S N R D E N N in SNRDemonUSLLP1301 K Street, NW MarkL.HoggePartner Suite 600, East Tower 1nark.hogge@sm'denton.com Washington, DC 20005-3364 USA D +1 202 408 6443 T -1-1202 408 6400 F +1 202 408 6399 snrdcnton com ca|A|g“,_lO'7
December 21, 2012 DCCK? NJVEER BY HAND DELIVERY
HonorableLisaR. Barton q 17 Acting Secretary ______United States International Trade Commission Officeofthe 500 E Street s.w. -‘* Re: Certain Cases For Portable Electronic Devices Dear Secretary Barton: Enclosed for filing on behalf of Complainant Speculative Product Design, LLC (“Speck”) are the following documents in support of Speck’s request that the Commission commence an investigation under Section 337 of the Tariff Act of 1930, as amended. A request for confidential treatment of Confidential Exhibit 35 is included with this filing. Accordingly, Speck submits the following documents: 1. An original and twelve (12) copies of the verified Complaint pursuant to 19 C.F.R. §§ 201.6 and 210.8(a) (original and one (1) copy unbound, without tabs pursuant to 19 C.F.R. § 201.8(d)); 2. An original and eight (8) copies of the confidential version of the exhibits to the Complaint pursuant to 19 C.F.R. §§ 201.6(c) and 210.8(a) (original and one (1) copy unbound, without tabs pursuant to 19 C.F.R. § 201 .8(d)); 3. An original and eight (8) copies of the nonconfidential version of the exhibits to the Complaint pursuant to 19 C.F.R. §§ 2l0.4(f)(3)(i) and 21O.8(a) (original and one (1) copy unbound, without tabs pursuant to 19 C.F.R. § 201.8(d)); 4. Seven (7) additional copies of the Complaint and the accompanying nonconfidential exhibits for service upon the proposed respondents; and seven (7) additional copies of the confidential exhibits for service upon counsel for the respondents once appropriate subscriptions to a protective order have been filed, pursuant to 19 C.F.R. § 2l0.8(a); December 21, 2012 Page 2 . 5. One additional copy of the Complaint for service on the Embassy of China, pursuant to 19 C.F.R. § 2lO.8(a); 6. One additional copy of the Complaint for service on the Embassy of Taiwan, pursuant to l9 C.F.R. § 2l0.8(a); 7. One (1) certified copy of U.S. Patent No. 8,204,561 (“the ‘S61 patent”) is included as Exhibit 1 to the Complaint; 8. Copies of the certified assignment for the ‘S61patent are included as Exhibit 2 to the Complaint; 9. Four (4) copies (on CDs) containing Appendix A, which is the certified prosecution history for the ‘S61 patent; Sincerely, %/5%24%;” S N R D E N N SNRDentonUSLLP1301 K Street, NW ll:/lazjiir.Hogge Suite 600, East Tower [email protected] Washington, DC 200053364 USA D +1 202 408 6443 T +1 202 408 6400 F +1 Z02 403 6399 snrdentoncom December 21, 2012 BY HAND DELIVERY Honorable Lisa R. Barton Acting Secretary United States International Trade Commission 500 E Street, S.W. Washington, D.C. 20436 Re: Certain Cases For Portable Electronic Devices Dear Secretary Barton: Dear Secretary Abbott: In accordance with 19 C.F.R §§ 201.8(g) and 210.5, Speculative Product Design, LLC (“Speck”) request confidential treatment for the business information contained in Confidential Exhibits 4 and 25. The information for which confidential treatment is sought is proprietary commercial information not otherwise publicly available. Specifically, Confidential Exhibit 35 contains confidential information regarding Speck’s domestic industry. The information described above qualifies as confidential business infonnation pursuant to Rule 201.6(a) because: 1. It is not publicly available; 2. Unauthorized disclosure of such information could cause substantial harm to the competitive position of Speck; and 3. The disclosure of such information could impair the C0mmission’s ability to obtain information necessary to perform its statutory function. December 21, 2012 Page 2 Please contact me if you have any questions about this request, or if this request is not granted in full. Respectfully submitted, %/Mzyégg Mark L. Hogge Partner UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. In the Matter of Certain Cases For Portable Electronic Devices Investigation No. STATEMENT OF PUBLIC INTEREST In support of its complaint filed on December 21, 2012, titled “Certain Cases For Portable Electronic Devices”, Complainant Speculative Product Design, LLC (“Speck”) respectfully submits this separate statement of public interest, as required by Commission Rule 2l0.8(b). l9 CFR § 2l0.8(b). As discussed below, exclusion of the infringing portable electronic device cases identified in Speck’s Complaint would not have an adverse effect on public health and Welfare in the United States, competitive conditions in the United States economy, the production of like or directly competitive articles in the United States, or United States consumers. (1) Explanation of how the articles potentially subject to the orders are used in the United States. The articles potentially subject to exclusion and cease and desist orders are specialized cases for portable electronic devices, such as mobile phones and tablets. Proposed Respondents En Jinn Industrial Co. Ltd., Shengda Huanqiu Shijie, Global Digital Star Industry, Ltd., JWIN Electronics Corp., d/b/a iLuv, Jie Sheng Technology, Project Horizon, Inc. d/b/a/ InMotion Entertainment, Superior Communications, d/b/a/ PureGear (collectively referred to as “Resp0ndents”) either manufacture the accused products