PUBLIC VERSION
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`Washington, D.C.
`
`In the Matter of
`
`CERTAIN MAGNETIC DATA STORAGE AND
`TAPES AND CARTRIDGES CONTAINING
`THE SAME (II)
`
`INV. NO. 337-TA-1076
`
`INITIAL DETERMINATION ON VIOLATION OF SECTION 337 AND
`RECOMMENDED DETERMINATION ON REMEDY AND BOND
`
`Administrative Law Judge Clark S. Cheney
`
`(October 25, 2018)
`
`Appearances:
`
`For the Complainants Fujifilm Coiporation and Fujifilm Recording Media US.A., Inc.:
`
`Robert C. Scheinfeld, Esq., Robert L. Maier, Esq., Jennifer C. Tempesta, Esq., and Joseph Akalski,
`Esq. of Baker Botts L.L.P. of New York, NY.
`
`Lisa M. Kattan, Esq., Katherine Burke, Esq., and Thomas C. Martin, Esq. of Baker Botts L.L.P.
`of Washington, DC.
`
`Syed Fareed, Esq. of Baker Botts L.L.P. of Austin, TX.
`
`For the Respondents Sony Corporation, Sony Storage Media Solutions Corporation, Sony Storage
`Media Manufacturing Corporation, Sony DADC US Inc., Sony Latin America Inc.:
`
`Gregory F. Corbett, Esq., Michael N. Rader, Esq., Randy J. Pritzker, Esq., Charles T. Steenburg,
`Esq., Hunter D. Keeton, Esq., John L. Strand, Esq., Nathan R. Speed, Esq., Bryan S. Conley, Esq.,
`Jason W. Balich, Esq., Elizabeth A. DiMarco, Esq., Giorgos Stamatopoulos, Esq., Michelle K.
`Nyein, Esq., Brandon S. Blackwell, Esq., and Claire E. Schuster, Esq., Elizabeth Hudson, Esq. of
`Wolf Greenfield & Sacks, P.C. of Boston, MA.
`
`James B. Altman, Esq., F. David Foster, Esq., Barbara A. Murphy, Esq., David F. Nickel, Esq.,
`Susan Koegel, Esq., Kandis C. Gibson, Esq., Matthew N. Duescher, Esq. of Foster, Murphy,
`Altman & Nickel, PC of Washington, DC.
`
`For the Commission Investigative Staff:
`
`Margaret D. Macdonald, Esq., Director; David 0. Lloyd, Esq., Supervisory Attorney; Todd P.
`Taylor, Esq., Investigative Attorney of the Office of Unfair Import Investigations, U.S.
`International Trade Commission
`
`FUJIFILM, Exh. 2009, p. 1
`FUJIFILM v. Sony, 2018-00876
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`PUBLIC VERSION
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`TABLE OF CONTENTS
`
`I.
`
`Introduction
`
`A.
`
`B.
`
`Procedural History
`
`The Private Parties
`
`1.
`
`Complainants
`
`a)
`
`b)
`
`Fujifilm Corporation
`
`Fujifilm Recording Media U.S.A., Inc •
`
`2.
`
`Respondents
`
`a)
`
`b)
`
`c)
`
`d)
`
`e)
`
`Sony Corporation
`
`Sony Storage Media Solutions Corporation
`
`Sony Storage Media Manufacturing Corporation
`
`Sony DADC US Inc.
`
`Sony Latin America Inc.
`
`C.
`
`The Technology at Issue
`
`D. The Accused Products
`
`E.
`
`The Domestic Industry Products
`
`II.
`
`Jursidiction and Importation
`
`A.
`
`B.
`
`C.
`
`D.
`
`Subject Matter Jurisdiction
`
`Personal Jurisdiction
`
`In Rem Jurisdiction
`
`Importation
`
`E. Ownership and Standing
`
`III. Relevant Law
`
`A. Claim Construction
`
`B.
`
`Infringement
`
`1.
`
`2.
`
`Literal Infringement
`
`Doctrine of Equivalents
`
`C. Validity
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`11
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`2
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`2
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`3
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` 3
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` 3
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` 4
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` 4
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` 4
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` 4
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` 4
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` 4
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` 5
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` 5
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` 5
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` 6
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` 6
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` 6
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` 7
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` 7
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` 7
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` 7
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` 8
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` 8
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` 10
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` 10
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` 10
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` 11
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`FUJIFILM, Exh. 2009, p. 2
`FUJIFILM v. Sony, 2018-00876
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`PUBLIC VERSION
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`1. Anticipation
`
`2.
