[Federal Register Volume 66, Number 238 (Tuesday, December 11, 2001)]
[Notices]
[Pages 64058-64061]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 01-30506]


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INTERNATIONAL TRADE COMMISSION

[Inv. No. 337-TA-439]


In the Matter of Certain HSP Modems, Software and Hardware 
Components Thereof, and Products Containing Same; Notice of Commission 
Decision To Affirm ALJ Orders Nos. 75 and 76; To Review Portions of a 
Final Initial Determination; To Extend by 45 Days the Target Date for 
Completion of the Investigation; and To Schedule for 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

[[Page 64059]]

Commission has determined to affirm ALJ Orders Nos. 75 and 76 issued by 
the presiding administrative law judge (``ALJ'') on June 29, 2001, and 
July 5, 2001, respectively; to deny ESS's motion to strike PCTEL's 
October 23 letter; to deny PCTEL's motion to supplement the record and 
its motion for leave to reply to ESS's response; to extend the target 
date for completion of the investigation by 45 days to March 4, 2002; 
and to review portions of the final initial determination (``ID'') 
issued on October 18, 2001, by the presiding ALJ finding a violation of 
section 337 of the Tariff Act of 1930 in the above-captioned 
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. Copies of the public 
versions of the subject orders and 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, SW., Washington, DC 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). The 
public record for this investigation may be viewed on the Commission's 
electronic docket (EDIS-ON-LINE) at http://dockets.usitc.gov/eol/public.

SUPPLEMENTARY INFORMATION: The Commission instituted this investigation 
on October 11, 2000, based on a complaint filed by PCTEL, Inc. 
(``PCTEL'') of Milpitas, California. The complaint named Smart Link 
Ltd. of Netanya, Israel and Smart Link Technologies, Inc. of Watertown, 
Massachusetts (collectively ``Smart Link'') and ESS Technology, Inc. 
(``ESS'') of Fremont, California as respondents. The complaint alleged 
that Smart Link and ESS had violated section 337 of the Tariff Act of 
1930 by importing into the United States, selling for importation, and/
or selling within the United States after importation certain HSP 
modems, software and hardware components thereof, and products 
containing the same by reason of infringement of claims 1-2 of U.S. 
Letters Patent 5,787,305 (``the `305 patent''), claims 1-4, 7-8, and 
11-15 of U.S. Letters Patent 5,931,950 (``the `950 patent''), claims 1, 
2, 10, and 15-17 of U.S. Letters Patent 4,841,561 (``the `561 
patent''), and claims 1, 6-7, 10-12, and 15-19 of U.S. Letters Patent 
5,940,459 (``the `459 patent'').
    On April 5, 2001, the Commission determined not to review an ID 
granting PCTEL's motion for summary determination of its satisfaction 
of the economic prong of the domestic industry requirement.
    On June 28, 2001, the Commission determined not to review an ID 
terminating the investigation as to respondent Smart Link on the basis 
of a settlement agreement. The only patents asserted by PCTEL against 
remaining respondent ESS are the `305 and `950 patents. Thus, only the 
`305 and `950 patents remain at issue in the investigation.
    The ALJ issued his final ID on October 18, 2001. He found that 
respondent ESS's HSP modem products do not infringe claims 1 or 2 of 
the `305 patent; that the `305 patent is enforceable and not invalid; 
and that the technical prong of the domestic industry requirement is 
not met as to the `305 patent (i.e., that PCTEL's products of do not 
practice any claim in issue of the `305 patent). The ALJ also found 
that respondent ESS's HSP modem products literally infringe, 
contributorily infringe, and induce infringement of claims 1-3, 7, 8, 
and 11-15 of the `950 patent. The ALJ further found that the `950 
patent is enforceable, not invalid, and that a domestic industry 
relating to complainant PCTEL's HSP modem products exists with respect 
to the `950 patent. Based on his findings concerning the `950 patent, 
the ALJ found that there is a violation of section 337.
    The ALJ also issued his recommended determination on remedy and 
bonding in the event that the Commission also finds a violation of 
section 337. He recommended issuance of a limited exclusion order 
covering the accused ESS modem semiconductors, software, and the 
downstream products of modem boards and motherboards, but not personal 
computers. He also recommended issuance of a cease and desist order, 
and a bond in the amount of 9 percent of the entered value of the 
accused HSP modem products during the Presidential review period.
    On October 31, 2001, complainant PCTEL, respondent ESS, and the 
Commission investigative attorney (``IA'') filed petitions for review 
of the final ID. On November 7, 2001, the IA filed a response to ESS's 
petition, and ESS filed a response to PCTEL's and the IA's petitions. 
On November 8, 2001, PCTEL filed an unopposed motion requesting a one-
day extension of time to file its response to ESS's petition for 
review, which motion was granted by the Chairman, along with its 
response to ESS's petition for review.
    On October 23, 2001, PCTEL filed a letter with the ALJ requesting 
reconsideration and supplementation of the ID to affirmatively include 
within the listed accused infringing products of ESS certain chipsets 
that the ALJ had not included in his ID or RD. On October 24, 2001, ESS 
filed a motion with the Commission to strike PCTEL's October 23 letter. 
The Commission has determined to consider PCTEL's October 23 letter as 
part of its petition for review and therefore denies ESS's motion to 
strike the letter.
    On November 2, 2001, PCTEL filed a motion with the Commission to 
supplement the record. On November 14, ESS filed an opposition to 
PCTEL's motion and the IA filed a response in support of the motion. On 
November 16, 2001, PCTEL filed a motion for leave to reply to ESS's 
response, and filed a reply. The Commission has determined to deny 
PCTEL's motion to supplement, and to deny PCTEL's motion to reply to 
ESS's response as moot.
    On November 29, 2001, the IA filed a motion with the Commission for 
an extension of time to submit briefs if the Commission determines to 
review the ID, and an extension of the target date from January 18, 
2002, to February 18, 2002.
    Having examined the ALJ's final ID, the petitions for review and 
the responses thereto, and the record of the investigation, the 
Commission has determined to review the following issues: Which 
chipsets of ESS are accused of infringement; the ALJ's construction of 
``the device occupies an I/O slot that corresponds to a first 
communications port'' and ``UART emulation'' claim limitations of claim 
1 the `305 patent and the resulting infringement and domestic industry 
findings; and the ALJ's construction of the ``selection logic'' and 
``interrupt'' limitations of the claims at issue of the `905 patent, 
and the resulting infringement and domestic industry findings. The 
Commission determined not to review the remainder of the final ID.
    On review, the Commission requests briefing based on the 
evidentiary record on all issues under review and is particularly 
interested in answers to the following questions, with all answers 
cited to the evidentiary record:
    1. As to the construction of ``the device occupies an I/O slot that 
corresponds to a first communications

