[Federal Register Volume 76, Number 190 (Friday, September 30, 2011)]
[Notices]
[Pages 60867-60870]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2011-25205]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-726]


Certain Electronic Imaging Devices; Notice of Commission 
Determination To Review-in-Part a Final Determination of No Violation 
of Section 337; Schedule for Filing Written Submissions on the Issues 
Under Review and on Remedy, the Public Interest, and Bonding

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 the final 
initial determination (``ID'') issued by the presiding administrative 
law judge (``ALJ'') on December 16, 2010 finding no violation of 
section 337 in the above-captioned investigation.

FOR FURTHER INFORMATION CONTACT: Jia Chen, Office of the General 
Counsel, U.S. International Trade Commission, 500 E Street, SW., 
Washington, DC 20436, telephone (202) 708-4737. 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. General information concerning the 
Commission may also be obtained by accessing its Internet server at 
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. 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 July 8, 2010, based on a complaint filed by Flashpoint Technology, 
Inc. (``Flashpoint'') of Peterborough, New Hampshire. 75 FR 39971 (Jul. 
8, 2010). The complaint alleges violations of Section 337 in the 
importation into the United States, the sale for importation, and the 
sale within the United States after importation of certain electronic 
imaging devices by reason of infringement of claims 1, 11, and 21 of 
U.S. Patent No. 6,134,606 (``the '606 patent''), claims 1-7, 11-13, 16-
23, 26, 30-32, 40, and 41 of U.S. Patent No. 6,262,769 (``the '769 
patent''), and claims 1-14 and 16 of U.S. Patent No. 6,163,816 (``the 
'816 patent''). On April 7, 2011, the ALJ issued Order No. 36 
terminating the investigation as to all claims of the '606 patent. The 
proposed respondents are Nokia Corporation of Espoo, Finland and Nokia, 
Inc. of Irving, Texas (collectively, ``Nokia''); Research In Motion of 
Waterloo, Ontario, Canada and Research In Motion Corp. of Irving, Texas 
(collectively, ``RIM''); LG Electronics, Inc. of South Korea, LG 
Electronic U.S.A., Inc. of Englewood Cliffs, New Jersey, and LG 
Electronics MobileComm U.S.A. of San Diego, CA (collectively, ``LG''); 
and HTC Corporation of Taiwan and HTC America, Inc. of Bellevue, 
Washington (collectively, ``HTC''). Nokia, RIM, and LG were terminated 
from the investigation on the basis of settlement agreements.
    On March 8, 2011, the Commission determined not to review the ALJ's 
Order No. 18 granting Flashpoint's motion for summary determination 
that it has satisfied the economic prong of the domestic industry 
requirement. On July 28, 2011, the ALJ issued the subject ID finding no 
violation of Section 337 by HTC. Specifically, the ALJ found that the 
accused HTC Android smartphones and the accused HTC Windows Phone 7 
(``WP7'') smartphones do not infringe the asserted claims of the '769 
patent or the asserted claims of the '816 patent. The ALJ also found 
that HTC has not established that the asserted claims of the '769 
patent are invalid for obviousness in view of the prior art and that 
Flashpoint has not established that the asserted claims of the '769 
patent are entitled to an earlier date of invention than that of the 
patent's filing date. The ALJ further found that HTC has not 
established that the asserted claims of the '816 patent are anticipated 
by the prior art, but that HTC has established that the asserted claims 
of the '816 patent are invalid under the on-sale bar of 35 U.S.C. 
102(b). On July 10, 2011, Flashpoint, HTC and the Commission 
investigative attorney each filed a petition for review.
    Having examined the record of this investigation, including the 
ALJ's final ID and the submissions of the parties, the Commission has 
determined to review (1) infringement of the asserted claims of the 
'769 patent by the accused HTC Android smartphones, (2) infringement of 
the asserted claims of the '769 patent by the accused HTC WP7 
smartphones, (3) the technical prong of the domestic industry 
requirement for the '769 patent with respect to the licensed Motorola 
smartphones, (4) the technical prong of the domestic industry 
requirement for the '769 patent with respect to the licensed Apple 
smartphones, and (5) the enforceability of the asserted patents under 
the doctrines of implied license and exhaustion. The Commission has 
also determined to review and to take no position on (a) anticipation 
of the asserted claims of the '816 patent under 35 U.S.C. 102 in view 
of the prior art references and (b) obviousness of the asserted claims 
of the '816 patent under 35 U.S.C. 103 in view of the prior art 
references. Finally, the Commission has determined to deny 
complainant's request for oral argument.
    The parties should brief their positions on the issues on review 
with reference to the applicable law and the evidentiary record. In 
connection with its review, the Commission is particularly interested 
in responses to the following questions:

