Imation Corporation's Trial Victory Upheld by International Trade Commission

September 3, 2009

The United States International Trade Commission last week denied a petition filed by SanDisk Corporation seeking review of an Administrative Law Judge's finding that Flash memory drives sold by Imation Corporation do not infringe SanDisk's U.S. Patent No. 7,137,011.  The Commission also denied SanDisk's petition to review the ALJ's conclusion that the '011 patent is invalid for obviousness.  Imation is represented in the case by Robins, Kaplan, Miller & Ciresi L.L.P. attorneys Richard Martinez, Mathew Yang, and Miles Finn.

The case involved two patents owned by SanDisk Corporation.  The patents relate to Flash-memory technology in several devices, most notably portable USB memory cards.  SanDisk originally asserted the patents against dozens of defendants, including Imation.  But by the time of trial Imation was the only defendant remaining under the '011 patent, while several other defendants remained under the second patent involved in the case.  Robins, Kaplan, Miller & Ciresi L.L.P. was solely responsible for defending against the '011 patent. 

Following a two-week trial, the Administrative Law Judge released his Initial Determination in April 2009, finding that Imation's products do not infringe the '011 patent and agreeing with Imation's argument that the '011 patent was invalid as obvious in light of the prior art and thus invalid. SanDisk then filed its petition for review to the full Commission, challenging the Initial Determination of the Administrative Law Judge. Imation filed responsive briefing urging the Commission to deny SanDisk's petition and adopt the Initial Determination of the Administrative Law Judge. Last week's decision by the Commission denying SanDisk's petition thus represents a complete victory for Imation on all issues relating to the '011 patent and becomes the final decision of the Commission.

The Commission did grant review on limited issues related to the second patent in the case, which is asserted against the remaining defendants and Imation.  Further briefing on that issue and a final decision will be forthcoming.

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