In the Matter of
`
`UNITED STATES INTERNATIONAL TRADE COMMISSIO
`WASHINGTON, D.C. 20436
`Before the Honorable Delbert R. Terrill
`Administrative Law Judge
`1
`1
`CERTAIN NETWORK INTERFACE
`)
`CARDS AND ACCESS POINTS FOR
`)
`USE IN DIRECT SEQUENCE SPREAD )
`SPECTRUM WIRELESS LOCAL
`)
`AREA NETWORKS AND PRODUCTS )
`CONTAINING SAME
`
`Investigation No. 337-TA-455
`
`__--
`
`MEMORANDUM IN SUPPORT OF MOTION OF THE AGERE PARTIES TO
`TERMINATE INVESTIGATION AS TO
`CERTAIN CLAIMS OF THE PATENTS IN SUIT
`
`Intervenor Agere Systems Inc. (“Agere”) and Respondents Acer America Corporation,
`
`MELCO, Inc., Buffalo Technology (U.S.A.), Inc., TechWorks, Inc., Cabletron Systems, Inc., and
`
`Enterasys Networks, Inc. (“collectively the Agere Parties”), submit the following Memorandum
`
`in support of their Motion to Terminate Investigation as to Certain Claims of the Patents in Suit.
`
`Specifically, the Agere Parties move for termination of this investigation as to claims 7-8 of U.S.
`
`Patent No. 5,077,753, claims 15,20,22,24-26, 30, 33, 35-37,40,42 and 50 of U.S. Patent No.
`
`5,809,060, and claims 1-13 and 15-31 0fU.S. Patent No. 6,075,812.
`
`Complainant Proxim, Inc. (“Proxim”) has not submitted expert reports alleging
`
`infringement of these claims. Proxim has the burden of proof concerning infringement. While
`
`Proxim has indicated informally that it does not intend to pursue infringement of these claims in
`
`this investigation, it has neither withdrawn these claims nor moved to terminate the investigation
`
`as to these claims. Accordingly, in order to resolve the uncertainty created by Proxim’s
`
`
`
`UNITED STATES INTERNATIONAL TRADE COMMISSIO
`WASHINGTON, D.C. 20436
`Before the Honorable Delbert R. Terrill
`Administrative Law Judge
`1
`1
`CERTAIN NETWORK INTERFACE
`)
`CARDS AND ACCESS POINTS FOR
`)
`USE IN DIRECT SEQUENCE SPREAD )
`SPECTRUM WIRELESS LOCAL
`)
`AREA NETWORKS AND PRODUCTS )
`CONTAINING SAME
`
`Investigation No. 337-TA-455
`
`__--
`
`MEMORANDUM IN SUPPORT OF MOTION OF THE AGERE PARTIES TO
`TERMINATE INVESTIGATION AS TO
`CERTAIN CLAIMS OF THE PATENTS IN SUIT
`
`Intervenor Agere Systems Inc. (“Agere”) and Respondents Acer America Corporation,
`
`MELCO, Inc., Buffalo Technology (U.S.A.), Inc., TechWorks, Inc., Cabletron Systems, Inc., and
`
`Enterasys Networks, Inc. (“collectively the Agere Parties”), submit the following Memorandum
`
`in support of their Motion to Terminate Investigation as to Certain Claims of the Patents in Suit.
`
`Specifically, the Agere Parties move for termination of this investigation as to claims 7-8 of U.S.
`
`Patent No. 5,077,753, claims 15,20,22,24-26, 30, 33, 35-37,40,42 and 50 of U.S. Patent No.
`
`5,809,060, and claims 1-13 and 15-31 0fU.S. Patent No. 6,075,812.
`
`Complainant Proxim, Inc. (“Proxim”) has not submitted expert reports alleging
`
`infringement of these claims. Proxim has the burden of proof concerning infringement. While
`
`Proxim has indicated informally that it does not intend to pursue infringement of these claims in
`
`this investigation, it has neither withdrawn these claims nor moved to terminate the investigation
`
`as to these claims. Accordingly, in order to resolve the uncertainty created by Proxim’s
`
`
`
`positions, the Agere Parties seek an order terminating the investigation as to these claims of the
`
`patents in suit.
