Rovi wins at ITC over Comcast

The U.S. International Trade Commission has issued a final determination finding a violation of section 337 in a matter dealing with infringement of patents owned by Rovi Corporation. As a result of the investigation, the ITC issued a limited exclusion order prohibiting importation of certain digital video receivers and hardware and software components, and also issued cease and desist orders directed to the Comcast respondents. This final determination concludes the matter at the ITC and the investigation is now terminated, with this final determination submitted to President Trump for his review.

The Commission instituted this investigation on May 26, 2016, based on a complaint filed by Rovi Corporation and Rovi Guides, Inc. (collectively, “Rovi”), both of San Carlos, California. The complaint alleged violations of section 337 of the Tariff Act of 1930, codified at 19 U.S.C. 1337 (“section 337”). Rovi asserted infringement of U.S. Patent Nos. 8,006,263; 8,578,413; 8,046,801; 8,621,512; 8,768,147; 8,566,871; and 6,418,556.

Prior to the evidentiary hearing, Rovi withdrew certain allegations, but proceeded at the evidentiary hearing on the following patents and claims: claims 7, 18, and 40 of the ’556 patent; claims 1, 2, 14, and 17 of the ’263 patent; claims 1, 5, 10, and 15 of the ’801 patent; claims 12, 17, and 18 of the ’871 patent; claims 1, 3, 5, 9, 10, 14, and 18 of the ’413 patent; and claims 1, 10, 13, and 22 of the ’512 patent.

On May 26, 2017, the administrative law judge (the “ALJ”) issued the final initial determination, which found a violation of section 337 by Respondents in connection with the asserted claims of both the ’263 and ’413 patents. After examining the record in this investigation, the Commission affirmed the final initial determination conclusion that Comcast violated section 337 in connection with the asserted claims of the ’263 and ’413 patents. The Commission also affirmed the conclusion that Comcast’s customers directly infringe the ’263 and ’413 patents. (more…)

ITC institutes investigation against Hisense

The U.S. International Trade Commission (ITC) announced that it has decided to institute a patent infringement investigation against Chinese electronics manufacturer Hisense. The investigation, which follows from a Section 337 complaint filed by Japanese electronics firm Sharp, will seek to determine whether certain Wi-Fi enabled devices and their components, specifically televisions which are capable of wireless Internet connectivity imported into the U.S. by Hisense, infringe upon two patents covering similar technologies held by Sharp.

The ITC’s decision to institute the Section 337 investigation comes after the agency announced on August 30th that it had received the patent infringement complaint from Sharp. In Sharp’s Section 337 complaint, two patents held by Sharp are identified as being infringed by Hisense’s television products:

  • U.S. Patent No. 8325838, titled Communication Method and Radio Transmitter. Issued in December 2012, it claims a receiving apparatus operable in a wireless communication system which increases the efficiency of frequency utilization and seamlessly provide services to private isolated cells within a wireless local area network (LAN).
  • U.S. Patent No. 8279809, titled Transmission Power Control for Orthogonal Frequency Division Multiplexing (OFDM) Signals, issued in October 2012, covers an apparatus configured for transmitting orthogonal frequency division multiplexing (OFDM) signals for communication in a wireless system in a way that delivers rich content services via OFDM wireless schemes while achieving the use of OFDM recievers in low-cost and smaller terminals.

Sharp’s Section 337 infringement complaint seeks a permanent limited injunction order against Hisense’s Wi-Fi-enabled television sets as well as a permanent cease and desist order prohibiting Hisense from importing and selling the patent infringing products. Sharp argued to the ITC that there are no public welfare concerns and that articles like the infringing Hisense products are available to the public in sufficient capacity to meet demand. Although Sharp notes that the asserted patents cover aspects of wireless communication which are in part described in the IEEE 802.11n wireless standard, they are not subject to fair, reasonable and non-discriminatory (FRAND) licensing obligations as they are not standard essential patents (SEPs). Although Hisense has entered into a trademark licensing agreement with Sharp to sell TVs branded under the Sharp name in the U.S., it does not have a license to either the ‘809 or ‘838 patents.

As Sharp explains in its complaint, the technology covered by the ‘809 patents resolves an issue regarding terminals with different capabilities which coexist in a system. The IEEE 802.11n standard introduced a new high-throughput access point and non-access point stations capable of receiving or transmitting by a broader part of a 20 megahertz (MHz) frequency band than legacy technologies. The technology allows the new high-throughput access points to communicate with legacy stations while also communicating with new high-throughput devices to achieve better performance in signal transmission.

Sharp’s complaint also notes that the technology covered by the ‘838 patent solves a similar issue created by the IEEE 802.11n amended standard so that legacy stations and new stations can coexist, reducing the cost of replacing devices for the new standard. This technology allows some new high-throughput stations to use multiple frequency channels for maximum throughput while allowing other new stations to use fewer subcarriers, minimizing energy use.

Sharp contends that Hisense, or others on the behalf of Hisense, manufacture infringing television products in Mexico, China or other countries outside of the U.S., and import them for sale in this country. For example, four infringing Hisense products were purchased this June through or at a Best Buy in Union City, CA. These products include three 50-inch TVs and one 43-inch TV with markings indicating that they were made in either Mexico or China.