[[Page 60868]]

    Question 1: The ALJ construed ``a first orientation associated with 
the image'' of claims 1 and 18 as ``a first direction with respect to 
an axis with a portrait or landscape aspect ratio (i.e., right 
portrait, left portrait, upright landscape, or inverted landscape) 
associated with the image based on the orientation of the image capture 
unit.'' See ID at 25. The ALJ construed ``at capturing of the image'' 
of claims 1 and 18 as ``the time period following the determination by 
the image capture unit that an image is to be captured and before the 
completion of generating image data from the image sensor.'' Id. Assume 
that the accused EVO 4G smartphones determine ``a first direction with 
respect to an axis'' associated with the image based on the orientation 
of the image capture unit during the time period of ``at capturing of 
the image'' under the ALJ's construction of the time period. Does the 
EVO 4G also determine ``a landscape or portrait aspect ratio'' 
associated with the image based on the orientation of the image capture 
unit during the time period of ``at capturing of the image'' under the 
ALJ's construction of the time period? Please cite to the evidentiary 
record.
    Question 2: The ALJ found that ``the accused Android products do 
not determine a first direction with respect to an axis with a portrait 
or landscape aspect ratio * * * associated with the image based on the 
orientation of the image capture unit at capturing of the image.'' See 
ID at 61 (emphasis added). One basis for this finding was the ALJ's 
finding that ``there could be up to a 200 millisecond delay'' between 
when the Android products' determine the orientation of the image 
capture unit and when the picture is taken. See ID at 61 (emphasis 
added). Is the more relevant question for infringement purposes whether 
the Android products ``could'' take a picture without such a delay 
(e.g., if the timing of the Android's orientation determination in a 
given case fell within the time period of image capture)? Please cite 
to the evidentiary record as appropriate.
    Question 3: The ALJ construed the limitation ``storing the 
information relating to the first orientation'' as ``saving an 
indication of the first orientation to memory.'' See ID at 27. Assume 
that the EVO 4G determines ``a first orientation associated with the 
image at capturing of the image'' under the ALJ's construction of 
``first orientation'' and ``at capturing of the image.'' See ID at 27. 
Does the EVO 4G also ``sav[e] an indication'' of the ``first 
orientation'' to memory? Specifically, does the EVO 4G save an 
indication of ``a direction with respect to an axis with a portrait or 
landscape aspect ratio (i.e., right portrait, left portrait, upright 
landscape, or inverted landscape) associated with the image based on 
the orientation of the image capture unit?'' Include discussion of 
whether the EVO 4G saves ``right,'' ``left,'' ``upright,'' and 
``inverted'' of the ALJ's construction, and whether saving this 
information is required to satisfy the claim. Please cite to the 
evidentiary record.
    Question 4: Does the EVO 4G ``determin[e] whether the third 
orientation is different from the second orientation, the first 
orientation, or both'' under the ALJ's construction of the term 
``orientation,'' i.e., ``a direction with respect to an axis with a 
portrait or landscape aspect ratio (i.e., right portrait, left 
portrait, upright landscape, or inverted landscape).'' See ID at 22 and 
28. Please cite to the evidentiary record.
    Question 5: Does the EVO 4G ``rotat[e] the image to be displayed in 
the third orientation'' under the ALJ's construction of the claim 
limitation, i.e., ``stor[e] the image data in a buffer in one of two 
directions such that the orientation of the image is the same as the 
orientation of the image capture unit?'' See ID at 35. Please cite to 
the evidentiary record.
