[Federal Register Volume 70, Number 141 (Monday, July 25, 2005)]
[Notices]
[Pages 42589-42591]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 05-14561]


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INTERNATIONAL TRADE COMMISSION

[Inv. No. 337-TA-506]


In the Matter of Certain Optical Disk Controller Chips and 
Chipsets and Products Containing Same, Including DVD Players and PC 
Optical Storage Devices; Notice of Commission Decision To Review 
Portions of an Initial Determination Finding A 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 certain portions of a final initial 
determination (``ID'') of the presiding administrative law judge 
(``ALJ'') finding a violation of section 337 of the Tariff Act of 1930, 
as amended, in the above-captioned investigation.

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 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-ON-LINE) 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 April 14, 2004, based on a complaint filed on behalf of Zoran 
Corporation and Oak Technology, Inc. both of Sunnyvale, CA 
(collectively ``complainants''). 69 FR 19876. 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 optical disk controller chips and chipsets and products 
containing same, including DVD players and PC optical storage devices, 
by reason of infringement of claims 1-12 of U.S. Patent No. 6,466,736 
(the '736 patent), claims 1-3 of U.S. Patent No. 6,584,527, and claims 
1-35 of U.S. Patent No. 6,546,440 (the '440 patent). Id.
    The notice of investigation identified 12 respondents. 69 FR 19876. 
On June 7, 2004, the ALJ issued an ID (Order No. 5) terminating the 
investigation as to two respondents on the basis of a consent order and 
settlement agreement. On June 22, 2004, the ALJ issued an ID (Order No. 
7) granting complainants' motion to amend the complaint and notice of 
investigation to add nine additional respondents. Those IDs were not 
reviewed by the Commission.
    On December 22, 2004, the ALJ issued an ID (Order No. 33) granting 
complainants' motion to terminate the investigation in part with 
respect to claims 2-6, 8-10, and 11 of the '736 patent and claims 2-4, 
6, 9, 11, 12, 15-18, 20, 22-34, and 35 of the '440 patent. On January 
28, 2005, the ALJ issued an ID (Order No. 37) granting complainants' 
motion to terminate the investigation in part with respect to claim 12 
of the '736 patent. Neither ID was reviewed by the Commission. The 
claims remaining in issue are claims 1 and 7 of the '736 patent; claims 
1, 5, 7, 8, 10, 13, 14, 19, and 21 of the '440 patent; and claims 1, 2, 
and 3 of the '527 patent.
    An eight-day evidentiary hearing was held on February 7-12, and 14-
15, 2005.
    On May 16, 2005, the ALJ issued his final ID, findings of fact and 
conclusions of law, and recommended determination on remedy and 
bonding. The ALJ concluded that there was a violation of section 337 
based on his findings that (a) The accused products infringe claim 3 of 
the '527 patent, (b) the '527 patent is not unenforceable, (c) claim 3 
is not invalid, and (d) complainants have satisfied the domestic 
industry requirement with respect to the '527 patent. Although the ALJ 
found that the other asserted claims of the '527 patent (claims 1 and 
2) are not invalid, he found that the accused products do not infringe 
those claims. The ALJ found no violation with respect to the other 
patents in issue. He found that the accused products do not infringe 
any asserted claim of the '440 or '736 patents and that complainants 
have not satisfied the domestic industry requirement with respect to 
those patents. He also found that the asserted claims of the '440 and 
'736 patents are not invalid and that those patents are not 
unenforceable.
    On May 27, 2005, complainants and respondents each petitioned for 
review of portions of the final ID. On June 6, 2005, complainants, 
respondents, and the IA filed responses to the petitions for review.
    Having examined the record in this investigation, including the ID, 
the petitions for review, and the responses thereto, the Commission has 
determined (1) to review the ID's findings of fact and conclusions of 
law with respect to the '527 and '440 patents and (2) not to review the 
ID's findings of fact and conclusions of law with respect to the '736 
patent. Thus, the Commission finds no violation of section 337 with 
respect to the '736 patent. The Commission has further determined to 
review and modify the ID to clarify that respondents accused only of 
infringing asserted claims of the '736 patent (viz., respondents 
Audiovox Corporation; Initial Technology, Inc.; Mintek Digital, Inc.; 
Shinco International AV Co., Ltd.; Changzhou Shinco Digital Technology 
Co., Ltd.; Jiangsu Shinco Electronic Group Co., Ltd.; Terapin 
Technology Pte., Ltd. [formerly known as Teraoptix d/b/a Terapin 
Technology] of Singapore; and Terapin Technology U.S. [formerly also 
known as Teraoptix]) are not in violation of Section 337.
    In connection with its review, the Commission is particularly 
interested in responses to the following questions, with all answers 
supported by citations to legal authority and the evidentiary record:
    1. Have respondents waived the argument that the '527 and '440 
patents are invalid under 35 U.S.C. 102(f) for nonjoinder of 
unidentified ``Western Digital engineers'' as co-inventors by failing 
to present it to the ALJ? (See respondents' petition for review at 51.) 
Identify with citations to previous briefing where this specific 
argument

