[Federal Register Volume 78, Number 106 (Monday, June 3, 2013)]
[Notices]
[Pages 33110-33112]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2013-12979]


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

INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-796]


Certain Electronic Digital Media Devices and Components Thereof; 
Determination To Review a Remand Initial Determination; Schedule for 
Filing Written Submissions on Certain Issues Under Review and on 
Remedy, Bonding, and the Public Interest

AGENCY: U.S. International Trade Commission.

ACTION: Notice.

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

SUMMARY: Notice is hereby given that the U.S. International Trade 
Commission has determined to review the remand initial determination 
(``RID'') issued by the presiding administrative law judge (``ALJ'') on 
March 26, 2013 in its entirety. The Commission requests certain 
briefing from the parties on the issues under review, as indicated in 
this notice. The Commission also requests briefing from the parties and 
the public on the issues of remedy, bonding, and the public interest.

FOR FURTHER INFORMATION CONTACT: Cathy Chen, Esq., Office of the 
General Counsel, U.S. International Trade Commission, 500 E Street SW., 
Washington, DC 20436, telephone (202) 205-2392. 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 August 5, 2011, based on a complaint filed by Apple Inc. (``Apple'') 
of Cupertino, California. 76 FR 47610 (Aug. 5, 2011). The complaint 
alleges violations of section 337 of the Tariff Act of 1930, as 
amended, 19 U.S.C. 1337, in the importation into the United States, the 
sale for importation, and the sale within the United States after 
importation of certain electronic digital media devices and components 
thereof by reason of infringement of certain claims of U.S. Patent Nos. 
7,479,949 (``the '949 patent''); RE 41,922 (``the '922 patent''); 
7,863,533 (``the '533 patent''); 7,789,697 (``the '697 patent''); 
7,912,501 (``the '501 patent''); D558,757 (``the D'757 patent''); and 
D618,678 (``the D'678 patent'') (collectively, ``the Asserted 
Patents''). The complaint further alleges the existence of a domestic 
industry. The respondents named in the Commission's notice of 
investigation are Samsung Electronics Co, Ltd. of the Republic of 
Korea; Samsung Electronics America, Inc. of Ridgefield Park, New 
Jersey; and Samsung Telecommunications America, LLC of Richardson, 
Texas (collectively, ``Samsung''). A Commission investigative attorney 
(``IA'') participated in the investigation.

[[Page 33111]]