outside of the United States for importation and sale in the United States, provide them to third parties, including certain other Respondents, which sell and distribute them in the United States, or manufacture, import, and sell the accused products in the United States to the public. (2) Identification of any public health, safety, or welfare concerns in the United States relating to the requested remedial orders. The issuance of exclusion and cease and desist orders in this matter would have no adverse impact upon the public health, safety, or welfare of the United States. The accused articles are accessory items used as cases for portable electronic devices, such as mobile phone and tablets, and are not the type of products that have raised concerns by the Commission about public health, safety, or Welfare.See, e.g., Certain Toothbrushes and the Packaging Thereofi Inv. No. 337-TA-391, Commission Opinion on Remedy, the Public Interest, and Bonding, 1996 WL 1056217, at *5 (Oct. 15, 1996). In addition, the Commission has initiated an investigation into the infringing sales of similar products by other case manufacturers. See, e.g., Certain Protective Cases and Components Thereofi Inv. No. 337-TA-780. Respondents accused products represent a small portion of the case marketplace, and Speck and other competitors have the capacity to replace the volume of the infringing cases. The issuance of the requested orders would thus implicate no public health, safety, or wellness concerns, and the requested orders would serve the public interest of protecting United States intellectual property rights. See Certain Toothbrushes and the Packaging Thereof at *5. (3) Identification of like or directly competitive articles that complainant, its licensees,or third parties make that would replace the subject articles if they were to be excluded. Speck itself designs, manufactures and sells numerous types of cases and covers that are directly competitive to the proposed Respondents infringing cases. Moreover, Speck and the proposed Respondents are only some amongst numerous companies that produce cases and covers. -2 Even if the accused products in this matter are excluded, consumers and other purchasers of cases would still have a wealth of products to choose from that will continue to be made by Speck and other non-infringing competitors. (4) Indication whether the complainant, its licensees, and/or third parties have the capacity to replace the volume of articles subject to the requested remedial orders in a commercially reasonable time in the US. The infringing products of the proposed Respondents have minimal impact on the overall growing case marketplace in the United States. As set forth above, Speck and other manufacturers account for the majority of the cases sold in the United States. Speck and other legitimate case manufacturers and sellers have ample capacity to provide the United States market with cases sufficient to replace the infringing sales by the proposed Respondents that may become subject to an exclusion order in this matter. (5) Statement of how the requested remedial order would impact consumers The issuance of exclusion and cease and desist orders in this investigation would not adversely impact customers or materially limit customer choice. The accused products comprise only a small portion of the case market Speck and competitive manufacturers of non-infringing cases will continue to adequately service the U.S. market, without disruption, upon the exclusion of the infringing products from the U.S.. -3 Dated: December 21, 2012 Respectfully submitted, 5//I 4 / ('g,,¢_,_ Christian E. Samay SNR Denton US LLP 101 John F. Kennedy Pkwy Short Hills, New Jersey 07078 973-912-7180 Mark Hogge Shailendra Maheshwari SNR Denton US LLP 1301 K St., N.W. , Suite 600 Washington, D.C. 20005-3364 202-408-6400 UNITED STATES INTERNATIONAL TRADE COMMISSION Washington, D.C. I In the Matter of Certain Cases For Portable Electronic Devices Investigation No. COMPLAINT UNDER SECTION 337 OF THE TARIFF ACT OF 1930 COMPLAINANT Global Digital Star Industry, Ltd. Speculative Product Design, LLC 22F, Hong Ling Building 303 Bryant Street Hong Ling South Road Mountain View, California 94041 Futian District 650-681-8060 Shenzhen City 5181 12, China COUNSEL FOR COMPLAINANT JWIN Electronics Corp., dba iLuv 2 Harbor Park Drive Christian E. Samay Port Washington, New York 11050 SNR Denton US LLP 101 John F. Kennedy Pkwy Project Horizon, Inc. Short Hills, New Jersey 07078 dba lnMotion Entertainment 973-912-7180 4801 Executive Park Court Suite 100 Mark Hogge Jacksonville, FL 32216 Shailendra Maheshwari SNR Denton US LLP Superior Communications, Inc_, 1301 K St., N.W. , Suite 600 dba PureGear Washington, D.C. 20005-3364 5027 Irwindale Avenue, Suite 900 202-408-6400 Irwindale, California 91706 PROPOSED RESPONDENTS Jie Sheng Technology En Jinn Industrial Co. Ltd. No. 2, Lane 92, Chen Nan l St. No. 5 Wu Chan 3'“ Rd Tainan City 710, Taiwan Wu Ku Industrial Zone New Taipei City, Taiwan Shengda Huanqiu Shijie North Kao Ku Digital Building, lst Floor Futian District, Shenzhen Huaqianq C051, Shenzhen, China TABLE OF CONTENTS I. INTRODUCTION ...... II. COMPLAINANT ...... III. PROPOSED RESPONDENTS ...... IV. THE PATENT-IN-SUIT ...... A. The ‘561 Patent — One Piece Co-formed Exterior Hard Shell Case With An Elastomeric Liner for Mobile Electronic