    Question 6: Complainant argues in its petition for review that 
``should a construction that relies on pre-rotation be adopted * * * 
both the initial determination and the ALJ's ruling in Order No. 26 on 
these points should be reversed and remanded for further proceedings, 
including instruction that additional discovery from Microsoft 
regarding its source code be compelled consistent with Flashpoint's 
previous requests to the ALJ.'' Comp. Pet. at 33. Considering that the 
ALJ ordered Microsoft to allow Complainant's expert to inspect an 
electronic copy of the source code, and to proceed with its offer to 
provide complainant with a signed witness declaration for 
authentication (Order No. 26 at 2-3), and that Microsoft allowed that 
``any code used at trial can be submitted to the Court for judicial 
review,'' (Microsoft March 2, 2011 Opposition at 4) what is the basis 
for arguing that the ALJ abused his discretion or committed clear 
error? Even if the denial of the request to produce a paper printout of 
the source code did not facilitate the presentation of complainant's 
case, were not alternative avenues available to Complainant that it 
failed to pursue? See HTC's Response to OUII's Petition for Review and 
Flashpoint's Petition for Review at 24-27.
    Question 7: Does the HD7 determine ``a first direction with respect 
to an axis * * * associated with the image based on the orientation of 
the image capture unit'' during the time period of ``at capturing of 
the image'' under the ALJ's construction of the time period, i.e., 
``the time period following the determination by the image capture unit 
that an image is to be captured and before the completion of generating 
image data from the image sensor.'' See ID at 25. Does the HD7 also 
determine ``a landscape or portrait aspect ratio * * * associated with 
the image based on the orientation of the image capture unit'' during 
the time period of ``at capturing of the image'' under the ALJ's 
construction of the time period? See Id. Please cite to the evidentiary 
record.
    Question 8: Does the HD7 ``save an indication of'' a first 
direction with respect to an axis with a landscape or aspect ratio 
associated with the image based on the orientation of the image capture 
unit, as required by the claims under the ALJ's construction of the 
limitations ``first orientation'' and ``storing the image, including 
storing information relating to the first orientation associated with 
the image.'' See ID at 25 and 27. Please cite to the evidentiary 
record.
    Question 9: Does the HD7 ``determin[e] whether the third 
orientation is different from the second orientation, the first 
orientation, or both'' under the ALJ's construction of the term 
``orientation,'' i.e., ``a direction with respect to an axis with a 
portrait or landscape aspect ratio (i.e., right portrait, left 
portrait, upright landscape, or inverted landscape)?'' See ID at 22 and 
28. Please cite to the evidentiary record.
    Question 10: Does the HD7 ``rotat[e] the image to be displayed in 
the third orientation'' under the ALJ's construction of the claim 
limitation, i.e., ``storing the image data in a buffer in one of two 
directions such that the orientation of the image is the same as the 
orientation of the image capture unit?'' See ID at 35. Please cite to 
the evidentiary record.
    Question 11: Do the licensed Motorola smartphones ``determin[e] 
whether the third orientation is different from the second orientation, 
the first orientation, or both'' under the ALJ's construction of the 
term ``orientation,'' i.e., ``a direction with respect to an axis with 
a portrait or landscape aspect ratio (i.e., right portrait, left 
portrait, upright landscape, or inverted landscape)?'' See ID at 22 and 
28. Please cite to the evidentiary record.
    Question 12: Do the licensed Motorola smartphones ``rotat[e] the 
image to be displayed in the third orientation'' under the ALJ's 
construction of the

