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Patent Litigation - ITC Section 337

Finnegan represented Zoran in two ITC investigations against MediaTek involving optical disk controller chips, acting as co-counsel with another firm. In Zoran’s affirmative case against MediaTek, the administrative law judge found in favor of Zoran after trial, and the commission ultimately entered an exclusion order against MediaTek’s infringing chips and products of many of its customers. In MediaTek’s case against Zoran, the judge exonerated Zoran’s products after a trial and found one of the two asserted patents invalid. Following issuance of the exclusion order in the first case, we also obtained a favorable ruling before the Customs Service excluding MediaTek’s supposed design-around chip. That series of victories resulted in a very favorable settlement.
Finnegan defended Broadcom’s Altima subsidiary against Intel’s patent infringement allegations based on four separate patents in two different ITC actions and two different district court cases. Intel withdrew the first patent before trial when we found invalidating prior art. The second patent we proved invalid at trial, and Intel did not seek an appeal. For the third patent, we proved that 14 of 18 claims were invalid and our clients were entitled to use any pattern of solder balls other than a “bulI’s-eye” pattern. And the ITC’s decision in Intel’s favor on the fourth patent was later rejected in the district court case when the judge issued a published decision in Altima’s favor on all claim construction issues.
The International Trade Commission issued its final determination in favor of Finnegan clients Nutrichem Co. and Jiangxi Heyi Chemicals Co.--both from China--and their co-respondents Summit Agro USA and Summit Agro North America Holding Corporation, denying complainant FMC Corp.’s request to exclude their products from the U.S. market. In Sulfentrazone, Sulfentrazone Compositions, and Processes for Making Sulfentrazone, the ITC found no violation. Specifically, the ITC found no infringement by Nutrichem or Heyi, invalidity of the asserted claims, and no domestic industry by FMC. This was the second time the ITC found in favor of Nutrichem and Heyi, having denied FMC’s request for temporary relief a few months earlier, similarly finding that FMC had not shown it was likely to succeed on the merits: the ITC held, among other things, that FMC was not likely to prevail on infringement or domestic industry and that the claims were likely invalid.
We defended ADT, Actron, and Tokai Denshi against Checkpoint Systems’ attempt to block their importation of resonate tags used to detect merchandise theft. At trial before the ITC judge, we proved that Checkpoint’s patent was invalid on an unusual basis: another Checkpoint employee had conceived and reduced to practice the claimed invention before the work of the inventor named in the patent. The full commission agreed. We then successfully defended that decision on appeal, where the Federal Circuit not only affirmed the decision, but also bestowed a “chutzpah” award on our adversary.
Finnegan defended First International Computer (FIC), FIC America, and Everex against an ITC case brought by Intel Corporation concerning personal computer motherboard chipsets.
Nuance filed a complaint against Shanghai Hanxiang (CooTek) Information Technology Co., Ltd. in the ITC, accusing CooTek of infringing five patents generally related to software keyboard for mobile devices. CooTek took a targeted approach, which resulted in Nuance dropping one patent after receiving CooTek's prior art and obtaining an early finding of noninfringement for certain designs on three other patents. As the parties approached trial, the dispute focused on the fifth patent, which had the shortest remaining life. CooTek's streamlined approach proved to be both effective and efficient. Finnegan helped negotiate a favorable settlement, which protected CooTek’s U.S. market and further saved CooTek the expense of a trial.
In a complete victory for Finnegan client Vuly Trampolines, the International Trade Commission issued a final determination of no violation in its investigation Certain Soft-Edged Trampolines and Components Thereof.  Springfree Trampolines filed its complaint alleging Vuly’s Thunder trampoline infringed its patent, just as Vuly was entering the U.S. market after a successful launch of the Thunder trampoline in Vuly’s native Australia.  After a full evidentiary hearing, the administrative law judge issued an initial determination finding no violation by Vuly.  The ITC reviewed the decision and confirmed no violation.  Of the two claims Springfree asserted against Vuly, the ITC found one claim not infringed and the other invalid.  The ITC also found that Springfree failed to establish the economic prong of domestic industry, resulting in a separate and independent basis for the finding of no violation.
