UNITED STATES INTERNATIONAL TRADE COMMISSION
`Washington, D.C.
`
`Before the Honorable
`Administrative Law Judge David P. Shaw
`
`
`Investigation No. 337-TA-892
`
`In the Matter of
`
`CERTAIN POINT-TO-POINT NETWORK
`COMMUNICATION DEVICES AND
`PRODUCTS CONTAINING SAME
`
`
`
`COMPLAINANT STRAIGHT PATH’S MOTION TO TERMINATE THE
`INVESTIGATION BASED ON WITHDRAWAL OF THE COMPLAINT, REQUEST
`FOR SUSPENSION OF THE PROCEDURAL SCHEDULE, AND REQUESTS FOR
`SHORTENED RESPONSE TIME AND WAIVER OF 2-DAY RULE
`
`
`
`Pursuant to Commission Rules 210.21(a) (1) and 210.15 and Ground Rule 5,
`
`Complainant Straight Path IP Group, Inc. (“Straight Path”) respectfully moves to terminate the
`
`Investigation based on withdrawal of the Complaint as to the remaining Respondents in this
`
`Investigation. Straight Path hereby represents that there are no agreements, written or oral,
`
`express or implied between Straight Path and the remaining Respondents concerning the subject
`
`matter of the Investigation. To conserve the resources of the Commission and the parties, and in
`
`view of the evidentiary hearing scheduled to begin on May 13, 2014, Straight Path requests that
`
`the procedural schedule be suspended, including the Staff’s May 6, 2014 pre-hearing brief
`
`deadline, pending a ruling on this motion to terminate and the Commission’s final determination
`
`so that the parties and the ALJ need not address pending matters and upcoming deadlines in the
`
`procedural schedule. Given the proximity to the hearing date, Straight Path requests a waiver of
`
`the 2 day notice rule of Ground Rule 5 and also requests a shortened response time of three
`
`business days, so that all responses are received prior to the first day of the scheduled hearing.
`
`LG v. Straight Path, IPR2015-00198
`Straight Path - Ex. 2010 - Page 1
`
`

`

`As required by Ground Rule 5.e, the Commission Investigative Staff and the remaining
`
`Respondents to this Investigation were contacted regarding their position on the present motion,
`
`the stay of the procedural schedule, the waiver of the two day period, and expedited briefing on
`
`Friday, May 2. AmTRAN and Panasonic stated that they did not oppose any part of the motion
`
`or the requests. The Staff stated that it did not oppose the motion to stay the procedural
`
`schedule, and the requests for waiver of the two day period and for expedited briefing, and would
`
`provide its position on the motion to terminate after reviewing the papers. Toshiba stated that it
`
`did not oppose the request for waiver of the 2 day period. No other responses were received.
`
`
`
`Dated: May 5, 2014
`
`
` Respectfully submitted,
`
`/s/ Michael T. Renaud
`Michael T. Renaud
`James M. Wodarski
`Michael J. McNamara
`Aarti Shah
`Michael C. Newman
`Sandra J. Badin
`Stephen P. Cole
`Robert J. L. Moore
`Mintz, Levin, Cohn, Ferris, Glovsky and
`Popeo, P.C.
`One Financial Center
`Boston, MA 02110
`Phone: (617) 542-6000
`Fax: (617) 542-2241
`
`Counsel for Complainant Straight Path IP
`Group, Inc.
`
`2
`
`LG v. Straight Path, IPR2015-00198
`Straight Path - Ex. 2010 - Page 2
`
`