[[Page 60869]]

claim limitation, i.e., ``storing the image data in a buffer in one of 
two directions such that the orientation of the image is the same as 
the orientation of the image capture unit.'' See ID at 35. Please cite 
to the evidentiary record.
    Question 13: Do the licensed Apple smartphones determine ``a first 
direction with respect to an axis * * * associated with the image based 
on the orientation of the image capture unit'' during the time period 
of ``at capturing of the image'' under the ALJ's construction of the 
time period, i.e., ``the time period following the determination by the 
image capture unit that an image is to be captured and before the 
completion of generating image data from the image sensor?'' See ID at 
25. Do the licensed Apple smartphones also determine ``a landscape or 
portrait aspect ratio * * * associated with the image based on the 
orientation of the image capture unit'' during the time period of ``at 
capturing of the image'' under the ALJ's construction of the time 
period? See Id. Please cite to the evidentiary record. In your 
responses to Questions 12-15, as appropriate, include discussion of the 
significance, if any, of the testimony of Mr. Jirman.
    Question 14: Do the licensed Apple smartphones ``save an indication 
of'' a first direction with respect to an axis with a landscape or 
aspect ratio associated with the image based on the orientation of the 
image capture unit, as required by the claims under the ALJ's 
construction of the limitations ``first orientation'' and ``storing the 
image, including storing information relating to the first orientation 
associated with the image?'' See ID at 25 and 27. Please cite to the 
evidentiary record.
    Question 15: Do the licensed Apple smartphones ``determin[e] 
whether the third orientation is different from the second orientation, 
the first orientation, or both'' under the ALJ's construction of the 
term ``orientation,'' i.e., ``a direction with respect to an axis with 
a portrait or landscape aspect ratio (i.e., right portrait, left 
portrait, upright landscape, or inverted landscape)?'' See ID at 22 and 
28. Please cite to the evidentiary record.
    Question 16: Do the licensed Apple smartphones ``rotat[e] the image 
to be displayed in the third orientation'' under the ALJ's construction 
of the claim limitation, i.e., ``storing the image data in a buffer in 
one of two directions such that the orientation of the image is the 
same as the orientation of the image capture unit?'' See ID at 35. 
Please cite to the evidentiary record.
    Question 17: Were Flashpoint's rights to the '716 patent and the 
'816 patent with respect to the accused WP7 products exhausted by an 
``authorized sale'' of an article that ``substantially embodies'' the 
'716 patent and the '816 patent? See Quanta Computer, Inc. v. LG Elec., 
Inc., 128 S.Ct. 2109, 2122 (2008).
    Question 18: Assume that there was an authorized sale of an article 
that substantially embodies the asserted patent, did the first sale 
take place in the United States? See Jazz Photo Corp. v. Int'l Trade 
Comm'n, 264 F.3d 1094, 1105 (Fed. Cir. 2001). How does the law of 
contracts determine where a first sale took place for purposes of the 
exhaustion doctrine? What state's law of contracts governs this 
determination?
    Question 19: Does the WP7 software sold to HTC have ``non-
infringing uses'' with respect to the '716 patent and the '816 patent 
and do circumstances of the sale ``plainly indicate that the grant of a 
license should be inferred'' with respect to the '716 patent and the 
'816 patent? See Met-Doil Systems Corp. v. Korners Unlimited, Inc., 803 
F.2d 684, 686 (Fed. Cir. 1986).
    In connection with the final disposition of this investigation, the 
Commission may (1) issue an order that could result in the exclusion of 
the subject articles from entry into the United States, and/or (2) 
issue one or more cease and desist orders that could result in a 
respondent 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 likely to do so. For 
background, see In the Matter of Certain Devices for Connecting 
Computers via Telephone Lines, Inv. No. 337-TA-360, USITC Pub. No. 2843 
(December 1994) (Commission Opinion).
    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 United States 
Trade Representative, as delegated by the President, has 60 days to 
approve or disapprove the Commission's action. See Presidential 
Memorandum of July 21, 2005, 70 FR 43251 (July 26, 2005). During this 
period, the subject articles would be entitled to enter the United 
States under bond, in an amount 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 if a remedy is ordered.
    Written Submissions: The parties to the investigation are requested 
to file written submissions on the issues identified in this notice. 
Parties to the investigation, interested government agencies, and any 
other interested parties are encouraged to file written submissions on 
the issues of remedy, the public interest, and bonding. Such 
submissions should address the recommended determination by the ALJ 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 also requested to state the 
date that the patent expires and the HTSUS numbers under which the 
accused products are imported. The written submissions and proposed 
remedial orders must be filed no later than close of business on 
Monday, October 10, 2011. Reply submissions must be filed no later than 
the close of business on Monday, October 17, 2011. The written 
submissions must be no longer than 50 pages and the reply submissions 
must be no longer than 25 pages. No further submissions on these issues 
will be permitted unless otherwise ordered by the Commission.
    Persons filing written submissions must file the original document 
and 12 true copies thereof on or before the deadlines stated above with 
the Office of the Secretary. Any person desiring to submit a document 
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. 210.6. 
Documents for which confidential treatment by the Commission is sought

[[Page 60870]]

will be treated accordingly. All non-confidential written submissions 
will be available for public inspection at the Office of the Secretary.
    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 sections 210.42-46 and 210.50 of the Commission's Rules of Practice 
and Procedure (19 CFR. 210.42-46 and 210.50).


    By order of the Commission.

    Issued: September 26, 2011.
James R. Holbein,
Secretary to the Commission.
[FR Doc. 2011-25205 Filed 9-29-11; 8:45 am]
BILLING CODE 7020-02-P