ITC Blog: ITC 337 Update

On July 31, 2009, a complaint was filed requesting a section 337 investigation on behalf of Samsung Electronics Co., Ltd. The proposed respondents are Spansion, Inc., Spansion LLC, Spansion Japan Limited, Alpine Electronics, Inc., Alpine Electronics of America, Inc., D-Link Corporation, D-Link Systems, Inc., Slacker Inc., Synology Inc., Synology North America Corp., Shenzhen Egreat Co., Ltd., EGreat USA, Appro International, Inc. The products involved are Flash Memory.  (PDF)

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On July 29, 2009 the Commission denied two motions to stay enforcement of relief in separate investigations. 

First, the Commission denied respondents’ motion to stay enforcement of the limited exclusion order and cease and desist orders pending appeal in Inv. No. 337-TA-617, In the Matter of Certain Digital Television Products and Certain Products Containing Same and Methods of Using Same. The violation stage of the investigation was terminated by Order of the Commission on April 10, 2009, resulting in the relief at-issue. On June 2, 2009, certain respondents filed a motion to stay enforcement of the relief pending appeal to the Federal Circuit. (PDF)

Second, the Commission also denied a similar motion in Inv. No. 337-TA-605, In the Matter of Certain Semiconductor Chips With Minimized Chip Package Size and Products Containing Same. In determining whether a stay was appropriate the Commission considered the four-prong test used by courts to determine whether to grant a preliminary injunction. (PDF)

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On July 28, 2009, the Commission issued a notice denying respondents’ joint motion to stay enforcement of a limited exclusion order and cease and desist orders pending appeal of the Commission’s final determination of a Section 337 to the Federal Circuit. The investigation number is 337-TA-617, In the Matter of Certain Digital Television Products and Certain Products Containing Same and Methods of Using Same. (PDF)

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On July 28, 2009, a complaint was filed requesting a section 337 investigation on behalf of Hexagon Metrology AB and Hexagon Metrology, Inc. The proposed respondents are Metris N.V., Metris U.S.A. Inc., Mitutoyo Corporation, and Mitutoyo America Corporation. The products involved are articulated coordinate measuring arms. (PDF)

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On July 27, 2009, Chief ALJ Luckern issued the public version of his March 10, 2009, ruling granting complainant’s motion for summary determination that a domestic industry based on licensing activities existed in the United States in Inv. No. 337-TA-613, In the Matter of Certain 3G Mobile Handsets and Components Thereof. ALJ Luckern concluded that complainant’s existing licenses of patent portfolios related to and including the patent-at-issue to companies located throughout the world satisfied the licensing element of the domestic industry requirement. ALJ Luckern found no Commission precedent that required a complainant to establish that each of the asserted patents is more “important” than any others in the portfolio, so long as the licensing activities are substantial and connected to the asserted patents. In any event, the ALJ noted that the asserted patents must be important parts of the licensed patent portfolios as complainant’s are enforcing them in the instant investigation. (PDF)

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On July 27, 2009, ALJ Gildea issued a notice of his July 24, 2009, Final ID/RD in Inv. No. 337-TA-636, In the Matter of Certain Laser Imageable Lithographic Printing Plates. ALJ Gildea found that a violation of section 337 has occurred in the importation into the United States, the sale for importation, or the sale within the United States after importation of the accused products by reason of infringement of the asserted claims of the patents-at-issue. (PDF)

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On July 27, 2009, a complaint was filed requesting a section 337 investigation on behalf of BTG International Inc. The proposed respondents are Samsung Electronics Co., Ltd., Samsung Electronics American, Inc., Samsung Semiconductor, Inc., Samsung Telecommunications America, LLC, Apple, Inc., ASUStek Computer, Inc., ASUS Computer International, Dell, Inc., Lenovo Group Limited, Lenovo (United States) inc., PNY Technologies, Inc., Research in Motion, Ltd., Research in Motion Corporation, Sony Corporation, Sony Electronic, Inc., and Transcend Information, Inc. The products involved are MLC flash memory devices.  (PDF)

