Elan Microelectronics Corporation v. Apple, Inc.

Filing 236

Declaration of Derek Walter IN SUPPORT OF APPLE INC'S OPPOSITION TO ELAN MICROELECTRONICS CORPORATION'S MOTION FOR PARTIAL SUMMARY JUDGMENT OF INFRINGEMENT OF U.S. PATENT 5,825,352] filed byApple, Inc.. (Attachments: # 1 Exhibit B, # 2 Exhibit C, # 3 Exhibit E, # 4 Exhibit F, # 5 Exhibit I, # 6 Exhibit J, # 7 Exhibit K)(Greenblatt, Nathan) (Filed on 6/2/2011)

Exhibit J

UNITEWSTATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN ELECTRONIC DEVICES WITH
MULTI-TOUCH ENABLED TOUCHPADS
AND TOUCHSCREENS

Inv. No. 337-TA-714

Order No. 35: Initial Determination Terminating The Investigation As To
Claims 4, 12, 14, 18 And 21 Of The `352 Patent
In an unopposed filing dated March 4, 2011, pursuant to Commission rule 210.21(a),
complainant Elan Microelectronics Corporation (Elan) moved for partial termination of this
investigation by withdrawing all allegations related to claims 4, 12, 14, 18 and 21 asserted U.S.
Patent No. 5,825,352 (the `352 patent).' (Motion Docket No. 714-40.) 2
Complainant, in support of the pending motion, argued that the requested partial termination
will simplify and streamline the factual and legal issues in thisinvestigation without causing
prejudice to respondent Apple Inc. (Apple); that partial termination as to claims 4, 12, 14, 18 and 21
of the `352 patent is likewise supported by the public interest and administrative economy; that
pursuant to Commission rule 210.21(a), Elan affirms that there are no agreements, written or oral,
express or implied between the parties concerning the subject matter of the investigation; and that
the pending motion is made for the sole purpose of expediting and making more efficient the
completion of this investigation.
Commission rule 210.21(a) permits a party to "move at any time prior to the issuance of
an initial determination ... for an order to terminate an investigation ... in part as to any or all

' EIan noted that it continues to assert, and Apple continues to infringe, claims 1, 2, 7 and
16 of the `352 patent.
2

Claim 14 was omitted from the first sentence of Motion No. 714-40, but is listed in the
title, elsewhere in the motion, and in the memorandum. The attorney advisor confirmed with
counsel for complainant via telephone that ci im 14 was intended to be withdrawn.

respondents, on the basis of withdrawal of ... certain allegations contained" in a complaint.
Motions for partial termination involving claims of asserted patents have been granted in prior
investigations. See,

, Certain Semiconductor Timing Signal Generator Devices, Components

Thereof, and Products Containing Same , Inv. No. 337-TA-465, Order No. 25, 2002 ITC LEXIS
359, at 4 (Jul. 9, 2002) (granting motion for partial termination with respect to certain asserted
claims), "[W]hile good cause need not be shown in support of a complainant's voluntary request
to withdraw patent claims from an investigation, it has been held that 'good cause exists
for a complainant to withdraw patent claims from an investigation where withdrawal
would serve to ensure resolution of the issues remaining in the investigation in an
orderly fashion," Certain Laminated Floor Panels , Inv. No. 337-TA-545, Order No. 30,
2006 ITC LEXIS 179, at 3 (Apr. 3, 2006) (citing Certain Tool Handles, Tool Holders, Tool Sets,

Components Therefore, Inv. No. 337-TA-483, Order No.7 (Apr. 22, 2003) (granting motion for
partial termination as to certain claims where complainant "determined not to proceed with the
investigation as to [certain claims], on the ground that a reduction in the number of patent claims
at issue will allow the parties to focus their attention on the 'primary' patent claims in a more
expeditious manner and will also reduce the time and resources required from all of the parties
and the administrative law judge to proceed with the investigation."), Certain

Zero-Mercury-Added Alkaline Batteries, Parts Thereof, and Products Containing Same , Inv. No.
337-TA-493, Order No. 96, 2004 ITC LEXIS 122, at *2 (Jan. 28, 2004) (granting motion for
partial termination of investigation as to certain asserted claims where no extraordinary
circumstances warranted denial of the motion).
The administrative law judge finds no extraordinary circumstances which would warrant
2

the denial of the pending motion. Moreover, he further finds that granting the pending motion
will streamline the investigation. Also he finds that partial termination of issues of the
investigation will not prejudice the private parties in this investigation nor the public interest.
Rather, terminating the investigation with respect to certain claims -relating to the '352 patent will
help ensure resolution of the remaining issues in this investigation in an orderly fashion, and
generally reduce the burden on the Commission and the parties.
Based on the forgoing Motion No. 714-40 is granted.
This initial determination, pursuant to Commission rule 210.42(c), is hereby CERTIFIED
to the Commission. Pursuant to Commission rule 210.42(h)(3), this initial determination shall
become the determination of the Commission within thirty (30) days after the date of service
hereof unless the Commission grants a petition for review of this initial determination pursuant
to Commission rule 210.43, or orders on its own motion a review of the initial determination or
certain issues therein pursuant to Commission rule 210.44.

Paul J. L c em
Chief Administrative Law Judge
Issued: March 7, 2011

3

CERTAIN ELECTRONIC DEVICES WITH MULTI-TOUCH
ENABLED TOUCHPADS AND TOUCHSCREENS

337-TA-714

PUBLIC CERTIFICATE OF SERVICE
I, James R. Holbein, hereby certify that the attached Order has been served by hand upon the
Commission Investigative Attorney, Kevin G. Baer, Esq., and the following parties as indicated,
on
MAR08 2W;
J

Jan# R. Holbein, Acting Secretary
U.S. International Trade Commission
500 E Street, SW
Washington, DC 20436
On Behalf of Complainant Elan Microelectronics
Corporation:
Paul F. Brinkman, Esq.
ALSTON & BIRD LLP
The Atlantic Building
950 F Street, NW
Washington, DC 20004
P-202-756-3404
F-202-756 -3333

()Via Hand Delivery
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() Other:

Respondent Apple Inc.:
Mark G. Davis, Esq_ .
WEIL, GOTSHAL & MANGES LLP
1300 Eye Street, NW, Suite 900
Washington, DC 20005
P-202-682-7000
F-202-857-0940

() is Hand Delivery
( Via Overnight Mail
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() Other:

PUBLIC MAILING LIST
Heather Hall
LEXIS-NEXIS
9443 Springboro Pike
Miamisburg, OH 45342

{) is Hand Delivery
(.4 Overnight Mail
{) Vii First Class Mail
{)
er:

Kenneth Clair
Thomson West
1100 Thirteen Street, NW, Suite 200
Washington, DC 20005

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() Other: