section 337 by respondents Fonderie Acciaierie Rioale S.P.A. (“FAR”), AIA Engineering Ltd., and Vega Industries (collectively, “AIAE”).  FAR was terminated from the investigation, leaving AIAE as the remaining respondents. AIAE responded to the complaint, but thereafter reduced their participation in discovery.  On March 19, 2009, ALJ Essex issued Order No. 23, granting several motions to compel and ordering AIAE to respond to written discovery and to produce fact and expert witnesses for deposition.  AIAE failed to comply with the order and continued to refuse to participate in discovery.  On May 8, 2009, ALJ Essex issued an Initial Determination (“ID”) finding AIAE in default pursuant to Commission Rules 210.16(a)(2) and 210.17.  The Commission determined not to review the ID, and indicated that, in addition to finding a violation pursuant to Commission Rule 210.17, the Commission would presume the facts alleged in the Complaint to be true with respect to AIAE.  The Commission then issued a limited exclusion order, a cease and desist order, and terminated the investigation.  See our July 8, 2009, July 21, 2009, and November 30, 2009 posts for more details. On May 27, 2009, Magotteaux moved for sanctions (in the form of attorney’s fees) against AIAE.  The motion was supported by the Commission Investigative Staff (“OUII”).  ALJ Essex issued a Recommended Determination (“RD”) granting the motion in part on July 17, 2009. In its June 7, 2010 Opinion, the Commission agreed with ALJ Essex that AIAE’s conduct during the investigation warranted sanctions.  The Commission also agreed with ALJ Essex that, under Commission Rule 210.33(c), Magotteaux could only recover those attorney’s fees incurred as a result of AIAE’s failure to comply with an order to provide or permit discovery.  Thus, Magotteaux was entitled to attorney’s fees associated with AIAE’s failure to comply with Order No. 23, including fees incurred in connection with Magotteaux’s April 13, 2009 motion for default and Magotteaux’s response to OUII’s March 27, 2009 motion for default. According to Magotteaux, the fees associated with the default motions totaled $75,504.67.  The Commission, however, determined that some of these entries were “mixed” entries, representing charges related to both the default motions and other tasks.  The Commission declined to award attorney’s fees with respect to these mixed entries, determining that Magotteaux did not meet its burden to show which portion of the mixed entries were associated only with the default motions.  Thus, the Commission awarded Magotteaux attorney’s fees in the amount of $43,366. Lastly, the Opinion noted that Commissioner Lane dissented with regard to the total amount awarded.  According to Commissioner Lane, a reasonable fee for the default motions should have been based on a value-based services or flat-fee billing model, rather than an hourly rate model.
Share

Read More

ITC Affirms Initial Determination In Certain Hybrid Electric Vehicles (337-TA-688)

By Eric Schweibenz
|
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.
Share

Read More

ITC Issues Public Version Of Opinion In Certain Cold Cathode Fluorescent Lamp (“CCFL”) Inverter Circuits (337-TA-666)

By Eric Schweibenz
|
Jul
21
On July 19, 2010, the ITC issued the public version of its opinion affirming ALJ E. James Gildea’s April 19, 2010 Initial Determination (“ID”) of no violation of Section 337 in Certain Cold Cathode Fluorescent Lamp (“CCFL”) Inverter Circuits and Products Containing the Same (Inv. No. 337-TA-666).  Although the ITC affirmed ALJ Gildea’s overall determination of no violation, it did so on modified grounds, reversing the ALJ’s determination that two of Respondent Microsemi Corporation’s (“Microsemi”) products infringe the patent-in-suit and the ALJ’s determination that Complainants O2 Micro International Ltd. and O2 Micro Inc. (collectively, “O2 Micro”) did not satisfy the domestic industry requirement. By way of background, the Respondents in this investigation are Monolithic Power Systems Inc. (“MPS”), ASUSTek Computer Inc. and ASUS Computer International America (collectively, “ASUS”), and Microsemi.  On April 19, 2010, ALJ Gildea issued the ID finding no violation of Section 337.  In particular, ALJ Gildea determined, inter alia, that Microsemi’s LX1691 and LX1693 products infringe the asserted claims of U.S. Patent No. 7,417,382 (the ‘382 patent), but that O2 Micro had not satisfied the technical prong of the domestic industry requirement with respect to the ‘382 patent.  Regarding Respondents MPS and ASUS, ALJ Gildea determined that these Respondents’ products did not infringe the asserted claims of the ‘382 patent.  See our May 24, 2010 post for more details. On June 18, 2010, the ITC determined to review the ID in-part.  On review, the Commission affirmed the ALJ’s determination of no violation of Section 337, but reversed (1) the ALJ’s determinations that the LX1691 and LX1693 Microsemi products infringe the asserted claims of the ‘382 patent, and (2) the ALJ’s determination that O2 Micro had not satisfied the domestic industry requirement.  See our June 21, 2010 post for more details. Infringement In the Opinion, the ITC adopted ALJ Gildea’s claim constructions of both the “timer circuit” and “protection circuit” elements contained in the asserted claims of the ‘382 patent.  In applying the claim construction, however, the ITC determined that neither the LX1961 nor the LX1963 products met the “predetermined duration” limitation included in the “timer circuit” and “protection circuit” elements.  Specifically with regard to LX1961, the ITC determined that because the duration of the time-out period depended on the fault, which was unpredictable, the products did not meet the “predetermined duration” limitation.  With regard to LX1963, the ITC noted that the duration of the time-out period for this product could not be determined before the fault occurred because it depended on the magnitude of the fault, which was unpredictable.  Thus, likewise, the LX1963 product did not meet the “predetermined duration” limitation.  The ITC added that the LX1963 product also did not meet the “first voltage signal exceeds a predetermined threshold for said predetermined duration” limitation.  Accordingly, the ITC reversed ALJ Gildea’s determination of infringement by the LX1961 and LX1963 products. Domestic Industry With respect to the technical prong of the domestic industry requirement, the ITC also reversed ALJ Gildea’s determination.  ALJ Gildea determined that O2 Micro’s products did not practice the claims of the ‘382 patent.  According to the Opinion, the ALJ did so based in part on witness testimony.  The ITC stated that ALJ Gildea’s reliance on the “doubt” created by the witness testimony suggested that he applied a more demanding burden of proof than was warranted.  In this regard, the ITC noted that O2 Micro was not required to prove beyond doubt that its domestic products met the claim limitations.  Rather, the burden of proof for the existence of domestic industry is the preponderance of the evidence standard.
Share

Read More

ITC Issues Opinion In Certain Optoelectronic Devices (337-TA-669)

By Eric Schweibenz
|
Jul
30
On July 26, 2010, the International Trade Commission issued its Opinion on the issues of remedy, the public interest and bonding in Certain Optoelectronic Devices, Components Thereof, and Products Containing the Same (Inv. No. 337-TA-669). By way of background, this investigation was instituted on March 10, 2009 based on a complaint filed by Avago Technologies Fiber IP Pte. Ltd., Avago Technologies General IP Pte. Ltd., and Avago Technologies Ltd. (collectively, “Avago”).  On March 12, 2010, ALJ Theodore R. Essex issued his final Initial Determination (“ID”) finding a violation of Section 337 by Respondent Emcore Corporation (“Emcore”) by reason of infringement of one or more of claims 1-3 and 5 of U.S. Patent No. 5,359,447 (the ‘447 patent) and no violation with respect to U.S. Patent No. 5,761,229 (the ‘229 patent).  The final ID also included ALJ Essex’s recommendations on the issues of remedy and the amount of bond to be set during the Presidential review period.  See our April 1, 2010 post for more details. On May 13, 2010, the ITC issued notice of its determination not to review ALJ Essex’s final ID and requested written submissions on the issues of remedy, the public interest and bonding.  See our May 13, 2010 post for more details. Remedy In the Opinion, the ITC adopted ALJ Essex’s recommendations on remedy, including issuing (1) a limited exclusion order and (2) a cease and desist order.  Further, the ITC agreed with ALJ Essex’s recommendation that the orders should cover all of Emcore’s accused products, despite Emcore’s argument that ALJ Essex’s finding of infringement was limited and therefore excluded certain products. The ITC also rejected Emcore’s argument that final testing of the accused products in the U.S. occurring after ordering and purchase by the customer does not warrant a cease and desist order.  Rather, the ITC determined that evidence of final testing of the products by Emcore sufficiently “supports a finding of a ‘commercially significant’ inventory of accused goods.” Bonding In the Opinion, the ITC also adopted ALJ Essex’s recommendation to impose a three percent bond of the entered value of Emcore’s accused products based on a reasonable royalty rate established in a previous cross-license agreement between Avago’s predecessor and an Emcore customer. Public Interest The ITC determined that public interest factors do not preclude issuance of the limited exclusion order or the cease and desist order.
Share

Read More

ITC Issues Public Version Of Opinion In Certain Voltage Regulators (337-TA-564)

By Eric Schweibenz
|
Aug
06
On August 3, 2010, the International Trade Commission issued the public version of its opinion detailing its final determination not to (i) revise the existing limited exclusion order (“LEO”), and (ii) issue a cease and desist order (“CDO”) in the enforcement proceeding 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 an 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 Enforcement Initial Determination (“EID”) finding a violation of the LEO by AATI’s redesigned products.  See our April 2, 2010 post for more details.  On May 14, 2010, the Commission determined not to review the ALJ's EID, and issued a notice regarding its determination and inviting briefing on the issues of remedy, the public interest, and bonding.  See our May 17, 2010 post for more details. The Commission determined that the parties and Commission Investigative Attorney (“OUII”) agreed that the existing LEO covers AATI’s accused redesigned products and therefore no modification of the existing LEO was required. With respect to the possible issuance of a CDO, Linear argued a CDO is appropriate due to AATI’s commercially significant inventory in the United States, and AATI’s alleged “disregard” of the LEO.  The IA added that a CDO was warranted as an additional deterrent because AATI did not seek an advisory opinion before importing its accused redesigned products.  AATI responded that its domestic inventory is not “commercially significant,” AATI did not disregard the LEO since many products were found non-infringing by the ALJ and Commission in the violation phase - rendering importation permissible until issuance of the Federal Circuit’s decision on appeal.  AATI additionally argued that “deterrence” was not a proper ground for imposing a CDO in view of AATI ceasing importation and the entry of consent orders after the Federal Circuit’s decision in the violation phase. The Commission determined not to issue a CDO because AATI’s “5800 samples and 75,000 engineering parts at issue here do not constitute a commercially significant inventory in the context of the millions of parts maintained and sold abroad by AATI,” and a CDO is not needed for deterrent effect because AATI did not act “in disregard of the LEO by importing products found non-infringing by the ALJ and Commission in the violation phase, even if those findings were later reversed or vacated by the Federal Circuit.” The Commission further determined that the issues of public interest and bonding were essentially moot, because it was not recommending any additional relief, and given that the parties agree that the existing LEO should remain in place without modification or need for Presidential review, there is no reason to impose a bond.
Share

