P U B L I C V E R S I O N
`
`U N I T E D S T A T E S I N T E R N A T I O N A L T R A D E C O M M I S S I O N
`
`Washington, D . C .
`
`I n the Matter of
`
`C E R T A I N A I R M A T T R E S S S Y S T E M S ,
`C O M P O N E N T S T H E R E O F , AND M E T H O D S
`O F U S I N G T H E S A M E
`
`Inv. No. 337-TA-971
`
`I N I T I A L D E T E R M I N A T I O N O N V I O L A T I O N O F S E C T I O N 337 AND
`R E C O M M E N D E D D E T E R M I N A T I O N O N R E M E D Y AND BOND
`
`Chief Administrative Law Judge Charles E. Bullock
`
`(November 18,2016)
`
`Appearances:
`
`For the Complainants
`
`Select Comfort SC Corporation
`
`and Select Comfort
`
`Corporation
`
`Kecia J. Reynolds, Esq. and Victoria L . Draper, Esq. of Pillsbury Winthrop Shaw Pittman, LLP
`f r o m Washington, DC
`
`Barry K . Shelton, Esq. of Pillsbury Winthrop Shaw Pittman, LLP o f Austin, T X
`
`Nicole S. Cunningham, Esq.; Steven A . Moore, Esq.; and Kirsten F. Gallacher, Esq. o f Pillsbury
`Winthrop Shaw Pittman, LLP f r o m San Diego, CA
`
`Rene E. M a i , Esq. o f Pillsbury Winthrop Shaw Pittman, L L P f r o m Houston, T X
`
`Michael IC. Heins, Esq. o f Pillsbury Winthrop Shaw Pittman, LLP f r o m McLean, V A
`
`For Respondents
`
`Sizewise Rentals LLC American National Manufacturing,
`
`Inc., and Dires LLC
`
`Kyle L . Elliott, Esq.; Brian Bear, Esq.; Kevin S. Turtle, Esq.; and Mark Thornhill, Esq. of
`Spencer Fane f r o m Kansas City, M O
`
`Michael R. Doman, Jr., Esq. and Beau Jackson, Esq. o f Adduci, Mastriani & Schaumberg, LLP
`f r o m Washington, DC
`
`Sleep Number Corp.
`EXHIBIT 2015
`IPR2019-00514
`Page 1
`
`

`

`For the Commission
`
`Investigative
`
`Staff
`
`Margaret Macdonald, Esq., Director; Jeffrey Hsu, Esq., Supervisory Attorney; and Andrew
`Beverina, Esq., Investigative Attorney o f the Office o f Unfair Import Investigations, U.S.
`International Trade Commission f r o m Washington, D C
`
`ii
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`Sleep Number Corp.
`EXHIBIT 2015
`IPR2019-00514
`Page 2
`
`

`

`I .
`
`T A B L E O F C O N T E N T S
`
`I N T R O D U C T I O N
`A .
`Procedural History
`B.
`The Parties
`1.
`Select Comfort
`2.
`Respondents
`a)
`Sizewise Rentals L L C
`b)
`American National Manufacturing Inc
`c)
`Dires L L C
`Overview o f the Technology
`Patents at Issue
`1.
`U.S. Patent No. 5,904,172
`2.
`U.S. Patent No. 7,389,554
`
`C.
`D .
`
`I I .
`
`JURISDICTION A N D I M P O R T A T I O N
`A .
`Subj ect Matter Jurisdiction
`B .
`Personal Jurisdiction
`C.
`In Rem Jurisdiction
`
`I I I .
`
`O R D I N A R Y S K I L L I N T H E A R T
`
`:
`
`.':
`
`I V .
`
`B.
`
`R E L E V A N T L A W
`A .
`Infringement
`1.
`Literal Infringement
`2.
`Doctrine o f Equivalents
`3.
`Indirect Infringement
`a)
`Induced Infringement
`Validity
`1.
`Anticipation
`2.
`Obviousness
`3.
`Indefiniteness
`4.
`Broadening During Reexamination
`Domestic Industry
`1.
`Economic Prong
`2.
`Technical Prong
`Unenforceability
`
`C.
`
`D.
`
`V.
`
`U.S. PATENT N O . 5,904,172
`A .
`Overview
`1.
`Asserted Claims
`2.
`Claim Construction
`3.
`Accused Products
`Infringement
`1.
`Claim 2
`
`B.
`
`1
`1
`2
`2
`2
`2
`2
`2
`3
`3
`3
`3
`
`3
`3
`4
`4
`
`5
`
`6
`6
`6
`6
`7
`7
`7
`8
`8
`10
`10
`10
`11
`11
`12
`
`13
`13
`13
`15
`17
`18
`18
`
`Sleep Number Corp.
`EXHIBIT 2015
`IPR2019-00514
`Page 3
`
`

