DEWEY BALLANTINE LLP -...

D E W E Y B A L L A N T I N E L L P

July 2, 2004

V IA HAND DELIVERY

The Honorable Marilyn R. Abbott Secretary

ATTACHMENTS CONTAIN CONFIDENTIAL INFORMATION

/'

U.S. International Trade Commission I i

500 E Street, SW Washington, D.C. 20436

Re: In the Matter of Certain Personal Computers, Monitors and Components Thereof

Dear Secretary Abbott:

Enclosed for filing on behalf of the Complainant Gateway, Inc. (hereafter "Gateway" or "Complainant") are the following documents in support of Gateway's request that the US. International Trade Commission commence an investigation pursuant to Section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 5 1337. A request for confidential treatnient ofExhibits 31 and 32 is included with this filing.

Gateway submits the following documents for filing:

1. unbound and unpunched); [19 C.F.R. 5 210.8(a), as modified by ITC Notice; 19 C.F.R. 6 201.8(d)];

2. nonconfidential versions of Exhibits 31 and 32 (original and one ( I ) copy unbound and unpunched) [19 C.F.R. 5 210.8(a), as modified by ITC Notice; 19 C.F.R. $ 201.8(d)];

An original and twelve (12) copies of the verified Complaint (original and one (1) copy

An original and six (6) copies of accompanying Exhibits 1 to 32, including

N E W Y O R K WASHIN1;TON. U . C . LOS ,4NCF.I.RS L'.\LO ALTO HOIISTON AUSTIN LONIJON W4RS,\W II I IOPEST PIIACIIII l.'RANKFlIRT

Honorable Marilyn R. Abbott July 2,2004

3. confidential treatment of the declarations in Exhibits 31 and 32 and a certification of counsel concerning the confidentiality of the documents 119 C.F.R. 5 201.61;

4. Business Information” containing an original and six (6) copies of Exhibit 31 and an original and six (6) copies ofExhibit 32; [ I9 C.F.R. 201.6(c); 19 C.F.R. 9: 210.8(a), as modified by ITC Notice; 19 C.F.R. 5 201.8(d)];

5. respondent, Hewlett-Packard Company [19 C.F.R. 5 21 0.8(a), as modified by ITC Notice; 19 C.F.R. 5 201.8(d)];

6.

An envelope designated “Request for Confidential Treatment” containing a request for

An envelope designated as “Exhibit 31 and Exhibit 32” and marked “Confidential

One (1) additional copy of the Complaint and the Exhibits for service upon the proposed

Official, certified copies of United States Patents Nos

5,881,318 (the ’318 patent); 5,192,999 (the ’999 patent); and 6,326,996 (the ’996 patent)

are attached as Appendix A to the original verified Complaint. Legible copies of each patent are included in each set of exhibits to the Complaint (Exhibits 7 , 9 and 11) [19 C.F.R 5 210.12(a)(9)(i)];

7. the ‘318 patent, designated as Appendix B. [19 C.F.R. 5 210.12(~)(2)];

8. mentioned in the prosecution history files for the ‘3 18 patent. [ 19 C.F.R. 4 2 10.12(~)(3)];

9. the ‘999 patent, designated as Appendix D. [ I9 C.F.R. 5 210.12(~)(2)];

10. mentioned i n the prosecution history files for thc ‘999 patent. [ I9 C.F.R. 9: 210.12(~)(3)];

11, the ‘996 patent, designated as Appendix F;

12. mentioned in the prosecution history files for the ‘996 patent. [ I 9 C.F.R. § 210.12(~)(3)];

13.

Original and three (3) copies of the certified version of the prosecution history files for

Four (4) copies of Appendix C, each containing a copy set of all reference materials


Four (4) copies of Appendix E, each containing a copy set of all reference materials


Four (4) copies of Appendix C, each containing a copy set of all reference materials

Official, certified copies of thc assignrncnts of Unitcd States Patent Nos.

5,881,318 (the ’318 patent); 5,192,999 (the ’999 patent); and 6,326,996 (the ’996 patent)

Honorable Marilyn R. Abbott July 2,2004

are attached as Appendix I to the original verified complaint. Legible copies of each assignment for each patent are included in each set of exhibits to the Complaint (Exhibits 8, 10 and 12) [19 C.F.R 5 210,12(a)(9)(ii)];

14. at this time. It will be submitted promptly once we have received authorization by the appropriate party.

Thank you for your attention to this matter.

Appendix H is a license agreement [ I9 C.F.R 9: 210,12(a)(9)(iii)], which is not included

Respectfully submitted,

Wayne Harding Dean M. Munyon DEWEY BALLANTINE LLP 401 Congress Avenue Austin, Texas 78701 Telephone: (512) 226-0300

Stephen J. Rosenman Steven A. Bowers DEWEY BALLANTINE LLP 1775 Pennsylvania Avenue, NW Washington, DC 20006 Telephone: (202) 862-1000

Counsel for Complainant Gateway, Inc.

Enclosures

UNITED STATES INTERNATIONAL TRADE COMMISSION WASHINGTON, D.C.