Read More

ITC Issues Public Version Of Opinion In Certain Semiconductor Chips (337-TA-661)

By Eric Schweibenz
|
Aug
13
On August 10, 2010, the ITC issued the public version of its opinion affirming ALJ Theodore R. Essex’s January 22, 2010 Initial Determination (“ID”) finding a violation of Section 337, and determining to issue a limited exclusion order (“LEO”) and cease and desist orders 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. and the Respondents are NVIDIA Corp., 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 Essex issued his 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 (“Barth I patents”).  ALJ Essex further found no infringement of the asserted claims of U.S. Patent Nos. 7,177,998 and 7,210,016 (“Ware patents”).  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.  After requesting briefing with respect to remedy, the public interest, bonding, and licensing issues (see our June 22, 2010 post) the Commission determined to affirm ALJ Essex’s ID. Obviousness In the Opinion, the ITC affirmed ALJ Essex’s determination that the Ware patents are anticipated and rendered obvious by U.S. Patent No. 6,292,903 (“the ‘903 patent”), “but provide[d] further analysis of obviousness in which it is assumed that certain limitations of the asserted claims of the Ware patent are not disclosed by the [‘903 patent].”  In this regard, the ITC found that “even if the [‘903 patent] does not explicitly disclose the disputed limitations of the asserted Ware claims, its disclosure would render those limitations obvious to one of ordinary skill in the art.” With regard to the Barth I patents, the ITC adopted ALJ Essex’s determination that the prior art relied upon by the Respondents did not anticipate these patents because it did not disclose the “strobe signal” or “signal” limitations of the asserted Barth I claims.  In view of this finding, the ITC also determined that “Respondents have failed to show that it would have been obvious to one of ordinary skill in the art to modify [the prior art] to add the claimed ‘strobe signal’/‘signal’ limitations.”  Similarly, with respect to the issue of obviousness-type double patenting, the ITC determined that “the asserted Barth I claims’ inclusion of the ‘strobe signal’/‘signal’ limitations renders them patentably distinct from the claims of the [particular prior art reference].” With respect to both the Ware and Barth I patents, the ITC determined that (i) the level of ordinary skill in the art should be the same for both patents and (ii) “Rambus failed to meet its burden of establishing secondary considerations and failed to establish a nexus between the evidence and the merits of the claimed invention.” Remedy and Bonding In the Opinion, the ITC “determined to issue a limited exclusion order against the goods of those Respondents found to infringe the Barth I patents” and “decline[d] Rambus’s request to direct the LEO to all products incorporating NVIDIA controllers, [including] even products of non-respondents” under Kyocera Wireless Corp. v. ITC, 545 F.3d 1340 (Fed. Cir. 2008).  Further, the ITC “determined to issue cease and orders against those respondents found by the ALJ to maintain a commercially significant inventory of infringing products in the United States.”  Finally, the ITC found that public interest factors did not preclude the issuance of remedial orders and that the bond during the Presidential review period should be set at 2.65 percent of the entered value of the imported products. Patent Exhaustion Doctrine According to the Opinion, the ITC rejected the Respondents’ arguments that products using licensed memory sold by non-respondent Samsung should be exempt from any exclusion order.  In this regard, the ITC found that the “Respondents have failed to demonstrate that the relevant sales of Samsung memory take place in the United States” as required under the “the exhaustion doctrine’s territoriality requirement.” Stay of Remedial Orders The ITC determined that the Respondents failed to demonstrate that staying its remedial orders was appropriate in view of an ongoing reexamination proceeding regarding the Barth I claims.  In this regard, the ITC noted, inter alia, that (i) “the reexamination proceedings are not yet final”; (ii) the “ongoing reexamination proceedings have not resulted in a preliminary rejection by the examiner of all the asserted Barth I claims, only of some of them”; and (iii) notwithstanding the PTO’s preliminary determination of invalidity for some claims, exclusion of all the accused products would still result, because they all were found to infringe all the asserted Barth I claims.
Share

Read More

ITC Issues Public Version Of Opinion In Certain Adjustable Keyboard Support Systems (337-TA-670)

By Eric Schweibenz
|
Aug
18
On August 13, 2010, the International Trade Commission issued the public version of its opinion reversing 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).  The ITC terminated the investigation, finding that the asserted claims were invalid and not infringed. By way of background, the Complainant in this investigation was Humanscale Corporation (“Humanscale”) and the Respondents were CompX International, Inc. and Waterloo Furniture Components Limited d/b/a CompX Waterloo (collectively, “CompX” or “Respondents”).  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 determined 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 determined that CompX did violate Section 337 with respect to its “Brake-Shoe” products because they infringed claim 34 of the ‘097 patent, and claim 34 was not invalid.  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 was invalid as obvious under 35 U.S.C. § 103.  ALJ Luckern determined that CompX had not established any intervening rights.  Finally, the ALJ determined that Humanscale 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 each filed a petition for review of the ID, and on April 26, 2010, the ITC issued a notice determining to review in part the ID, namely: (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.  See our April 27, 2010 post for more details. On July 9, 2010, the ITC issued a notice determining to reverse the ID, finding that the asserted claims were not infringed and were invalid.  See our July 12, 2010 post for more details. Claim Construction The ITC agreed with the ID that the term “frictionally interengagable” from claim 34 means “capable of locking engagement by application of only a frictional force sufficient to maintain a locked position during normal use.”  The ITC additionally clarified, however, that this construction did not limit the “frictionally interengagable” locking means of claim 34 to the V-shaped profiles and grooves of the ninth embodiment within the specification of the ‘097 patent.  The ITC further agreed with the ID that “frictionally interengagable” locking members are distinct from locking members having a serration arrangement.  Finally, the ITC determined that a plain reading of dependent claim 34 indicates that all locking members must be frictionally interengagable to meet the limitation, and therefore the frictionally interengagable locking members of claim 34 must include at least the first and second locking members of independent claim 7, from which claim 34 depends. Infringement Based on the above construction, the ITC determined that the brake shoe and the lower link arm of the accused Brake-Shoe device would constitute the “first” and “second locking members” of claim 7.  To be “frictional interengaged” under claim 34, these two elements would need to be “capable of locking engagement by application of only a frictional force sufficient to maintain a locked position during normal use.”  However, the ITC relied upon expert testimony to determine that the brake shoe does not actually stop relative to the lower link arm but rather slides against the lower link arm, and expert testimony from both parties showed that any frictional force between the brake shoe and the lower link arm is insufficient to maintain the Brake-Shoe device in a locked position during normal use.  The ITC therefore determined that the Brake-Shoe products did not meet the "frictionally interengagable" limitation of claim 34 and did not infringe that claim. Intervening Rights The ID found that Respondents had “not established, by clear and convincing evidence, that products substantially identical to the accused products were made, purchased, used, or imported into the United States prior to the issuance of a reexamination certificate of the ‘097 patent.”  Although the ITC determined not to reach the issue of this defense because it disposed of the investigation on other grounds, it vacated this portion of the ID, noting that all parties and the Investigative Attorney agree that the appropriate evidentiary standard for the affirmative defense of intervening rights is preponderance of the evidence. Invalidity The ITC vacated the ID’s effective filing date of claim 34, since it applied an improper claim construction of “frictionally interengagable” by assuming the term was limited to V-shaped locking members.  However, the ITC took no position on the effective filing date of claim 34 or whether a grandparent provisional Australian application was prior art to claim 34 because neither the ID nor the ITC relied on the Australian application in determining anticipation or obviousness of claim 34. The ITC agreed with the ID that the Kompauer reference did not anticipate claim 7 under 35 U.S.C. § 102, on the grounds that Kompauer did not disclose a support platform movable between a first position below the fixed base and a second position in front of the fixed base.  The ITC further agreed with the ID that claim 7 was rendered obvious under 35 U.S.C. § 103, by the combination of Kompauer with Adam, Holtz, or Hood - each of which disclosed a support platform movable to positions below the fixed base and in front of the fixed base. As to claim 34 the ITC disagreed with the ID and held that based on the construction of “frictionally interengagable” not being limited to V-shaped profile and groove structures, a person of ordinary skill in the art would know to use frictional engagement surfaces, such as non-serrated frictional pawls or toothless ratchets in place of the serrated locking members of the Kompauer reference.   The ITC therefore determined that at the time of the ‘097 patent, “it would have been obvious to a person of ordinary skill in the art to apply such knowledge to the combination of Kompauer and Adam, Holtz, or Hood, to arrive at the claimed invention of dependent claim 34.”  The ITC also determined that secondary considerations did not exhibit a sufficient nexus with claims 7 or 34 of the ‘097 patent, and a weak showing of secondary considerations does not overcome a strong prima facie showing of obviousness.
Share

Read More

Commission Issues Public Version of Opinion In Certain Encapsulated Integrated Circuit Devices (337-TA-501)