`

`a)
`
`b)
`
`c)
`
`24
`25
`28
`
`" A n improved valve enclosure assembly for use w i th an air
`inflatable mattress having at last one air bladder inflated by
`compressed air, a pump fluidly coupled to the at least one air
`bladder for providing compressed air thereto, and a processor
`for providing commands to the improved valve enclosure
`assembly during an inflate/deflate cycle, the improved valve
`enclosure assembly being fluidly coupled intermediate the
`pump and the at least one air bladder for controlling the
`18
`inflation o f the at least one air bladder, comprising"
`19
`i.
`"Valve Enclosure Assembly"
`23
`i i .
`Biased-Closed Valve
`"an enclosure defining a substantially fluidly sealed air chamber
`and having at least one air inlet to the air chamber being fluidly
`coupled to the pump, a plurality o f guides and stops being
`disposed within the enclosure for correctly positioning
`components within the enclosure"
`i.
`"Guides and Stops"
`i i .
`"Within the enclosure"
`"and pressure monitor means being operably coupled to the
`processor and being i n f l u i d communications w i t h the at least
`one bladder for continuously monitoring the pressure i n the at
`least one bladder"
`29
`Claim 6
`32
`Claim 9
`32
`a)
`Indirect Infringement
`33
`Claim 12
`33
`a)
`" A n improved valve enclosure assembly for use with an air
`inflatable mattress having at least one air bladder inflated by
`compressed air, a pump fluidly coupled to the at least one air
`bladder for providing compressed air thereto, and a processor
`for providing commands to the improved valve enclosure
`assembly during an inflate/deflate cycle, the improved valve
`assembly being fluidly coupled intermediate the pump at and
`the at least one air bladder for controlling the inflation o f the at
`least one air bladder, comprising: . . . "
`33
`"an enclosure defining a substantially fluidly sealed air chamber
`and having at least one air inlet to the air chamber being fluidly
`coupled to the pump, a plurality o f guides and stops being
`disposed within the enclosure for correctly positioning
`34
`components within the enclosure"
`A t least one valve operably coupled to the enclosure being i n
`selective f l u i d communication w i th the air chamber and being
`in fluid communication w i th the at least one air bladder for
`selectively fluidly coupling the air chamber to at least one air
`bladder;
`34
`
`2.
`3.
`
`4.
`
`b)
`
`c)
`
`ii
`
`Sleep Number Corp.
`EXHIBIT 2015
`IPR2019-00514
`Page 4
`
`

`

`d)
`
`b)
`
`c)
`
`d)
`
`5.
`
`C.
`D.
`
`4.
`
`"pressure monitor means being operably coupled to the processor
`and being i n fluid communication with the at least one valve for
`monitoring the pressure i n the at least one bladder"
`34
`Conclusion
`36
`e)
`Claim 16
`37
`a)
`" A n improved valve enclosure assembly for use with an air
`inflatable mattress having at least one air bladder inflated by
`compressed air, a pump fluidly coupled to the at least one air
`bladder for providing compressed air thereto, and a processor
`for providing commands to the improved valve enclosure
`assembly during an inflate/deflate cycle, the improved valve
`assembly being fluidly coupled intermediate the pump and the
`at least one air bladder for controlling the inflation of the at least
`one air bladder, comprising: . . ."
`37
`"an enclosure defining a substantially fluidly sealed air chamber
`and having at least one air inlet to the air chamber being
`fluidly
`coupled to the pump, the enclosure being formed o f an enclosure
`portion and a rear cover portion, a flexible seal being
`compressively interposed between the enclosed portion and
`a rear cover portion to effect a substantially fluid tight seal
`37
`therebetween"
`"at least one valve operably coupled to the enclosure being i n
`selective fluid communication w i t h the air chamber and being
`i n fluid communication w i t h the at least one air bladder for
`selectively fluidly coupling the air chamber to at least one air
`bladder;
`38
`"pressure monitor means being operably coupled to the
`processor and being i n f l u i d communication with the at least
`one valve for monitoring the pressure i n the at least one
`bladder"
`Conclusion
`e)
`Claim 20...
`6.
`Claim 22
`7.
`Claim 24
`8.
`Domestic Industry - Technical Prong
`Validity
`1.
`Written Description & Indefiniteness
`2.
`Broadening During Reexamination
`3.
`Anticipation
`a)
`"Pressure monitor means" - Claims 2, 6, 12, 16, 20, 22, and
`24
`Claim 9
`b)
`Obviousness
`a)
`Vrzalik and Shafer
`b)
`Vrzalik in combination w i t h Shafer and Kery
`c)
`Vrzalik and Peeler
`
`38
`38
`38
`39
`39
`39
`40
`40
`41
`43
`
`43
`48
`48
`49
`50
`52
`
`i i i
`
`Sleep Number Corp.
`EXHIBIT 2015
`IPR2019-00514
`Page 5
`
`