In thc Matter of:

Certain Personal Computers, Monitors, And Components Thereof

Appendix Letter

A

B

C

D

E

F

G

H

I

Investigation No. 337-TA--

APPENDICES TO COMPLAINT

Appendix Title

Certified copies of each asserted patent

File history of US. Patcnt No. 5,881,318

References cited in prosecution of U.S. Patent No. 5,881,318

File history of U.S. Patent No. 5,192,999


File history of US. Patent No. 6,326,996


License Agreement (Intentionally withheld)

Certified copics of assignments for cach asserted patent

LINJTED STATES INTERNATIONAL TRADE COMMlSSlON WASHINGTON, D.C.

In the Matter of:

Certain Personal Computers, Monitors, And Components Thereof

Exhibit No.

1

2

3

4

5

6

7

8

9

10

11

12

lnvestigation No. 337-TA--

EXHIBITS TO COMPLAINT

Exhibit Title

Gateway’s 2003 Annual Report

Gateway’s corporate pages from www,gatcway.com

Excerpt from Hewlett-Packard’s website regarding company and products, www.hp,.com

Exccrpt from Hewlett-Packard’s website regarding sales, www.hpshoppine.con1

Excerpt from Compaq’s website regarding available products, www.conipaq .coin

Excerpt from Compaq’s transfer site, www.hpsl1oming.com

US. Patent No. 5,881,318

Assignments for U.S. Patcnt No. 5,881,318

US. Patent No. 5,192,999

Assignments for U S . Patent No. 5,192,999

U.S. Patent No. 6,326,996

Assignments for U.S. Patent No. 6,326,996

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

29

30

Photographs of HP Pavilion zv5000 series notebook computer and related information from Hewlett-Packard website

Photographs of HP m470n media center computer and related information from Hewlctt-Packard website

Photographs o f HP Pavilion mx704 monitor and related information from Hewlett-Packard website

Claim chart: U.S. Patent No. 5,881,318 compared to HP Pavilion zv5000 series notebook computer

Claim chart: US. Patent No. 5,192,999 compared to HP m470n media center computer

Claim chart: U.S. Patent No. 6,326,996 compared to HP Pavilion mx704 monitor

Sales receipt for HP Pavilion zv5000 series notebook computer

Product labels for HP Pavilion zv5000 series notebook computer

Sales receipt for HP m470n media center computer

Product labels for HP m470n media center computer

Sales receipt for HP Pavilion mx704 monitor

Product labcls for FIP Pavilion mx704 monitor

Photographs of Gateway M675 notebook computer and related information from Gateway website

Photographs of Gatcway 5 10 media center computer and related information from Gateway website

Photographs of Gateway FPDl730 monitor and rclated information from Gateway website

Claim chart: US. Patent No. 5,881,318 compared to Gateway M675 notcbook computer

Claim chart: U.S. Patent No. 5,192,999 compared to Gateway 510 media center computer

Claim chart: US. Patent No. 6,326,996 compared to Gateway FPD1730 monitor

31

32

Declaration of Shane Hartnctt concerning Gateway’s economic domestic industry regarding notebooks, desktops and media center computers [Confidcntial version submitted under separate cover]

Declaration of Anthony Olson concerning Gateway’s economic domestic industry rcgarding monitors [Confidential version submitted under separate cover]

D E W E Y B A L L A N T I N E L L P

July 2, 2004

ATTACHMENTS CONTAIN CONFIDENTIAL INFORMATION

VIA HAND DELIVERY

The Honorable Marilyn R. Abbott Secretary US. International Trade Commission 500 E Street, SW Washington, D.C. 20436

Re: In the Matter of Certain Personal Computers, Monitors and Components Thereof

Dear Secretary Abbott:

In connection with the tiling by Gateway, Inc. of a Complaint in the above-titled matter, cnclosed please find an original and six (6) copies of Exhibit 31 (Confidential Version) and an original and six (6) copies of Exhibit 32 (Confidential Version), which have been segregated from the Coniplaint and other materials submitted therewith and designated as “Confidential Business Information.” Nonconfidential, redacted versions of Exhibits 31 and 32 are submitted with the Complaint.

In accordance with 19 C.F.R. $5 201.6 and 210.5, Gateway respectfully requests confidential treatment of the business information contained in Exhibit 31 and Exhibit 32.

The following chart identifies both Exhibits and provides a reason for Gateway’s request for confidential treatment. A certification pursuant to 19 C.F.R. 9: 201.6(b)(3)(iii) is also enclosed.

The Honorable Marilyn R. Abbott July 2,2004 Page 2

Exhibit

31

32

Description of Exhibit

Declaration of Shane Hartnett concerning Gateway’s economic domestic industry

Declaration of Anthony Olson concerning Gateway’s economic domestic industry

Reason for Confidential Treatment.

This document contains detailed information regarding the operations, productions, financials and expenditures of Gateway, which is confidential and not publicly available.

This document contains detailed information regarding the operations, productions, financials and expenditures of Gateway, which is confidential and not publicly available.

Thank you for your attention to this matter.

