LG Electronics Inc. and LG Innotek Co, Ltd. filed a letter on July 27, 2011, requesting that the International Trade Commission conduct an investigation under section 337 covering Certain Light Emitting Diodes and Products Containing Same. The proposed respondents are OSRAM Gmbh, OSRAM Sylvania Inc., and OSRAM Opto Semiconductors Gmbh.
Rovi Corporation, Rovi Guides, Inc., United Video Properties, Inc., and Gemstar Development Corporation filed a letter on July 26, 2011, requesting that the International Trade Commission conduct an investigation under section 337 covering Certain Products Containing Interactive Program Guide and Parental Controls Technology. The proposed respondents are: Sharp Corporation, Sharp Electronics Corporation, and Sharp Electronics Manufacturing Company of America, Inc.
InterDigital Communications LLC, InterDigital Technology Corporation, and IPR Licensing Inc. filed a letter on July 26, 2011, requesting that the International Trade Commission conduct an investigation under section 337 covering Certain Wireless Devices with 3G Capabilities and Components Thereof. The proposed Huawei Technologies Co., Ltd., FutureWei Technologies, Inc. d/b/a Huawei Technologies, Nokia Corporation, Nokia Inc., ZTE Corporation, and ZTE (USA) Inc.
MyKey Technologies filed a new complaint on July 22, 2011, requesting that the International Trade Commission conduct an investigation under section 337 covering Certain Computer Forensic Devices And Products Containing The Same. The proposed respondents are: Data Protection Solutions by Arco, CRU Acquisitions Group LLC, CRU-DataPort LLC, Digital Intelligence, Inc., Diskology, Inc., Guidance Software, Inc., Guidance Tableau LLC, Ji2, Inc., MultiMedia Effects, Inc., Voom Technologies, Inc., and YEC Co. Ltd.
On July 25, 2011, ALJ Rogers set the procedural schedule for Investigation No. 337-TA-782, Certain Liquid Crystal Display Devices and Products Containing the Same. The hearing is set to begin May 14, 2012, with a target date of November 6, 2012. The complainant is Samsung Electronics Co., Ltd, and the respondents are Acer America Corp., Acer Inc., BenQ America Corp., BenQ Corp., AU Optronics Corp, AU Optronics Corp. America, Sanyo Electric Co., Ltd., and Sanyo North America Corp.
On July 25, 2011, ALJ Gildea set the procedural schedule for Investigation No. 337-TA-778, Certain Equipment for Communication Networks Including Switches, Routers, Gateways, Bridges, Wireless Access Points, Cable Modems, IP Phones, and Products Containing Same. The hearing is set for March 15-30, 2012, with a target date of October 22, 2012. The complainant is Mosaid Technologies, Inc., and the respondents are Cisco Systems, Inc., Cisco Consumer Products LLC, Cisco Systems International B.V., and Scientific Atlanta LLC.
On July 22, the full Commission reversed ALJ Charneski's finding that the Complainant’s portfolio licensing program satisfied the domestic industry requirement, and offered new guidance on the proof necessary to satisfying the requirement based on licensing, in Inv. No. 337-TA-694, Certain Multimedia Display and Navigation Devices and System Components Thereof and Products Containing Same.
On review of ALJ Charneski’s initial determination that the Complainant’s portfolio licensing program satisfied the domestic industry requirement of 19 U.S.C. § 1337(a)(3)(C), the Commission noted that the statute requires proof of investment in the exploitation of the asserted patent, which involves establishing a nexus between the investments and the asserted patent. Second, the statute requires that the investment relate to licensing. Third, any investment must occur in the U.S. The Commission noted several factors relevant to whether there is a nexus between any investments and the asserted patents, including whether:
• any licensing activities were focused on the asserted patent,
• the licensee's efforts relate to an article protected by the asserted patent,
• the asserted patent has relative importance in the licensed portfolio,
• the asserted patent was discussed during the license negotiation process,
• the asserted patent was successfully litigated,
• the asserted patent relates to a standard,
• the asserted patent is a base or pioneering patent,
• the asserted patent was infringed or practiced in the U.S., or
• the asserted patent has been recognized by the market in some way.