`

`d)
`e)
`f )
`g)
`
`Vrzalik and Cone
`Vrzalik, Shafer, and Oexman
`Vrzalik and Kery
`Vrzalik, Shafer, and Weinberg
`
`53
`54
`55
`56
`
`b)
`c)
`
`d)
`
`2.
`
`V I .
`
`B.
`
`C.
`
`D.
`
`E.
`
`58
`U.S. Patent No. 7,389,554
`58
`A.
`Overview
`58
`1.
`Asserted Claims
`59
`2.
`Claim Construction
`61
`3.
`Accused Products
`62
`Infringement
`62
`1.
`Direct Infringement
`62
`a)
`Claim 1
`62
`"air posturizing sleep surface"
`i .
`70
`Claims 5 and 6
`70
`Claim 16
`70
`i .
`"a third non-elevatable posturing section"
`72
`Claim 26
`73
`i .
`"high-profile"
`73
`Indirect Infringement
`2.
`74
`Domestic Industry - Technical Prong
`74
`1.
`Claim 1
`75
`2.
`Claim 16
`76
`3.
`Conclusion
`76
`Validity
`76
`1.
`Indefiniteness
`76
`a)
`"posturizing"
`77
`b)
`"lower" and "following"
`c)
`"a mattress base module supporting said air posturing module
`which includes"
`78
`Obviousness
`78
`a)
`Claim 1
`78
`b)
`Claim 5
`81
`c)
`Claim 6
`82
`d)
`Claim 16
`82
`e)
`Claim 26
`83
`Unenforceability
`85
`
`V I I .
`
`DOMESTIC I N D U S T R Y - ECONOMIC PRONG
`A.
`Significant Investment in Plant and Equipment
`B.
`Significant Employment of Labor or Capital
`
`V I I I . CONCLUSIONS OF L A W
`
`I X .
`
`R E C O M M E N D E D D E T E R M I N A T I O N O N R E M E D Y A N D B O N D
`A.
`Limited Exclusion Order
`
`87
`87
`90
`
`91
`
`93
`93
`
`iv
`
`Sleep Number Corp.
`EXHIBIT 2015
`IPR2019-00514
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`
`

`

`B.
`
`C.
`
`Cease and Desist Order
`1.
`Dires
`2.
`A N M
`3.
`Sizewise
`Bond During Presidential Review
`
`X .
`
`PUBLIC INTEREST
`
`X L
`
`I N I T I A L D E T E R M I N A T I O N
`
`94
`96
`96
`97
`98
`
`101
`
`107
`
`v
`
`Sleep Number Corp.
`EXHIBIT 2015
`IPR2019-00514
`Page 7
`
`

`

`L I S T O F A B B R E V I A T I O N S
`
`The following abbreviations may be used i n this Initial Determination:
`
`C D X
`
`C P X
`
`C X
`
`C I B
`
`C R B
`
`Complainants' demonstrative exhibit
`
`Complainants' physical exhibit
`
`Complainants' exhibit
`
`Complainants' initial post-hearing brief
`
`Complainants' reply post-hearing brief
`
`C P H B
`
`Complainants' pre-hearing brief
`
`Dep
`
`J X
`
`R D X
`
`R P X
`
`R X
`
`R I B
`
`R R B
`
`Deposition
`
`Joint Exhibit
`
`Respondents' demonstrative exhibit
`
`Respondents' physical exhibit
`
`Respondents' exhibit
`
`Respondents' initial post-hearing brief
`
`Respondents' reply post-hearing brief
`
`R P H B
`
`Respondents' pre-hearing brief
`
`R X
`
`R I B
`
`R R B
`
`SIB
`
`S R B
`
`Respondents' exhibit
`
`Respondents' initial post-hearing brief
`
`Respondents' reply post-hearing brief
`
`S t a f f s initial post-hearing brief
`
`S t a f f s reply post-hearing brief
`
`S P H B
`
`S t a f f s pre-hearing brief
`
`T r .
`
`Transcript
`
`v i
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`Sleep Number Corp.
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`IPR2019-00514
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`

`

`..
`V11
`v i i
`
`Sleep Number Corp.
`EXHIBIT 2015
`IPR2019-00514
`
`Page 9
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`Sleep Number Corp.
`EXHIBIT 2015
`IPR2019-00514
`Page 9
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`

