[Federal Register Volume 68, Number 241 (Tuesday, December 16, 2003)]
[Notices]
[Pages 70036-70037]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 03-30970]


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INTERNATIONAL TRADE COMMISSION

[Inv. No. 337-TA-474]


Certain Recordable Compact Discs and Rewritable Compact Discs; 
Notice of Commission Decision To Review Portions of an Initial 
Determination Finding No Violation of Section 337 of the Tariff Act of 
1930

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 portions of the presiding 
administrative law judge's (``ALJ's'') final initial determination 
(``ID'') and to affirm ALJ Order No. 32.

FOR FURTHER INFORMATION CONTACT: Clara Kuehn, Esq., Office of the 
General Counsel, U.S. International Trade Commission, 500 E Street, 
SW., Washington, DC 20436, telephone (202) 205-3012. Copies of the 
public version of the ALJ's final 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. 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) at http://edis.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 July 26, 2002, based on a complaint filed by U.S. Philips 
Corporation of Tarrytown, NY (``Philips'' or ``complainant''). 67 FR 
48,948 (2002). The complaint, as supplemented, alleged violations of 
section 337 of the Tariff Act of 1930 in the importation into the 
United States, the sale for importation, and the sale within the United 
States after importation of certain recordable compact discs and 
rewritable compact discs by reason of infringement of certain claims of 
six U.S. patents: claims 1, 5, and 6 of U.S. Patent No. 4,807,209; 
claim 11 of U.S. Patent No. 4,962,493; claims 1, 2, and 3 of U.S. 
Patent No. 4,972,401; claims 1, 3, and 4 of U.S. Patent No. 5,023,856; 
claims 1-5, and 6 of U.S. Patent No. 4,999,825; and claims 20, 23-33, 
and 34 of U.S. Patent No. 5,418,764. 67 FR 48,948 (2002).
    The notice of investigation named 19 respondents, including 
GigaStorage Corporation Taiwan of Hsinchu, Taiwan; GigaStorage 
Corporation USA of Livermore, California (collectively, 
``GigaStorage''); and Linberg Enterprise Inc. (``Linberg'') of West 
Orange, New Jersey. 67 FR 48,948 (2002). On August 14, 2002, the ALJ 
issued an ID (Order No. 2) granting a motion to intervene as 
respondents by Princo Corporation of Hsin-Chu, Taiwan, and Princo 
America Corporation of Fremont, California (collectively, ``Princo''). 
That ID was not reviewed by the Commission. GigaStorage, Linberg, and 
Princo (``respondents'') are the only remaining active respondents in 
this investigation. See ALJ Order No. 6 (an unreviewed ID terminating 
eight respondents on the basis of a consent order); ALJ Order No. 17 
(an unreviewed ID terminating each of three respondents on the basis of 
a consent order and settlement agreement); ALJ Order No. 18 (an 
unreviewed ID terminating one respondent on the basis of a consent 
order and settlement agreement); and ALJ Order No. 21 (an unreviewed ID 
finding four respondents in default).
    On April 7, 2003, the ALJ issued an ID (ALJ Order No. 20) granting 
complainant's unopposed motion for summary determination that Linberg, 
GigaStorage, and Princo have each sold for importation, imported, and/
or sold after importation products accused of infringing one or more of 
the asserted patent claims. That ID was not reviewed by the Commission.
    A tutorial session was held on June 3, 2003, and an evidentiary 
hearing was held from June 10, 2003, through June 20, 2003.
    On June 30, 2003, the ALJ issued an order (ALJ Order No. 32) 
granting a motion in limine filed by respondents to preclude 
complainant from asserting the doctrine of unclean hands with respect 
to respondents' affirmative defense of patent misuse.
    The ALJ issued his final ID on October 24, 2003. Although he found 
that none of the asserted claims are invalid, that the accused products 
infringe the asserted claims, and that the domestic industry 
requirement of section 337 has been satisfied, he found no violation of 
section 337 because he concluded that all of the asserted patents are 
unenforceable by reason of patent misuse.
    On November 5, 2003, complainant Philips petitioned for review of 
the portion of the final ID that found the asserted patents 
unenforceable due to patent misuse, and also appealed ALJ Order No. 32. 
On the same day, respondents filed a paper entitled ``Statement of 
Respondents Princo Corp., Princo America Corp., Gigastorage Corp. 
Taiwan, Gigastorage Corp. USA, and Linberg Enterprises, Inc. Regarding 
the Initial Determination,'' in which respondents urged the Commission 
to adopt the ID in its entirety. Respondents and the IA filed responses 
to complainant's petition for review.
    On December 8, 2003, the ALJ issued his recommended determination 
on remedy and bonding.
    Having reviewed the record in this investigation, including the 
parties' written submissions, the Commission determined to affirm ALJ 
Order No. 32 and to review the ID's findings of fact and conclusions of 
law concerning patent misuse. The Commission has

[[Page 70037]]

determined not to review the remainder of the ID, including the 
findings of fact and conclusions on the issues of infringement and 
invalidity of the asserted claims and 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, In the Matter of Certain 
Devices for Connecting Computers via Telephone Lines, Inv. No. 337-TA-
360.
    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 submission 
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 ALJ's December 8, 2003, 
recommended determination 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 
the close of business on January 9, 2004. Reply submissions must be 
filed no later than the close of business on January 16, 2004. 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 CFR 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, as amended (19 U.S.C. 1337), and in sections 
210.42-.45 of the Commission's Rules of Practice and Procedure (19 CFR 
210.42-.45).

    By order of the Commission.

    Issued: December 10, 2003.
Marilyn R. Abbott,
Secretary.
[FR Doc. 03-30970 Filed 12-15-03; 8:45 am]
BILLING CODE 7020-02-P