ITC Blog: ITC 337 Update

ALJ Charneski denied, by summary order, HTC's motion to fully consolidate two recently-filed investigations in Inv. No. 337-TA-710, In the Matter of Certain Personal Data and Mobile Communications Devices and Related Software.  HTC's motion attempted to consolidate the 710 Investigation (filed by Apple Inc. and instituted by the ITC on March 30, 2010) with Inv. No. 337-TA-704, In the Matter of Certain Mobile Communications and Computer Devices and Components Thereof.  The 704 Investigation, filed by Apple and instituted on February 17,2010, names Nokia Corp. and Nokia Inc. as the sole respondents.  A total of fourteen patents are being asserted by Apple in the two investigations which have five patents in common.  (PDF)

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ALJ Rogers denied respondent's motion for summary determination of invalidity U.S. Patent No. 6,212,343 (" '343") under § 112, ¶ 2 in Inv. No. 337-TA-690, In the Matter of Certain Printing and Imaging Devices and Components Thereof.  The respondents and staff argued that the claim limitation describing a blade enabled to be "bent in a direction orthogonal to a longitudinal direction of [a roller]" was indefinite because, inter alia, there are "an infinite number of possible orthogonal directions." In its order the ALJ held that the claim was not indefinite.  The court reasoned that in the context of the claim a "longitudinal direction" of the roller was easily identifiable and, thus, a direction orthogonal to a longitudinal direction" was definite.  (PDF)

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Georgia-Pacific Consumer Products LP ("Georgia-Pacific") filed a complaint yesterday accusing 11 proposed respondents of infringing U.S. Patent Nos. 6,871,815, 7,017,856, 7,182,289, and 7,387,274 ("Asserted Patents") in Inv. No. 337-TA-___, In the Matter of Certain Electronic Paper Towel Dispensing Devices and Components Thereof.  In its complaint, Georgia-Pacific accuses Kruger Products, KTG USA, Stefco Industries, Cellynne Corp., Draco Hygenic Products, NetPak Electronic Plastic and Cosmetic, NetPak Elektronik Plastik ve Kozmetik Sanayi, Paradigm Marketing Consortium, United Sourcing Network, New Choice, and Vida International of patent infringement.  The Asserted Patents cover methods for "inexpensively and conveniently" grounding electronic paper towel dispensers so that static build-up does not damage the circuitry of electronic dispensers.  Concurrent with the filing of its ITC complaint, Georgia-Pacific also filed suit in the Northern District of Georgia alleging that Kruger, Stefco, Draco, NetPak, and Paradigm infringe the Asserted Patents.  (PDF)

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Senators Max Baucus (D-Mont.) and Charles Grassley (R-IA) Chairman and Ranking Member (respectively) of the United States Senate Committee on Finance requested that the United States International Trade Commission institute an investigation into intellectual property rights infringement in China in Inv. No. 332-2729.  The request, filed today, asks that the Commission investigate the effect on the U.S. economy and U.S. jobs of infringement occurring in China pursuant to Section 332(g) of the Tariff Act of 1930.  The request is currently pending institution.

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The Commission held that claim 4 of U.S. Patent No. 5,227,335 (" '335") is obvious in light of certain prior art references in Inv. No. 337-TA-648, In the Matter of Certain Semiconductor Integration Circuits Using Tungsten Metallization and Products Containing Same.  In its initial determination the ALJ held that dependent claim 4 of the '335 patent was invalid due to anticipation.  The ALJ's decision was based largely on the testimony of an inventor of a prior art reference that the recited "etching step" was reduced to practice.  The Commission held that reliance on uncorroborated inventor testimony was improper under Federal Circuit precedent and reversed the ALJ's ruling.  The Commission, however, eventually held that claim 4 is obvious in light of the combination of two or more prior art references which disclose the "etching step" and that a person of ordinary skill would have been motivated to combine the references.  The Commission affirmed the ALJ's ruling that the remainder of the asserted claims were anticipated by prior art references.  (PDF)

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ALJ Gildea held that none of the Respondents infringed U.S. Patent No. 7,417,382 and that no domestic industry exists in Inv. No. 337-TA-666, In the Matter of Certain Cold Cathode Fluorescent Lamp ("CCFL") Inverter Circuits and Products Containing The Same.  ALJ Gildea found that respondents (ASUSTeK Computer Inc., ASUS Computer International, Monolithic Power Systems, Inc., and Microsemi Corp.) did not infringe claims 1, 2, 4, 7, 8, 9, 11 and 14 of U.S. Patent No. 7,417,382.  Gildea further held that no domestic industry exists which practices the '382 patent.  A complete public version of the initial determination will be issued after the parties have had a chance to propose redactions.  (PDF)

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ALJ Rodgers granted Oki Data’s motion to preclude Ricoh from relying on earlier conception and reduction to practice dates where Ricoh improperly supplemented its interrogatory responses. The earlier conception and reduction to practice dates were not asserted to be newly acquired information. As a result, the supplemental answers were not proper under Commission Rule 210.274(c)(1) because the purpose of the supplement or correction was not to include “information thereafter acquired.”

