On May 17, 2013, the International Trade Commission (the “Commission”) issued the public version of its opinion in Certain Devices for Improving Uniformity Used in a Backlight Module and Components Thereof and Products Containing Same (337-TA-805).

By way of background, the Complainants in this matter are Industrial Technology Research Institute and ITRI International, Inc. (collectively, “ITRI”) and the Respondents are LG Corporation, LG Electronics, Inc., and LG Electronics U.S.A., Inc. (collectively, “LG”).  ITRI alleged that LG violated Section 337 by the importation and/or sale of LCD televisions and monitors that infringed claims 6, 9, and 10 of U.S. Patent No. 6,883,932 (the ‘932 patent).  See our September 12, 2011 post for more details about this investigation.

ALJ Essex’s Initial Determination (“ID”) in this case found no infringement and no domestic industry, and therefore ALJ Essex did not reach the issues of invalidity and unenforceability.   See our November 6, 2012 post for more details.  The Commission remanded-in-part the investigation back to ALJ Essex to consider the parties’ invalidity and unenforceability arguments and make appropriate findings.  As described in our March 13, 2013 post, ALJ Essex issued a Remand Initial Determination (“RID”) finding that the ‘932 patent is invalid under 35 U.S.C. § 102 and that no violation of Section 337 has occurred in this investigation.  The Commission determined to review certain aspects of the ID and RID, and we now provide details of the opinion.

Claim Construction

ITRI petitioned for review of the ID’s claim construction of the phrase “structured arc sheet.”  However, the Commission affirmed the construction of “structured arc sheet” set forth in the ID as “a sheet constructed in the shape of an arc,” adopting the construction proposed by LG and the Commission Investigative Staff (“OUII”).

Infringement

ITRI also petitioned for review of the ID’s finding that the accused products do not infringe the ‘932 patent.  On review, the Commission affirmed the finding of no infringement, although expressed slightly different reasoning than that adopted by the ALJ in the ID.

Validity

The Commission reviewed the RID’s findings on anticipation in relation to two references, the Yao and Katoh patents.  Although the Commission ultimately agreed with ALJ Essex’s determination that Yao anticipated the asserted claims, the Commission held that “some clarification of the analysis is warranted with respect to the ALJ’s characterization of [ITRI’s expert]’s testimony.”  Specifically, the Commission determined that ITRI’s expert’s testimony does not equate to the “admission” as relied on by the ALJ, but still provided sufficient support for the finding that Yao discloses the element of “two structured arc sheets” and anticipated the ‘932 patent. 

The RID found that the Katoh patent did not anticipate the ‘932 patent, and thus the dispute between the parties centered on whether or not Katoh disclosed “a plurality of light sources.”  On review, the Commission agreed with LG that certain embodiments of Katoh did disclose a plurality of light sources.  However, based on the post-hearing briefing, the Commission agreed with ITRI that LG failed to prove by clear and convincing evidence that the location of the two structured arc sheets, required to be “mounted at the periphery of the light source,” was adequately shown in Katoh.  As such, Katoh did not anticipate the ‘932 patent.

Domestic Industry

The ID found that ITRI met the economic prong of the domestic industry requirement through its licensee, but failed to satisfy the technical prong of the test.  Although disagreeing somewhat with the ALJ’s reasoning, the Commission agreed that ITRI has failed to satisfy the technical prong of the domestic industry requirement.

In light of the reasons above, the Commission affirmed the finding of no violation of Section 337 with respect to the ‘932 patent.