Devices ...... B. Licenses Under the Patent-in-Suit ...... C. Foreign Counterpart Patent and Applications ...... V. NON-TECHNICAL DESCRIPTION OF THE PATENTED TECHNOLOGY A. Background of Cases for Mobile Handheld Electronic Devices ...... B. Speck Products Embodying the Claims of the Patent-in-Suit ...... C. Respondents’ Products ...... VI. RELATED LITIGATION ...... VII. UNLAWFUL AND UNFAIR ACTS OF THE RESPONDENTS ...... A. Infringement of the ‘S61 Patent ...... VIII. UNFAIR IMPORTATION AND SALE ...... IX. THE DOMESTIC INDUSTRY ...... A. The Technical Prong ...... B. The Economic Prong...... X. HARMONIZED TARIFF SCHEDULE ITEM NOS...... XI. REQUEST FOR RELIEF ...... EXHIBIT LIST EXHIBITS DESCRIPTION 1 U.S. Patent No. 8,204,561 2 Assignment of the ‘56l Patent 3 Declaration conceming En Jinn/iLuv products 4 Declarations concerning Shengda Huanqiu Shijie products with photographs of the in fringing cases (Declaration contains confidential exhibits) 5 Declaration concerning Global Digital Star Industry Ltd. products with photographs of infringing cases 6 Declaration conceming Jie Sheng Technology products with photographs of infringing cases 7 Declaration conceming Project Horizon, Inc., d/b/a InMotion Entertainment products 8 Declaration concerning Superior Communications, Inc., d/b/a PureGear products with photographs of infringing cases. 9 En Jinn/iLuv - Claim Chart U.S. Patent 8,204,561. 10 Physical sample of En Jinn’s infringing case purchased in the U.S. ll Shengda - Claim Chart U.S. Patent 8,204,561. 12 Physical sample of Shengda’s infringing case purchased in the U.S. 13 Global Digital - Claim Chart U.S. Patent 8,204,561. 14 Physical sample of Global Digital’s infringing case purchased in the U.S. 15 Jie Sheng - Claim Chart U.S. Patent 8,204,561. 16 Physical sample of Jie Sheng’s infringing case purchased in the U.S. 17 InMotion - Claim Chart U.S. Patent 8,204,561 18 Physical sample of InMotion’s infringing case purchased in the U.S. 19 PureGear - Claim Chart U.S. Patent 8,204,561 (iPhone) 20 Physical sample of PureGear’s infringing case purchased in the U.S. 21 PureGear - Claim Chart U.S. Patent 8,204,561 (Xperia) 22 Physical sample of PureGear’s infringing case purchased in the U.S. 23 Claim Chart U.S. Patent 8,204,561 - Speck CandyShe1l 24 Physical Sample of the Speck Candyshell case 25 Declaration of [ ] Appendix A Certified copy of the Prosecution History, which is included in the certified File Wrapper for U.S. Patent 8,204,561 I. INTRODUCTION 1. This Complaint is filed, pursuant to Section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337, by Speculative Product Design, LLC, d/b/a (*) Speck® (“Com plainant” or “Speck”) based on unfair methods of competition and unfair acts in the unlawful importation into the United States, sale for importation into the United States, or sale within the United States after importation of certain one-piece protective cases for portable handheld elec tronic devices (collectively the “Accused Products”) by: En Jinn Industrial Co. Ltd., Shengda Huanqiu Shijie, Global Digital Star Industry, Ltd., JWIN Electronics Corp., d/b/a iLuv, Jie Sheng Technology, Project Horizon, Inc. d/b/a/ InMotion Entertaimnent, Superior Communications, d/b/a/ PureGear, (collectively "Respondents"). The Accused Products manufactured, imported andjor sold by Respondents directly infringe in the United States, one or more of claims 1-16 (the “Asserted Claims”) of U.S. Patent No. 8,204,561 ("the ‘S61 Patent" or “Asserted Patent” or “Patent-in-Suit”) (Exhibit 1). Speck is the owner by assignment of the ‘561 Patent (Exhibit 2). 2. Speck seeks, as relief, a permanent general exclusion order barring from entry into the United States infringing one-piece protective cases for portable handheld electronic de vices. A pennanent general exclusion order is appropriate in this matter for a number of rea sons. First, the infringement of the ‘561 Patent and the unlawful importation of infringing goods into the United States is widespread. Second, Speck has named numerous Respondents as part of its ongoing investigation but other infringers and unlawful actors remain difficult, if not im possible, to locate. Third, in certain cases, unincorporated entities are selling infringing products of foreign origin into the United States over the Internet. Fourth, infringing products are avail able one day and then unavailable the next as the suppliers move about, fictionalizing their iden tity to avoid detection and selling through other channels. Fifth, in other cases, foreign manufac 1 turers of infringing products are covertly operating to conceal their identity and/or the location of the manufacture and distribution network of the infringing products that are exported to the United States. Sixth, certain other foreign manufactures are offering infringing products in the United States upon placement of bulk or Original Equipment Manufacturer (“OEM”) orders. Seventh, the small size and portability of the products covered by the ‘S61 patent make it easy for foreign manufacturers and distributors to move product (both physically and through sales over the Internet from undesignated locations) and to thereby evade other enforcement efforts that might prevent infringing products from entering the United States. 