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ITC Issues Public Version Of Opinion In Certain Wireless Consumer Electronics Devices (337-TA-853)

By Eric Schweibenz
|
Mar
26
Further to our February 24, 2014 post, on March 21, 2014, the International Trade Commission (the “Commission”) issued the public version of its opinion finding no violation of Section 337 in Certain Wireless Consumer Electronics Devices and Components Thereof (Inv. No. 337-TA-853). By way of background, the Complainants in this investigation are Technology Properties Limited LLC (“TPL”), Phoenix Digital Solutions LLC (“PDS”), and Patriot Scientific Corp. (collectively, “Complainants”).  The remaining Respondents are Barnes and Noble, Inc., Garmin Ltd., Garmin International, Inc., Garmin USA, Inc., HTC Corp., HTC America, Huawei Technologies Co., Ltd., Huawei Device Co., Ltd., Huawei Device USA Inc., Futurewei Technologies, Inc. d/b/a Huawei Technologies (USA), LG Electronics, Inc., LG Electronics U.S.A., Inc., Novatel Wireless, Inc., Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., ZTE Corp., and ZTE (USA) Inc. (collectively, “Respondents”).  The Patent-In-Suit is U.S. Patent No. 5,809,336 (the ‘336 patent).  On September 6, 2013, ALJ E. James Gildea issued an Initial Determination (“ID”) finding no violation of Section 337.  Specifically, the ALJ determined that (1) none of the accused products directly or indirectly infringe the asserted claims of the ‘336 patent; (2) the asserted claims of the ‘336 patent are not invalid; (3) Respondents had not shown that the accused LG product is covered by a license to the ‘336 patent, and (4) Complainants had satisfied the domestic industry requirement.  See our November 5, 2013 post for more details on the ID. On November 25, 2013, the Commission determined to review the ID in part.  In particular, the Commission determined to review the ID’s findings concerning claim construction and infringement of claims 6 and 13 of the ‘336 patent for all accused products, except for the accused products listed on page eighty-eight of the ID.  The Commission also determined to review the ID’s findings on domestic industry.  See our December 2, 2013 post for more details. In the opinion, the Commission affirmed ALJ Gildea’s claim constructions as to claims 6 and 13 of the ‘336 patent.  The Commission also affirmed, with modification, the ALJ’s finding that the accused products do not satisfy the “entire oscillator,” “varying,” and “external clock” limitations of claims 6 and 13.  Moreover, the Commission affirmed ALJ Gildea’s finding that Complainants had failed to prove indirect infringement.  With respect to domestic industry, the Commission determined that Complainants had satisfied the economic prong of the domestic industry requirement based on modified reasoning.  However, the Commission took no position on whether Complainants had satisfied the technical prong of the domestic industry requirement. Claim Construction ALJ Gildea had construed the disputed claim term “an entire oscillator disposed upon said integrated circuit substrate” to mean “an oscillator that is located entirely on the same substrate as the central processing unit and does not rely on a control signal or an external crystal/clock generator to generate a clock signal.”  This was essentially the construction proposed by Respondents, and it was instrumental in ALJ Gildea’s ultimate finding of non-infringement. Complainants had argued that the term should be construed to mean “an oscillator that is located entirely on the same semiconductor substrate as the central processing unit.”  However, ALJ Gildea had rejected this proposed construction after finding that it had not accounted for the ‘336 patent’s prosecution history.  In particular, ALJ Gildea found that, during prosecution, the patent applicant had specifically distinguished the claimed invention over prior art references that relied on outside components to provide a control signal or clock signal. In the opinion, the Commission affirmed ALJ Gildea’s claim construction.  In particular, the Commission noted that the ALJ was correct that the prosecution history supported his limiting construction.  However, the Commission further noted that the claims themselves and the ‘336 patent specification also bolster this construction.  With respect to the claims, the Commission found that their plain language required that the operating rates of the claimed oscillator and CPU be allowed to change in response to the chip’s process, voltage, and temperature (“PVT”) parameters as opposed to some other influence.  With respect to the specification, the Commission found that its teachings were antithetical to allowing outside influences to affect the clock rate of the on-chip oscillator, which was how prior art microprocessors operated.  Rather, the specification explicitly taught that the use of external sources for timing was inefficient and that the solution was to allow the clock rate of the oscillator to vary solely due to the same parameters that were affecting the CPU.  Accordingly, the Commission affirmed ALJ Gildea’s claim construction based on the totality of the intrinsic evidence. Infringement In view of the Commission’s affirmance of ALJ Gildea’s construction of the claim term “an entire oscillator disposed upon said integrated circuit substrate,” the Commission went on to affirm the ALJ’s finding that the term does not read on Respondents’ accused products.  In particular, the Commission found that ALJ Gildea’s application of his construction of the “entire oscillator” limitation to the accused products was correct, including in particular his discussion of the intricate relationship between the generation and frequency of a clock signal. The Commission also affirmed ALJ Gildea’s finding that the accused products do not satisfy the “varying … in the same way” limitations of claims 6 and 13.  Complainants argued that the ALJ had failed to take into account the specific language of the asserted claims and had failed to consider whether the CPU and clock rate of the oscillator vary in the same way due strictly to their fabrication process, as opposed to operational parameters.  In particular, Complainants argued that the fact that the chips in the accused products are subjected to a practice called “binning”—to account for the varying performance levels of chips due to the manufacturing process—proves that processing frequency of the CPU in the accused products will vary with the clock rate of the on-chip oscillator as a function of the fabrication parameters that were fixed in the chip at the factory, thereby satisfying the “varying … in the same way” limitation. The Commission rejected Complainants’ argument based on the binning process.  In particular, the Commission found that the binning process merely sorts individual chips based on the maximum processing frequency at which a chip is capable of operating and has nothing to do with the actual frequency and clock rate at which the chip operates.  The Commission also found that an additional non-infringement argument that Complainants had apparently never raised before the ALJ had been waived.  Moreover, the Commission found that, in any event, Complainants’ additional argument could not overcome the ultimate finding that the accused products do not satisfy the “varying … in the same way” limitation. The Commission also affirmed ALJ Gildea’s finding that Complainants had failed to show that the accused products satisfy the “external clock” limitation of claims 6 and 13.  Accordingly, the Commission affirmed the ID’s ultimate determination of no direct infringement by the accused products. Based on its affirmance of the no direct infringement finding, the Commission also affirmed the ID’s finding that Complainants had failed to prove induced infringement.  In particular, since it was undisputed that induced infringement requires proof of direct infringement, there could be no induced infringement in the instant case because the accused products do not meet all of the limitations of the asserted claims. Domestic Industry With respect to domestic industry, the Commission affirmed ALJ Gildea’s finding that Complainants had satisfied the economic prong.  Specifically, the Commission found that Complainants’ licensing program was ongoing at the time the complaint was filed and that Complainant TPL’s investments related to licensing the ‘336 patent were substantial. To support their domestic industry case, Complainants relied primarily on their Moore Microprocessor Patent (“MMP”) portfolio licensing program.  Specifically, Complainants relied on the activities of Alliacense, a California-based vendor that carries out Complainants’ licensing program.  Shortly before the filing of the complaint, primary responsibility for Complainants’ licensing activity appears to have shifted from TPL to PDS. Based on the evidence, the Commission found that Complainants’ licensing program appeared to be ongoing under PDS’s control, with TPL’s participation, although the record did not identify a way to definitively determine the amount of PDS’s pre- or post-complaint investment.  The Commission found that ALJ Gildea had properly limited Complainants to relying on TPL’s pre-complaint expenditures as opposed to PDS’s expenditures for purposes of satisfying the economic prong. However, the Commission also determined that the filing of TPL’s complaint in the instant investigation was sufficiently contemporaneous with its activities with respect to the licensing of the ‘336 patent and that those activities should be examined for purposes of the economic prong.  Moreover, even though the post-complaint licensing activity was funded by PDS (rather than TPL) and could not be substantively relied upon to support satisfaction of the economic prong, the evidence nevertheless supported a finding that Complainants’ licensing activity was ongoing. With respect to TPL’s pre-complaint investments in licensing, Respondents argued that Complainants had not provided sufficient evidence with which the Commission could determine what expenses related to licensing as opposed to irrelevant litigation, patent prosecution, and patent reexamination activities.  However, the Commission found that, even excluding certain categories of expenditures, Complainants had made a substantial investment in licensing related to the ‘336 patent.  The Commission found that there was a strong nexus between TPL’s expenditures and the MMP portfolio, and noted the ALJ’s finding that the ‘336 patent was a central part of that portfolio.  Accordingly, the Commission affirmed ALJ Gildea’s finding that Complainants had satisfied the economic prong of the domestic industry requirement. With respect to the technical prong, ALJ Gildea had noted in the ID that “where a complainant is relying on licensing activities, the domestic industry determination does not require a separate technical prong analysis and the complainant need not show that it or one of its licensees practices the patents-in-suit.”  However, subsequent to the Commission’s decision to review the ID in part in the instant investigation, the Commission issued its opinion in Certain Computers and Computer Peripheral Devices, and Components Thereof, and Products Containing the Same (Inv. No. 337-TA-841), which held that there is a technical prong requirement with respect to “articles protected by the patent” for a domestic industry asserted under Section 337(a)(3)(C).  See our January 15, 2014 post for more details on the Commission opinion in the 841 investigation.  In the instant opinion in the 853 investigation, the Commission determined to take no position on whether the technical prong had been satisfied.  The Commission apparently found that it was justified in not taking a position on the issue due to its findings of non-infringement and the overall posture of the investigation. Conclusion In view of the above, the Commission found no violation of Section 337 with respect to the ‘336 patent.
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ITC Issues Public Version Of Revised Opinion Remanding Investigation In Certain 3G Mobile Handsets (337-TA-613)