The Commission further noted that any nexus may be stronger where the licensed portfolio includes fewer patents, has a narrow scope of technology compared to the asserted patent, and the patents in the portfolio are all related. The Commission explicitly rejected allocating licensing investments equally among patents in a portfolio, however; any nexus must be established on a case-by-case basis.
The Commission next adopted a flexible approach to determining if, once the three requirements had been shown, investments were “substantial” -- if a showing on any one requirement is weak, the complainant may overcome that weakness by demonstrating a large magnitude of activities/expenses relative to its size. Among the evidence that may also be offered by complainants in support of the “substantiality” requirement is (1) existence of other types of exploitation (research, development, and engineering); (2) existence of ancillary licensing activities (auditing licensees, training licensees), (3) whether licensing activities are continuing; and (4) whether licensing activities are referenced favorably in the legislative history of section 337(a)(3)(C).
With respect to the 694 Investigation, the Commission found that any nexus between licensing investments and the asserted patents was weak because the complainant’s portfolio included hundreds of patents, its licensing efforts were directed towards the entire portfolio, many of the patents were not U.S. patents, and there was no evidence of how the asserted patents fit together congruently with the other patents in the portfolio. The Commission also held that legal invoices that appeared to relate to the asserted patents were not solely an investment in licensing and significantly reduced the amount of investments claimed. As to whether there were "substantial investments," the Commission found that the complainant was a large international company with significant resources, and did not have any engineering, development, or research activities, or any "exploitation" or license-related ancillary activities, in the U.S. The Commission also gave complainant’s licensing activities less weight because those activities "on the whole, reflect a revenue-driven licensing model targeting existing production rather than the industry-creating, production-driven licensing activity that Congress meant to encourage." Given the relatively weak nexus and the lack of "substantial" investment, the Commission held that the complainant had not established a domestic industry.
On July 19, 2011, ALJ Gildea, pursuant to Commission authorization, consolidated Inv. Nos. 337-TA-773 and 337-TA-787, both entitled Certain Motion-Sensitive Sound Effects Devices and Image Display Devices and Components and Products Containing Same [II]. The common complainant is Ogma, LLC of Texas, which asserted common patent claims in the two Investigations. Specifically, ALJ Gildea folded the 787 Investigation into the 773 Investigation, which now contains 34 different respondents. There had been no overlapping respondents in the two separate Investigations.
On July 18, 2011, ALJ Luckern set a procedural schedule based on a proposed schedule jointly submitted by the parties in Certain Electronic Devices Having A Digital Television Receiver and Components Thereof, 337-TA-774. The evidentiary hearing is set for January 9-13, 2012, with a target date of August 6, 2012. The complainant is Zenith Electronics LLC, and the respondents are Sony Corporation, Sony Corporation of America, and Sony Electronics, Inc.
On July 18, 2011, ALJ Gildea granted a joint motion filed by complainant Ogma, LLC and respondents VTech Holdings, Ltd. and VTech Electronics North America, LLC to terminate the Investigation as to the VTech respondents by reason of a settlement agreement in Certain Motion-Sensitive Sound Effects Devices and Image Display Devices and Components and Products Containing Same, 337-TA-773. The Investigation remains pending against respondents Activision Blizzard, Inc., Canon, Inc., Canon USA, Inc., Jakks Pacific, Inc., Kyocera Communications, Inc., LEGO A/S dba LEGO Group, LEGO Systems, Inc., Lenovo (United States), Inc., Lenovo Group Ltd., Lenovo (Singapore) Pte. Ltd., Mad Catz, Inc., Nintendo Co., Ltd., Nintendo of America, Inc., Nyko Technologies, Inc., Sony Ericsson Mobile Communications (USA), Inc., Sony Ericsson Mobile Communications AB, ViewSonic Corp., Ltd., WowWee Group Ltd., and WowWee USA, Inc.
On July 18, 2011, the Commission determined not to review ALJ Robert K. Rogers, Jr.’s final initial determination finding no violation of Section 337 in Certain Digital Imaging Devices and Related Software, 337-TA-717. The complainant was Apple, Inc. of California, and the respondent was Eastman Kodak Company of New York. The ALJ had found, in part, that Kodak did not infringe either of the two patents-in-suit. Apple had petitioned the Commission to review the ALJ’s findings with respect to one of the patents-in-suit.
