UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C Before the Honorable Theodore R. Essex Administrative Law Judge

Transcription

1 UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C Before the Honorable Theodore R. Essex Administrative Law Judge In the Matter of Certain RF Capable Integrated Circuits and Products Containing the Same COMPLAINANT PARKERVISION, INC. S UNOPPOSED MOTION FOR PARTIAL TERMINATION OF THE INVESTIGATION WITH RESPECT TO RESPONDENT LG ELECTRONICS U.S.A., INC. I. Ground Rule 3.2 Certification Pursuant to Ground Rule 3.2, counsel for Complainant ParkerVision, Inc. certifies that ParkerVision requested the parties positions on this motion on June 21, Respondent LG indicates that it supports the motion. Respondent Qualcomm indicated that it takes no position on the motion. No other Respondents have provided a position on this motion. OUII Staff has indicated that they will take a position after reviewing the motion. II. Motion for Partial Termination Pursuant to Commission Rules (a)(1) and and Ground Rules 3.1 and 3.2, Complainant ParkerVision, Inc. ( ParkerVision ) respectfully moves for partial termination of the Investigation based on withdrawal of the allegations in the Complaint against LG Electronics U.S.A. ( LGEUS ) in this Investigation. In its Complaint, ParkerVision asserted that LGEUS infringed the claims of ParkerVision s U.S. Patent Nos. 6,879,817 (the 817 patent ), 7,929,638 ( the 638 patent), 8,571,135 ( the 135 patent ) and 9,118,528 ( the 528 patent ) by importing into the United States, selling for importation into the United States, or selling within the United States after importation certain RF capable integrated circuits and COMPLAINANT S MEMORANDUM IN SUPPORT OF ITS UNOPPOSED MOTION FOR PARTIAL TERMINATION OF THE

2 products containing the same. ParkerVision now seeks to withdraw only the portion of the Complaint alleging violations of Section 337 by LGEUS and to terminate the Investigation with respect to LGEUS only. Permitting withdrawal of these claims will simplify the investigation and conserve judicial, OUII Staff, and private party resources. A memorandum in support of this Motion is attached hereto. ParkerVision hereby represents that there are no agreements, written or oral, express or implied between ParkerVision and LGEUS concerning the subject matter of the Investigation. Dated: July 12, 2016 Respectfully Submitted, /s/ Michael J. McNamara Michael T. Renaud James M. Wodarski Michael J. McNamara Michael C. Newman Kristina R. Cary Daniel B. Weinger Patrick T. Driscoll MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C. One Financial Center Boston, MA Tel: Fax: Aarti Shah MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C. 701 Pennsylvania Ave. NW Suite 900 Washington, DC Tel: Fax: ParkerVisionITC@mintz.com C ou nselforc omplainant P arkerv ision,inc. COMPLAINANT S UNOPPOSED MOTION FOR PARTIAL TERMINATION OF THE INVESTIGATION WITH RESPECT TO RESPONDENT LG ELECTRONICS U.S.A. 2

3 UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C Before the Honorable Theodore R. Essex Administrative Law Judge In the Matter of Certain RF Capable Integrated Circuits and Products Containing the Same COMPLAINANT PARKERVISION, INC. S MEMORANDUM IN SUPPORT OF ITS UNOPPOSED MOTION FOR PARTIAL TERMINATION OF THE INVESTIGATION WITH RESPECT TO RESPONDENT LG ELECTRONICS U.S.A., INC. Pursuant to Commission Rules (a)(1) and and Ground Rules 3.1 and 3.2, Complainant ParkerVision, Inc. ( ParkerVision ) respectfully moves for partial termination of the Investigation based on withdrawal of only those portions of the Complaint asserting violations of Section 337 by Respondent LG Electronics U.S.A. ( LGEUS ) in this Investigation, and submits this memorandum in support of its motion. In its Complaint, ParkerVision asserted that LGEUS infringed the claims of U.S. Patent Nos. 6,879,817 (the 817 patent ), 7,929,638 ( the 638 patent), 8,571,135 ( the 135 patent ) and 9,118,528 ( the 528 patent ) owned by ParkerVision. Discovery has closed and after discussions with LG and its counsel, ParkerVision now seeks to withdraw these allegations and terminate LGEUS from the Investigation. Termination of the investigation with respect to LGEUS will streamline the investigation and conserve resources. I. Background On January 15, 2016, the Commission instituted this Investigation to determine whether Respondents violate section 337 through their importation into the United States, sale for importation, or sale within the United States after importation of certain RF capable integrated COMPLAINANT S MEMORANDUM IN SUPPORT OF ITS UNOPPOSED MOTION FOR PARTIAL TERMINATION OF THE

