ITC Blog: ITC 337 Update

On December 1, 2011, the Commission issued the public version of its opinion in Certain Inkjet Ink Cartridges with Printheads and Components Thereof, Inv. No. 337-TA-723. In that opinion, the Commission reversed the presiding ALJ’s finding that Complainants Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. (collectively, “HP”) failed to establish that Respondents Asia Pacific Microsystems, Inc. (“APM”) induced infringement of the asserted patents. The Commission held that the intent element required for an inducement of infringement claim was satisfied because “prior to obtaining actual knowledge of the asserted patents, APM willfully blinded itself to the asserted patent and to the infringing conduct, and that even after obtaining actual knowledge of the asserted patent, APM continued to induce infringement of the patents.” Additionally, even though the ALJ found that HP failed to provide sufficient evidence to demonstrate that APM had knowledge of the asserted patent prior to the investigation, the Commission held that knowledge requirement was satisfied because “APM certainly had knowledge of the asserted patents and the allegations of infringement against its ICs once it was served with HP’s Complaint.” The Commission further held that APM waived any argument that there was insufficient proof of post-complaint direct infringement.

Based on its finding of induced infringement, the Commission determined to issue a general exclusion order directed to infringing articles in this investigation because the evidence established that it is difficult to identify the source of infringing products, making a general exclusion order necessary to prevent circumvention of a limited exclusion order. For instance, the Commission found that “foreign manufacturers package their products in unmarked, generic or reseller branded packaging that lacks any markings to identify their origin.”

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On December 1, 2011, the Commission issued the public version of its opinion in Certain Inkjet Ink Cartridges with Printheads and Components Thereof, Inv. No. 337-TA-723. In that opinion, the Commission reversed the presiding ALJ’s finding that Complainants Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. (collectively, “HP”) failed to establish that Respondents Asia Pacific Microsystems, Inc. (“APM”) induced infringement of the asserted patents. The Commission held that the intent element required for an inducement of infringement claim was satisfied because “prior to obtaining actual knowledge of the asserted patents, APM willfully blinded itself to the asserted patent and to the infringing conduct, and that even after obtaining actual knowledge of the asserted patent, APM continued to induce infringement of the patents.” Additionally, even though the ALJ found that HP failed to provide sufficient evidence to demonstrate that APM had knowledge of the asserted patent prior to the investigation, the Commission held that knowledge requirement was satisfied because “APM certainly had knowledge of the asserted patents and the allegations of infringement against its ICs once it was served with HP’s Complaint.” The Commission further held that APM waived any argument that there was insufficient proof of post-complaint direct infringement.

Based on its finding of induced infringement, the Commission determined to issue a general exclusion order directed to infringing articles in this investigation because the evidence established that it is difficult to identify the source of infringing products, making a general exclusion order necessary to prevent circumvention of a limited exclusion order. For instance, the Commission found that “foreign manufacturers package their products in unmarked, generic or reseller branded packaging that lacks any markings to identify their origin.”

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The Commission has declined to enter a consent order, and instead terminated on the basis of a settlement agreement, Inv. No. 337-TA-568, Certain Products and Pharmaceutical Compositions Containing Recombinant Human Erythropoetin. On May 12, 2006 complainant Amgen Inc. filed a complaint against respondents Roche Holding Ltd.; Roche Diagnostics GmbH; and Hoffman La Roche Inc. (collectively “Roche”), which resulted in the institution of the investigation. After separate remands by the Federal Circuit and a parallel civil action involving many of the same patents, on December 18, 2009, the private parties executed a settlement agreement. The parties also agreed to a consent order in the parallel district court action.

On December 22, 2009, Amgen moved to terminate the investigation by entry of an exclusion order based on preclusion caused by the district court judgment. On March 11, 2011, the Commission issued an order to show cause in which it noted that Amgen’s request of an exclusion order appeared to contravene the Commission’s longstanding policy of not reaching an issue of violation in terminating investigations based on settlement agreements. Amgen and Roche subsequently filed a joint response seeking a consent order, rather than an exclusion order.

