ITC Blog: ITC 337 Update

ALJ Essex found two respondents to be in default pursuant to 19 CFR §§ 210.16(a)(1) and 210.17 in Inv. No. 337-TA-630, In the Matter of Certain Semiconductor Chips with Minimized Chip Package Size and Products Containing Same. ALJ Essex found that two respondents (TwinMOS Technologies Inc. and TwinMOS Technologies USA Inc.) had failed to show that they should not be found in default for failure to respond to the Complaint and Notice of Investigation. TwinMOS’s only response was a letter stating that TwinMOS is a “memory module house” and “not in a position to involve in the patent litigation matters or to be liable to the charge.” Both companies filed to participate in the investigation in its entirety and as a result ALJ Essex entered an initial determination of default for these two companies.(PDF)

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ALJ Essex issued an initial determination on violation of section 337 and a recommended determination on remedy and bonding in Inv. No. 337-TA-630, In the Matter of Certain Semiconductor Chips with Minimized Chip Package Size and Products Containing Same. ALJ Essex held that no violation of section 337 has occurred. The products at issue do not literally infringe the asserted claims of U.S. Pat. Nos. 5,679,977 and 6,133,627, nor do they infringe under the doctrine of equivalents U.S. Pat. No. 5,663,106. The ALJ also found that all three patents were not invalid for anticipation, obviousness, or indefiniteness and that a domestic industry exists. (PDF)

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ALJ Rogers granted-in-part and denied in part non-party Freescale Semiconductor, Inc.’s motion to quash or limit a subpoena duces tecum and ad testificandum in Inv. No. 337-TA-673, In the Matter of Certain Electronic Devices, Including Handheld, Wireless Communication Devices. ALJ Rogers found that Samsung (respondent) had demonstrated a need for information concerning the structure and operation of licensed Motorola products since the operation of such products will determine whether or not the licensed Motorola products practice the patent in suit (U.S. Pat. No. 5,608,873). The ALJ, thus refused to quash the subpoena, but did limit the subpoena to this one issue. (PDF)

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The Commission instituted Inv. No. 337-TA-685, In the Matter of Certain Flash Memory and Products Containing Same. Samsung Electronics Co., Ltd. filed a complaint on August 21, 2009 alleging that section 337 was violated by reason of infringement of certain claims of U.S. Pat. Nos. 6,930,050 and 5,740,065. The complaint names as respondents: Spansion, Inc., Spansion LLC, Spansion Japan Ltd., Alpine Electronics, Inc., Alpine Electronics of America, Inc., D-Link Corp., D-Link Systems, Inc., Slacker Inc., Synology Inc., Synology North America Corp., Shenzhen Egreat Co., and Ltd., Appro International, Inc. (PDF)

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ALJ Bullock terminated the investigation as to respondent SAN Corp. pursuant to a consent order stipulation entered by the parties in Inv. No. 337-TA-679, In the Matter of Certain Products Advertised as Containing Creatine Ethyl Ester. On July 13, 2009 Complainant and Respondent SAN Corp. filed a joint motion to terminate the investigation as to SAN based upon a consent order stipulation. The consent order stipulation complied with the requirements of Rule 210.21(c)(3). In the consent order stipulation SAN agreed not to import, sell for import, or sell after importation the subject products and to report to the commission the quantity and value that it already has imported or sold after importation. (PDF)

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The Commission decided to review the ALJ’s Order No. 26 terminating the investigation as to respondent Ethical Naturals, Inc. in Inv. No. 337-TA-668, In the Matter of Certain Non-Shellfish Derived Glucosamine and Products Containing Same. The ALJ granted a motion to terminate the investigation as to one of six respondents, Ethical Naturals, Inc., based on a settlement agreement. The Commission decided to review this order and determination despite the fact that no petitions for review were filed. The subject of the Commission’s review was designated as Confidential and not disclosed. Written submissions are due on September 7, 2009 and reply submissions are due September 17, 2009. (PDF)

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The Commission instituted Inv. No. 337-TA-684, In the Matter of Certain Articulated Coordinate Measuring Arms and Components Thereof. In response to a complaint filed on July 28, 2009 on behalf of Hexagon Metrology, AB of Sweden and Hexagon Metrology, Inc. of North Kingstown, Rhode Island the commission decided to institute an investigation concerning whether section 337 is violated by the importation of certain articulated coordinate measuring arms and components thereof by reason of infringement of U.S. Pat. No. 5,829,148. The named respondents are: Metris N.V., Metris U.S.A., Inc., Mitutoyo Corp., and Mitutoyo America Corp. (PDF)