3. Alternatively, Speck seeks a limited exclusion order barring from entry into the United States the infringing one-piece protective cases for portable handheld electronic devices which are manufactured by or on behalf of Respondents and are imported, offered for sale, sold, sold for importation, and/or sold after importation by Respondents. 4. Speck also seeks, as relief, permanent cease and desist orders against all domestic operations of Respondents prohibiting the importation, sale, offer for sale, advertising, packag ing, installation, and/or the use or solicitation of any sale of imported infringing products, includ ing, without limitation, through the Internet. II. COMPLAINANT 5. Headquartered in Mountain View, Califomia, Complainant Speck is a California limited liability company that creates protective cases for the mobile electronics accessory mar ket. Founded in 2001, Speck has become one of the world’s leading designers and manufactur ers of protective cases for portable handheld electronic devices. Today, Speck offers over 250 products that are sold worldwide in more than 75 countries. 6. Speck cases are thoughtfully designed to protect portable handheld electronic de vices, enhance interoperability between devices and cases, add functionality and improve the 2 overall experience for the user of portable handheld electronic devices. Speck achieves high quality product construction through, among other things, its use of 3D scanners, high-tech mod eling, and rigorous quality testing. 7. Speck cases are widely found covering the portable electronic products of leading manufacturers all around the world. Speck cases cover mobile and cellular telephones, tablets, laptops, e-readers, music players, portable computers, global position systems devices, portable media players, and personal digital assistants. Speck develops and manufactures cases for prod ucts such as the Apple iPhone®, Apple iPad®, Apple iPod®, Apple MacBook®, Notebook bags and sleeves, Smartphones including Blackberry®, HTC®, Sharp®, Sa1nsung®, and Motorola® models, TomTom® GPS navigation devices, portable hard drives such as WD My Passport Elite/Essential®, and the Kindle 3®. 8. Speck has received numerous industry awards and accolades along with vvide spread product and brand recognition for its innovative products and designs. Speck’s Candy Shell line of products, which represents a preferred embodiment of the Patent-in-Suit, is a par ticular standout in the protective case market. For example, in 2009, CandyShell for iPhone 3G was recognized by iLounge as the iPhone Case of the Year. It was also recognized as the Acces sory of the Year. In 2011, the CandyShell Flip for iPhone 4 received the iPhone case of the Year award from iLounge. Also in 2011, the CandyShell Wrap for iPad 2 was lauded by the Con sumer Electronics Association as a CES Innovations Design and Engineering Honoree. Con sumers have widely embraced the CandyShell, total sales of which have climbed year after year. 9. Speck is continually striving to develop new designs and useful case products and features to meet the needs of the ever-advancing consumer electronics industry. Speck has made, and continues to make, substantial investments in the research, development, design, en 3 gineering and manufacture of its protective cases in its facilities in the United States, including, without limitation, the inventions disclosed and claimed in the Patent-in-Suit. Speck relies on the expertise, creativity and knowledge of its skilled design, development and manufacturing personnel and utilizes patent, trademark and copyright protection to safeguard its competitive position. Speck is the owner of record of the Patent-in-Suit, which is the product of Speck’s ef forts to innovate and protect its intellectual property. III. PROPOSED RESPONDENTS 10. Upon information and belief, Respondents include manufacturers, distributors and retail entities that import, sell for importation and/or sell in the U.S. after importation certain cases for portable electronics that infringe one or more of the claims of the ‘S61 Patent. ll. Upon information and belief, En Jimi Industrial Co. Ltd. (“En Jinn”) is a Taiwan ese company with a business address at No. 5 Wu Chan 3“ Road, Wu Ku Industrial Zone, New Taipei City, Taiwan. En Jinn is one of Speck’s suppliers. Upon information and belief, En Jinn also makes in Taiwan, has others make in Taiwan, exports from Taiwan to the U.S., and/or im ports into the U.S. for sale, certain cases for handheld mobile electronics, which infringe the Pat ent-in-Suit and which En Jinn supplies to respondent JWIN Electronics Corp. d/b/a iLuv. The infringing cases manufactured by En Jinn are shipped into the U.S. Wherethey can be purchased at retail locations or online. Confirmation of importation and U.S. sale are attached as Exhibit 3. 12. Upon information and belief, Shengda Huanqiu Shijie (“Shengda”) is a Chinese company with a place of business located at Futian District, Shenzhen Huaqianq, North Kao-Ku Digital Building, ls‘Floor C051, Shenzhen, China. Upon infonnation and belief, Shengda makes in China, has others make in China, exports from China to the U.S., and/or imports into the U.S. for sale certain cases for handheld mobile electronics, which infringe the Patent-in-Suit 4 (“Shengda Cases”). Shengda admits on its cases and/or packaging that the Shengda Cases are manufactured in China. Confirmation of importation and U.S. sale are attached as Exhibit 4. 