By Eric Schweibenz
|
Sep
07
On August 26, 2010, the International Trade Commission issued the public version of its opinion reversing ALJ Charles E. Bullock’s First Supplemental Initial determination and found that there had been no violation of Section 337 in Certain Encapsulated Integrated Circuit Devices and Products Containing Same (Inv. No. 337-TA-501) due to the fact that the patents-in-suit were not valid. By way of background, the Complainant in this investigation is Amkor Technology, Inc. (“Amkor”) and the Respondents are Carsem (M) Sdn Bhd, Carsem Semiconductor Sdn Bhd, and Carsem, Inc. (collectively, “Carsem”).  The Commission instituted the investigation on December 19, 2003.  After numerous proceedings and remands (see our July 28, 2010 post for a detailed discussion of the procedural history), ALJ Bullock issued a First Supplemental Initial Determination (“First Supplemental ID”) on October 30, 2009, reaffirming his finding of a violation of Section 337.  See our November 27, 2009 post for more details. On February 18, 2010, the Commission issued an order reversing ALJ Bullock’s First Supplemental ID and remanding the investigation to the ALJ to make necessary findings on anticipation and obviousness in view of the Commission’s determination that the ASAT disclosures included additional prior art to Amkor’s asserted patents.  See our February 22, 2010 post for more details.  On March 22, 2010, ALJ Bullock issued the Second Supplemental ID finding no violation of Section 337 due to the anticipation and obviousness of various claims of the asserted patents in view of the ASAT prior art.  See our March 23, 2010 and April 9, 2010 posts for more details. After examining the record of the investigation, the Commission determined not to review the findings made in the Remand ID and Second Supplemental ID.  Instead, its opinion focused exclusively on the October 30, 2009 First Supplemental ID, reversed the holding of that determination, and found that U.S. Patent No. 6,433,277, U.S. Patent No. 6,630,728, and U.S. Patent No. 6,455,356 (collectively, “the patents-in-suit”) were invalid under 35 U.S.C. § 102(g).  (Commissioner Lane did not join the opinion, and Commissioner Pinkert did not join eight paragraphs of the opinion.) The main issue on review was whether U.S Patent No. 6,229,200 (the “ASAT ‘200 patent”) was conceived before the inventions described in the patents-in-suit.  In particular, this issue turned on the proper interpretation of Oka v. Youssefyeh, 849 F.2d 583 (Fed. Cir. 1988).  Although the opinion was heavily redacted and it does not state the conception date for either the patents-in-suit or the ASAT ‘200 patent, it appears that Amkor provided a range of dates for the conception of the patents-in-suit and that those dates overlapped the range of dates for the conception date for the ASAT ‘200 patent.  Amkor quoted Oka for the proposition that “where testimony merely places the acts within a stated time period, the [party with the burden of persuasion, i.e., Carsem] has not established a date for his activities earlier than the last day of the period.”  Oka, 849 F.2d at 584.  Based on its description of the bracketed material as describing the party with the burden of persuasion, it argued that because Carsem had the burden of persuasion to prove invalidity, it had failed to meet its burden because it was only entitled to the latest date for the conception of the ASAT ‘200 patent from the date range, which made that patent not prior art to the patents-in-suit. The Commission disagreed because it held that Amkor had modified the quote from Oka to change its meaning.  The Commission stated that the quoted passage from Oka actually held that “where testimony merely places the acts within a stated time period, the inventor has not established a date for his activities earlier than the last day of the period.”  Id.  (Emphasis in original).  The Commission held that there was no indication “that the reference to ‘the inventor’ was limited to . . . situations where the inventor had the burden of persuasion.”  Therefore, the Commission held that rather than the ASAT ‘200 patent only being entitled to the latest possible conception date, it was in fact the patents-in-suit that were only entitled to the latest date “within the stated time period.”  That date, therefore, was the earliest possible conception date for the patents-in-suit.  Since that date was later than the earliest possible date for the ASAT ‘200 patent, that patent was prior art to the patents-in-suit. The other issue that the Commission addressed was whether oral testimony was sufficient to corroborate that the invention of the ASAT ‘200 patent was made in this country earlier than the invention described in the patents-in-suit.  The Commission held that testimony was sufficient because the corroborating oral testimony came from “third party witnesses . . . neither of whom stand to gain anything from their testimony.”
Share

Read More

ITC Modifies Initial Determination And Terminates Investigation In Certain Machine Vision Software (337-TA-680)

By Eric Schweibenz
|
Nov
18
On November 16, 2010, the International Trade Commission issued a notice determining to modify an Initial Determination (“ID”) issued by ALJ Carl C. Charneski on July 16, 2010 and terminate the investigation with a finding of no violation of Section 337 in Certain Machine Vision Software, Machine Vision Systems, and Products Containing Same (Inv. No. 337-TA-680).  The Commission also issued an opinion on November 16, 2010 supplementing the ALJ’s analysis concerning his finding that U.S. Patent Nos. 7,016,539 (the ‘539 patent) and 7,065,262 (the ‘262 patent) are invalid under 35 U.S.C. § 101 for failure to claim patent-eligible subject matter. By way of background, the Complainants in this investigation are Cognex Corporation and Cognex Technology & Investment Corporation.  The Respondents are MVTec Software GmbH, MVTec LLC, Omron Corporation, Resolution Technology, Inc., Visics Corp., Daiichi Jitsugyo Viswill Co., Ltd., and Daiichi Jitsugyo (America), Inc. (collectively, “Respondents”).  In the ID, ALJ Charneski determined that:  (1) the Respondents’ accused products do not infringe any asserted claim of the ‘539 and ‘262 patents; (2) certain claims of the ‘262 patent are invalid due to anticipation under 35 U.S.C. § 102; and (3) all asserted claims of both patents are invalid for failure to claim patent-eligible subject matter under 35 U.S.C. § 101.  See our August 26, 2010 post for more details. On September 24, 2010, the Commission issued a notice determining to review the ID in part.  In the notice, the Commission determined to review:  (1) certain of ALJ Charneski’s claim construction, infringement, invalidity, and domestic industry findings with respect to the ‘539 patent; (2) the ALJ’s finding that the ‘539 and ‘262 patents are invalid for failure to claim patent-eligible subject matter; and (3) the ALJ’s findings concerning anticipation of certain claims of the ‘262 patent.  The Commission requested briefing from the parties on a question relating to issue (1) under review.  See our September 28, 2010 post for more details. According to the November 16 notice, after examining the record of the investigation, including the ID and the parties’ briefing, the Commission determined to:  (1) modify-in-part the final ID and issue an opinion supplementing the ID’s analysis concerning its finding that the ‘539 and ‘262 patents fail to claim patent-eligible subject matter pursuant to 35 U.S.C. § 101; (2) set aside the ID’s finding that certain claims of the ‘262 patent are invalid as anticipated; and (3) affirm all other findings of the ID under review.  The Commission further determined to terminate the investigation with a finding of no violation of Section 337. In the November 16 opinion, the Commission supplemented ALJ Charneski’s analysis of the patent-eligible subject matter issue and upheld his finding that the ‘539 and ‘262 patents are invalid under 35 U.S.C. § 101 in view of Bilski v. Kappos, 130 S.Ct. 3218 (2010), Gottschalk v. Benson, 409 U.S. 63 (1972), and Parker v. Flook, 437 U.S. 584 (1978).  The Commission determined that “the asserted claims of both patents cover an idea without a link to any real-world undertaking” and that “the asserted claims have absolutely no tie to any particular machine and fail to claim a process, using an algorithm, that transforms a claimed article from one form to another as required for an industrial process.”  Instead, “the claims merely recite data gathering steps that, even if executable by a computer (as in Benson and Flook), fail to transform any article into a different state or thing.”  Accordingly, since the Commission found that the claims of the ‘539 and ‘262 patents do not cover more than abstract ideas and do not to satisfy the “machine-or-transformation” test approved by the Supreme Court in Bilski, the Commission affirmed ALJ Charneski’s finding, as modified, that the claims are invalid under 35 U.S.C. § 101.
Share

Read More

ITC Issues Opinion On Remedy, Public Interest, and Bonding In Certain Energy Drink Products (337-TA-678)

By Eric Schweibenz
|
Nov
29
On November 23, 2010, the International Trade Commission issued the public version of its opinion (dated September 8, 2010) with respect to remedy, public interest, and bonding in Certain Energy Drink Products (Inv. No. 337-TA-678).  See our September 16, 2010 post for more details regarding the corresponding Commission notice. By way of background, the Complainants in this investigation are Red Bull GmbH and Red Bull North America, Inc. (collectively, “Red Bull”).  On May 14, 2010, the ITC issued a notice that it would not review an initial determination of violation with respect to several defaulting respondents based on the unlicensed entry of certain energy drink products that (i) infringe Red Bull’s U.S. Trademark Registration Nos. 3,092,197; 2,946,045; 2,994,429; or 3,479,607 or (ii) bear Red Bull’s U.S. Copyright Registration No. VA0001410959.  See our May 17, 2010 post for more details. With respect to remedy, the ITC agreed with the ALJ that a general exclusion order was appropriate due to “a pattern of violation of this section and it is difficult to identify the source of infringing products,” per Section 337(d)(2)(B).  The ITC cited the ALJ’s findings that infringing products were sold in the United States from a wide array of countries, and these products featured foreign language labeling, over-labels or inkjet stamps, and different ingredients.  The ITC further cited that extensive sales of infringing products were made on the Internet by sellers whose identities were hidden.  The ITC further found a “pattern of violations” by Red Bull’s identification of 250 suspected parties in 2009 alone engaged in gray market activities in the United States, many of which appear to be smaller operations engaged for a short period of time, making it difficult to identify the infringing source. The ITC further agreed with the ALJ that the public interest favors a general exclusion order, based on undisputed evidence that the continued importation, sale for importation, and sale after importation of grey market Red Bull energy drinks will harm Red Bull’s trademarks and copyright in issue.  Additionally, the ITC determined that the gray market energy drinks fail to comply with federal and state labeling and packaging requirements and are not subject to Red Bull’s product recall procedures.  The ITC also determined there was no evidence that domestic demand for energy drinks could not be met by manufacturers and retailers who do not infringe Red Bull’s registered trademarks and copyright. Finally, with respect to the bond, the ITC again agreed with the ALJ and determined that because the defaulting respondents failed to participate in discovery, and because each sets its price differently, it is impossible to calculate a bond based upon a set price differential between the product made by the domestic industry, and the lower price of the infringing imported product.  Accordingly, a bond set at 100 percent of the entered value of the gray market energy drinks was determined to be appropriate during the period of Presidential review.
Share

Read More

ITC Issues Public Version Of Remedy, The Public Interest, And Bonding Opinion In Certain Inkjet Ink Supplies (337-TA-691)

By Eric Schweibenz
|
Feb
01
Further to our January 11, 2011 post, on January 28, 2011 the International Trade Commission (the “Commission”) issued the public version of its opinion on Remedy, the Public Interest, and Bonding in Certain Inkjet Ink Supplies and Components Thereof (337-TA-691). By way of background, the Complainant in this investigation is Hewlett-Packard Co. (“HP”).  Comptree Ink, InkPlusToner.com, SmartOne Services LLC, and Zhuhai Gree Magneto-Electric Co., Ltd. were terminated from the Investigation due to settlement agreements or consent orders.  The following remaining seven Respondents (collectively, “the Defaulting Respondents”) failed to answer the Complaint and were found in default: Zhuhai National Resources & Jingjie Imaging Products Co., Ltd. of China; Mipo International Ltd. of Hong Kong; Mextec Group Inc. d/b/a Mipo America Ltd. of Miami, Florida (“Mextec”); Shanghai Angel Printer Supplies Co. Ltd. of China; Shenzhen Print Media Co., Ltd. of China; Tatrix International of China; and Ourway Image Co., Ltd. of China. On August 30, 2010, ALJ Essex granted HP’s motion for summary determination that a domestic industry exists and that the Defaulting Respondents violated Section 337 with respect to claims 6 and 9 of U.S. Patent No. 6,089,687 ( the ‘687 patent) and claims 1, 5, and 6 of U.S. Patent No. 6,264,301 ( the ‘301 patent).  ALJ Essex further provided recommendations as to a remedy, should a violation ultimately be found by the Commission. After reviewing the relevant portions of the record, the Commission determined to follow the recommendations of ALJ Essex and issued a general exclusion order with respect to claims 6 and 9 of the ’687 patent and claims 1, 5, and 6 of the ’301 patent, and a cease and desist order against Mextec with respect to the same claims.  Specifically, the Commission determined that a general exclusion order was appropriate because HP demonstrated the difficulty in identifying and preventing infringing suppliers, due to the high demand and relatively low production costs for toner.  The Commission also agreed that a cease and desist order was appropriate for Mextec, a domestic company with an inventory of infringing toner.  The public interest consideration further weighed in HP’s favor as the public interest favors respect for intellectual property rights and HP showed it could satisfy the demand for toner in the United States.  Finally, the Commission approved a 100% bond during the Presidential review period.
Share