In its current order, the Commission elected to terminate the investigation based on settlement agreement and declined to exercise its discretion to issue a consent order. The Commission cited several reasons for its opinion. First, the consent order was not pursued by the parties at the time of settlement. Second, it noted the Commission appears to lack jurisdiction to enforce the settlement agreement between the parties, and would therefore likely lack jurisdiction to enforce a consent order to the extent the settlement agreement was involved. Finally, the Commission noted that the proposed consent order contained language typical of cease and desist orders that is not routinely seen in consent orders.
 

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On September 15, 2011, the Commission determined to broadly review most of ALJ Charneski’s findings of violations, no violations, and validity in Inv. No. 337-TA-710, Certain Personal Data and Mobile Communications Devices and Related Software. The complainant is Apple, Inc. of California, et al., and the respondents are HTC Corp. of Taiwan, et al. and Exedia, Inc. of Texas. ALJ Charneski's initial determination found violations of Section 337 as to two of the four patents-in-suit, no violation as to the other two patents, and that all four patents are valid. The Commission determined to review the claim constructions for terms in each of the four patents, as well as the finding of violation for two of the patents, the finding of no violation for two of the patents, the findings on domestic industry for three of the patents, and the findings of validity as to all four patents.

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On September 13, 2011, in Inv. No. 337-TA-650, the Commission issued a general exclusion order following a remand from the Federal Circuit in John Mezzalingua Associates v. Int’l Trade Comm’n, 2011 U.S. App. LEXIS 8806 (Fed. Cir. Apr. 28, 2011).  The Federal Circuit's opinion reversed the Commission’s prior finding of no violation due to no domestic industry. The complainant is John Mezzalingua Associates, Inc., the respondents are GEM Electronics and Fu Ching Technical Industry Co., Ltd., and the technology at issue is coaxial cable connectors.  The general exclusion order prohibits the entry of unlicensed coaxial cable connectors that infringe claims 1 and 5 of U.S. Pat. No. 5,470,257.

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The U.S. Congress has passed the most expansive piece of patent reform legislation in decades, and enactment awaits only President Obama’s signature, which is expected shortly. The new law includes revisions that affect both patent prosecution strategy and patent litigation strategy.

The major aspects of the legislative changes are presented here.

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Complainant Otter Products, LLC and Respondent Hardy Candy Cases LLC d/b/a/ Gumdrop LLC ("Hard Candy") filed a joint motion to terminate Respondent Hard Candy on the basis of a consent order in Inv. No. 337-TA-780, Certain Protective Cases and Components Thereof.  In the consent order stipulation filed with the parties' motion, Hard Candy stipulated and agreed that it would not import the protective cases and components thereof accused of infringement.

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 Ogma and Respondents LEGO A/S dba LEGO Group and LEGO Systems, Inc. (“LEGO”) filed a joint motion under Rule 210.21(a)(1) to terminate Investigation No. 337-TA-773, Certain Motion-Sensitive Sound Effects Devices and Image Display Devices and Components and Products Containing Same (“773 Investigation”) as to LEGO based Ogma’s withdrawal of its complaint with respect to LEGO.  Ogma’s withdrawal of its complaint against LEGO is based on LEGO’s representations that it does not import the LEGO NXT Accelerometer Sensor into the United States.  Ogma had accused LEGO’s combination of its NXT Accelerometer Sensor with LEGO’s Mindstorm NXT 2.0 product of infringing the asserted patent.

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ALJ Rogers issued his Initial Determination in Inv. No. 337-TA-723, Certain Inkjet Ink Cartridges With Printheads and Components Thereof. ALJ Rogers found that Respondents PTC Holdings Limited of Kowloon and Microjet Technology Co., Ltd. infringe the remaining five patents-in-suit. Respondent Asia Pacific Microsystems, Inc. was found not to infringe any of the patents-in-suit. ALJ Rogers found that a domestic industry exists for all patents and all patents had previously been found not invalid on summary determination. Respondent Microjet was found to be in default in a prior Initial Determination. ALJ Rogers recommended a general exclusion order and that bond be set at 100% of the entered value of the imported infringing goods.

