|April 21, 2014|
Previously published on April 15, 2014
On March 26, 2014, the International Trade Commission (the “Commission”) issued the public version of its opinion finding no violation of Section 337 in Certain Audiovisual Components and Products Containing the Same (Inv. No. 337-TA-837).
By way of background, the investigation is based on a March 2, 2012 complaint filed by LSI Corporation and its subsidiary Agere Systems Inc. (collectively, “LSI”) alleging violation of Section 337 with regard to certain audiovisual components and products containing the same including certain digital televisions, Blu-ray disc players, home theater systems, DVD players and/or recorders that infringe one or more claims of U.S. Patent Nos. 5,870,087 (the ‘087 patent), 6,982,663 (the ‘663 patent), 6,452,958 (the ‘958 patent), and 6,707,867 (the ‘867 patent). On March 7, 2013, the ALJ granted a motion to terminate the investigation as to certain claims of those patents.
In the initial determination (“ID”), ALJ Shaw found a violation of Section 337 had occurred with respect to claims 1, 5, 7-11, and 16 of the ‘087 Patent but that no violation had occurred with respect to the remaining asserted claims of the ‘663, ‘958, and ‘867 Patents. As of the date of the ID, the remaining respondents in the investigation were Funai Electric Company, Ltd., Funai Corporation, Inc., P&F USA, Inc., and Funai Service Corporation (collectively, “Funai”) and Realtek Semiconductor Corporation (“Realtek”).
As explained in our October 25, 2013 post, after examining the relevant portions of the record of the investigation, including the ID and the parties’ submissions, the Commission determined to review the final ID in its entirety and requested the parties to brief twelve specifically enumerated issues. According to the opinion, after the Commission determined to review the ID, the parties entered into settlement agreements or agreed to vacate findings (in view of patent expiration) for all patents except the ‘958 patent. We now provide the details of the Commission’s opinion in relation to the ‘958 patent.
The ‘958 patent relates to digital signal modulation to encode information. In the accused products, the modulators are included in WiFi chips that are a part of the downstream products. LSI asserts that the ‘958 patent is essential to the Institute of Electrical and Electronic Engineers, Inc. (“IEEE”) 802.11 standard for complementary code keying (“CCK”) modulation and timing synchronization.
All the asserted claims require “a modulator that chooses a code having N chips in response to a group of data bits,” and LSI petitioned for review of the ALJ’s construction of this phrase. The Commission affirmed ALJ Shaw’s construction of the term “code” to mean “a sequence of chips representing a real value,” noting that LSI’s proposed construction (to include complex codes) contradicts the parties’ agreed-upon construction, and that LSI’s proposed construction was not supported by either the intrinsic or extrinsic evidence.
The Commission’s affirmation of the claim construction of “code” to exclude complex codes supported a determination that certain products do not infringe the ‘958 patent, as they select complex, not real, codes. According to the Commission, “[d]espite abundant record evidence supporting [this finding],” LSI continued to argue that the products select a “real” code. However, the Commission held that the ALJ “correctly concluded that each CCK codeword...represents a complex value, and so the accused codewords do not meet the claimed ‘code.’” The Commission also determined that the remaining accused products were not proved to infringe, affirming the ALJ’s decision to strike LSI’s supporting evidence as provided too late (as it was only submitted the same day that pre-hearing briefs were due).
The validity dispute was premised on a determination of the correct priority of the ‘958 patent, and the Commission disagreed with the ALJ that the ‘958 patent was entitled to its earliest priority date. Specifically, the Commission found that at least four limitations were not included in the earliest priority application (as conceded by LSI’s expert at trial), and as such, the written description requirement was not met.
With the priority date of the ‘958 patent now correctly determined to be the actual filing date, prior art that was dismissed by the ALJ was considered by the Commission. The Commission determined that the ‘958 patent would have been obvious over the van Nee article in view of the Harris Proposal, noting that LSI’s expert conceded that the van Nee article would anticipate or render obvious every asserted claim of the ‘958 patent if it were prior art. The Commission also reversed the ALJ’s finding of no anticipation of a subset of claims over the Prasad reference, but affirmed that the remaining claims would not have been obvious over Prasad. The Commission also affirmed that the remaining proffered references were non-analogous art and would not have rendered the ‘958 patent obvious and that the secondary considerations put forward by LSI did not have the required nexus to the claims. Finally, the Commission affirmed ALJ Shaw’s finding that the asserted claims were not indefinite.
With regard to domestic industry, the Commission determined that the ALJ’s finding of domestic industry based on licensing conflicts with recent decisions imposing an “articles” requirement for licensing-based domestic industry, and LSI failed to prove that the products covered by the license practiced the invention of the ‘958 patent.
Because “there are multiple grounds for determining no violation” of Section 337, the Commission did not reach any RAND or equitable defenses asserted by Funai and Realtek.
In light of the above, the Commission affirmed the ALJ’s finding of no violation of Section 337 with respect to the ‘958 patent as modified, and terminated the investigation.