By Eric Schweibenz
|
Apr
02
Further to our February 18, 2014 post, on March 26, 2014, the International Trade Commission (the “Commission”) issued the public version of its revised opinion remanding the investigation to Chief ALJ Charles E. Bullock for assignment to a presiding ALJ in Certain 3G Mobile Handsets and Components Thereof (Inv. No. 337-TA-613).  The remanded investigation is now being handled by ALJ Theodore R. Essex.  See our March 13, 2014 post for more details. By way of background, the Commission instituted the investigation on September 11, 2007 based on a complaint filed by InterDigital Communications Corp. and InterDigital Technology Corp. (collectively, “InterDigital”).  The complaint, as amended, alleged violations of Section 337 in the importation and sale of certain 3G mobile handsets and components thereof that infringed certain claims of U.S. Patent Nos. 7,117,004 (the ‘004 patent), 7,190,966 (the ‘966 patent), 7,286,847 (the ‘847 patent), and 6,693,579 (the ‘579 patent).  The notice of investigation named Nokia Corp. and Nokia, Inc. (collectively, “Nokia”) as Respondents. On August 14, 2009, former Chief ALJ Paul J. Luckern issued his final Initial Determination (“ID”) finding no violation of Section 337 on the grounds that asserted claims of the patents-in-suit were not invalid and not infringed.  Additionally, the ALJ found that the ‘004, ‘966, and ‘847 patents were not unenforceable due to prosecution laches, and that the ‘579 patent also was not unenforceable.  See our September 23, 2009 post for more details on the ID. The Commission reviewed the ID and on October 16, 2009 issued a notice modifying the ALJ’s construction of the term “access signal” in the asserted claims of the ‘847 and ‘004 patents.  The Commission also reviewed and took no position on the ALJ’s construction of the term “synchronize” in the asserted claims of the ‘847 patent.  Further, the Commission took no position on validity with respect to any of the asserted patents and did not review the ALJ’s construction of the terms “code” and “increased power level” in the asserted claims of the ‘966 and ‘847 patents.  See our October 19, 2009 post for more details. InterDigital appealed the Commission’s final determination, specifically regarding the unreviewed constructions of the “code” and “increased power level” limitations.  The Federal Circuit reversed the Commission’s construction of these terms, reversed the Commission’s determination of non-infringement as to the ‘966 and ‘847 patents, and remanded the case to the Commission for further proceedings.  Nokia subsequently filed a petition for panel rehearing and rehearing en banc on the issue of domestic industry which the Court denied.  See our August 3, 2012 and January 14, 2013 posts for more details on the Federal Circuit’s rulings. On February 12, 2014, the Commission issued a notice and order remanding the investigation to the Chief ALJ for assignment to a presiding ALJ.  According to the March 26, 2014 revised opinion, on February 24, 2014, Nokia filed a petition for reconsideration of the Commission’s order remanding the investigation.  The Commission issued its revised opinion in response to Nokia’s petition. In the revised opinion, the Commission found that the ID’s construction of the claim limitation “synchronize” in the asserted claim of the ‘847 patent was too narrow.  In particular, the Commission found that ALJ Luckern had improperly limited the scope of the term based on an embodiment disclosed in the specification.  The Commission therefore construed the term more broadly to mean “establishing a timing reference with the pilot signal transmitted by a base station.” With respect to validity, the Commission affirmed the ID’s finding that a Lucas reference does not anticipate the asserted claims of the ‘966 and ‘847 patents because it fails to disclose the claim limitations requiring the subscriber unit to transmit a code selected from a “plurality of different codes” or the limitation requiring the subscriber unit to transmit a “message” in order to indicate that the subscriber units want to establish communications with a base station.  The Commission further affirmed the ID’s finding that Lucas does not render the asserted claims of the ‘966 and ‘847 patents obvious.  The Commission also affirmed the ID’s finding that the asserted claims of the ‘966 and ‘847 patents are not rendered obvious by various additional references. With respect to infringement, the Commission made certain findings based on the Federal Circuit’s revised claim construction.  The Commission also affirmed the ID’s finding that the accused handsets do not satisfy the “synchronize to the pilot signal” limitation under the doctrine of equivalents.  However, the Commission remanded the investigation to a presiding ALJ to make findings and issue a remand initial determination (“RID”) regarding:  (i) whether the accused Nokia handsets meet the “generated using a same code” or “the message being transmitted only subsequent to the subscriber unit receiving the indication” limitations in the asserted claims of the ‘966 and ‘847 patents; and (ii) whether the 3GPP standard supports a finding that the pilot signal satisfies the claim limitation “synchronize to the pilot signal” in the asserted claim of the ‘847 patent by synchronizing to either the P-SCH or S-SCH signals. With respect to domestic industry, the Commission acknowledged the Federal Circuit’s finding that Nokia had waived any argument regarding the nexus between InterDigital’s licensing investments and the asserted patents and declined to reconsider the issue of whether the economic prong had been satisfied. The Commission also remanded the investigation for the presiding ALJ to reopen the evidentiary record and take evidence and/or briefing regarding Nokia’s currently imported products, the public interest factors enumerated in Section 337(d) and (f), whether the standard-essential nature of the patents-in-suit is contested, and whether there is patent hold-up or reverse hold-up in the investigation.
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ITC Issues Public Version Of Opinion In Certain Audiovisual Components (337-TA-837)