13. Upon infonnation and belief, Global Digital Star Industry Ltd. (“Global Digital”) is Chinese company with a place of business at 22F, Hong Ling Building, Hong Ling South Road, Futian District, Shenzhen City 518112, China. Upon infonnation and belief, Global Digi tal makes in Taiwan or China, has others make in Taiwan or China, exports from Taiwan or China to the U.S., and/or imports into the U.S. for sale certain cases for handheld mobile elec tronics that infringe the Patent-in-Suit (“Global Digital Cases”). Confirmation of importation and U.S. sale are attached as Exhibit 5. 14. Upon information and belief, Jie Sheng Technology (“Jie Sheng”) is a Hong Kong company with a business address at 3017, 3/F, Yuanwang Digital Mall, North of Huaqiang, Futian District, Shenzhen City, China. Upon infonnation and belief, Jie Sheng Tech nology makes in China, has others make in China, exports from China to the U.S., and/or im ports into the U.S. for sale certain cases for handheld mobile electronics, which infringe the Pat ent-in-Suit including, without limitation, the “Mage Shell” case and “OEM Candyshell Case for iPhone 4S/4 (collectively “Jie Sheng Cases”). Jie Sheng admits that the Jie Sheng Cases are made in and exported from China. Upon information and belief, certain cases for handheld mo bile electronics that infringe the Patent-in-Suit are imported into the United States, sold for im portation and/or sold within the United States after importation by Jie Sheng. Confirmation of importation and U.S. sale are attached as Exhibit 6. 15. Upon information and belief, JWTN Electronics Corp., d/b/a iLuv (“iLuv”) is a New York corporation with a place of business located at 2 Harbor Park Dr, Port Washington, New York 11050. Upon information and belief, iLuv makes in Taiwan, has others make in Tai 5 wan, exports from Taiwan to the U.S., and/or imports into the U.S. for sale certain cases for handheld mobile electronics, which infringe the Patent-in-Suit including, without limitation, iLuv “Regatta” cases for iPhone 4 in assorted colors (collectively “iLuv Regatta Cases”). iLuv admits on the iLuv Regatta Cases and packaging that the iLuv Regatta Cases are manufactured in Taiwan. iLuv Regatta Cases are available for purchase in the U.S. online at, for example, www.iluv.com, and in stores and kiosks in the U.S. Confirmation of importation and U.S. sale are attached as Exhibit 3. 16. Upon information and belief, Project Horizon, Inc., d/b/a InMotion Entertainment (“InMotion”) is a Florida corporation with a business address at 4801 Executive Park Court Suite 100, Jacksonville, Florida, 32216. Upon information and belief, certain cases for handheld mo bile electronics that infringe the Patent-in-Suit are imported into the U.S., sold for importation and/or sold by InMotion in airports across the United States after importation. For example the infringing iLuv Regatta cases made in Taiwan by En Jinn and imported into the U.S. are widely sold by InMotion after such importation. Confirmation of importation and U.S. sale are attached as Exhibits 3 & 7. 17. Upon information and belief, Superior Communications, Inc., d/b/a PureGear (“PureGear”) is a California corporation with a place of business located at 5027 lrwindale Ave nue, Suite 900, lrwindale, California 91706. Upon information and belief, PureGear makes in China, has others make in China, exports from China to the U.S., and/or imports into the U.S. for sale, certain cases for handheld mobile electronics, which infringe the Patent-in-Suit including, without limitation, PureGear “DualTek” for iPhone 4S/4 cases and PureGear “DualTeck” for Xperia Ion from Sony (collectively “PureGear Cases”). PureGear admits on its packaging that the PureGear Cases are manufactured in China. PureGear Cases are or have been available for 6 purchase in the U.S. online at, for example, WWW.pure-gear.com,and in brick and mortar stores located in the U.S. including, for example, the AT&T Casa Linda Retail Store in Dallas Texas. Confirmation of importation and U.S. sale are attached as Exhibit 8. IV. THE PATENT-IN-SUIT A. The ‘561 Patent — One Piece C0-formed Exterior Hard Shell Case With An Elastomeric Liner for Mobile Electronic Devices 18. The ‘S61 Patent, entitled "One Piece Co-Fonned Exterior Hard Shell Case With An Elastomeric Liner for Mobile Electronic Devices," Was issued to Mongan, et al., on June 19, 2012. A certified copy of the ‘S61 Patent is attached to the Complaint as Exhibit 1. The U.S. Application, Serial No. 13/282,363, Was filed on October 26, 2011. The 'S61 Patent has sixteen (16) claims, including independent Claim 1. Speck became the owner of the ‘S61 Patent by as signment attached to the Complaint as Exhibit 2. 