`

`P U B L I C V E R S I O N
`
`U N I T E D S T A T E S I N T E R N A T I O N A L T R A D E C O M M I S S I O N
`
`Washington, D . C .
`
`I n the Matter of
`
`C E R T A I N A I R M A T T R E S S S Y S T E M S ,
`C O M P O N E N T S T H E R E O F , A N D M E T H O D S
`O F U S I N G T H E S A M E
`
`Inv. No. 337-TA-971.
`
`I N I T I A L D E T E R M I N A T I O N O N V I O L A T I O N O F S E C T I O N 337 A ND
`R E C O M M E N D E D D E T E R M I N A T I O N ON R E M E D Y A N D B O N D
`
`Chief Administrative Law Judge Charles E. Bullock
`
`(November 18,2016)
`
`Pursuant to the Notice o f Investigation, this is the Initial Detennination i n the matter o f
`
`Certain A i r Mattress Systems, Components Thereof, and Methods o f Using the Same,
`
`Investigation No. 337-TA-971.
`
`For the reasons stated herein, the undersigned has determined that no violation o f section
`
`337 o f the Tariff Act o f 1930, as amended, has been found i n the importation into the United
`
`States, the sale for importation, or the sale within the United States after importation of certain
`
`air mattress systems, components thereof, and methods o f using the same with respect to U.S.
`
`Patent Nos. 5,904,172 and 7,389,554.
`
`Sleep Number Corp.
`EXHIBIT 2015
`IPR2019-00514
`Page 10
`
`

`

`I.
`
`I N T R O D U C T I O N
`
`A.
`
`Procedural History
`
`On October 16, 2015, Complainants Select Comfort Corporation and Select Comfort SC
`
`Corporation (collectively, "Select Comfort") filed a Complaint alleging violations of section 337
`
`based upon the importation into the United States, the sale for importation, and the sale within
`
`the United States after importation o f certain air mattress systems, components thereof, and
`
`methods o f using the same. See 80 Fed. Reg. 72,738 (Nov. 20, 2015). Select Comfort
`
`supplemented the Complaint on October 28th and November 5th. Id.
`
`On November 20, 2015, the Commission instituted this Investigation. Id. Specifically, the
`
`Commission instituted this Investigation to determine:
`
`[Wjnefher there is a violation of subsection (a)(1)(B) of
`section 337 i n the importation into the United States,
`the sale for importation, or the sale within the United States after
`importation o f certain air mattress systems, components thereof,
`and methods o f using the same by reason o f infringement of one or
`more o f claims 2, 6, 9, 12, 16, 20 and 2 2 - 2 4 1 o f t h e '172 patent
`and claims 1, 5, 6, 16, 22 2, and 26 of the '554 patent, and whether
`an industry i n the United States exists as required by subsection
`(a)(2) of section 337.
`
`Id.
`
`The named respondents are Sizewise Rentals L L C , American National Manufacturing
`
`Inc., and Dires L L C (d/b/a Personal Comfort Bed)
`
`(collectively, "Respondents"). The
`
`Commission Investigative Staff ( " S t a f f ) participated i n the Investigation.
`
`The evidentiary hearing was held August 8-12, 2016.
`
`1 Claim 23 of the '172 patent has been terminated from this Investigation. (See Order No. 54 (Sept. 6, 2016); Notice
`of Comm'n Determination Not to Review an Initial Determination Granting an Unopposed Mot. for Partial
`Termination of the Investigation Based on Withdrawal of an Asserted Patent Claim (Sept. 30, 2016).)
`2 Claim 22 has been terminated from this Investigation. (See Order No. 29 (June 13, 2016); see also Notice of
`Comm'n Detennination Not to Review an Initial Detennination Granting an Unopposed Mot. for Partial
`Termination of the investigation Based on Withdrawal of an Asserted Patent Claim (June 30, 2016).)
`
`- 1 -
`
`Sleep Number Corp.
`EXHIBIT 2015
`IPR2019-00514
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`

