On June 19, 2013, the Federal Circuit issued its opinion in Thomson Licensing SAS v. Int’l Trade Comm’n (2012-1536).  This was an appeal by Thomson Licensing SAS and Thomson Licensing, LLC (collectively, “Thomson”) from the International Trade Commission’s (the “Commission”) final determination in Certain Liquid Crystal Display Devices, Including Monitors, Televisions, Modules, and Components Thereof (Inv. Nos. 337-TA-741/749). 

In the opinion, the Federal Circuit affirmed the Commission’s final determination of no violation of Section 337 by Qisda Corp., Qisda America Corp., Qisda Ltd., BenQ Corp., BenQ America Corp., and BenQ Latin America Corp. (collectively, “Qisda”); AU Optronics Corp. and AU Optronics Corp. of America (collectively, “AUO”); and ChiMei Innolux Corp., Innolux Corp., and Chi Mei Optoelectronics USA, Inc. (collectively, “CMI”) with respect to U.S. Patent Nos. 5,978,063 (the ‘063 patent) and 5,648,674 (the ‘674 patent).  In particular, the Federal Circuit affirmed the Commission’s determination that the asserted claims of the ‘063 patent are invalid as obvious over U.S. Patent No. 4,568,149 (“Sugata”) in view of U.S. Patent No. 4,775,225 (“Tsuboyama”).  The Federal Circuit also affirmed the Commission’s determination that the asserted claims of the ‘674 patent are invalid as anticipated by or obvious over Japanese Patent Application No. JP 06-130415A (“Fujitsu”).

According to the opinion, the Commission found that AUO and Qisda infringe certain claims of the ‘063 patent, but CMI does not infringe any claims of the ‘063 patent.  However, the Commission further found that all of the asserted ‘063 claims are invalid.  In particular, the Commission found that Sugata discloses every limitation of the asserted claims, including anisotropic spacers and mechanical rubbing during the LCD manufacturing process, but concluded that Sugata did not specify when the mechanical rubbing occurred.  The Commission further found that Tsuboyama discloses anisotropic spacers that are mechanically rubbed along their long axis after formation.  The Commission then found that one of ordinary skill in the art would have been motivated to combine the references to arrive at the claimed invention, based on the references’ common goal of providing spacing elements in a liquid crystal display.  Regarding the ‘674 patent, the Commission found that CMI and Qisda infringe certain asserted claims, but that these claims are all either anticipated by Fujitsu or obvious over Fujitsu in view of the demonstrated knowledge of those skilled in the art.  See our July 13, 2012 post for more details on the Commission’s final determination.

On review, the Federal Circuit found no error in the Commission’s obviousness determination with respect to the ‘063 patent.  In particular, the Federal Circuit rejected an argument by Thomson that the Commission had impermissibly shifted the burden of proof during its obviousness analysis.  In view of this invalidity finding, the Federal Circuit declined to reach Thomson’s further argument that the Commission had erred in finding that CMI’s LCD modules do not infringe the ‘063 patent.  As to the ‘674 patent, the Federal Circuit agreed with the Commission that substantial evidence supports the finding that Fujitsu discloses all of the asserted claim limitations.

In view of the above, the Federal Circuit affirmed the Commission’s final determination of no violation of Section 337.