Respectfully submitted,

B&an Far& Wayne Harding Dean M. Munyon DEWEY BALLANTINE LLP 401 Congress Avenuc Austin, Texas 78701 Telephone: (512) 226-0300

Stephen J. Rosenmdn Steven A. Bowers DEWEY BALLANTINE LLP 1775 Pennsylvania Avenue, NW Washington, DC 20006 Telephone: (202) 862-1000


Enclosures

CERTIFICATION OF COUNSEL

I, Stephen J. Rosenman, certify in accordance with 19 C.F.R. 55 201,6(b)(3)(iii), under penalty of perjury that:

1. 1 am a partner with the law firm of Dewey Ballantine LLP and counsel for Gateway, Tnc. in this matter and am duly authorized to execute this certification;

2. I have reviewed Exhibits 31 and 32 accompanying this Certification, which contain information denoted confidential, as indicated by brackets; and

3. To the best of my knowledge, information, and belief, based on reasonable inquiry, identical or substantially identical information to that denoted by brackets is not available to the public.

I declarc under penalty of perjury under the laws of thc United States of America that the foregoing is true and correct.

Executed this 1st day of July 2004.

Shphen J.(&bsenman

UNITED STATES INTERNATIONAL TRADE COMMISSION WASHINGTON, D.C.

In the Matter of

Certain Persorial Cornputcrs, Monitors, And Components Thereof

Investigation No. 337-TA-

COMPI.AIN1 OF GATEWAY, INC. UNDER SECTION 337 O F THE TARIFF ACT 01; 1930, AS AMENDED

Complainant

Gateway, Inc. 14303 Gateway Place Poway, California 92064 Telephone: (858) 848-3401

Counsel for Coinplainant

Bryan Farney Wayne Harding Dean M. Munyon DEWEY BALLANTINE LLP 401 Congress Avenue Austin, Texas 78701 Telephone: (512) 226-0300


Proposed Resuondcnt

Hewlctt-Packard Company 3000 Hanover Street Palo Alto, California 94304 Telephone: (650) 857-1501

Table of Contents

Page No.

INTRODUCTION ............................. 1

THE PARTlES ....................................... 1

A. Complainant ........................................................................ 1 B. The Proposed Respondent ................................... 2

BACKGROUND INFORMATION ON THE PRODUCTS AT ISSUE ...........

THE PATENTS AT ISSUE ................................................. 5

A. The ‘3 18 Patent .............................................. ..5 Identification of the Patent and Ownership by Complainant. .......... 5

2. Description of the Patented Invention ............................ 5 Foreign Counterparts to the ‘318 Patent. ......................................... 7

B. The ‘999 Patent ................ ......................................... 8 Identification of the Patent and Ownership by Coiiiplainant ........... 8 Description of the Patented Inventions. ........................................... 8

1.

3.

1. 2. 3.

1. 2. 3.

Foreign Counterparts to the ‘999 Patent ..................

Identification of the Patent and Ownership by Complamant ......... 10 C. The ‘996 Patent .........................................

Description of the Patented Invention ............................................ 10 Foreign Counterparts to the ‘996 Patent. ................................

................................... 11 .........................................

UNLAWFUL AND UNFAIR ACTS OF THE PROPOSED RESPONDENT: PATENT INFRINGEMENT ....................................... 12

A. The ‘31 8 Patent ........................................ B. The ‘999 Patent .............................. ......................... 12 C. The ‘996 Patent .............................. ......................................... 13

SPECIFIC INSTANCES OF IMPORTATION AND SALE ..................

RELATED LITIGATION ............... ....................................

DOMESTIC INDUSTRY ............................

A.

B.

RELIEF ............................

......................... 16

Application Of The Asserted Patents To Gateway’s Computer and Monitor Products .. ...................................... Significant Investment In Plant, Labor and Capital.

........................................ 19

I.

11.

111.

IV.

V.

VI

VIL

v111.

IX .

X

1

I. INTRODUCTION

1. This Complaint is filed by Gateway, Tnc. (“Complainant”) for violation of

Section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337, by proposed

Respondent Hewlett-Packard Company (“HF’” or “Respondent”). The violation is based

upon the unlawful importation into the United States, the sale for importation or the sale

within the United States after importation of certain personal computers, monitors and

components thereof. The accused products infringe at least one or inore claims of United

States Patent No. 5,192,999 (“the ‘999 patent”), U.S. Patent No. 5,881,318 (“the ‘318

patent”), and U.S. Patent No. 6,326,996 (“the ‘996 patent”). (Certified copies of each

pateut are provided in Appendix A,)

2. Complainant, the owner by assignment of each of these patents, seeks an

order permanently excluding from entry into the United States HP’s infringing personal

computers, monitors, and components thereof. Complainant also seeks, as relief, cease

and desist orders prohibiting the importation, sale, offer for sale, advertising, or the

soliciting by HP of the sale of its personal computers, monitors, and components thereof

covered by the claims of the ‘999, ‘3 18, and ‘996 patents.

11. THE PARTIES

A. Complainant

3. Gateway, Inc. is a corporation organized and existing under the laws of

Delaware, having a principal place of business at 14303 Gateway Place, Poway,

California 92064.