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`Obviousness
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`3. Written Description and Enablement
`
`4.
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`Indefiniteness
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`D. Domestic Industry
`
`1.
`
`2.
`
`Economic Prong
`
`Technical Prong
`
`IV. U.S. Patent Number 6,630,256
`
`A.
`
`The Claims-at-Issue
`
`B. A Person of Ordinary Skill in the Art
`
`C.
`
`D.
`
`Claim Construction
`
`Infringement
`
`E. Domestic Industry — Technical Prong
`
`F.
`
`Invalidity
`
`The alleged obviousness combinations involving Inaba do not
`1.
`render the asserted claims invalid.
`
`Sony has not met its burden to prove that Inaba in
`a)
`combination with Nagasawa renders the asserted claims invalid
`as obvious
`
`Sony has not met its burden to prove that Inaba in
`b)
`combination with the prior art allegedly admitted in the
`'256 patent renders the asserted claims invalid as obvious.
`
`Sony has not met its burden to prove that the substrate the
`c)
`inventors allegedly derived from Asahi qualifies as prior art.
`
`The claim term "nonmagnetic support" is adequately
`2.
`described in the specification
`
`V. U.S. Patent Number 6,835,451
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`A.
`
`The Claims-at-Issue
`
`B. A Person of Ordinary Skill in the Art
`
`C.
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`D.
`
`Claim Construction and Indefiniteness
`
`Infringement
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`111
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`11
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`12
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`13
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`14
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`15
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`15
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`16
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`16
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`17
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`18
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`19
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`19
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`32
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`34
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`35
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`37
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`40
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`43
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`47
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`48
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`50
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`51
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`51
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`55
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`FUJIFILM, Exh. 2009, p. 3
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`Fujifilm's flawed measurements fail to show that the
`1.
`accused products have ratio (Sdc/Sac) values within the
`claimed range.
`
`Fujifilm failed to prove that the tapes in the accused
`2.
`Sony product lines have the same or similar properties as
`the individual tape it measured for each respective product line.
`
`E. Domestic Industry — Technical Prong
`
`F.
`
`Invalidity
`
`The LT0-1 products in combination with Ejiri and
`1.
`Speliotis render claim 5, but not claims 12-14, invalid as obvious
`
`a)
`
`b)
`
`Claim 5
`
`Claims 12, 13, and 14
`
`Sony did not prove that the asserted claims that
`2.
`depend on claim 1 are not enabled
`
`VI. U.S. Patent Number 7,011,899
`
`A. The Claims-at-Issue
`
`B. A Person of Ordinary Skill in the Art
`
`C. Claim Construction and Indefiniteness
`
`D.
`
`Infringement
`
`1.
`
`2.
`
`3.
`
`Independent Claim 1
`
`Dependent Claim 2
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`Dependent Claims 7, 11, 12
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`E. Domestic Industry — Technical Prong
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`1.
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`2.
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`3.
`
`Independent Claim 1
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`Dependent Claim 2
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`Dependent Claims 7 and 9-12
`
`F.
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`Invalidity
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`1.
`
`The Claims Are Not Obvious over Sueoka
`
`The Claims Are Not Obvious in View of Sueoka
`2.
`Combined with Aonuma
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`3.
`
`The Claims Are Not Indefinite(cid:9)
`
`iv
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`56
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`63
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`64
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`66
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`66
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`67
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`70
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`74
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`78
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`79
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`80
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`81
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`84
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`84
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`91
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`92
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`93
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`93
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`97
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`97
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`98
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`98
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`110
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`111
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`FUJIFILM, Exh. 2009, p. 4
`FUJIFILM v. Sony, 2018-00876
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`PUBLIC VERSION
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`VII. U.S. Patent Number 6,462,905
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`A. The Claims-at-Issue
`
`B. A Person of Ordinary Skill in the Art
`
`C. Claim Construction
`
`D.
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`Infringement
`
`1.
`
`Claim 1 — Literal Infringement
`
`a)
`
`b)
`
`c)
`
`2.
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`3.
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`4.
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`Centering after Impact
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`Centering During Assembly
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`Centering During Tape Drive Use
`
`Claim 1 — Infringement under Doctrine of Equivalents
`
`Claim 2
`
`Claim 3
`
`E. Domestic Industry — Technical Prong
`
`1.
`
`2.
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`3.
`
`Claim 1
`
`Claim 2
`
`Claim 3
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`F.
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`Invalidity
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`1.
`
`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`8.
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`9.
