On November 28, 2014 and December 1, 2014, ALJ Dee Lord issued public versions of Order Nos. 37, 41, 44–48 in Certain Television Sets, Television Receivers, Television Tuners, and Components Thereof (Inv. No. 337-TA-910).

By way of background, this investigation is based on a January 28, 2014 complaint filed by Cresta Technology Corp. ("Complainant") alleging violation of Section 337 in the importation into the U.S. and sale of certain television sets, television receivers, television tuners, and components thereof that infringe one or more claims of U.S. Patent Nos. 7,075,585, 7,265,792, and 7,251,466.  See our January 30, 2014 and March 24, 2014 posts for more details on the complaint and Notice of Investigation, respectively. 

According to Order No. 37, Complainant CrestaTech Technology ("CrestaTech") filed a motion to strike certain paragraphs of the Opening Expert Report of Dr. Hossein Hashemi Regarding Invalidity of U.S. Patent No. 7,075,585 (the '585 patent) and U.S. Patent No. 7,265,792 (the '792 patent).  Based on Respondents Maxlinear, Inc., Sharp Corporation, Sharp Electronics Corporation, VIZIO, Inc., TPV International (USA), Inc., Top Victory Investments Ltd., SIO Intemational, Inc., Hon Hai Precision Industry Co., Ltd., Wistron Corp., and Wistron Infocomm Technology (America)'s (collectively, "Respondents") admission that the Mitola '95, Efstathiou '99, and Python '05 references were not disclosed in their Notice of Prior Art, ALJ Lord granted CrestaTech's motion to strike.  Regarding Mitra '01, Razavi '97, and Oppenheirn '97, ALJ Lord granted CrestaTech's motion to the extent Dr. Hashemi relies on these references for purposes other than showing the level of ordinary skill in the art or obviousness.  As to the Ehrhardt '93, Mitola '99, Efstathiou '00, Razavilar '99, STMicro '01, ED '98, Colin '0l, Lee '98, and Coy '92 references, ALJ Lord granted CrestaTech's motion to the extent Dr. Hashemi relies on these references for purposes other than showing the level of ordinary skill in the art.  Lastly, regarding a demonstration of the Morton2 chip, ALJ Lord held that the demonstration was adequately disclosed by Respondents.  Accordingly, ALJ Lord denied CrestaTech's motion as to the Morton2 chip demonstration.  Therefore, ALJ Lord granted-in-part CrestaTech's motion to strike.

According to Order No. 41, Respondents filed a motion for summary determination of no economic domestic industry.  Respondents argued that the record does not support CrestaTech's arguments that it has made substantial payments to domestic manufacturers in connection with fabrication of the domestic industry products.  In opposition, CrestaTech asserted that it "continues to make significant investments to support its product business."  ALJ Lord held the motion raised mixed questions of law and disputed fact that would benefit from further development and witness testimony at trial.  Accordingly, ALJ Lord denied Respondents' motion for summary determination.

According to Order No. 44, Respondents filed motions for summary determination that the accused MxL601 and MxL661 products do not infringe the '585 and '792 patents because they lack the "intermediate signal having an intermediate frequency (IF)," "digital output signals," or "plurality of modulators ... for demodulating said digital output signals," as required by the claims.  ALJ Lord noted that the parties dispute the proper construction of at least the "intermediate frequency (IF)," "digital output signals," or "plurality of modulators ... for demodulating said digital output signals" claim terms.  Accordingly, ALJ Lord held that it was premature to construe the disputed claim terms on an abbreviated record.  ALJ Lord further determined that further development and testimony is necessary.  Therefore, ALJ Lord denied Respondents' motions for summary determination.

According to Order No. 45, Respondents filed motions for summary determination that the accused products do not infringe the '585 patent because they lack the "plurality of modulators," as required by the claims.  ALJ Lord noted that the parties dispute the proper construction of at least the "plurality of modulators" claim term.  Accordingly, ALJ Lord held that it was premature to construe the disputed claim term on an abbreviated record.  ALJ Lord further determined that further development and testimony is necessary.  Therefore, ALJ Lord denied Respondents' motion for summary determination.

