On October 13, 2011, the International Trade Commission (the “Commission”) issued a notice determining to review in part an Initial Determination (“ID”) issued by ALJ Robert K. Rogers, Jr. on August 29, 2011 granting-in-part Respondents’ motion for summary determination that Complainant Freescale Semiconductor, Inc.’s (“Freescale”) claims against Respondents Funai Electric Co., Ltd. and Funai Corporation, Inc (collectively, “Funai”) are precluded in Certain Integrated Circuits, Chipsets, and Products Containing Same Including Televisions (Inv. No. 337-TA-786).

By way of background, the Complainant in this investigation is Freescale and the Respondents are Funai, MediaTek Inc. (“MediaTek”), and Zoran Corporation (“Zoran”) (collectively, the “Respondents”).  On July 19, 2011, Funai filed a motion for summary determination that Freescale’s allegations against it in the instant ITC investigation are precluded under the doctrines of issue preclusion and claim preclusion based on the Commission’s determination of no violation in a previous ITC investigation, Inv. No. 337-TA-709.  Funai also requested that Freescale be judicially estopped from arguing that the Funai products at issue in the present investigation are different from those at issue in the 709 investigation.  Funai further requested that the instant investigation be terminated in its entirety.  MediaTek and Zoran ultimately joined in Funai’s motion.

In the ID, ALJ Rogers granted-in-part Funai’s motion for summary determination that Freescale’s claims against it in the instant investigation are precluded with respect to certain Funai products that contain integrated circuits that were at issue in the 709 investigation.  However, the ALJ denied Funai’s motion with respect to those accused products that were not at issue in the 709 investigation, and denied Funai’s request to terminate the investigation in its entirety.

According to the October 13 notice, Freescale filed a petition for review of the ID on September 7, 2011, arguing that the ALJ’s finding of claim preclusion was erroneous.  Funai and MediaTek also filed petitions for review on September 7, 2011, requesting review of the ALJ’s denial of Funai’s request to terminate the investigation in its entirety.  On September 14, 2011, Funai, MediaTek, and the Commission Investigative Staff each filed a response to Freescale’s petition, and Freescale filed responses to Funai’s and MediaTek’s petitions.

After examining the record of the investigation, including the ID, the petitions for review, and the responses to the petitions for review, the Commission determined to review the ID in part.  Specifically, the Commission determined to review the ID’s statement that new importations do not create a new cause of action.  The Commission also determined to review the ID to clarify specifically which products were adjudicated in the 709 investigation.  The Commission further determined to review the ID to consider whether the non-Zoran integrated circuits at issue in the present investigation are a part of the same claim or cause of action as the Zoran circuits that were actually adjudicated in the 709 investigation.  The Commission also determined to review the ID as to the aspects of Funai’s motion that concern issue preclusion and judicial estoppel.

The Commission determined not to review the ID’s finding of claim preclusion with respect to Funai products containing Zoran integrated circuits identified in the 709 investigation.  Additionally, after finding that ALJ Rogers’s denial of Funai’s motion to terminate the investigation was not actually part of the ID, the Commission declined to consider Funai’s and MediaTek’s petitions and Freescale’s responses to those petitions, citing Commission Rules 210.42(c) and 210.43(a).

The notice states that the parties are requested to submit briefing on the issues under review.  The notice further states that the Commission is particularly interested in responses to a question relating to whether the Funai products that contain the Zoran integrated circuits identified in the ID of the 709 investigation are “essentially the same” as any of the remaining products at issue in the present investigation under Federal Circuit precedent.

Written submissions are due by October 24, 2011, with reply submissions due by October 31, 2011.