4. Complainant (collectively, including wholly owned subsidiaries,

“Gateway”) is a global manufacturer and/or seller of desktop and notebook computers,

monitors, and related products. Gateway is a leading participant in markets in the United

States for desktop and notebook computers based on the industry-standard IBM Personal

Computer architecture, as well as related products including monitors. A copy of

Gatcway’s current Annual Report (2003) is attached as Exhibit 1. A copy of Gateway’s

corporate overview from the Gateway web site (www.gateway.com) is attached as

Exhibit 2.

5. In calendar year 2003, Gateway sold more than 3.4 billion dollars worth of

products, including over 2.4 billion dollars worth of personal computers. See Exhibits 1

and 2. Many of these products practice the ‘999, ‘318, and ‘996 patents.

B. The Proposed Respondent

6. On information and belief, Respondent HP is a corporation organized and

existing under the laws of Delaware, having a principal place of business at 3000

Hanover Street, Palo Alto, California 94304.

7. HP is a supplier of dcsktop, notebook and media ccnter computers, as well

as monitors, for home and business use. HP markets and sells its products world-wide

through its various web sites, including for example, www.hpshouting.com, and call

centers. (See Exhibit 3, printed from the HP website, www.hp.com; and Exhibit 4,

printed from the HP website, www.hpshopping.com.)

8. On information and belief, HP merged with Compaq Computer

Corporation (“Compaq”) on May 7,2002, and Compaq is now a wholly-owned

subsidiary of HP. In connection with that merger, certain assets previously owned by

Compaq were, on information and belief, transferred to a successor entity, Hewlett-

Packard Development Company, L.P. (“HPDC”). Desktop, notebook and media ccnter

2

computers, and monitors, for home and business use, continue to be sold in the United

States bearing the “Compaq” name, however. In addition to other channels, those

products are marketed and sold through a web site, accessible via www.Cornpa4.com, that

reflects ownership by HPDC; in turn, that website directs sales through

www.hpshopping.com. (See Exhibit 5, printed lirom the Compaq website,

www.Cornpaq.com, and Exhibit 6, printed from HP’s website, www.hpshopping.com.)

9. The products at issue in this investigation thus include those sold under the

HP name, as well as those sold under the Compaq name. All of those products -- whether

sold under the HP name or under the Compaq name -- are hereinafter referred to

collectively as products of “HP” or “Respondent.”

10. On information and belief, desktop, notebook and media center computers,

and monitors, sold by HP are manufactured by third parties located at least in Asia

(including China and Taiwan) and Mexico. HP imports these infringing products into the

United States for sale through its Internet portals, for example, www.hp.com,

www.coinpaq.com and www.hpshopping.com, and through call centers and other

channels. On information and belief, HP engages in the manufacture in the United States

of products relevant to this investigation utilizing components and/or subassemblies

exported to the United States that infringe the patents in suit, which products are then

offered for sale through the above-described channels.

111. BACKGROUND INFORMATION ON THE PRODUCTS AT ISSUE

11. The products at issue in this investigation are various types of personal

computers (“PC”), including desktop, notebook and media center computers, as well as

monitors, and certain components thereof.

3

12. Desktop PCs based on the industry-standard IBM Personal Computer

architecture are used in a wide variety of home and business applications, such as e-mail,

Internet access, and word processing. Desktops are designed to be used in a single

location, Le., they are not considered portable. The heart orthe desktop is a large circuit

board called the “motherboard,” which contains the processor, memory, and other

integrated circuits. Storage devices, such as hard drives, CD-ROM or DVD-ROM drives,

and floppy drives are connected to the motherboard and mounted within the desktop, as

are inputioutput devices such as modcms, network adapters, and video adapters. External

peripheral devices are also connected to the desktop motherboard, such as a keyboard,

mouse or other pointing device, and monitor.

13. Notebook PCs are also based on the industry-standard IBM Personal

Computer architecture and are fully-integrated, portable computers that not only contain

all the components of desktop computers, but also an integrated keyboard, pointing

device, and monitor. Notebooks also contain their own battery powcr source for truly

independent operation.

14. Media centers are PCs with integrated digital entertainment components,

such as DVD players/recorders, personal video recorders, and other digital media players.

Because they are based on industry-standard IBM Personal Computer architecture, media

centers can also be used as PCs, for example, to access the Internet.

15. Monitors facilitate the display to the user of information being processed

or otherwise acted upon by the computer to which they are connected. In notebook PCs,

the monitor is integrated in the computer, typically as part of a lid that folds over the

keyboard to provide a compact configuration. Desktop PCs and media centers generally

4

do not include an integral monitor, as it is instead disposed as a separate device to be

plugged into the computer via one or more cables. Monitors may utilize any one of

several different designs, including displays comprising for example a cathode ray tube

(CRT), liquid crystal display (LCD) or a plasma display. The latter two categories of

monitors are characterized by thin, generally flat, dimensions having flat screens,

although CRT displays may also have a flat screen configuration.

IV. THE PATENTS AT ISSUE

A. The ‘318 Patent

1. Identification of the Patent and Ownership by Coniplainant.

Complainant owns by assignment the entire right, title, and interest in the

‘3 18 patent entitled “Keyboard Audio Controls For Integrated CD-ROM Players,” which

issued on March 9, 1999. A copy of the ‘318 patent is attached as Exhibit 7. A copy of

the recorded assignments is attached as Exhibit 8. A certified copy of the recorded

assignments is provided in Appendix I.