Read More

ITC Issues Opinion Temporarily Rescinding Remedial Orders In Certain Composite Wear Components (337-TA-644)

By Eric Schweibenz
|
Feb
14
Further to our January 20, 2011 post, on February 10, 2011, the International Trade Commission issued an opinion determining to temporarily rescind its limited exclusion order and cease and desist order entered on November 24, 2009 against Respondents AIA Engineering Limited and Vega Industries Ltd. (collectively “AIA”) in Certain Composite Wear Components and Products Containing Same (Inv. No. 337-TA-644). By way of background, the Commission instituted this investigation on April 25, 2008, in response to a complaint filed by Magotteaux International S/A and Magotteaux Inc. (collectively, “Magotteaux”).  The complaint alleged a violation of Section 337 by Respondents Fonderie Acciaierie Rioale S.P.A. (“FAR”) and AIA based on alleged infringement of U.S. Patent No. RE39,998 (the ‘998 patent).  FAR was terminated from the investigation on the basis of a settlement agreement, leaving AIA as the remaining respondent. AIA responded to the complaint, but thereafter reduced its participation in discovery.  On March 19, 2009, ALJ Essex issued Order No. 23, granting several motions to compel and ordering AIA to respond to written discovery and to produce fact and expert witnesses for deposition.  AIA failed to comply with the order and continued to refuse to participate in discovery.  On May 8, 2009, ALJ Essex issued an Initial Determination (“ID”) finding AIA in default pursuant to Commission Rules 210.16(a)(2) and 210.17.  The Commission determined not to review the ID, and indicated that, in addition to finding a violation pursuant to Commission Rule 210.17, the Commission would presume the facts alleged in the Complaint to be true with respect to AIA.  The Commission then issued a limited exclusion order, a cease and desist order, and terminated the investigation.  See our July 8, 2009, July 21, 2009, November 30, 2009, and June 10, 2010 posts for more details. On September 3, 2010, the ‘998 patent was declared invalid by the U.S. District Court for the Middle District of Tennessee in a declaratory judgment action filed by AIA against Magotteaux.  On September 28, 2010, Magotteaux noticed an appeal of the district court’s decision to the U.S. Court of Appeals for the Federal Circuit.  Accordingly, on October 6, 2010, AIA filed a petition under 19 U.S.C. § 1337(k) and 19 C.F.R. § 210.76 asking the Commission to rescind its November 24, 2009 exclusion order and cease and desist order directed to AIA in light of the district court’s holding invalidating the ‘998 patent.  Magotteaux opposed the petition and requested that the Commission hold a public hearing. According to the Opinion, AIA argued, in its petition, that the Commission did not have statutory authority to maintain an exclusion or cease and desist order based on an invalidated patent, and that the Commission had the authority to rescind any such order as soon as the patent's invalidity was brought to its attention.  AIA also argued that the district court’s final judgment of invalidity was binding on the Commission and that the judgment was issue preclusive, notwithstanding Magotteaux's appeal to the Federal Circuit. In opposition, Magotteaux argued that instead of completely rescinding the remedial orders, the Commission is authorized to rescind the orders, reopen the investigation, and reissue the same relief to Magotteaux under bond, pending outcome of the Federal Circuit appeal.  In response to Magotteaux, AIA argued that Magotteaux had not made the requisite showing for temporary relief under bond. The Commission agreed with AIA and determined that Magotteaux had not satisfied the requirements for temporary relief, as they had not yet addressed the likelihood of success in proving infringement and surviving invalidity challenges to the ‘998 Patent.  Rather, the Commission determined that because the district court’s invalidity ruling occurred subsequent to the Commission’s remedial orders and because the invalidity ruling substantially changed the circumstances under which the orders were issued, the remedial orders should be rescinded pending resolution of the appeal at the Federal Circuit.  The Commission stated it would not permanently rescind the remedial orders at this time to take into account the possibility of the reversal of the district court's invalidity finding.  However, it determined that the orders would be permanently rescinded if the Federal Circuit affirmed the district court with respect to the claims of the ‘998 patent covered by the Commission's remedial orders, i.e., claims 12-13 and 16-21, and would be reinstated if the Federal Circuit reversed the district court with respect to those claims.  Lastly, the Commission denied Magotteaux’s request for a public hearing.
Share

Read More

ITC Issues Public Version Of Opinion In Certain Printing And Imaging Devices (337-TA-690)

By Eric Schweibenz
|
Feb
22
Further to our January 27, 2011 post, on February 17, 2011, the International Trade Commission (the “Commission”) issued the public version of its opinion affirming-in-part and reversing-in-part ALJ Robert K. Rogers, Jr.’s September 23, 2010 Initial Determination (“ID”) in Certain Printing and Imaging Devices and Components Thereof (Inv. No. 337-TA-690) and terminating the investigation with a final determination of no violation of Section 337. The ID had set forth that Respondents Oki Data Corporation and Oki Data Americas, Inc. (collectively, “Oki Data”) violated Section 337 by infringing U.S. Patent No. 5,863,690 (the ‘690 patent), but that there was no violation with respect to U.S. Patent Nos. 6,212,343 (the ‘343 patent), 6,209,048 (the ‘048 patent), 6,388,771 (the ‘771 patent) and 5,746,866 (the ‘866 patent) in the investigation that was based on a complaint filed by Ricoh Company, Ltd., Ricoh Americas Corporation, and Ricoh Electronics, Inc (collectively, “Ricoh”).  On November 22, 2010, the Commission determined to review the ID as to the ‘343 and ‘690 patents. The technology at issue relates to electrophotographic multifunction printers (“MFPs”) that have scanning, printing, copying, and networking capabilities.  The ‘343 and ‘690 patents involve different aspects of MFPs – the ‘343 patent relates to a toner process cartridge with a specific configuration that prevents toner from leaking; the ‘690 patent is directed to the surface characteristics of fuser rollers, how those characteristics are measured, and how the fuser rollers interact with the toner.  Ricoh accused Oki Data’s image drums and MFPs that use same of infringing claims 18-21 of the ‘343 patent, and accused Oki Data’s fuser rollers, fuser kits, and devices that use same of infringing claims 1, 2, 5, 6, 9, 10, 13 and 14 of the ‘690 patent. Regarding the ‘343 patent, the Commission agreed with ALJ Rogers that “a direction orthogonal to a longitudinal direction of the developing roller” in claims 18, 20 and 21 means “a direction that is at a right angle to a lengthwise direction of the developing roller” (i.e., any direction that is perpendicular to any reference longitudinal direction), but reversed his finding that the accused products do not meet this limitation.  The Commission also determined that the ALJ erroneously limited the scope of the term “a lower edge” in claims 18, 19 and 21 to refer only to the furthermost tip of the blade, and thus modified the ALJ’s construction to cover a sharp intersection of planes in the blade.  Under this construction, the Commission again reversed the ALJ’s finding that the accused products do not satisfy this limitation, determining that the “elbow” of the L-shaped permanent bend in the accused products constitutes “a lower edge” of the blade that contacts the developing roller.  However, the Commission affirmed ALJ Rogers’ determination that none of the Oki Data products except for the 9600 model infringe on the modified grounds that the accused products do not have a “narrow-width part configured to have a length that enables the narrow-width part to be bent.”  As to the 9600 model, the Commission found no clear error in the ALJ’s determination that these products infringe the asserted claims of the ‘343 patent. Regarding domestic industry, the Commission affirmed ALJ Rogers’ finding that Ricoh’s C200 series printers do not satisfy the technical prong since Ricoh failed to show that the narrow-width portion of the blade in the C200 series is bent between the side seals or will bend between the side seals when the developing roller is assembled.  Rather than bend between the resilient side seals as Ricoh argued, the Commission determined that it is possible that the blade remains on top of the side seals so as to compress them without actually bending between them when forced by the developing roller.  Moreover, the Commission determined that any bending that occurs by contact with the developing roller occurs in the wide-width part of the blade rather than the narrow-width part as required by the asserted claims of the ‘343 patent. In addition, the Commission affirmed ALJ Rogers’ determination that Japanese Patent Application No. 61-185772 (the ‘772 application) does not anticipate the asserted claims of the ‘343 patent because (1) the “step part” in the ‘772 application is not “downstream of a contact point of the blade and the roller part” as required by the claims, and (2) no “lower edge” of the blade contacts the roller of the ‘772 application in the nip portion G therein. With respect to the ‘690 patent, the Commission reversed ALJ Rogers’ determination that Oki Data failed to prove that its OL400e fuser roller anticipated claims 1, 5, 9 and 13.  Specifically, the Commission found clear and convincing evidence that the OL400e rollers that existed prior to the ‘690 patent inherently anticipate the asserted claims – regardless of whether these rollers were exactly the same as those tested by Ricoh’s expert – on the grounds that (1) it is undisputed that the OL400e rollers were coated with PFA since before the effective filing date of the ‘690 patent, and thus inherently meet the claimed adhesion constant ratio; and (2) a Design Change Order showed that the center-line average roughness of the OL400e rollers was well below the claimed “less than about 3.0 µm” both before and after the design change, and thus met this limitation of claims 9 and 13 before the critical date of the ‘690 patent. Finally, Ricoh had relied on its service and repair expenses related to its C200 series printers and MFPs to meet the economic prong of the domestic industry for the ‘343 and ‘690 patents.  While noting that a complainant may satisfy the economic prong by demonstrating significant service and repair activities and investments with respect to the protected articles, and finding no reason to question the reliability of Ricoh’s service and repair figures, the Commission reversed the ALJ and determined that Ricoh failed to submit evidence substantiating the nature and significance of its activities regarding the articles protected by the asserted patents.  In particular, the Commission stated that the magnitude of the investment cannot be assessed without considering the nature and importance of the complainant’s activities to the patented products in the context of the marketplace or industry in question, which Ricoh failed to address.  Further, in view of the C200 printers having been manufactured entirely abroad and brought into the U.S. as complete products ready for sale (which Ricoh had ceased doing at least five months before filing the complaint), the Commission found that Ricoh submitted no evidence to show how its domestic activities added any value to the completed saleable product, or to demonstrate the nature and relative importance of its activities to the articles protected by the asserted patents.  In addition, the Commission observed that in Certain Male Prophylactics (Inv. No. 337-TA-546), relied on by the ALJ, the complainant’s domestic production and service activities were shown to add 34% of the value to the completed saleable product, whereas Ricoh’s services and repairs were purely post-sale and there is no evidentiary proof that such activities added value to the imported articles.  Accordingly, the Commission concluded that Ricoh did not show that a domestic industry exists with respect to the articles protected by the ‘343 and ‘690 patents.
Share

