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` Troutman Pepper Hamilton Sanders LLP
`High Street Tower, 125 High Street, 19th Floor
`Boston, MA 02110-2736
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`troutman.com
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`Gwendolyn Tawresey
`D 617.204.5132
`F 866.851.6572
`gwendolyn.tawresey@troutman.com
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`February 3, 2021
`VIA EDIS
`
`The Honorable Lisa R. Barton
`Secretary to the Commission
`U.S. International Trade Commission
`500 E Street, S.W.
`Washington, D.C. 20436
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`Re: Certain Integrated Circuits and Products Containing the Same, No. 337-3515
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`Dear Secretary Barton:
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`The Commission’s February 1, 2021 letter identified Tela’s request for temporary relief as a
`reason that the Commission requires additional time to make its institution decision, citing 19
`C.F.R. § 210.58. While Tela believes that it is entitled to temporary relief, to ensure efficient
`administration of the 3515 Investigation, Tela hereby withdraws its motion for temporary relief.1
`See, e.g., Certain Pickup Truck Folding Bed Cover Systems and Components Thereof, Inv. No.
`337-TA-1143, Comm’n Notice (Apr. 8, 2019) (determining not to review initial determination
`denying motion for temporary relief as moot where complainants withdrew motion for temporary
`relief by letter).
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`Accordingly, Tela hereby deletes the following portions of its Complaint as updated on
`December 30, 2020: Paragraph 6 (noting contemporaneous motion for temporary relief);
`Paragraph 160.B and 160.C (requesting temporary exclusion and cease and desist orders).
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`In its January 25 and February 1st, 2021 letters, the Commission further identified the potential
`effect of a district court summary judgment order as a reason that the Commission requires
`additional time to make its institution decision, citing 19 C.F.R. §§ 210.10(a)(1), (2). The district
`court order2 issued after Tela filed its Complaint in this matter. Accordingly, pursuant to 19
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`1 Tela will serve notices of withdrawal of its motion for temporary relief on the proposed respondents. Cf.
`19 C.F.R. § 210.10(a)(5)(ii). Tela reserves the right to request an expedited target date for the reasons
`detailed in its motion for temporary relief.
`2 See Intel Corp. v. Tela Innovations, Inc., No. 3:18-cv-02848-WHO, ECF No. 316 (N.D. Cal. Dec. 22,
`2020). Tela has since moved for reconsideration and interlocutory appeal of the order. See id., ECF
`Nos. 323, 325 (Jan. 8, 2021).
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`

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`The Honorable Lisa R. Barton
`February 3, 2021
`Page 2
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`C.F.R. § 210.14(a), Tela provides the following supplemental information to its Complaint to aid
`the Commission’s decision.3
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`Tela adds the following paragraphs beginning after Paragraph 6:
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`7. On September 23, 2020, the Commission affirmed an initial
`determination finding that the proposed respondents infringe the
`asserted claims of Tela’s ’523 Patent, including that at least one
`claim element was met under the doctrine of equivalents. See Ex.
`17 (Certain Integrated Circuits, Comm’n Notice (EDIS Doc.
`720329) at 3 (Sept. 23, 2020) (determining not to review Initial
`Determination’s finding of infringement and validity)). Tela then
`filed its Complaint in this matter on December 18, 2020.
`Subsequently, on December 22, 2020, the District Court for the
`Northern District of California found on summary judgment that
`proposed respondent Intel does not literally infringe the asserted
`claims of the ’523 Patent under 35 U.S.C. § 271(a). The district
`court’s order is not final, and Tela has moved for reconsideration
`and interlocutory appeal of the order.
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`8. Congress made clear that ITC investigations should take
`precedence over district court proceedings by providing
`respondents the ability to automatically stay district court actions
`during the pendency of the ITC investigation. See 28 U.S.C. §
`1659(a). Intel declined to take this option, and instead litigated
`both actions simultaneously. As a result, the district court’s
`noninfringement finding is markedly different from the
`Commission’s infringement finding. First, the district court issued
`its own claim construction order after the ALJ issued his, and
`adopted different constructions of material terms. Intel’s motion
`for summary judgment in the district court relied on at least one of
`these different constructions. Second, the district court’s order
`excluded certain evidence under Daubert that the Commission
`relied on and expressly stated that the doctrine of equivalents was
`not at issue. Third, the district court’s order adopted new
`constructions of two terms (“diffusion region” and the “gate contact
`terms”) that differ from both its prior claim construction order and
`from the claim constructions in the 1148 Investigation.
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`9. Because there is no prohibition on the Commission reaching
`different claim constructions or infringement determinations than a
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`3 Because Tela’s supplemental information does not add a respondent or assert an additional unfair act,
`it retains its initial filing date for purposes of calculating time. See 19 C.F.R. § 210.14(a).
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`

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`The Honorable Lisa R. Barton
`February 3, 2021
`Page 3
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`district court, the Commission’s determination in the 1148
`Investigation should take precedence over the district court’s later-
`issued order for purposes of this matter, particularly given the
`differing evidence and theories presented.
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`10. The district court’s order has no preclusive effect here. Claim
`preclusion (res judicata) does not apply at least because ITC
`investigations of unfair trade practice and district court patent
`actions do not involve the same cause of action; and issue
`preclusion (collateral estoppel) does not apply at least because,
`as detailed above, the district court did not decide whether Intel
`infringes under either the Commission’s claim constructions or the
`doctrine of equivalents.
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`A copy of the updated Complaint is attached to this letter.
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`Please contact me if you have any questions or concerns, or if you require additional
`information.
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`Enclosure
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`Respectfully submitted,
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`____________________
`Gwendolyn Tawresey
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`Counsel for Complainant
`Tela Innovations, Inc.
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`

`

`
`United States International Trade Commission
`Investigation No. 337-3515
`Certain Integrated Circuits and Products Containing the Same
`CERTIFICATE OF SERVICE
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`
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`I, Ella O’Leary, hereby certify that on February 3, 2021 true and correct copies of the foregoing
`document were served upon the following parties as indicated below:
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`☒Via Electronic Filing
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`☒Via Electronic Filing
`☒Via Electronic Mail
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`☒Via Electronic Mail
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`_/s/ Ella O’Leary
`Ella O’Leary
`IP Litigation Paralegal
`Troutman Pepper Hamilton Sanders LLP
`19th Floor, High Street Tower
`125 High Street
`Boston, MA 02110
`617.443.3773
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`
`
`The Honorable Lisa R. Barton
`Secretary to the Commission
`U.S. International Trade Commission
`500 E Street, S.W.
`Washington, D.C. 20436
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`Margaret D. Macdonald, Director
`Office of Unfair Import Investigations
`U.S. International Trade Commission
`500 E Street, S.W., Room 112
`Washington, DC 20436
`Margaret.Macdonald@usitc.gov
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`
`Todd M. Friedman
`Kirkland & Ellis LLP
`601 Lexington Avenue
`New York, New York 10022
`Todd.Friedman@Kirkland.com
`Intel-Tela@Kirkland.com
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`Counsel for Proposed Respondents Acer, Inc.,
`Acer America Corp., ASUSTek Computer
`Inc., ASUS Computer International, Intel
`Corp., Lenovo Group Ltd., Lenovo (United
`States) Inc., Micro-Star International Co.,
`Ltd. and MSI Computer Corp.
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