4 circuits and products containing the same that infringe the 817 patent, the 638 patent, the 135 patent, and the 528 patent. See C ertain RF C apable Integrated C ircu its and P rod u cts C ontainingthe Same, Notice of Institution of Investigation, Inv. No. 337-TA-982 (Jan. 15, 2016); Fed. Reg. 81 FR 3474, at (Jan. 21, 2016). On February 2, 2016, the ALJ set April 21, 2017 as the target date for completion of this Investigation. See Order No. 4. The hearing is scheduled for August 24 Sept. 1, See Order No. 5. Should this motion be granted, all of ParkerVision s claims against the non-lgeus Respondents will remain pending. II. Relevant Law and Discussion Commission Rule (a)(1) states that [a]ny party may move at any time prior to the issuance of an initial determination on violation of section 337 of the Tariff Act of 1930 to terminate an investigation in whole or in part as to any or all respondents, on the basis of withdrawal of the complaint Indeed, the Commission routinely recognizes that a complainant can seek termination of an investigation as to certain respondents by withdrawing the complaint pursuant to Commission Rule (a)(1). See C ertain C onsu mere lectronics W ithd isplay A nd P rocessingc apabilities, Inv. No. 337-TA-884, Notice of Commission Determination (Dec. 20, 2013); C ertain C onsu mere lectronics W ithd isplay A nd P rocessingc apabilities, Inv. No TA-884, Notice of Commission Determination (Aug. 16, 2013); C ertain Sintered Rare Earth M agnets,m ethod O f M akingsame A nd P rodu cts C ontainingsame, Inv. No. 337-TA-855, Notice of Commission Determination (Jul. 12, 2013); C ertain B lu -Ray D isc P layers, C omponents Thereof and P rod u cts C ontainingthe Same, Inv. No. 337-TA-824, Notice of Commission Determination (Jan. 14, 2013); C ertain K inesiotherapy D evices A nd C omponents Thereof, Inv. No. 337-TA-823, Notice of Commission Determination (Oct. 31, 2012). COMPLAINANT S MEMORANDUM IN SUPPORT OF ITS UNOPPOSED MOTION FOR PARTIAL TERMINATION OF THE 2

5 The Commission has stated that in the absence of extraordinary circumstances, termination of the investigation will be readily granted to a complainant during the prehearing stage of an investigation. C ertain H and-h eld M eattenderizers, Inv. No. 337-TA-647, Order No. 6, at 2 (Sept. 5, 2008) ( M eattenderizers ), citing C ertain Ultrafiltration M embrane S ystems,and C omponents Thereof,Inclu d ingultrafiltration M embranes, Inv. No. 337-TA-107, Comm n Action and Order, at 2 (March 11, 1982). No party opposes withdrawal of the allegations against LGEUS, and such withdrawal will simplify the investigation, streamline the hearing, and conserve judicial, OUII Staff, and private party resources. See C ertain H SP M odems,software and H ardware C omponents Thereof,and P rodu cts C ontainingsame, Inv. No. 337-TA-439, Order No. 16 (Feb. 16, 2001) (granting complainant s motion for partial termination as to one of the patents at issue in order to simplify the Investigation and permit the parties and the Court to focus their resources on the remaining three patents at issue. ). Conserving public and private resources through voluntary termination of an investigation against a particular respondent is in the public interest. C ertain A u dio P rocessingh ardware and Software and P rodu cts C ontainingsame, Inv. No. 337-TA- 949, Order No. 40 (April 6, 2016). No extraordinary circumstances exist that would prevent the partial termination of this Investigation as to respondent LGEUS. See,e.g., C ertain D ata Storage Sys.& C omponents Thereof ( D ata Storage Systems ), Inv. No. 337-TA-471, Order No. 21, at 2-3 ( The [ALJ] is unaware of any prejudice which respondents or the public may suffer as a result of the withdrawal of 64 claims. ). For at least the foregoing reasons, ParkerVision respectfully requests the Administrative Law Judge grant its unopposed Motion to withdraw the portions of its Complaint alleging that COMPLAINANT S MEMORANDUM IN SUPPORT OF ITS UNOPPOSED MOTION FOR PARTIAL TERMINATION OF THE 3