`

`UNITED STATES INTERNATIONAL TRADE COMMISSION
`Washington, D.C.
`
`Before the Honorable
`Administrative Law Judge David P. Shaw
`
`
`Investigation No. 337-TA-892
`
`In the Matter of
`
`CERTAIN POINT-TO-POINT NETWORK
`COMMUNICATION DEVICES AND
`PRODUCTS CONTAINING SAME
`
`
`
`COMPLAINANT STRAIGHT PATH’S MEMORANDUM IN SUPPORT OF ITS
`MOTION TO TERMINATE THE INVESTIGATION BASED ON WITHDRAWAL OF
`THE COMPLAINT, REQUEST FOR SUSPENSION OF THE PROCEDURAL
`SCHEDULE, AND REQUEST FOR SHORTENED RESPONSE TIME
`
`Complainant Straight Path IP Group, Inc. (“Straight Path”) respectfully submits this
`
`
`
`memorandum of points and authorities in support of its motion to terminate the investigation in
`
`its entirety based on a withdrawal of the Complaint, request for suspension of the procedural
`
`schedule, and request for a shortened response time of three business days.
`
`
`
`I.
`
`Background
`
`On August 1, 2013 Straight Path filed a Complaint alleging a violation of Section 337 by
`
`importation, selling for importation, and/or selling within the United States after importation
`
`certain point-to-point network communication devices and products containing same. The
`
`Complaint names as Respondents AmTRAN Logistics, Inc., AmTRAN Technology Co., Ltd.
`
`(the “AmTRAN Respondents”); LG Electronics Inc., LG Electronics U.S.A., Inc., LG
`
`Electronics MobileComm U.S.A., Inc. (the “LG Respondents”); Panasonic Corporation,
`
`Panasonic Corporation of North America (the “Panasonic Respondents”); Sharp Corporation,
`
`Sharp Electronics Corporation (the “Sharp Respondents”); Sony Computer Entertainment, Inc.,
`
`Sony Computer Entertainment America Inc., Sony Computer Entertainment America LLC, Sony
`
`LG v. Straight Path, IPR2015-00198
`Straight Path - Ex. 2010 - Page 3
`
`

`

`Corporation, Sony Corporation of America, Sony Electronics Inc., Sony Mobile
`
`Communications AB, Sony Mobile Communications (USA) Inc., Sony Ericsson Mobile
`
`Communications (USA) Inc. (the “Sony Respondents”); Toshiba Corporation, Toshiba America
`
`Inc., Toshiba American Information Systems, Inc. (the “Toshiba Respondents”); and Vizio, Inc.
`
`(“Vizio”).1 The Commission issued a Notice of Institution on September 4, 2013, and the Notice
`
`of Investigation 337-TA-892 published in the Federal Register on September 9, 2013. See Fed.
`
`Reg. 55096 (September 9, 2013). On October 18, 2013, the ALJ set January 9, 2015 as the target
`
`date for completion of this Investigation. See Order No. 6. The hearing is scheduled for May 13-
`
`20, 2014. See Order No. 9.
`
`On January 22, 2014, Straight Path and the Sharp Respondents moved to terminate the
`
`investigation as to the Sharp Respondents on the basis of a settlement. (Motion Docket No. 892-
`
`017). On February 5, 2014, the ALJ entered an Initial Determination terminating the
`
`investigation as to the Sharp Respondents (see Order No. 18), and on February 25, 2014 the
`
`Commission determined not to review that initial determination.
`
`Straight Path has also reached settlement agreements with a number of the remaining
`
`Respondents to the investigation. On March 18, 2014, Straight Path and the Panasonic
`
`Respondents reached agreement on the material terms of a license and settlement agreement.
`
`The procedural schedule is currently suspended as to the Panasonic Respondents until May 9,
`
`2014, in order to give the parties time to execute the agreement. Complainant and Panasonic are
`
`close to finalizing an agreement, but have not yet done so.
`
`
`1 On September 20, 2013, Straight Path filed an unopposed motion for leave to amend the Complaint and Notice of
`Investigation to remove mention of two Sony entities because Sony Computer Entertainment America Inc. has
`ceased to exist and Sony Ericsson Mobile Communications (USA) had been renamed and merged into Sony Mobile
`Communications (USA) Inc. (Motion Docket No. 892-002). On September 23, 2013, the ALJ issued an Initial
`Determination amending the Complaint and Notice of Investigation to remove references to Sony Computer
`Entertainment America Inc. and Sony Ericsson Mobile Communications (USA) (see Order No. 2) and on November
`4, 2013, the Commission determined not to review that initial determination.
`
`2
`
`LG v. Straight Path, IPR2015-00198
`Straight Path - Ex. 2010 - Page 4
`
`

`

`On April 16, 2014, Straight Path and the AmTRAN Respondents reached agreement on
`
`the material terms of a license and settlement agreement. The procedural schedule is currently
`
`suspended as to the AmTRAN Respondents until May 7, 2014 in order to give the parties time to
`
`finalize and execute the agreement. Order No. 32. Complainant and AmTRAN are close to
`
`finalizing an agreement, but have not yet done so.
`
`On April 23, 2014, Straight Path and the Sony Respondents executed a settlement and
`
`patent license agreement, and on April 25, 2014 filed a joint motion to terminate the
`
`investigation as to the Sony Respondents which is currently pending before the ALJ. (Motion
`
`Docket No. 892-045). On May 1, this motion was granted and the Investigation was terminated
`
`as to the Sony Respondents. Order No. 34.
`
`Settlement agreements have not been reached between Straight Path and the LG
`
`Respondents, the Toshiba Respondents, and Vizio.
`
`
`
`II.
`
`Relevant Law
`
`Commission Rule 210.21(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…” 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.” Certain Hand-Held Meat
`
`Tenderizers, Inv. No. 337-TA-647, Order No. 6, at 2 (Sept. 5, 2008) (“Meat Tenderizers”), citing
`
`Certain Ultrafiltration Membrane Systems, and Components Thereof, Including Ultrafiltration
`
`Membranes, Inv. No. 337-TA-107, Comm’n Action and Order, at 2 (March 11, 1982).
`
`3
`
`LG v. Straight Path, IPR2015-00198
`Straight Path - Ex. 2010 - Page 5
`
`