By Eric Schweibenz
|
Apr
15
On March 26, 2014, the International Trade Commission (the “Commission”) issued the public version of its opinion finding no violation of Section 337 in Certain Audiovisual Components and Products Containing the Same (Inv. No. 337-TA-837).  By way of background, the investigation is based on a March 2, 2012 complaint filed by LSI Corporation and its subsidiary Agere Systems Inc. (collectively, “LSI”) alleging violation of Section 337 with regard to certain audiovisual components and products containing the same including certain digital televisions, Blu-ray disc players, home theater systems, DVD players and/or recorders that infringe one or more claims of U.S. Patent Nos. 5,870,087 (the ‘087 patent), 6,982,663 (the ‘663 patent),  6,452,958 (the ‘958 patent), and 6,707,867 (the ‘867 patent).  See our April 13, 2012 post for more details on the investigation.  On March 7, 2013, the ALJ granted a motion to terminate the investigation as to certain claims of those patents.  In the initial determination (“ID”), ALJ Shaw found a violation of Section 337 had occurred with respect to claims 1, 5, 7-11, and 16 of the ‘087 Patent but that no violation had occurred with respect to the remaining asserted claims of the ‘663, ‘958, and ‘867 Patents.  See our September 16, 2013 post for more details.  As of the date of the ID, the remaining respondents in the investigation were Funai Electric Company, Ltd., Funai Corporation, Inc., P&F USA, Inc., and Funai Service Corporation (collectively, “Funai”) and Realtek Semiconductor Corporation (“Realtek”). As explained in our October 25, 2013 post, after examining the relevant portions of the record of the investigation, including the ID and the parties’ submissions, the Commission determined to review the final ID in its entirety and requested the parties to brief twelve specifically enumerated issues.  According to the opinion, after the Commission determined to review the ID, the parties entered into settlement agreements or agreed to vacate findings (in view of patent expiration) for all patents except the ‘958 patent.  We now provide the details of the Commission’s opinion in relation to the ‘958 patent. The ‘958 patent relates to digital signal modulation to encode information.  In the accused products, the modulators are included in WiFi chips that are a part of the downstream products.  LSI asserts that the ‘958 patent is essential to the Institute of Electrical and Electronic Engineers, Inc. (“IEEE”) 802.11 standard for complementary code keying (“CCK”) modulation and timing synchronization. All the asserted claims require “a modulator that chooses a code having N chips in response to a group of data bits,” and LSI petitioned for review of the ALJ’s construction of this phrase.  The Commission affirmed ALJ Shaw’s construction of the term “code” to mean “a sequence of chips representing a real value,” noting that LSI’s proposed construction (to include complex codes) contradicts the parties’ agreed-upon construction, and that LSI’s proposed construction was not supported by either the intrinsic or extrinsic evidence. The Commission’s affirmation of the claim construction of “code” to exclude complex codes supported a determination that certain products do not infringe the ‘958 patent, as they select complex, not real, codes.  According to the Commission, “[d]espite abundant record evidence supporting [this finding],” LSI continued to argue that the products select a “real” code.  However, the Commission held that the ALJ “correctly concluded that each CCK codeword…represents a complex value, and so the accused codewords do not meet the claimed ‘code.’”  The Commission also determined that the remaining accused products were not proved to infringe, affirming the ALJ’s decision to strike LSI’s supporting evidence as provided too late (as it was only submitted the same day that pre-hearing briefs were due). The validity dispute was premised on a determination of the correct priority of the ‘958 patent, and the Commission disagreed with the ALJ that the ‘958 patent was entitled to its earliest priority date.  Specifically, the Commission found that at least four limitations were not included in the earliest priority application (as conceded by LSI’s expert at trial), and as such, the written description requirement was not met. With the priority date of the ‘958 patent now correctly determined to be the actual filing date, prior art that was dismissed by the ALJ was considered by the Commission.  The Commission determined that the ‘958 patent would have been obvious over the van Nee article in view of the Harris Proposal, noting that LSI’s expert conceded that the van Nee article would anticipate or render obvious every asserted claim of the ‘958 patent if it were prior art.  The Commission also reversed the ALJ’s finding of no anticipation of a subset of claims over the Prasad reference, but affirmed that the remaining claims would not have been obvious over Prasad.  The Commission also affirmed that the remaining proffered references were non-analogous art and would not have rendered the ‘958 patent obvious and that the secondary considerations put forward by LSI did not have the required nexus to the claims.  Finally, the Commission affirmed ALJ Shaw’s finding that the asserted claims were not indefinite.  With regard to domestic industry, the Commission determined that the ALJ’s finding of domestic industry based on licensing conflicts with recent decisions imposing an “articles” requirement for licensing-based domestic industry, and LSI failed to prove that the products covered by the license practiced the invention of the ‘958 patent.  Because “there are multiple grounds for determining no violation” of Section 337, the Commission did not reach any RAND or equitable defenses asserted by Funai and Realtek. In light of the above, the Commission affirmed the ALJ’s finding of no violation of Section 337 with respect to the ‘958 patent as modified, and terminated the investigation.
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ITC Issues Public Version Of Opinion In Certain Digital Models, Digital Data, And Treatments Plans For Use, In Making Incremental Dental Positioning Adjustment Appliances Made Therefrom (337-TA-833)