16.

17. Pursuant to Rule 210.12 ofthe Commjssion’s Rules ofpractice and

Procedure, this Complaint is accompanied by an original and three copies of the certified

version of the prosecution history of the ‘318 patent (Appendix B) and four copies of

each reference document mentioned in the prosecution history of the patent (Appendix C)

2.

Computer manufacturers currently offer data storage and retrieval disc

Description of the Patented Invention.

18.

drives capable of supporting a range of optical disc formats, such as compact disc-read

only memory (CD-ROM) or digital versatile disc-read only memory (DVD-ROM), in

response to the increasing interest in multi-media applications. As an added benefit,

thesc optical drives typically permit the user to play audio compact discs (CDs) so that

the user may listen to music in the background while using the computer.

19. The optical disc drives installed in computers often lack the variety of

audio function buttons typically found on dedicated audio compact disc players,

corresponding to such functions as eject, play, stop, next track, previous track, fast

forward and fast backward, While computer optical disc drives typically include an eject

button, the computer user was, in the past, expected to control the playing of an audio

disc through a dedicated computer program.

20. Audio control computer programs have several major drawbacks. They

may he specific to a particular operating system, so that they may not run while an

incompatible operating system is in use. The programs also arc usually not operative

when the user turns the computer on; rather, the user must specifically load the program

into memory each time the computer is used. Also, thc audio control program must he

the active program to work; if another program is subsequently loadcd, the audio control

program must he re-selected for the controls to function.

21. The ‘318 patent relates to keyboard control of audio CDs. In one

embodiment of the invention, a computer comprises a CD-ROM player, a keyboard, and

a basic input/output system (BIOS). The BIOS recognizes one or more predetermined

sequences of keystrokes, each corresponding to an audio function of the CD-ROM player

In response to detecting one of the predetermined sequences, the BIOS signals the CD-

ROM player to execute the corresponding audio function. For example, if the keystroke

FUNCTION + ‘Z’ is pressed (Le., the Function key is held down while the ‘Z’ key is

pressed), the controller signals this information to the BIOS. The BIOS then looks up in

6

a table stored in memory that this keystroke combination corresponds to the STOP audio

function, and signals the CD-ROM player to execute the STOP audio function. The CD-

ROM player then stops the CD inserted therein from playing.

22. The invention of the ‘318 patent allows for a number of advantages over

the prior art. First, because keyboard control is implemented within the BIOS of a

computer, it is not dependent on any operating system. The invention does not requirc a

computer program be loaded, and therefore does not conflict with any program within

mcmory that is executed by the operating system. In addition, as part of the BIOS, the

invention does not take up scarce base mcniory of the computer. Finally, the invention

allows for imrncdiate and automatic access to keyboard control of the audio function of

the CD-ROM player because the BIOS of a computer is active automatically as soon as a

user turns on the computer.

3.

Foreign counterparts are pending or have been issued corresponding to thc

Foreign Counterparts to the ‘318 Patent.

23.

‘3 18 patent, as shown below:

No other foreign patent applications corresponding to the ‘318 patent have been fled,

abandoned, rejected or remain pending.

B. The ‘999 Patent

1. Identification of the Patent and Ownership by Complainant

Complainant owns by assignment the entire right, title, and interest in thc

‘999 patent entitled “Multipurpose Computerized Television,” which issued on March 9,

1993. A copy of thc ‘999 pateut is attached as Exhibil9. A copy of the recorded

assignments is attached as Exhibit 10. A certified copy of the recorded assignments is

provided in Appendix I.

24.

25. Pursuant to Rule 210.12 of the Commission’s Rules of Practice and


version of the prosecution history of the ‘999 patent (Appendix D) and four copies of

each reference document mentioned in the prosecution history of the patent (Appendix E).

2.

The ’999 patent relates to personal computer-based entertainment systems,

particularly those that seamlessly integrate multimedia and telecommunications functions.

Description of the Patented Inventions.

26.

27. Personal computers have long been used for entertainment purposes.

Indeed, some of the earliest PCs were designed specifically for video game applications.

Over time, advances in audio and video processing led to increased demand for new and

different entertainment applications. Two areas of increased demand were multimedia

and telecommunications applications. Multimedia applications allow a computer to

integrate text, audio, graphics, and still and moving pictures within a single environment.

This capability requires harnessing a number of different functional components:

graphics displays, CD-ROM players, video players, scanners, audio cards, music

synthcsizers, etc. Telecommunications applications, on the other hand, allow a user to

8

communicate by electronic transmissions from devices such as radio, television, and

telephones.

28. At the time of the invention disclosed in the '999 patent, there was no

single workstation that efficiently integrated multimedia and telecommunications

applications. Instead, achieving the desired functionality required the connection of a

number of different electronic components. Such configurations were expensive and

cumbersome, significantly limiting their appeal.

29. A number of factors contributed to the lack of integration of multimedia

and telecommunications functionality within a single computer: public acceptance,

excessive cost, system complexity, and incompatibilities among various types of

electronic technologies. The '999 patent, filed in April 1991, solved these problems. The

patent describes a versatile entertainment system that integrated both multimedia and

telecommunications functions.

