[Federal Register Volume 63, Number 106 (Wednesday, June 3, 1998)]
[Notices]
[Pages 30256-30258]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 98-14750]



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INTERNATIONAL TRADE COMMISSION

[Inv. No. 337-TA-396]


Certain Removable Electronic Cards and Electronic Card Reader 
Devices and Products Containing Same and Components Thereof; Notice of 
Commission Decision To Review Portions of an Initial Determination and 
Schedule for the Filing of Written Submissions on the Issues Under 
Review and on Remedy, the Public Interest, and Bonding

AGENCY: U.S. International Trade Commission.

ACTION: Notice.

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SUMMARY: Notice is hereby given that the U.S. International Trade 
Commission has determined to review certain portions of the initial 
determination (ID) issued by the presiding administrative law judge 
(ALJ) on March 24, 1998, in the above-captioned investigation.

FOR FURTHER INFORMATION CONTACT: Michael Diehl, Esq., Office of the 
General Counsel, U.S. International Trade Commission, 500 E Street, 
S.W., Washington, D.C. 20436, telephone (202) 205-3095.

SUPPLEMENTARY INFORMATION: The authority for the Commission's 
determination is contained in section 337 of the Tariff Act of 1930, as 
amended (19 U.S.C. 1337), and in section 210.43 of the Commission's 
Rules of Practice and Procedure (19 C.F.R. 210.43).
    The Commission instituted this investigation on April 2, 1997, 
based on a complaint by Innovatron S.A. (``Innovatron'') of Paris, 
France. The complaint, as subsequently amended, named two respondents--
Thomson Multimedia, S.A. of Paris, France; and Thomson Consumer 
Electronics, Inc. of Indianapolis, Indiana.
    In its complaint, Innovatron alleged that respondents violated 
section 337 by importing into the United States and selling in the 
United States after importation television receivers and receiver 
access cards that infringe claim 8 of Innovatron's U.S. Letters Patent 
4,404,464 (the ```464 patent'').
    The presiding ALJ held an evidentiary hearing from September 29 to 
October 7, 1997. On March 24, 1998, the ALJ issued his final ID, in 
which he concluded that there was violation of section 337, based on 
the following findings: (a) There have been importations and sales 
after importation of the accused devices; (b) claim 8 is not invalid 
due to anticipation or obviousness; (c) the accused devices directly 
infringe claim 8 of the `464 patent; (d) respondents actively induced 
infringement of and contributorily infringed claim 8 of the `464 
patent; and (e) there is a domestic industry that practices claim 8 of 
the `464 patent.
    On April 6, 1998, respondents filed a petition for review of the 
ID, arguing that the ALJ erred in all of his adverse findings relating 
to claim construction, validity, infringement, and domestic industry. 
Respondents also alleged that the ALJ committed abuses of discretion in 
his denial of several motions filed by them. The Commission 
investigative attorney (``IA'') also filed a petition for review, 
alleging that the ALJ's construction of claim 8 was erroneous.
    Complainant Innovatron filed on April 13, 1998, a response in 
opposition to the petitions filed by respondents and the IA. The IA 
also filed a response to respondents' petition on that date, supporting 
the respondents' petition.
    On April 1, 1998, the ALJ issued his Recommended Determination 
(``RD'') on Remedy and Bonding, in the event the Commission concludes 
there is a violation of section 337.
    Having reviewed the record in this investigation, including the 
parties' written submissions, the Commission determined not to review 
the ALJ's finding that 35 U.S.C. section 112, paragraph 6 does not 
apply to claim 8 of the `464 patent, and his denials of certain motions 
filed by respondents. The Commission determined to review the remainder 
of the ID.
    On review, the Commission is particularly interested in receiving 
answers to the following questions:
    (1) Regarding step (c) of claim 8, what evidence of record bears on 
the issue of the meaning of ``tangential'' in the phrase ``in a 
direction tangential to said corresponding contact surfaces * * *.'' ? 
Does tangential mean only in the direction parallel to the direction of 
elongation of the contact surfaces, or can it include any direction in 
the plane of the area of contact between the corresponding contact 
surfaces, including directions transverse and oblique to the direction 
of elongation of the contact surfaces? Please comment on whether 
dependent claim 7 indicates by implication that ``tangential,'' as used 
in independent claim 1, from which claim 7 depends, can include a 
direction ``transverse'' to the direction of elongation of the contact 
surfaces.
    (2) Does the manual removal and reinsertion of the DSS access card 
in response to an on-screen message constitute a repetition of steps 
(a) and (b) of claim 8? If the ``displacing'' of step (c) is construed 
to mean manual removal and reinsertion, then is step (c) rendered 
superfluous? Would such a construction be disfavored under Wright 
Medical Technology, Inc. v. Osteonics Corp., 122 F.3d 1440, 1444 (Fed. 
Cir. 1997) ?
    (3) Do the three paragraphs of the specification of the `464 patent 
at column 8, lines 12-37 describe the various aspects of a manual 
version of the preferred embodiment, or does each paragraph describe 
different alternative arrangements in the preferred embodiment, 
indicating in turn: (i) That displacing can be motorized or manual, 
(ii) that receipt of the portable electronic card can be by a 
translationally movable drawer or jointed shutter, and (iii) that 
stopping can be performed by halting the motor or by immobilizing the 
card and the connection cross bar with respect to one another? Is the 
latter construction (i.e., the construction involving three different 
alternative arrangements in the preferred embodiment) supported by the 
fact that the paragraph describing the alternative stopping arrangement 
applies regardless of whether displacement is motorized or manual? What 
significance, if any, is there to the fact that the three paragraphs 
expressly indicate that displacing can be performed manually, but do 
not indicate that stopping can be performed manually?
    (4) What evidence of record bears on whether a human being can stop 
manual displacement rapidly enough to prevent the contact surfaces from 
moving back out of alignment and electrical contact? If the evidence of 
record indicates that a human being cannot stop manual displacement 
rapidly enough to prevent the contact surfaces from moving back out of 
alignment and electrical contact, then is manual stopping consistent 
with the claim language ``stopping * * * when,'' considering that the 
specification indicates that the purpose of the patented method is to 
facilitate ``rapid'' contact and to limit the wearing down of contact 
surfaces to that which is ``absolutely necessary''
    (5) For purposes of determining whether there is contributory 
infringement, is it more appropriate to define the use of the accused 
devices in terms of a general end use (such as to view television 
programming) or in terms of more specific uses (such as testing for the 
direct or inverse communications convention, testing for proper 
alignment and electrical contact, and decrypting television 
programming)?
    (a) If the first alternative (general end use) is more appropriate, 
then do the accused devices have a substantial non-infringing use? 
Specifically, must the