On July 15, the Commission issued its final determination finding a violation of Section 337 and issuing a general exclusion order and cease and desist orders in Inv. No. 337-TA-567, Certain Foam Footwear. The complainant is Crocs, Inc. The Commission determined the appropriate form of relief to be (1) a general exclusion order prohibiting unlicensed entry of foam footwear that infringes the asserted claims of U.S. Patent No. 6,993,858 or the claimed design of U.S. Patent D517,789 and (2) cease and desist orders preventing Respondents Double Diamond, Effervescent, and Holey Soles from marketing, advertising, distributing, and offering for sale foam footwear that infringe any of the asserted claims of the '858 patent or the '789 patent. The Commission determined to set a bond of $0.00 for Double Diamond's products, $0.05 per pair of shoes for Effervescent's covered products as well as a bond of 100% of the entered value of these products to permit temporary importation during the Presidential Review period.
ALJ Rogers issued an order denying the motion of Respondents Funai Corporation and Funai Electric Co. Ltd. for a stay of proceedings in Inv. No. 337-TA-786, Certain Integrated Circuits, Chipsets and Products Containing Same, Including Televisions, pending resolution of whether this investigation is precluded in whole or in part based on the previously-litigation Inv. No. 337-TA-709. ALJ Rogers also set August 15, 2011 as the date for the pre-hearing conference in this Investigation. The complainant is Freescale Semiconductor.
The Commission issued an order granting Complainants Funai Electric Co. Ltd. and Funai Corporation Inc. and Respondents TPV Technology, Ltd. , TPV International (USA) Inc., Top Victory Electronics (Taiwan) Co. Ltd. and Envision Peripherals' joint motion for rescission of the limited exclusion order and cease and desist order issued as to Respondents in Inv. No. 337-TA-617, Certain Digital Television Products and Certain Products Containing Same and Methods of Using Same.
Intellectual Ventures Management LLC, Invention Investment Fund I L.P., Invention Investment Fund II LLC, Intellectual Ventures I LLC and Intellectual Ventures II LLC, filed a letter with Secretary Holbein requesting that the Commission conduct an investigation under Section 337 of the Tariff Act of 1930, as amended regarding Certain Dynamic Random Acces Memory and NAND Flash Memory Devices and Products Containing Same. The proposed respondents are Hynix Semiconductor Inc. (South Korea); Hynix Semiconductor America, Inc. (US); Elpida Memory Inc. (Japan); Elpida Memory (USA) Inc. (US); Acer Inc. (Taiwan); Acer America Corp. (US); ADATA Technology Co., Ltd. (Taiwan); ADATA Technology (U.S.A) Co., Ltd. (US); Asustek Computer Inc. (Taiwan); Asus Computer International Inc. (US); Dell, Inc. (US); Hewlett-Packard Company (US); Kingston Technology Co., Inc. (US); Logitech International S.A. (Switzerland); Logitech, Inc. (US); Pantech Co, Ltd. (South Korea); Pantech Wireless Inc. (US); Best Buy Co., Inc. (US); and Wal-Mart Stores, Inc. (US).
The Commission issued notice of its determination not to review ALJ Charneski's initial determination granting Complainant Lexmark International's motion for summary determination of violation of section 337 and requesting issuance of a general exclusion order and cease and desist orders against 23 defaulting respondents, including Nectron International, Inc., Ninestar Image Co., Ziprint Image Corporation and Quality Cartridges, Inc. The investigation is Inv. No. 337-TA-740, Certain Toner Cartridges and Components Thereof.
The Commission issued notice of its determination not to review ALJ Rogers' initial determination terminating Inv. No. 337-TA-735, Certain Flash Memory Devices and Products Containing Same, on the basis of a settlement agreement between Complainant Spansion LLC and Respondents Samsung Electronics Co. Ltd, Samsung Electronics America, Inc., Samsung International, Inc., Samsung Semiconductor Inc., Samsung Telecommunications America, Apple Computer, and others. The Commission terminated the investigation.