30. The '999 patent is directed to a personal computer that includes a

television circuit designed to receive and display television signals, including broadcast

television signals. The '999 patent discloses a number of other features, including the

digital recording television signals and the ability to display television signals on any

portion of the system monitor.

3.

No foreign patent applications corresponding to the '999 patent have been

Foreign Counterparts to the '999 Patent

3 1.

filed, abandoned, rejected or remain pending.

9

C. The ‘996 Patent

I . Identification of the Patent and Ownership by Complainant.

Complainant owns by assignment the entire right, title, and interest in the 32.

‘996 patent entitled “Display Device Having Self Contained Diagnostic Imagc

Generation Capability,” which issued on December 4,2001. A copy of the ‘996 patent is

attached as Exhibit 1 I . A copy of the recorded assignments is attached as Exhibit 12. A

certified copy of the recorded assignments is provide in Appendix I.

33. Pursuant to Rule 210.12 ofthe Commission’s Rules ofpractice and


version of the prosecution history of the ‘996 patent (Appendix F) and four copies of

each reference document mentioned in the prosecution history of the patent (Appendix G)

2.

Video and graphics display devices, such as computer monitors, are

Description of the Patented Invention

34.

known to provide faulty images sometimes. These faulty images may include

interference or shadowing, where a faint echo of the intended image is spaced a small

distance from the image or is distorted. Other image defects include background noise,

video ringing, incorrect control functionality, incorrect brightness, pincushion effects and

refresh rate problems. In addition, cathode ray tube displays that rely upon red, green and

blue color guns to generate multicolor images may suffer from misalignment of the color

guns.

35. In gcneral, display devices such as televisions may receive video signals

from a myriad or sources, including broadcast signals from ground-based antennas and

cable systems to satellite broadcast systems. Computer monitors also may display

10

images generated by a computer. Whether a television or computer monitor, the complex

processing of signals prior to the display device recciving the signals can create a

problem with ascertaining the source of a faulty image. Remote diagnosis by a repair

person is virtually impossible, and attempting to repair or replace the display device is a

burdensome, time-consuming and expensive undertaking.

36. The invention of the ‘996 patent is directed to a display device with the

capability to provide a self generated diagnostic image that is useful to help determine the

functionality of the display device, assisting in isolating the problem causing the faulty

image. The user activates the diagnostic image, which may be superimposed over

existing video images generated externally, or the external circuitry may be completely

disconnected from the display device. By viewing the diagnostic pattern either

superimposed on or isolated from the externally-generated video signal, the user can

more readily determine if faulty images are created by the externally-generated signal or

by the display device itself. Various geometric shapes and colors may optionally be used

in the diagnostic pattern to further assist the user in diagnosing whether the faulty image

is, for example, a product of distortion, interference, or misaligncd color guns.

3.

No foreign patent applications corresponding to the ‘996 patent have been

Foreign Counterparts to the ‘996 Patent.

37.

filed, abandoned, rejected or remain pending.

V. LICENSES

38. The ‘999, ‘318, and ‘996 patents arc the subject of a cross-license.

(Appendix H ~ Confidential, to be submitted promptly upon completion of contractual

notice requirements.)

11

VI. UNLAWFUL AND UNFAIR ACTS OF THE PROPOSED RESPONDENT: PATENT INFRINGEMENT

A. The ‘3 18 Patent

39. On information and belief, proposed Respondent HP unlawfully sells for

importation, imports, or sells after importation into the United States certain notebook

computers that infringe claims 1-3, 9-1 I , 13-l4,20-21,27-28, 30-32 and 38-40 ofthe

‘318 patent.

40. On information and belief, the HP notebook computers that infringe the

‘318 patent include at least the following products: HP Pavilion zt3000, zv5000, zv5000z.

zx5000 and zd7000 series notebook computers, Compaq Presario R3000T, R3000Z,

X1000, and 21002 series notebook computers. See Exhibit 13 for a representation of the

HP zv5000 notebook computer, including photographs and specifications from HP’s

website.

41, Attached as Exhibit 16 to this Complaint is a claim chart demonstrating

that the elements of exemplary claim number 1 of the ‘318 patent are present in the HP

Pavilion zv5000 series notebook computers.

B. The ‘999 Patent


importation, imports, or sells after importation into the United States certain media center

computers that infringe at least claims 1-3, 5, 7-12, 14-29, 31-36 and 38 ofthe ‘999

patent

43. On information and belief, the HP computers that infringe the ‘999 patent

include at least the following products: HP m470n, m480n and m490n media center

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computers. See Exhibit 14 for a representation of the m470n media centcr computer,

including photographs and specifications from HP’s website.

44. Attached as Exhibit 17 to this Complaint is a claim chart demonstrating


m470n media center computers.

C. The ‘996 Patent


importation, imports, or sells after importation into the United States certain monitors that

infringe claims 1, 2 and 4-6 of the ‘996 patent.

46. On information and belief, the HP monitors that infringe the ‘996 patent

include at least the following products: HP Pavilion f2304, fl903, fl703, f1503 and

mx704 monitors. See Exhibit 15 for a representation of the mx704 monitor, including

photographs and specifications from HP’s website.