ALJ Rodgers also held that Oki Data’s attempt to seek an order requiring Ricoh’s employees to travel from Japan to the United States for deposition improper. The normal practice in the ITC investigation is for the deposition to occur at the place where the deponent works or resides absent a showing of hardship or unusual experience. 

ALJ Rodgers further found Oki Data’s deposition requests untimely even though served twenty-two days prior to the close of fact discovery. Oki Data should have known that the witnesses were located in Japan and should have initiated the discovery in sufficient time to permit such depositions in accordance with the applicable rules for depositions in Japan.  (PDF)

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Respondent Atlantic China Welding Consumables, Inc. (“Atlantic”) moved for sanctions against Complainants Lincoln Electric Company and Lincoln Global, Inc (“Lincoln”) for failure to comply with Commission Rule 210.4(c). Atlantic based its motion on Lincoln’s alleged failure to conduct a reasonable pre-filing investigation and continued maintenance of the investigation against Atlantic. It was undisputed that the accused “Atlantic product” was not made by, or manufactured for, Atlantic. 

ALJ Rodgers found that Lincoln conducted an objectively reasonable pre-filing investigation by ordering the accused product and relying on a trusted vendor’s representation that the product was an Atlantic product. As received, the product did not have a label and the Material Safety Data Sheet indicated that the manufacturer/supplier was a third party known to manufacture for Atlantic. Atlantic argued that Lincoln should have known that the product was not made by Atlantic because of the retainer ring design of the accused product. However, nothing in the record indicated that Lincoln knew or should have know of the differences in the retainer ring structures offered by Atlantic and others. Lincoln’s failure to search the ISO certification number on the product was not unreasonable given the testimony that ISO certification is not commonly used in the industry to identify product origin.

ALJ Rodger’s also found Lincoln’s activities after institution of the investigation were objectively reasonable. Atlantic’s counsel informally represented that Atlantic did not make the accused products, but never provided a signed declaration. Lincoln properly sought discovery from the alleged manufacturer identified by Atlantic. After receiving the needed discovery, Lincoln timely moved to terminate the investigation against Atlantic. (PDF)

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Jack Lengemann and Lengemann & Associates, P.C. (“Lengemann”) filed a motion to quash document and deposition subpoenas served by RIM. The dispute centered on what compensation Lengemann believed it was entitled to for complying with the subpoenas. RIM agreed to pay for copying costs, deferment of the deposition until after tax season at a nearby deposition location, and compensation as permitted by Commission Rules and ITC precedent. Lengemann, however, wanted compensation at his CPA rate and compensation for the use of Lengemann’s office equipment. APJ Essex held that Lengemann was not entitled to hourly compensation for a CPA to review responsive documents and sit for a deposition because Mr. Lengemann is a fact witness and is not being deposed on the basis of his expertise. Lengemann offered no legal support for the contention that it should be compensated for office equipment use, and therefore, the request was denied.  (PDF)

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 ALJ Charneski enters an initial determination that Cognex carried its burden to show the economic prong of the domestic industry requirement. None of the Respondents opposed.

None of the Respondents opposed Cognex’s motion on the technical prong either. However, the Commission Investigative Staff opposed the motion because Cognex failed to offer any claim construction. ALJ Charneski agreed and found the lack of claim construction to be the silver bullet that took down Cognex’s motion. The lack of claim construction was not found to be remedied by Cognex’s technical expert’s declaration repeating claim terms and technical discussion of the Cognex products.  (PDF)

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 ALJ Charneski enters an initial determination that Cognex carried its burden to show the economic prong of the domestic industry requirement. None of the Respondents opposed.

None of the Respondents opposed Cognex’s motion on the technical prong either. However, the Commission Investigative Staff opposed the motion because Cognex failed to offer any claim construction. ALJ Charneski agreed and found the lack of claim construction to be the silver bullet that took down Cognex’s motion. The lack of claim construction was not found to be remedied by Cognex’s technical expert’s declaration repeating claim terms and technical discussion of the Cognex products. (PDF)

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ALJ Charneski denied Respondent MVTec’s motion to compel the production of documents regarding Complainant Cognex’s predecessor product. MVTec failed to support its motion with sufficient facts and, instead, relied on conclusory allegations. (PDF)

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ALJ Charneski denied Respondent MVTec’s motion to compel the production of documents regarding Complainant Cognex’s predecessor product. MVTec failed to support its motion with sufficient facts and, instead, relied on conclusory allegations. (PDF)

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In the Matter of Certain DC-DC Controllers and Products Containing the Same, denied Complainants request for Respondent to produce and search the personal computers and electronic storage devices of employees formerly employed by Complainants but now employed by Respondent in an investigation involving trade secret misappropriation allegations. Such searching was found to be somewhat redundant of previous discovery requests and suggestive of an intent to harass. In addition, Complainant made no showing of any discrepancies or insufficiencies in Respondent’s document production nor any showing that it will be unable to get the sought-after information from other sources.  (PDF)

