ITC Blog: ITC 337 Update

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 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 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, 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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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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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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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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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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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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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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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 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 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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