6 LGEUS is violating Section 337 based on its infringement of the 817, 638, 135, and 528 patents, and for partial termination of the Investigation with respect to LGEUS only. Specifically, ParkerVision seeks to withdraw the following portions of the complaint as to LGEUS: 35 and only so much of 3, and as pertain to LGEUS. COMPLAINANT S MEMORANDUM IN SUPPORT OF ITS UNOPPOSED MOTION FOR PARTIAL TERMINATION OF THE 4

7 Dated: July 12, 2016 Respectfully Submitted, /s/ Michael J. McNamara Michael T. Renaud James M. Wodarski Michael J. McNamara Michael C. Newman Kristina R. Cary Daniel B. Weinger Patrick T. Driscoll MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C. One Financial Center Boston, MA Tel: Fax: Aarti Shah MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C. 701 Pennsylvania Ave. NW Suite 900 Washington, DC Tel: Fax: C ou nselforc omplainant P arkerv ision,inc. COMPLAINANT S MEMORANDUM IN SUPPORT OF ITS UNOPPOSED MOTION FOR PARTIAL TERMINATION OF THE 5

8 United States International Trade Commission Certain RF Capable Integrated Circuits and Products Containing the Same CERTIFICATE OF SERVICE I, William E. Rowan, hereby certify that on July 12, 2016, true and correct copies of the foregoing/attached EDIS filing were served on the parties listed below: The Honorable Lisa R. Barton Secretary U.S. INTERNATIONAL TRADE COMMISSION 500 E Street SW Washington, DC Via EDIS (2 Copies) Via Hand Delivery (2 copies) The Honorable Theodore Essex Administrative Law Judge U.S. INTERNATIONAL TRADE COMMISSION 500 E Street, SW Washington, DC Sarah Sladic Office of Unfair Import Investigations U.S. INTERNATIONAL TRADE COMMISSION 500 E Street, SW Washington, DC Tel.: (Direct) On Behalf of Respondents Samsung Electronics Co. Ltd., Samsung Electronics America, Inc., and Samsung Semiconductor, Inc. Aaron Wainscoat Mark Fowler Erik Fuehrer Erin McLaughlin DLA PIPER LLP (US) 2000 University Avenue East Palo Alto, CA Tel: Fax: (2 Copies) Via Hand Delivery (2 copies) tamara.foley@usitc.gov benjamin.richards@usitc.gov Via Hand Delivery Sarah.Sladic@usitc.gov Samsung-Parkervision-982ITC@dlapiper.com Edward Sikorski Kevin Hamilton DLA Piper LLP (US) 401 B Street, Suite 1700 San Diego, CA Tel: Fax:

9 United States International Trade Commission Certain RF Capable Integrated Circuits and Products Containing the Same Jeremy Elman DLA Piper LLP (US) 200 South Biscayne Boulevard, Suite 2500 Miami, FL Tel: On Behalf of Respondent Apple Inc. Brian E. Ferguson Robert T. Vlasis III Christopher T. Marando Daniel Musher WEIL, GOTSHAL & MANGES LLP 1300 Eye Street, N.W. Washington, D.C Tel.: Anne Cappella Brian Chang WEIL, GOTSHAL & MANGES LLP 201 Redwood Shores Parkway Redwood Shores, CA Tel.: On Behalf of Respondent Qualcomm Incorporated Matthew J. Brigham Stephen C. Neal Timothy S. Teter Jeffrey S. Karr Benjamin G. Damstedt COOLEY LLP 3175 Hanover Street Palo Alto, CA Tel.: Stephen R. Smith COOLEY LLP 1299 Pennsylvania Avenue, NW Suite 700 Washington, DC Tel.: Eamonn Gardner Erin C. Trenda COOLEY LLP 4401 Eastgate Mall San Diego, CA Tel:

10 United States International Trade Commission Certain RF Capable Integrated Circuits and Products Containing the Same Tom M. Schaumberg Deanna T. Okun Paul M. Bartkowski ADDUCI, MASTRIANI & SCHAUMBERG, L.L.P Connecticut Avenue, N.W., 12th Floor Washington, D.C Telephone: On Behalf of Respondents LG Electronics, Inc., LG Electronics U.S.A., Inc., LG Electronics MobileComm U.S.A., Inc. Michael R. Franzinger Brian Nester Wonjoo Suh SIDLEY AUSTIN LLP 1501 K Street, N.W. Washington, D.C LGEParkerVisionSidleyTeam@sidley.com /s/ William E. Rowan William E. Rowan Legal Specialist MINTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C. One Financial Center Boston, MA Tel.: (617) (Direct) Fax: (617) werowan@mintz.com v.1 3