ITC Monthly Wrap-Up: February 2024

In February, the International Trade Commission (ITC) instituted three new Section 337 investigations: Certain Oil Vaporizing Devices, Components Thereof, and Products Containing the Same, 337-TA-1392; Certain Network Equipment Supporting NETCONF, 337-TA-1391; Certain Capacitive Discharge Ignition Systems, Components Thereof, and Products Containing the Same, 334-TA-1390.

This month’s ITC wrap-up focuses on the ability of a patentee to get a second chance to argue the validity of claims previously found indefinite at the ITC.

On February 5, administrative law judge (ALJ) Bhattacharyya’s final initial determination in Certain Video Processing Devices and Products Containing the Same found the asserted patent, U.S. 8,208,542, indefinite as containing means-plus-function claim language lacking sufficient corresponding structure under Williamson.¹ While respondent HP, Inc., raised the issue of indefiniteness during Markman, ALJ Bhattacharyya deferred the finding of indefiniteness until after the evidentiary hearing due to “the complexity of the underlying technology, and the expert opinion of record.”² The technology at issue related to coding and decoding moving picture data, and the asserted claims were directed to an integrated circuit comprising “a judging device to judge if a common reference picture is to be selected or not . . .” and “a selecting device to select, if it is judged by said judging device that a common reference picture is to be selected, one common reference picture.”³

Ultimately, ALJ Bhattacharyya found the terms in dispute — “judging device” and “selecting device” — invoke 35 U.S.C. § 112, ¶ 6 despite the lack of the word “means” because the word “device” operates as a generic nonce word that is used as a verbal construct like “means” to claim a particular function rather than to describe a sufficiently definite structure.⁴ In particular, ALJ Bhattacharyya determined that a person of skill in the art would not understand the claim language to refer to logic within a video encoder, as patentee VideoLabs, Inc., argued, because this argument essentially replaces one nonce word (“device”) for another (“logic”).⁵ Thus, she determined that both terms were subject to § 112, ¶ 6.

In finding the terms indefinite, ALJ Bhattacharyya determined that the record clearly and convincingly showed that the specification failed to provide adequate structure “clearly link[ed] or associate[d]” with the claimed judging functionality.⁶ It was undisputed that the specification made no mention of “judging device” or “judging,” and VideoLab’s argument that the “motion estimation unit” performed the claimed function was unpersuasive.⁷ The ALJ similarly determined that because the “judging device” term fails to connote sufficient structure, the “selecting device” term similarly fails to indicate sufficient structure to perform the claimed function.⁸

Notably, this was not the first time the terms in dispute — “judging device” and “selecting device” — were found indefinite by an ALJ. In another investigation brought by the same complainant and patentee, VideoLabs, ALJ Elliot determined that the term “judging device” invokes § 112, ¶ 6, and the specification lacked any disclosure of a structure that performed the “judging” function.⁹ ALJ Elliot deferred on finding the “selecting device” term indefinite in light of the relationship between the two terms in the claim that the “selecting” function is triggered by the “judging” function.¹⁰ ALJ Elliot concluded that the claims of the ’542 patent were invalid as indefinite.¹¹ Yet VideoLabs asserted the same claims a year later. 

VideoLabs moved to terminate the 1323 investigation as to the ’542 patent shortly after the Markman order issued.¹² As a result, the question of the invalidity of the asserted claims was not presented to the Commission for review. The Commission determined not to review the initial determination terminating the investigation with respect to the ’542 patent,¹³ allowing VideoLabs to get a second chance to argue the validity of its patent before a new ALJ and against a different respondent and experts. This scenario highlights that ALJ determinations are not binding on other ALJs, although they may well be persuasive.