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`Claim 1 — Not Obvious Over McAllister-I in View of Laverriere
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`Claim 2 — Not Obvious Over McAllister-I and Laveniere
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`Claim 1 — Not Obvious Over Morita-I in View of Morita-II
`
`Claim 2 — Not Obvious Over Morita-I in View of Morita-II and Laveifiere
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`Claim 3 — Not Anticipated by McAllister-I
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`Claim 3 — Not Obvious Over McAllister-I
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`Claim 3 — Anticipated by Fujifilm Cartridge Sales
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`Secondary Considerations of Obviousness
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`Conclusions
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`VIII. Domestic Industry — Economic Prong
`
`A.
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`Plant and Equipment
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`111
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`112
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`113
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`114
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`115
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`115
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`116
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`122
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`123
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`125
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`127
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`128
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`130
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`130
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`131
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`132
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`132
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`132
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`136
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`136
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`139
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`140
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`142
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`145
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`149
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`149
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`150
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`152
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`FUJIFILM, Exh. 2009, p. 5
`FUJIFILM v. Sony, 2018-00876
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`PUBLIC VERSION
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`B.
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`C.
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`Labor and Capital
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`The Significance of Fujifilm's Domestic Investment
`
`IX. Conclusions of Law
`
`X. Recommended Determination on Remedy & Bond
`
`A.
`
`B.
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`Limited Exclusion Order
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`Cease and Desist Order
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`C. Bond During Presidential Review
`
`XI. Public Interest
`Sony's Argument that an Exclusion Order Would Make Fujifilm
`A.
`the Sole Supplier of Some Tapes and Eliminate One Generation Entirely
`Sony's Argument that an Exclusion Order Would Harm Consumers
`
`B.
`
`C.
`
`Sony's Argument that an Exclusion Order Would Reduce Innovation
`
`Sony's Argument that an Exclusion Order Would Harm Government
`D.
`and Research Customers
`
`XII. Initial Determination
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`158
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`162
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`170
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`172
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`172
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`176
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`177
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`180
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`181
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`182
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`183
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`185
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`186
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`vi
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`FUJIFILM, Exh. 2009, p. 6
`FUJIFILM v. Sony, 2018-00876
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`

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`PUBLIC VERSION
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`TABLE OF ABBREVIATIONS
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`CDX
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`CIB
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`CPB
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`CPX
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`CRB
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`CX
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`JX
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`RDX
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`RIB
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`RPX
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`RPB
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`RRII
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`RRX
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`RX
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`SIB
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`SPB
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`SRB
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`Tr.
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`Complainant's demonstrative exhibit
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`Complainant's initial post-hearing brief
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`Complainant's pre-hearing brief
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`Complainant's physical exhibit
`
`Complainant's reply post-hearing brief
`
`Complainant's exhibit
`
`Joint Exhibit
`
`Respondent's demonstrative exhibit
`
`Respondent's initial post-hearing brief
`
`Respondent's physical exhibit
`
`Respondent's pre-hearing brief
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`Respondent's reply post-hearing brief
`
`Respondent's rebuttal exhibit
`
`Respondent's exhibit
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`Staff's initial post-hearing brief
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`Staff's pre-hearing brief
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`Staff's reply post-hearing brief
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`Transcript
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`vii
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`FUJIFILM, Exh. 2009, p. 7
`FUJIFILM v. Sony, 2018-00876
`
`

`

`PUBLIC VERSION
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`Washington, D.C.
`
`In the Matter of
`
`CERTAIN MAGNETIC DATA STORAGE AND
`TAPES AND CARTRIDGES CONTAINING
`THE SAME (II)
`
`INV. NO. 337-TA-1076
`
`INITIAL DETERMINATION ON VIOLATION OF SECTION 337 AND
`RECOMMENDED DETERMINATION ON REMEDY AND BOND
`
`Administrative Law Judge Clark S. Cheney
`
`(October 25, 2018)
`
`Pursuant to the Notice of Investigation, 82 Fed. Reg. 49421 (Oct. 25, 2017), this is the
`
`Initial Determination in the matter of Certain Magnetic Data Storage and Tapes and Cartridges
`
`Containing the Same (II), Investigation No. 337-TA-1076.
`
`19 C.F.R. §§ 210.10(b),
`
`210.42(a)(1)(i).
`
`For the reasons stated herein, I have determined that a violation of section 337 of the Tariff
`
`Act of 1930, as amended, has occurred in the importation into the United States, the sale for
`
`importation, or the sale within the United States after importation of certain magnetic data storage
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`and tapes and cartridges containing the same with respect to U.S. Patent Nos. 6,630,256 and
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`7,011,899.