`

`B.
`
`The Parties
`
`1.
`
`Select Comfort
`
`Select Comfort Corporation is a Minnesota corporation with its principal place of
`
`business i n North Minneapolis, Minnesota. (Compl. at f 10.) Select Comfort Corporation is i n
`
`the business o f designing, manufacturing, and selling adjustable air mattress systems and
`
`components thereof. (Id.) Its most notable air mattress system is the Sleep N u m b e r ® bed. (Id.)
`
`Select Comfort SC Corporation, doing business as Comfortaire, is a wholly-owned
`
`subsidiary of Select Comfort Corporation located i n Greenville, South Carolina. (Id. at f 11.)
`
`Comfortaire designs, manufactures, and sells adjustable air mattress systems and components
`
`thereof. (Id.)
`
`2.
`
`Respondents
`
`a)
`
`Sizewise Rentals L L C
`
`Sizewise Rentals L L C ("Sizewise")
`
`is a Nevada limited
`
`liability company with its
`
`principal place o f business i n Kansas. (SIB at 4.) Sizewise sells consumer and medical beds.
`
`b)
`
`American National Manufacturing Inc.
`
`American National Manufacturing Inc. ( " A N M " ) is a California corporation with its
`
`principal place of business i n Corona, California. A N M manufactures and sells medical air bed
`
`systems. (SIB at 4.)
`
`c)
`
`Dires L L C
`
`Dires L L C ("Dires") is a Delaware limited liability company with its principal place o f
`
`business i n Orlando, Florida. Dires is an online marketer and seller o f air mattresses. The air
`
`mattresses sold by Dires are manufactured by A N M .
`
`Sleep Number Corp.
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`

`

`C .
`
`Overview of the Technology
`
`The technology at issue relates to adjustable air mattress systems and components
`
`thereof. (Compl. at f 18.)
`
`D.
`
`Patents at Issue
`
`1.
`
`U.S. Patent No. 5,904,172
`
`The '172 patent, entitled "Valve Enclosure Assembly," issued on May 18, 1999. The
`
`'172 patent is assigned on its face to Select Comfort Corporation. It generally relates to an
`
`improved valve enclosure assembly. (Compl. at If 27.)
`
`As initially issued, the '172 Patent had 18 claims. I n January 2014, the United States
`
`Patent and Trademark Office issued an ex parte reexamination certificate. The patentability o f
`
`claims 2, 4-6, 11, 12, and 14-18 was confirmed, while Claims 1 and 10 were cancelled. Claim 9
`
`was determined to be patentable as amended. Claims 19-25 were added and detemiined to be
`
`patentable.
`
`2.
`
`U.S. Patent No. 7,389,554
`
`The '554 patent, entitled " A i r Sleep System W i t h Dual Elevating A i r Posturizing Sleep
`
`Surfaces," issued on June 24, 2000. The '554 patent is assigned on its face to Comfortaire
`
`Corporation. It generally relates to an air sleep system w i t h a pair o f air posturizing sleep
`
`surfaces, which may be individually inclined and air adjusted. ('554 patent at Abstract.)
`
`I I .
`
`J U R I S D I C T I O N A N D I M P O R T A T I O N
`
`A.
`
`Subject Matter Jurisdiction
`
`Section 337 confers subject matter jurisdiction on the Commission to investigate, and i f
`
`appropriate, to provide a remedy for, unfair acts and unfair methods o f competition i n the
`
`importation, the sale for importation, or the sale after importation o f articles into the United
`
`-3 -
`
`Sleep Number Corp.
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`Page 13
`
`

`

`States. See 19 U.S.C. §§ 1337(a)(1)(B) and (a)(2). Select Comfort filed a complaint alleging a
`
`violation of this subsection. Accordingly, the Commission has subject matter jurisdiction over
`
`this Investigation under section 337 o f the Tariff A c t o f 1930. Amgen,
`
`Inc. v. U.S. Int'l Trade
`
`Comm'n, 902 F.2d 1532, 1536 (Fed. Cir. 1990).
`
`B.
`
`Personal Jurisdiction
`
`Respondents have appeared and participated i n this Investigation. The Commission
`
`therefore has personal jurisdiction over Respondents. See, e.g., Certain Optical Disk Controller
`
`Chips & Chipsets & Prods. Containing
`
`Same,
`
`Including DVD Players & PC Optical
`
`Storage
`
`Devices,
`
`Inv. No. 337-TA-506, Initial Detennination at 4-5 (May 16, 2005) (unreviewed i n
`
`relevant part).
`
`C .
`
`In Rem Jurisdiction
`
`Respondents do not dispute that the Commission has in rem jurisdiction for the
`
`'172
`
`patent. (RPIIB at 24.) Respondents concede that A N M and Sizewise, ^ ^ ^ ^ ^ ^ H H ' have
`
`imported fully assembled air controllers, i.e, Gen 3 Arco, Gen 3 Koge, and Platinum 5000/6000.
`
`(McCarty, Tr. at 1024:24-1025:1; Miller, Tr. at 352:11-19; CX-0162C at .00118, CX-0178C at
`
`89:15-90:19.)
`
`Respondents do contest in rem jurisdiction for the '554 patent. (RIB at 2-3; RRB at 2.)
`
`They explain that the accused mattresses are manufactured by A N M i n California and Texas and
`
`that that only imported component is the air chambers 3, which is not specifically alleged to
`
`infringe the '554 patent, (Id.) Thus, Respondents assert that their sales o f the accused mattresses
`
`are not "sale[s] within the United States after importation" within the meaning of the statute.
`
`(RIB at 3 ("The evidence has shown no direct nexus between the importation o f this one
`
`component and the asserted claims o f the '554 Patent.").) Both Select Comfort and Staff assert
`
`3 The parties also refer to the "air chambers" as "air bladders."
`
`- 4 -
`
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`

