• ITC Decides To Review-in-Part Initial Determination In Certain Electronic Imaging Devices (337-TA-850)
  • December 26, 2013 | Author: Eric W. Schweibenz
  • Law Firm: Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
  • On December 16, 2013, the International Trade Commission (the “Commission”) issued a notice determining to review in part the Initial Determination (“ID”) issued by ALJ Theodore R. Essex in Certain Electronic Imaging Devices (Inv. No. 337-TA-850).

    By way of background, the investigation is based on a complaint filed by Flashpoint Technology, Inc. (“Flashpoint”) alleging a violation of Section 337 in the importation and sale of certain electronic imaging devices that infringe one or more claims of U.S. Patent Nos. 6,504,575 (the ‘575 patent), 6,222,538 (the ‘538 patent), 6,400,471 (the ‘471 patent), and 6,223,190 (the ‘190 patent). The ITC instituted an investigation on June 25, 2012. The ‘575 patent was later terminated from the investigation. The remaining respondents as of the time of the ID were HTC Corporation, HTC America, Inc., Huawei Technologies Co., Ltd., FutureWei Technologies, Inc. d/b/a Huawei Technologies (USA), ZTE Corporation, and ZTE (USA) Inc.

    In the ID, ALJ Essex determined that a violation of Section 337 had occurred with respect to the ‘538 patent. Specifically, the ALJ concluded that two of the accused HTC smartphones (the HTC Vivid and HTC Droid Incredible 4G LTE) infringed the asserted claims, but that none of the other accused devices infringed the asserted patents. The ALJ also determined that Flashpoint met the economic prong of the domestic industry requirement as to all asserted patents, that the smartphones of Flashpoint’s licensees met the technical prong of the domestic industry requirement as to the ‘538 patent, but not as to the ‘471 or ‘190 patents. Finally, the ALJ determined that the asserted patents were not invalid in view of the prior art or the on-sale bar and that the ‘190 and ‘538 patents were not unenforceable for failure to name an inventor.

    After examining the relevant portions of the record of the investigation, including the ID and the parties’ submissions, the Commission determined to review the ALJ’s findings as to the following issues: (1) infringement of the asserted claims of the ‘538 patent by the HTC Vivid and HTC Droid Incredible 4G L TE smartphones, (2) the technical prong of the domestic industry requirement for the ‘538 patent; (3) obviousness of the asserted claims of the ‘538 patent over U.S. Patent No. 5,835,772, U.S. Patent No. 5,740,801, certain “Admitted Prior Art,” U.S. Patent No. 5,638,501, and U.S. Patent No. 5,898,434; (4) claim construction of the term “operating system” in the asserted claims of the ‘471 patent, (5) infringement of the ‘471 patent by the accused products; (6) the technical prong of the domestic industry requirement for the ‘471 patent; (7) anticipation of the asserted claims of the ‘471 patent in view of U.S. Patent No. 5,687,376; (8) infringement of the asserted claim of the ‘190 patent; (9) technical prong of the domestic industry requirement for the ‘190 patent; (10) anticipation and obviousness of the ‘190 patent in view of U.S. Provisional Patent Application 60/037,963; (11) anticipation and obviousness of the ‘190 patent in view of the Zaurus; (12) anticipation and obviousness of the ‘190 patent in view of the Japanese Laid-Open Patent Application No. H09-298678; (13) validity of the ‘538, ‘471, and ‘190 patents in view of the on-sale bar; (14) enforceability of claim 19 of the ‘538 patent with respect to joint inventorship; and (15) the economic prong of the domestic industry requirement with respect to the ‘539, ‘471, and ‘190 patents. The Commission determined not to review any of the remaining issues.

    The notice states that the parties are requested to brief fourteen enumerated issues relating to the Federal Circuit’s December 13, 2013 Suprema Inc. v. ITC decision, evidence of induced infringement, evidence of direct infringement, anticipation, obviousness, claim construction, domestic industry, and public interest. The Commission also stated that it is interested in receiving written submissions that address the form of remedy, if any, that should be ordered, the effects of any such remedy on the public interest, and the amount of bond that should be imposed if remedy is ordered.

    Written submissions are due by January 3, 2014, with reply submissions due by January 10, 2014.