`
`FUJIFILM, Exh. 2009, p. 8
`FUJIFILM v. Sony, 2018-00876
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`

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`PUBLIC VERSION
`
`I.
`
`INTRODUCTION
`
`A.
`
`Procedural History
`
`On September 19, 2017, complainants Fujifilm Corporation of Japan and Fujifilm
`
`Recording Media U.S.A., Inc. (collectively "Fujifilm" or "complainants") 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 of certain magnetic data storage
`
`tapes and cartridges containing the same by reason of infringement of certain claims of United
`
`States Patent Numbers 6,630,256 ("the '256 patent"); 6,835,451 ("the '451 patent"); 7,011,899
`
`("the '899 patent"); 6,462,905 ("the '905 patent"); and 6,783,094 ("the '094 patent"). 82 Fed.
`
`Reg. 49421 (Oct. 25, 2017).
`
`On October 25, 2017, the Commission instituted this investigation to determine:
`
`whether there is a violation of subsection (a)(1)(B) of section 337 in
`the importation into the United States, the sale for importation, or
`the sale within the United States after importation of certain
`magnetic data storage tapes and cartridges containing the same by
`reason of infringement of one or more of claims 1-5 and 7-9 of the
`'256 patent; 1-14 of the '451 patent; claims 1, 2, and 6-12 of the
`'899 patent; claims 1-4 of the '905 patent; and claims 1-12 and 18-
`22 of the '094 patent, and whether an industry in the United States
`exists as required by subsection (a)(2) of section 337.
`
`Id.
`
`The named respondents are Sony Corporation of Tokyo, Japan; Sony Storage
`
`Media Solutions Corporation of Tokyo, Japan; Sony Storage Media Manufacturing
`
`Corporation of Miyagi, Japan; Sony DADC U.S. Inc. of Terra Haute, IN; and Sony Latin
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`America Inc. of Miami, FL. Id. at 49421-22.
`
`1 A supplement to the complaint was filed October 6,2017. 82 Fed. Reg. 49421.
`
`2
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`FUJIFILM, Exh. 2009, p. 9
`FUJIFILM v. Sony, 2018-00876
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`PUBLIC VERSION
`
`The Commission Investigative Staff ("Staff') is also a party to this investigation.
`
`Id.
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`On March 19, 2018, I issued an initial determination terminating the investigation
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`as to the '094 patent based on Fujifilm's unopposed motion requesting as much. See Order
`
`No. 11. The Commission did not review the determination. See Notice of Comm'n Det.
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`Granting a Motion to Terminate the Investigation as to U.S. Patent No. 6,783,094 (Apr. 17,
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`2018) (determining "not to review the subject ID"). On June 7, 2018, I issued an initial
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`determination terminating the investigation as to claim 4 of the '905 patent, claims 7-9 of
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`the '256 patent, claims 2, 6, 10, and 11 of the '451 patent, and claims 6 and 8 of the '899
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`patent, again based on an unopposed request from Fujifilm. See Order No. 17. The
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`Commission did not review the determination.
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`An evidentiary hearing was held on June 25-29, 2018, to determine whether section
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`337 has been violated by reason of the importation into the United States, the sale for
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`importation, or the sale within the United States after importation of the accused magnetic
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`data storage tapes and cartridges containing the same based upon infringement of one or
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`more of the '256, '899, '451, and '905 patents.
`
`B.
`
`The Private Parties
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`1.
`
`Complainants
`
`a)
`
`Fujifilm Corporation
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`Fujifilm Corporation is a Japanese corporation located in Tokyo, Japan. See Am. Compl.
`
`fif 2.1. It is the ultimate parent company of complainant Fujifilm Recording Media U.S.A., Inc.
`
`("FRMU"). Id. if 2.2. Fujifilm Corporation owns by assignment the Asserted Patents. See Am.
`
`Compl., Exs. 6-9.
`
`3
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`FUJIFILM, Exh. 2009, p. 10
`FUJIFILM v. Sony, 2018-00876
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`PUBLIC VERSION
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`b)
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`Fujifilm Recording Media U.S.A., Inc.:
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`FRMU is a Delaware corporation with its principal place of business in Bedford,
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`Massachusetts.
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`Id. I 2.2. It is a wholly owned subsidiary of FUJIFILM Holdings America
`
`Corporation, which is in turn a wholly owned subsidiary of complainant FUJIFILM Corporation.
`
`Id.
