On August 2, 2012, ALJ Robert K. Rogers, Jr. issued Order No. 44 in Certain Digital Photo Frames and Image Display Devices and Components Thereof (Inv. No. 337-TA-807).  In the Order, ALJ Rogers denied Respondents Sony Corporation and Sony Corporation of America’s (collectively, “Sony”) motion for summary determination of invalidity of U.S. Patent No. 7,295,443 (“the ‘443 patent”). 

By way of background, the investigation is based on an August 24, 2011 complaint and a September 14, 2011 letter supplementing the complaint filed by Technology Properties Limited, LLC (“TPL”) alleging violation of Section 337 in the importation into the U.S. and sale of certain digital photo frames and image display devices and components thereof that infringe certain claims of the ‘443 patent and U.S. Patent Nos. 6,976,623, 7,162,549, and 7,522,424.  See our September 23, 2011 post for more details.

According to the Order, Sony argued that asserted claims 1, 3, 4, 7, 9, 11, 12, and 14 of the ‘443 patent are obvious (i) under TPL’s proposed claim constructions in view of the admitted prior art disclosed in the ‘443 patent and the knowledge of one of ordinary skill in the art or, (ii) under Sony’s proposed constructions in view of the admitted prior art in combination with European Patent Application EP 1037159 A2 (“the ‘159 application”).  Sony also argued that the ‘159 application is prior art to the ‘443 patent because the asserted claims of the ‘443 patent are not entitled to the benefit of the filing date of U.S. Patent No. 6,438,638 (“the ‘638 patent”), which does not disclose the use of molded plastic as claimed.

In opposition, TPL argued that Sony waived its current obviousness arguments because they were not raised previously in Sony’s contention interrogatory responses or in Sony’s invalidity expert report.  TPL argued further that the ‘159 application is not prior art to the ‘443 patent and that there are genuine issues of material fact regarding secondary considerations of nonobviousness, which prevent the ALJ from granting summary determination in Sony’s favor. 

As to Sony’s obviousness argument under TPL’s proposed claim constructions, ALJ Rogers found that there are genuine issues of material fact, based on the opinions expressed in TPL’s expert report, regarding whether the admitted prior art disclosed in the ‘443 patent teaches the mapping limitations of independent claims 1 or 9.  Accordingly, the ALJ determined that Sony is not entitled to summary determination of invalidity on this ground.

The ALJ also denied Sony’s request for summary determination of invalidity based on the combination of the admitted prior art and the ‘159 application.  In particular, ALJ Rogers noted that granting summary determination is difficult here because claim construction remains “hotly contested” in the investigation.  Further, the ALJ found that there are genuine issues of material fact regarding whether the written description of the ‘638 patent supports the asserted claims such that a claim of priority is proper.  Again, ALJ Rogers relied on the opinion of TPL’s expert to deny Sony’s request for summary determination, finding that the expert’s testimony created a genuine issue of material fact regarding whether the ‘638 patent sufficiently discloses the molded plastic limitations of the asserted claims.