[[Page 42590]]

and any supporting evidence was presented to the ALJ.
    2. May a patent be held invalid for nonjoinder of an unidentified 
co-inventor under 35 U.S.C. 102(f)? If so, did respondents present to 
the ALJ the required clear and convincing evidence to support a prima 
facie case? In addition to supporting your answer with citations to the 
evidentiary record and legal authority, address Gemstar v. Int'l Trade 
Comm'n, 383 F.3d 1352, 1382-83 (Fed. Cir. 2004), and Solomon v. 
Kimberly-Clark Corp., 216 F.3d 1372, 1381-82 (Fed. Cir. 2000).
    3. The following questions relate to claim construction. In your 
answers, identify any finding of fact or conclusion of law with respect 
to infringement, the technical prong of the domestic industry 
requirement, unenforceability, or invalidity in the ID rendered clearly 
erroneous or legally erroneous under your proposed claim 
interpretation. Provide supporting citations to the record.
    (a) What is the impact, if any, of the July 12, 2005, en banc 
decision of the U.S. Court of Appeals for the Federal Circuit in 
Phillips v. AWH Corporation on the ID's construction of the asserted 
claims of the `527 and `440 patents?
    (b) Did respondents waive their argument that the host interface 
limitations of the asserted claims should be construed to require 
support for eight ATA command block registers plus a separate multi-
byte command buffer at the same time by failing to raise this argument 
before the ALJ? Identify where this specific argument was presented to 
the ALJ with citations to previous briefing.
    (c) Assume that the description of the digital signal processor 
interface in the summary of the invention section of the `527 patent 
(e.g., `527 patent, col. 3, ll. 15-28) is understood as a description 
of the ``storage medium interface'' (claims 1 and 2 of the `527 
patent). Does the summary of the invention section (`527 patent, col. 
3, ll. 20-28) demonstrate a clear intention to limit the scope of the 
data error detection and correction circuitry limitations of claims 1 
and 2? Why, or why not? In your answer, address the following claim 
language: ``data error detection and correction circuitry including * * 
* error correction circuitry for performing error correction on data 
received from said interface'' (claim 1) and ``data error detection and 
correction circuitry coupled to said storage medium interface'' (claim 
2).
    (d) How should the terms ``controller'' and ``directly'' be 
construed?
    4. Have respondents waived their argument that the ALJ erred in 
failing to make a determination concerning the date of actual reduction 
to practice of the HISIDE product by failing to raise that argument 
before him? (See respondents' petition for review at 112-13: ``There is 
no initial determination of the date of reduction to practice for any 
claim of the `440 and `527 patents and there is no initial 
determination of the date of actual reduction to practice of [Western 
Digital's] HISIDE product that Respondents showed anticipates the 
claims of the `440 and `527 patent [sic].'') Identify with citations to 
previous briefing where this specific argument and any supporting 
evidence was presented to the ALJ.
    5. Did the ALJ err in omitting the MT1189 from the list of MediaTek 
OSC chips accused of infringing the asserted claims of the `440 and 
`527 patents (ID at 110) or err in including the MT1528, MT1558, or 
MT1668 in that list? Why or why not? Identify with specificity evidence 
in the record that would support a finding that the MT1189, MT1528, 
MT1558, or MT1668 infringe any asserted claim of the `527 or `440 
patents.
    6. Should the asserted claims of the `440 and `527 patents be 
accorded the conception date found by the Commission in the 409 
investigation for the claims of the `715 patent? Why or why not? In 
your answer, address any relevant admission(s) by respondents. (See ID 
at 129 n.45.)
    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 May 16, 2005, 
recommended determination on remedy and bonding. Complainants and the 
Commission investigative attorney are also requested to submit proposed 
remedial orders for the Commission's consideration. Complainants are 
requested to supply the expiration dates of the patents at issue and 
the HTSUS numbers under which the accused products are imported. The 
written submissions and proposed remedial orders must be filed no later 
than the close of business on August 1, 2005. Reply submissions must be 
filed no later than the close of business on August 8, 2005. 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 12 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

[[Page 42591]]

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 Sec.  
210.42-.46 of the Commission's Rules of Practice and Procedure (19 CFR 
210.42-.46).

    By order of the Commission.

    Issued: July 19, 2005.
Marilyn R. Abbott,
Secretary to the Commission.
[FR Doc. 05-14561 Filed 7-22-05; 8:45 am]
BILLING CODE 7020-02-P