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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.
 

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On April 22, the Commission issued a final determination of no violation in Inv. No. 337-TA-692, Certain Ceramic Capacitors and Products Containing Same, and terminated the investigation.  The Commission's final determination resulted from a February 23 determination to review ALJ Gildea's December 22, 2009 initial determination finding no violation of Section 337 by Respondents Samsung Electro-Mechanics Co., Ltd. and Samsung Electro-Mechanics, Inc. with respect to U.S. Patent No. 6,266,229.  The Commission did not review the ALJ's determination that there was no violation of the remaining two patents, U.S. Patent Nos. 6,014,309 and 6,243,254.

In its final determination, the Commission reversed the ALJ's finding that the '229 patent was not obvious over the asserted prior art, and found that the applicant admitted prior art did constitute prior art against the '229 patent.  A public version of the Commission's determination will be published shortly.  

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On March 30, ALJ Gildea issued the public version of his March 16, 2011 order in Inv. No. 337-TA-724, Certain Electronic Devices with Image Processing Systems, Components Thereof and Associated Software, denying Respondent Apple, Inc.'s motion to preclude evidence regarding domestic industry from Complainants S3 Graphics Co. and S3 Graphics, Inc.

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On January 31, 2011, respondent Acecom, Inc. – San Antonia (d/b/a inksell.com) submitted a notice of election to default in Inv. No. 337-TA-740, Certain Toner Cartridges and Components Thereof. The complainant in this investigation is Lexmark International, Inc.

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On January 28, 2011, the ITC issued a general exclusion order with respect to claims 6 and 9 of U.S. Patent No. 6,089,687 and claims 1, 5, and 6 of U.S. Patent No. 6,264,301, and a cease and desist order against respondent Mextec Group, Inc. d/b/a Mip America Ltd. of Miami, Florida with respect to the same claims in Inv. No. 337-TA-691, Certain Inkjet Ink Supplies and Components Thereof. These orders are a result of a complaint filed by Hewlett-Packard Company of Palo Alto, California where the seven respondents defaulted.

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On January 28, 2011, respondent IJSS, Inc. submitted its notice of election to default in Inv. No. 337-TA-740. The investigation was brought by complainant Lexmark International, Inc.

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On January 25, 2011, the Commission reversed ALJ Robert K. Rogers, Jr.’s final initial determination finding that respondent Oki Data Corp. and Oki Data Americas violated Section 337 by reason of infringing U.S. Pat. No. 5,863,690, in Certain Printing and Imaging Devices and Components Thereof. The complainant was Ricoh Company, Ltd., et al. Specifically, the Commission reversed the ALJ’s finding that Ricoh satisfied the economic prong of the domestic industry requirement as to the ‘690 patent. Furthermore, the Commission reversed the ALJ’s finding that certain claims of the ‘690 patent are not anticipated by prior art.

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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.
 

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Complainant eInstruction Corp. filed a motion to terminate the Investigation based on a settlement agreement between eInstruction and Promethean Inc., Promethean Technology Shenzhen Ltd., and Promethean Ltd. (collectively "Promethean") in In the Matter of Certain Collaborative System Products and Components Thereof (II), Inv. No. 337-TA-728.  The specific terms of the settlement agreement were redacted from the public version of eInstruction's motion.

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On December 23, 2010, ALJ Robert K. Rogers issued an initial determination of infringement of claims 2-6 and 8 of U.S. Pat. No. 7,364,942 by respondents Knowles Electronics LLC.  ALJ Rogers also determined that there was non-infringement of claim 1 of the '942 patent, as well as non-infringement of U.S. Pat. No. 7,220,614. In the Matter of Certain MEMS Devices and Products Containing the Same, Inv. No. 337-TA-700. The complainant is Analog Devices, Inc.