Finnegan helped InterDigital secure a settlement with Samsung, the terms of which included InterDigital receiving $400 million for a license for 3G cellular telephone technologies.  The settlement was reached on the eve of an Initial Determination by the chief administrative law judge, following Finnegan's representation of InterDigital in a six-day trial at the International Trade Commission (ITC).
 
As part of a global dispute concerning LED technology that encompassed litigations in the United States, Germany, South Korea, Japan, and China, Finnegan represented LG Electronics and LG Innotek against OSRAM AG in three separate investigations before the ITC and in two related U.S. district court proceedings. All three ITC investigations proceeded to trial, and a final initial determination issued in one proceeding, which the Commission determined to review. The parties, however, reached a global settlement resolving all disputes worldwide before the Commission issued any final decisions and before any trial in the U.S. district courts. Based on public press releases from both parties, LG and OSRAM are pleased to have reached agreement.
Finnegan defended four different affiliates of GP Batteries International Ltd. in an alkaline battery patent infringement case filed by Eveready at the International Trade Commission against 26 respondents.  SEC records indicated that Duracell had previously paid Eveready $20 million for a license under the Eveready patent and that Rayovac and Panasonic had also been forced into paying Eveready a royalty for their alkaline batteries.  Working closely with the Chairman of the Board, we devised a defense that resulted in a settlement agreement prior to trial that other respondents characterized as a "walk-away" deal. 
Administrative Law Judge Theodore Essex of the U.S. International Trade Commission issued an initial determination in favor of Finnegan clients Pioneer Corporation and Pioneer Electronics (USA) Inc., holding that Pioneer does not infringe any claim of the four patents asserted by Honeywell International. Judge Essex also ruled that the asserted claims in three of Honeywell’s patents are invalid. The technology at issue involves GPS navigation units. Three of Pioneer’s competitors were parties to this ITC investigation but settled with Honeywell before trial. After presiding over a week-long trial in June and evaluating the parties’ post-trial submissions, Judge Essex issued a detailed 172-page opinion absolving Pioneer of any liability in connection with this litigation.
The U.S. International Trade Commission (ITC) issued a final determination in favor of Finnegan client SKC Kolon PI, Inc. and SKC, Inc. (collectively "SKC").  Kaneka Corporation filed a complaint against SKC in the ITC, alleging unfair trade practices and infringement of four patents directed to polyimide films.  Administrative Law Judge Robert K. Rogers, Jr. found all of the asserted claims to be not infringed, invalid, and/or failing to meet the domestic industry requirements, and therefore, no violation of Section 337 of the Tariff Act of 1930, as amended.  After a partial review, the Commission affirmed Judge Rogers' decision.
An administrative law judge with the U.S. International Trade Commission (ITC) found that cold cathode fluorescent light ("CCFL") inverter circuits produced by Finnegan client Monolithic Power Systems do not infringe a patent owned by complainant O2 Micro.  O2 Micro had previously withdrawn infringement allegations based on three other patents earlier in the case.  The ALJ also found that laptop computers and flat screen monitors incorporating the accused MPS chips sold by Finnegan clients ASUSTeK Computer and ASUS Computer International did not infringe the same patent.  Further, the ALJ found that O2 Micro's own products do not practice the patented technology and, as a result, there was no domestic industry, a necessary showing in an ITC case.  MPS and its customers were, therefore, found to have not violated Section 337.
When its right to bring certain vehicles into the United States was challenged, Toyota needed fast and decisive relief. We represented Toyota before the ITC and argued that there was no violation of Section 337 or patent infringement. The ITC adopted trial findings of patent invalidity and no infringement, and then terminated the investigation, clearing the way for more hybrid vehicles in the United States.