`

`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 210.21(a)(1). See Certain Consumer Electronics With Display And Processing
`
`Capabilities, Inv. No. 337-TA-884, Notice of Commission Determination (Dec. 20, 2013);
`
`Certain Consumer Electronics With Display And Processing Capabilities, Inv. No. 337-TA-884,
`
`Notice of Commission Determination (Aug. 16, 2013); Certain Sintered Rare Earth Magnets,
`
`Method Of Making Same And Products Containing Same, Inv. No. 337-TA-855, Notice of
`
`Commission Determination (Jul. 12, 2013); Certain Blu-Ray Disc Players, Components Thereof
`
`and Products Containing The Same, Inv. No. 337-TA-824, Notice of Commission Determination
`
`(Jan. 14, 2013); Certain Kinesiotherapy Devices And Components Thereof, Inv. No. 337-TA-
`
`823, Notice of Commission Determination (Oct. 31, 2012). Additionally, Complainants have
`
`been permitted to withdraw allegations on the eve of the hearing as well as after the hearing but
`
`before the initial determination. See Ink Jet Print Cartridges, Inv. No. 337-TA-446, Order No.
`
`17 (December 4, 2011); Organic Photoconductor Drums, Inv. No. 337-TA-411, Order No. 12
`
`(December 7, 1998). Indeed, Commission precedent states 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.” Certain Transport Vehicle Tires, Inv. No. 337-TA-
`
`390, Order No. 17 at 4-5 (Jan 30, 1997) (unreviewed initial determination).
`
`Furthermore, a respondent’s objection has been found not to constitute an exceptional
`
`circumstance warranting denial of a motion for termination based upon withdrawal of the
`
`complaint. Meat Tenderizers at 2, citing Certain Single In-Line Memory Modules and Product
`
`Containing Same, Inv. No. 337-TA-336 (June 18, 1992) (unreviewed initial determination).
`
`
`
`4
`
`LG v. Straight Path, IPR2015-00198
`Straight Path - Ex. 2010 - Page 6
`
`

`

`
`
`III. Argument
`
`Straight Path submits that there are no extraordinary circumstances in this Investigation
`
`that weigh against granting termination during the pre-hearing stage of the Investigation, and
`
`further that termination of the Investigation is in the interest of the Commission, the parties, and
`
`the public because it will conserve public and private resources. See Certain Mobile Electronic
`
`Devices Incorporating Haptics, Inv. No. 337-TA-834, Order No. 53 (Mar. 27, 2013) (“granting
`
`the [motion to terminate] will result in the conservation of public and private resources”). Such
`
`conservation of public and private resources also provides good cause to suspend the procedural
`
`schedule pending resolution of the motion to terminate. See Certain Devices for Mobile Data
`
`Communication, Inv. No. 337-TA-809, Order No. 60, at 2 (terminating the investigation based
`
`on withdrawal of the Complaint and suspending the procedural schedule). Additionally, though
`
`Straight Path was in negotiations with Panasonic and AmTRAN, no agreement has yet been
`
`reached with either party, so there are no agreements, written or oral, express or implied between
`
`the Complainant and the remaining Respondents concerning the subject matter of this
`
`investigation, as is required by Commission Rule 210.21(a)(1).
`
`For the foregoing reasons, Straight Path’s motion for termination of the Investigation
`
`based on withdrawal of the Complaint, request to suspend the procedural schedule, and request
`
`for shortened response time of three business days should be granted.
`
`
`
`
`
`5
`
`LG v. Straight Path, IPR2015-00198
`Straight Path - Ex. 2010 - Page 7
`
`