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The Federal Circuit reversed the Commission’s determination of violation under section 337 and vacated the corresponding exclusion orders and cease-and-desist orders today in its opinion Lucky Litter LLC v. ITC. As Inv. No. 337-TA-625, Certain Self-Cleaning Litter Boxes And Components Thereof, the Commission had previously ruled in favor of complainants Applica Consumer Products, Inc. and Waters Research Company, that respondents Lucky Litter LLC and OurPet’s Company’s self-cleaning letter boxes violated section 337.

At issue in the case is U.S. Patent No. RE 36,847 (‘847 patent). The Commission held that the respondent’s product infringed claim 33 of the ‘847 patent. The Federal Circuit held that the Commission erred in construing claim 33 to include a “cat exit,” which was contrary to the plain meaning of the claim. The court further held that when properly construed without this limitation, Claim 33 would have been obvious. Intervenor Applica proffered additional grounds to uphold the exclusion order, which the court rejected as without merit.
 

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The Commission has issued a general exclusion order in 337-TA-678, Certain Energy Drink Products.  After settlement agreements were reached and the investigation terminated as to four respondents on January 20, 2010, the remaining respondents defaulted, and complainants Red Bull GmbH and Red Bull North America sought summary determination and a general exclusion order. The Commission's ruling prohibits the unlicensed entry into the U.S. of energy drink products that infringe Trademark Registration Nos. 3,092,197; 2,946,045; 2,994,429; 3,479,607; Copyright Registration No. VA0001410959; or any marks or designs that are confusingly similar or misleading as to source or origin.  The Commission also terminated the investigation.

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On August 24, 2010, the Court of Appeals for the Federal Circuit issued an order granting appellant Amsted Industries' motion to dismiss its appeal of the Commission's determination in Inv. No. 337-TA-655, Certain Cast Steel Railway Wheels, Certain Processes for Manufacturing or Relating to Same and Certain Products Containing Same.

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On August 19, 2010, complainant Rambus, Inc. filed a notice of appeal with the Federal Circuit challenging the Commission’s determination in Inv. No. 337-TA-661, Certain Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers and Products Containing Same.  The appeal is Federal Circuit Docket No. 2010-1483, Rambus v. ITC.   The Commission found that respondents infringed three of the five patents asserted by Rambus, but that two of the asserted patents, U.S. Patent Nos. 7,117,998 and 7,210,016, were invalid.  Additionally, the Commission entered a limited exclusion order and a cease and desist order against Respondents NVIDIA, Hewlett-Packard, ASUS Computer International, Palit Multimedia, MSI Computer Corp., Microstar International, EVGA Corp., DiabloTek, Inc., Biostar Microtech and BFG Technologies.

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On August 18, 2010, complainants O2 Micro, Inc. and O2 Micro Int’l, Ltd. filed a notice of appeal with the Federal Circuit challenging the Commission’s determination in Inv. No. 337-TA-666, Certain Cold Cathode Fluorescent Lamp Inverter Circuits and Products Containing the Same.  The appeal is Federal Circuit Docket No. 2010-1482, O2 Micro Int’l, Ltd. v. ITC.  On July 19, 2010 the Commission held that none of the products manufactured by respondents Monolithic Power Systems, ASUSTek Computer, Asus Computer International, and Microsemi infringed U.S. Patent No. 7,417,382.