Read More

ITC Issues Opinion Reviewing And Vacating Initial Determination Granting Motion For Summary Determination Of No Domestic Industry in Certain Video Game Systems and Controllers (Inv. No. 337-TA-743)

By Eric Schweibenz
|
Apr
18
Further to our April 1, 2011 post, on April 14, 2011, the International Trade Commission (the “Commission”) issued the public version of its Opinion reviewing and vacating ALJ Robert K. Rogers, Jr.’s February 11, 2011 Initial Determination (“ID”) in Certain Video Game Systems and Controllers (Inv. No. 337-TA-743). By way of background, the Complainant in this matter is Motiva, LLC (“Motiva”) and the Respondents are Nintendo Co., Ltd. and Nintendo of America Inc. (collectively “Nintendo”).  On February 11, 2011, ALJ Rogers granted Nintendo’s motion for summary determination that the economic prong of the domestic industry requirement is not satisfied and terminated the investigation.  More specifically, the ID by ALJ Rogers determined that (1) “Motiva’s engineering and research and development activities shall not be considered in the domestic industry analysis, because they ended prior to the issuance of either of the patents in suit”; (2) Motiva’s efforts to attract investments, manufacturers, or licensees, were characterized as “sales and marketing activities,” and were therefore not considered, (3) Motiva’s efforts to “bring the technology of the Asserted Patents to market” ended in January 2007, more than three years before the section 337 complaint was filed, and therefore, “[t]hese non-contemporaneous activities... cannot serve as the basis for a finding that Motiva satisfies the domestic industry requirement”; (4) Motiva’s district court litigation could not be an investment in exploitation of the asserted patents through licensing because (a) Motiva never tried to license the asserted patents, (b) these litigation activities were not related to engineering or research or development, and (c) Motiva’s allegation that its litigation against Nintendo is intended to allow Motiva to enter the marketplace is “not sufficient to create a factual dispute regarding whether or not Motiva’s litigation activities are related to engineering, research and development”; and (5) Motiva’s patent prosecution activities, including the inventors’ time and associated legal costs, expenses, and fees would not be considered in the domestic industry analysis, because this “would render the domestic industry requirement a nullity because every patent requires time and fees to prosecute.”  See our March 1, 2011 post for more details. The Commission initially found that the ALJ erred in declining to consider Motiva’s activities that occurred prior to issuance of the asserted patents.  The Commission specifically held, “Neither the language of the statute [19 U.S.C. §§ 1337(a)(2), (a)(3)] nor the legislative history preclude from consideration engineering and research and development investments that precede the issuance of the patent in determining whether a domestic industry exists or is in the process of being established.”  However, the Commission clarified that, depending on the facts and evidence, patent prosecution activities alone may be insufficient to establish the domestic industry requirement under section 337(a)(3)(C), because all United States patents must be prosecuted in the United States Patent and Trademark Office before they can issue as a patent. With respect to Motiva’s litigation activities, the Commission found that Motiva raised a genuine issue of material fact as to whether its district court litigation activities between 2007 and the present are related to licensing and/or product development.  Although Motiva admitted that it conducted absolutely no licensing activities at any time, the Commission indicated that this fact is more relevant to licensing that is “revenue driven,” i.e., derived from existing production, rather that “production driven” licensing, which encourages adoption of the technology by bringing a product to market.  The Commission held that Motiva raised a factual dispute as to whether its activities resemble the production-driven licensing model by actively presenting its technology to potential manufacturers, investors, and licensees not already involved in existing production, and so it was error for the ALJ to conclude that the litigation against Nintendo clearly does not relate to licensing because Motiva never engaged in any sort of licensing activities.  Motiva alleged that Nintendo’s Wii caused all interest in Motiva’s technology to fade and that Motiva’s district court action against Nintendo was a necessary step to establish its claim to the technology, embodied in the asserted patents, in order to bring its technology to market.  Viewed in a light most favorable to Motiva, the Commission stated that “it may be that Motiva's only recourse was to sue Nintendo to bring its product to market and that its litigation activities may in fact be related to ‘licensing’ under section 337(a)(3)(C),” although evidence on this issue should be further developed at the final hearing. On remand, the Commission directed the ALJ to address in the final ID the following questions with respect to establishing a domestic industry: 1.   What was the level of interest from potential manufacturers, investors, and licensees in Motiva’s technology prior to release of the Wii?  Did Nintendo’s release of the Wii cause this interest to decrease?  To what extent would the product(s) being developed by Motiva compete with Nintendo’s Wii? 2.   How close was Motiva’s technology to being commercialized and/or production-ready? 3.   To what extent was Motiva’s shift in product-oriented activities to litigation-oriented activities a strategic business decision not caused by Nintendo’s activities?  Could Motiva have continued its commercialization efforts without resorting to litigation?  Was Motiva taking the “necessary tangible steps to establish” a domestic industry?  See Stringed Instruments, at 13 (quoting S. Rep. 100-71 at 130)? 4. Do the steps “taken [by Motiva] indicate a significant likelihood that the industry requirement will be satisfied in the future?”  See Stringed Instruments, at 13 (quoting H. Rep. 100-40 at 157).  How likely is it that Motiva will have a domestic industry in the future (1) if no relief is issued against Nintendo or, alternatively, (2) if relief is issued against Nintendo?
Share

Read More

ITC Issues Public Version Of Opinion In Certain MEMS Devices (337-TA-700)

By Eric Schweibenz
|
May
17
Further to our May 11, 2011 post, on May 13, 2011, the International Trade Commission (the “Commission”) issued the public version of its Opinion affirming-in-part, modifying-in-part, and reversing-in-part ALJ Robert K. Rogers, Jr.’s December 23, 2010 Initial Determination (“ID”) in Certain MEMS Devices and Products Containing Same (Inv. No. 337-TA-700) and finding a violation of Section 337. ALJ Rogers’ ID determined that Respondents Knowles Electronics LLC (“Knowles”) and Mouser Electronics, Inc. (“Mouser”) violated Section 337 by infringing certain claims of Complainant Analog Devices Inc.’s (“Analog Devices”) U.S. Patent No. 7,364,942 (the ‘942 patent), but that there was no violation with respect to its U.S. Patent No. 7,220,614 (the ‘614 patent).  See our February 4, 2011 post for more details.  On March 7, 2011, the Commission determined to review the ID.  Specifically, the Commission determined to review:  (1) the ALJ’s construction of the claim term “oven;” (2) the ALJ’s construction of the claim term “sawing;” (3) the ALJ’s determination that the accused process does not infringe, either literally or under the doctrine of equivalents, claims 12, 15, 31-32, 34-35, and 38-39 of the ‘614 patent or claim 1 of the ‘942 patent; (4) the ALJ’s finding that U.S. Patent No. 5,597,767 (the ‘767 patent) does not incorporate by reference U.S. Patent Nos. 5,331,454 (the ‘454 patent) and 5,512,374 (the ‘374 patent); (5) the ALJ’s finding that claims 2-6 and 8 of the ‘942 patent are infringed by the accused process; (6) the ALJ’s finding that claims 34-35 and 38-39 of the ‘614 patent and claims 2-6 and 8 of the ‘942 patent, are not anticipated by the ‘767 patent or the ‘374 patent under 35 U.S.C. § 102(a); (7) the ALJ’s finding that claims 34-35 and 38-39 of the ‘614 patent are not obvious in view of the ‘767 patent and Sakata et al. (the “Sakata reference”) under 35 U.S.C. § 103; and (8) the ALJ’s finding that the technical prong of the domestic industry requirement has been satisfied as to both the ‘614 and ‘942 patents.  See our March 8, 2011 post for more details.  In the Opinion, the Commission reversed the ALJ’s finding that the ‘767 patent did not incorporate by reference the ‘454 patent or the ‘374 patent and affirmed the remaining issues. According to the Opinion, the technology at issue relates to micromachined sensors and actuators, also referred to as microelectromechanical systems (“MEMS”), that are manufactured using semiconductor technologies to form and separate wafers into discrete devices for microelectronic packaging.  The ‘614 and ‘942 patents are directed to a process for forming anti-stiction surfaces on MEMS devices before the wafer is separated into dies or discrete devices for assembly into packages.  Analog Devices accused several models of Knowles’ SiSonic MEMS microphones made using Knowles’ “dry” Self-Assembled Monolayer anti-stiction process (“the accused process”) of infringment. In the Opinion, the Commission reviewed the ALJ’s claim construction with regard to two terms, “oven” and “sawing.”  The Commission agreed with ALJ Rogers’ construction of both terms finding the term “oven” meant “a chamber used for heating” and that the term “sawing” meant “cutting.”  These terms were included in some but not all of the asserted claims.  With respect to infringement, the Commission affirmed that the accused process did not meet either of these limitations. As to anticipation, the Commission reviewed ALJ Rogers determination that claims 34-35 and 38-39 of the ‘614 patent and claims 2-6 and 8 of the ‘942 patent were not anticipated by the ‘767 or ‘374 patents.  The ALJ’s analysis included a determination as to whether the ‘767 patent properly incorporated by reference the ‘374 and ‘454 patents.  ALJ Rogers found that although the ‘767 patent incorporated by reference the application which led to the ‘374 patent, it did not incorporate the ‘374 patent.  The Commission disagreed, noting that there was one-to-one correspondence between the issued ‘374 patent and its patent application, and that Analog Devices had not shown otherwise. Concerning the ‘454 patent, ALJ Rogers also found that it was not properly incorporated by reference because the ‘767 patent stated that it incorporated by reference “U.S. patent application Ser. No. 5,331,454” instead of “U.S. Patent no. 5,331,454.”  The Commission noted that the proper focus, when considering incorporation by reference, is on material and content rather than semantics and typographical errors.  In addition, the Commission determined that it would be clear to one skilled in the art that “U.S. patent application Ser. No. 5,331,454” referred to the issued patent. Thus, the Commission reversed the ALJ’s conclusion, determining that the ‘767 patent incorporated by reference the disclosures of the ‘374 and ‘454 patents. Despite this conclusion, the Commission agreed with the ALJ’s ultimate anticipation analysis, determining that the relevant claims were still not anticipated by the ‘767 or ‘374 patents. With respect to obviousness, the Commission agreed with the ALJ that the combination of the ‘767 patent and the Sakata reference did not teach the “sawing” limitation included in the asserted claims of the ‘614 patent. Thus, the Commission determined that the asserted claims of the ‘614 patent were not obvious in view of the ‘767 patent and the Sakata reference. Regarding domestic industry, the Commission agreed with ALJ Rogers that Analog Devices satisfied the technical prong of the domestic industry requirement.  Respondents argued that Analog Devices could not meet the requirement because at least one claim step of each claim was not performed in the U.S.  The Commission agreed with the ALJ that Respondents waived this argument by failing to raise it in their pre-hearing brief. Accordingly, the Commission found a violation of Section 337 with respect to claims 2-6 and 8 of the ‘942 patent and issued a limited exclusion order directed to Knowles and Mouser.  In addition, the Commission indicated that this exclusion order should include a certification provision allowing importation of Respondents’ MEMS devices and products containing same that are made using the non-accused anti-stiction process.  The Commission found that such an order would not be contrary to public interest.  No cease and desist order was issued, as the Commission found that Analog Devices had not provided evidence that Mouser maintained a “commercially significant” inventory of accused products.  Finally, with regard to bond, the Commission determined that Analog Devices failed to establish that any bond was appropriate and imposed no such bond.
Share

