[Federal Register Volume 64, Number 127 (Friday, July 2, 1999)]
[Notices]
[Pages 36038-36040]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 99-16928]


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INTERNATIONAL TRADE COMMISSION

[Inv. No. 337-TA-409]


In the Matter of Certain CD-ROM Controllers and Products 
Containing the Same--II; Notice of Commission Decisions to Review 
Portions of One Initial Determination and All of a Second 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-in-part the final initial 
determination (ID) issued on May 12, 1999, by the presiding 
administrative law judge (ALJ) in the above-captioned investigation 
finding that there was no violation of section 337 of the Tariff Act of 
1930, 19 U.S.C. 1337, and to review in its entirety an ID (ALJ Order 
No. 15) issued on May 10, 1999, granting respondent United 
Microelectronics Corporation's (UMC's) motion for a summary 
determination terminating UMC from the investigation.

FOR FURTHER INFORMATION CONTACT: Timothy P. Monaghan, Esq., Office of 
the General Counsel, U.S. International Trade Commission, 500 E Street, 
SW, Washington, DC 20436, telephone 202-205-3152. General information 
concerning the Commission may also be obtained by accessing its 
Internet server (http://www.usitc.gov). Hearing-impaired persons are 
advised that information on this matter can be obtained by contacting 
the Commission's TDD terminal on 202-205-1810.

SUPPLEMENTARY INFORMATION: The Commission instituted this investigation 
on May 13, 1998, based on a complaint filed by Oak Technology, Inc. 63 
FR 26625 (1998). The complainant named four respondents: MediaTek, UMC, 
Lite-On Technology Corp., and AOpen Inc. Actima Technology Corporation, 
ASUSTek Computer, Incorporated, Behavior Tech Computer Corporation, 
Data Electronics, Inc., Momitsu Multi Media Technologies, Inc., Pan-
International Industrial Corporation, and Ultima Electronics 
Corporation were permitted to intervene.
    In its complaint, Oak alleged that respondents violated section 337 
by importing into the United States, selling for importation, and/or 
selling in the United States after importation

[[Page 36039]]