ALJ Rogers issued an initial determination granting Complainants Remy International, Inc. and Remy Technologies LLC's unopposed motion to terminate Inv. No. 337-TA-755, Certain Starter Motors and Alternators, as to Respondent Linhai Yongei on the basis of a settlement agreement reached between the parties.
ALJ Bullock denied Respondents International Business Machines, BDT AG and BDT-Solutions GmbH & Co. (among others)'s motion for summary determination that the accused products do not infringe asserted claim 15 of U.S. Patent No. 6,353,581, either literally or under the doctrine of equivalents. ALJ Bullock also denied Respondents' motion for summary determination that the accused products do not infringe claims 1-2, 5-7, 9-10, 12, and 16 of the '581 patent. In both orders issued, ALJ Bullock found that genuine issues of material fact existed that precluded the issuance of summary determinations. The Complainant is Overland Storage, Inc. The investigation is 337-TA-746, Certain Automated Library Devices.
The Commission issued notice of its determination not to review ALJ Bullock's initial determination granting a joint motion by complainant Apple, Inc. and Respondent Nokia Corporation to terminate in its entirety Inv. No. 337-TA-704, Certain Mobile Communications and Computer Devices and Components Thereof.
ALJ Gildea issued an Order in Inv. No. 337-TA-736, Certain Wind and Solar Powered Light Posts and Street Lamps requiring the parties to prepare for trial despite a prior order suspending the investigation. On May 20, the parties had submitted an unopposed joint motion to suspend the procedural schedule, claiming that the parties had reached an agreement that would resolve the issues in the Investigation. ALJ Gildea granted the parties' motion. As trial approached, the parties informed ALJ Gildea that they would not be be in a position to advise the ALJ whether settlement had been finalized until August 12, 2011. ALJ Gildea ordered resumption of the procedural schedule, finding this delay "unacceptable," and noting that the Commission Rules require parties to "make every effort" to avoid delay. ALJ Gildea set July 26, 2011 as the deadline for pre-hearing submission and set August 9, 2011 as the hearing date.
The Commission instituted Inv. No. 337-TA-786, Certan Integrated Circuits, Chipsets, and Products Containing the Same, Including Televisions. The complainant is Freescale Semiconductor, Inc. of Austin, Texas. Respondents are Funai Electric Co. Ltd., Funai Corporation, Inc., MediaTek Inc. and Zoran Corporation. Freescale's complaint alleged violations of 17 U.S.C. section 337 based on the importation into the United States, the sale for importation, and the sale within the United States after importation of certain integrated circuits, chipsets, and products containing the same including televisions by violation of certain claims of U.S. Patent No. 5,467,455. The Commission also issued notice that this Investigation has been assigned to ALJ Rogers.
ALJ Rogers issued the public version of his May 12 Initial Determination on Violation of Section 337 and Recommended Determination on Remedy and Bond in Inv. No. 337-TA-717, Certain Digital Imaging Devices and Related Software. ALJ Rogers found that a violation of Section 337 was not found in connection with U.S. Patent No. 6,031,964 or U.S. Patent No. RE38,911. ALJ Rogers further found that while a domestic industry did not exist as to the '964 patent, a domestic industry did exist as to the '911 patent. The Complainant is Apple Inc.; the Respondent is Eastman Kodak Company. (PDF)
Apple Inc. filed a new complaint in the ITC on July 8, 2011 naming HTC Corp., HTC America Inc., and Exedea Inc. as respondents. The Complaint relates to Portable Electronic Devices and Related Software.
On July 8, 2011 ALJ Rogers granted Thompson/Center Arms Company, Inc.’s motion to terminate Inv. No. 337-TA-777, Certain Muzzle-Loading Firearms and Components Thereof, with respect to U.S. Patent No. 7,908,781 and U.S. Patent No. 7,140,138. The investigation remains pending with regard to all other patents at issue. The respondents in this investigation are Ardesa, S.A.; Black Power Products, Inc.; Dikar Sociedad Cooperativa Limitada; Bergara Barrels Europe; Connecticut Valley Arms; and Bergara Barrels North America.