Read More

ITC Issues Public Version Of Opinion In Certain Ceramic Capacitors (337-TA-692)

By Eric Schweibenz
|
May
19
Further to our April 25, 2011 post, on May 16, 2011, the International Trade Commission (the “Commission”) issued the public version of its opinion in Certain Ceramic Capacitors and Products Containing Same (Inv. No. 337-TA-692). By way of background, the Complainants in this investigation are Murata Manufacturing Co., Ltd. and Murata Electronics North America, Inc. (collectively, “Murata”).  The Respondents are Samsung Electro-Mechanics Co., Ltd. and Samsung Electro-Mechanics America, Inc. (collectively, “Samsung”).  On December 22, 2010, ALJ E. James Gildea issued the Initial Determination (“ID”) finding that Samsung had not violated Section 337 in connection with the importation into the United States, sale for importation, or sale within the United States after importation of certain multi-layer ceramic capacitors by reason of infringement of certain claims of U.S. Patent Nos. 6,243,254 (the ‘254 patent), 6,014,309 (the ‘309 patent), and 6,266,229 (the ‘229 patent).  ALJ Gildea also determined that a domestic industry exists that practices the ‘254 patent and the ‘229 patent, but not the ‘309 patent.  See our December 22, 2010 post for more details.  On February 23, 2011, the Commission issued a notice determining to review the ID in part.  In particular, the Commission determined to review the ID’s findings with respect to the ‘229 patent and specifically the finding that so-called Applicant Admitted Prior Art (the “AAPA”) does not invalidate the asserted claims of the ‘229 patent.  The Commission determined not to review any issues related to the ‘309 and ‘254 patents and terminated those patents from the investigation.  See our February 24, 2011 post for more details. In the Opinion, the Commission determined that there has been no violation of Section 337.  The Commission first determined to reverse ALJ Gildea’s finding to the extent that it suggested that the AAPA cannot constitute prior art.  Specifically, the Commission determined that Federal Circuit precedent establishes that “the characterizations of the prior art in the asserted patent itself can constitute prior art.”  The Commission cited, among others, the Federal Circuit’s decisions in Riverwood Int’l Corp. v. R.A. Jones & Co., Inc., 324 F.3d 1346, 1354 (Fed. Cir. 2003) and In re Nomiya, 509 F.2d 566, 567 (CCPA 1975) in support of this proposition.  Accordingly, the Commission determined that “the applicants’ characterization of figures 15 through 17 as capacitors well known in the art can be considered ‘prior art’” and reversed the ALJ’s finding to the extent it suggested that the AAPA cannot constitute prior art. Next, the Commission determined that the asserted claims of the ‘229 patent are obvious in light of a combination of (i) the AAPA and the knowledge in the art at the time of filing the patent’s priority document, (ii) the AAPA and Nagakari (Japanese unexamined patent application H11-21429), or (iii) the AAPA and the deNeuf product (product samples sold by Murata and provided by Mr. deNeuf). The Commission also determined to vacate ALJ Gildea’s finding that the AAPA does not anticipate the asserted claims of the ‘229 patent; however, given the Commission’s finding that the asserted claims of the ‘229 patent are invalid for obviousness, the Commission did not reach the issue of anticipation.  The Commission determined to adopt the ALJ’s findings regarding the ‘229 patent in all other respects.
Share

Read More

ITC Issues Public Version Of Opinion Reversing Remand Initial Determination And Finding No Violation In Certain Connecting Devices (337-TA-587)

By Eric Schweibenz
|
Jun
10
Further to our March 9, 2011 post, on June 3, 2011, the International Trade Commission issued the public version of its opinion reversing ALJ Carl C. Charneski’s August 5, 2010 Remand Initial Determination (“RID”) in Certain Connecting Devices (“Quick-Clamps”) for Use with Modular Compressed Air Conditioning Units, Including Filters, Regulators, and Lubricators (“FRL’s”) That Are Part of Larger Pneumatic Systems and the FRL Units They Connect (Inv. No. 337-TA-587).  According to the opinion, the ITC terminated the investigation finding the asserted claims invalid as obvious.  Please note that Oblon Spivak represents Respondents SMC Corporation and SMC Corporation of America (collectively, “SMC”) in this matter. By way of background, the Complainant in this investigation is Norgren Inc. (“Norgren”).  ALJ Charneski issued an initial determination on February 13, 2008 in which he found no violation of Section 337.  Norgren petitioned for review, and the Commission rendered a final decision on April 14, 2008 adopting the ALJ’s initial determination.  Norgren appealed the Commission’s decision to the U.S. Court of Appeals for the Federal Circuit. On May 26, 2009, the Federal Circuit issued a decision that modified the Commission’s claim construction, reversed the Commission’s determination of non-infringement, vacated the Commission’s determination of nonobviousness, and remanded the case.  The Federal Circuit’s remand order contained instructions with respect to asserted claims of U.S. Patent No. 5,372,392 (the ‘392 patent) “to evaluate obviousness in the first instance based upon the correct construction of the claim term ‘generally rectangular ported flange’ — i.e., a construction that does not require a flange having projections on all four sides.”  See our May 28, 2009 post for more details.  ALJ Charneski conducted a one-day evidentiary hearing on April 21, 2010.  On August 5, 2010, ALJ Charneski issued the RID determining that none of the asserted claims of the ‘392 patent were invalid as obvious.  See our August 13, 2010 and September 13, 2010  posts for more details.  On October 7, 2010, the Commission determined to review the RID on the issue of obviousness and requested further briefing.  See our October 11, 2010 post for more details. The Commission’s June 3, 2011 Opinion (the “Opinion”) focused on two aspects of the RID, namely whether SMC’s prior art old-style connector is “generally rectangular,” as claimed by the ‘392 patent and whether it would have been obvious in 1993 to combine a hinge with a generally rectangular clamp. Whether SMC’s Prior Art Old-Style Connector is Generally Rectangular According to the Opinion, the RID determined that modifying the SMC old-style connector to add a pivotally mounted side would not result in a device that contains all limitations of the asserted claims of the ‘392 patent, because SMC’s prior art old-style connector would not to be “generally rectangular.”  SMC and the Investigative Attorney (“OUII”) contended that Norgren’s expert in the original proceeding admitted that the only difference between the connector of the ‘392 patent and SMC’s old style connector is that the ‘392 patent’s connector includes a hinge so one side pivots.  They further argued that ALJ Charneski’s original initial determination found SMC’s old style connector to be generally rectangular, and to hold otherwise would be inconsistent with the Federal Circuit’s decision that both SMC’s and Norgren’s FRLs have “generally rectangular flanges.”  SMC and OUII argued that SMC’s old style connectors have the same generally rectangular structure as SMC’s newer connectors found by the Federal Circuit to infringe, and the asserted claims should have the same meaning for purposes of infringement and validity. Norgren argued that under 19 C.F.R. §210.43(b)(1), the Commission should show deference when reviewing the RID, and at any rate, the RID was correct because SMC and OUII relied on a photograph of the old-style connector, rather than an exhibit, and SMC and OUII did not show the ALJ what part of the old SMC connector comprised the clamp.  Norgren also argued that only the striders of the SMC old-style connector should be considered, and that these two structures are not four sided or rectangular. The Commission determined, contrary to Norgren’s allegations, that its review of an initial determination is de novo, and it need not accept any of the ALJ’s findings, holding instead that its review is pursuant to 19 C.F.R. §210.45, rather than 19 C.F.R. §210.43(b)(1) as asserted by Norgren.  The Commission then rejected the RID’s conclusion that the prior art clamp is not generally rectangular.  The Commission held that the RID was inconsistent with the Federal Circuit’s specific findings that the intervening sloped sides of the SMC and Norgren FRLs were generally rectangular, and also found the RID inconsistent with the original ID, which cited Norgren’s expert witness admitting that the only difference between the prior art SMC connector and the connector claimed in the ‘392 patent is that one side of the clamp pivots.  The Commission found no evidence in the record supported deviating from the original ID on this point, and on the contrary, found evidence in the remand proceeding strongly supported finding a generally rectangular configuration in SMC’s old-style connector.  Specifically, SMC’s expert identified four sides of SMC’s old-style connector that correspond to the same features engaging the flange in SMC’s new-style connector, which the Federal Circuit found to be a “four-sided, generally rectangular clamp.”  After examining the physical exhibits, the Commission determined as factually wrong Norgren’s argument that SMC’s old-style clamp is neither four sided nor generally rectangular.  Moreover, the Commission determined Norgren’s contention that SMC’s old-style clamp consists only of two striders to be inconsistent with the Federal Circuit’s decision that SMC’s new style is infringing, since both the new and old styles perform tightening of the two retaining clips in the same manner. The Commission further determined that SMC’s new and old style connectors use “the front and back striders as well as the alignment details on the top and bottom of the connector to sealingly connect the FRL units to one another,” and cited to SMC’s expert testimony that the shape formed by the four parts of the “front and back striders and the alignment details on the top and bottom” is generally rectangular.  The Commission additionally determined that all four sides of the old-style connector are needed for it to function properly, and Norgren’s arguments were inconsistent with its arguments that SMC’s new-style connector is both four-sided and generally rectangular. Obviousness of Combining a Hinge with a Generally Rectangular Clamp According to the Order, SMC and OUII argued that the RID is erroneous because it would have been obvious in 1993 to hinge the removable side of a connector to address the problem with prior art connectors, namely loose parts and ease of use.  They pointed to, among other things, design needs, finite number of ways for solving the loose parts problem, and a prior art patent - the Palatchy patent - that specifically showed hinging a clamp for pipes to make it easier to manipulate.  Norgren countered that SMC’s expert was not involved in the FRL industry in 1993, and that Norgren’s expert was so involved, and Norgren’s expert testified on the absence of any teaching, suggestion or motivation to achieve the subject matter of the ‘392 patent.  Norgren also argued that a person of ordinary skill in the art would not have reasonably expected that a hinged side on a rectangular claim would provide a fluid-tight seal. The Commission determined that SMC established, clearly and convincingly, the obviousness in 1993 of hingedly or pivotally mounting one side of a generally rectangular connector.  The Commission also determined that the Palatchy patent demonstrated that at the time of the invention, it was known to one of skill in the art to use a pivotally mounted side to make the clamp easier to use and eliminate loose parts.  Applying the flexible standard dictated by KSR, the Commission concluded there was no reason to limit the teaching of the Palatchy patent to water pipes.  More fundamentally, it determined that the use of a hinge to solve the known loose parts problem in the FRL industry in 1993 was a common sense solution, apart from the disclosure of the Palatchy patent.  The Commission further determined that the testimony of Norgren’s expert supported the common sense nature of the claimed solution, and that hinges were common components that one of ordinary skill would have understood to solve the loose parts problem.  The Commission held as lacking merit Norgren’s contention that one of ordinary skill would not have expected the hinge to work on devices operating up to 300 PSI, and to pass tests six times the expected air pressure.  The Commission determined that “the hinge does not affect the sealing or clamping mechanism; it merely connects the strider to the connector,” and that it cited to Norgren’s expert’s admission that if the prior art were modified to include a pivoting side and the clamp functioned the same way, there would be no need to test it to see if it sealed properly. The Commission also concluded that secondary considerations do not support a finding of non-obviousness.  The Commission rejected Norgren’s argument that all experts opined that there was a long-felt need for a clamp that allowed for ease of replacement and had no loose parts, determining instead that long felt need is created by inadequacies in technical knowledge, which was not the case here.  The Commission further determined there was no persuasive showing of commercial success, particularly due to Norgren’s failure to demonstrate a nexus between any success and the improvements claimed in the ‘392 patent. The Commission further determined that in addition to proving the obviousness of claim 1 of the ‘392 patent, SMC and OUII also proved the obviousness of asserted dependent claims 2-5, 7, and 9 of the ‘392 patent.  The Commission determined that each of the elements of the dependent claims were shown in SMC’s old-style clamp, either alone or in view of the Palatchy patent and/or the general knowledge and common sense of one of skill in the art relating to hinges and hinged connections. Accordingly, the Commission reversed the ALJ’s RID, and therefore found no violation of Section 337 and terminated the investigation.
Share