By Eric Schweibenz
|
Apr
24
Further to our April 7, 2014 post, on April 10, 2014, the International Trade Commission (the “Commission”) issued the public version of its opinion finding a violation of Section 337 in Certain Digital Models, Digital Data, and Treatment Plans for Use in Making Incremental Dental Positioning Adjustment Appliances, the Appliances Made Therefrom, and Methods of Making the Same (Inv. No. 337-TA-833). By way of background, the Complainant in this investigation is Align Technology, Inc. (“Align”), and the Respondents are ClearCorrect Operating, LLC (“CCUS”) and ClearCorrect Pakistan (Private), Ltd. (“CCPK”) (collectively, “Respondents”).  The asserted patents are U.S. Patent Nos. 6,217,325 (the ‘325 patent), 6,722,880 (the ‘880 patent), 8,070,487 (the ‘487 patent), 6,471,511 (the ‘511 patent), 6,626,666 (the ‘666 patent), 6,705,863 (the ‘863 patent), and 7,134,874 (the ‘874 patent) (collectively, the “asserted patents”). On May 6, 2013, former ALJ Robert K. Rogers, Jr. issued an Initial Determination (“ID”) in the investigation.  In the ID, ALJ Rogers found that Respondents had violated Section 337 with respect to the ‘325, ‘880, ‘487, ‘511, ‘863, and ‘874 patents.  However, the ALJ found no violation with respect to the ‘666 patent.  The ALJ also recommended the issuance of cease and desist orders directed to Respondents.  See our June 24, 2013 post for more details on the ID. On July 25, 2013, the Commission determined to review the ID in its entirety and requested briefing on the issues on review and on remedy, the public interest, and bond.  The Commission then extended the target date for completion of the investigation on four separate occasions, first to November 1, 2013, then to January 17, 2014, then to March 21, 2014, and finally to April 3, 2014.  As part of the third such extension, the Commission requested additional briefing from the parties and the public.  See our January 27, 2014 post for more details. In the opinion, the Commission determined to affirm-in-part, modify-in-part, and reverse-in-part the ID and to find a violation of Section 337.  In particular, the Commission affirmed the ALJ’s conclusion that the accused products are “articles” within the meaning of Section 337(a)(1)(B) and that the mode of bringing the accused products into the U.S. constitutes importation of the accused products into the U.S. pursuant to Section 337(a)(1)(B).  The Commission further determined to find a violation of Section 337 with respect to (i) claims 1 and 4-8 of the ‘863 patent; (ii) claims 1, 3, 7, and 9 of the ‘666 patent; (iii) claims 1, 3, and 5 of the ‘487 patent; (iv) claims 21, 30, 31, and 32 of the ‘325 patent; and (v) claim 1 of the ‘880 patent.  The Commission also determined to issue cease and desist orders directed to the Respondents, with an exemption for activities related to treatment of existing patients in the U.S.  “Importation … of Articles” As a threshold issue, the Commission addressed whether Respondents’ electronic transmissions of digital data sets constitute “importation of … articles” within the meaning of Section 337.  In particular, Respondents argued that the digital data sets representing the initial, intermediate, and final positions of patients’ teeth are not “articles” within the meaning of Section 337(a)(1)(B).  Moreover, Respondents argued that because the accused data sets are brought into the U.S. by CCPK by uploading them to CCUS’s server in Houston, Texas, this mode of bringing the accused products into the U.S. is not an importation into the U.S. under Section 337(a)(1)(B).   In addressing this question, the Commission acknowledged that the term “articles” is not expressly defined in the statute.  However, the Commission found that the statutory construction of “articles” that is most consistent with the overall language of the statute and that implements the avowed Congressional purpose of Section 337 encompasses within its scope the electronic transmission of the digital data sets at issue in the investigation.  The Commission found that the legislative history of Section 337 indicates that the statute’s purpose is to prevent every type of unfair act in connection with imported articles (assuming consistency with the public interest) and to strengthen protection of intellectual property rights.  Accordingly, in order to faithfully carry out this purpose, the Commission found that it could not limit the definition of “articles” in the manner proposed by Respondents.  Rather, the Commission concluded that the statutory phrase “importation … of articles” should be construed to include electronic transmission of digital data, as in the instant investigation. Claim Construction ALJ Rogers had found that the term “a predetermined series of dental incremental position adjustment appliances” in claim 1 of the ‘880 patent allowed for the predetermined series to be constructed prior to the fabrication of an intermediate aligner, and was not limited to requiring construction of the series prior to the fabrication of all aligners.  The ALJ had also found that this claim required that the four steps of the claimed method be performed in the recited order because each subsequent step necessarily required the completion of the previous step.  Align disputed this requirement that the claimed steps be performed in the recited order, but the Commission ultimately affirmed the ALJ’s construction. The Commission also affirmed the ALJ’s construction of the term “treatment plan” in clams 7, 8, and 9 of the ‘487 patent and claim 1 of the ‘874 patent, as well as the term “computer implemented method” in claim 1 of the ‘511 patent and claim 1 of the ‘874 patent.  However, the Commission reversed the ALJ’s construction of the term “distinct successive incremental dental positioning appliance” in claim 1 of the ‘863 patent.  In particular, the Commission found that, contrary to the ALJ’s construction, the term meant that while the claim required a series of dental appliances, the entire series did not need to be manufactured before the beginning of treatment. With respect to the term “providing” in the ‘325 patent, Respondents argued that, contrary to ALJ Rogers’s construction, the term required that the providing be from one entity to a different entity, and that an entity could not provide something to itself.  However, the Commission disagreed and affirmed the ALJ’s broad construction of “providing,” which did not distinguish between whether a given electronic transmission was to a computer owned by another individual or to a computer owned by the same individual. The Commission also noted that ALJ Rogers had improperly applied the “broadest reasonable” claim construction standard with respect to claims 1 and 33 of the ‘325 patent, claim 2 of the ‘511 patent, and claim 1 of the ‘874 patent.  The Commission noted that this was not the correct claim construction standard before the ITC, citing Phillips v. AWH Corp., 415 F.3d 1303, 1312-17 (Fed. Cir. 2005) (en banc).  However, the Commission found that the ALJ’s incorrect statement of the claim construction standard was harmless error because his ultimate claim constructions were consistent with an application of the correct standard. Infringement With respect to infringement, the Commission adopted ALJ Rogers’s finding that the CCUS and CCPK accused products satisfy the claim limitations as construed.  However, the Commission proceeded to analyze whether infringement had been demonstrated in light of the requirements of Section 337.  In doing this, the Commission divided the asserted claims into four distinct groups, and analyzed each of these groups separately. The Commission designated claims 21 and 30 of the ‘325 patent and claim 1 of the ‘880 patent as Group I claims.  These claims are directed to methods of manufacturing dental appliances starting with a digital data set.  According to the opinion, prior to the accused manufacturing activity related to these claims, CCPK manipulates digital models, thereby generating intermediate and final data sets in Pakistan, and then electronically transmits those data sets to CCUS in the U.S.  Then, CCUS uses the generated data sets to prepare molds of the patient’s teeth which are in turn used to make the physical dental appliances in the U.S. The Commission found that the Group I claims are directly infringed by CCUS within the U.S.  However, since the direct infringement of these methods claims occurs entirely within the U.S., the direct infringement itself is not a violation of Section 337.  Nevertheless, the Commission further found that CCPK contributorily infringes the Group I claims under 35 U.S.C. § 271(c).  In particular, the Commission found that Respondents had knowledge of the ‘325 and ‘880 patents and that there were no substantial non-infringing uses for the digital data sets at issue.  Moreover, the Commission found that the digital data sets are “a material or apparatus” within the meaning of § 271(c).  Accordingly, the Commission affirmed ALJ Rogers’s finding of contributory infringement of the Group I claims. The Commission designated claims 31 and 32 of the ‘325 patent, claims 1 and 4-8 of the ‘863 patent, claims 1, 3, 7, and 9 of the ‘666 patent, and claims 1, 3, and 5 of the ‘487 patent as Group II claims.  These claims are directed to methods of generating digital data sets.  According to the opinion, the digital data sets at issue are generated by CCPK in Pakistan prior to their electronic transmission to the U.S.  Specifically, CCPK provides the initial data set that it obtains from CCUS to the CCPK computer platform and manipulates the data set into final and intermediate positions.  These final and intermediate data sets are then transmitted to CCUS in the U.S. The Commission found a violation of Section 337 with respect to the Group II claims.  In particular, the Commission determined that the digital data sets at issue are “articles” that are “processed” within the meaning of Section 337(a)(1)(B)(ii).  Since CCPK creates the digital data sets at issue by practicing the methods of the Group II claims in Pakistan, it was a violation of Section 337 to import the data sets into the U.S., sell them for importation, and sell them after importation into the U.S. The Commission designated claims 7-9 of the ‘487 patent as Group III claims.  These claims are directed to treatment plans (i.e., a series of digital data sets) on a storage medium.  With respect to these claims, the Commission agreed with the ALJ that there was no direct infringement at the time of importation.  Moreover, the Commission found that Align had waived its indirect infringement theory with respect to these claims because Align had raised indirect infringement for the first time in its petition for review.  Accordingly, the Commission found no violation of Section 337 with respect to the Group III claims. The Commission designated claims 1-3, 11, 13-14, 21, 30-35, and 38-39 of the ‘325 patent, claims 1 and 3 of the ‘880 patent, claim 1 of the ‘511 patent, and claims 1, 2, 38-39, 41, and 62 of the ‘874 patent as Group IV claims.  These claims are directed to methods of producing dental appliances starting with images of a patient’s teeth which are exported to Pakistan, manipulated abroad, and then imported.  The final digital data sets are imported and the dental appliances are constructed by CCUS in the U.S. after importation. The Commission found that ALJ Rogers erred in finding a violation of Section 337(a)(1)(B)(ii) with respect to the Group IV claims because the imported digital data sets are not the end product of the Group IV claims, which disclose methods for fabricating dental appliances.  Since the Group IV claims are directed to fabricating dental appliances, the last claim step is not performed prior to importation as required by Section 337(a)(1)(B)(ii). The Commission also disagreed with Align’s argument that infringement under 35 U.S.C. § 271(g) can form the basis for a finding of violation of Section 337(a)(1)(B)(i).  Applying canons of statutory construction, the Commission found that the existence of Section 337(a)(1)(B)(ii), which specifically defines violations of Section 337 based on the importation of articles produced by a patented process, precluded Align’s theory that infringement could be based on Section 337(a)(1)(B)(i) read in conjunction with 35 U.S.C. § 271(g).  Accordingly, the Commission found no violation of Section 337 with respect to the Group IV claims. Invalidity According to the opinion, Respondents argued that claims 1, 37, and 38 of the ‘325 patent are invalid.  The Commission found that any invalidity arguments for other claims had been waived because Respondents had failed to specifically argue invalidity for any other claims. Respondents argued that claims 1, 37, and 38 of the ‘325 patent were anticipated by U.S. Patent No. RE35,169 to Lemchen (“Lemchen”), which allegedly incorporated U.S. Patent No. 2,467,432 to Kesling (“Kesling”) by reference.  The Commission first found that Lemchen only incorporated certain figures from Kesling by reference, rather than the entirety of the Kesling patent.  The Commission further found that Lemchen does not anticipate the asserted claims of the ‘325 patent because it does not teach interpolation or how to create successive appliances.  Moreover, the Commission found that Lemchen does not discuss defining or moving tooth boundaries. Respondents also argued that claims 1, 37, and 38 of the ‘325 patent were invalid as obvious over Lemchen in view of Kesling.  The Commission found that the claims were not obvious over these references because, inter alia, Lemchen and Kesling do not teach the interpolation of digital data sets.  The Commission further found that another obviousness argument based on U.S. Patent No. 6,471,511 in view of the knowledge of one of ordinary skill in the art had been waived because it had not been properly raised prior to the evidentiary hearing in the investigation. Estoppel According to the opinion, Respondents argued that Align was estopped from asserting the asserted patents against them because Align had withdrawn a prior lawsuit in Texas in which Align had asserted U.S. Patent No. 6,554,611 (the ‘611 patent), and had issued a statement which Respondents argued was a covenant not to sue.  ALJ Rogers had previously found that this argument had been waived because it had not been raised in Respondents’ response to the original complaint in the investigation.  Moreover, even if it had not been waived, it was without merit.  The Commission affirmed these findings. Domestic Industry With respect to domestic industry, the Commission affirmed ALJ Rogers’s finding that Respondents had waived the right to contest domestic industry.  The Commission also agreed that Align had established that it satisfied the economic prong of the domestic industry requirement.  As to the technical prong, the Commission affirmed the ALJ’s finding that Align satisfied the technical prong for the ‘487, ‘863, ‘325, ‘880, ‘511, and ‘874 patents.  However, the Commission reversed the ALJ’s finding that Align had not satisfied the technical prong for the ‘666 patent.  In particular, the Commission determined that Align had put forth sufficient evidence to show that it practices claim 7 of the ‘666 patent. Remedy With respect to remedy, the Commission determined to issue cease and desist orders directed to CCUS and CCPK.  ALJ Rogers had found that CCUS has a “rolling” inventory of digital data sets that make up particular phases of patients’ treatment provided by CCPK to CCUS on a daily basis, which are then used by CCUS to manufacture aligners.  Since cease and desist orders are the typical remedy to deal with domestic inventories of articles in violation of Section 337, cease and desist orders were the appropriate remedy in the investigation.  In any event, Align had not requested an exclusion order. However, the Commission also considered the public interest, and determined to include an exemption in the cease and desist orders for existing ClearCorrect patients.  In particular, the Commission exempted repair and replacement of existing appliances from the scope of the cease and desist orders, as well as activities relating to the treatment of patients who had already contracted for treatment with ClearCorrect as of April 10, 2014. Conclusion In view of the above, the Commission found a violation of Section 337 and issued cease and desist orders directed to CCUS and CCPK. Dissenting Opinion by Commissioner David S. Johanson Commissioner David S. Johanson filed a dissenting opinion disputing the Commission majority’s determination that electronically-transmitted digital data sets can be considered “articles” within the meaning of Section 337.  Commissioner Johanson argued that the majority’s interpretation did not properly address Congress’s delegation of authority to the Commission, ignored Section 337’s remedial scheme, and contradicted the federal courts’ interpretation of “articles.”  Accordingly, Commissioner Johanson would have found no violation of Section 337 due to the lack of importation of true “articles” within the meaning of Section 337.
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ITC Issues Public Version Of Opinion In Certain Encapsulated Integrated Circuit Devices (337-TA-501)

