ALJ Gildea Denies Motions for Summary Determination
On January 14, 2011, ALJ Gildea released the public version of two orders dated January 4, 2011 denying motions for summary determination filed by respondent in Inv. No. 337-TA-712, Certain Digital Set-Top Boxes and Components Thereof. In the first motion, respondent alleged that a single claim of an asserted patent was invalid under 35 U.S.C. 102 as anticipated by a prior U.S. patent. The complainant and staff attorney opposed the motion. The dispute centered on the scope of the allegedly novel step of "transforming the data processing network information from the network format … to a television format" and which components perform that step. ALJ Gildea, confirming that he would not construe claims prior to the hearing on the merits, found that genuine material issues of disputed fact prevented a finding of summary determination.
In the second motion, respondent sought a summary determination that complainants failed to satisfy the importation requirement of section 337 and failed to tie any importation to alleged acts of infringement. Regarding importation, respondent argued that it contracted with a third-party for the manufacture and importation of the accused product, and thus it does not import the products. Regarding nexus, respondent argued that there can be no nexus because infringement requires end-use, and, according to respond, no evidence of use had been submitted. Complainant and the staff attorney opposed the motion. The ALJ found that genuine issues of material fact remain in dispute such that a trial on the merits is warranted.