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`FRMU is the U.S.-based manufacturing, marketing, and sales arm for FUJIFILM
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`Corporation's professional broadcast video and data tape recording media business. Id.
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`2.
`
`Respondents
`
`a)
`
`Sony Corporation
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`Sony Corporation is organized under the laws of Japan and is located in Tokyo, Japan. See
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`Response to Am. Compl. It 3.1. Its subsidiaries design, develop, and manufacture the accused
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`products. Id.
`
`b)
`
`Sony Storage Media Solutions Corporation
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`Sony Storage Media Solutions Corporation ("SSMS") is organized under the laws of Japan
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`and is located in Tokyo, Japan. Id. It 3.2. SSMS is a wholly owned subsidiary of Sony Corporation.
`
`Id. It is responsible, directly and/or indirectly, for designing, developing, and manufacturing the
`
`accused products. Id. SSMS operates as an OEM for LTO tape cartridges. Id.
`
`c)
`
`Sony Storage Media Manufacturing Corporation
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`Sony Storage Media Manufacturing Corporation ("SSMM") is organized under the laws
`
`of Japan and is located in Miyagi, Japan. Id. IT 3.3. SSMM is a wholly owned subsidiary of SSMS.
`
`Id. It is responsible, directly and/or indirectly, for manufacturing certain accused products. Id.
`
`d)
`
`Sony DADC US Inc.
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`Sony DADC US Inc. ("Sony DADC") is a Delaware Corporation located in Terre Haute,
`
`Indiana. Id. it 3.4. Sony DADC is a wholly owned subsidiary of Sony Corporation of America,
`
`which is a wholly owned subsidiary of Sony Corporation. Id. It is responsible, directly and/or
`
`4
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`FUJIFILM, Exh. 2009, p. 11
`FUJIFILM v. Sony, 2018-00876
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`PUBLIC VERSION
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`indirectly, for management and distribution of OEM LTO tape cartridge products in the United
`
`States. Id.
`
`e)
`
`Sony Latin America Inc.
`
`Sony Latin America Inc. ("SOLA") is organized under the laws of Florida and is located
`
`in Miami, Florida. Id.¶ 3.5. SOLA is a wholly owned subsidiary of Sony Corporation of America,
`
`which is a wholly owned subsidiary of Sony Corporation. Id, It is responsible for sales and
`
`management of Sony-branded LTO tape cartridge products in the United States. Id.
`
`C.
`
`The Technology at Issue
`
`The technology at issue generally relates to magnetic tape media for data storage. Am.
`
`Compl. 1 4.2. More specifically, the '256, '451, and '899 patents (i.e., the recording medium
`
`patents) are directed toward magnetic tape. See Am. Compl. ¶ 5.1. The '905 patent (i.e., the
`
`cartridge patent) is directed toward features of the cartridge that houses the magnetic tape. See id.
`
`The technology of each patent is discussed in more detail infra.
`
`D.
`
`The Accused Products
`
`Fujifilm has accused Sony's LTO-4, LTO-5, LTO-6, and LTO-8 tape cartridges in this
`
`investigation. See JX-0009C ¶ 2. In addition to its own branded tapes, Sony is the original
`
`equipment manufacturer for Hewlett Packard Enterprise, Oracle, Quantum, and IBM accused tape
`
`products. See id. 411 3. Not all asserted claims are asserted against eveiy LTO generation of Sony's
`
`tapes. The breakdown of asserted claims to LTO generations is as follows:
`
`Sony
`
`Patent
`
`Claims
`
`'256 patent
`
`'451 patent
`'899 patent
`'905 patent
`
`1-4
`5
`3, 5, and 12-14
`1, 2, 7, and 11-12
`1-3
`
`LTO-4 LTO-5 LTO-6 LTO-7 LTO-8
`X
`X
`X
`X
`X
`
`X
`
`X
`
`X
`
`5
`
`X
`X
`X
`
`X
`
`FUJIFILM, Exh. 2009, p. 12
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`PUBLIC VERSION
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`SIB at 12 (citing Am. Compl. IN 6.4-6.16; DB at 6, 22, 33, 47).
`
`E.