`
`FACTUAL - BACKGROUND
`
`Proxim submitted its Complaint in this investigation on March 9,2001, asserting
`
`infringement of claims 6-8 of the ‘753 patent, claims 13, 15, 20, 22,24-26, 30, 33, 35-37,40,42
`
`and 50 of the ‘060 patent, and claims 1-31 of the ‘812 patent. On April 3,2001, the Commission
`
`issued a Notice of Investigation to determine whether, with respect to each of the asserted claims
`
`of the patents in suit, there was an unfair act in the importation of articles into the United States
`
`under Section 337.
`
`On September 28, 2001, the Agere Parties, as well as Intervenor Intersil Corporation and
`
`its customer respondents (“the Intersil Parties”), submitted expert reports addressing each of the
`
`asserted claims in this investigation (49 claims in all). Proxim’s expert reports, however,
`
`addressed a total of only 3 out of the 49 total claims: claim 6 of the ‘753 patent, claim 13 of the
`
`‘060 patent, and claim 14 ofthe ‘812 patent. Proxim gave no previous notice or indication that it
`
`would submit expert reports covering only three of the claims at issue in this proceeding.
`
`Since submitting its expert reports on September 28,2001, Proxim has neither withdrawn
`
`the remaining claims at issue in this investigation, nor has it moved to terminate those claims.
`
`While Proxim indicated informally two weeks ago that it may file an “Amended Complaint”
`
`which would limit the claims asserted in this investigation, it has not filed an Amended
`
`Complaint, has not provided a date by which an Amended Complaint would be submitted, and
`
`has not provided the intervenors and respondents with copies of a proposed Amended Complaint.
`
`2
`
`
`
`ARGUMENT
`-
`
`The patent claims at issue in this investigation which are not the subject of Proxim’s
`
`expert reports should be terminated. Through Proxim’s Complaint and the Commission’s Notice
`
`of Investigation, this investigation has been instituted to determine, with respect to each of the
`
`claims asserted by Proxim in its Complaint, whether there exists an unfair act in the importation
`
`of articles into the United States by the named Respondents.
`
`Proxim has the burden of proof of demonstrating infringement in this investigation. The
`
`intervenors and respondents have expended tremendous resources in investigating Proxim’s
`
`allegations as to all 49 asserted claims of the three patents in suit. Proxim, apparently for tactical
`
`reasons, has decided to assert only 3 out of the 49 claims at the hearing in this investigation.
`
`Indeed, it is inconceivable, given the complex technology involved in this investigation, that
`
`Proxim could proceed as to the other 46 claims without expert testimony to support its positions.
`
`While it appears that Proxim is planning to assert only 3 claims at the hearing in this
`
`matter, it has not definitively abandoned tlie other 46 claims. The appropriate procedure is for
`
`Proxim to withdraw or move to terminate tlie investigation as to the other 46 claims pursuant to
`
`Commision Rule 210.21(a), since those claims continue to be at issue until there is a
`
`determination by the Commission. Yet the Agere Parties, the other intervenor and respondents
`
`to this investigation, and the Commission are left in limbo as to whether Proxim may decide later
`
`on to assert these claims. Proxim should not be permitted to leave the Commission and the
`
`parties to this investigation guessing about whether or not it might, notwithstanding the lack of
`
`any support from its experts, decide to assert additional claims at the hearing in this
`
`investigation.
`
`3
`
`
`
`Proxim has already forced the parties to expend enormous resources in defending against
`
`49 claims in this investigation. The intervenors and respondents were required to submit expert
`
`reports addressing all 49 claims. Had the parties had any indication that Proxim would assert
`
`only 3 claims, they could have saved considerable time and expense in conducting discovery and
`
`preparing their expert reports. Since Proxjm has decided voluntarily to pursue certain claims and
`
`abandon others, the remaining 46 claims should be terminated from this investigation.
