Pillsbury Helps Sirius XM Radio Quickly Defeat Patent Infringement Allegations in ITC Investigation

Spansion first filed its ITC complaint on August 6, 2010, seeking to bar more than 20 companies’ products, including computers, cell phones, satellite radios and MP3 players—or diverse “downstream” goods allegedly incorporating the patented technology at issue—from the U.S. market. This complaint included Sirius XM and specifically, its Stiletto SL2 portable radio, of using the accused Samsung flash memory chips. The ITC formally initiated its investigation on September 6, but did not name Sirius XM and some others as respondents. On September 21, Spansion moved to amend its complaint at the ITC by again naming some of those same parties, including Sirius XM. Spansion based its amendment request targeting Sirius XM on claims of having only “recently” purchased a Stiletto SL2.

Seeking to avoid disruptions from the ITC’s patent probe, Sirius XM turned to Atkins and Pillsbury IP associate Christopher K. Dorsey to defend it. Pillsbury successfully argued that Spansion’s request to add Sirius XM to the complaint lacked proper cause. Atkins and Dorsey noted to the ITC that, contrary to Spansion’s claim—and consistent with the information in Spansion’s own original complaint—Spansion could have easily purchased the product at anytime and, in fact, already had a Stiletto SL2 radio in its possession for examination as early as August 27, 2010, well before the ITC formally initiated the investigation. Thus, Pillsbury dismissed the radios’ examination in Spansion’s amendment motion as affording no “new evidence” and argued that Spansion lacked diligence in failing to submit such findings earlier, in its initial complaint.

Pillsbury also countered Spansion’s claim that it had experienced “difficulty” obtaining Sirius XM radios during preparations for its ITC case—a period of two years—a claim Spansion used to justify its amendment motion. Pillsbury noted that the exhibits to Spansion’s own complaint showed that Stiletto SL2 radios had been in-stock at Amazon.com since 2001. Agreeing with Pillsbury’s argument that Spansion’s bid to target Sirius XM and Stiletto SL2s in its ongoing battle over flash memory patents lacked sufficient cause, the ITC has now formally denied Spansion’s motion to amend.

“In the technology industry and elsewhere, it is increasingly common for patent-holders to initiate ambitious, far-reaching infringement claims, seeking to sweep up as many potential ‘infringers’ as possible,” said Atkins. “Sirius XM was targeted because of its success in the marketplace, well downstream from a component supplier. Most importantly, Sirius XM will be spared from this ITC investigation because the accuser’s most recent charges at the ITC lacked both good cause and new evidence of any kind.”

Pillsbury’s Intellectual Property practice advises clients on developing successful and comprehensive IP strategies by protecting, managing, asserting, defending, and leveraging their IP assets. Pillsbury’s IP practice includes more than 70 attorneys, technical consultants and patent agents, in Northern Virginia, San Francisco, Silicon Valley, Los Angeles, Washington, DC, New York, San Diego, Sacramento, Tokyo, London, and other offices around the country and abroad. Pillsbury’s IP team has a wide range of advanced scientific and technical degrees in areas including electrical and mechanical engineering, chemistry, biology, physics, and a number of other technical disciplines.

About Pillsbury
Pillsbury Winthrop Shaw Pittman LLP is a full-service law firm with market-leading strengths serving the energy, financial services, real estate and technology sectors, and increasingly healthcare and education. Based in the world's major financial and technology centers, Pillsbury counsels clients on global corporate, regulatory and litigation matters. We work in multidisciplinary teams that allow us to anticipate trends and bring a 360-degree perspective to complex business and legal issues—helping clients to take greater advantage of new opportunities and better mitigate risk. This collaborative work style helps produce the results our clients seek.