This action might not be possible to undo. Are you sure you want to continue?
In the Matter of CERTAIN ELECTRONIC DEVICES INCLUDING HANDHELD WIRELESS COMMUNICATIONS DEVICES Inv. No. 337-TA-673
ORDER NO. 7:
DENYING RESPONDENTS' MOTION TO AMEND THE NOTICE OF INVESTIGATION (April 16, 2009)
On April 3, 2009, Respondents Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLP (collectively "Samsung") moved to amend the Notice ofInvestigation to limit the scope of the investigation to Certain
Camcorders and Wireless Telephones with Keypads. (Motion Docket No. 673-001.) On April 7,
2009, complainant Saxon Innovations, LLC ("Saxon") filed a response opposing the motion. On April 15, 2009, the Commission Investigative Staff ("Staff') filed a response opposing the motion. Samsung argues that there is good cause to limit the scope of the investigation because the current Notice of Investigation makes broad infringement claims against an unidentified range of Samsung's "electronic devices." (Mem. at 1.) Samsung states that Saxon's complaint is inadequate to support such a broad investigation, as the complaint only provides specific infringement allegations as to two Samsung products: a wireless telephone with a keypad and a camcorder. (Id. at 1-2.)
" (Id.) Staff argues that Samsung has not shown the good cause needed to amend the Notice of Investigation. (Id. (Id. which Saxon provided in the complaint.) Saxon further claims that the rule only requires the inclusion of specific instances of alleged unlawful importation and sales. at 16. that sets the scope of the investigation. (Saxon Resp.Samsung alleges that "a Commission investigation into patent infringement can extend only to articles as to which the complainant has alleged a nexus between the articles and the asserted patents. the scope of the investigation should be limited to those products.) Saxon argues that Samsung's motion is an inappropriate attempt to limit discovery in this investigation.12(a)(3) and 210. Samsung argues that it will be prejudiced if the Notice ofInvestigation is not limited. Staff states that "Samsung's arguments are concerned with the level of detail provided in the Complaint.) Saxon argues that it is the Notice ofInvestigation.12(a)(9). and that the complaint merely serves a notice function. as it claims that it will be "deprived of a fair opportunity to defend itself against broad." (Id.) Samsung asserts that because Saxon's complaint has only alleged a nexus between the asserted patents and two categories of Samsung products. at 9-14. unsubstantiated allegations.12. not with a deficiency in the Notice ofInvestigation itself.) Saxon states that Samsung cannot cite a single case in which a motion to amend the Notice of Investigation was granted in these circumstances. at 6. and Saxon included such information. (Id. at 10. (Id." (Staff 2 .) Samsung thus argues that Saxon's complaint fails to comply with Commission Rules 210. particularly on the short schedule of an ITC investigation.) Specifically. (Id. and not the complaint. at 11.) Finally. Saxon claims that the rule only requires the inclusion of representative claim charts. (Id. at 9. at 6-7.) Saxon asserts that its complaint complies with the pleading requirements of Commission Rule 210. (Id.
(9) Include.12. Commission Rule 210. (Id at 3. 19 CFR § 21O.Resp. The rule states. patent (viii) A showing that each person named as violating section 337 of the Tariff Act of 1930 is importing or selling the article covered by. 1989. at 2.8 ofthis chapter and §§ 210. inter alia: In addition to conforming with the requirements of § 201. the above 3 . Staff notes that Samsung may move for a protective order during discovery ifit believes that Saxon's discovery requests are overly burdensome. the complaint shall (3) Describe specific instances of alleged unlawful importations or sales. inter alia: After an investigation has been instituted.4 and 210. (Id at 2-3.) Staff claims that the complaint serves only as a notice function. when a complaint is based upon the infringement of a valid and enforceable U.14(b)(1) (2009).14 governs amendments to the Notice of Investigation and states.S.) Commission Rule 210.) Staff argues that there are alternative procedural protections available to Samsung that are more appropriate than amending the Notice of Investigation. 1989. or produced under the involved process covered by. and the Harmonized Tariff Schedule of the United States item nurnber(s) for importations occurring on or after January 1. and that Saxon's complaint meets the requirements of Commission Rule 210.5 of this part.12 governs the contents of a complaint. the complaint or notice of investigation may be amended only by leave of the Commission for good cause shown and upon such conditions as are necessary to avoid prejudicing the public interest and the rights of the parties to the investigation. (Id at 4. cease and desist order.) Staff also notes that Samsung may request an advisory opinion on the scope of the products covered by any exclusion order. and shall provide the Tariff Schedules ofthe United States item nurnber(s) for importations occurring prior to January 1. or consent order entered by the Commission. and includes a listing of the information required in a complaint.
") Samsung provides no support for the proposition that the complaint must layout infringement contentions for every product that Saxon accuses of infringement. See Certain NOR & NAND Flash Memory Devices & Products Containing Same.specific claims of each involved U. 2009 Notice of Investigation. The Notice of Investigation states that the "investigation [has been] instituted to determine whether there is a violation of subsection (a)(1 )(B) of section 337 in the importation into the United States. including handheld wireless communications devices" that infringe the asserted Saxon patents. patent to a representative involved article of each person named as violating section 337 of the Tariff Act or to the process under which such articled was produced. Inv. while the complaint serves as a notice function. or the sale within the United States after importation. The notice of investigation determines the scope of the investigation. patent. including handheld wireless communications devices. of certain electronic devices.) I find that Samsung has not demonstrated the good cause needed to amend the Notice of Investigation. The complaint merely serves to put Samsung on notice of Saxon's infringement allegations. The complainant shall make such showing by appropriate allegations. the sale for importation. I find that Saxon is not required to include its full. 12(a)(3). 337-TA-560." Saxon only provided specific allegations in its complaint regarding two categories of Samsung products. 2006) ("[T] he purpose of the notice of investigation and complaint differ. Order No. 12(a)(9)(viii) (2009). 19 CFR §§ 210. (See March 25. 4 .S. and when practicable. detailed infringement allegations in its complaint. by a chart that applies each asserted independent claim of each involved U. Samsung's argument is based on the premise that while the Notice of Investigation broadly defined the accused products as "certain electronic devices.S. detailing the specific claims on which a complainant is relying. No. § 210. 14 (July 6.
