On June 7, 2012, the International Trade Commission (the “Commission”) issued a notice determining not to review certain orders issued by ALJ Thomas B. Pender in Certain Automotive GPS Navigation Systems, Components Thereof, and Products Containing Same (Inv. No. 337-TA-814).
By way of background, this investigation was instituted in November 2011 based on a complaint filed by Beacon Navigation GmbH (“Beacon”) alleging violation of Section 337 in the importation into the U.S. and sale of certain automotive GPS navigation systems, components thereof, and products containing same that infringe certain patents. Beacon named numerous automobile manufacturers as proposed respondents, including Toyota, General Motors, Ford, Honda, Nissan, Hyundai, Kia, Mercedes-Benz, and BMW.
On April 13, 2012, Beacon filed a motion to withdraw its complaint. On April 20, 2012, certain Respondents, including Suzuki, Mercedes-Benz, Ford, Chrysler, Nissan, Honda, General Motors, Mazda, Jaguar, Toyota, Volvo, Hyundai, Kia and BMW filed a response indicating that they did not oppose the motion to terminate, but requested that it not be granted until these respondents investigate whether Beacon violated Rule 210.21(a)(9)(iii) (relating generally to the termination of investigations) and/or Rule 210.4(c) (relating generally to written submissions, representations and sanctions) concerning the veracity of licensing information in its complaint. On the same day, respondents filed a motion requesting that the ALJ sua sponte issue a show cause order directing Beacon and its counsel to (1) identify all licensees that Beacon and its counsel are currently aware of and knew of at the time the Complaint was filed, (2) provide details of Beacon’s pre-filing investigation, and (3) show cause why Beacon did not violate Commission Rule 210.4(c) by identifying only MiTAC International Inc. as a licensed entity.
On May 8, 2012, the ALJ issued Order No. 8 denying the motion for a sua sponte show cause order, as well as two other motions to recover from complainant costs incurred in preparing for cancelled depositions. See our May 10, 2012 post for more details. On the same day, the ALJ issued Order No. 9 granting Beacon’s motion to terminate the investigation based on a withdrawal of the complaint. See our May 8, 2012 post for more details. On May 15, 2012, several respondents filed a joint petition for review of both orders and argued that there is a split in Commission authority concerning the application of the safe harbor provision which is at issue in Order No. 8. The petition also sought review of Order No. 9 to enable the Commission to grant the relief sought with respect to Order No. 8.
According to the June 7 notice, the Commission decided not to review either of ALJ Pender’s orders:
The Commission does not agree that there is a split in Commission precedent regarding application of the safe harbor provision of 19 C.F.R. § 210.4(d)(1). The Commission investigations cited by petitioners each represent the exercise of discretion by the presiding ALJ in determining whether to issue a show cause order.