[Federal Register Volume 70, Number 87 (Friday, May 6, 2005)]
[Notices]
[Pages 24117-24118]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 05-9133]


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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; Notice of Commission Determination To Rescind 
a Limited Exclusion Order

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 rescind the limited exclusion order 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 non-
confidential 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) 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. Orders 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 on which the 
Commission had found the patent unenforceable. 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 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.
    On February 16, 2005, the Commission determined that the 
appropriate form of relief is a limited exclusion order prohibiting the 
importation of Wolfson's 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.
    Complainants Cirrus and respondents Wolfson report that they have 
now settled all outstanding patent disputes and related actions. 
Accordingly, on April 4, 2005, pursuant to Commission rule 
210.76(a)(1), Cirrus and Wolfson filed a joint petition for rescission 
of the limited exclusion order issued in the investigation.
    Having reviewed the parties' submissions, the Commission has 
determined that the settlement agreement satisfies the requirement of 
Commission rule 210.76(a)(1), 19 CFR 210.76(a)(1), for changed 
conditions of fact or law. The Commission therefore has issued an order 
rescinding the limited exclusion order previously issued in this 
investigation.
    This action is taken under the authority of section 337 of the 
Tariff Act of 1930 (19 U.S.C. 1337) and section

[[Page 24118]]

210.76(a)(1) of the Commission's Rules of Practice and Procedure (19 
CFR 210.76(a)(1)).

    By order of the Commission.

    Issued: May 3, 2005.
Marilyn R. Abbott,
Secretary to the Commission.
[FR Doc. 05-9133 Filed 5-5-05; 8:45 am]
BILLING CODE 7020-02-P