electronic products and/or components that infringe claims 1-5 and 8-10 
of U.S. Letters Patent 5,581,715 (`715 patent). The presiding ALJ held 
an evidentiary hearing from January 11, 1999, to January 28, 1999.
    On May 10, 1999, the ALJ issued an ID (Order No. 15) granting the 
motion of respondent UMC for a summary determination terminating 
respondent UMC from the investigation on the basis of a license 
agreement. On May 12, 1999, the ALJ issued his final ID finding that 
there was no violation of section 337. He found that there was no 
infringement of any claims at issue. He further found that the claims 
in issue of the `715 patent were invalid for on-sale bar under 35 
U.S.C. 102(b), anticipation under 35 U.S.C. 102(a), obviousness under 
35 U.S.C. 103, for indefiniteness under 35 U.S.C. 112(2), (6), and for 
derivation under 35 U.S.C. 102(f). The ALJ found that there was a 
domestic industry with respect to the `715 patent.
    Complainant Oak filed a petition for review of Order No. 15 and 
respondent UMC and the Commission investigative attorney (IA) filed 
responses to Oak's petition for review of Order No. 15. Oak, 
respondents, and the IA filed a petitions for review of the final ID, 
and all parties subsequently responded to each other's petitions for 
review of the final ID.
    Having examined the record in this investigation, including Order 
No. 15, the final ID, the petitions for review, and the responses 
thereto, the Commission has determined not to review the ID's findings 
with respect to the preamble and the Digital Signal Processor (DSP) 
element. The Commission has determined to review the remainder of the 
final ID and Order No. 15 in its entirety.
    While the Commission expects the parties to brief all of the issues 
being reviewed, the Commission is particularly interested in receiving 
answers to the following questions:
    (1) With respect to the claimed memory means, please cite and 
discuss any Federal Circuit cases dealing with indefiniteness of an 
issued patent, which carries a presumption of validity, in the context 
of apparent confusion between the language of the claim and the content 
of the specification.
    (2) Should the claimed error detection and correction means be 
interpreted as a means-plus-function element that necessarily includes 
two specific circuits, but which may include more circuit structure?
    (3) If the claimed error detection and correction means is 
construed as a means-plus-function element--
    (a) Is it possible under current Federal Circuit case law to 
satisfy the requirements for structural description under 35 U.S.C. 112 
para. 6 by references to ``circuits * * * commonly available as 
hardware used in many other applications?''
    (b) Is there any evidence of record of commonly available hardware, 
at the time of the alleged infringement, for performing the error 
detection function by a cyclic redundancy check other than by a linear 
feedback shift register?
    (c) Is common availability in hardware a prerequisite for 
determining whether the error detection circuitry in any accused device 
is an equivalent to a linear feedback shift register for purposes of 
section 112 para. 6 at the time of the alleged infringement?
    (d) Does the MediaTek Error Detection Processor perform the 
identical function as the disclosed cyclic redundancy checker?
    (e) At the time of the alleged infringement, would the MediaTek 
Error Detection Processor be considered an equivalent device under 
section 112 para. 6 for performing the claimed function?
    (4) If the claimed error detection and correction means is not 
construed as a means-plus-function element, please discuss, to the 
extent the record will allow, whether the MediaTek Error Detection 
Processor, considering its operation from both a hardware and software 
standpoint, may be considered a cyclic redundancy checker?
    (5) Under Federal Circuit case law, what is necessary to conclude 
that a feature of disclosed circuitry is directly linked to a claimed 
function in order to make it part of the ``corresponding structure'' 
under section 112 para. 6? In particular, could a patentee demonstrate 
this required linkage by showing, as a matter of logic, that the 
circuitry of the claimed means could not work without the feature in 
question, even though there is no explicit textual reference to the 
claimed function in the portion(s) of the specification dealing with 
that feature?
    (6) Please discuss which features of the claimed host interface 
means should be included in the ``corresponding structure'' for 
purposes of construing this element.
    (7) Please discuss, including all the engineering detail the record 
will allow, including timing relationships, signal characteristics, 
sequence of operations, and any other design parameters you deem 
relevant, how the claimed host interface means functions.
    (8) With respect to the claimed host interface means--
    (a) Does the preamble to claim 1 require that the host interface 
means directly connect to the IDE/ATA bus and have sufficient circuitry 
to support any IDE-based command set?
    (b) Aside from expanding to eight registers and changing the 
addressing scheme, what design problems had to be solved to go from the 
Mitsumi daughterboard to the claimed invention? Where are the solutions 
to those problems reflected in the patent specification?
    (c) What design problems of the host interface means, if any, would 
remain unsolved in view of the ATA or ATAPI specifications? To the 
extent you contend that design features of the host interface means are 
disclosed by the engineering information in these specifications, 
please cite specific references, at least to sections and preferably to 
page numbers, where the information may be found.
    (9) With respect to the ALJ's obviousness analysis, what is the 
teaching, motivation, or suggestion to combine the references employed?
    (a) If you contend that the teaching, motivation, or suggestion 
derives, in whole or in part, from ``the nature of the problem,'' 
please discuss the extent to which Federal Circuit case law has 
extended this concept beyond simple mechanical contexts.
    (b) If you contend that it derives, in whole or in part, from the 
teachings of pertinent references, please cite to the passages in the 
references in question that you contend furnish such a suggestion.
    (c) If you contend that it derives, in whole or in part, from the 
knowledge of those of ordinary skill in the art of the importance of 
certain references, please be specific as to how all or portions of the 
references in any given combination were well known in the art prior to 
the invention and how a person of ordinary skill in the art would have 
known to combine material from other references in the combination that 
are not so well known.
    (10) 35 U.S.C. 103 directs that the reference point for an 
obviousness analysis is ``at the time the invention was made.'' In view 
of the evidence of a conception date no later than April 1993, what is 
the relevance under governing case law of the ATAPI standard, which was 
apparently available to no one before June 10, 1993?
    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

[[Page 36040]]

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 likely to do so. For background, 
see In the Matter of Certain Devices for Connecting Computers via 
Telephone Lines, Inv. No. 337-TA-360, USITC Pub. No. 2843 (December 
1994) (Commission Opinion).
    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 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, interested government agencies, 
and any other interested parties are encouraged to file written 
submissions on the issues under review, and on remedy, the public 
interest, and bonding. Such submissions should address the May 26, 
1999, recommended determination by the ALJ on remedy and bonding. 
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 close of business on July 12, 1999. Reply 
submissions must be filed no later than the close of business on July 
19, 1999. No further submissions on these issues will be permitted 
unless otherwise ordered by the Commission.
    Persons filing written submissions must file with the Office of the 
Secretary the original document 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 section 201.6 of the Commission's Rules of Practice and 
Procedure, 19 CFR 201.6. Documents for which confidential treatment by 
the Commission is sought 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 sections 210.45-210.51 of the 
Commission's Rules of Practice and Procedure, 19 CFR 210.45-210.51.
    Copies of the public versions of the subject IDs, 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 SW, Washington, DC 20436, 
telephone 202-205-2000.

    By order of the Commission.

    Issued: June 28, 1999.
Donna R. Koehnke,
Secretary.
[FR Doc. 99-16928 Filed 7-1-99; 8:45 am]
BILLING CODE 7020-02-P