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On July 27, 2009, the Commission Ordered that Inv. No. 337-TA-556, In the Matter of Certain High-Brightness Light Emitting Diodes and Products Containing Same, be remanded to Chief ALJ Luckern for proceedings consistent with the May 22, 2009 judgment of the Federal Circuit in Epistar Corp. v. United States Int’l Trade Comm’n, 566 F.3d 1321 (Fed. Cir. 2009), including issuance of a final initial determination on violation and a recommended determination on remedy and bonding. The investigation was appealed to the Federal Circuit after the Commission found infringement and issued a limited exclusion order. The Federal Circuit vacated the limited exclusion order and vacated and remanded the Commission’s final determination.  (PDF)

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On July 24, 2009, ALJ Charneski issued the public version of his February 27, 2009, ruling in which he denied respondent’s motion to terminate the investigation on the ground that the complaint did not allege a claim upon which relief can be granted in Inv. No. 337-TA-655, In the Matter of Certain Cast Steel Railway Wheels, Certain Processes for Manufacturing Or Relating To Same and Certain Products Containing the Same. Respondent’s motion argued that section 337 did not apply to the alleged conduct at-issue because all of the allegedly wrongful acts (alleged trade secret misappropriation) took place outside of the United States. ALJ Charneski disagreed with this position and concluded that a section 337 violation is possible where the act of misappropriation takes place outside of the United States, so long as the other section 337 criteria are met as well.  (PDF)

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ALJ Gildea issued an ID/RD on violation on July 24, 2009, in Inv. No. 337-TA-636, In the Matter of Certain Laser Imageable Lithographic Printing Plates. The public version of the ID/RD to follow.

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On July 24, 2009, ALJ Essex issued an Initial Determination Staying Investigation No. 337-TA-677 pending the completion of a Federal Circuit Appeal. ALJ Essex issued the stay pursuant to his authority under Commission Rule 210.15(a)(1) and considered the five factors set forth in Certain Semiconductor Chips with Minimized Chip Package Size and Products Containing Same, Inv. No. 337-TA-605, Comm’n Op. at 3, 2008 ITC LEXIS 888 at *4 (May 27, 2008). 

In its Notice of institution, the Commission acknowledged that the asserted patent was involved in reexam proceedings at the USPTO and was the subject of a Federal Circuit Appeal. In the Notice the Commission affirmatively stated that it was not making a determination whether a stay was warranted at that time and further stated that the presiding ALJ may want to make that determination at the outset of the investigation. Respondent Desire2Learn Inc. (D2L) filed for the stay on June 12, 2009, and Complainant Blackboard, Inc. opposed the motion.  (PDF)

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On July 23, 2009, ALJ Bullock issued an ID extending the target date to February 2, 2010, (73.5 months) and setting a new procedural schedule in Inv. No. 337-TA-501, In the Matter of Certain Encapsulated Integrated Circuit Devices and Products Containing the Same. This investigation was remanded by the Commission on July 1, 2009.  (PDF)

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On July 20, 2009, ALJ Essex issued the public version of his July 17, 2009, Recommended Determination granting in part complainants Magotteaux International S/A and Magotteaux, Inc.’s (collectively “Magotteaux”) motion for attorney’s fees and sanctions in Inv. No. 337-TA-644, In the Matter of Certain Composite Wear Components and Proucts Containing the Same. The ALJ awarded Magotteaux its attorney’s fees caused by the failure of respondents Vega Industries and AIA Engineering Limited to comply with the ALJ’s order compelling discovery.  (PDF)

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On July 20, 2009, ALJ Gildea issued the public version of his June 30, 2009, decision to preclude respondents from calling its trial counsel as a witness at trial in Inv. No. 337-TA-650, In the Matter of Certain Coaxial Cable Connectors and Components Thereof and Products Containing Same. (PDF)  ALJ Gildea concluded that respondents failed to show that their case depended on evidence that can only be obtained through testimony from their trial counsel. In the same decision, ALJ Gildea denied complainant’s motions in limine seeking to preclude:

• evidence of patent misuse and equitable estoppel
• ay witness opinion testimony
• certain cross-examination of complainant’s expert witnesses