597 ("the '597 patent"). 12(a)(9)(viii) do not require an infringement analysis comparing the asserted claims against every allegedly infringing product.12. 10. I find that it complies with Commission Rule 210. 5 . (Id at ~ 43.12(a)(9)(viii).12(a)(3) and 210. (Id. at ~ 51.) I find that the above-described content of Saxon's complaint meets the requirements of Commission Rules 210.S.) Regarding U. While I find that Samsung has not demonstrated good cause to amend the Notice of Investigation.) Saxon then provided a claim chart comparing independent claims 1 and 12 of the '635 patent to the Samsung Blackjack Smartphone. at ~ 45. Saxon describes representative unfair acts of Samsung as they relate to each asserted patent.873 ("the '873 patent") Saxon described a specific instance of alleged infringement when it identified the sale of a Samsung Blackjack Smartphone in the United States. In the complaint. and 11 of the '597 patent to the Samsung SC-MX2O Camcorder. 5.After examining Saxon's complaint. Saxon described a specific instance of alleged infringement when it identified the sale of a Samsung Blackjack Smartphone in the United States. patent to a representative involved article of' Samsung. 5. 5. Saxon described a specific instance of alleged infringement when it identified the sale of a Samsung SC-MX20 Camcorder in the United States. at ~ 50.12(a)(3) and 210. Patent No. Regarding U.530.) Saxon then provided a claim chart comparing independent claims 1 and 13 of the '873 patent to the Samsung Blackjack Smartphone.S.) Saxon then provided a claim chart comparing independent claims 1. Commission Rules 210.S.S.235. (Complaint at ~ 42.608. Saxon described "specific instances of alleged unlawful importations or sales" and included "a chart that applies each asserted independent claim of each involved U. (Id. (Id at ~ 47. Patent No.635 ("the '635 patent").) Regarding U. (Id. this Order is limited to Samsung's attempt to amend the Notice ofInvestigation. Patent No.
Saxon has the burden of proving infringement. Inc. 1578 (Fed. Rogers. SO ORDERED.3d 1573. Motion No. 673-001 is hereby DENIED. Administ tive Law Judge 6 . .") If. Samsung finds that Saxon improperly refuses to disclose the full scope of the accused Samsung products. 15 F. Samsung may seek proper relief. v.and it should not be interpreted to allow Saxon to refuse to disclose its detailed infringement contentions during discovery. and it will need to identify the full range of Samsung products that it believes infringe the asserted patents and the specific claims it believes are infringed by those products. 1993) ("The burden is on the patent owner to prove infringement by a preponderance of the evidence.. Inc. Cir. Sys. Carroll Touch.. Electro Mech. Jr. during discovery.
LLC: William D. DC 20004-2401 ( ) Via Hand Delivery ( ) Via Overnight Mail (~Via First Class Mail ( ) Other: _ _ __ .. Belanger. PEPPER HAMILTON LLP 15th Floor. Murray.C. D. COVINGTON & BURLING LLP 1201 Pennsylvania Avenue. LLP: Maureen F. No. INC. Esq. Marilyn R. MA 02110-2736 ( ) Via Hand Delivery ( ) Via Overnight Mail (L%Via First Class Mail ( ) Other: _ _ __ FOR RESPONDENTS SAMSUNG ELECTRONICS CO. hereby certify that the attached ORDER was served upon Lisa A. LTD. art yn .. 2009. Abbott. and the following parties via first class mail and air mail where necessary on April 16. International Trade Commission 500 E Street SW. 20436 "J FOR COMPLAINANT SAXON INNOVATIONS. Esq. Browne. & SAMSUNG TELECOMMUNICATIONS AMERICA. NW Washington. Oliver Street Tower 125 High Street Boston. Commission Investigative Attorney. Abbott.S. 337-TA-673 PUBLIC CERTIFICATE OF SERVICE I.CERTAIN ELECTRONIC DEVICES INCLUDING HANDHELD WIRELESS COMMUNICATIONS DEVICES Inv. Room 112A Washington. Esq.. Secretary U. SAMSUNG ELECTRONICS AMERICA.
D. 337-TA-673 PUBLIC CERTIFICATE OF SERVICE . 20005 ( ) Via Hand Delivery ( )/Via Overnight Mail (v) Via First Class Mail ( ) Other: _ _ __ . OH 45342 ( ) Via Hand Delivery ( ) Via Overnight Mail (~Via First Class Mail ( ) Other: _ _ __ Kenneth Clair THOMAS WEST 1100 Thirteen Street NW.NEXIS 9443 Springboro Pike Miamisburg. No. Suite 200 Washington.C.PAGE 2 PUBLIC MAILING LIST Heather Hall LEXIS .CERTAIN ELECTRONIC DEVICES INCLUDING HANDHELD WIRELESS COMMUNICATIONS DEVICES Inv.
This action might not be possible to undo. Are you sure you want to continue?
We've moved you to where you read on your other device.
Get the full title to continue reading from where you left off, or restart the preview.