Pavilion mx704 monitors.

VII. SPECIFIC INSTANCES OF IMPORTATION AND SALE

48. On information and belief, proposed Respondent HP imports, sells for

importation, and/or sells within the United States after importation, the accused products.

49. The specific instances of importation of infringing desktop, notebook, and

media center computers, and monitors, and components thereof set forth below are a

representative sample of unlawful imports of infringing products.

13

50. On information and belief, the HP Pavilion zv5000 series notebook

computer, the HP m470n media center computer, the HP f1903 monitor and components

arc imported into the United States by or for HP.

5 1. The sales receipt for an HP Pavilion zv5000 series notebook computer,

purchased at a “Best Buy” retail store in Sioux Falls, SD on May 12, 2004, is attached as

Exhibit 19.

52. The product labels, shipping labels and other identifying materials for the

HP Pavilion zv5000 series notebook computer are attached as Exhibit 20.

53. The HP Pavilion zv5000 series notebook computer is marked as a product

of China. See Exhibit 20. On information and belief, the HP Pavilion zv5000 series

notebook computer is made for HP in China by a third party vendor.

54. The sales receipt for an HP m470n media center computer, purchased at a

“Best Buy” retail store in Sioux Falls, SD on May 12, 2004, is attached as Exhibit 21.


HP m470n media center computer are attached as Exhibit 22.

56. The HP m470n media center computer is marked as a product of Mexico.

See Exhibit 22. On information and belief, the HP m470n media center computer is

made for HP in Mexico by a third party vendor.

57. The sales receipt for an HP Pavilion mx704 monitor, purchased from an

“Office Depot” store in Washington, DC on May 19, 2004, is attached as Exhibit 23.


HP Pavilion mx704 monitor are attached as Exhibit 24.

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59. The HP Pavilion mx704 monitor is marked as a product of China. See

Exhibit 24. On information and belief, the HP Pavilion mx704 monitor is made for HP in

China by a third party vendor.

60. On information and belief, the infringing HP notebook computers are

classified under subheading 8471.30.0000 of the Harmonized Tariff Schedule of the

United States (“HTSUS”). On information and belief, the infringing HP desktop

computers are classified under subheading 8471.49.0035 and 8471.49.0095, HTSUS. On

information and belief, the infringing HP media center computers are classified under

subheading 8471.90.0000, HTSUS. On information and belief, the infringing HP

monitors are classified undcr subheading 8528.2 1 .00, HTSUS.

61. These classifications are exemplary in nature and are not intended to

restrict the scope of any exclusion order or other remedy ordered by the Commission,

VIII. RELATED LITIGATION

62.

agency litigation.

The ‘999, ‘318, and ‘996 patents havc not been the subject of any court or

63. HP notebook, desktop and media center computers that are the subject

matter of this investigation are also the subject of litigation currently pending in the

United States District Court for the Southern District of California, San Dicgo Division

(Civil Action No. 04 CV 00613 JM) between Complainant and HP, HPDC and HPDC’s

predecessor, Compaq Information Technologies Group (“CITG’)). The case was brought

by HPDC on March 24,2004, alleging infringement of several patents assigned to HPDC.

On May 11, 2004, a counterclaim was filcd against HPDC, HP and CTTG, alleging

15

infringement of several patents that are different from those asserted in this investigation.

The case is pending

64. On June 1, 2004, an investigation was instituted by the United States

International Trade Commission under Section 337 ( I9 U.S.C. 5 1337) regarding “certain

personal computers, server computers, and components thereof’ (Investigation No. 337-

TA-509). The complainants are HPDC and HP, and Gateway, Inc. is the respondent.

65. Investigation No. 337-TA-509 involves seven patents, three of which were

the subject of prior litigation brought, on July 26, 1999, by Compaq against eMachines,

Inc. and others in the United States District Court for the Southern District of Texas,

Houston Division (Civil Action No. H-99-2380). As stated in Paragraph 74 of the

complaint in Investigation No. 337-TA-509, the Texas casc was settled. Compaq was

subsequently acquired by HP, and eMachines, Inc. was subsequently acquired by

Gateway. The Texas case did not involve any of the patents now at issue in the instant

Complaint under Section 337, namely, the ‘999, ‘318, and ‘996 patents

1X. DOMESTIC INDUSTRY

66. An industry in the United States exists as required by subsection (a)(2) of

Section 337, 19 U.S.C. 5 1337(a)(2).

A. Application Of The Asserted Patents To Gateway’s Computer and Monitor Products

Attached to this Complaint are visual represcntations and information 67.

from Gateway’s website depicting examples of the involved domestic articles, as follows:

Gateway M675 notebook computer (Exhibit 25), Gatcway 510 media center computer

(Exhibit 26), and Gateway FPD1730 monitor (Exhibit 27). These articles are current

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product offerings of Gateway; in view of possible changes in products and models during

pendcncy of this investigation, however, Gatcway reserves the right to rely upon these or

other articles to establish, at times subsequent hereto, the presence of a domestic industry

concerning the ‘999, ‘318, and ‘996 patents.


that the elements of exemplary claim 1 of the ‘318 patent are present in the Gateway

M675 notebook computer.


that the elements of exemplary claim 1 of the ‘999 patent are present in the Gateway 5 10

media center computer.


that the elements of exemplary claim 4 of the ‘996 patent are present in the Gateway

FPD1730 monitor.