`
`The Domestic Industry Products
`
`Fujian relies its own LTO-4, LTO-5, and LTO-6 products to satisfy the domestic industry
`
`requirement of section 337. Am. Compl. 111 9.3-9.5. Here again, particular domestic industry
`
`claims correspond to particular generations of Fujifilm's LTO products. The breakdown of
`
`domestic industry claims to LTO generations is as follows:
`
`Fujifilm
`
`Patent
`
`Claims
`
`'256 patent
`
`'451 patent
`'899 patent
`'905 patent
`
`1-4
`5
`Sand 12-14
`1,2, 7, and 9-12
`1-3
`
`LTO-4 LTO-5 LTO-6 LTO-7 LTO-8
`X
`X
`X
`X
`X
`X
`X
`X
`
`X
`
`X
`
`X
`
`SIB at 12 (citing Am. Compl. ¶f 9.3-9.5, 9.9-9.11; CIB at 14, 27, 39, 59).
`
`JURSIDICTION AND IMPORTATION
`
`A.
`
`Subject Matter Jurisdiction
`
`Section 337 confers subject matter jurisdiction on the Commission to investigate, and if
`
`appropriate, to provide a remedy for, unfair acts and unfair methods of competition in the
`
`importation, the sale for importation, or the sale after importation.of articles into the United States.
`
`See 19 U.S.C. §§ 1337(a)(1)(B) and (a)(2). Fujifilm filed a complaint alleging a violation of
`
`section 337(a). Accordingly, the Commission has subject matter jurisdiction over this
`
`investigation under section 337 of the Tariff Act of 1930. See Amgen, Inc. v. Int '1. Trade Comm 'n,
`
`902 F.2d 1532, 1536 (Fed. Cir. 1990).
`
`6
`
`FUJIFILM, Exh. 2009, p. 13
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`PUBLIC VERSION
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`B.
`
`Personal Jurisdiction
`
`Sony has appeared and participated in this investigation. The Commission therefore has
`
`personal jurisdiction over Sony. See, e.g., Certain Optical Disk Controller Chips & Chipsets &
`
`Prods. Containing Same, Including DVD Players & PC Optical Storage Devices, Inv. No. 337-
`
`TA-506, ID at 4-5 (May 16, 2005) (unreviewed in relevant part).
`
`C.
`
`In Rem Jurisdiction
`
`Sony does not dispute that the Commission has in rem jurisdiction over the accused LTO-4,
`
`LTO-5, LTO-6, and LTO-8 tape products that have been imported into the United States. See
`
`RRB at 6. In fact, Sony has stipulated to the importation of the accused LTO-4, LTO-5, LTO-6,
`
`and LTO-8 tape products into the United States. See JX-0009C I 3. Accordingly, the Commission
`
`has in rem jurisdiction over the accused LTO-4, LTO-5, LTO-6, and LTO-8 tape products. See
`
`Sealed Air Corp. v. Intl Trade Comm 'n, 645 F.2d 976, 985-86 (C.C.P.A. 1981) (noting that the
`
`Commission has jurisdiction over imported goods); Certain Crawler Cranes and Components
`
`Thereof, Inv. No. 337-TA-887, Comm'n Op. at 17 (May 6, 2015) (an article "sold for importation"
`
`can confer jurisdiction on the Commission for that article).
`
`D.
`
`Importation
`
`As noted above, Sony has stipulated to the importation of the accused LTO-4, LTO-5,
`
`LTO-6, and LTO-8 tape products into the United States. See JX-0009C ¶ 3. Accordingly, the
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`importation requirement of section 337 is satisfied.
`
`E.
`
`Ownership and Standing
`
`Staff raises the additional question of whether Fujifilm has standing in this investigation
`
`and answers that question affirmatively. SIB at 13-14. However, as Staff notes, there is no dispute
`
`in this investigation that Fujifilm has standing. Id. at 14; see RRB at 6. Moreover, the evidence
`
`shows that all of the asserted patents are owned by Fujifilm through assignment. See JX-0105;
`
`7
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`PUBLIC VERSION
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`JX-0106; JX-0107; JX-0104. Accordingly, I find that Fujifilm has standing in this investigation.
`
`See 19. C.F.R. § 210.12(a)(7) ("For every intellectual property based complaint (regardless of the
`
`type of intellectual property right involved), include a showing that at least one complainant is the
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`owner or exclusive licensee of the subject intellectual property.")
`
`III. RELEVANT LAW
`
`A.
`
`Claim Construction
`
`"An infringement analysis entails two steps. The first step is determining the meaning and
`
`scope of the patent claims asserted to be infringed. The second step is comparing the properly
`
`construed claims to the device accused of infringing." Markman v. Westview Instruments, Inc., 52
`
`F.3d 967, 976 (Fed. Cir. 1995) (en banc) (internal citations omitted), aff'd, 517 U.S. 370 (1996).