`

`Dated: May 5, 2014
`
`
`29500094v.1
`
`Respectfully submitted,
`
`/s/ Michael T. Renaud
`Michael T. Renaud
`James M. Wodarski
`Michael J. McNamara
`Aarti Shah
`Michael C. Newman
`Sandra J. Badin
`Stephen P. Cole
`Robert J. L. Moore
`Mintz, Levin, Cohn, Ferris, Glovsky and
`Popeo, P.C.
`One Financial Center
`Boston, MA 02110
`Phone: (617) 542-6000
`Fax: (617) 542-2241
`
`Counsel for Complainant Straight Path IP
`Group, Inc.
`
`
`
`6
`
`LG v. Straight Path, IPR2015-00198
`Straight Path - Ex. 2010 - Page 8
`
`

`

`United States International Trade Commission
`Investigation No. 337-TA-892
`Certain Point-To-Point Network Communications Devices and Products Containing Same
`
`
`CERTIFICATE OF SERVICE
`
` Via EDIS
` Via Hand Delivery (2 copies)
`
` Via Hand Delivery (1 copy)
` Via Electronic Mail
`Patricia.Chow@usitc.gov
` Via First Class Mail
` Via Hand Delivery
` Via Electronic Mail
`James.Wiley@usitc.gov
` Via First Class Mail
` Via Federal Express
` Via Electronic Mail
`AmTran-ITC-Service@perkinscoie.com
`AmTRAN-892@alston.com
`
`
`I, Megan A. De Renzis, hereby certify that on May 5, 2014, true and correct copies of the
`forgoing documents were served on the parties listed below:
`
`The Honorable Lisa Barton
`Acting Secretary to the Commission
`U.S. International Trade Commission
`500 E Street SW
`Washington, DC 20436
`Administrative Law Judge David P. Shaw
`U.S. International Trade Commission
`500 E Street, S.W.
`Washington, DC 20436
`James Wiley, Esq.
`Office of Unfair Import Investigations
`U.S. International Trade Commission
`500 E Street SW, Suite 401
`Washington, D.C. 20436
`Counsel for Respondents AmTran Logistics, Inc.
`and AmTran Technology Co., Ltd.:
`
`John P. Schnurer
`Jack Ko
`Kevin J. Patariu
`Perkins Coie LLP
`11988 El Camino Real, Suite 200
`San Diego, California 92130
`Telephone: (858) 720-5700
`Facsimile: (858) 720-5799
`
`James B. Coughlan
`Perkins Coie LLP
`700 Thirteenth Street, NW, Suite 600
`Washington, DC 20005
`Telephone: (202) 654-6200
`Facsimile: (202) 654-6211
`
`Yitai Hu
`S.H. Michael Kim
`Helen Su
`ALSTON & BIRD LLP
`275 Middlefield Road, Suite 150
`Menlo Park, CA 94025
`Telephone: 650-838-2020
`
`LG v. Straight Path, IPR2015-00198
`Straight Path - Ex. 2010 - Page 9
`
`

`

` Via First Class Mail
` Via Federal Express
` Via Electronic Mail
`892ITC-LG@finnegan.com
`
`United States International Trade Commission
`Investigation No. 337-TA-892
`Certain Point-To-Point Network Communications Devices and Products Containing Same
`
`Facsimile: 650-838-2001
`
`Jennifer (Celine) Liu
`Christopher R. Byrnes
`ALSTON & BIRD LLP
`950 F Street, NW
`Washington, DC 20004
`
`Counsel for Respondents LG Electronics Inc., LG
`Electronics U.S.A., Inc. and LG Electronics
`MobileComm U.S.A, Inc.:
`
`Smith R. Brittingham IV
`Rajeev Gupta
`Michael E. Kudravetz
`Finnegan, Henderson, Farabow,
`Garrett & Dunner L.L.P.
`901 New York Avenue, N.W.
`Washington, DC 20001-4413
`Telephone: (202) 408-4000
`Fax: (202) 408-4400
`
`Andrew C. Sonu
`Finnegan, Henderson, Farabow,
`Garrett & Dunner L.L.P.
`Two Freedom Square
`11955 Freedom Drive
`Reston, VA 20190-5675
`Telephone: (571) 203-2700
`Fax: (202) 408-4400
`Respondents Panasonic Corporation and
`Panasonic Corporation of North America:
`
`Steven J. Routh
`Sten A. Jensen
`William H. Wright
`Diana M. Szego
`T. Vann Pearce, Jr.
`Christopher J. Higgins
`Jordan L. Coyle
`ORRICK, HERRINGTON & SUTCLIFFE, LLP
`1152 15th Street, NW
`Washington, D.C. 20005
`Telephone: 202-339-8400
`Facsimile: 202-339-8500
`
`
` Via First Class Mail
` Via Federal Express
` Via Electronic Mail
`892-Panasonic@orrick.com
`
`
`
`2
`
`LG v. Straight Path, IPR2015-00198
`Straight Path - Ex. 2010 - Page 10
`
`