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ALJ Luckern issued an initial determination terminating Sony Ericsson Mobil Communications AB from Inv. No. 337-TA-674, In the Matter of Certain Light Emitting Diode Chips, Laser Diode Chips and Products Containing Same. Complainant Gertrude Neumark Rothschild and Respondent Sony Ericsson Mobile Communications AB filed a joint motion to terminate the investigation as to Sony Ericsson based on a settlement agreement. (PDF)

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The Commission instituted Inv. No. 337-TA-683, In the Matter of Certain MLC Flash Memory Devices and Products Containing Same. BTG International Inc. filed a complaint on July 27, 2009 (supplemented by letter dated August 18, 2009) alleging that section 337 was violated by reason of infringement of certain claims of U.S. Pat. Nos. 5,394,362, 5,764,571, 5,872,735, 6,104,640, and 6,118,692. The complainant names as respondents: Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung Semiconductor, Inc., Samsung Telecommunications America, LLC, Apple, Inc., ASUStek Computer, Inc., ASUS Computer International, Dell, Inc., Lenovo Group Ltd., Lenovo (United States) Inc., PNY Technologies, Inc., Research In Motion, Ltd., Research In Motion Corp., Sony Corp., Sony Electronics, Inc., and Transcend Information, Inc. (PDF)

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The Commission has granted review in part of the final initial determination in Inv. No. 337-TA-619, In the Matter of Certain Flash Memory Controllers, Drivers, Memory Cards and Media Players and Products Containing Same. On April 10, 2009 the ALJ issed a final initial determination finding no violation of section 337 by respondents. The ALJ also found that claim 8 of U.S. Pat. No. 7,137,011 was rendered obvious by prior art. The Commission, after reviewing the ALJ’s final initial determination, has decided to review the claim construction, infringement, and validity (including the ALJ’s decision not to consider a PCT publication as prior art) of U.S. Pat. No. 6,763,424. 

The Commission instructed the parties to address five questions in their briefing: (1) whether the accused products would infringe claim 17 of the ’424 patent if “updating pages of original data within any of the metablock component blocks less than all the pages within the block” was construed to cover single-page updates; (2) whether “reading and assembling data from the first and second plurality of pages” should be construed to cover the so-called “table method” and if infringement would result if the term was so construed; (3) why the Sinclair PCT was not listed on any notice of prior art as required by Ground Rule 5; (4) under what circumstances the Commission should consider a reference not submitted in accordance with an ALJ’s ground rule; and (5) the similarities and differences between U.S. Pat. No. 6,725,321 and the Sinclair PCT. Written submissions are required by September 3, 2009 and reply submissions are required by September 12, 2009. (PDF)

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The Commission denied a motion to stay enforcement of the limited exclusion order and cease and desist orders entered in Inv. No. 337-TA-617, In the Matter of Certain Digital Television Products and Certain Products Containing Same and Methods of Using Same. On June 2, 2009 Vizio and TPV Technology filed a motion to stay enforcement of the limited exclusion order and cease and desist orders entered by the Commission pending an outcome of an appeal to the Federal Circuit. The Commission found that the present motion did not satisfy the four-prong test established by the Commission for staying such orders. Instead the court found that Vizio and TPV Technologies failed to show: (1) that they are likely to prevail on the merits; (2) that irreparable harm would result absent a stay; (3) that a stay would not substantially harm other parties; and (4) that the public interest favors a stay. (PDF)

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 The Commission largely accepted Enforcement Initial Determination and imposed civil penalties in excess of $25 Million against certain respondents in Inv. No. 337-TA-565, In the Matter of Certain Ink Cartridges and Components Thereof. This investigation was instituted on March 23, 2006 based on a complaint filed by Epson Portland, Inc., Epson America, Inc., and Seiko Epson Corp. (Epson) and alleged violations of section 337 by reason of infringement of certain claims of U.S. Pat. Nos. 5,615,957, 5,622,439, 5,158,377, 5,221,148, 5,156,472, 5,488,401, 6,502,917, 6,550,902, 6,955,422, 7,008,053, and 7,011,397. On October 19, 2008 the ALJ issued a final initial determination finding a violation of section 337 and after review, the Commission made final the ALJ’s final determination finding a violation of section 337. Subsequently, the Commission issued a general exclusion order, a limited exclusion and cease and desist orders. 