[[Page 64060]]

port'' limitation of claim 1 the `305 patent:
    In Windows 95 and other later generation operating systems (``the 
Windows 95 operating systems''), is a standard, UART-based device 
always assigned to COM 1 through COM 4, and is a non-standard, non-UART 
device always assigned to COM 5 through COM 128?
    Describe in detail serial COM port usage and standard and non-
standard base address assignments in both the Windows 3.1 and Windows 
95 operating systems, and UART and non-UART COM port usage in the 
Windows 3.1 and Windows 95 operating systems.
    RX-520C states that MS-DOS supports ``128 logical names for 
addressing serial ports.'' Does MS-DOS therefore support 128 COM ports? 
How does this statement from RX-520C relate to the statement in the 
`305 patent that ``WINDOWS and MS-DOS support four communication or COM 
ports''? The `305 patent, col. 1, ll. 46-48.
    Under Federal Circuit case law, what is necessary to conclude that 
one of ordinary skill in the art would interpret the claim term 
``communications port'' in the light of Windows 95? Is being ``aware 
of'' the soon-to-be-released Windows 95 operating system sufficient? Is 
having ``access'' to an early set of documentation on how to develop 
software for the soon-to-be-released Windows 95 operating system 
sufficient?
    2. As to the construction of the ``UART emulation'' limitation of 
claim 1 of the `305 patent:
    What is the difference in ``UART emulation'' in the Windows 3.1 
operating systems vis-a-vis the Windows 95 operating systems?
    In the Windows 95 operating systems, does VCOMM expect UART data 
from all serial devices? Are the device drivers of non-UART devices in 
the Windows 95 operating systems required to simulate or ``emulate'' a 
UART response to VCOMM's data requests ?
    3. As to the construction of the ``interrupt'' limitation of the 
claims at issue of the `950 patent:
    Describe in detail PC power management on the ISA data bus vis-a-
vis the PCI data bus, and the operation of a PME signal on the PCI bus.
    Would the ``interrupt'' limitation of the claims at issue of the 
`950 patent be interpreted by one of ordinary skill in the art as 
applying only to the ISA bus? Or, in June of 1997, when the application 
that matured into the `950 patent was filed, would one of ordinary 
skill in the art also interpret the ``interrupt'' signal of the `950 
patent as a PME signal on the PCI bus?
    4. As to the construction of the ``selection logic'' limitation of 
the claims at issue of the `950 patent:
    Is the claimed interrupt-switching ``selection logic'' of the 
claims at issue of the `950 patent mutually exclusive between modes?
    Under a proper construction of ``selection logic,'' does the 
``selection logic'' select or switch between interrupt sources, and 
output that selection onto a single interrupt signal line?
    5. As to the infringement of the `305 patent:
    Provide a detailed description of how the accused ESS HSP modems 
operate in the Windows 95 operating systems. How do the accused ESS HSP 
modems use VCOMM and modem.sys? Do the Windows 95 operating systems 
expect UART data from the accused ESS HSP modems?
    6. As to the infringement of the `950 patent:
    Describe the wake and sleep cycles of an ESS modem and the attached 
PC system. How do the ESS HSP modems block interrupts from an inactive 
modem, and then select the ring signal as an interrupt? Does the 
interrupt switching mechanism of the ESS HSP modems select from 
different interrupt sources for output onto a single interrupt signal 
line?
    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 action 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 likely to do so. For background, see 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 remedy, the public interest, and bonding. 
Such submissions should address the October 18, 2001, 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. Responses to the 
above questions, written submissions on remedy, the public interest, 
and bonding, and proposed remedial orders must be filed no later than 
close of business on January 10, 2002. Reply submissions must be filed 
no later than the close of business on January 17, 2002. 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 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 Sec. 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.

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    The authority for the Commission's action is contained in section 
337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337), and in 
Secs. 210.42, 210.43, 210.45, 210.46, and 210.50 of the Commission's 
rules of practice and procedure (19 CFR 210.42, 210.43, 210.45, 210.46, 
and 210.50).

    Issued: December 5, 2001

    By order of the Commission.
Donna R. Koehnke,
Secretary.
[FR Doc. 01-30506 Filed 12-10-01; 8:45 am]
BILLING CODE 7020-02-P