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accused devices have a use that is different from the infringing use, 
or is it sufficient that the accused devices have a single use that is 
employed in a non-infringing manner a substantial portion of the time?
    (b) If the second alternative (specific uses) is more appropriate, 
then do the accused devices have a substantial non-infringing use or 
uses?
    (6) Is Gemplus' manufacture of smart cards alone sufficient to 
satisfy the technical prong of the domestic industry requirement of 
section 337? Why or why not? In answering this question, the private 
parties are requested to comment on the Commission investigative 
attorney's argument that Gemplus' manufacture of cards alone 
sufficiently exploits the patent for the purpose of the domestic 
industry requirement.
    (7) Discuss whether the following is an appropriate construction of 
the disputed terms of claim 8 of the `464 patent:
    The claim terms are construed as in the ID, except that:
    (a) In the phrase ``a predetermined expected response'':
    (i) ``[P]redetermined'' means ``to determine, decide, or establish 
in advance'' and is not limited to ``established at the time of the 
design of the system;''
    (ii) ``[E]xpected'' means ``predicted,'' and is not limited to 
``not changing over time.''
    (b) ``[D]isplacing * * * in a direction tangential to said 
corresponding contact surfaces'' means that the corresponding contact 
surfaces are moved in any direction in the plane of the area of contact 
between the corresponding contact surfaces of the removable article and 
the electric device, including directions parallel, transverse, and 
oblique to the direction of elongation of the contact surfaces, and the 
phrase does not encompass the removal and reinsertion of the removable 
article.
    (c) ``[S]topping * * * when'' means the instantaneous or near 
instantaneous cessation of displacing such that movement of the 
removable article relative to the electric device is halted before the 
corresponding contact surfaces are moved from a position of proper 
alignment and electrical contact to a position out of such alignment 
and electrical contact.
    (8) Assuming that the disputed claim terms are construed as set 
forth in question 7 above, would claim 8 be invalid as anticipated or 
obvious? Would the accused devices directly infringe claim 8? Would 
respondents be actively inducing infringement? Would respondents be 
contributorily infringing? Would Gemplus' domestic activities utilizing 
the smart card manufacturing and testing equipment discussed at pages 
123-131 of the ID satisfy the technical prong of the domestic industry 
requirement of section 337?
    In connection with the final disposition of this investigation, the 
Commission may issue: (1) An order that could result in the exclusion 
of the subject articles from entry into the United States, and/or (2) 
cease and desist orders that could result in respondents being required 
to cease and desist from engaging in unfair acts in the importation and 
sale of such articles. Accordingly, the Commission is interested in 
receiving written submissions that address the form of remedy, if any, 
that should be ordered. If a party seeks exclusion of an article from 
entry into the United States for purposes other than entry for 
consumption, the party should so indicate and provide information 
establishing that activities involving other types of entry either are 
adversely affecting it or are likely to do so. For background 
information, see the Commission Opinion, Certain Devices for Connecting 
Computers via Telephone Lines, Inv. No. 337-TA-360, USITC Publication 
2843 (Dec. 1994).
    If the Commission contemplates some form of remedy, it must 
consider the effects of that remedy upon the public interest. The 
factors the Commission will consider include the effect that an 
exclusion order and/or cease and desist orders would have on (1) the 
public health and welfare, (2) competitive conditions in the U.S. 
economy, (3) U.S. production of articles that are like or directly 
competitive with those that are subject to investigation, and (4) U.S. 
consumers. The Commission is therefore interested in receiving written 
submissions that address the aforementioned public interest factors in 
the context of this investigation.
    If the Commission orders some form of remedy, the President has 60 
days to approve or disapprove the Commission's action. During this 
period, the subject articles would be entitled to enter the United 
States under a bond, in an amount to be determined by the Commission 
and prescribed by the Secretary of the Treasury. The Commission is 
therefore interested in receiving submissions concerning the amount of 
the bond that should be imposed.

