FujiFilm Files 337 Complaint Regarding Certain Sony Magnetic Storage Tapes

ITC 337 Law Blog

On September 19, 2017, FujiFilm Corporation, Japan and FujiFilm Recording Media U.S.A., Inc., Bedford, MA (collectively, ‘FujiFilm’) filed a complaint (see part 1 and part 2) requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that Sony Corporation, Japan, Sony Storage Media Solutions Corporation, Japan, Sony Storage Media Manufacturing Corporation, Japan, Sony DADC US Inc., Terre Haute, IN, and Sony Latin America Inc., Miami, FL, unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain magnetic storage tapes and cartridges containing the same that infringe one or more claims of U.S. Patent Nos. 6,630,256 (the ‘256 patent), 6,835,451 (the ‘451 patent), 7,011,899 (the ‘899 patent), 6,462,905 (the ‘905 patent), and 6,783,094 (the ‘094 patent).

According to the complaint, the asserted patents generally relate to magnetic tape media for storage. In particular, the ‘256 patent relates to a magnetic recording medium with a total thickness equal to or less than 8 μm which has good electromagnetic characteristics and good repeat running durability. The ‘451 patent relates to a high-density magnetic recording medium with electromagnetic characteristics that are suited to reproduction in a magnetoresistive head. The ‘899 patent relates to a high-density magnetic recording medium with enhanced properties that do not deteriorate when the magnetic tape is rolled around the hub. The ‘905 patent relates to a magnetic tape cartridge in which the braking mechanism is prevented from being brought into contact with the reel gears when the braking mechanism has been disengaged by the releasing mechanism. Lastly, the ‘094 patent relates to a recording-media tape reel that prevents the magnetic tape that is wound thereon from coming into contact with the interior surface of the flanges.

In the complaint, the company states that Sony imports and sells products that infringe the asserted patents. The complaint specifically refers to Sony’s LTO Ultrium 4 Data Cartridge, LTO Ultrium 5 Data Cartridge, Ultrium 6 Data Cartridge, LTO-4 Library Pack, LTO-5 Library Pack, and LTO-6 Library Pack as infringing products.

Regarding domestic industry, FujiFilm states that its LTO Ultrium 4 Data Cartridge, LTO Ultrium 5 Data Cartridge, and LTO Ultrium 6 Data Cartridge practice the asserted patents. The company further states that it conducts significant activities in the U.S. relating to its domestic industry products, including manufacturing, quality assurance testing, packaging, and engineering. FujiFilm specifically refers to a facility in Massachusetts where it conducts activities relating to its domestic industry products.

As to related litigation, FujiFilm states that on September 15, 2017, it filed a complaint against Sony in the U.S. District Court for the District of Delaware alleging infringement of the asserted patents. FujiFilm also refers to the 337-TA-1012 investigation, which is currently pending before the Commission following ALJ David P. Shaw’s initial determination finding that certain Sony entities violated Section 337 through the infringement of other FujiFilm patents not asserted in the instant ITC complaint. See our July 8, 2016 post for more details on the 1,012 investigation. FujiFilm also refers to the 337-TA-1036 and 337-TA-1058 investigations, where certain Sony entities have asserted Sony patents against FujiFilm. Both of these investigations are ongoing. See our January 20, 2017 and May 26, 2017 posts for more details on the 1036 and 1058 investigations, respectively. FujiFilm also refers to numerous inter partes review (IPR) petitions that have either been filed by FujiFilm against Sony patents or filed by Sony against FujiFilm patents. FujiFilm further refers to various litigations in U.S. district courts related to the aforementioned ongoing ITC investigations, as well as various ongoing litigations between Sony and FujiFilm in Japan.

With respect to potential remedy, FujiFilm requests that the Commission issue a permanent limited exclusion order and permanent cease and desist orders directed at Sony and related entities.