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The Commission has issued its public opinion supporting its finding of no violation of Section 337 in Inv. No. 337-TA-670, Certain Adjustable Keyboard Support Systems and Components Thereof.  The complainant in the case was Humanscale Corp., and the respondents were CompX International and Waterloo Furniture Components Ltd.  On February 23, 2010, the ALJ issued his final ID, finding that the complainants’ “Wedge-Brake” products did not infringe the asserted claims of U.S. Patent No. 5,292,097, but that their “Brake-Shoe” products did infringe the asserted claims.  The ALJ further found certain asserted claims invalid.  On June 23, 2010, the Commission issued notice of its decision to reverse the ALJ’s finding and terminate the investigation with a finding of no violation due to no infringement and invalidity.  The Commission determined that the “Brake-Shoe” products did not infringe under its construction of “frictionally interengagable.”  The Commission affirmed that claim 7 was invalid and further found that claim 34 was invalid as obvious.

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ALJ Charneski issued the initial determination in Inv. No. 337-TA-680, Certain Machine Vision Software, Machine Vision Systems, and Products Containing Same.  ALJ Charneski found that Complainants Cognex Corp. and Cognex Technology and Investment Corp. failed to establish that Respondents MVTec Software GmbH, MVTec LLC, Omron Corp., Resolution Technology, Inc., Visics Corp., Daiichi Jitsugyo Viswill Co., Ltd, and Daiichi Jitsugyo (America) infringed U.S. Patent Nos. 7, 016,539 (‘539 patent) and 7,065,262 (‘262 patent).  ALJ Charneski further held that ‘539 patent was not anticipated by the prior art, that the ‘262 patent was anticipated by the prior art, and that both the ‘539 and ‘262 patents were invalid for failing to claim patentable subject matter under 35 U.S.C. §101.

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On July 19, the Commission issued its final determination not to modify the limited exclusion order entered in Inv. No. 337-TA-564, Certain Voltage Regulators, Components Thereof, and Products Containing Same. The original investigation, which began in March 2006, accused certain products of Advanced Analogic Technologies of infringing U.S. Patent Nos. 6,411,531 and 6,580,258.  After an investigation, the Commission issued a limited exclusion order against certain of Advanced Analog's products that were found to infringe the '258 patent. 

The current enforcement proceeding was begun in October 2008 based on a complaint filed by the original complainant, Linear Technology Corp. On March 18, 2010, the presiding ALJ found that Advanced Analogic's accused products violated the limited exclusion order in place.  However, the Commission determined that the products at issue in the enforcement proceeding are already covered by the existing exclusion order, and therefore modification of the order was not necessary.
 

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ALJ Charneski has issued an initial determination in Inv. No. 337-TA-680, Certain Machine Vision Software, Machine Vision Systems, And Products Containing Same, in favor of the respondents.  In a notice of the initial determination, issued July 16, the ALJ found that no accused product infringed the two patents at issue in the case, U.S. Patent Nos. 7,016,539 and 7,065,262.  The ALJ further found that claims 1, 12, 13, 28 and 29 of the '262 patent were anticipated by the prior art, and that all of the asserted claims in both patents were invalid under 35 U.S.C. Section 101.  A public version of the initial determination should be available within the next few days. 

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The Commission has found no violation of Section 337 in Inv. No. 337-TA-670, Certain Adjustable Keyboard Support Systems and Components Thereof, and terminated the investigation.  The complainant in the case was Humanscale Corp., and the respondents were CompX International and Waterloo Furniture Components Ltd.  On February 23, 2010, the ALJ issued his final ID, finding that the complainants' "Wedge-Brake" products did not infringe the asserted claims U.S. Patent No. 5,292,097, but that their "Brake-Shoe" products did infringe the asserted claims.  However, the ALJ further found that the asserted claims of the patent were invalid.  The Commission, after reviewing the parties submissions, agreed with the ALJ that the asserted claims were invalid, but found that both the "Wedge-Brake" and "Brake-Shoe" products also did not infringe the asserted claims.