Read More

ITC Issues Opinion Clarifying Licensing-Based Domestic Industry Requirements Under Section 337 In Certain Multimedia Display And Navigation Devices And Systems (337-TA-694)

By Eric Schweibenz
|
Jul
28
Further to our June 27, 2011 post, on July 22, 2011, the International Trade Commission (the “Commission”) issued the public version of its opinion affirming, on modified grounds, ALJ Carl C. Charneski’s December 16, 2010 Initial Determination (“ID”) finding no violation of Section 337 in Certain Multimedia Display and Navigation Devices and Systems, Components Thereof, and Products Containing Same (Inv. No. 337-TA-694).  In particular, the Commission reversed ALJ Charneski’s finding that Garmin’s products do not infringe the asserted claims of the ‘951 patent, reversed his finding that the asserted claims of the ‘592 patent are not invalid under the written description requirement, and reversed his finding that Pioneer has established a licensing-based domestic industry for the ‘951 and ‘592 patents. By way of background, the Complainants in this investigation are Pioneer Corporation and Pioneer Electronics (USA) Inc. (collectively, “Pioneer”) and the Respondents are Garmin International, Inc. and Garmin Corporation (collectively, “Garmin”).  In the ID, ALJ Charneski determined that (i) Garmin’s accused products do not infringe the asserted claims of U.S. Patent Nos. 5,424,951 (the ‘951 patent), and 6,122,592 (the ‘592 patent), (ii) Garmin did not show by clear and convincing evidence that any claim of the ‘592 patent is invalid due to obviousness or lack of written description, and (iii) Pioneer satisfied the domestic industry requirement with respect to the asserted patents.  See our February 11, 2011 post for more details. On February 23, 2011, the Commission determined to review the ID in part and to request that the parties prepare written submissions responding to various questions concerning the issues under review.  The Commission also requested briefing on remedy, the public interest, and bonding.  See our February 28, 2011 post for more details.  Domestic Industry The Commission determined that Complainants seeking to satisfy the domestic industry requirements by their investments in patent licensing must show under section 337(a)(3)(C) that (i) the investment exploits the asserted patent, (ii) the investment relates to “licensing,” and (iii) any alleged investment is domestic, i.e., it must occur in the United States. Since Pioneer’s asserted licensing activities relate to its patent portfolio that includes patents other than those asserted in this Investigation, the Commission also determined it must examine the “strength of the nexus between the activity and licensing the asserted patent in the United States.”  In assessing such a nexus, the Commission determined that a complainant should provide “evidence showing that its licensing activities are particularly focused on the asserted patent among the group of patents in the portfolio or through other evidence that demonstrates the relative importance or value of the asserted patent within the portfolio.”  The Commission further determined that an important consideration is whether an asserted patent covers the product or service of a potential licensee.  The Commission also identified the following considerations: (1) the number of patents in the portfolio, (2) the relative value contributed by the asserted patent to the portfolio, (3) the prominence of the asserted patent in licensing discussions, negotiations and any resulting license agreement, and (4) the scope of technology covered by the portfolio compared to the scope of the asserted patent.  The Commission also determined that an asserted patent within a portfolio might stand out and help strengthen the required nexus if the asserted patent (1) was discussed during the licensing negotiation process, (2) has been successfully litigated before by complainant, (3) relates to a technology industry standard, (4) is a base patent or a pioneering patent, (5) is infringed or practiced in the United States, or (6) the market recognizes its value in some other way.  The Commission further determined that the nexus could be strengthened if the portfolio patents and the asserted patents therein “fit together congruently” covering a specific technology, as opposed to being patents that “cover a wide variety of technologies bearing only a limited relationship to one another.”  The Commission determined that since activities must be shown to relate to licensing, certain activities that might serve multiple purposes should be specifically shown to relate to licensing.  As an example, the Commission explained that analyzing a company’s product for infringement might relate to licensing, but it might also relate to litigation and seeking injunctive relief. After considering the three above-mentioned variables for investment in (i) the asserted patent, (ii) “licensing,” and (iii) the United States, the Commission determined that it further considers whether such investment is substantial.  The Commission held that it adopts a “flexible approach,” whereby a relatively weak showing in the above three variables might still show that investment is substantial by “demonstrating that its activities and/or expenses are of a large magnitude,” which in turn may depend on the size of the industry and the size of the complainant.  The Commission determined that other factors relevant to determining a “substantial investment” include (1) the existence of other types of “exploitation” of the asserted patent such as research, development, or engineering, (2) the existence of license-related ancillary activities such as ensuring compliance with license agreements and providing training or technical support to its licensees, (3) whether complainant's licensing activities are continuing, and (4) whether complainant’s licensing activities are those that are referenced favorably in the legislative history of section 337(a)(3)(C). In applying the above standards to Pioneer’s activities, the Commission determined that with respect to its in-house activities, Pioneer properly relied upon the licensing activities of its related entity Discovision Associates, which conducted patent analysis, reverse engineering, testing, and similar activities, and which in Pioneer’s circumstance constituted licensing activities.  However, the Commission determined that Pioneer’s in-house activities were directed toward its entire navigation portfolio, and not the asserted ‘951 and ‘592 patents, which were merely covered, but not expressly identified in certain licenses it had negotiated.  In view of the large number of patents in Pioneer’s portfolio, the broad technical scope of the portfolio, the absence of evidence showing how the asserted patents fit together with the other patents in the portfolio, and at least one of the licenses concerning only a small percentage of portfolio patents that are U.S. patents, the Commission determined this demonstrated a weak connection between Pioneer’s in-house activities and the asserted patents. With respect to the activities of Pioneer’s outside counsel, the Commission first determined there is no presumption that outside counsel activities are less related to licensing than their in-house counterparts.  Given that outside counsel’s redacted invoices related to the analysis of certain products and the ‘951 and ‘592 patents, the Commission found a “relatively strong” nexus between the activities of outside counsel and the asserted patents.  However, even though there was evidence to support that outside counsel’s activities were generally related to licensing (because Pioneer approached various entities about licensing patents prior to engaging in litigation), certain redacted entries suggested these activities were not solely related to licensing, and therefore the amount of outside attorneys fees could not be relied upon in their entirety. As to whether Pioneer’s licensing activities constituted “substantial investment,” the Commission determined that Pioneer was a large international company with significant resources, and the relevant market includes many participants encompassing vehicle-based navigation devices, handheld portable navigation devices, and smartphones with navigation capabilities.  Although Pioneer provided evidence of royalty payments, the Commission determined this can be circumstantial evidence of substantial investment, but does not constitute investment itself.  Additionally, the Commissioned determined that Pioneer's activities, “on the whole, reflect a revenue-driven licensing model targeting existing production rather than the industry-creating, production-driven licensing activity that Congress meant to encourage,” and although the statute requires all licensing activities to be considered, the Commission gave “Pioneer's revenue-driven licensing activities less weight.”  The Commission concluded that “Pioneer's activities relate only minimally to licensing the asserted patents in the United States,” and Pioneer’s activities were “too limited in light of its resources and the relevant market to be a ‘substantial’ investment under section 337(a)(3)(C).” Therefore, the Commission reversed ALJ Charneski’s finding that a domestic industry exists. ‘951 Patent - Infringement According to the Opinion, ALJ Charneski interpreted the following term from claim 1 of the ‘951 patent, “second memory means for storing the read display pattern data and position coordinate data corresponding to all of said display pattern data and said position coordinate data from said first memory means,” as requiring “read display pattern data” stored on the second memory that cannot be different information than the “read display pattern data” read from the first memory.  Based on this construction, ALJ Charneski found that Garmin’s products did not infringe claims 1 and 2 of the ‘951 patent because they lacked “second memory means.”  The Commission determined that ALJ Charneski misconstrued the above “memory means” limitation, because the plain meaning of the term “corresponding” within this limitation does not require the first and second memories to be the same.  Instead, the Commission determined “corresponding” means “relating to,” as suggested by Pioneer.  Based on this revised construction, the Commission found that Garmin’s products literally met the “second memory means” limitation, and therefore infringed claims 1 and 2 of the ‘951 patent. ‘592 Patent - Written Description According to the Opinion, ALJ Charneski found the ‘592 patent not invalid for lack of written support regarding claims directed to displaying one or more categories, in view of the specification “disclosing display locations in one, two, or all of the available categories.”   However, the Commission determined that as of the invention date claimed by Pioneer, the ‘592 inventor had not invented the “map display system” of claim 1 because this subject matter is not disclosed in the original specification filed on February 11, 1993, or the detailed description of the issued ‘592 patent.  More specifically, the Commission determined that the ‘592 patent nowhere disclosed a single category for display, and the improvement of the ‘592 patent was to easily display locations from different categories nearest to a point-of-interest.  Additionally, the Commission determined the ‘592 patent offered no written support for a “selector device” that allows any type of category selection, and that the entire invention disclosure contradicts the “selector device” language of claim 1 because the disclosure “focuses on displaying all locations regardless of category.” For at least the above reasons, the Commission affirmed, on modified grounds, ALJ Charneski’s determination that Pioneer failed to prove that Garmin violated Section 337.
Share

