[Federal Register Volume 71, Number 65 (Wednesday, April 5, 2006)]
[Notices]
[Pages 17136-17138]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E6-4935]


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INTERNATIONAL TRADE COMMISSION

[Inv. No. 337-TA-523]


In the Matter of Certain Optical Disk Controller Chips, and 
Chipsets and Products Containing, Same, Including Dvd Players and Pc 
Optical, Storage Devices II; Notice of Commission Decisions: To Grant 
Joint Motions To Terminate the Investigation as to All Respondents on 
the Basis of Settlement Agreements; To Grant-in-Part and Deny-in-Part 
Requests To Vacate a Final Initial Determination; To Grant a Motion for 
Leave To File Corrected Versions of a Joint Motion To Terminate; To 
Deny Motions for Leave To File Reply; To Deny a Petition for 
Reconsideration

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 grant joint motions to terminate the 
above-captioned investigation as to all respondents on the basis of 
settlement agreements. The Commission has also granted-in-part and 
denied-in-part the

[[Page 17137]]

private parties' requests to vacate the presiding administrative law 
judge's (``ALJ's'') final initial determination (``ID''). Specifically, 
the Commission has determined to vacate those portions of the final ID 
that are presently under review by the Commission, and has determined 
to deny the request for vacatur as to those portions of the final ID 
that were previously adopted by the Commission.
    The Commission has also granted a joint motion for leave to file 
corrected versions of the joint motion to terminate the investigation 
as to respondent Sunext Technology Co., Ltd.; denied motions for leave 
to reply; and denied a petition for reconsideration.

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 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.
    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, and 8-10 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'') and Oak Technology, Inc. 
(``Oak''), both of Sunnyvale, California. 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 claims of 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 concluding that 
there was no violation of section 337. Although the ALJ 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 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 complainant did not establish the 
technical or economic prong of the domestic industry requirement for 
any of the three patents in issue.
    On December 16, 2005, the Commission determined to review the final 
ID in part. 70 FR 76074.
    (1) The Commission 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 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 determined to review the ALJ's 
finding that the Okuda prior art 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 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 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 determined not to review the remainder of the ID, 
thereby adopting those portions of the ID. 70 FR 76074. In its notice 
of review, the Commission requested briefing from the parties on the 
issues under review, and requested interested persons to file written 
submissions on remedy, the public interest, and bonding. Id.
    On December 21, 2005, MediaTek petitioned for reconsideration of 
the Commission's determination not to review the ALJ's claim 
construction with respect to one of the three patents in issue. Zoran, 
Oak, and the Commission investigative attorney (``IA'') opposed 
MediaTek's petition, and on December 30, 2005, MediaTek filed a reply 
to those oppositions. On January 4, 2006, Zoran and Oak filed an 
opposition to MediaTek's motion for leave to file a reply, and on 
January 5, 2006, MediaTek filed a reply. The Commission has determined 
to deny MediaTek's motions for leave to file a reply.
    Having considered MediaTek's December 21, 2005, petition for 
reconsideration and the responses thereto, the Commission has 
determined to deny the petition. Pursuant to Commission rule 210.47 (19 
CFR 210.47), within 14 days after service of a Commission 
determination, any party may file a petition for reconsideration. Any 
such petition, however, ``must be confined to new questions raised by 
the determination or action ordered to be taken thereunder and upon 
which the petitioner had no opportunity to submit arguments.'' 
Commission rule 210.47 (19 CFR 210.47). The Commission has found that 
MediaTek's petition is not confined to new questions. Accordingly, the 
Commission has denied the petition for reconsideration for failure to 
comply with Commission rule 210.47 (19 CFR 210.47).
    Initial submissions in response to the Commission's notice of 
review were

[[Page 17138]]

filed by all parties on January 9, 2006. On January 16, 2006, all 
parties filed reply submissions.
    On February 10, 2006, complainant MediaTek and respondents Zoran 
and Oak filed a joint motion pursuant to Commission rules 210.21(a) and 
(b) (19 CFR 210.21(a) and (b)) to terminate the investigation as to 
Zoran and Oak on the basis of a settlement agreement. On the same day, 
MediaTek and the third respondent, Sunext, filed a joint motion 
pursuant to Commission rules 210.21(a) and (b) (19 CFR 210.21(a) and 
(b)) to terminate the investigation as to Sunext on the basis of a 
settlement agreement. On February 14, 2006, MediaTek and Sunext filed a 
joint motion for leave to file corrected versions of their joint motion 
to terminate. The Commission determined to grant the joint motion for 
leave to file corrected versions. On February 22, 2006, the IA filed a 
response supporting the joint motions to terminate. In their joint 
motions to terminate the investigation, MediaTek, Zoran, Oak, and 
Sunext requested that, if the Commission grants their joint motions, 
the Commission vacate the ALJ's final ID in its entirety. The IA 
supported the private parties' request to vacate the final ID.
    Having examined the joint motions to terminate and the IA's 
response thereto, the Commission determined that the motions comply 
with the procedural requirements of Commission rule 210.21(b)(1) (19 
CFR 210.21(b)(1)). The Commission further determined that the proposed 
settlement of the Commission investigation will not have an adverse 
effect on the public health and welfare, competitive conditions in the 
U.S. economy, the production of like or directly competitive articles 
in the United States, or U.S. consumers. Accordingly, the Commission 
determined to grant the joint motion of complainant MediaTek and 
respondents Zoran and Oak to terminate the investigation as to Zoran 
and Oak, and determined to grant the joint motion of MediaTek and 
Sunext to terminate the investigation as to Sunext. As to vacatur, the 
Commission determined to vacate those portions of the final ID that are 
presently under review by the Commission and to deny the request for 
vacatur as to those portions of the final ID previously adopted by the 
Commission. See 70 FR 76074 (Dec. 22, 2005).
    The authority for the Commission's determination is contained in 
section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337), and 
in Sec. Sec.  210.21, 210.45, and 210.50 of the Commission's Rules of 
Practice and Procedure (19 CFR 210.21, 210.45, and 210.50).

    By order of the Commission.

    Issued: March 31, 2006.
Marilyn R. Abbott,
Secretary to the Commission.
[FR Doc. E6-4935 Filed 4-4-06; 8:45 am]
BILLING CODE 7020-02-P