On August 9, 2013, the International Trade Commission (“the Commission”) issued a notice finding a violation of Section 337 and issuing a limited exclusion order and cease and desist orders against Respondents Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc. (“SEA”); and Samsung Telecommunications America, LLC (“STA”) (collectively, “Samsung”) in Certain Electronic Digital Media Devices and Components Thereof (Inv. No. 337-TA-796).   

By way of background, the investigation is based on a complaint filed by Apple, Inc. (“Apple”) alleging a violation of Section 337 by Samsung for importation into the U.S. and sale of certain electronic digital media devices.  See our August 2, 2011 post for more details on the Notice of Investigation in this matter.

On October 24, 2012, ALJ Pender issued an Initial Determination (“ID”), which found that Samsung violated Section 337 by infringement of certain valid claims of U.S. Patent Nos. D618,678; 7,479,949 (the ‘949 patent); RE 41,922 (the ‘922 patent); and 7,912,501 (the ‘501 patent).  See our January 22, 2013 post for more details on the public version of the ID.  On January 23, 2013, the International Trade Commission (the “Commission”) issued a notice determining to review the ID in its entirety.  Additionally, the Commission remanded the investigation to ALJ Pender to consider certain issues related to the ‘922 patent and the ‘501 patent.  See our January 24, 2013 post for more details.

On March 26, 2013, ALJ Pender issued the subject Remand ID finding that claims 34 and 35 of the ‘922 patent are infringed by the text-selection feature of Samsung’s accused products and that claim 3 of the ‘501 patent is not infringed.  See our April 8, 2013 post for more details.  Both Apple and Samsung petitioned for review of the Remand ID.  On May 28, 2013, the Commission issued a notice determining to review the Remand ID in its entirety.  See our May 31, 2013 post for more details.  

According to the August 9, 2013 notice, the Commission determined that:

Apple has proven a violation of section 337 based on articles that infringe claims 1, 4-6, 10, and 17-20 of the ‘949 patent and claims1, 4-6, 10, and 17-20 of the ‘949 patent and claims 1-4 and 8 of the ‘501 patent.  Specifically, with respect to the ‘949 patent, the Commission has determined to affirm the ALJ’s constructions of disputed claim terms and his conclusion that Apple has proven a violation of section 337 based on articles that infringe claims 1, 4-6, 10, and 17-20 of the ‘949 patent.  The Commission affirms, with modified reasoning, the ALJ’s conclusion that Apple failed to prove that Samsung contributorily infringes claims 11-16 of the ‘949 patent.  The Commission, however, has determined to reverse the ALJ’s conclusion that Apple has proven that Samsung induced infringement of claims 11-16 of the ‘949 patent.  With some modifications to the ALJ’s analysis, the Commission has also determined that the record supports the ALJ’s conclusions that the Continuum SCH-1400 infringes all of the asserted claims of the ‘501 patent; that the accused Samsung devices represented by Transform SPH-M920 infringe claims 1-2 and 8, but not claims 3 and 4 of the ‘501 patent; and that the accused Samsung devices represented by Galaxy Tab 7.0 and Galaxy S II do not infringe any of the asserted claims of the ‘501 patent.  The Commission has further determined that the asserted claims of the ‘949 and the ‘501 patents have not been proven by Samsung to be invalid and that Apple has proven that a domestic industry exists in the United States relating to articles protected by the ‘949 and the ‘501 patents.    

In addition, the Commission has determined that Apple has not proven a violation based on alleged infringement of the D’678, the D’757, the ‘922, and the ‘697 patents.  Specifically, the Commission has determined that the asserted claim of the D’678 patent is valid but not infringed, and that Apple’s iPhone, iPhone 4 and iPhone 4s practice the D’678 patent, but not the iPhone 3G and iPhone 3GS.  The Commission has also determined that the asserted claim of the D’757 patent is valid but not infringed, and Apple’s iPhone 3G and 3GS do not practice the D’757 patent.  With some modifications to the ALJ’s analysis for the ‘922 patent, the Commission has determined to affirm the ALJ’s constructions of disputed claim terms, and the ALJ’s conclusion that Apple failed to prove that Samsung contributorily infringes the asserted claims of the ‘922 patent.  The Commission, however, has determined to reverse the ALJ’s conclusion that Apple has proven that Samsung induced infringement of the asserted claims of the ‘922 patent.  With respect to the ‘697 patent, the Commission has determined to modify the ALJ’s construction and application of certain disputed terms in the asserted claims.  Under the modified constructions, the Commission has determined that Apple has proven that the accused Samsung devices infringe the asserted claims of the ‘697 patent and that Apple’s domestic industry products practice the ‘697 patent.  The Commission, however, ultimately finds that Apple has not proven a violation of section 337 with respect to the ‘697 patent because Samsung has proven with clear and convincing evidence that the asserted claims are invalid as anticipated by the YP-T7J media player.  The Commission has further determined that Apple has proven a domestic industry exists in the United States relating to articles protected by the D’678, the ‘922 and the ‘697 patents, but not the D’757 patent.  

The Commission has determined that the appropriate remedy is a limited exclusion order prohibiting Samsung from importing certain electronic digital media devices that infringe one or more of claims 1, 4-6, 10, and 17-20 of the ‘949 patent and claims 1-4 and 8 of the ‘501 patent.  The Commission has also determined to issue cease and desist orders prohibiting SEA and STA from further importing, selling, and distributing articles that infringe one or more of claims 1, 4-6, 10, and 17-20 of the ‘949 patent and claims 1-4 and 8 of the ‘501 patent in the United States.  The orders do not apply to the adjudicated design around products found not to infringe the asserted claims of the ‘949 patent and the ‘501 patents as identified in the Final ID.  The Commission has carefully considered the submissions of the parties and the public and has determined that the public interest factors enumerated in section 337(d)(1) and (f)(1) do not preclude issuance of the limited exclusion order and cease and desist orders.

Finally, the Commission has determined that excluded mobile phones, media players, and tablet computers may be imported and sold in the United States during the period of Presidential review (19 U.S.C. § 1337(j)) with the posting of a bond in the amount of 1.25 percent of the entered value.  The Commission’s order and opinion were delivered to the President and to the United States Trade Representative on the day of their issuance.

The Commission’s decision in favor of Apple in this investigation comes on the heels of President Obama’s recent decision to disapprove of the Commission’s determination to issue an exclusion order and a cease and desist order against various Apple products in Certain Electronic Devices, Including Wireless Communication Devices, Portable Music and Data Processing Devices, and Tablet Computers (Inv. No. 337-TA-794).