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Hewlett-Packard Co. ("HP") filed a motion for partial termination based on the withdrawal of claims 7 and 10 of U.S. Patent No. 6,089,687 (" '687 Patent") and claims 2 and 3 of U.S. Patent No. 6,264,301 (" '301 Patent") in Inv. No. 337-TA-691, Certain InkJet Ink Supplies and Components Thereof. On March 7, 2010 HP filed a motion for summary determination that a domestic industry exists and that there have been violations of Section 337 by seven defaulting respondents. The Commission Investigative Staff's response concluded that the motion should be granted with respect to claims 6 and 7 of the '687 Patent and claims 1, 5, and 6 of the '301 Patent. The Staff, however, concluded that HP's motion should be denied as to claims 7 and 10 of the '687 Patent and claims 2 and 3 of the '301 Patent. Today's motion seeks to remove those claims from the Investigation.

Unopposed Motion to Terminate Investigation as to Certain Claims (.PDF)

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ALJ Gildea has released the public version of his denials of a summary determination that one of the claims at issue in 337-TA-692, Certain Ceramic Capacitors and Products Containing The Same, is invalid.  Both the respondents and the OUII Staff had moved, based on different pieces of prior art, that the claims at issue in the investigation were invalid based on either anticipation or obviousness.  In the two denials the ALJ disagreed, finding that the Staff's motion contained a number of factual statements that were either wrong, or at the least established the existence of a genuine dispute concerning a material fact.  The ALJ also found that the complainant's response to the respondents' motion either failed to meet the clear and convincing evidence standard, or established there was a genuine dispute concerning the references set forth by respondents.

Denial of Motion for Summary Determination of Invalidity #1 (.PDF)

Denial of Motion for Summary Determination of Invalidity #2 (.PDF)

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ALJ Gildea released the public version of his initial determination that Complainant LG has satisfied the economic prong of the domestic industry requirement in 337-TA-687, Certain Video Displays, Components Thereof, and Products Containing Same. The ALJ determined that LG's investments in servicing, repair and support satisfied the requirement that there must be an industry in the United States protected by the patents at issue, and rejected the respondent's arguments that a selection of representative products could not be used to satisfy the domestic industry requirement, and that additional discovery was necessary to rebut LG's factual contentions.

ID Granting Summary Determination Satisfying Economic Prong of Domestic Industry Requirement (.PDF)

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The ITC issued notice that it will not review a final ID of finding a violation of section 337 in Inv. No. 337-TA-669, In the Matter of Certain Optoelectronic Devices, Components Thereof, and Products Containing the Same, and requested written submissions regarding remedy, bonding, and the public interest.
The complaint alleges violations of section 337 by reason of infringement of certain claims of U.S. Patent Nos. 5,359,447 and 5,761,229. Complainants are Avago Technologies Fiber IP (Singapore) Pte. Ltd. of Singapore; Avago Technologies General IP (Singapore) Pte. Ltd. of Singapore; and Avago Technologies Ltd. of San Jose, California. The sole Respondent is Emcore Corporation.
In his final ID, dated March 12, 2010, the ALJ found that Emcore violated section 337 by infringing one or more of claims 1, 2, 3, and 5 of the ‘447 patent. The ALJ found no violation of section 337 with respect to the ‘229 patent. Emcore and the IA filed petitions for review of the final ID on March 29, 2010. The Commission determined not to review the final ID, but requested written submissions from parties to the investigation, interested government agencies, and any other interested parties on the issues of remedy, the public interest, and bonding. Any such submissions should address the recommended determination on remedy and bonding provided by the ALJ.

Commission Decision Not to Review (.PDF)

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On May 4, 2010, the Office of the Secretary issued a Notice in the Federal Register announcing a review by the Commission of a portion of the final initial determination in Inv. No. 337-TA-670, In the Matter of Certain Adjustable Keyboard Support Systems and Components Thereof.  Chief ALJ Luckern issued a final initial determination on February 23, 2010, finding that respondents CompX International, Inc. and Waterloo Furniture Components Ltd. did not violate section 337 by infringement of U.S. Patent No. 5,292,097 with respect to their “Wedge-Brake” products, but did violate section 337 with respect to their “Brake-Shoe” products.  Complainants Humanscale Corporation, the respondents, and the Commission investigative attorney filed petitions for review of the ALJ’s final initial determination on March 9, 2010.  The Commission determined to review certain claim constructions, the infringement determination concerning the “Brake-Shoe” products, the invalidity determination for anticipation and obviousness of claim 7 of the patent, and the denied defense of intervening rights.

