On November 19, 2012, the International Trade Commission (the “Commission”) issued the public version of its opinion in Certain Protective Cases and Components Thereof (Inv. No. 337-TA-780).

By way of background, the investigation is based on a complaint filed by Otter Products, LLC (“Otter”) alleging violation of Section 337 by the importation and sale of certain protective cases and/or components thereof for cellular phones, mobile music players and/or tablet computers by Griffin Technology, Inc. (“Griffin”) and others that infringe U.S. Patent Nos. 7,933,122; D600,908; D617,784; D615,536; D617,785; D634,741 and D636,386; and U.S. Trademark Registrations 3,788,534; 3,788,535; 3,623,789 and 3,795,187.  See our June 27, 2011 post for more details.

ALJ Essex’s Initial Determination (“ID”) found a violation of Section 337 by numerous defaulting respondents with respect to the asserted patents and trademarks.  In the ID, the ALJ noted that undisputed evidence showed that each of the defaulting respondents satisfied the importation requirement, and that their accused products literally infringed the asserted patents and trademarks.  ALJ Essex also found a violation of Section 337 by Griffin with respect to the Griffin Survivor for the iPad 2 and the Griffin Explorer for the iPhone 4 which literally infringe the asserted claims of the ‘122 patent, but that the Griffin Survivor for the iPod Touch did not literally infringe.  See our July 18, 2012 post for more details.

As explained in our November 5, 2012 post, the Commission issued a notice indicating that it determined to reverse the ALJ’s finding that the Griffin Survivor for the iPod Touch does not literally infringe the asserted claims of the ‘122 patent.  The Commission adopted ALJ Essex’s findings in all other respects. Based on the notice, the Commission also determined to issue:  (1) a general exclusion order (“GEO”) prohibiting the unlicensed entry of protective cases and components thereof that infringe the asserted patents and trademark registrations; (2) cease and desist orders prohibiting the defaulting U.S. respondents from conducting various activities that would infringe the asserted patents and trademark registrations; and (3) a cease and desist order prohibiting Griffin from conducting various activities that would infringe the ‘122 patent.  The Commission also determined that a bond corresponding to varying percentages of an article’s entered value would be required for temporary import during the Presidential review period.  With respect to Griffin, a bond in the amount of 12.45% is required for tablet cases, and no bond is required for non-tablet cases; for defaulting respondents, a bond in the amount of 331.8% for tablet cases and 245.53% for non-tablet cases is required; and for all other infringing products, a bond of 100% of the entered value of the product would be required.  We now provide additional details.

According to the opinion, in the ID the ALJ found that the Griffin Survivor for the iPod Touch does not infringe the asserted claims of the ‘122 patent because the “tab” on the right side of the stretchable cushion layer that fits into a corresponding “groove” in the hard shell cover of the case is identical to the structure identified in the specification as a “switch pad,” and the “groove” is really an opening for the iPod’s controls.  According to ALJ Essex, the “tab” covers the volume up an down buttons on the phone and needs to be able to press down to activate the buttons, so the “tab” is capable of moving through the “groove” and does not “fit into the corresponding groove” as required by the claims.  The ALJ also found that the “groove” covers a substantial portion of the depth of the case and is therefore not “narrow” as required by the claims.  However, the Commission agreed with the Commission Investigative Staff (“OUII”) that the ALJ erred in his application of the construction of the claim term “groove” to the accused product.  Specifically, the Commission determined that “because the ALJ found, in part, that certain features of the accused device look like features in the patent not specifically labeled as ‘grooves,’ he concluded that they could not meet the groove limitation, and effectively re-construed the claim term.”  The Commission found that the record evidence shows that the features in the Griffin Survivor for the iPod Touch that Otter’s expert identified as meeting the “tab/groove” limitation satisfy that limitation, and the mere fact that the feature may also resemble a feature described in the ‘122 patent as “switch pad” and “switch opening” does not change the fact that the feature meets the claim limitation.  The Commission also agreed with the OUII that just because a tab is “capable of moving through” a groove does not mean that the tab does not fit snugly in the groove, and that for an opening to be “narrow” it must be substantially longer than it is wide – it has nothing to do with the depth of the case.

The Commission agreed with ALJ Essex and the OUII that a GEO is warranted under both Section 337(d)(2)(A) and (B).  In particular, the Commission noted the ALJ’s findings that respondents named in the investigation appear to have changed product boxing, companies selling infringing protective cases frequently change their names to avoid detection, a significant number of manufacturers produce infringing products, it would be easy for even more suppliers to enter the market, and it is difficult to identify the source of the infringing products.  The Commission also accepted the ALJ’s recommendation to issue cease and desist orders directed to Griffin and the defaulting domestic respondents that extend to their Internet activities.  Further, the Commission agreed with Otter and the OUII that the public interest factors are not implicated in the investigation.  Finally, the Commission determined that ALJ Essex correctly calculated the bond amount for Griffin and for the defaulting respondents based on price differentials, adopting his recommendation except with respect to the defaulting respondents’ non-tablet cases.  For those cases, the Commission set the bond amount to 245.53% instead of the 195.12% recommended by the ALJ on account of his finding that some of the defaulting respondents’ products did not infringe, resulting in a new price differential and a higher bond amount.

With its opinion, the Commission terminated the investigation.