`

`that jurisdiction for the
`
`'554 patent is proper. (CIB at 3-6 (arguing that the importation
`
`documents and designated deposition testimony show that A N M imports
`
`; SIB at 5-6.)
`
`The Notice o f Investigation governs the scope of the investigation. 19 C.F.R. § 210.10(b).
`
`The Notice reads: "Certain A i r Mattress Systems, Components Thereof, and Methods of Using
`
`the Same." 80 Fed. Reg. 72,738 (Nov. 20, 2015). Respondents concede that they import one of
`
`the main components o f the accused beds - the air chambers. (RIB at 2 ("the air chambers are
`
`the only imported component for these products"); see also Miller, Tr. at 390:12-392:23
`
`(admitting A N M imports components o f the accused air mattresses - e.g.,
`
`, 402:14-23; CX-0178C at 116:16-24; JX-0024; JX-0047C; JX-0048C; JX-
`
`0049C; JX-0050C; JX-0052C.) Respondents also cannot dispute that the air chambers are
`
`specifically recited i n the asserted claims o f the '554 patent. (JX-0002.) Thus, based on the scope
`
`o f this Investigation, which expressly
`
`includes components o f air mattress systems, the
`
`undersigned finds that that the Commission has jurisdiction over the beds alleged to infringe the
`
`'554 patent.
`
`I I I .
`
`O R D I N A R Y S K I L L I N T H E A R T
`
`The undersigned has previously detemiined that one of ordinary skill i n the art with
`
`respect to the '172 patent would have had at least a Bachelor o f Science degree in Mechanical
`
`Engineering, or equivalent, about 1-2 years of relevant experience working with pneumatic and
`
`inflatable devices, and be familiar with published literature i n the field as of July 1997. As for
`
`the '554 patent, the undersigned determined that one of ordinary skill i n the art would have at
`
`least a Bachelor of Science degree i n Mechanical Engineering, or equivalent, and about 1-2 years
`
`of relevant industry experience. (See Order No. 19 at 5-6 (May 11, 2016).)
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`I V .
`
`R E L E V A N T L A W
`
`A.
`
`Infringement
`
`In a section 337 investigation, the complainant bears the burden of proving infringement
`
`of the asserted patent claims by a preponderance o f the evidence. Spansion,
`
`Inc. v. Int'l Trade
`
`Comm'n,
`
`629 F.3d 1331, 1349 (Fed. Cir. 2010). This standard "requires proving that
`
`infringement was more likely than not to have occurred." Warner-Lambert
`
`Co. v. Teva Pharm.
`
`USA, Inc., 418 F.3d 1326, 1341 n.15 (Fed. Cir. 2005).
`
`1.
`
`Literal Infringement
`
`Literal infringement is a question o f fact. Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d
`
`1323, 1332 (Fed. Cir. 2008). Literal infringement requires the patentee to prove that the accused
`
`device contains each limitation of the asserted claim(s). I f any claim limitation is absent, there is
`
`no literal infringement o f that claim as a matter o f law. Bayer AG v. Elan Pharm.
`
`Research
`
`Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000).
`
`2.
`
`Doctrine of Equivalents
`
`A n accused product that does not literally infringe, may 'infringe under the doctrine o f
`
`equivalents i f the differences between the accused product and the claim are insubstantial.
`
`Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 608 (1950). One way o f
`
`proving infringement under the doctrine is to show, for each claim limitation, "that the accused
`
`product performs substantially the same function i n substantially the same way with substantially
`
`the same result as each claim limitation o f the patented product." Crown Packaging Tech., Inc.,
`
`v. Rexam Beverage Can Co., 559 F.3d 1308, 1312 (Fed. Cir. 2009); see also
`
`Brilliant
`
`Instruments,
`
`Inc. v. GuideTech LLC, 707 F.3d 1342,1346-47 (Fed. Cir. 2013). Infringement
`
`under the doctrine o f equivalents is a question o f fact. Graver Tank, 339 U.S. at 609-10.
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`3.
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`Indirect Infringement
`
`Indirect infringement may be either induced or contributory. Direct infringement must
`
`first be established i n order for a claim o f indirect infringement to prevail. BMC Res. v.
`
`Paymentech,
`
`498 F.3d 1373, 1379 (Fed. Cir. 2007).
`
`a)
`
`Induced Infringement
`
`Section 271(b) o f the Patent Act provides: "Whoever actively induces infringement o f a
`
`patent shall be liable as an infringer." 35 U.S.C. §271(b) (2008). To establish liability, the patent
`