According to Order No. 46, both CrestaTech and Respondents field motions essentially raising the same issue: "whether tuners manufactured by non-party NXP Semiconductors N.V. ("NXP") and televisions containing NXP tuners are within the scope of this investigation." CrestaTech's motion was a motion to strike Dr. Harley Myler's non-infringement expert report with respect to its discussion of NXP tuners. Respondents' motion's was a motion for summary determination that televisions with NXP tuners do not infringe the asserted patents.

CrestaTech argued that NXP tuners are not within the scope of the Investigation and have never accused NXP tuners of infringement. CrestaTech asserted that it was not until the end of discovery that certain Respondents disclosed certain televisions. Further, CrestaTech averred that it was not until the last month of fact discovery that Respondents issued subpoenas to NXP. In opposition, Respondents argued that they tried to resolve the issue with CrestaTech but CrestaTech "declined to adopt a position on NXP tuners or televisions with NXP tuners." Respondents asserted that that CrestaTech placed NXP tuners in issue in this Investigation by stating in its Public Interest Statement that NXP tuners are non-infringing alternatives. Respondents further asserted that the notice of investigation generally defines the scope of the investigation at the ITC. Additionally, Respondents argued that CrestaTech had the opportunity to inspect the imported products and depose relevant witnesses.

As an initial matter, ALJ Lord noted that it is the notice of investigation, not the complainant's allegations, that determines the scope of the investigation under Section 337. ALJ Lord held that "a complainant in the position of CrestaTech cannot simply choose not to react to the presentation of non-accused products—the complainant must take steps to obtain adequate information to enable it to do exactly what CrestaTech refused to do in this case: admit or deny that the products infringe." ALJ Lord determined that Respondents made the originally non-accused NXP tuner products at issue and that CrestaTech was required to respond and seek the necessary discovery to determine whether the NXP tuners infringed the patents at issue. If necessary, CrestaTech should have requested a continuance to conduct additional discovery. Accordingly, ALJ Lord denied CrestaTech's motion to strike Dr. Myler's report and granted Respondents' motion with respect to the Vizio NXP products. Additionally, ALJ Lord granted Respondents' motion as to the Samsung NXP products, except with respect to the issue of importation.

According to Order No. 47, Respondents filed a motion for summary determination that certain accused products (the "Silicon Labs accused products") do not infringe certain claims of the '585 patent and all the asserted claims of the '792 patent because no format-specific finite impulse response ("FIR") filter is applied to the claimed digital representations of the accused intermediate frequency signal. ALJ Lord held that that summary determination was not warranted on this issue because CrestaTech raised genuine issues of material fact. Specifically, ALJ Lord noted that the parties' infringement experts dispute the issue. Accordingly, ALJ Lord held that "[t]hese conflicting expert opinions raise genuine issues of material fact that can only be resolved following the consideration of witness testimony at the hearing." Therefore, ALJ Lord denied Respondents' motion.

According to Order No. 48, CrestaTech filed a motion to bar Respondents form using the expert report and testimony of Dr. Hossein Hashemi.  Specifically, CrestaTech argued that the MaxLinear Respondents are using their co-Respondents in order to advance expert reports they would otherwise be barred from using because Order No. 23 bars their use of Dr. Hashemi as an expert.  In opposition, the MaxLinear Respondents asserted that Order No. 23 only precludes the MaxLinear Respondents from identifying Dr. Hashemi as an expert, but does not preclude them from relying on Dr. Hashemi's testimony if he were properly identified by another party.

ALJ Lord held that Dr. Hashemi was properly identified by the MaxLinear Respondents' co-Respondents pursuant to Order No. 22 and that there is no dispute that his expert report and testimony as to those co-Respondents are a proper part of the record.  However, ALJ Lord noted that the co-Respondents' products and the MaxLinear Respondents' products are the same.  Accordingly, ALJ Lord stated that she was not going to create two separate records of infringement for the exact same accused products.  Therefore, ALJ Lord denied CrestaTech's motion.