Finnegan represented Mitsubishi Heavy Industries, Ltd. and Mitsubishi Power Systems America, Inc. against General Electric in a U.S. International Trade Commission investigation. The ITC ruled in favor Mitsubishi, terminating a Section 337 investigation based on a General Electric complaint alleging patent infringement by Mitsubishi’s 2.4 Megawatt variable speed wind turbines. The Commission ruling of no violation overturned an earlier finding by an ITC administrative law judge that two of GE’s patents had been violated.
Seoul Semiconductor received favorable rulings on several important motions in its U.S. International Trade Commission (ITC) case led by Finnegan against Nichia Corporation, paving the way to a valuable cross-licensing deal as part of a settlement ending years of litigation in courts across the globe.  Finnegan represented SSC in cases from the Eastern District of Texas to the Central District of California, as well as at the Federal Circuit.  Shares in SSC rose fifteen percent on the Korea Exchange following the announcement.
On behalf of Crucible Materials, we filed an ITC patent infringement case involving industrial neodymium-iron-boron magnets and prevailed against all eight respondents. We obtained a combination of consent orders, cease and desist orders, limited exclusion orders, and general exclusion orders against Chinese competitors. The general exclusion order prohibits all of Crucible’s foreign competitors from importing infringing magnets, regardless of whether they were parties to the ITC case. We later brought an enforcement action that resulted in civil penalties of $1.5 million against several respondents. The civil penalty was affirmed on appeal.
The U.S. International Trade Commission (ITC) has found Nvidia Corp. and several of its customers liable for infringing three Rambus Inc. patents. In a final determination, the ITC affirmed Administrative Law Judge Theodore Essex's ruling that three Rambus patents were valid and infringed. The commission issued limited exclusion and cease-and-desist orders barring Nvidia and other respondents from importing infringing products for sale in the United States.
In an ITC Section 337 action between Finnegan client LG Electronics and its competitor Whirlpool, the ITC denied all of Whirlpool’s claims for relief, resulting in a total victory for LG Electronics.  Judge Theodore R. Essex had previously ruled that LG refrigerators are not covered by Whirlpool's U.S. Patent No. 6,082,130.  The ITC later revised the claim interpretation of the ‘130 patent and asked the judge to reconsider the remaining disputed issues based on its new interpretation.  Judge Essex applied the ITC’s interpretation and again found that the ‘130 patent does not cover LG refrigerators and also concluded that all but one of the asserted claims is invalid.  Whirlpool originally claimed that five of its patents covered LG refrigerators.  During the course of the case, Whirlpool withdrew four of those patents prior to the hearing.
We represented Tyco Healthcare in bringing a complaint against Absormex for importation of infringing absorbent garments from Mexico. The investigation was one of the fastest ITC cases to get to trial, with a trial date less than six months from the start of the investigation. On the last day before the trial was to begin, a favorable settlement was reached, and the case was terminated.
We defended Topcon Instrument against a multipatent ITC case brought by Cambridge Instruments involving devices for diagnosing glaucoma. In a one-week trial held just two months after the case began, we established that Topcon’s instruments were not covered by the patents, and the ITC judge thus denied Cambridge Instruments’ motion for temporary relief.
We defended TEAC in an ITC case brought by Tandon Industries involving the head assemblies in floppy disk drives. While a temporary exclusion order was granted against all respondents, we later established that TEAC's head assemblies were not covered by the patent. The matter was favorably settled on behalf of TEAC before the hearing on permanent relief, and the noninfringement position we devised was successfully asserted by the remaining respondent. That noninfringement defense was adopted by the judge, the full ITC, and ultimately, the Federal Circuit.
Finnegan successfully defended Hoechst against patent infringement claims by Kaken Pharmaceuticals in the ITC. Kaken sought to exclude Hoechst’s agricultural feed products containing salinomycin, an antibiotic, from U.S. markets. We persuaded the ITC that the Kaken patents were invalid and unenforceable on the grounds of inequitable conduct.