`holder must prove that "once the defendants knew o f the patent, they 'actively and knowingly
`
`aid[ed] and abettfed] another's direct infringement.'" DSU Med. Corp. v. JMS Co., Ltd. 471 F.3d
`
`1293,1305 (Fed. Cir. 2006) (en banc) (citations omitted). A finding of induced infringement
`
`requires "evidence of culpable conduct, directed to encouraging another's infringement, not
`
`merely that the inducer had knowledge of the direct infringer's activities." Id. at 1306. Although
`
`§271(b) requires knowledge that the induced acts constitute patent infringement, the Supreme
`
`Court has held that liability w i l l also attach when the defendant is w i l l f u l l y blind. Global-Tech
`
`Appliances,
`
`Inc. v. SEB S.A., 131 S. Ct. 2060, 2068-2069
`
`(2011). The burden is on the
`
`complainant to prove that the respondent had the specific intent and took action to induce
`
`infringement. DSU, 471 F.3d at 1305-06. Intent may be proven by circumstantial evidence.
`
`Lucent Tech., Lnc. v. Gateway,
`
`Inc., 580 F.3d 1301, 1322 (Fed. Cir. 2009).
`
`B .
`
`Validity
`
`A patent is presumed valid. 35 U.S.C. § 282; Microsoft Corp. v. i4i Ltd. P'ship, 131 S.
`
`Ct. 2238, 2242 (2011). A respondent who has raised patent invalidity as an affirmative defense
`
`has the burden o f overcoming this presumption by clear and convincing evidence. Microsoft, 131
`
`S. Ct. at 2242. As with an infringement analysis, an analysis o f invalidity involves two steps:
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`determining the scope o f the claim and comparing the properly construed claim with the prior art
`
`to determine whether the claimed invention is anticipated and/or rendered obvious.
`
`1.
`
`Anticipation (35 U.S.C. § 102)
`
`Under 35 U.S.C. § 102, a claim is anticipated and therefore invalid when "the four
`
`corners of a single, prior art document describe every element o f the claimed invention, either
`
`expressly or inherently, such that a person o f ordinary skill i n the art could practice the invention
`
`without undue experimentation." Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d
`
`1272, 1282 (Fed. Cir. 2000), cert, denied, 532 U.S. 904 (2001). To be considered anticipatory,
`
`the prior art reference must be enabling and describe the applicant's claimed invention
`
`sufficiently to have placed it i n possession o f a person o f ordinary skill i n the field o f the
`
`invention. Helifix Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1346 (Fed. Cir. 2000).
`
`2.
`
`Obviousness (35 U.S.C. § 103)
`
`Under 35 U.S.C. §103, a patent may be found invalid for obviousness i f "the differences
`
`between the subject matter sought to be patented and the prior art are such that the subject matter
`
`as a whole would have been obvious at the time the invention was made to a person having
`
`ordinary skill i n the art to which said subject matter pertains." 35 U.S.C. §103(a). Because
`
`obviousness is determined at the time o f invention, rather than the date o f application or
`
`litigation, " [ f j h e great challenge o f the obviousness judgment is proceeding without any hint o f
`
`hindsight." Star Scientific,
`
`Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1375 (Fed. Cir.
`
`2011) ("Star/7").
`
`When a patent is challenged as obvious, the critical inquiry i n determining the differences
`
`between the claimed invention and the prior art is whether there is an apparent reason to combine
`
`the known elements i n the fashion claimed by the patent at issue. KSR Int'l Co. v. Teleflex,
`
`Inc.,
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`550 U.S. 398, 417-418 (2007). The Federal Circuit has since held that when a patent is
`
`challenged as obvious, based on a combination o f several prior art references, "the burden falls
`
`on the patent challenger to show by clear and convincing evidence that a person o f ordinary skill
`
`in the art would have had reason to attempt to make the composition or device, or cany out the
`
`claimed process, and would have had a reasonable expectation o f success in doing so."
`
`PharmaStem
`
`Therapeutics,
`
`Inc. v. ViaCell, Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007) (citations
`
`omitted).
`
`Obviousness is a determination o f law based on underlying determinations o f fact. Star
`
`II, 655 F.3d at 1374. The factual determinations behind a finding o f obviousness include: (1) the
`
`scope and content o f the prior art, (2) the level and content o f the prior art, (3) the differences