By Eric Schweibenz
|
May
07
Further to our April 14, 2014 post, on April 28, 2014, the International Trade Commission (the “Commission”) issued the public version of its opinion finding a violation of Section 337 by Respondents Carsem (M) Sdn Bhd, Carsem Semiconductor Sdn Bhd, and Carsem, Inc. (collectively, “Carsem”) in Certain Encapsulated Integrated Circuit Devices and Products Containing Same (Inv. No. 337-TA-501). By way of background, the Commission instituted the investigation based on a complaint filed by Amkor Technology Inc. (“Amkor”) alleging violation of Section 337 in the importation and/or sale of certain encapsulated integrated circuit devices that infringe claims of U.S. Patent Nos. 6,433,277; 6,630,728 and 6,455,356.  The investigation also concerned a third-party, ASAT, Inc. (“ASAT”), and its invention (the “ASAT invention”) that Carsem argued was invalidating prior art to the asserted patents. In the opinion, the Commission affirmed the ALJ’s remand initial determination (“Remand ID”) of November 9, 2005 and first supplemental initial determination (“First Supplemental ID”) of October 30, 2009 finding a violation of Section 337.  Specifically, the Commission affirmed the ALJ’s determination that claims 2-4 and 21-23 of the ‘277 patent are not invalid over the ASAT invention; affirmed the ALJ’s determination that Carsem failed to show that equitable estoppel applied in the investigation; affirmed that Carsem failed to prove that Amkor had deceived the Joint Electron Device Engineering Council (“JEDEC”) or that the’277 patent is necessary to practice that standard-setting body’s standards; affirmed the ALJ’s determination that Carsem failed to show that legal estoppel applied in the investigation; affirmed, with modifications, the ALJ’s finding that Amkor satisfied the economic prong of the domestic industry requirement under Section 337(a)(3)(A); and affirmed, with modifications, the ALJ’s finding that Amkor failed to satisfy the economic prong under Section 337(a)(3)(B). Equitable Estoppel According to Carsem, under the Commission’s claim construction, the ‘277 patent is a standard-essential patent that Amkor was obligated to disclose to JEDEC.  Carsem argued that Amkor should be equitably estopped from asserting the ‘277 patent because (1) Amkor failed to disclose its patent rights when it introduced its MO-220 proposal in January 1999 and affirmatively misrepresented that there were no applicable patents; (2) Carsem reasonably relied on Amkor’s misleading statements in voting on the proposal and subsequent revisions for the MO-220 and MO-229 standards, and designing its products to comply with those standards; and (3) Carsem was materially prejudiced by Amkor filing its complaint in the investigation.  The Commission, however, agreed with the ALJ that Carsem failed to show that a license is required under the ‘277 patent to practice the MO-220 and MO-229 standards.  In particular, the Commission noted that Carsem’s expert based his opinion on Amkor’s claim interpretations (not all of which were adopted), did not reference particular claim terms in specific patents, and did not discuss the implications of adopting Carsem’s claim construction. Legal Estoppel Carsem argued that the ‘277 patent is a standard-essential patent that Amkor was obligated under the JEDEC rules to license to Carsem on fair, reasonable and non-discriminatory (“FRAND”) terms consistent with those previously agreed to and offered by Amkor, but that Amkor refused.  Amkor countered that Carsem’s legal estoppel defense fails for the same reason that its equitable estoppel fails, i.e., because Carsem failed to prove that Amkor breached its duty to disclose its patents to JEDEC or that the patents are actually necessary to practice the JEDEC standard.  The Commission agreed with Amkor that although the ALJ did not expressly address Carsem’s legal estoppel defense, the ALJ’s findings on equitable estoppel also resolved the issue of legal estoppel.  The Commission also found no evidence that Amkor had licensed or assigned its patents to JEDEC or Carsem, or that Amkor received any consideration for a license from JEDEC or Carsem. Economic Prong Carsem asserted that the legal framework for evaluating the existence of a domestic industry had changed since the ALJ’s final initial determination (“Final ID”) on November 18, 2004, warranting reversal of the ALJ’s finding that Amkor satisfied the economic prong with respect to the ‘277 patent under Section 337(a)(3)(A).  The Commission agreed with Amkor, however, that the ALJ’s analysis of whether Amkor’s domestic investments in plant and equipment are “significant” complied with Certain Printing and Imaging Devices and Components Thereof, Inv. No. 337-TA-690, Comm’n Op. (Feb. 17, 2011) (“[U]nder the statute, whether the complainant’s investment and/or employment activities are ‘significant’ is not measured in the abstract or absolute sense, but rather is assessed with respect  to the nature of the activities and how they are ‘significant’ to the articles protected by the intellectual property right.”), which the parties agreed is the most relevant precedent on the economic prong of domestic industry among the Commission’s decisions rendered after the Final ID issued in this investigation in 2004.  That said, the Commission noted that the ALJ’s recitation of the applicable law pertaining to the economic prong could be read to require a comparative analysis of domestic to foreign activity, whereas Commission precedent provides that such an analysis is only one of the factors that may be employed, and is not mandatory.  The Commission modified the ALJ’s determination accordingly. Regarding Section 337(a)(3)(B), the Commission affirmed the ALJ’s determination that Amkor did not show significant employment of labor and capital, with similar modifications reflecting that a comparative analysis is not the only way to evaluate the context of the domestic investments. Remedy, Public Interest and Bonding The Commission determined that the appropriate form of relief in the investigation was a limited exclusion order (“LEO”) directed to encapsulated integrated circuit devices covered by claims 2-4 and 21-23 of the ‘277 patent that are manufactured abroad by or on behalf of, or imported by or on behalf of, Carsem.  The Commission also found that the public interest factors did not preclude issuing the LEO, rejecting Carsem’s arguments that (1) there are no comparable non-infringing alternatives for the products subject to the LEO; (2) Amkor is not capable of expanding to meet a larger production capacity to replace the volume of articles subject to exclusion and fulfill future demand; and (3) the ‘277 patent is standard-essential and subject to FRAND commitments, and therefore exclusion would harm competition and U.S. consumers.  Finally, the Commission determined that Amkor is required to post a bond in the amount of a reasonable royalty rate of $0.00025 per contact per covered encapsulated integrated circuit device imported during the period of Presidential review.
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ITC Issues Public Version of Opinion In Certain Optoelectronic Devices For Fiber Optic Communications (337-TA-860)

