Complainant OSRAM AG Loses Summary Determination Motion to Establish Satisfaction of Domestic Industry Requirement at the ITC Because It Could Not Establish Economic Prong

May 31, 2012

Complainant OSRAM AG ("OSRAM") moved for a summary determination that it had satisfied the economic prong of the domestic industry requirement. Respondent LG Electronics, Inc. and other LG entities (collectively, LG) opposed the motion.

OSRAM moved for summary determination on the ground that it has devoted substantial resources in the United States, including engineering and research of products that incorporate LEDs. As stated by the Administrative Law Judge, "OSRAM contends that it satisfies the economic prong of the domestic industry requirement as set forth in 19 U.S.C. ยง 1337(a)(3)(C) for U.S. Patent Nos. 7,151,283 ("the '283 patent") and 7,271,425 ("the '425 patent"). OSRAM states that it has devoted substantial resources in the United States, including investments in domestic engineering and research and development ("R&D") of products incorporating LEDs, at its two domestic subsidiaries, OSRAM Opto Semiconductors, Inc. and OSRAM Sylvania Inc. Mem. at 1. OSRAM further states that these investments relate to work on OSRAM LEDs with chip level conversion technology ("OSRAM LEDs with CLC"), which OSRAM asserts are covered by claims of the '283 patent, and OSRAM's Advanced Power TOPLEDs ("OSRAM APT LEDs"), which OSRAM asserts are covered by claims of the '425 patent Id OSRAM summarizes its investments in domestic engineering and R&D from October 2009 through September 2011."

LG opposed the motion by asserting that OSRAM had not established that the products containing OSRAM LEDs were articles protected by the patents-in-suit. "In opposition to OSRAM's motion, LG does not contest that OSRAM has made the claimed investments for products containing OSRAM LEDs with CLC and OSRAM APT LEDs, nor does LG dispute the Statement of Material Facts filed by OSRAM in support of its motion. LG instead argues that OSRAM has not shown that products containing OSRAM LEDs with CLC and OSRAM APT LEDs are in fact articles protected by the patents-in-suit, and that OSRAM has provided evidence only that the Golden Dragon Plus LUW W5AM (an OSRAM LED with CLC) and the LCW G6CP (an OSRAM APT LED) practice the patents-in-suit. Opp. at 4-5. LG argues that OSRAM has not shown that these two products are representative of all OSRAM LEDs with CLC and OSRAM APT LEDs, and that OSRAM therefore cannot rely on its domestic investments in these two product lines to establish satisfaction of the economic prong. Opp. at 5."

The Administrative Law Judge found that OSRAM had not overcome the disputed issues of fact as to whether OSRAM satisfied the economic prong of the domestic industry requirement with respect to articles protected by the patents-in-suit. Accordingly, the Administrative Law Judge concluded that there were disputed issues of fact and denied the motion for summary determination.

In the Matter of Certain Light-Emitting Diodes and Products Containing the Same, Inv. No. 337-TA-784 (ITC April 13, 2012) (Administrative Law Judge David P. Shaw)

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