`
`Claim construction resolves legal disputes between the parties regarding claim scope. See Eon
`
`Corp. IF Holdings v. Silver Spring Networks, 815 F.3d at 1314, 1319 (Fed. Cir. 2016).
`
`Evidence intrinsic to the application, prosecution, and issuance of a patent is the most
`
`significant source of the legally operative meaning of disputed claim language. See Bell Ad.
`
`Network Servs., Inc. v. Covad Commc'ns Grp., Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001). The
`
`intrinsic evidence includes the claims themselves, the specification, and the prosecution history.
`
`See Phillips v. AWH Corp, 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en bane); see also Markman, 52
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`F.3d at 979. As the Federal Circuit explained in Phillips, courts must analyze each of these
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`components to determine the "ordinary and customary meaning of a claim term" as understood by
`
`a person of ordinary skill in the art at the time of the invention. 415 F.3d at 1313.
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`"It is a 'bedrock principle' of patent law that 'the claims of a patent define the invention to
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`which the patentee is entitled the right to exclude.' Phillips, 415 F.3d at 1312 (quoting
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`Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir.
`
`2004)). "Quite apart from the written description and the prosecution history, the claims
`
`8
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`PUBLIC VERSION
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`themselves provide substantial guidance as to the meaning of particular claims terms." Id. at 1314;
`
`see Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) ("In
`
`construing claims, the analytical focus must begin and remain centered on the language of the
`
`claims themselves, for it is that language that the patentee chose to use to 'particularly point[ ] out
`
`and distinctly claim[ ] the subject matter which the patentee regards as his invention."). The
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`context in which a term is used in an asserted claim can be "highly instructive." Phillips, 415 F.3d
`
`at 1314. Additionally, other claims in the same patent, asserted or unasserted, may also provide
`
`guidance as to the meaning of a claim term. Id.
`
`The specification "is always highly relevant to the claim construction analysis. Usually, it
`
`is dispositive; it is the single best guide to the meaning of a disputed term." Id. at 1315 (quoting
`
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). "[T]he specification
`
`may reveal a special definition given to a claim term by the patentee that differs from the meaning
`
`it would otherwise possess. In such cases, the inventor's lexicography governs." Id. at 1316. "In
`
`other cases, the specification may reveal an intentional disclaimer, or disavowal, of claim scope
`
`by the inventor." Id. As a general rule, however, the particular examples or embodiments
`
`discussed in the specification are not to be read into the claims as limitations. Id. at 1323. In the
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`end, "[t]he construction that stays true to the claim language and most naturally aligns with the
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`patent's description of the invention will be . . . the correct construction." Id. at 1316 (quoting
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`RenishaTv PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)).
`
`When the intrinsic evidence does not establish the meaning of a claim, then extrinsic
`
`evidence (i.e., all evidence external to the patent and the prosecution history, including
`
`dictionaries, inventor testimony, expert testimony, and learned treatises) may be considered. Id.
`
`at 1317. Extrinsic evidence is generally viewed as less reliable than the patent itself and its
`
`9
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`PUBLIC VERSION
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`prosecution history in determining how to define claim terms. Id. "The court may receive extrinsic
`
`evidence to educate itself about the invention and the relevant technology, but the court may not
`
`use extrinsic evidence to arrive at a claim construction that is clearly at odds with the construction
`
`mandated by the intrinsic evidence." Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 977 (Fed.
`
`Cir. 1999).
`
`B.
`
`Infringement
`
`In a section 337 investigation, the complainant bears the burden of proving infringement
`
`of the asserted patent claims by a preponderance of the evidence. See Spansion, Inc. v. Intl 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 of 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). If any claim limitation is absent, there is
`
`no literal infringement as a matter of law." Bayer AG v. Elan Pharm. Research Corp., 212 F.3d
`
`1241, 1247 (Fed. Cir. 2000).
`
`2.
`
`Doctrine of Equivalents
`
`Where literal infringement is not found, infringement nevertheless can be found under the
`
`doctrine of equivalents. Determining infringement under the doctrine of equivalents "requires an
`
`intensely factual inquiry." Vehicular Tech. Corp. v. Titan Wheel Intl, Inc., 212 F.3d 1377, 1381 (Fed.
`
`Cir. 2000). The Supreme Court has described the essential inquiry of the doctrine of equivalents
`
`analysis in terms of whether the accused product or process contains elements identical or equivalent
`
`to each claimed element of the patented invention. Warner-Jenkinson Co., Inc. v. Hilton Davis Chem.
