On November 26, 2014, ALJ Dee Lord issued the public versions of Order Nos. 106, 108, 109, and 113 in Certain Optical Disc Drives, Components Thereof, and Products Containing the Same (Inv. No. 337-TA-897).

By way of background, the investigation here is based on a September 3, 2013 complaint filed by Complainant Optical Devices, LLC ("Optical") alleging violation of Section 337 in the importation into the U.S. and sale of certain optical disc drives, components thereof, and products containing the same that infringe one or more claims of U.S. Patent Nos. 6,904,007; 7,196,979; 8,416,651; RE40,927; RE42,913; and RE43,681.  See our September 6, 2013 and October 23, 2013 posts for more details on the complaint and Notice of Investigation, respectively. 

According to Order No. 106, Respondents Nintendo Co., Ltd. and Nintendo of America, Inc. (collectively, "Nintendo") filed a motion for summary determination of non-infringement of U.S. Patent Nos. 6,904,007; 7,169,979; and 8,416,651 (collectively, "the Kadlec Patents").  Optical stated that it "is no longer accusing any Nintendo Products of infringing [the Kadlec Patents]."  ALJ Lord noted that Optical's motion to partially terminate the Investigation as to the application of the Kadlec Patents to Nintendo was granted in Order No. 94.  Accordingly, ALJ Lord denied Nintendo's motion as moot.

According to Order No. 108, Respondents Panasonic Corporation and Panasonic Corporation of North America (collectively, "Panasonic") filed a motion for summary determination of noninfringement of the Kadlec Patents.  Optical stated that it was no longer accusing certain Panasonic products of infringing the Kadlec Patents.  However, Optical argued that other Panasonic products are still at issue because Panasonic's expert opined as to infringement of the optical disc drive chips in those products.  ALJ Lord noted that Optical's motion to partially terminate the Investigation as to the application of the Kadlec Patents to certain Panasonic products was granted in Order No. 94.  However, ALJ Lord determined that there is a genuine issue material fact as to whether the other Panasonic products infringe the Kadlec Patents because the Optical's expert opined that the optical disc drive chips contained in Panasonic's products infringe the Kadlec Patents.  Accordingly, ALJ Lord denied Panasonic's motion.

According to Order No. 109, Respondents Lenovo Group Ltd. and Lenovo (United States) Inc. (collectively, "Lenovo") filed a motion for summary determination of non-infringement of the Kadlec Patents.  Optical stated that it is no longer accusing the products identified in Lenovo's motion of infringing the Kadlec Patents.  ALJ Lord noted that Optical's motion to partially terminate the Investigation as to the application of the Kadlec Patents to the identified Lenovo products was granted in Order No. 94.  Accordingly, ALJ Lord denied Lenovo's motion as moot.

According to Order No. 113, Respondents Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Lenovo, LG Electronics, Inc., LG Electronics U.S.A., Inc., Nintendo, Panasonic, Toshiba Corporation, Toshiba America Information Systems, Inc., MediaTek, Inc., and MediaTek USA, Inc. (collectively, "Respondents") filed a motion to terminate this Investigation for good cause based on Optical's lack of prudential standing to bring an infringement action with respect to the asserted patents.  Respondents argued that Optical does not hold all substantial rights to the patents at issue and therefore lack prudential standing to bring the current proceeding.  In opposition, Optical argued that Respondents apply the wrong legal standard in their motion.  Specifically, Optical claimed that because it is nominally the assignee of the patents at issue and, therefore, it presumptively satisfied the standing requirement.

ALJ Lord determined that Optical does not hold all substantial rights to the patents at issue.  Accordingly, ALJ Lord held that Optical lacked prudential standing to maintain an action for infringement on its own.  Further, ALJ Lord held that joinder at the late stage of the Investigation would be impracticable and prejudice Respondents.  Accordingly, ALJ Lord granted Respondents' motion to terminate the Investigation in its entirety based on Optical's lack of prudential standing to bring an action enforcing the patents at issue.