On March 14, 2014, the International Trade Commission (the “Commission”) issued a notice in Certain Electronic Imaging Devices (Inv. No. 337-TA-850).  In the notice, the Commission determined to reverse the Initial Determination (“ID”) issued by ALJ Theodore R. Essex on September 30, 2013—which had found a violation of Section 337—and terminated the investigation.

By way of background, the investigation is based on a complaint filed by Flashpoint Technology, Inc. (“Flashpoint”) alleging a violation of Section 337 in the importation and sale of certain electronic imaging devices that infringe one or more claims of U.S. Patent Nos. 6,504,575 (the ‘575 patent), 6,222,538 (the ‘538 patent), 6,400,471 (the ‘471 patent), and 6,223,190 (the ‘190 patent).  See our May 25, 2012 post for more details on the complaint and our June 27, 2012 post for more information about the Notice of Investigation.  The ITC instituted an investigation on June 25, 2012.  The ‘575 patent was later terminated from the investigation.  The remaining Respondents as of the time of the ID were HTC Corp. and HTC America, Inc. (collectively, “HTC”), Huawei Technologies Co., Ltd. and FutureWei Technologies, Inc. d/b/a Huawei Technologies (USA) (collectively, “Huawei”), and ZTE Corp. and ZTE (USA) Inc. (collectively, “ZTE”).

In the ID, ALJ Essex determined that a violation of Section 337 had occurred with respect to the ‘538 patent.  See our October 18, 2013 post for more details.  Specifically, the ALJ concluded that two of the accused HTC smartphones (the HTC Vivid and HTC Droid Incredible 4G LTE) infringed the asserted claims, but that none of the other accused devices infringed the asserted patents.  The ALJ also determined that Flashpoint met the economic prong of the domestic industry requirement as to all asserted patents, and that the smartphones of Flashpoint’s licensees met the technical prong of the domestic industry requirement as to the ‘538 patent, but not as to the ‘471 or ‘190 patents.  Finally, the ALJ determined that the asserted patents were not invalid in view of the prior art or the on-sale bar and that the ‘190 and ‘538 patents were not unenforceable for failure to name an inventor.

On December 16, 2013, the Commission determined to review certain findings in the ID and issued a notice requesting briefing from the parties on fourteen specific questions.  See our December 23, 2013 post for more details.

According to the March 14 notice, after examining the record of the investigation, including the ID and the parties’ submissions, the Commission determined to reverse ALJ Essex’s finding of a violation of Section 337 and to find no violation of Section 337 with respect to the asserted patents.  In particular, the Commission found that:  (1) the HTC Vivid and HTC Droid Incredible 4G LTE smartphones do not infringe the asserted claims of the ‘538 patent; (2) Flashpoint has met the technical prong of the domestic industry requirement for the ‘538 patent; (3) Respondents have not shown that the asserted claims of the ‘538 patent are obvious; (4) the ALJ correctly construed the term “operating system” in the asserted claims of the ‘471 patent; (5) the accused HTC, Huawei, and ZTE products do not infringe the asserted claims of the ‘471 patent; (6) Flashpoint has not proved the technical prong of the domestic industry requirement for the ‘471 patent; (7) Respondents have not shown that the asserted claims of the ‘471 patent are anticipated; (8) the accused HTC, Huawei, and ZTE products do not infringe the asserted claim of the ‘190 patent; (9) Flashpoint has not proved the technical prong of the domestic industry requirement for the ‘190 patent; (10) Respondents have not shown that the asserted claim of the ‘190 patent is anticipated or rendered obvious; (11) Respondents have not shown that the asserted claims of the ‘538, ‘471, and ‘190 patents are invalid in view of the on-sale bar; (12) Respondents have not shown that claim 19 of the ‘538 patent is unenforceable due to failure to name an inventor; and (13) Flashpoint has proved the economic prong of the domestic industry requirement with respect to the ‘538, ‘471, and ‘190 patents.  The Commission further determined to take no position on whether the asserted claim of the ‘190  patent is anticipated or rendered obvious by certain additional prior art.

In view of these findings, the Commission reversed ALJ Essex’s ID, found no violation of Section 337, and terminated the investigation. 

The notice states that a Commission opinion will issue promptly.  We will provide additional information once the public version of the opinion issues.