By Eric Schweibenz
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May
15
Further to our April 23, 2014 post, on May 9, 2014, the International Trade Commission (the “Commission”) issued the public version of its opinion finding a violation of Section 337 by Respondents IPtronics A/S; IPtronics, Inc.; FCI SA; FCI Deutschland GmdH;  FCI USA, LLC; Mellanox Technologies, Ltd.; and Mellanox Technologies, Inc. (collectively, the “Respondents”) in Certain Optoelectronic Devices for Fiber Optic Communications, Components Thereof, and Products Containing the Same (Inv. No. 337-TA-860). By way of background, this investigation is based on a complaint filed by Avago Technologies Fiber IP (Singapore) Pte. Ltd.; Avago Technologies General IP (Singapore) Pte. Ltd.; and Avago Technologies U.S. Inc. (collectively, “Avago”) alleging violation of Section 337 in the importation and sale of certain optoelectronic devices for fiber optic communications, components thereof, and products containing the same that infringe one or more claims of U.S. Patent Nos. 6,947,456 (the ‘456 patent) and 5,596,595 (the ‘595 patent).  See our September 26, 2012 and October 30, 2012 posts for more details about the complaint and Notice of Investigation, respectively.  On December 13, 2013, ALJ Essex issued a final ID determining that a violation of section 337 had occurred by reason of infringement of certain claims of the ‘595 patent and recommended issuance of a limited exclusion order directed to Respondents and cease and desist orders against respondents FCI USA, LLC and Mellanox Technologies, Inc.  See our January 22, 2014 post for more details on the ID. In the Opinion, the Commission determined to (a) affirm the ALJ’s claim construction of the ‘595 patent’s “current-spreading layer” limitation and infringement and domestic industry determinations relating to that limitation with certain modifications, (b) affirm the ALJ’s finding that Avago met the economic prong with respect to the ‘595 patent under U.S.C. 1337(a)(3)(C), (c) affirm the ALJ’s infringement and domestic industry (technical prong) determinations as to the ‘456 patent with certain modifications in rationale, and (d) affirm the ALJ’s finding that Avago met the economic prong with respect to the ‘456 patent under U.S.C. 1337(a)(3)(C). The ‘595 Patent According to the Respondents and the Commission Investigative Staff (“OUII”), the ALJ applied a construction of the “current-spreading layer” limitation in the infringement determination that was different from how the term was construed during claim construction.  The Commission disagreed with Respondents and OUII, finding that the ALJ properly applied the claim construction of “current-spreading layer” in his infringement determination.  Additionally, the Commission held that the record supports the ALJ’s determination of infringement and domestic industry (technical prong).  Specifically, the Commission determined that the testimony of Dr. Deppe supported the ALJ’s infringement determination.  The Commission struck certain language in the ID because it determined that the language was unsupported by the record and unnecessary for the ALJ’s infringement determination. Respondents further argued that the ALJ erred in finding that Avago met the economic prong of the domestic industry requirement under 337(a)(3)(B) and 337(a)(3)(C).  Respondents argued that research and investments are cognizable solely under 337(a)(3)(C) and not 337(a)(3)(A) or 337(a)(3)(B).  Additionally, Respondents asserted that ALJ’s economic prong determination was erroneous becuase Avago’s expenditures were not devoted to products that practiced the ‘595 patent, the expenditures included foreign personnel, and the expenditures were not substantial.  The Commission rejected Respondents arguments, finding that the evidence of record supported the ALJ’s determination.  Accordingly, the Commission affirmed the ALJ’s determination that Avago satisfied the domestic industry requirement under 337(a)(3)(C).  Based on this determination, the Commission held that it was unnecessary to reach the merits of whether Avago satisfied the domestic industry requirement under 337(a)(3)(A) or 337(a)(3)(B). The ‘456 Patent According to Avago, the ALJ improperly construed the “parameter for affecting the negative peak portion of the drive waveform” claim limitation and, therefore, reached erroneous determinations on infringement and the technical prong of the domestic industry requirement.  Specifically, Avago argued that the ALJ improperly included an intent requirement into the claim term, thereby requiring “proof that the value of the parameter was specified by the user with the intent of affecting the negative peak portion.”  The Commission determined that the ALJ properly construed the claim limitation at issue to mean “a parameter with the purpose of digitally affecting the feature of the drive waveform mentioned in the claim.”  Accordingly, the Commission affirmed the ALJ’s infringement and domestic industry analysis.  However, the Commission determined that the ALJ’s use of the word “intent” in the ID was unnecessary and confusing and, therefore, modified the ID to remove references to “intent.” Avago further challenged the ALJ’s determination that it did not satisfy the economic prong of the domestic industry requirement under 337(a)(3)(A).  For the same reasons as discussed in reference to the ‘595 patent, the Commission held that the ALJ properly determined that Avago met the domestic industry requirement under 337(a)(3)(C).  Accordingly, it was unnecessary for the Commission to reach the merits as to 337(a)(3)(A) or 337(a)(3)(B). Remedy, Public Interest, and Bond Regarding the limited exclusion order recommended by the ALJ, Respondents argued that any remedial order should exempt warranty and replacement parts.  Additionally, the Mellanox respondents asserted that any exclusion order imposed on the Respondents should not apply to them based on public interest considerations.  The Commission denied the Respondents arguments and imposed a limited exclusion order on Respondents.  Furthermore, the Commission determined that issuing this remedy would not be contrary to the public interest. As to the cease and desists orders recommended by the ALJ, the Commission affirmed the ALJ’s determination that FCI USA, LLC and Mellanox Technologies, Inc. maintain commercially significant amounts of the accused products in inventory in the United States.  Accordingly, the Commission issued cease and desists orders to both respondents.  Furthermore, the Commission determined that issuing this remedy would not be contrary to the public interest. With respect to bond, the Commission determined “that the bond during the Presidential review period should be set in the amount of three percent of the entered value of the products covered by the remedial orders.”
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ITC Issues Public Version Of Opinion In Certain Digital Models, Digital Data, And Treatment Plans For Use In Making Incremental Dental Positioning Adjustment Appliances (337-TA-833)

