On December 3, 2013, ALJ E. James Gildea issued the public version of Order No. 34 (dated November 14, 2013) in Certain Integrated Circuit Devices and Products Containing the Same (Inv. No. 337-TA-873).
According to the Order, Respondents LG Electronics, Inc.; LG Electronics U.S.A., Inc.; LG Electronics MobileComm U.S.A. Inc.; HTC Corporation; HTC America, Inc.; Motorola Mobility LLC; Nokia Corporation; Nokia, Inc.; Pantech Co., Ltd.; and Pantech Wireless, Inc. (collectively, “Respondents”) filed a motion for summary determination to terminate the investigation on the grounds that Complainant, Tela Innovations, Inc. (“Tela”), is guilty of unclean hands and lacked standing with respect to U.S. Patent Nos. 8,264,044 and 8,264,049 (collectively, “patents-at-issue”). Respondents argued that ALJ Gildea should apply the doctrine of unclean hands and terminate the investigation because Tela filed its Complaint knowing that inventorship for the patents-at-issue was incorrect. Additionally, Respondents asserted that the doctrine of unclean hands should apply because Tela knowingly hid the erroneous inventorship until after it corrected the inventorship issue on the eve of discovery closure. Regarding standing, Respondents argued that the investigation must be terminated because Tela did not have standing to assert the patents-at-issue when it filed its complaint, and that Tela’s later-acquired patent assignment does not correct Tela’s lack of standing. The Commission Investigative Staff agreed with Respondents’ argument that the investigation should be terminated with respect to the patents-at-issue because Tela lacked standing when it filed its complaint.
In opposition, Tela argued that issues of material fact surround Respondents’ allegations of unclean hands and lack of standing. As to standing, Tela argued that it possessed all rights in the patents-at-issue because the agreements with the co-inventors contained the phrase “do hereby assign” which acted as a present assignment of future inventions. Furthermore, Tela asserted that its later-filed assignment documents cured any alleged lack of standing at the time Tela filed the complaint. Regarding unclean hands, Tela argued that it owned all the rights in the patents-at-issue before filing its complaint. Additionally, Tela asserted that it did not try to hide the inventorship issues, but instead produced documents and permitted depositions on the issue of inventorship. Tela further argued that issues of standing are curable and now moot because Tela corrected the inventorship issues and acquired assignments.
ALJ Gildea agreed with Tela that issues of material fact remain in dispute that preclude the summary determination sought by Respondents, noting that all justifiable inferences must be drawn in Tela’s favor. Accordingly, the ALJ denied the motion.