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APJ Luckern denied Richtek’s request to compel more specific responses in the Respondents’ affirmative defenses and interrogatory responses. APJ Luckern noted that the Commission Rules encourage but do not require Respondents to provide a showing of how the prior art renders a claim invalid or unenforceable. In addition, the Respondents identified certain prior art that it contended invalidated the asserted patents. The Respondents did not rely on bald assertions of invalidity unlike other cases where the ITC previously ordered supplementation. (PDF)

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ALJ Luckern found that Red Bull GmbH and Red Bull North America, Inc. (“Red Bull”) satisfied the technical and economic prongs of the domestic industry requirement. The Red Bull energy drinks distributed in the U.S. featured registered trademarks, copyrights, and derivative works owned by Red Bull. Further, it was determined that Red Bull had expended significant investments facilities and equipment, significant employment of labor and capital, and significant exploitation investments. ALJ Luckern’s decision factored in, among other things, Red Bull’s warehouse and storage space housing Red Bull energy drinks, marketing and point-of-sale materials and event logistics infrastructure inventory, Red Bull’s expenditures on corporate and promotional vehicles, Red Bull’s contracts with U.S.-based third party manufactures, and Red Bull’s large workforce involved in the licensing, enforcement, marketing and promoting of Red Bull energy drinks.

ALJ Luckern found that the unauthorized importation of gray market products violated the Lanham for all remaining Respondents except one (where ALJ Luckern found the evidence of importation lacking because it evidenced an offer for sale not a sale). ALJ Luckern found that material differences existed between U.S. authorized products and unauthorized gray market products. Such differences included a lack of batch code, expiration date, UPC code, nutritional information, volumetric information, deposit information, proper complaint contact information, and other quality control mechanisms.

ALJ Luckern further found that the importation of the unauthorized Red Bull energy drinks constituted copyright infringement in violation of 19 U.S.C. §1337.

ALJ Luckern also recommended the entry of a general exclusion order and posting of 100% bond should any Respondent continue to import and support the gray market products through any Presidential review period.  (PDF)
 

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ALJ Essex extended the target date by three months in 337-TA-688, Certain Hybrid Electric Vehicles and Components Thereof. The ALJ found good cause due to the Commission’s April 2 reversal of his initial determination on claim preclusion. The new target date is February 9, 2011, with a final initial determination due on October 8, 2010.  (PDF)

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The ITC issued the public version of ALJ Rogers March 24, 2010 Initial Determination on Temporary Relief in 337-TA-695, Certain Silicon Microphone Packages and Products Containing Same. The ALJ denied complainant Knowles Electronics LLC’s motion, finding that the respondents had raised a substantial question of invalidity as to all but one claim asserted, and the complainant had failed to establish a likelihood of success showing infringement for that claim. The ALJ also determined that the complainant had failed to show irreparable harm, and that the public interest did not require temporary relief. 

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The ITC issued the public version of ALJ Bullock’s March 23, 2010 Supplemental Initial Determination on remand that there was no violation of Section 337 in 337-TA-501, Certain Encapsulated Integrated Circuit Devices and Products Containing Same.

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ALJ Bullock issued an initial determination in 337-TA-644, Certain Flash Memory Chips and Products Containing Same, granting complainants Spansion, Inc. and Spansion, LLC’s motion to withdraw U.S. Patent No. 6,080,639 from the complaint without prejudice. (PDF)

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ALJ Charneski issued an initial determination recommending termination of 337-TA-680, Certain Machine Vision Software, Machine Vision Systems and Products Containing Same, on the basis of a settlement agreement between the parties.

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ALJ Gildea set the procedural schedule today in 337-TA-706, Certain Wireless Communications System Server Software, Wireless Handheld Devices And Battery Packs. The hearing is scheduled for November 5-18, 2010, with a final initial determination set for February 24, 2011, and a target date for completion of June 24, 2011.

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The Commission confirmed the termination of 337-TA-668, Certain Non-Shellfish Derived Glucosamine and Products Containing Same, on the basis of a settlement agreement between the parties.

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ALJ Gildea issued an initial determination in 337-TA-701, Certain Electronic Devices, Including Mobile Phones, Portable Music Players, and Computers, extending the deadline for final initial determination to April 1, 2011 and the target date to August 1, 2011 based on the large number of claims at issue.

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ALJ Gildea released the public version of his March 17, 2010 denial of Vizio’s motion to compel LG Electronics to produce documents held by a non-party, LG Display Co., in 337-TA-687, Certain Video Displays, Components Thereof and Products Containing Same. The ALJ determined that the complainant did not have possession, custody or control over documents at the non-party, despite the fact that the complainant controlled 37.9% of the non-party’s stock, because a majority of the board was required to be appointed by outsiders, the two companies kept separate books, and there was no evidence that complainant had access to the non-party’s documents in the ordinary course of business.  (PDF)

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