On December 4, 2014, ALJ Theodore R. Essex issued the public versions of Order Nos. 15 and 16 (both dated November 20, 2014) in Certain Vision-Based Driver Assistance System Cameras and Components Thereof (Inv. No. 337-TA-907). .
By way of background, this investigation is based on a December 23, 2013 complaint filed by Magna Electronics Inc. ("Magna") against TRW Automotive U.S. LLC ("TRW") alleging violations of Section 337 in the importation into the U.S. and sale of certain vision-based driver assistance system cameras. See our December 30, 2013 and January 24, 2014 posts for more details on the complaint and Notice of Investigation, respectively.
According to Order No. 15, TRW moved for summary determination that both patents asserted in the investigation – U.S. Patent Nos. 8,686,840 (the '840 patent) and 8,692,659 (the '659 patent) – are unenforceable under the equitable doctrine of prosecution laches. Specifically, TRW argued that Magna pursued a scheme of flooding its patent applications with abstract ideas and patents incorporated by reference to create a bag of building blocks and then, years later after unreasonable delay, picking out and formulating new claims covering competitor's products and "inventions" that were not previously known or disclosed. Twelve years elapsed between the filing of the first application that the '840 patent claims priority to and the filing of the application leading to the '840 patent. The '840 patent includes forty-four claims and incorporates by reference twenty-six U.S. patents and patent applications in their entirety. Twelve years also elapsed between the filing of the first application that the '659 patent claims priority to and the filing of the application leading to the '659 patent. The '659 patent includes a total of ninety-seven claims and incorporates by reference fifty-five U.S. patents and patent applications. TRW acknowledged that each related patent application for both the '840 and '659 patents added claims directed to new and previously undisclosed inventions.
TRW argued that Magna could have filed claims to the '840 and '659 patents twelve years ago because Magna had the same support specification twelve years earlier. Magna contended that there was no delay in the prosecution of either the '840 or the '659 patent.
ALJ Essex found that TRW's motion failed to establish a prima facie case to meet the elements of prosecution laches with respect to the '840 and '659 patents. ALJ Essex noted that because there is no strict time limit for determining whether continued refiling of patent applications constitutes a legitimate use of statutory provisions, the 12 years leading to the filing of the applications is not dispositive to deciding whether there was an unreasonable delay in prosecuting the asserted claims. ALJ Essex also found that Magna's behavior was not a misuse of the statutory patent system and that TRW failed to show or allege that it or others worked on, used, or invested in the technology between 2000 and 2014. Accordingly, ALJ Essex denied the motion.
According to Order No. 16, TRW moved for summary determination of no violation of Section 337 with respect to the '659 patent. TRW did not dispute that it imports the accused products, but contended that the components are not elements of the asserted claims of the '659 patent nor is the camera that the components are installed in. Specifically, TRW argued that "[b]ecause a camera and components thereof are not an element of any asserted claims of the '659 patent, the accused importation and sale after importation of these products cannot comprise direct infringement of the asserted claims of the '659 patent." In response, Magna argued that a camera is an element of claim 1 of the '659 patent and therefore an element of the asserted claims of the '659 patent.
ALJ Essex found that TRW had not met the high burden of proving that the accused products do not meet every element of the asserted claims of the '695 patent on summary determination. ALJ Essex noted that Magna has not yet had the opportunity to be fully heard on claim construction and obtain a construction on the scope of the asserted claims, and as such a detailed factual analysis comparing the claim terms to the accused products cannot be completed at this time. Accordingly, ALJ Essex found that summary determination of no direct infringement was not warranted.
ALJ Essex also found that there remained genuine disputes as to material facts. For example, ALJ Essex noted that TRW contends that Magna only accused TRW's scalable camera as infringing the asserted claims of the '659 patent, but that Magna contends the asserted claims are directly infringed by an accessory mounting system for a vehicle that contains a TRW scalable camera system.
With respect to contributory infringement, TRW argued that because a forward facing camera is not a claim element TRW cannot contributorily infringe the asserted claims of the '659 patent. In response, Magna contended that TRW does not dispute that General Motor's ("GM") mounting system satisfies the claim elements of the asserted claims of the '659 patent or that it imports the S-Cam 2 and components thereof into the U.S. and sells the S-Cam 2 back into the U.S. Magna argued that because there are genuine issues of material fact regarding whether the S-Cam 2 is a material part of the claimed invention and whether it has any substantial non-infringing uses, TRW's motion should be denied. ALJ Essex found that material facts existed regarding whether the S-CAMS have substantial non-infringing uses and whether TRW knew the combination that its S-CAMS were made for was patented and infringing.
Regarding induced infringement, TRW argued that even if Magna's allegations regarding inducement are true, they are just that: alleged acts. TRW also argued that because a camera and components thereof are not elements in the asserted claims of the '659 patent, TRW's design and importation of them and sale of them to Original Equipment Manufacturer vehicle manufacturers cannot comprise induced infringement. Magna responded that TRW induces infringement by designing its S-CAMS to be mounted in a vehicle in a way that infringes, and instructs, directs, and markets to its customers the means to directly infringe. ALJ Essex found that questions of material fact exist with respect to induced infringement, specifically with respect to the question of whether TRW acted knowingly and with specific intent to encourage direct infringement by GM and whether TRW advertised the means for directly infringement the '659 patent to GM. Accordingly, ALJ Essex denied TRW's motion.