19. Together with this Complaint, Speck has filed a copy of a certified copy and four (4) additional copies of the prosecution history of the ‘S61 Patent (Application Serial No. 13/282,363) as Appendix A. Speck has filed four (4) copies of each patent and technical refer ence identified in the prosecution history of the application leading to the issuance of the ‘S61 Patent, such copies are included in the copies of the File Wrapper attached hereto as Appendix A. B. Licenses Under the Patent-in-Suit 20. There are currently no licenses in the Patent-in-Suit granted to any third party. C. Foreign Counterpart Patent and Agplications 21. The foreign counterpart patents and/or applications that correspond to the Patent in-Suit are identified in the chart below along with the application number, filing date and status 7 on each. Other than below, there are no other foreign patents or foreign patent applications pending, filed, abandoned, withdrawn or rejected relating to the Patent-in-Suit. Country Application No. Filing Date Status US Response to Nonfinal Office 12/366,769 06 February 2009 Action Due 11/06/2012 Issued as U.S. Patent No. US 13/282363 26 October 201 1 8,204,561 on 06/19/2012 Examination Request Due Canada 2,751,645 28 January 2010 0 1/28/201 5 Awaiting first Examination China 201080006846.6 28 January 2010 Report. Awaiting first Examination Europe 1073 898 l .9 28 January 2010 Report. Awaiting grant of correspond Hong Kong 12l004l7.l 28 January 2010 ing EP Application Awaiting first Examination Mexico MX/a/2011/008253 28 January 2010 Report. Awaiting first Examination South Korea 10-2011-7020810 28 January 2010 Report. Awaiting Second Written Singapore 201 105666-0 28 January 2010 Opinion. V. NON-TECHNICAL DESCRIPTION OF THE PATENTED TECHNOLOGY A. Background of Cases for Mobile Handheld Electronic Devices 22. The Patent-in-Suit relates generally to the mobile electronics accessory market and more specifically to protective cases for handheld portable electronic devices such as mobile phones, laptops, tablets, personnel digital assistants and portable digital media players. The handheld portable electronics case market has burgeoned with the rapid advancements in and expansion of the mobile phone market. The use and manufacture of cell phones, for example, surged dramatically in the late 1990s and early 2000s. The use of cases to protect, add function ality and stylize these expensive electronic devices has concomitantly grown. Speck entered the protective case market in 2001 as the market for mobile electronics began to rise sharply. 8 23. Cases for handheld portable electronic devices are often categorized by the type of material used, including elastomeric or rubber skins, hard plastic shells, and cut and sew mate rials. While the traditional use of each of these materials alone carry certain attributes, there are also limitations. Elastomeric cases, while easily stretched over a device to conform to the shape of the device and provide shock resistance, have a high surface friction coefficient making this type of case difficult to place in and remove from pockets and other tight places. Hard plastic cases, while often scratch resistant, puncture proof, or more easily placed and removed from pockets, do not flex well and are often comprised of more than one piece to secure the handheld device. Cut and sew cases, while stylish to some consumers, generally provide less protection to the device, require a secondary piece to secure the device in place, and are often bulky or more costly to manufacture. The Patent-in-Suit claims a one-piece case that uniquely combines flexi ble and hard materials to both overcome the limitations of and to realize the attributes of the use of these materials. B. §peck Products Embodving the Claims of the Patent-in-Suit 24. The Patent-in-Suit claims a one-piece case comprised of a flexible imier layer co molded with a hard protective exterior shell. Smart cutaways in the exterior hard layer, often at the corners, are filled with the co-molded flexible inner layer material producing a protective one-piece case that is flexible enough to accept a handheld device and rigid enough to securely retain it. 25. The Patent-in-Suit is embodied by the Speck CandyShell. Through its use of co molded materials and a cutaway portion that is permanently filled with flexible material, the Speck CandyShell solves many of the problems and shortcomings found in earlier cases and as briefly described above. Sold as a “delightfully functional” one-piece case, the CandyShell is sleek, form-fitted, easy to handle, and resistant to shock or puncture. The CandyShell provides 9 exceptional protection to the electronic device without the added bulk or multi-layers used by other case manufacturers. In many Ways,Candyshell embodies the best of both ftmction and de sign. Representative pictures of some of the CandyShell products covered by the ‘56l Patent are featured below. ._.¢ Q &* C. Respondents’ Products 26. Upon information and belief, Respondents En Jinn, Shengda, Jie Sheng, iLuv, InMotion, Global Digital and PureGear make for import into the U.S. and/or have others make for import into the U.S., import into the U.S., and/or sell after importation into the U.S. protec tive cases that infringe the ‘56l Patent either literally or under the doctrine of equivalents. Each of the accused products copy the unique and innovative features of Speck’s cases. In particular, l0 (#1) 0 0....\ but without limitation, each of the accused products utilizes a co-molded one-piece flexible case with a hard exterior and a flexible inner layer along with a cutaway portion in the hard shell per manently filled with the flexible interior material. Representative pictures of some of the ac cused products are provided below. iLuv* VI. RELATED LITIGATION 27. Speck has filed a District Court Action in the Northern District of Califomia, San Francisco Division, on September 25, 2012 against Superior Communications, Inc., d/b/a Pure Gear, BodyGlove Intemational (adding Fellowes, Inc. as a defendant on December 14, 2012), and JVVINElectronics Corp. for infringement of Asserted Patent, willful infringement of the As serted Patent, monetary damages, and a pennanent injunction. See Civil Action Nos.: 12-cv 4997-DMR; 12-cv-4998-KAW; and 12-cv-4995-EDL, respectively. 