[Federal Register Volume 70, Number 190 (Monday, October 3, 2005)]
[Notices]
[Pages 57620-57621]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 05-19703]


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INTERNATIONAL TRADE COMMISSION

[Inv. No. 337-TA-506]


Certain Optical Disk Controller Chips and Chipsets and Products 
Containing Same, Including DVD Players and PC Optical Storage Devices; 
Notice of Final Determination; Issuance of Limited Exclusion Order and 
Cease and Desist Orders; Termination of Investigation

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 found a violation of section 337 of the Tariff Act of 
1930 (19 U.S.C. 337) based on the infringement of one asserted claim of 
one asserted patent and has issued a limited exclusion order and cease 
and desist orders 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 
Commission orders, the Commission opinion in support thereof, 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 (the '527 
patent), 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. Thus, at 
the time that Order No. 37 issued, the claims remaining for 
determination on the merits were 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 
of the '527 patent 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

[[Page 57621]]

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.
    On July 19, 2005, the Commission determined to review the ID in 
part. 70 FR 42589-91. Specifically, the Commission determined to review 
the ID's findings of fact and conclusions of law with respect to the 
'527 and '440 patents. Id. The Commission determined not to review the 
ID's findings of fact and conclusions of law with respect to the '736 
patent, thereby adopting them. Id. Accordingly, the Commission found no 
violation of section 337 with respect to the '736 patent. Id. The 
Commission also determined to review and modify the ID to clarify that 
respondents accused of infringing only the 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. Id.
    In its notice of review, the Commission invited the parties to file 
written submissions on the issues under review, posed briefing 
questions for the parties to answer, and invited interested persons to 
file written submissions on the issues of remedy, the public interest, 
and bonding. Id.
    All parties filed initial submissions on August 1, 2005. Also on 
August 1, 2005, respondents filed a letter requesting clarification of 
the scope of briefing question 3(a) in the Commission's notice of 
review, and permission to brief new issues not previously raised. On 
August 8, 2005, all parties filed reply submissions.
    The Commission has determined to deny respondents' August 1, 2005, 
letter request for permission to brief new issues that were not 
previously raised, and respondents' August 8, 2005, request under 19 
CFR 210.45(a).
    Having examined the record in this investigation, including the 
submissions and responses thereto, the Commission has determined that 
there is a violation of section 337 as to claim 3 of the '527 patent, 
but no violation of the statute as to the remaining claims in issue of 
the '527 patent (viz., claims 1 and 2) and no violation as to the 
claims in issue of the '440 patent (viz., claims 1, 5, 7, 8, 10, 13, 
14, 19, and 21).
    The Commission has determined that respondents waived their 
arguments (1) that the asserted claims are invalid under 35 U.S.C. 
102(f) for non-joinder of Western Digital engineers other than Shishir 
Shah and (2) concerning the respective dates of reduction to practice 
for Western Digital's HISIDE chip and the claims of the '440 and '527 
patents.
    The Commission has determined to adopt the ID with the following 
modifications and exceptions. The Commission has determined to modify 
the ID's construction of ``controller'' to reflect that, although the 
limitation ``optical drive controller'' means ``a device or group of 
devices to control data communications between a host computer and the 
optical disk drive electronics' (ID at 80), configurations wherein a 
``controller requires a translator card or other intervening circuitry 
between the controller and the IDE bus to translate or manipulate 
command data'' were disclaimed during prosecution. The Commission has 
determined to affirm the balance of the ID's claim construction.
    The Commission has determined to vacate the ID's finding that there 
is a conception date of the asserted claims of the '527 and '440 
patents at least by April 21, 1993, (see ID at 129 n.45, 142), and has 
further determined to vacate the statement (ID at 142) that expressly 
relies on the April 21, 1993, conception date to make an alternate 
finding, viz., ``[e]ven assuming that conception of a transport 
mechanism that attached a CD-ROM drive to an IDE/ATA bus was relevant, 
there is no contemporaneous documentation showing conception in 
December 1992 or a conception even before the April 1993 conception of 
the claimed inventions in issue.''
    The Commission has determined to vacate the ALJ's infringement 
findings with respect to the MT1528, MT1558, and MT1668 because the 
record does not support such findings.
    The Commission has determined to clarify that complainants met the 
economic prong of the domestic industry requirement based on 
``substantial investment'' in ``engineering, research and 
development,'' rather than through licensing. The Commission has also 
determined to correct certain typographical errors on pages 75-76, 129, 
and 156 of the ID.
    The Commission also made determinations on the issues of remedy, 
the public interest, and bonding. The Commission determined that the 
appropriate form of relief is a limited exclusion order prohibiting the 
unlicensed entry of chips or chipsets covered by claim 3 of U.S. Patent 
No. 6,584,527 manufactured abroad or imported by or on behalf of 
Mediatek, Inc. of Hsin-Chu City, Taiwan, and optical storage devices 
containing such covered chips or chipsets that are manufactured abroad 
or imported by or on behalf of Artronix Technology, Inc. of Brea, CA; 
ASUSTek Computer, Inc. of Taipei, Taiwan; ASUS Computer International 
of Fremont, CA; MSI Computer Corporation of City of Industry, CA; TEAC 
America Inc. of Montebello, CA; EPO Science and Technology, Inc. of 
Taipei, Taiwan; LITE-ON Information Technology Corp. of Taipei, Taiwan; 
Micro-Star International Co., Ltd. of Taipei Hsien, Taiwan; TEAC Corp. 
of Tokyo, Japan; or Ultima Electronics Corp. of Taipei Hsien, Taiwan. 
The Commission has also determined to issue cease and desist orders 
directed to Artronix Technology, Inc.; ASUSTek Computer, Inc.; ASUS 
Computer International; MSI Computer Corporation; TEAC America Inc.; 
EPO Science and Technology, Inc.; and LITE-ON Information Technology 
Corp.
    The Commission also determined that the public interest factors 
enumerated in 19 U.S.C. 1337(d) and (f) do not preclude issuance of the 
remedial orders, and that the bond during the Presidential period of 
review shall be set at 100 percent of the entered value for any covered 
chips or chipsets and $4.43 per unit for any optical storage device 
containing covered chips or chipsets.
    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 Sec. Sec.  210.45-210.51 of the Commission's Rules of Practice and 
Procedure (19 CFR 210.45-210.51).

    Issued: September 28, 2005.

    By order of the Commission.
Marilyn R. Abbott,
Secretary to the Commission.
[FR Doc. 05-19703 Filed 9-30-05; 8:45 am]
BILLING CODE 7020-02-P