On August 24, 2011, Technology Properties Limited, LLC of Cupertino, California (“TPL”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.
The complaint alleges that the following entities (collectively, the “Proposed Respondents”) unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain digital photo frames and image display devices and components thereof that infringe certain claims of U.S. Patent Nos. 6,976,623 (the ‘623 patent), 7,162,549 (the ‘549 patent), 7,295,443 (the ‘443 patent), and 7,522,424 (the ‘424 patent) (collectively, the “asserted patents”):
- Action Electronics Co., Ltd. of Taiwan
- Aiptek International Inc. of Taiwan • Aluratek, Inc. of Tustin, California
- Audiovox Corporation of Happauge, New York • CEIVA Logic, Inc. of Burbank, California
- Circus World Displays Ltd. of Canada
- Coby Electronics Corporation of Lake Success, New York
- Curtis International, Ltd. of Canada
- Digital Spectrum Solutions, Inc. of Irvine, California
- Eastman Kodak Company of Rochester, New York
- Mustek Systems, Inc. of Taiwan
- Nextar Inc. of La Verne, California
- Pandigital of Dublin, California
- Royal Consumer Information Products, Inc. of Somerset, New Jersey
- Sony Corporation of Japan
- Sony Corporation of America of New York, New York
- Transcend Information, Inc. of Taiwan
- ViewSonic Corporation of Walnut, California
- Win Accord Ltd. of Taiwan
- WinAccord U.S.A., Inc. of San Jose, California
According to the complaint, the asserted patents generally relate to hardware used in a broad range of devices, including digital photo frames and other digital image display/viewing devices that incorporate flash memory card readers. In particular, the ‘623 patent relates to a memory card reader having a number of interfaces to read at least two different types of memory cards, and to provide parallel read/write access to both cards to enable the transfer of data from one card to the other. The ‘549 patent relates to a controller chip that interfaces with a flash memory card which may (or may not) have a controller for error correction. The ‘443 patent relates to a multi-media memory port. Lastly, the ‘424 patent relates to a single-slot flash memory card reader that has a number of sets of contact pins mounted in a single slot reader at locations adapted to interface with the electrical contacts of different types of flash memory cards.
In the complaint, TPL states that the Proposed Respondents import and/or sell products that infringe the asserted patents. The complaint specifically identifies a number of allegedly infringing products associated with the various Proposed Respondents.
Regarding domestic industry, TPL states that it has made substantial investments in the exploitation of the asserted patents through its significant licensing activities, which have resulted in numerous licensees whose products practice the inventions claimed in the asserted patents. TPL states that it has employed a team of IP legal and R&D employees in Cupertino, California, who have worked to analyze and license its CORE Flash portfolio. TPL further states that it has contacted several hundred potential licensees in furtherance of its licensing program, and that it has been successful in its licensing program. According to the complaint, the fact that many TPL licensees make and sell products covered by the asserted patents demonstrates that there is a strong nexus between TPL’s substantial CORE Flash licensing program and the ‘623, ‘549, ‘443, and ‘424 patents.
As to related litigation, TPL states that, concurrently with the filing of the instant ITC complaint, it is filing a civil action in the U.S. District Court for the Eastern District of Texas accusing the Proposed Respondents of infringing the asserted patents. Additionally, TPL states that on February 8, 2008, ASUSTek Computer, Inc. (“ASUSTek”) filed a declaratory judgment action against TPL and others in the U.S. District Court for the Northern District of California that included a declaratory judgment claim involving the ‘623 patent. According to the complaint, that action was dismissed on February 23, 2009 pursuant to settlement. TPL further states that, on April 25, 2008, TPL and another entity filed a complaint against ASUSTek in the U.S. District Court for the Eastern District of Texas alleging infringement of the ‘443 and ‘549 patents. TPL states that this case was dismissed on February 12, 2009 pursuant to settlement. Additionally, TPL states that on April 25, 2008, TPL and others filed a complaint against ASUSTek in the U.S. District Court for the Eastern District of Texas alleging infringement of, inter alia, the ‘623 patent. TPL states that this case was dismissed on March 6, 2009 pursuant to settlement.
With respect to potential remedy, TPL requests that the Commission issue a permanent limited exclusion order and permanent cease and desist orders directed at the Proposed Respondents.