28. By publication of a notice in the Federal Register on November 16, 2012, the U.S. International Trade Commission ordered an investigation conceming the Patent-in-Suit to deter mine whether there is a violation of subsection (a)(1)(B) of section 337 by against Anbess Elec ll tronics Co. Ltd, BodyGlove International , LLC, Fellowes, Inc., ROCON Digital Technology Corp., SW-Box.com, aka Cellphonezone Limited, Trait Technology (Shenzhen) Co., Limited and Hongkong Wexun Ltd. That investigation is presently pending before Administrative Law Judge Thomas B. Pender. VII. UNLAWFUL AND UNFAIR ACTS OF THE RESPONDENTS A. Infringement of the ‘S61Patent 29. Upon infonnation and belief, Respondents make for import into the U.S. and/or have others make for import into the U.S., import into the U.S., and/or sell after importation into the U.S. protective cases that directly infringe the ‘561 Patent either literally or under the doc trine of equivalents. 30. Upon information and belief, Respondent En Jinn makes for import into the U.S., has others make for import into the U.S., imports into the U.S., and/or sells after importation into the U.S. protective cases for mobile handheld electronic devices which infringe claims 1 through 16 of the ‘561 Patent. A claim chart that applies independent Claim 1 of the '56l patent to ex emplar infringing cases En Jim manufactures for Respondent iLuv is attached as Exhibit 9. The claim chart in Exhibit 9 demonstrates how En Jinn’s infringing cases meets every limitation of independent Claim 1. A physical example of such as case is attached as Exhibit 10. 31. Upon information and belief, Respondent Shengda makes for import into the U.S. and/or has others make for import into the U.S., imports into the U.S., and/or sells after importa tion into the U.S. protective cases which infringe claims 1 through 16 of the ‘561 Patent. A claim chart that applies independent Claim 1 of the ‘S61 patent to exemplar infringing Shengda Cases is attached as Exhibit 11. The claim chart in Exhibit 11 demonstrates how Shengda’s in fringing cases meets every limitation of independent Claim 1. A physical example of such a case is attached as Exhibit 12. 12 32. Upon information and belief, Respondent Global Digital makes for import into the U.S. and/or has others make for import into the U.S., imports into the U.S., and/or sells after importation into the U.S. protective cases which infringe claims 1 through 16 of the ‘S61 Patent. A claim chart that applies independent Claim 1 of the ‘S61 patent to exemplar infringing Global Digital Cases is attached as Exhibit 13. The claim chart in Exhibit 13 demonstrates how Global Digital’s infringing cases meets every limitation of independent Claim 1. A physical example of such a case is attached as Exhibit 14. 33. Upon infonnation and belief, Respondent Jie Sheng Technology makes for import into the U.S., has others make for import into the U.S., imports into the U.S., and/or sells after importation into the U.S. protective cases for mobile handheld electronic devices, including, but not limited to, “Mage Shell” cases, which infringe claims 1 through 16 of the ‘S61 Patent. A claim chart that applies independent Claim 1 of the ‘S61patent to exemplar infringing Jie Sheng Technology Cases is attached as Exhibit 15. The claim chart in Exhibit 1S demonstrates how Jie Sheng Technology ’s infringing cases meet every limitation of independent Claim 1. A physical example of such a case is attached as Exhibit 16. 13 34. Upon information and belief, Respondent iLuv makes for import into the U.S. and/or has others make for import into the U.S., imports into the U.S., and/or sells after importa tion into the U.S. protective cases for mobile handheld electronic devices, including, but not lim ited to, iLuv “Regatta” cases for iPhone 4, which infringe claims 1 through 16 of the ‘S61 Patent. A claim chart that applies independent Claim 1 of the ‘S61 patent to exemplar infringing iLuv Cases is attached as Exhibit 17. The claim chart in Exhibit 17 demonstrates how iLuv’s infring ing cases meets every limitation of independent Claim 1. A physical example of such as case is attached as Exhibit 18. 35. Upon information and belief, Respondent Inl\/lotion imports, offers for sale and/or sells after importation into the U.S. infringing protective cases made by other Respondents, in cluding, but not limited to, Respondent iLuv’s “Regatta” cases for iPhone 4/4S, Which, as set forth in the claim chart discussed above in Exhibit 17, infringe claims 1 through 16 of the ‘S61 Patent. A physical example of such a case purchased at an 1nMotion retail location is attached as Exhibit 18. 36. Upon information and belief, Respondent PureGear makes for import into the U.S. and/or has others make for import into the U.S., imports into the U.S., and/or sells after im portation into the U.S. protective cases, including, but not limited to, PureGear’s “DualTek” cases for Experia Ion from Sony and “Dualtek” cases for iPhone 4S/4, which infringe claims 1 through 16 of the ‘S61 Patent. A claim chart that applies independent Claim 1 of the ‘S61patent to exemplar infringing Pu.reGear Cases is attached as Exhibit 19 and 21. The claim charts in Ex hibits 19 and 21 demonstrate how PureGear’s infringing cases meets every limitation of inde pendent Claim 1. A physical example of each such a case is attached as Exhibits 20 and 22. 