ITC Considers Modifying Exclusion Order for GPS Devices with Non-U.S. Servers

Limited Exclusion Order, 3 Cease and Desist Orders Issued in January 2009

In January 2009, the ITC issued a limited exclusion order which excluded from entry for consumption into the U.S., entry for consumption from a foreign-trade zone, or withdrawal from a warehouse for consumption, certain GPS devices and products containing the same that infringe certain patents and are manufactured abroad by or on behalf of, or imported by or on behalf of, SiRF Technology, Inc. of San Jose, California; Pharos Science & Applications, Inc. of Torrance, California; MiTAC International Corp. of Taiwan; Mio Technology Ltd., USA of Freemont, California; and E-TEN Information Systems Co., Ltd. of Taiwan or any of their affiliated companies, parents, subsidiaries, or other related business entities, or their successors or assigns, for the remaining term of the patents except under license of the patent owner as provided by law.

The ITC also issued cease and desist orders against SiRF, Mio and Pharos, which prohibit the importing, selling, marketing, advertising, distributing, marketing, offering for sale, transferring (except for exportation), or soliciting U.S. agents or distributors for the excluded GPS devices and products. The cease and desist order against SiRF also prohibits testing of the excluded GPS devices and products.

Respondents Request Exception for Servers Used Outside U.S.

The respondents filed a petition seeking modification of the limited exclusion and cease and desist orders in April 2010. The respondents have proposed to modify the orders to except GPS devices and products that practice "receiving" and "communicating" steps of U.S. Patent No. 6,704,651 or "receiving" and "transmitting" steps of U.S. Patent No. 651,000 through servers located outside of the U.S.

Proposed LEO exception. The respondents propose to insert a new paragraph 2 into the limited exclusion order (and renumbering existing Paragraph 2 and subsequent paragraphs) providing that:

“Notwithstanding any other provision of this Order, this Order does not apply to GPS devices and products containing same that either (a) practice any element of claims 1 and 2 of the ‘651 patent, e.g., the first ‘receiving’ and the second ‘communicating’ steps, through servers located outside of the U.S. or (b) practice any element of claims 1,2 and 5 of the '000 patent, e.g., the first ‘receiving’ and third ‘transmitting’ steps, through servers located outside of the U.S., and that are manufactured by or on behalf of, or imported by or on behalf of, SiRF, Pharos, MiTAC, Mio, and ETEN or any of their affiliated companies, parents, subsidiaries, or other related business entities, or their successors or assigns.”

Proposed LEO certification language. The respondents also propose to insert a new paragraph regarding certification as follows:

“Persons desiring to import GPS devices and products not covered by this Order under Paragraph 2, above, shall certify to [U.S. Customs and Border Protection] that the GPS devices and products containing same utilize servers located outside of the United States.”

Similar proposed CDO exception. The respondents propose to add the following language to paragraph I(G) of the cease and desist orders, "Definition of "Covered Products," to provide that:

“The term ‘covered product’ does not include GPS devices and products containing same that either (a) practice any element of claims 1 and 2 of the '651 patent, e.g., the first "receiving" and the second ‘communicating’ steps, through servers located outside of the United States or (b) practice any element of claims 1, 2 and 5 of the '000 patent, e.g., the first ‘receiving’ and third ‘transmitting’ steps, through servers located outside of the United States.”

Proposed CDO reporting. The respondents also propose to add a new Paragraph V, "Reporting," to provide that:

“Every six (6) months from the date of issuance of this Modified Cease and Desist Order, Respondent shall also report to the Commission the location of each of its servers that is used to accomplish either (a) the first ‘receiving’ and the second ‘communicating’ steps of claim 1 of the '651 patent, or (b) the first ‘receiving’ and third ‘transmitting’ steps of claim 1 of the '000 patent.”

(See ITT’s Online Archives or 01/27/09 news, 09012740, for BP summary of the limited exclusion order and cease and desist orders.)

ITC contact -- Daniel Valencia (202) 205-2310

(FR Pub 08/20/10, Inv. No. 337-TA-602)

The respondents’ corrected notice of petition for modification is available by emailing documents@brokerpower.com.