    On May 3, 2012, the ALJ issued an ID partially terminating the 
investigation with respect to all claims of the '533 patent; claims 1-
3, 11, 12, 15, 16 and 21-27 of the '697 patent; and claim 3 of the '949 
patent (Order No. 17) (not reviewed by the Commission, May 3, 2012).
    On October 24, 2012, the ALJ issued his final ID in this 
investigation finding a violation of section 337 in connection with the 
claim of the D'678 patent; claims 1, 4-6 and 10-20 of the '949 patent; 
claims 29, 30 and 33-35 of the '922 patent; and claims 1-4 and 8 of the 
'501 patent. The ALJ found no violation of section 337 in connection 
with the claim of the D'757 patent; claims 31 and 32 of the '922 
patent; and claims 13 and 14 of the '697 patent. The ALJ also found 
that the asserted claims of the Asserted Patents were not shown to be 
invalid. The ALJ further found that a domestic industry in the United 
States exists that practices the Asserted Patents, except for the '697 
patent. On November 7, 2012, the ALJ issued his recommended 
determination on remedy and bonding.
    Apple and Samsung filed timely petitions for review of various 
portions of the final ID, as well as timely responses to the petitions. 
The IA filed only a response to the petitions for review. On December 
3, 2012, Apple and Samsung filed public interest comments pursuant to 
Commission rule 210.50(a)(4). That same day, non-party Google filed a 
submission in response to the Notice of Request for Statements on the 
Public Interest. See 77 FR 68829-30 (Nov. 16, 2012).
    On January 23, 2013, the Commission determined to review the final 
ID in its entirety, and remand the investigation to the ALJ with 
respect to certain issues related to the '922 patent and the '501 
patent, as set forth in the Remand Order. 78 FR 6130 (Jan. 29, 2013). 
In light of the remand, briefing on the reviewed issues and on remedy, 
bonding, and the public interest were postponed until the Commission's 
consideration of the RID.
    On March 26, 2013, the ALJ issued his RID. The RID found that 
claims 34 and 35 of the '922 patent are infringed by the text-selection 
feature of the accused products and that claim 3 of the '501 patent is 
not infringed by the accused products represented by the Transform SPH-
M920. On April 9, 2013, Apple and Samsung petitioned for review of the 
RID. The IA did not petition for review of the RID. On April 17, 2013, 
Apple, Samsung and the IA filed their respective responses to the 
petitions for review.
    Having reviewed the evidence of record and the parties' 
submissions, the Commission has determined to review the RID in its 
entirety.
    In connection with its review of the final ID and the RID, the 
parties are invited to brief only the discrete issues enumerated below, 
with reference to the applicable law and the evidentiary record. The 
parties are not to brief other issues on review, which are adequately 
presented in the parties' existing filings.
    1. Is the ``material or apparatus'' used in practicing the patented 
methods asserted in the '949 patent that is relevant to a substantial 
noninfringing use analysis the ``combination of source code and 
hardware elements relied upon by Dr. Balakrishnan in his witness 
statement,'' as argued by Apple (Apple Pet. at 50-51)? To the extent 
that it is, what evidence in the record shows that the ``combination of 
source code and hardware elements'' is adapted for use in an 
infringement of the '949 patent and that it does not have any 
substantial noninfringing use?
    2. Is the ``material or apparatus'' used in practicing the patented 
methods asserted in the '922 patent that is relevant to a substantial 
noninfringing use analysis the ``combination of source code and 
hardware elements relied upon by Dr. Balakrishnan in his witness 
statement,'' as argued by Apple (Apple Pet. at 50-51)? To the extent 
that it is, what evidence in the record shows that the ``combination of 
source code and hardware elements'' is adapted for use in an 
infringement of the '922 patent and that it does not have any 
substantial noninfringing use?
    3. Please comment on the requirement, if any, that the ``material 
or apparatus'' relevant to a substantial noninfringing use analysis 
must be ``separate and distinct'' from all other functions of a larger 
product in view of Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301 
(Fed. Cir. 2009); i4i Ltd. P'ship v. Microsoft Corp., 598 F.3d 831 
(Fed. Cir. 2010); Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321 (Fed. 
Cir. 2010); and any other pertinent legal authorities. To the extent 
there is such a requirement, what evidence in the record shows that 
each ``combination of source code and hardware elements relied upon by 
Dr. Balakrishnan in his witness statement'' with respect to the '949 
and the '922 patents is a ``separate and distinct'' feature of the 
Browser or Gallery application that warrants treating it separately in 
analyzing contributory infringement.
    4. Please discuss and cite the evidence of record, if any, that 
shows a third party performed each and every step of asserted claims 
29-35 of the '922 patent.
    5. Please discuss and cite the evidence of record, if any, that 
shows Samsung actively and knowingly aided and abetted another's direct 
infringement of claims 29-35 of the '922 patent.
    6. Please discuss and cite the evidence of record, if any, that 
shows Samsung actively and knowingly aided and abetted another's direct 
infringement of claims 11-16 of the '949 patent.
    7. Does the intrinsic evidence mandate a narrow construction of the 
``feature of interest'' limitation in claims 31 and 32 of the '922 
patent that excludes control elements in the translucent image? What 
impact, if any, do the additions in the specification made by reissue 
have on the construction of the claims added during reissue? In 
particular, please comment on the applicability of the embodiment 
disclosing a translucent keyboard to the construction of the ``feature 
of interest'' limitation. See JX-0004 at 3:12-22 and FIGS. 19-21c. What 
evidence in the record, if any, supports construing control characters 
or functional buttons on a keyboard as a ``feature of interest'' in the 
context of the '922 patent?
    8. What evidence in the record supports or does not support whether 
a person of ordinary skill in the art would understand from the '697 
patent disclosure that a ``signal path'' exists even in the absence of 
a plug in the receptacle? To the extent the ``signal path'' exists even 
in the absence of a plug in the receptacle, what record evidence shows 
that the detection circuitry is ``coupled to the detect contact and the 
first receptacle contact'' as recited in claim 12 of the '697 patent 
when the claimed detection circuitry detects that ``the signal path is 
a low or a high impedance path''?
    9. Please comment on Samsung's argument that Apple's Petition as to 
the '697 patent relies on a newly proffered claim construction argument 
that construes the claim limitation ``to detect that the signal path is 
a low or a high impedance path'' in claim 12 to require ``circuitry 
that detects that the signal path is a low impedance path only.'' See 
Samsung Resp. at 83-84.
    10. Assuming arguendo that Apple's proposed construction of the 
claimed detection circuitry limitation is adopted (see Apple Pet. at 
69-76), what record evidence shows that this limitation is disclosed or 
suggested in the prior art of record, including in the JP published 
unexamined application HII-288766 (``Kawano'') and the YP-T7J portable 
media player?
    In connection with the final disposition of this investigation, the

