• ALJ Rogers Rules on Motions for Summary Determination of Non-Infringement in Certain Notebook Computer Products (337-TA-705)
  • November 1, 2010 | Author: Eric W. Schweibenz
  • Law Firm: Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
  • On October 27, 2010, ALJ Robert K. Rogers, Jr. issued the public versions of Order No. 19 (dated September 16, 2010) and Order No. 21 (dated September 24, 2010) in Certain Notebook Computer Products and Components Thereof (Inv. No. 337-TA-705).

    In Order No. 19, ALJ Rogers denied Respondents Wistron Corporation, Wistron InfoComm (Texas) Corporation, and Wistron InfoComm Technology (America) Corporation’s (collectively, “Wistron”) motion for summary determination of non-infringement of certain claims of U.S. Patent No. 7,156,693.  In support of its motion, Wistron asserted that “its pointing devices are not completely enclosed inside a housing” as required by the asserted claims, as construed by Wistron.  Specifically, Wistron asserted that the “pointing device” includes touchpad buttons that “are not enclosed inside the housing, but instead appear through an aperture in the housing.”  In opposition to the motion, both Complainant Toshiba Corporation (“Toshiba”) and the Commission Investigative Staff (“OUII”) asserted that “there is a genuine factual dispute regarding whether or not the accused products meet the ‘pointing device’ limitation under the proposed constructions.”  In this regard, Toshiba and OUII asserted “that the touchpad itself, and nothing else in the accused products constitutes the ‘pointing device’ of the asserted claims.”  Accordingly, ALJ Rogers denied the motion finding a genuine dispute of material fact regarding “whether or not the buttons below the touchpad are part of the ‘pointing device.’”

    In Order No. 21, ALJ Rogers denied Wistron’s motion for summary determination of non-infringement of certain claims of U.S. Patent No. 5,430,867.  In support of its motion, Wistron asserted that (i) its accused products did not meet the “switch means,” “coupled to,” and “executing means” limitations of the asserted claims and (ii) its accused products, which “use the Windows operating system made by Microsoft Corporation (‘Microsoft’),” were licensed in view of a patent license agreement between Toshiba and Microsoft.  In opposition to the motion, Toshiba asserted, inter alia, that Wistron’s claim constructions for the alleged missing limitations were flawed and untimely.  Further, Toshiba asserted that “Wistron’s license defense is not part of the investigation because [its] motion to amend its response to add a licensee defense was denied.”  Additionally, OUII opposed the motion and was “of the view that Toshiba’s expert’s opinion creates a factual dispute [regarding Wistron’s non-infringement positions] that cannot be resolved in the context of a summary determination motion.”  Further, OUII asserted that Wistron’s license defense was not part of the investigation.  Accordingly, ALJ Rogers denied the motion finding that genuine issues of disputed fact existed with respect to Wistron’s non-infringement positions and that “Wistron’s license defense is not part of this investigation and cannot serve as the basis for summary determination.”