B.

71.

Simificant Investment In Plant, Labor and Capital

A domestic industry as defined by 19 U.S.C. 9: 1337(a)(3) exists in the

United States with respect to the articles protected by the asserted patents by reason of

Gateway’s (A) significant investment in plant and equipment, (B) significant

employment of labor or capital, and (C) substantial investment in the cxploitation,

including engineering or research and development, with respect to articles protected by

the asserted patents.

72. Attached as Exhibit 31 to this Complaint is the Declaration of Shane

Hartnett, Vice President of Operations, setting rorth details of Gateway’s investments and

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employment, in the United States, for the Gateway notebook computers, desktop

computers and media center computers that comprise articles protected by the asserted

patents. Exhibit 31, which is submitted separately as containing confidential information,

describes activities undertaken by Gateway personnel in the United States to engineer and

develop these products, as well as to build and configure-to-order such products at

Gateway and contracted vendors, in the United States.

73. Attached as Exhibit 32 to this Complaint is the Declaration ofAnthony

Olson, Vice President of Engineering, setting forth the details of Gateway’s investments

and employment, in the United States, for the Gateway monitors that comprise articles

protected by the asserted patents. Exhibit 32, which is submitted separately as containing

confidential information, describes activities undertaken by Gateway personnel in the

United States to engineer and qualify these products.

74. Exhibits 31 and 32 set forth information describing the domestic industry,

under 19 U.S.C. 5 1337(a)(3), that currently exists in the United States with respect to the

articles protected by the asserted patents. In connection with the recent eMachines

acquisition, Gateway is considering the implementation of operational changes that may

affect the domestic industry that is described in Exhibits 31 and 32.

75. Should changes of the nature set forth in the preceding paragraph occur

subsequent to commencement of the proposed investigation, Gateway reserves the right

to produce and rely upon evidence different from that set forth in Exhibits 31 and 32 in

order to establish the presence of a domestic industry concerning the ‘999, ‘318, and ‘996

patents.

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X. RELIEF

76. Complainant Gateway, Inc. 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. 5 1337, into the violations of Section 337 by proposed Respondent, Hewlett- Packard Company, arising from the importation into the United States, and/or sale for importation and/or sale within the United States after importation, of proposed Respondent’s accused personal computers (including desktop, notebook and media center computers), monitors, and components thereof, including such products as may be sold under the “Compaq” name;

Set a target date of no more than twelve months;

Schedule and conduct a hearing pursuant to Scction 337(c) for purposes of receiving evidence and hearing argumcnt concerning whether there has been a violation of Section 337 and, following the hearing, determine that there has been a violation of Section

B.

C.

337;

Issue a permanent exclusion order, pursuant to Section 337(d), forbidding entry into the United States of proposed Respondent Hewlett-Packard Company’s accused personal computers (including desktop, notebook and media center computers), monitors, and components thereof, including such products as may be sold under the “Compaq” name, that infringe one or more claims 0fU.S. Patent Nos. 5,192,999, 5,881,318, and 6,326,996;

Issue a permanent order, pursuant to Section 337(f), directing proposed Respondent Hewlelt-Packard Company to cease and desist from importing, selling, offering for sale, using, demonstrating, promoting, marketing, and/or advertising in the United States, proposed Respondent Hcwlett-Packard Company’s accused personal computers (including desktop, notebook and media center computers), monitors, and components thereof, including such products as may be sold under the “Conipaq” name, that infringe one or more claims of U S . Patent Nos. 5,192,999, 5,881,318, and 6,326,996; and

Grant all such other and further relief as it deems appropriate under the law, based upon the facts complained of herein and as determined by the investigation.

D.

E.

F.

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Dated: June 16,2004 Respectfully submitted,

Wayne Harding Dean M. Munyon DEWEY BALLANTINE LLP 401 Congress Avenue Austin, Texas 78701 Telephone: (512) 226-0300



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VERIFICATION TO C O M P W N T

I, Gregory L. Call, declare, in accordance with 19 C.F.R. $5 210.4 and 210.12(a), under

penalty of perjury, that the following statements are true:

1. I am Group Counsel, Litigation Management for Gateway, Inc. and am duly

authorized to sign this complaint on behalf of Complainant Gateway, Inc.;

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 the investigation or related

proceeding;

4. To the best of my knowledge, information and belief founded upon reasonable

inquiry, the claims and legal contentions of this complaint are warranted by existing law or by a

nonfrivolous argument for the extension, modification, or reversal of existing law or the

establishment of new law; and

5. To the best of my knowledge, information and belief founded upon reasonable

inquiry, the allegations and other factual contentions in the complaint have evidentiary support

or, if specifically so identified, are likely to have evidentiary support after a reasonable

opportunity for further investigation or discovery.

I declare under penalty of perjury under the laws of the United States of America that the

forgoing is true and correct.

Executed on June 2 , 2 0 0 4 .

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