By Eric Schweibenz
|
Jun
12
Further to our June 4, 2014 post, on June 11, 2014, the International Trade Commission (the “Commission”) issued the public version of its opinion granting a motion to stay the cease and desist orders pending Federal Circuit appeal in Certain Digital Models, Digital Data, and Treatment Plans For Use in Making Incremental Dental Positioning Adjustment Appliances, the Appliances Made Therefrom, and Methods of Making the Same (Inv. No. 337-TA-833). By way of background, this investigation is based on a complaint filed by Align Technology, Inc. (“Align”) alleging violations of Section 337 for the importation into the United States, sale for importation, and sale within the United States after importation of certain digital models, digital data, and treatment plans for use in making incremental dental appliances that infringe one or more claims of U.S. Patent Nos. 6,217,325; 6,722,880; 8,070,487; 6,471,511; 6,626,666; 6,705,863; and 7,134,874.  Seeour March 2, 2012 post for more details on Align's complaint.  The notice of investigation named respondents as ClearCorrect Operating, LLC and ClearCorrect Pakistan (Private), Ltd (collectively, “ClearCorrect”).  See our April 6, 2012 post for more information on the Notice of Investigation.  On May 6, 2013, former ALJ Robert K. Rogers, Jr. issued an Initial Determination (“ID”) in the investigation.  In the ID, ALJ Rogers recommended the issuance of cease and desist orders directed to ClearCorrect.  See our June 24, 2013 post for more details on the ID.  On April 3, 2014, the Commission issued a notice of its determination to affirm-in-part, modify-in-part, and reverse-in-part the final ID and to find a violation of Section 337.  The Commission also terminated the investigation. On May 2, 2014, ClearCorrect filed a motion to stay the cease and desist orders pending appeal to the Federal Circuit pursuant to the Commission’s authority under section 10(d) of the Administrative Procedure Act, 5 U.S.C. § 705.  ClearCorrect argued that determining whether electronic transmissions are “articles” under Section 337 is a difficult question, that the orders would cause irreparable harm to ClearCorrect, and that the potential harm to Align is insignificant because Align and ClearCorrect do not share the same customers.  ClearCorrect also argued that the public interest favored a stay because doctors do not have an adequate substitute for ClearCorrect’s products and will be forced to buy expensive new equipment.    Align opposed the motion, arguing that ClearCorrect could not demonstrate that the issue presents an admittedly difficult question because the Commission’s construction of Section 337 was correct and entitled to deference on appeal.  Additionally, Align asserted that ClearCorrect could not demonstrate that ClearCorrect would face irreparable injury absent a stay and that ClearCorrect only alleges harm to ClearCorrect Pakistan (Private), Ltd, which is not related to ClearCorrect’s U.S. operations.  Align also asserted that it would suffer harm if a stay were granted. In reaching its stay determination, the Commission agreed with Align that the difficulty of the question presented counsels in favor of judicial deference to the Commission’s interpretation of Section 337, but also stated that the existence of deference does not, in and of itself, obviate the fact that the question the Commission ruled upon was a difficult question.  As the Commission found that the investigation does present a difficult legal question, the Commission next analyzed the harm factors.  On balance, the Commission found that the balance of hardships tips in favor of ClearCorrect.  The Court noted that Align has a pending district court action against ClearCorrect that had been stayed pursuant to 28 U.S.C. § 1659(a) and that Align could attempt to recover damages for past infringement, not only during pendency of the stay, but also for infringement during the pendency of Commission proceedings.  The Court also rejected Align’s argument that monetary recovery is impossible due to price erosion.  Additionally, the Commission found that the public interest arguments raised in the parties’ briefing did not weigh heavily in either direction.  Accordingly, as the Commission recognized an admittedly difficult question and weighed the harms as favoring a stay, the Commission granted ClearCorrect’s motion.  The Commission additionally noted that this determination should not be viewed as a sharp departure from prior Commission determinations denying stays, stating that the circumstances of most investigations do not justify a delay in enforcing statutory remedies against adjudged infringers.
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ITC Issues Public Version Of Opinion In Certain Integrated Circuit Chips (337-TA-859)

By Eric Schweibenz
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Sep
02
On August 22, 2014, the International Trade Commission ("the Commission") issued the public version of its opinion in Certain Integrated Circuit Chips and Products Containing the Same (Inv. No. 337-TA-859).

By way of background, the investigation is based on a complaint filed by Realtek Semiconductor Corporation ("Realtek") alleging violation of Section 337 in the importation into the U.S., sale for importation, or sale within the U.S. after importation of certain integrated circuit chips and products containing the same that infringe one or more of claims 1-22 of U.S. Patent No. 6,787,928 and claims 1-22 of U.S. Patent No. 6,963,226 (the '226 patent).  See our September 20, 2012 and October 22, 2012 posts for more details on Realtek's complaint and the Notice of Investigation, respectively.
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ITC Issues Public Version Of Opinion In Certain Wireless Devices With 3G And/Or 4G Capabilities (337-TA-868)

By Eric Schweibenz
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Sep
16
On August 29, 2014, the International Trade Commission ("the Commission") issued the public version of its opinion in Certain Wireless Devices With 3G And/Or 4G Capabilities and Components Thereof (Inv. 337-TA-868).

By way of background, the investigation in this matter is based on a January 2, 2013 complaint filed by InterDigital Communications, Inc., InterDigital Technology Corporation, IPR Licensing, Inc., and InterDigital Holdings, Inc. (collectively, "InterDigital") alleging violation of Section 337 in the importation into the U.S. and sale of certain wireless devices with 3G and/or 4G capabilities and components thereof.  See our January 3, 2013 and February 1, 2013 posts for more details on the Complaint and Notice of Investigation, respectively.
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ITC Grants Motion To Correct Or Clarify Cease And Desist Orders In Certain Digital Models, Digital Data, And Treatment Plans For Use In Making Incremental Dental Positioning Adjustment Appliances (337-TA-833)

By Eric Schweibenz
|
Sep
23
On September 16, 2014, the International Trade Commission (the "Commission") issued an order and opinion granting Respondents' motion to correct or clarify the cease and desist orders in Certain Digital Models, Digital Data, and Treatment Plans For Use in Making Incremental Dental Positioning Adjustment Appliances, the Appliances Made Therefrom, and Methods of Making the Same (Inv. No. 337-TA-833).

By way of background, this investigation is based upon a complaint filed by Align Technology, Inc. ("Align) alleging violations of Section 337 in the importation into the United States, sale for importation, and sale within the United States after importation of certain digital models, digital data, and treatment plans for use in making incremental dental positioning adjustment appliances that infringe one or more claims of U.S. Patent Nos. 6,217,325; 6,722,880; 8,070,487; 6,471,511; 6,626,666; 6,705,863; and 7,134,874.  See our March 2, 2012 post for more details on Align's complaint.  The notice of investigation named ClearCorrect Operating, LLC and ClearCorrect Pakistan (collectively, "ClearCorrect") as Respondents.  See our April 6, 2012 post for more information on the Notice of Investigation.  On May 6, 2013, ALJ Robert K. Rogers, Jr. issued an Initial Determination ("ID") in the investigation and recommended issuing cease and desist orders directed to ClearCorrect.  See our June 24, 2013 post for more information on the ID.  On April 3, 2014, the Commission issued notice of its determination to affirm-in-part, modify-in-part, and reverse-in-part the final ID and to find a violation of Section 337.  The Commission also terminated the investigation.
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ITC Issues Public Version Of Opinion In Certain Sulfentrazone (337-TA-914)

By Eric Schweibenz
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Oct
10
On October 1, 2014, the International Trade Commission ("the Commission") issued the public version of its opinion in Certain Sulfentrazone, Sulfentrazone Compositions, and Processes for Making Sulfentrazone (Inv. No. 337-TA-914).

By way of background, the investigation is based on a complaint filed by FMC Corp. ("FMC") alleging the violation of Section 337 by Summit Agro USA, LLC, Summit Agro North America, Holding Corporation (collectively, "Summit"), Nutrichem Co., Ltd. ("Nutrichem"), and Jiangxi Heyi Chemicals Co., Ltd. ("Heyi") (collectively, "Respondents") in the importation into the U.S., sale for importation, or sale after importation of certain sulfentrazone, sulfentrazone compositions, and processes for making sulfentrazone that infringe one or more claims of U.S. Patent No. 7,169,952 (the '952 patent).  See our March 6, 2014 and April 11, 2014 posts for more details on the complaint and Notice of Investigation, respectively.  When filing the complaint, FMC moved for temporary relief under subsection (e) of Section 337.
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ITC Issues Public Version Of Opinion In Certain Optical Disc Drives (337-TA-897)

By Eric Schweibenz
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Jan
12
On January 7, 2015, the International Trade Commission ("the Commission") issued the public version of its opinion in Certain Optical Disc Drives, Components Thereof, and Products Containing the Same (Investigation No. 337-TA-897).