On July 8, 2011, ALJ Gildea set a sixteen month target date of November 7, 2012 for Inv. No. 337-TA-783, Certain GPS Navigation Products, Components Thereof, and Related Software. The final initial determination will be due no later than July 6, 2012. ALJ Gildea also set a due date for a proposed joint procedural schedule of August 9, 2011 and set the Ground Rules for the investigation. Notably, the Ground Rules for this investigation differ from Ground Rules issued by ALJ Gildea in other investigations. Honeywell International, Inc. is the complainant and Furuno Electric Co., Ltd. and Furuno U.S.A. and Furuno U.S.A. are the respondents in this investigation.
The Commission granted a joint motion filed by complainants Nokia Corporation and Nokia Inc. (collectively “Nokia”) and respondent Apple Inc. (“Apple”) to terminate Inv. No. 337-TA-701, Certain Electronic Devices, Including Mobile Phones, Portable Music Players, and Computers, on the basis of a settlement agreement. On March 25, 2011 the ALJ issued a final ID finding no violation of section 337 by Apple. On May 26, 2011 the Commission determined to review the ID in part. Thereafter, Nokia and Apple filed their joint motion to terminate, which was supported by the Commission investigative attorney. The Commission’s decision terminates this investigation in its entirety.
On July 7, 2011, the Commission granted a consent motion filed by complainant, Samsung Electronics Co. (“Samsung”) in Inv. No. 337-TA-685, Certain Flash Memory and Products Containing Same, to terminate the investigation in its entirety on the basis of settlement. The only respondents remaining in the investigation were Spansion LLC, Spansion Inc. (collectively “Spansion”), and D-Link. The ALJ had previously issued a final ID finding a violation of Section 337 by respondents. Respondents and Commission Staff separately requested review of the ALJ’s determination and the Commission issued notice of its determination to review on May 5, 2011.
On July 7, 2011 ALJ Bullock issued an Initial Determination granting complainant Leviton Manufacturing Co., Inc.'s (“Leviton”) motion to terminate Inv. No. 337-TA-739, Certain Ground Fault Circuit Interrupters and Products Containing the Same, as to Respondent, Coleman Cable. Coleman Cable was added to the investigation on May 19, 2010 after its acquisition of Respondent, The Designers Edge (“TDE”). Thereafter, Leviton learned that Coleman Cable had not purchased any of TDE’s GFCI assets as part of the acquisition and as a result filed its motion to terminate the investigation as to Coleman Cable.
On July 6, 2011, ALJ Gildea granted a joint motion filed by complainant Ogma, LLC (“Ogma”) and Respondent Vivitek Corporation (“Vivitek”) to terminate Inv. No. 337-TA-773, Certain Motion-Sensitive Sound Effects Devices and Image Display Devices and Components And Products Containing Same as to Vivitek by reason of indirect license agreements with non-party RPX Corporation. The Commission Investigative Staff supported the parties’ motion. The Investigation remains pending against all other respondents.
On July 5, 2011, ALJ Charneski granted a joint motion filed by complainants Apple, Inc. and NeXT Software, Inc. (“Apple”) and respondents Nokia Corporation and Nokia Inc. (“Nokia”) to terminate Inv. No. 337-TA-710, Certain Personal Data And Mobile Communications Devices and Related Software, as to Nokia based on a Settlement Agreement and License Agreement. The Commission Investigative Staff supported the motion.
On July 5, 2011 Apple, Inc. filed a complaint under section 337 regarding Certain Electronic Digital Media Devices and Components Thereof. The docket number is 2827, and the proposed respondents are Samsung Electronic Co., Ltd., Samsung Electronics America Inc., and Samsung Telecommunications America LLC. Apple alleges that Samsung products infringe seven Apple patents.
On June 30, 2011, the Commission gave notice of its determination to affirm in part, reverse in part, and remand in part, the final ID of the presiding ALJ’s finding of no violation of Section 337 existed in Inv. No. 337-TA-703, Certain Mobile Telephones and Wireless Communication Devices Featuring Digital Cameras and Components Thereof. The Commission decided to modify certain of the ALJ’s claim constructions. The Commission remanded the question of infringement of the claim limitations in view of some of the modified constructions. While on remand, the Commission stated that it believed it to be appropriate to provide the ALJ and respondents the opportunity to revisit invalidity.
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