ITC Rules in Favor of LG, Samsung, and Toshiba and Invalidates Two Black Hills Media Patents

  • July 10, 2014

The International Trade Commission (ITC) ruled that LG, Samsung, and Toshiba did not infringe four Black Hills Media (BHM) patents and found two of the NPE’s patents to be invalid. In May 2013 BHM petitioned the ITC for an investigation into the importation of electronics that allegedly infringed six patents (6,618,593, 8,028,323, 8,045,952, 8,050,652, 8,214,873, 8,230,099). The ‘593 patent relates to identifying mobile telecommunications users and transmitting location-based data to them on the basis of user preference. The remaining patents generally relate to audio content management. BHM accused respondents LG, Panasonic, Samsung, Sharp, and Toshiba of importing and selling televisions, Blu-ray disc players, home theater systems, tablets, and mobile telephones that allegedly infringed the patents-in-suit. In its complaint, BHM sought permanent orders prohibiting the entry of the accused products, and the importation of those products, into the United States. The ITC agreed to initiate the investigation in June 2013. In the following month, Google filed a motion to intervene in the matter, which was granted by Judge David Shaw. Among the products identified by the more than 60 claim charts filed by BHM were Google products and services. Additionally, the NPE had served Google with subpoenas demanding document production and appearance at depositions in connection with the ITC investigation. By the time oral arguments were heard in February 2014, the investigation as to Sharp had been terminated; the company settled with BHM in September 2013. Last week, BHM and Panasonic filed a joint motion advising the ITC that they, too, had reached a settlement. In the final initial determination released on Monday, Judge Shaw said LG, Samsung, and Toshiba had not infringed the remaining four patents (BHM dropped the claims of the ‘323 and ‘099 patents over the course of the investigation). Judge Shaw rejected the respondents’ bids to invalidate the ‘952 and ‘652 patents, but found the ‘873 patent to be invalid for failure to satisfy the written description requirement and the ‘593 patent invalid in view of prior art. BHM filed its May 2013 ITC complaint the same month it launched a wave of patent infringement suits in Texas and Delaware district courts. Those cases involved the same six patents asserted in the ITC action, as well as three additional patents (6,108,686, 7,835,689, 7,917,082), and targeted the same companies. In September 2013, the NPE’s suit against Sharp was dismissed in light of settlement (1:13cv00804), and its cases against LG, Panasonic, and Toshiba were stayed pending resolution of the ITC proceedings (1:13cv00803, 1:13cv00806, 1:13cv00805). Samsung, which in May 2014 filed petitions for inter partes review of all nine of the patents-in-suit, also moved to stay BHM’s case pending a decision in the ITC matter; that request was granted in March 2014 (2:13cv00379). BHM has also asserted the ‘952, ‘652, ‘099, 686, and ‘873 patents, as well as two more patents (6,985,694, 8,458,356), in multiple suits against Logitech, Pioneer, Sonos, and Yamaha. Logitech settled with BHM in November 2013 (2:13cv06055), and litigation against Pioneer, Sonos, and Yamaha is currently stayed pending inter partes review of the ‘952, ‘652, ‘099, ‘873, and ‘356 patents (2:14cv00471, 2:14cv00486, 8:14cv00101).


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