By way of background, the investigation is based on a September 3, 2013 complaint filed by Complainant Optical Devices, LLC ("Optical") alleging violation of Section 337 in the importation and/or sale of certain optical disc drives, components thereof, and products containing the same that infringe one or more claims of U.S. Patent Nos. 6,904,007; 7,196,979; 8,416,651; RE40,927; RE42,913; and RE43,681.  See our September 6, 2013 and October 23, 2013 posts for more details on the complaint and Notice of Investigation, respectively.
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ITC Issues Public Version of Opinion in Certain Multiple Mode Outdoor Grills (337-TA-895)

By Eric Schweibenz
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Mar
17
On February 20, 2015, the International Trade Commission ("the Commission") issued the public version of its opinion in Certain Multiple Mode Outdoor Grills and Parts Thereof (Inv. No. 337-TA-895).

By way of background, this investigation is based on a complaint filed by A&J Manufacturing, LLC and A&J Manufacturing, Inc. (collectively, "A&J") alleging violation of Section 337 by over 20 proposed respondents in the importation and sale of certain multiple mode outdoor grills and parts thereof that infringe one or more claims of U.S. Patent Nos. 8,381,712 (the '712 patent), D660,646 and D662,773.  See our August 22, 2013 and September 23, 2013 posts for more details on the complaint and notice of investigation, respectively.
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ITC Decides To Affirm Final Initial Determination Of No Violation In Certain Soft-Edged Trampolines (337-TA-908)

By Eric Schweibenz
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May
18
On May 1, 2015, the International Trade Commission ("the Commission") issued the public version of its opinion in Certain Soft-Edged Trampolines and Components Thereof (Inv. No. 337-TA-908) affirming ALJ Pender's Final Initial Determination ("ID") of no violation of Section 337 by respondent Vuly Trampolines Pty. Ltd. ("Vuly").

By way of background, the investigation is based on a December 24, 2013 complaint filed by Springfree Trampoline, Inc., Springfree Trampoline USA Inc., and Springfree Limited Partnership (collectively, "Springfree") alleging violation of Section 337 in the importation into the U.S. and sale of certain soft-edged trampolines and components thereof that infringe certain claims of U.S. Patent No. 6,319,174 ("the '174 patent").  See our December 31, 2013 and January 27, 2014 posts for more details on the Complaint and Notice of Investigation, respectively.
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ITC Issues Public Version of Opinion Discussing Sanctions Issues In Certain Opaque Polymers (337-TA-883)

By Eric Schweibenz
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May
26
On April 30, 2015, the International Trade Commission ("the Commission") issued the public version of its opinion in Certain Opaque Polymers (Inv. No. 337-TA-883).  By way of background, the investigation is based on a complaint filed by Rohm and Haas Company, Rohm and Haas Chemicals, and The Dow Chemical Company (collectively, "Dow") alleging violation of Section 337 in the importation into the U.S. and sale of certain opaque polymers that infringe one or more claims of U.S. Patent Nos. 6,020,435; 6,252,004; 7,435,783; and 7,803,878 and were developed by misappropriating Dow trade secrets.  See our May 22, 2013 and June 20, 2013 posts for more details on the complaint and notice of investigation, respectively.  During the investigation, it was uncovered that Respondents Organik Kimya San. ve Tic. A.Ş; Organik Kimya Netherlands B.V.; and Organik Kimya US, Inc. (collectively, "Organik Kimya") had destroyed evidence responsive to Dow's discovery requests as well as violated certain discovery orders by presiding ALJ, Thomas B. Pender.
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ITC Issues Public Version of Opinion In Certain Toner Cartridges (337-TA-918)

By Eric Schweibenz
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Oct
20
On October 1, 2015, the International Trade Commission ("the Commission") issued the public version of its opinion in Certain Toner Cartridges, and Components Thereof (Inv. No. 337-TA-918).

By way of background, the investigation is based on a complaint filed by Canon Inc., Canon U.S.A., Inc. and Canon Virginia, Inc. (collectively, "Canon") alleging violation of Section 337 in the importation into the U.S. and sale of certain toner cartridges and components thereof that infringe one or more claims of U.S. Patent Nos. 8,280,878; 8,630,564; 8,682,215; 8,676,090; 8,369,744; 8,565,640; 8,676,085; 8,135,304 and 8,688,008.  See our May 8, 2014 and June 11, 2014 posts for more details on the complaint and notice of investigation ("NOI"), respectively.
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ITC Issues Public Version of Opinion Regarding Law Firm Disqualification In Certain Laser Abraded Denim Garments (337-TA-930)

By Eric Schweibenz
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May
17
On May 17, 2016, the International Trade Commission (the “Commission”) issued the public version of its opinion (dated May 16, 2016) in Certain Laser Abraded Denim Garments (Inv. No. 337-TA-930).

By way of background, this investigation is based on an August 18, 2014 complaint filed by RevoLaze, LLC and TechnoLines, LLC (collectively, “RevoLaze”) alleging violation of Section 337 in the importation into the U.S. and sale of certain laser abraded denim garments that infringe one or more claims of U.S. Patent Nos. 5,990,444; 6,140,602; 6,252,196; 6,664,505; 6,819,972; and 6,858,815.  See our August 19, 2014 and September 19, 2014 posts for more details on the complaint and Notice of Investigation, respectively.
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ITC Finds Violation Of Section 337 In Certain Stainless Steel Products (337-TA-933)

By Eric Schweibenz
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Jun
09
On June 9, 2016, the International Trade Commission (“the Commission”) issued the public version of its opinion finding of a violation of Section 337 by Respondent Viraj Profiles Limited (“Viraj Profiles”) in Certain Stainless Steel Products, Certain Processes for Manufacturing or Relating to Same, and Certain Products Containing Same (Inv. No. 337-TA-933).

By way of background, this investigation is based on a complaint filed by Valbruna Slater Stainless, Inc., Valbruna Stainless Inc., and Acciaierie Valbruna S.p.A. (collectively, “Valbruna”) alleging violation of Section 337 in the importation into the U.S. and sale of certain stainless steel products manufactured using Valbruna’s allegedly stolen trade secrets.  See our September 8, 2014 and October 9, 2014 posts for more details on the complaint and Notice of Investigation, respectively.
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ITC Issues Public Version of Opinion in Certain Footwear Products (337-TA-936)

By Eric Schweibenz
|
Jul
20
On July 6, 2016, the International Trade Commission (“the Commission”) issued the public version of its opinion in Certain Footwear Products (Inv. No. 337-TA-936).

By way of background, this investigation is based on an August 18, 2014 complaint filed by Converse Inc. (“Converse”) alleging that the respondents unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain footwear products that violate registered and common law trademarks used in connection with certain Converse shoes.  The complaint further alleged violations of section 337 based upon unfair competition/false designation of origin, common law trademark infringement and unfair competition, and trademark dilution.  See our October 15, 2014 and November 14, 2014 posts for more details on the complaint and notice of investigation, respectively.  Most of the named respondents were subsequently either found in default or terminated from the investigation based on good cause or settlement and/or consent order stipulation.
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ITC Issues Public Version of Opinion in Certain Network Devices (337-TA-944)

By Eric Schweibenz
|
Aug
16
On July 26, 2016, the International Trade Commission (“the Commission”) issued the public version of its opinion in Certain Network Devices (Inv. No. 337-TA-944).

By way of background, this investigation is based on a December 19, 2014 complaint filed by Cisco Systems, Inc. (“Cisco”) alleging that the respondent, Arista Networks, Inc. (“Arista”), unlawfully imports into the U.S., sells for importation, sells within the U.S. after importation, and/or uses within the U.S. after importation certain networking equipment and components and software thereof that infringe one or more claims of U.S. Patent Nos. 7,162,537 (the ’537 patent), 8,356,296 (later terminated from the investigation by Cisco), 7,290,164 (the ’164 patent), 7,340,597 (the ’597 patent), 6,741,592 (the ’592 patent), and 7,200,145 (the ’145 patent) (collectively, the “asserted patents”).  See our December 29, 2014 and February 5, 2015 posts for more details on the complaint and notice of investigation, respectively.
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The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important ITC issues. These postings are in no way representative of the opinions of the Oblon firm, or its clients, but rather the personal views of the individual authors.