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On July 20, 2009, ALJ Bullock issued the public version of his June 29, 2009, Initial Determination on Violation of Section 337 and Recommended Determination on Remedy and Bond in Inv. No. 337-TA-621, In the Matter of Certain Probe Card Assemblies, Components Thereof and Certain Tested DRAM and NAND Flash Memory Devices and Products Containing Same. ALJ Bullock concluded that respondents’ accused products did not infringe the asserted claims of the patents-at-issue and that no domestic industry existed with respect to some of the asserted claims. ALJ Bullock also concluded that one asserted claim was invalid as anticipated under 35 U.S.C. §102.  (PDF-1) (PDF-2)

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On July 20, 2009, the Commission issued the public version of its June 20, 2009, Order on Remedy, the Public Interest, and Bonding in Inv. No. 337-TA-637, In the Matter of Certain Hair Irons and Packaging Thereof. The Commission determined not to review the ALJ’s finding that there has been a violation of section 337. In the Order the Commission agreed with the ALJ’s findings on remedy that there was a pattern of violation and that it was difficult to identify the source of infringing goods, thus determining that the appropriate remedy was a general exclusion order. The Commission also concluded that the public interest would not be harmed by the general exclusion order.  (PDF)

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On July 17, 2009, ALJ Charneski granted one motion in limine filed by complainants and one filed by respondents in Inv. No. 337-TA-648, In the Matter of Certain Semiconductor Integrated Circuits Using Tungsten Metallization and Products Containing Same. With respect to complainants’ motion, ALJ Charneski precluded testimony and exhibits relating to prior litigations and proceedings. ALJ Charneski also granted respondents’ motion in limine to preclude complainants from asserting any claims of infringement under the doctrine of equivalents. ALJ Charneski noted that complainants failed to include an analysis of DOE in the expert report of its technical witness and in interrogatory responses. (PDF)

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On July 16, 2009, the Commission issued its Opinion supporting its June 11, 2009, final determination of violation of section 337, entry of a limited exclusion order, and termination of the investigation in Inv. No. 337-TA-629, In the Matter of Certain Silicon Microphone Packages and Products Containing Same. The Commission affirmed the ALJ’s determinations that the asserted claims of the patents-at-issue were infringed and not invalid. The Commission further affirmed findings of domestic industry. The Commission determined that the appropriate remedy is a limited exclusion order, the public interest will not be adversely affected by the entry of such order and there should be no bond during the period of Presidential Review. (PDF)

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ALJ Charneski stayed Inv. No. 337-TA-648, In the Matter of Certain Semiconductor Integrated Circuits Using Tungsten Metallization and Products Containing Same, with respect to Qimonda AG in light of an Order Issuing Preliminary Injunction issued by the United States Bankruptcy Court for the Eastern District of Virginia, Alexandria Division. The stay does not apply to any of the other respondents in the investigation. (PDF)

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ALJ Charneski in Inv. No. 337-TA-648, In the Matter of Certain Semiconductor Integrated Circuits Using Tungsten Metallization and Products Containing Same, granted complainants’ motion in limine to preclude respondents from offering opinion testimony relating to infringement and validity of the patent-at-issue from the CEO of one of the respondents. ALJ Charneski determined that preclusion was appropriate because respondents did not submit an expert report and thus complainants would have been unfairly prejudiced if the witness provided expert opinion testimony at the hearing. (PDF)

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On July 14, 2009, the Commission issued an opinion affirming the ALJ’s determination of violation as to one patent but reverses as to another in Inv. No. 337-TA-631, In the Matter of Certain Liquid Crystal Display Devices and Products Containing Same. For purposes of the violation, the Commission determined that the appropriate form of relief is a limited exclusion order and cease and desist orders.  (PDF)

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On July 13, 2009, Chief ALJ Luckern issued the public version of his April 17, 2009, Enforcement Initial Determination (ED) in Inv. No. 337-TA-565, In the Matter of Certain Ink Cartridges and Components Thereof. The enforcement proceeding was initiated on February 8, 2008 when complainants filed two complaints alleging violations of general exclusion orders and cease and desist orders by five respondents. On May 1, 2008, the Commission issued a “Notice of Institution of Formal Enforcement Proceeding.” An evidentiary hearing was conducted in January 2009. ALJ Luckern concluded that all enforcement respondents violated the orders and issued significant civil penalties against those companies. (PDF)

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