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On May 3, 2010, ALJ Charneski denied respondent MVTec Software GmbH (“MVTec”) its motion for summary determination that each of the asserted claims of U.S. Patent Nos. 7,016,539 and 7,065,262 are invalid under 35 U.S.C. § 101 for failure to claim patent-eligible subject matter in Inv. No. 337-TA-680, In the Matter of Certain Machine Vision Software, Machine Vision Systems, and Products Containing Same. MVTec based its motion on the Federal Circuit In re Bilski decision, and the Commission Investigation Staff supported the motion. ALJ Charneski held summary determination was inappropriate in light of an undeveloped record and the impending Supreme Court decision regarding Bilski.  (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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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 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 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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On March 31, 2010, the Commission issued notice of its determination that a violation of section 337 occurred by Hanjiang Fei Yu Electronics Equipment Factory of China, Zhonguang Electronics of China, Yangzhou Zhongguang Electronics Co. of China and Yangzhou Zhonguage Foreign Trade Co. Ltd. of China with respect to U.S. Patent Nos. 6,558,194, and D519,076 in Inv. No. 337-TA-650, In the Matter of Certain Coaxial Cable Connectors and Components Thereof and Products Containing Same. The Commission determined to issued a general exclusion order and a limited exclusion order, as well as a remand order remanding the portion of the investigation relating to D440,539 to the ALJ for further proceedings. The Commission also determined to extend the target date of the investigation to June 1, 2010. (PDF)

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ALJ Rogers denied Complainants’ motion to preclude Respondents from relying on prior art in Inv. No. 337-TA-686, In the Matter of Certain Bulk Welding Wire Containers and Components Thereof and Welding Wire.  (PDF)

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On November 12, 2009, ALJ Rogers issued an initial determination granting complainants The Lincoln Electric Company and Lincoln Global, Inc.’s motion to terminate the investigation in part by withdrawing all allegations relating to U.S. Patent Nos. 6,648,141; 6,913,145; 7,398,881 and 7,410,111. Respondents Hyundai Welding Co., Ltd., Kiswel Co. Ltd., The ESAB Group, Inc., Sidergas SpA, and Atlantic China Welding Consumables, Inc. did not oppose the motion. ALJ Rogers denied respondent Sidergas’s motion for summary determination of invalidity with regard to complainants’ four patents, due to their removal from Inv. No. 337-TA-686, In the Matter of Certain Bulk Welding Wire Containers and Components Thereof and Welding Wire. (PDF)

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On September 29, 2009, Chief ALJ Luckern granted third party Alston & Bird, LLP’s motion to quash the subpoena served on it by respondents CompX International, Inc. and Waterloo Furniture Corporation Ltd. in Inv. No. 337-TA-670, In the Matter of Certain Adjustable Keyboard Support Systems and Components Thereof. Chief ALJ Luckern found that the discovery sought was not relevant, that the potential hardship to the third party was significant, and that respondents failed to show sufficient need for the discovery request. (PDF)

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On September 24, 2009, the Commission issued a notice that it would review in part the final initial determination of ALJ Gildea in Inv. No. 337-TA-636, In the Matter of Certain Laser Imageable Lithographic Printing Plates. The Commission determined to modify the ALJ’s claim construction analysis, but to affirm the ALJ’s determination of violation of section 337. (PDF)

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On September 21, 2009, the Commission issued a notice affirming the initial determination by ALJ Gildea that section 337 was violated, terminating the investigation, and issuing a general exclusion order in Inv. No. 337-TA-643, In the Matter of Certain Cigarettes and Packaging Thereof. (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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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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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 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 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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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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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 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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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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