Read More

ITC Issues Public Version of Opinion In Certain Mobile Telephones And Wireless Communication Devices Featuring Digital Cameras (337-TA-703)

By Eric Schweibenz
|
Aug
08
Further to our July 6, 2011 post, on July 25, 2011, the International Trade Commission issued the public version of its opinion setting forth the reasons for their June 30, 2011 notice determining to reverse-in-part, affirm-in-part, and remand for further proceedings an initial determination (“ID”) issued by Chief ALJ Paul J. Luckern on January 24, 2011 in Certain Mobile Telephones and Wireless Communication Devices Featuring Digital Cameras, and Components Thereof(Inv. No. 337-TA-703).  By way of background, the Complainant in this investigation is Eastman Kodak Company (“Kodak”) and the Respondents are Research In Motion, Ltd., Research In Motion Corporation (collectively, “RIM”), and Apple Inc. (“Apple”) (RIM and Apple collectively, the “Respondents”).  In the ID, ALJ Luckern determined there was no violation of Section 337.  More specifically, ALJ Luckern determined, inter alia, that (i) none of Respondents’ accused products infringed the sole claim now at issue: claim 15 of U.S. Patent No. 6,292,218 (the ‘218 patent); (ii) claim 15 of the ‘218 patent is invalid for obviousness under 35 U.S.C. § 103; and (iii) the domestic industry requirement is satisfied with respect to the ‘218 patent.  See our March 18, 2011 post for more details. On March 25, 2011, the Commission issued a notice determining to review ALJ Luckern’s ID in its entirety and requesting further briefing with respect to invalidity and claim construction.  See our March 29, 2011 post for more details. Claim Construction and Infringement With respect to claim construction, Kodak argued to the Commission that in the ID, ALJ Luckern’s claim constructions paid insufficient attention to the claim constructions of another ALJ regarding many of the same terms in Investigation 337-TA-663, wherein Kodak asserted the same patent claim against a different respondent, Samsung Electronics.  The Commission concluded it was not necessary to determine to what degree the prior constructions were binding, because the earlier investigation settled prior to any final agency action, and there could be no binding effect as a matter of issue preclusion on Apple and RIM because they were not respondents in the earlier action.  Although the Commission determined it is appropriate for subsequent determinations to distinguish earlier contrary findings, Kodak’s arguments were moot because as set forth in more detail below, with respect to the three constructions at issue in this Investigation, the Commission adopted two of Kodak’s constructions, and the third (“image capture”) was not at issue in the 663 investigation. Whether “Motion Processor” and “Still Processor” Must Be Distinct in Circuitry ALJ Luckern’s ID construed “motion processor” within claim 15 of the ‘218 patent such that the “still processor” and “motion processor” use circuitry that is not shared or overlapping.  The Commission, however, determined that although the ‘218 patent teaches the benefits of having separate circuits for motion and still processing, the specification did explain that “the same component could also be used to perform both of these functions.”   To the extent ALJ Luckern relied upon the prosecution history to support his interpretation, the Commission determined that nothing in Kodak’s amendments or explanatory remarks distinguished the prior art on the basis upon which ALJ Luckern relied, and there was no “clear disavowal” necessary for limiting the scope of claim language.  Accordingly, the Commission interpreted “motion processor” to mean “a processor that processes a series of motion images using digital image processing,” and “still processor” is “a processor that processes a captured still image.” As both Apple and RIM contest whether their products infringe under these constructions, the Commission remanded this question to the ALJ. Whether Color Information Stored as Luminance and Chrominance (YCC) Contain at Least Three Different Colors In the ID, ALJ Luckern interpreted “at least three different colors” to “refer to three of more distinct colors, for example red, blue and green, where each color is a phenomenon of light or visual perception that enables one to differentiate otherwise identical objects.”  Under this interpretation, ALJ Luckern found that the claim term would not literally read on YCC image data, which saves color data as grayscale luminance values and color difference values.  In particular, ALJ Luckern further determined that YCC color information is not equivalent to three colors (such as red, green, and blue) due to prosecution history estoppel.  The Commission determined, however, that the ALJ, who essentially adopted Respondents’ arguments, “may have improperly conflated infringement analysis with claim construction.”  Instead, the Commission determined that the term “at least three different colors” should be given its plain and ordinary meaning, in view of the fact that the patentee did not act as his own lexicographer and the prosecution history did not evidence any limiting or unique meaning for the term.  Accordingly, the Commission turned to the IEEE Standard Dictionary of Electrical and Electronic Terms and interpreted “color” to be “that characteristic of visual sensation in the photopic range that depends on the spectral composition of light entering the eye.”  The Commission further determined that color may be specified by chromaticity and luminance. The Commission proceeded to find that the accused products practiced part (b) of claim 15 under the plain meaning of color construed above.  The Commission found no dispute that YCC information is the result of a linear transformation of RBG values, such that YCC constitutes three values that together represent a red value, green value, and a blue value, and therefore, a YCC value “provides color data for three color pixels in a repeating pattern of red, green, and blue pixels, as required by part (b) of claim 15.”  The Commission further determined that transforming red, green, and blue values into luminance and chrominance difference values does not cause the underlying colors to disappear.  Instead, the colors remain, “even if the expression of the colors is different.”  The Commission also determined that the transformation does not lose the pixel patterns, since each set of luminance and two chrominance values corresponds precisely to a set of a red, green and blue values. Initiating Capture of a Still Image While Previewing a Motion Image ALJ Luckern interpreted the above term as “sending a signal from the capture button to the timing and controls section, said signal starting the still image capture process and being sent during the display of motion images.”  The Commission sided with Kodak and the Commission investigative attorney, determining that ALJ Luckern’s interpretation was unduly narrow, and that while the ALJ is permitted to choose his own construction not offered by any party, in this instance the ALJ improperly imported limitations from the specification.  More specifically, neither the claims, nor the prosecution history support imposing a requirement that a signal be sent to the timing and control sections.  However, the Commission adopted Apple’s argument that the claim and specification supported interpreting “capture” to require the step of “sensing,” and therefore the Commission interprets “initiation capture of a still image,” to mean “initiating the capture by an image sensor of a still image.” With respect to infringement, the Commission found that at least all accused products other than the Apple iPhone 3GS and iPhone 4 practice the “initiating capture” limitation, since the Commission’s construction of this term was broader that the ALJ’s, and so all products that infringed under the ALJ’s interpretation continue to do so for the same reasons as provided in the ID.  Although Kodak advanced alternative arguments for infringement of the iPhone 3GS and iPhone 4 based on their flash photography mode, the Commission found no reason to overturn ALJ Luckern’s ID that Kodak waived such arguments.  With respect to whether the iPhone 3GS and iPhone 4 infringed in their non-flash modes of operation, the Commission determined that these products did not literally infringe, but did not take a position on whether Kodak waived its opportunity to argue that the non-flash modes of such products infringed under the doctrine of equivalents.  Accordingly, the Commission determined that Kodak demonstrated infringement of the RIM and Apple iPhone 3G products, but not the iPhone 3GS and iPhone 4, and that the ALJ should conduct any further warranted proceedings to determine whether the non-flash mode of the iPhone 3GS and iPhone 4 infringe under the doctrine of equivalents, if such arguments were not waived. Validity Before addressing validity issues, the Commission addressed Kodak’s argument, raised for the first time in its petition to the Commission, that the Parulski ‘335 patent was not prior art under 35 U.S.C. § 102(e).   The Commission rejected Kodak’s argument, in view of Kodak’s admission in response to Apple’s Proposed Findings of Fact, that the Parulski ‘335 patent was prior art.  It found unavailing Kodak’s argument that it had admitted merely to the “possibility” that Parulski qualified as prior art, subject to a determination of the invention date.   The Commission further determined that Kodak’s argument is made far too late, and it may not now contest the chronological relationship of the two patents. Although the parties prior to the final hearing before ALJ Luckern may have indicated that their positions would not change in response to modified claim interpretations and ALJ Luckern had found that prior art invalidated claim 15, the Commission remanded for the ALJ’s determination how respondents’ invalidity theories would be affected by the Commission’s claim interpretations.  The Commission specifically requested that the ALJ on remand address the following:
  1. The effect, if any, of ex parte reexaminations of the ‘218 patent, which closed shortly before the issuance of the final ID, and therefore were not fully considered;
  2. The ALJ’s decision and authority to rely upon combinations of prior art not expressly presented by the respondents; and
  3. Kodak’s secondary considerations, in particular, their obtaining large settlements in proceedings where it asserted the ‘218 patent.
Share

Read More

Copyright © Oblon, McClelland, Maier & Neustadt, L.L.P. | Disclaimer
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.