In 2008 Epson filed three complaints for enforcement against Ninestar Technology Co. Ltd, Ninestar Technology Company, Ltd., Town Sky Inc., (the Ninestar Respondents) Mipo America Ltd., Mipo International Ltd., (the Mipo Respondents) Ribbon Tree USA, Inc., and Apex Distributing Inc. (the Apex Respondents). The ALJ issued an Enforcement Initial Determination recommending that the Commission impose civil penalties. The Commission adopted the Enforcement Initial Determination concerning civil penalties with respect to the Mipo Respondent and imposed a civil penalty in the amount of $9,700,000. The Commission likewise adopted the Enforcement Initial Determination concerning civil penalties with respect to the Apex Respondents and imposed a civil penalty in the amount of $700,000. The commission, however, decided to impose a $11,110,000 penalty against the Ninestar Respondents which is less than the amount recommended in the Enforcement Initial Determination. (PDF)

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The Commission affirms the ALJ’s findings (with modifications) in Inv. No. 337-TA-629, In the Matter of Certain Silicon Microphone Packages and Products Containing the Same. After reviewing various portions of the final initial determination, the Commission determined to affirm virtually all of the ALJ’s findings. The Commission indicates that, despite the affirmance, modifications would be made to the ALJ’s findings concerning: infringement of U.S. Pat. No. 6,781,231; the ALJ’s finding that claims 1 and 2 of the ’231 patent are not invalid; the ALJ’s construction of “volume” in U.S. Pat. No. 7,0242,089; infringement of the ’089 patent; the ALJ’s finding that the asserted claims of the ’089 patent are not invalid.

The Commission also issued a limited exclusion order prohibiting the unlicensed entry of silicon microphone packages which infringe the asserted claims and that are manufactured abroad by or on behalf of, or are imported by or on behalf of MemsTech. (PDF)

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The Commission issued an opinion supporting its June 11, 2009 Final Determination of violation of section 337, entry of 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 the Same. After the ALJ issued its Initial Determination the Commission determined to review whether the Respondent, MEMS Technology Berhad, infringed certain claims in U.S. Pat. Nos. 6,781,231 and 7,242,089. The Commission also reviewed the ALJ’s determination regarding nonobviousness and anticipation of the two patents and certain claim constructions and secondary considerations of the ’089 patent. (PDF)

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ALJ Roberts granted Complainant Phillips Lumileds Lighting Company, LLC’s motion to withdraw its complaint and terminate the investigation in its entirety in Inv. No. 337-TA-556, In the Matter of Certain High-Brightness Light-Emitting Diodes and Products Containing Same. Commission Rule 210.21(a)(1) permits a motion for an order terminating an investigation provided the motion contain a statement disclosing any agreements between the parties concerning the subject matter of the investigation or stating that no such agreement exists. Phillips’ motion to terminate the investigation states that no such agreement exists in this case. On May 24, 2009 the Federal Circuit vacated the Commissions limited exclusion order and remanded this case to allow respondent to challenge the validity of Phillips’ asserted patent. The asserted patent, however, will expire on December 18, 2009 and Phillips would not be able to complete the entire remand proceeding prior to the patent’s expiration. ALJ Roberts, finding no extraordinary circumstances preventing the termination of the remanded investigation and finding that such a termination to be in the public interest, granted Phillips’ motion. (PDF)

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ALJ Gildea granted O2 Micro’s motion to compel re-production of a document “clawed back” by Monolithic Power Systems, Inc. in Inv. No. 337-TA-666, In the Matter of Certain Cold Cathode Fluorescent Lamp (“CCFL”) Inverter Circuits and Products Containing Same. ALJ Gildea, citing Federal Circuit precedent, reiterated the legal principle that “the attorney client privilege evaporates upon any voluntary disclosure of confidential information to a third party and that it is irrelevant whether the disclosure was inadvertent” (internal quotations omitted). The ALJ went on to find, assuming the document at issue was privileged, privilege was waived by MPS’s production of the document in two separate lawsuits. MPS’s failure to use adequate procedures to prevent disclosure of protected documents was apparent through its apparent sole reliance upon a “clawback provision” to protect privileged documents. 

ALJ Gildea, however, stopped short of taking a position on whether parties were free to enter into “claw-back” agreements, stating only that where parties enter into such stipulations “they are responsible for resolving disputes relating to inadvertent production on their own” and where such a resolution is not reached by the parties, “it is the Administrative Law Judge’s view that a claw-back agreement may not shield the inadvertent production of an attorney-client privileged document to an adversary absent some showing that a party used a ‘reasonable effort’ to protect the confidences it contains. (PDF)

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The Commission set the civil penalties to be levied against Respondents in Inv. No. 337-TA-565, In the Matter of Certain Ink Cartridges and Components Thereof. The Commission adopted the ALJ’s analysis concerning civil penalties with respect to Mipo Respondents ($9,700,000) and Apex Respondents ($700,000). However, the Commission has determined to impose a lesser civil penalty against Ninestar respondents ($11,110,000). The Commission’s order and opinion will be issued at a later date. (PDF)

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ALJ Essex set the procedural schedule in Inv. No. 337-TA-669, In the Matter of Certain Optoelectronic Devices, Components Thereof, and Products Containing the Same.  (PDF)

