Articles Posted in ITC

Published on:

by

The ALJ terminated the ITC investigation upon granting respondent’s motion for summary judgment for lack of domestic industry, finding that the complainant’s (a licensing entity) patent-related activities were solely revenue-driven rather than production driven. Optical Disc Drives, Components Thereof, and Products Containing the Same, 337-TA-897 (ITC July 30, 2014, Order) (Lord, ALJ). This distinction was key to the ALJ’s ruling.

To satisfy the so-called “economic prong” of the domestic industry requirement under 19 U.S.C. § 1337(a)(3), a complainant must show that an industry in the United States exists with respect to the articles protected by the asserted patent in the form of:

(A) significant investment in plant and equipment;

Continue reading
Published on:

by

After a hearing in an Investigation occurred between February 24 and March 7, 2014 and with the parties having submitted their opening post-hearing briefs on March 21, 2014 and their reply post-hearing briefs on March 28, 2014, the Administrative Law Judge determined that supplemental briefing was necessary after the Supreme Court’s decision in Nautilus v. Biosig.

Noting that the final initial determination on violation in the Investigation was currently due to be issued no later than June 20, 2013, the Administrative Law Judge pointed out that “among the material issues involved in this investigation is whether certain claims of the asserted patents are indefinite under 35 U.S.0 § 112.”
Continue reading

Published on:

by

Complainant Neptun filed a motion to quash three notices of deposition served by several respondents, specifically Satco, Maxlite, and Litetronics. Neptun sought to quash the three separate notices of deposition directed to Marzenna Bobel, the CFO of Neptun. Satco opposed the motion, and cross-moved to compel Mrs. Bobel’s deposition and the production of certain documents.

As explained by the administrative law judge, Neptun’s chief financial officer, Mrs. Bobel supervises the data entry of Neptun’s financial transactions into a QuickBooks database. Neptun produced various reports generated from this QuickBooks database in support of its domestic industry allegations in this investigation. Satco asserted that it was entitled to depose Mrs. Bobel because her testimony would be relevant to the domestic industry requirement.
Continue reading

Published on:

by

In this ITC proceeding, the Respondents filed a motion for leave to file motions for summary determination after the deadline for filing motions for summary determination set by the procedural schedule. Respondents asserted that good cause existed for granting the motion because it would efficiently resolve all of the issues in the Investigation and that Complainants infringement contentions indicated they would be relying on expert testimony to prove their infringement claims.

Respondents asserted that the expert report only provided conclusory assertions regarding infringement under the Respondents’ and Staff’s proposed construction of the claim terms. Respondents asserted that good cause existed to grant the motion based on their reliance and Complainants’ expert’s failure to address Respondents’ and Staff’s proposed constructions.
Continue reading

Published on:

by

In this ITC investigation, Respondents Yantai Zhenghai Magnetic Material Co., Ltd., Anhui Earth-Panda Advance Magnetic Material Co., Ltd., and Ningbo Jinji Strong Magnetic Material Co., Ltd. (collectively, “Manufacturing Respondents”) moved to compel discovery responses from Complainants Hitachi Metals, Ltd., and Hitachi Metals North Carolina, Ltd. (Collectively, “Hitachi Metals”).

The motion was based on the Manufacturing Respondents argument that Hitachi was improperly asserting privilege regarding the pre-filing investigation conducted by Kroll Advisory Solutions.
Continue reading

Published on:

by

Complainants Canon, Inc., Canon U.S.A., Inc. and Canon Virginia, Inc. (“Canon”) filed a motion for summary determination that Canon satisfied the economic prong of the domestic industry requirement for each of the patents in the investigation. Canon asserted that it satisfied “[t]he economic prong of the domestic industry requirement based on all three subsections of § 13379a)(3). Mem. At 1. Namely, Canon argues that its significant investment in plant and equipment, its significant employment of labor and capital, and its substantial investment in the exploitation of the asserted patents, including engineering and quality assurance activities, each independently meet the economic prong of the domestic industry requirement.”