$912M Qualcomm fine upheld by Korean court

On Monday, September 4th, a South Korean court denied a request made by San Diego, CA-based semiconductor developer Qualcomm Inc. (NASDAQ:QCOM) to rescind a fine levied last December by the Korea Fair Trade Commission (KFTC) over alleged unfair business activities in patent licensing and chip sales. According to reports, the South Korean court decision keeps in place a $912 million fine in the latest blow to Qualcomm’s corporate intellectual property strategy.

Last December, the KFTC originally fined Qualcomm a total of $853 million after a three-year study concluded and found that the chipmaker limited market access among competitors and employed unfair licensing agreements (which could stop shipments to licensees who didn’t comply with certain agreement terms). Qualcomm’s initial statement on the Korean regulatory fine indicated a great deal of disagreement and the chipmaker filed a motion for stay in Seoul Central District Court this February, citing potential commercial interests that might be seeking to influence South Korea’s regulatory action. (more…)

ITC Commissioner F. Scott Kieff to leave International Trade Commission

ITC Commissioner F. Scott Kieff has publicly announced that he will be leaving the International Trade Commission and returning to his academic posts as a Professor at George Washington University Law School and a senior fellow at Stanford University’s Hoover Institution. Kieff’s last day at the ITC will be June 30, 2017.

Kieff, a Republican, was sworn in on Friday, October 18, 2013, as a Commissioner of the ITC. Nominated by President Barack H. Obama, he was confirmed by the U.S. Senate on August 1, 2013, for a term that would have expired on June 16, 2020.

Before being sworn in, Kieff took a leave of absence from his post as a Professor at the George Washington University Law School in Washington, DC, which he joined as a faculty member in the summer of 2009. Also before being sworn in at the ITC, Kieff resigned his roles at the Stanford University Hoover Institution, where he was the Ray & Louise Knowles Senior Fellow. Kieff will resume roles at George Washington University Law School and at Stanford University’s Hoover Institution effective July 1, 2017.

Before entering academia, Kieff practiced law for over six years as a trial lawyer and patent lawyer for Pennie & Edmonds in New York and Jenner & Block in Chicago and also served as a Law Clerk to Judge Giles S. Rich of the United States Court of Appeals for the Federal Circuit. After entering academia, he regularly served as a testifying and consulting expert, mediator, and arbitrator to law firms, businesses, government agencies, and courts.

Kieff’s research, teaching, practical experience has always focused on the law, economics, and politics of innovation, including entrepreneurship, corporate governance, finance, economic development, trade, intellectual property, antitrust, bankruptcy, medical ethics, technology policy, and health policy. Kieff was recognized as one of the nation’s “Top 50 under 45” by the magazine IP Law & Business in May, 2008, and was inducted as a Member of the European Academy of Sciences and Arts in March 2012.

Originally from the Hyde Park neighborhood in Chicago, Kieff became a lawyer in New York City and now lives with his family in Washington, DC. Before attending law school at the University of Pennsylvania, he studied molecular biology and microeconomics at the Massachusetts Institute of Technology and conducted research in molecular genetics at the Whitehead Institute for Biomedical Research in Cambridge, MA.

Nintendo Prevails at ITC in Wii Case

WiiOn Sept. 12, 2013, Nintendo won a patent infringement case brought at the International Trade Commission by Creative Kingdoms. The commission found that Nintendo’s Wii and Wii U systems do not infringe Creative Kingdoms’ patents. The commission also found that Creative Kingdoms’ patents are invalid.

On April 27, 2011, the Commission instituted the investigation based on a complaint filed by Creative Kingdoms, LLC of Wakefield, Rhode Island and New Kingdoms, LLC of Nehalem, Oregon. The complaint alleged violations of Section 337 by reason of infringement of certain claims of U.S. Patent Nos. 7,500,917 (“the ‘917 patent”), 7,896,742 (“the ‘742 patent”), 7,850,527 (“the ‘527 patent”), and 6,761,637 (the ‘637 patent). The ‘637 patent was subsequently terminated from the investigation. On August 31, 2012, the ALJ issued a final Initial Determination (ID) finding no violation of section 337 by Nintendo.

The ALJ found that the accused products infringe sole asserted claim 24 of the ‘742 patent, but that the claim is invalid for failing to satisfy the enablement requirement and the written description requirement under 35 U.S.C. § 112. The ALJ found that no accused products infringe the asserted claims of the ‘917 patent and the ‘527 patent. The ALJ also found that the asserted claims of the ‘917 and ‘527 patents are invalid for failing to satisfy the enablement requirement and the written description requirement. The ALJ concluded that complainant has failed to show that a domestic industry exists in the United States that exploits the asserted patents as required by 19 U.S.C. § 1337(a)(2). The ALJ did not make a finding regarding the technical prong of the domestic industry requirement with respect to the asserted patents. The ALJ also did not making a finding with respect to anticipation and obviousness of the asserted patents.