[Federal Register Volume 70, Number 245 (Thursday, December 22, 2005)]
[Notices]
[Pages 76074-76076]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E5-7714]


-----------------------------------------------------------------------

INTERNATIONAL TRADE COMMISSION

[Inv. No. 337-TA-523 ]


Certain Optical Disk Controller Chips and Chipsets and Products 
Containing Same, Including DVD Players and PC Optical Storage Devices 
II; Notice of Commission Decision To Review Portions of an Initial 
Determination Finding No Violation of Section 337 of the Tariff Act of 
1930; Grant of Motion To File Corrected Petition for Review; Denial of 
Motion To File Reply Brief; Extension of Target Date for Completion of 
Investigation

AGENCY: U.S. International Trade Commission.

ACTION: Notice.

-----------------------------------------------------------------------

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 no violation of section 337 of the Tariff Act of 
1930, as amended, in the above-captioned investigation. The Commission 
has also granted a motion for leave to file a corrected petition, 
denied a motion for leave to file a reply brief, and has extended the 
target date for completion of the investigation by 30 days, i.e., until 
March 1, 2006.

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 August 31, 2004, based on a complaint filed on behalf of MediaTek 
Corporation (``complainant'') of Hsin-Chu City, Taiwan. 69 FR 53089 
(Aug. 31, 2004). 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 optical disk controller chips and chipsets by reason of 
infringement of claims 1, 3-6, 8-9, and 10 of U.S. Patent No. 5,970,031 
(``the `031 patent'') and claims 1-4 of U.S. Patent No. 6,229,773 
(``the `773 patent''). Id. The notice of investigation named two 
respondents: Zoran Corporation (``Zoran'') of Sunnyvale, CA and Oak 
Technology, Inc. (``Oak'') of Sunnyvale, CA. Id.
    On October 7, 2004, the ALJ issued an ID (Order No. 5) granting 
complainant's motion to amend the complaint and notice of investigation 
to add Sunext Technology Co., Ltd. (``Sunext'') of Hsin-Chu City, 
Taiwan, as a respondent and to add another patent, viz., claims 1-2, 5-
6, 15-19, 21, and 22 of U.S. Patent No. 6,170,043 (``the `043 patent'') 
to the scope of the investigation. 69 FR 64588. That ID was not 
reviewed by the Commission. Id.
    A tutorial was held on June 24, 2005, and an eight-day evidentiary 
hearing was held from June 27, 2005, through July 7, 2005.
    On September 30, 2005, the ALJ issued his final ID and recommended 
determination on remedy and bonding. The ALJ concluded that there was 
no violation of section 337. Although he found that respondent Oak 
infringes claims 1, 2, and 3 of the `773 patent, he found that those 
claims are invalid as anticipated by Japanese patent application number 
08-015834 (RX-518) (``the Okuda prior art reference''). He found no 
infringement of claim 4 of the `773 patent, and no infringement of any 
asserted claim of the `031 or `043 patents. The ALJ concluded that the

[[Page 76075]]

asserted claims of the `031 patent are invalid for lack of enablement, 
the asserted claims of the `043 patent are not invalid, and the 
asserted claims of the `043 patent are not unenforceable. He also found 
that complainants did not establish the technical or economic prong of 
the domestic industry requirement for any of the three patents in 
issue.
    On October 12, 2005, complainant MediaTek, the Commission 
investigative attorney (``IA''), respondent Sunext, and respondents Oak 
and Zoran petitioned for review of portions of the final ID. On October 
14, 2005, complainant MediaTek moved for leave to file a corrected 
petition with attached petition. Also on October 14, 2005, respondents 
Zoran and Oak filed a letter requesting a two-day extension of time for 
filing their response in the event that the Commission accepted 
MediaTek's corrected petition. On October 18, 2005, the Chairman 
granted respondents' October 14, 2005, request for a two-day extension, 
and extended the due date for all responses to all petitions for review 
by two days, or until Friday, October 21, 2005.
    On October 21, 2005, all parties filed responses to the petitions 
for review.
    On November 17, 2005, complainant MediaTek filed a motion for leave 
to reply in support of its petition for review with an attached reply. 
On November 18, 2005, respondent Sunext filed an opposition to 
MediaTek's motion, and on November 21, 2005, respondents Zoran and Oak 
filed an opposition to MediaTek's motion. On November 22, 2005, 
MediaTek filed a response to Sunext's opposition. On November 23, 2005, 
the IA filed a response opposing MediaTek's motion, and on December 5, 
2005, MediaTek filed a reply to the IA's response.
    The Commission has granted complainant MediaTek's October 14, 2005, 
motion for leave to file a corrected petition, and denied complainant 
MediaTek's November 17, 2005, motion for leave to file a reply in 
support of its petition for review.
    Having examined the record in this investigation, including the ID, 
the petitions for review, and the responses thereto, the Commission has 
determined to review the ID in part:
    (1) The Commission has determined to review the ALJ's analysis of 
the technical and economic prongs of the domestic industry requirement 
in its entirety.
    (2) With respect to the `773 patent, the Commission has determined 
to review the following portions of the ALJ's infringement analysis: 
(a) The findings and analysis under the doctrine of equivalents 
concerning the SC series chips relating to the ``radio frequency (RF) 
amplifier chip'' limitation of claims 1 and 3 of the `773 patent (ID at 
89-93, 97); (b) the finding that Sunext's reference designs 
incorporating the SC series controller chips do not infringe claim 4 
under the doctrine of equivalents (ID at 99-100); (c) the finding that 
the ``working optical drives'' of Sunext's customers that incorporate 
the accused OTI-9510 and SC series controller chips infringe claims 1-3 
of the `773 patent (ID at 79, 89,100); and (d) the finding that Sunext 
does not indirectly infringe the asserted claims of the `773 patent (ID 
at 102-04). As to invalidity, the Commission has determined to review 
the ALJ's finding that the Okuda reference anticipates claims 1, 2, and 
3 of the `773 patent (ID at 104-06), and his conclusion that 
respondents failed to establish that claims 1, 2, or 3 of the `773 
patent are made obvious by certain prior art (ID at 109-111).
    (3) With respect to the `043 patent, the Commission has determined 
to review the ALJ's finding that PCT Publication No. W097/38367 
(Hagiwara) does not anticipate claims 15, 16, 17, 19, 21, or 22 of the 
`043 patent. The Commission has also determined to review portions of 
the ALJ's determination that the `043 patent is not unenforceable for 
inequitable conduct before the PTO, specifically sections X.E.1 and 
X.E.2 of the ID (ID at 154-56).
    The Commission has determined not to review the remainder of the 
ID.
    On review, the Commission requests briefing based on the 
evidentiary record on all issues under review. Specific briefing 
questions that refer to confidential business information under the 
protective order issued in this investigation have been provided to the 
parties.
    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 September 30, 2005, 
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. Complainant is 
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 January 9, 2006. Reply submissions must 
be filed no later than the close of business on January 16, 2006. No 
further submissions will be permitted unless otherwise ordered by the 
Commission.

[[Page 76076]]

    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 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.
    The Commission has extended the target date for completion of this 
investigation by 30 days, i.e., until March 1, 2006.
    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-.46 and section 210.51 of the Commission's Rules of Practice and 
Procedure (19 CFR 210.42-.46, 51).

    Issued: December 16, 2005.

    By order of the Commission.
Marilyn R. Abbott,
Secretary to the Commission.
 [FR Doc. E5-7714 Filed 12-21-05; 8:45 am]
BILLING CODE 7020-02-P