[Federal Register Volume 70, Number 31 (Wednesday, February 16, 2005)]
[Notices]
[Pages 7966-7967]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 05-2972]


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INTERNATIONAL TRADE COMMISSION

[Inv. No. 337-TA-499]


In the Matter of Certain Audio Digital-to-Analog Converters and 
Products Containing Same; Termination of the Investigation; Issuance of 
Limited Exclusion Order

AGENCY: International Trade Commission.

ACTION: Notice.

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SUMMARY: Notice is hereby given that the U.S. International Trade 
Commission has terminated the above-captioned investigation and has 
issued a limited exclusion order.

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 
version of the ID and all 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

[[Page 7967]]

viewed on the Commission's electronic docket (EDIS) at http://edis.usitc.gov.

SUPPLEMENTARY INFORMATION: The Commission instituted this investigation 
on November 14, 2003, based on a complaint filed on behalf of Cirrus 
Logic, Inc. of Austin, TX (``Cirrus''). 68 FR 64641 (Nov. 14, 2003). 
The complaint, as supplemented, alleged violations of section 337 in 
the importation into the United States, sale for importation, and sale 
within the United States after importation of certain audio digital-to-
analog converters and products containing same by reason of 
infringement of claims 1 and 11 of U.S. Patent No. 6,492,928 (``the 
'928 patent''). The notice of investigation named Wolfson 
Microelectronics, PLC of Edinburgh, United Kingdom; and Wolfson 
Microelectronics, Inc. of San Diego, CA (collectively ``Wolfson'') as 
respondents.
    On December 29, 2003, the ALJ issued an ID (Order No. 5) granting 
complainant's motion to amend the complaint and notice of investigation 
to add allegations of infringement of claims 2, 3, 5, 6, and 15 of the 
'928 patent, and of claims 9, 12, and 19 of U.S. Patent No. 6,011,501 
(``the '501 patent''). 69 FR 4177 (Jan. 28, 2004). On July 1, 2004, the 
ALJ issued an ID (Order No. 16) granting complainant's motion to 
terminate the investigation as to claims 1 and 2 of the '928 patent. On 
July 27, 2004, the ALJ issued an ID (Order No. 24) granting 
complainant's motion to terminate the investigation in part as to claim 
11 of the '928 patent. Order Nos. 5, 16, and 24 were not reviewed by 
the Commission.
    The ALJ held an evidentiary hearing in the investigation from 
August 3, 2004, to August 11, 2004, and on November 15, 2004, he issued 
his final ID finding a violation of section 337 based on his findings 
that the asserted claims of the '501 patent are infringed, that they 
are not invalid in view of any prior art, and that claims 9 and 12 of 
the '501 patent are not invalid because of failure to provide an 
enabling written description of the claimed invention. The ALJ found 
the '928 patent to be unenforceable because the inventors intentionally 
withheld highly material prior art from the examiner during the 
prosecution of the '928 patent application at the United States Patent 
and Trademark Office (``USPTO''). As an independent ground for 
unenforceability, the ALJ found that the '928 patent is unenforceable 
because one person was mistakenly listed on the patent as an inventor. 
The ALJ found that the accused devices infringe the asserted claims of 
the '928 patent, if enforceable, that the asserted claims of the '928 
patent are not invalid in view of any prior art, or because of a 
failure to provide an enabling written description of the claimed 
invention, or for failure to disclose the best mode.
    On November 23, 2004, the USPTO issued a certificate correcting the 
inventorship of the '928 patent thereby curing one ground for 
unenforceability of that patent. See Viskase Corp. v. American National 
Can Co., 261 F.3d 1316, 1329 (Fed. Cir. 2001) (``Absent fraud or 
deceptive intent, the correction of inventorship does not affect the 
validity or enforceability of the patent for the period before the 
correction.''). On November 30, 2004, Cirrus, Wolfson and the 
Commission's investigative attorney filed petitions for review of the 
final ID, and on December 7, 2004, all parties filed responses. On 
December 30, 2004, the Commission determined to review and reverse the 
ID's finding that the '928 patent is unenforceable due to incorrect 
inventorship in view of the recently issued certificate of correction 
by the USPTO. 70 FR 1275 (Jan. 6, 2005). It further determined not to 
review the remainder of the ID, thereby finding a violation of section 
337. Id. The Commission invited the parties to file written submissions 
on remedy, the public interest and bonding, and provided a schedule for 
filing such submissions. Id.
    Having reviewed the record in this investigation, including the 
parties' written submissions and responses thereto, the Commission 
determined that the appropriate form of relief is a limited exclusion 
order prohibiting the importation of Wolfson's accused audio digital-
to-analog converters that infringe claims 9, 12 and 19 of the '501 
patent. The limited exclusion order applies to any of the affiliated 
companies, parents, subsidiaries, licensees, contractors, or other 
related business entities, or their successors or assigns, of Wolfson. 
The Commission further determined that the statutory public interest 
factors enumerated in section 337(d)(1), 19 U.S.C. 1337(d)(1), do not 
preclude issuance of the limited exclusion order. Finally, the 
Commission determined that the bond under the limited exclusion order 
during the Presidential review period shall be in the amount of 5 
percent of the entered value of the imported articles. The Commission's 
order and opinion in support thereof were delivered to the President on 
the day of their issuance.
    The authority for the Commission's determinations is contained in 
section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337), and 
in section 210.50 of the Commission's Rules of Practice and Procedure 
(19 CFR 210.50).

    Issued: February 11, 2005.

    By order of the Commission.
Marilyn R. Abbott,
Secretary to the Commission.
[FR Doc. 05-2972 Filed 2-15-05; 8:45 am]
BILLING CODE 7020-02-P