`
`between the claimed invention and the prior art, and (4) secondary considerations o f non-
`
`obviousness. KSR, 550 U.S. at 399 (citing Graham v. John Deere Co., 383 U.S. 1, 17 (1966)).
`
`These factual determinations are referred to collectively as the "Graham
`
`factors." Secondary
`
`considerations o f non-obviousness include commercial success, long felt but unresolved need,
`
`and the failure o f others. Id. When present, secondary considerations "give light to the
`
`circumstances surrounding the origin o f the subject matter sought to be patented," but they are
`
`not dispositive on the issue o f obviousness. Geo. M. Martin Co. v. Alliance Mach. Sys. Int'l, 618
`
`F.3d 1294, 1304-06 (Fed. Cir. 2010). A court must consider all o f the evidence from the Graham
`
`factors before reaching a decision on obviousness. For evidence o f secondary considerations to
`
`be given substantial weight in the obviousness determination, its proponent must establish a
`
`nexus between the evidence and the merits o f the claimed invention. W. Union Co. v.
`
`MoneyGram
`
`Payment Sys. Inc., 626 F.3d 1361, 1372-73 (Fed. Cir. 2010) (citing In re GPAC
`
`Inc., 57F.3d 1573, 1580 (Fed. Cir. 1995)).
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`3.
`
`Indefiniteness (35 U.S.C. § 112(b))
`
`A claim must also be definite. Pursuant to 35 U.S.C. § 112(b): "The specification shall
`
`conclude w i t h one or more claims particularly pointing out and distinctly claiming the subject
`
`matter which the inventor or joint inventor regards as the invention." 35 U.S.C. § 112(b). I n
`
`Nautilus,
`
`Inc. v. Biosig Instruments,
`
`Inc., 134 S. Ct. 2120 (2014), the Supreme Court held that
`
`§ 112(b) requires "that a patent's claims, viewed i n light o f the specification and prosecution
`
`history inform those skilled i n the art about the scope o f the invention with reasonable certainty."
`
`(Id. at 2129.) A patent claim that is indefinite is invalid. 35 U.S.C. § 282(b)(3)(A).
`
`4.
`
`Broadening During Reexamination
`
`Section 305 provides: "No proposed amended or new claim enlarging the scope o f a
`
`claim o f the patent w i l l be permitted i n a reexamination proceeding under this chapter." 35
`
`U.S.C. § 305. " A claim is enlarged i f it includes within its scope any subject matter that would
`
`not have infringed the original patent." In re Freeman, 30 F.3d 1459, 1464 (Fed. Cir. 1994.)
`
`C .
`
`Domestic Industry
`
`I n a patent-based complaint, a violation of section 337 can be found "only i f an industiy
`
`in the United States, relating to the articles protected by the patent . . . concerned, exists or is i n
`
`the process of being established." 19 U.S.C. § 1337(a)(2). Under Commission precedent, this
`
`"domestic industiy requirement" of section 337 consists of an economic prong and a technical
`
`prong. Certain Stringed Musical
`
`Instruments
`
`and Components
`
`Thereof,
`
`Inv. No. 337-TA-586,
`
`Comm'n Op. at 12-14, 2009 W L 5134139 (U.S.I.T.C. Dec. 2009). The complainant bears the
`
`burden o f establishing that the domestic industiy requirement is satisfied. See Certain
`
`Set-Top
`
`Boxes and Components
`
`Thereof, Inv. No. 337-TA-454, Final Initial Detennination at 294, 2002
`
`W L 31556392 (U.S.I.T.C. June 2 1 , 2002) (unreviewed by Commission in relevant part).
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`1.
`
`Economic Prong
`
`Section 337(a)(3) sets forth the following economic criteria for determining the existence
`
`of a domestic industry i n such investigations:
`
`(3) For purposes of paragraph (2), an industry i n the United States
`shall be considered to exist i f there is i n the United States, with
`respect to the articles protected by the patent, copyright, trademark,
`mask work, or design concerned -
`
`(A) significant investment i n plant and equipment;
`(B) significant employment o f labor or capital; or
`(C) substantial investment i n its exploitation, including engineering,
`research and development, or licensing.
`
`Given that these criteria are listed i n the disjunctive, satisfaction o f any one of them w i l l be
`
`sufficient to meet the economic prong o f the domestic industry requirement. Certain
`
`Integrated
`
`Circuit Chipsets and Prods. Containing
`
`Same,
`
`Inv. No. 337-TA-428, Order No. 10, Initial
`
`Determination (unreviewed) (May 4, 2000).
`
`2.
`
`Technical Prong
`
`The
`
`technical prong o f the domestic
`
`industry requirement
`
`is satisfied when
`
`the
`
`complainant