Written Submissions

    The parties to the investigation are requested to file written 
submissions on the issues under review. The submissions should be 
concise and thoroughly referenced to the record in this investigation, 
including references to exhibits and testimony. Additionally, the 
parties to the investigation, interested government agencies, and any 
other interested persons are encouraged to file written submissions on 
the issues of remedy, the public interest, and bonding. Such 
submissions should address the April 1, 1998 recommended determination 
of the ALJ. Complainant and the Commission investigative attorney are 
also requested to submit proposed remedial orders for the Commission's 
consideration. The written submissions and proposed remedial orders 
must be filed no later than the close of business on June 11, 1998. 
Reply submissions must be filed no later than June 18, 1998. No further 
submissions will be permitted unless otherwise ordered by the 
Commission.
    Persons filing written submissions must file with the Office of the 
Secretary the original and 14 true copies thereof on or before the 
deadlines stated above. Any person desiring to submit a document (or 
portion thereof) to the Commission in confidence must request 
confidential treatment unless the information has already been granted 
such treatment during the proceedings. All such requests should be 
directed to the Secretary of the Commission and must include a full 
statement of the reasons why the Commission should grant such 
treatment. See 19 C.F.R. 201.6. Documents for which confidential 
treatment is granted by the Commission will be treated accordingly. All 
nonconfidential written submissions will be available for public 
inspection at the Office of the Secretary.
    This action is taken under the authority of section 337 of the 
Tariff Act of 1930 (19 U.S.C. 1337) and Secs. 210.42-.45 of the 
Commission's Rules of Practice and Procedure (19 C.F.R. 210.42-.45).
    Copies of the public version of the ALJ's ID and all other 
nonconfidential documents filed in connection with this investigation 
are or will be available for inspection during official business hours 
(8:45 a.m. to 5:15 p.m.) in the Office of the Secretary, U.S. 
International Trade Commission, 500 E Street, S.W., Washington, D.C. 
20436, telephone 202-205-2000. Hearing-impaired persons are advised 
that information on this matter can be obtained by contacting the 
Commission's TDD terminal on 202-205-1810. General information 
concerning the Commission may also be obtained by accessing its 
Internet server (http://www.usitc.gov).


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    Issued: May 29, 1998.

    By order of the Commission.
Donna R. Koehnke,
Secretary.
[FR Doc. 98-14750 Filed 6-2-98; 8:45 am]
BILLING CODE 7020-02-P