S3 v. Apple

Court:

  • Case Number: Inv. No. 337-TA-724

“Certain Electronic Devices with Image Processing Systems, Components Thereof, and Associated Software”

Next Event:  Investigation terminated.  S3 Graphics appealed the ITC’s Opinion and Order to the Court of Appeals for the Federal Circuit, Case No. 2012-1127.  This appeal is dropped as part of a global Patent License and Settlement Agreement between HTC and Apple on November 20, 2012.

Summary:  S3 Graphics (“S3G”) asserted that various Apple products infringe on four patents, and requested a permanent exclusion order banning the importation and sale of the accused products.  ALJ Gildea found a violation of two of the asserted patents in his Initial Determination, and recommended an exclusion order against Apple.  The Commission overturned the Initial Determination, found no infringement, and terminated the investigation.  The Commission emphasized that the infringement identified by the ALJ is not in place at the time of importation, but rather included in the product after importation.  S3 Graphics filed an appeal of this decision with the Court of Appeals for the Federal Circuit, but has announced its intention to withdraw that appeal as part of a global Patent License and Settlement Agreement between HTC and Apple on November 20, 2012.

Timeline of Important Events:

  • May 28, 2010 – S3G files their initial Complaint. (Document #426439).
  • June 25, 2010 – The Commission opens an investigation and assigns ALJ E. James Gildea.
  • July 29, 2010 – Apple issues a public version of its answer to the Complaint, denying all alleged infringement. (Document #430280).
  • October 12, 2010 – S3G and Apple file claim construction briefs.
  • October 15, 2010 – The Commission staff files its claim construction brief. (Document #435714).
  • January 20, 2011 – S3G moves for summary determination that they satisfy the economic prong of the domestic industry requirement.  ALJ Gildea grants S3G’s motion on March 11, 2011, public version issued April 1, 2011. (Document #447618).
  • March 11, 2011 – S3G moves for partial termination of the investigation as to certain claims of patents 6,658,146; 6,775,417; and 7,043,087.
  • March 30, 2011 – Hearings begin.
  • April 28, 2011 – ALJ Gildea files the public final claim construction list. (Document #449721).
  • May 31, 2011 – ALJ Gildea grants S3G’s renewed motion for partial termination of the investigation as to certain claims of patents 6,658,146; 6,775,417; and 7,043,087. (Document #451499).
  • July 1, 2011 – ALJ Gildea issues notice of an Initial Determination, finding no violation by Apple of patents 6,775,417 or 7,043,087, but finding violations of patents 6,658,146 and 6,683,978.  The ALJ recommended a limited exclusion order and a cease and desist order to remedy the infringement and a 337 violation.  Full public Initial Determination issued August 2, 2011. (Document #455892).
  • September 2, 2011 – The Commission issues notice of a Determination to review the final Initial Determination.
  • September 19, 2011 – Following motions by non-party AMD to intervene on the basis that they are the owner of the patents at issue, Apple moves to terminate the investigation based on S3G’s lack of standing, or alternatively, to hold further evidentiary proceedings to determine the ownership of the asserted patents.  (Document #460149).
  • November 21, 2011 – The Commission issues notice of its Final Determination that Apple has not committed a 337 violation, and that the investigation is terminated. (Document #464985). Full Commission Opinion issued December 21, 2011. (Document #467105).  The Commission bases much of its decision on the fact that Apple imports its product and then creates the data that the ALJ determined to be infringing in the United States.  As such, when Apple imports the product, it is not actively infringing.
  • December 27, 2011 – S3 Graphics appeals the case to the Court of Appeals for the Federal Circuit, Case No. 2012-1127.
  • November 20, 2012 – Apple and HTC file a Joint Motion to Terminate Enforcement Proceeding without Prejudice Based on a Patent License and Settlement Agreement (Document 497598).  The Patent License and Settlement Agreement extend to HTC subsidiary S3 Graphics Co., which had asserted patents against Apple in both the European Union and the ITC (Investigations 337-TA-724 and 337-TA-813).