14 VIII. UNFAIR IMPORTATION AND SALE 37. Upon infonnation and belief, Respondents are and will continue importing, sell ing for importation and/or selling within the U.S. after importation infringing cases in violation of Section 337. Speck has obtained in the U.S. representative samples of Respondents’ products that infringe the ‘S61 Patent. All of the accused products are on sale in the United States and all bear indication that they are made in China or Taiwan. IX. THE DOMESTIC INDUSTRY A. The Technical Prong 38. Speck’s CandyShell products are covered by the Patent-in-Suit. 39. As noted in paragraphs 5-9, supra, the products Speck sells were designed and developed by Speck in the United States specifically for use in the industries described. A claim chart demonstrating how Speck's products practice at least one claim of the ‘S61 patent is at tached as Exhibit 23. A physical sample of Speck’s CandyShell case is attached hereto as Ex hibit 24. B. The Economic Prong ~ 40. Speck has made and is continuing to make substantial investments in its plant, equipment, labor and capital and substantial investments in the exploitation of the asserted patent and its products covered by the asserted patent in the United States. (See Exhibit 25.) (Confiden tial Declaration of ) X. HARMONIZED TARIFF SCHEDULE ITEM NOS. 41. All accused products are believed to fall within at least the following classifica tions of the harmonized tariff schedules of the United States: 3926.90.9980. These classifica tions are intended for illustrative purposes only and are not intended to restrict the scope or type of accused product. 15 XI. REQUEST FOR RELIEF WHEREFORE, Speck respectfully requests that the United States International Trade Commission: A. Institute an immediate investigation pursuant to Section 337(b)(1) of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337, into the violation by Respondents of Section 337 arising from the importation into the United States, and/or sale for importation and/or sale within the United States after importation, of Respondents’ Cases for Portable Electronic Devices that infringe and actively induce and/or contribute to the infringement of Claims 1-16 of the ‘S61 patent; B. Schedule and conduct a hearing pursuant to Section 337(c), for purposes of re ceiving evidence and hearing argument concerning Whetherthere has been a violation of Section 337, and following the hearing, to determine that there has been a violation of Section 337; C. Issue a general exclusion forbidding entry into the United States of all cases for Portable Electronic Devices that infringe Claims 1-16 of the ‘561 patent; Alternatively, issue a limited exclusion forbidding entry into the United States of all Cases for Portable Electronic Devices imported, sold for importation, or sold following importa tion by the Respondents that infringe Claims 1-16 of the ‘561 patent; D. Issue a pennanent cease and desist order, pursuant to Section 337(f), directing Re spondents to cease and desist from the importation, sale, offer for sale, advertising, packaging, or solicitation of any sale by Respondents of Cases for Portable Electronic Devices that infringe and actively induce and/or contribute to the infringement of Claims 1-16 of the ‘56l patent; and upon the facts complained of herein and as determined by the investigation. 16 Dated: December 21, 2012 Respectfully submitted, //4 A Christian E. Samay SNR Denton US LLP 101 John F. Kennedy Pkwy Suite 410 Short Hills, New Jersey 07078 Phone: (973) 912 - 7100 Facsimile: (973) 912-7199 [email protected] Mark Hogge Shailendra Maheshwari Qian Huang SNR Denton US LLP 1301 K St., N.W. , Suite 600 Washington, D.C. 20005-3364 Phone: 202.408.6400 Facsimile: 202.408.6399 marl<[email protected] shailendra.maheshwari@snrdentOILCOII1 [email protected] VERIFICATION OF COMPLAINT I, Jarret Weis, declare, in accordance with 19 CFR §§ 210.4 and 2l0.l2(a), under penalty of perjury that the following statements are true: 1. My title at Speck is Vice-President of Product Development and l am duly author ized to sign this complaint onbehalf of Complainant; 2 I have read the complaint and am aware of its contents; 3. The complaint is not being presented for any improper purpose, such as to harass or to cause unnecessary delay or needless increase in the cost of litigation; 4. To the best of my knowledge, information and belief founded upon reasonable in quiry, the claims and legal contentions of this complaint are warranted by existing law or a good faith argument for the extension, modification, or reversal of existing law; 5. The allegations and other factual contentions in the complaint have evidentiary support or are likely to have evidentiary support afler a reasonable opportunity for further inves tigation or discovery. I declare under penalty of perjury under the laws of the United States of America that the foregoing is true and correct. EX€CLl t C d O11 D ecem b €I‘ 21 , 2012 . 4 12/21 /1 2 arret Weis, Vice President, Product-Development Speculative Product Design, LLC