`
`10
`
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`

`

`PUBLIC VERSION
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`Co., 520 U.S. 17, 40 (1997). The Federal Circuit applies two articulations of the test for equivalents,
`
`as one phrasing may be more suitable for particular fact patterns or technologies.
`
`Under the insubstantial differences test, lain element in the accused device is equivalent
`
`to a claim limitation if the only differences between the two are insubstantial." Alternatively,
`
`under the function-way-result test, an element in the accused device is equivalent to a claim
`
`limitation if it "performs substantially the same function in substantially the same way to obtain
`
`substantially the same result." Voda v. Gordis Corp., 536 F.3d 1311, 1326 (Fed. Cir. 2008)
`
`(citations omitted). In Warner-Jenkinson, the Supreme Court noted that the doctrine of equivalents
`
`is subject to several limitations. Warner-Jenkinson, 520 U.S. at 29. The doctrine must be applied
`
`to individual elements of a claim and not to the invention as a whole. Id.
`
`C.
`
`Validity
`
`A patent is presumed valid. See 35 U.S.C. § 282; Microsoft Colp. v. 14i Ltd. P 'ship, 131
`
`S. Ct. 2238, 2242 (2011). A respondent who has raised patent invalidity as an affirmative defense
`
`has the burden of overcoming this presumption by clear and convincing evidence. See Microsoft,
`
`131 S. Ct. at 2242.
`
`1.
`
`Anticipation
`
`Under 35 U.S.C. § 102, a claim is anticipated, and therefore invalid, when "the four comers
`
`of a single, prior art document describe every element of the claimed invention, either expressly
`
`or inherently, such that a person of ordinary skill in 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 in possession of a person of ordinary skill in the field of the invention. See Helifix Ltd.
`
`v. Blok-Lok, Ltd., 208 F.3d 1339, 1346 (Fed. Cir. 2000).
`
`11
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`FUJIFILM, Exh. 2009, p. 18
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`

`PUBLIC VERSION
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`2.
`
`Obviousness
`
`Under 35 U.S.C. § 103, a patent may be found invalid as obvious if "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 in the art to which said subject matter pertains." 35 U.S.C. § 103(a). Because obviousness is
`
`determined at the time of invention, rather than the date of application or litigation, "Nile great
`
`challenge of the obviousness judgment is proceeding without any hint of hindsight." Star
`
`Scientific, Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1375 (Fed. Cir. 2011).
`
`When a patent is challenged as obvious, the critical inquiry in determining the differences
`
`between the claimed invention and the prior art is whether there is an apparent reason to combine
`
`the known elements in the fashion claimed by the patent at issue. See KSR Int? Co. v. Teleflex,
`
`Inc., 550 U.S. 398, 417-418 (2007). Thus, based on a combination of several prior art references,
`
`"the burden falls on the patent challenger to show by clear and convincing evidence that a person
`
`of ordinary skill in the art would have had reason to attempt to make the composition or device, or
`
`carry out the claimed process, and would have had a reasonable. expectation of success in doing
`
`so." PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1360 (Fed. Cir. 2007)
`
`(citations omitted).
`
`Obviousness is a determination of law based on underlying determinations of fact. Star
`
`Scientific, 655 F.3d at 1374. The factual determinations behind a finding of obviousness include:
`
`(1) the scope and content of the prior art, (2) the level and content of the prior art, (3) the differences
`
`between the claimed invention and the prior art, and (4) secondary considerations of 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 of non-obviousness include commercial success, long felt but unresolved need, and
`
`12
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`

`PUBLIC VERSION
`
`the failure of others. Id. When present, secondary considerations "give light to the circumstances
`
`surrounding the origin of the subject matter sought to be patented," but they are not dispositive on
`
`the issue of obviousness. Geo. M Martin Co. v. Alliance Mach. Sys. Intl, 618 F.3d 1294, 1304-
`
`06 (Fed. Cir. 2010). For evidence of secondary considerations to be given substantial weight in
`
`the obviousness determination, its proponent must establish a nexus between the evidence and the
`
`merits of the claimed invention. See W Union Co. v. MoneyGram Payment Sys. Inc., 626 F.3d
`
`1361, 1372-73 (Fed. Cir. 2010) (citing In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995)).
`
`3. Written Description and Enablement
`
`The hallmark of the written description requirement is the disclosure of the invention. See
`
`Arica Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The test
`
`for determining the sufficiency of the written description in a patent requires "an objective inquiry
`
`into the four corners of the specification from the perspective of a person of ordinary skill in the
`
`art. Based on that inquiry, the specification must describe an invention understandable to that
`
`skilled artisan and show that the inventor actually invented the