As explained by the administrative law judge, “[i]n patent-based proceedings under section 337, a complainant must establish that an industry “relating to the articles protected by the patent…exists or is in the process of being established” in the Untied States. 19 U.S.C. § 1337(a)(2). Under Commission precedent, this domestic industry requirement of Section 337 consists of a “technical prong” and an “economic prong.” Certain Variable Speed Wind Turbines and Components Thereof, Inv. No. 337-TA-376, Comm’n Op. at 7 n.13 (Oct. 28, 1997) The “technical prong” of the domestic industry requirement is satisfied when the complainant’s activities relate to an article protected by the patent. 19 U.S.C. § 1337(a)(2). The economic prong is satisfied by meeting any one of three criteria with regard to articles protected by each of the patents at issue: (A) significant investment in plant and equipment; (B) significant employment of labor or capital; or (C) substantial investment in its exploitation, including engineering, research and development, or licensing. 19 U.S.C. § 1337(a)(3). Given that these criteria are in the disjunctive, satisfaction of any one of them will be sufficient to meet the domestic industry requirement.”
Continue reading

Published on:

by

Avago Technologies (“Avago”) filed a patent infringement action against IPtronics, Inc. (“IPtronics”) asserting infringement of two U.S. Patents, patent nos. 5,359,447 (the ‘447 patent) and the 6,947,456 (the ‘456 patent) in the United States District Court for the Northern District of California. After a second amended complaint was filed, Avago filed a complaint at the International Trade Commission (“ITC”) alleging infringement of the ‘456 patent, but did not allege infringement of the ‘447 patent. The ITC instituted an investigation naming IPtronics as a respondent.

As noted by the district court, “[w]hen parallel actions are proceeding before a district court and the International Trade Commission, 28 U.S.C. § 1659 requires the district court to stay ‘Any claim that involves the same issues involved in the proceeding before the Commission’ until the ‘Determination of the Commission becomes final” upon request by ‘a party to a civil action that is also a respondent in the proceedings before the [ITC].'”
Continue reading

Published on:

by

Complainants LSI Corporation and Agere System LLC (collectively, “LSI” or “Complainants”) filed a motion for leave to amend their amended complaint in order to clarify the scope of the accused products of Respondent Funai Electric Company (“Funai”). LSI sought to clarify that the scope of the accused products were not limited to Funai products that contain an integrated circuited component supplied by either Realtek or MediaTek.

In support of its motion, LSI argued that their would be no prejudice to Funai because LSI had consistently maintained that the scope of the accused products was not limited to Funai products incorporating solely MediaTek and Realtek components. Funai opposed the motion, asserting that LSI had not shown any new information that would justify the proposed amendment and that it would be prejudiced by the proposed amendments because LSI would be able to expand the scope of the accused Funai products at a late stage of the investigation.
Continue reading

Published on:

by

Respondent ClearCorrect Pakistan (Private) Ltd. (“CCPL”) moved to compel complainant Align Technology, Inc. (“Align”) to produce documents and supplement responses to interrogatories. As explained by the Administrative Law Judge, “CCPL asserts that Align has provided incomplete responses to Document Request No. 9 and Interrogatory No. 13. CCPL says that Document Request No. 9 requires:

All documents reflecting communications occurring from January 1, 2010 and the present between Align (including its attorneys or anyone else acting on Align’s behalf) and any of the following: . . . (3) any person currently or formerly employed by ClearCorrect Pakistan (Private) Ltd.

CCPL says that Interrogatory No. 13 requires:

For every communication from January 1, 2010 between Align (including its attorneys or anyone else acting on Align’s behalf) and any person employed by ClearCorrect Pakistan (Private), Ltd. state: (1) every person participating in the communication, (2) the subject matter of the communication, (3) the date the communication occurred, and (4) whether any document or other recording medium captured the communication.”
Continue reading

Published on:

by

Complainant FlashPoint Technology, Inc. (“FlashPoint”) initiated an ITC proceeding against HTC Corporation, among others. FlashPoint filed a motion for a protective order seeking to limit the discovery of electronically stored information. FlashPoint proposed a limit of 15 custodians collectively for respondents to select, which included an option to negotiate for additional custodians if there was a good faith basis to add additional custodians from FlashPoint.

HTC asserted that a limit on email discovery would severely prejudice its ability to prove its on sale bar and implied license defenses. As explained by the Administrative Law Judge, “HTC is pursuing an on-sale bar because it believes there is a relationship between the asserted patents and FlashPoint’s invalidated U.S. Patent No. 6,163,816 (“the ‘816 patent”). The ‘816 patent was invalidated by an on-sale bar in ITC Investigation No. 337-TA-726 (“the 726 Investigation”). (Opp. At 5.) HTC further explains, “Flash Point is again claiming that HTC infringes patents arising from the FlashPoint project work conducted in the 1990s, and HTC is again raising the on-sale bar…” (Opp. At 6.) Thus it appears HTC’s motivation for the on-sale bar is its suspicion that because the asserted patents and the invalidated ‘816 patent were related to the same project work, the asserted patents might also be subject to the on-sale bar. HTC also briefly explains the motivation for its implied license defense, namely that HTC is a customer of a licensee of FlashPoint’s technology.”
Continue reading