`

` Via First Class Mail
` Via Federal Express
` Via Electronic Mail
`Sony-SP-ITC@WolfGreenfield.com
`fm-sony-892@fostermurphy.com
`
`United States International Trade Commission
`Investigation No. 337-TA-892
`Certain Point-To-Point Network Communications Devices and Products Containing Same
`
`William H. Wright
`Christopher P. Broderick
`Andrew Y. Yen
`ORRICK, HERRINGTON & SUTCLIFFE, LLP
`777 South Figueroa Street
`Suite 3200
`Los Angeles, CA 90017
`Telephone: 213-629-2020
`Facsimile: 213-612-2499
`
`Counsel for Respondents Sony Computer
`Entertainment, Inc., Sony Computer
`Entertainment America Inc., Sony Computer
`Entertainment America LLC, Sony Corporation,
`Sony Corporation of America, Sony Electronics
`Inc., Sony Mobile Communications AB, Sony
`Mobile Communications (USA) Inc. and Sony
`Ericsson Mobile Communications (USA) Inc.
`
`James B. Altman
`F. David Foster
`Barbara A. Murphy
`David F. Nickel
`Susan Koegel
`Kandis C. GibsonFoster, Murphy,
`Altman & Nickel, PC
`1899 L Street, NW, Suite 1150
`Washington, DC 20036
`202-822-4100
`
`Michael N. Rader
`Allen S. Rugg
`Charles Steenburg
`D. Alexander Ewing
`Eric G. J. Kaviar
`Turhan F. Sarwar
`Wolf, Greenfield & Sacks, P.C.
`600 Atlantic Avenue
`Boston, MA 02210-2206
`
`
`Counsel for Respondents Toshiba Corporation,
`Toshiba America Inc. and Toshiba America
`Information Systems, Inc.:
`
`Paul T. Meiklejohn
`
` Via First Class Mail
` Via Federal Express
` Via Electronic Mail
`
`
`
`3
`
`LG v. Straight Path, IPR2015-00198
`Straight Path - Ex. 2010 - Page 11
`
`

`

`Tosh-SP-ITC@dorsey.com
`Tosh-892-ITC@kvn.com
`
`United States International Trade Commission
`Investigation No. 337-TA-892
`Certain Point-To-Point Network Communications Devices and Products Containing Same
`
`David Tseng
`Lukas Dudkowski
`Mudit Kakar
`William Perry
`Emily Lawson
`DORSEY & WHITNEY LLP
`701 Fifth Avenue, Suite 6100
`Seattle, WA 98104
`Telephone: 206-903-8800
`Facsimile: 206-903-8820
`
`Keker & Van Nest LLP
`633 Battery Street
`San Francisco, California 94111-1809
`Telephone: (415) 391-5400
`
`Respondents VIZIO, Inc.:
`
`Kevin M. O'Brien
`Richard V. Wells
`Matt Dushek
`Baker & McKenzie LLP
`815 Connecticut Ave., N.W.
`Washington, DC 20006
`Tel: 202 452 7000
`Fax: 202 452 7074
`
`Edward K. Runyan
`Baker & McKenzie LLP
`300 E. Randolph St.
`Chicago, lllinois 60601
`Ph. 312 861-8000
`Fax. 312 861 2829
`
`D. James Pak
`Baker & McKenzie LLP
`Two Embarcadero Center, 11th Floor
`San Francisco, CA 94111
`Tel: 415 592 3209
`Fax: 202 416 7033
`
` Via First Class Mail
` Via Federal Express
` Via Electronic Mail
`Vizio-SPIPG@bakermckenzie.com
`
`
`
`
`
`
`
`
`
`
`4
`
`LG v. Straight Path, IPR2015-00198
`Straight Path - Ex. 2010 - Page 12
`
`

`

`United States International Trade Commission
`Investigation No. 337-TA-892
`Certain Point-To-Point Network Communications Devices and Products Containing Same
`
`
`
`
`
`
`Megan A. De Renzis
`Legal Specialist
`Mintz, Levin, Cohn, Ferris,
`Glovsky and Popeo, P.C.
`One Financial Center
`Boston, MA 02111
`Direct: (617) 348-4893
`Fax: (617) 542-2241
`
`5
`
`
`
`
`
`LG v. Straight Path, IPR2015-00198
`Straight Path - Ex. 2010 - Page 13
`
`