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On August 12, 2009, Chief ALJ Luckern granted complainant’s motion to amend the procedural schedule in Inv. No. 337-TA-670, In the Matter of Certain Adjustable Keyboard Support Systems and Components Thereof. The schedule was amended to allow complainant to obtain any additional follow-up discovery generated from depositions that are scheduled to take place the day before the close of fact discovery. In addition, Chief ALJ Luckern pointed to the fact that respondents provided document discovery after the deadline for such discovery and a week before the close of fact discovery. (PDF)

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On August 12, 2009, a complaint was filed requesting a section 337 investigation on behalf of LG Electronics, Inc. The proposed respondents are Funai Electric Company, Ltd., Funai Corporation, Inc., and P&F USA, Inc. The products involved are video displays. (PDF)

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On August 10, 2009, ALJ Essex extended the target date by one month and moved the hearing dates back by approximately one month in Inv. No. 337-TA-669, In the Matter of Certain Optoelectronic Devices, Components Thereof, and Products Containing the Same. ALJ Essex attributed the extension to a busy docket. (PDF)

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On August 10, 2009, ALJ Rogers granted respondents’ motion for a limited exception to the protective order to provide an ALJ’s order to a district court in a parallel proceeding in Inv. No. 337-TA-673, In the Matter of Certain Electronic Devices, including Handheld Wireless Communications Devices. The order to be provided to the district court addressed respondents’ motion concerning judicial enforcement of a subpoena served on a non-party law firm. There was a substantively identical motion pending before the district court.  (PDF)

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On August 7, 2009, ALJ Charneski issued a Notice of an Initial Determination in Inv. No. 337-TA-641, In the Matter of Certain Variable Speed Wind Turbines and Components Thereof. (PDF) The Initial Determination included the following conclusions of law, among others:

• the Commission has personal and subject-matter jurisdiction
• the importation requirement has been met
• a violation of section 337 has occurred with respect to two of the three patents-at-issue

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On August 7, 2009, a complaint was filed requesting a section 337 investigation on behalf of The Lincoln Electric Co. and Lincoln Global, Inc. The proposed respondents are Atlantic China Welding Consumables, Inc., ESAB AB, Hyndai Welding Col, Ltd., Kiswel Col, Ltd., and Sidergas SpA. The products involved are Bulk Welding Wire Containers and Components Thereof and Welding Wire.  (PDF)

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ALJ Gildea denied Finnegan’s motion to intervene on its own behalf in Inv. No. 337-TA-666, In the Matter of Certain Cold Cathode Fluorescent Lamp (CCFL) Inverter Circuits and Products Containing the Same on August 6, 2009. Finnegan sought to intervene for the limited purpose of enforcing the terms of a retainer agreement. ALJ Gildea denied the motion, finding that good cause does not exist to grant Finnegan’s motion.  (PDF)

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On August 5, 2009, ALJ Rogers issued the public version of his July 14, 2009, Order denying respondent’s motion for a protective order in Inv. Nos. 337-TA-667 and 673, In the Matter of Certain Electronic Devices, Including Handheld Wireless Communications Devices. In its motion, respondent Palm, Inc. sought to preclude Complainant Saxon Innovations, LLC from accusing the Palm Pre phone of infringement on the basis that Saxon failed to include the device in relevant interrogatory responses by the applicable deadline. ALJ Rogers concluded that Palm was on notice before the applicable deadline of the fact that Saxon was accusing Palm of infringement and thus failed to show good cause for issuance of a protective order.  (PDF)

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On August 5, 2009, Chief ALJ Luckern issued a public version of his June 12, 2009, Final Initial and Recommended Determinations for Inv. No. 337-TA-634, In the Matter of Certain Liquid Crystal Display Modules, Products Containing Same, and Methods for Using the Same. Judge Luckern concluded that there was jurisdiction and that there was a violation of section 337. ALJ Luckern recommended the issuance of a limited exclusion order barring entry into the United States of infringing products, including downstream products of named respondent, and a cease and desist order.  (PDF)

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On August 4, 2009, ALJ Gildea determined that a 16 month target date was appropriate for Inv. No. 337-TA-682, In the Matter of Certain Collaborative System Products and Components Thereof, resulting in a target date of December 2, 2010, (final ID on violation will be due no later than August 2, 2010). ALJ Gildea further stated that the investigation was to be governed by the Commission Rules and the attached ground rules.  (PDF)

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On August 3, 2009, the Commission issued a notice reversing a remand determination of the presiding ALJ and to terminate Inv. No. 337-TA-623, In the Matter of Certain R-134a Coolant (Otherwise Known as 1,1,1,2-Tetrafluoroethane), with a finding of no violation. The Commission determined to reverse the conclusion reached by the ALJ that the only remaining claim of the patent-at-issue was not obvious. The Commission found that the claim would have been obvious to a skilled artisan and is thus invalid.  (PDF)

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