`
`Finally, while which Proxim has indicated that it may file an Amended Complaint
`
`limiting the claims it is now asserting, this is not an appropriate vehicle for Proxim to withdraw
`
`or terminate the remaining claims in this proceeding. The claims are at issue pursuant to the
`
`Commission's Notice of Investigation and must be withdrawn or terminated. The Agere Parties
`
`have no idea what type of Amended Complaint Proxim contemplates and it has not provided a
`
`copy of such a document to the parties for their review. Proxim should not be permitted to use
`
`an Amended Complaint as a vehicle to somehow expand the scope of the investigation. If the
`
`only purpose of the Amended Complaint would be to withdraw or terminate the claims which
`
`Proxim has decided not to pursue, then withdrawal or termination of the investigation as to those
`
`claims, not amendment of the Complaint, is the proper procedure under the Commission's Rules.
`
`4
`
`
`
`- CONCLUSION
`
`For the reasons set forth above, the Agere Parties respectfully request that their motion to
`
`terminate certain claims of the patents in suit in this investigation be granted.
`
`Respectfully submitted,
`
`George F. Pappas
`Gary M. Hnath
`Paul F. Daebeler
`Eric S. Namrow
`Justin E. Pierce
`VENABLE, BAETJER, HOWARD &
`CIVILETTI, LLP
`1201 New York Avenue, N.W.
`Suite 1000
`Washington, D.C. 20005-3917
`(202) 962-4800
`
`5
`
`
`
`CERTIFICATE OF SERVICE
`6
`I HEREBY CERTIFY that on this 1 "day of October 200 1, copies of the Motion of
`
`the Agere Parties to Terminate Investigation as to Certain Claims of the Patents in Suit,
`
`Memorandum in Support, and Proposed Order, were served as follows:
`
`BY HAND:
`
`The Honorable Donna R. Koehnke
`Secretary
`U.S. INTERNATIONAL TRADE COMMISSION
`500 E. Street, S.W.
`Washington, D.C. 20436
`
`The Honorable Delbert R. Terrill
`Administrative Law Judge
`U.S. INTERNATIONAL TRADE COMMISSION
`500 E. Street, S.W.
`Washington, D.C. 20436
`
`Commission Investigative Attorney:
`
`(original plus six copies)
`
`(two copies)
`
`Benjamin D.M. Wood, Esquire
`Office of Unfair Import Investigations
`US. INTERNATIONAL TRADE COMMISSION
`Room 4011
`500 E. Street, S.W.
`Washington, D.C. 20436
`
`Counsel for Complainant Proxim, Incorporated:
`
`Cecilia H. Gonzalez, Esquire
`Mark Whitaker, Esquire
`Howrey Simon Arnold & White, L.L.P.
`1299 Pennsylvania Avenue, N.W.
`Washington, D.C. 20004
`
`Counsel for Complainant Proxim, Incorporated:
`
`Frederick G. Michaud, Jr., Esquire
`Alan L. Whitehurst, Esquire
`Burns Doane Swecker & Mathis, L.L.P.
`1737 King Street, Suite 500
`Alexandria, Virginia 223 14
`
`
`
`Counsel for Intervenor Intersil Corporation and Respondents D-Link Systems, Inc.,
`D-Link Corporation, AmbiCom, Inc., the Linksys Group, Inc. and
`Wistron Neweb Corporation:
`
`Donald R. Dunner, Esquire
`Geoffrey Mason, Esquire
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, L.L.P.
`1300 I Street, N.W.
`Washington, D.C. 20005-33 15
`
`BY OVERNIGHT MAIL
`
`Counsel for Respondent Addtron Technology Co. Ltd.:
`
`Richard C. Vasquez, Esquire
`1676 North California Boulevard
`Suite 200
`Walnut Creek, CA 94596
`
`Counsel for Respondents The Linksys Group, Inc.
`and AmbiCom, Inc.:
`
`Jeffrey C. P. Wang
`Law Offices of Jeffrey C.P. Wang
`1201 Dove Street
`Suite 485
`Newport Beach, California 92660
`
`Gary M. Hnath
`
`2
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