[[Page 33112]]

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 the 
respondent(s) 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. When 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. In particular, the Commission is interested in 
the following issues, with reference to the applicable law, the 
existing evidentiary record, and if necessary, additional sworn 
testimony or expert declarations:
    1. How would remedial orders barring the entry and further 
distribution of the Samsung articles alleged to infringe the asserted 
claims of the Asserted Patents affect the public interest as identified 
in 19 U.S.C. 1337(d)(1) and (f)(1)?
    2. In what ways, if any, should a remedy with respect to 
infringement of one or more of the Asserted Patents be specifically 
tailored to avoid harm to the public interest, as identified in 19 
U.S.C. 1337(d)(1) and (f)(1)?
    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 Certain Devices for Connecting 
Computers via Telephone Lines, Inv. No. 337-TA-360, USITC Pub. No. 
2843, Comm'n Op. (Dec. 1994).
    When the Commission orders some form of remedy, the U.S. 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. 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 persons 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 with respect to the Asserted Patents. Complainant 
and the IA are also requested to submit proposed remedial orders for 
the Commission's consideration. Complainant is further requested to 
state the date that the patents expire 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 Tuesday, June 11, 2013. Initial submissions by the parties are 
limited to 100 pages, not including submissions related to remedy, 
bonding, and the public interest. Reply submissions must be filed no 
later than the close of business on Wednesday, June 19, 2013. All reply 
submissions are limited to 60 pages, not including submissions related 
to remedy, bonding, and the public interest. No further submissions on 
these issues will be permitted unless otherwise ordered by the 
Commission.
    Persons filing written submissions must file the original document 
electronically on or before the deadlines stated above and submit 8 
true paper copies to the Office of the Secretary by noon the next day 
pursuant to section 210.4(f) of the Commission's Rules of Practice and 
Procedure (19 CFR 210.4(f)). Submissions should refer to the 
investigation number (``Inv. No. 337-TA-796'') in a prominent place on 
the cover page and/or the first page. (See Handbook for Electronic 
Filing Procedures, http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf). Persons with questions 
regarding filing should contact the Secretary (202-205-2000).
    Any person desiring to submit a document to the Commission in 
confidence must request confidential treatment. All such requests 
should be directed to the Secretary to 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 
by the Commission is properly sought will be treated accordingly. A 
redacted non-confidential version of the document must also be filed 
simultaneously with the any confidential filing. All non-confidential 
written submissions will be available for public inspection at the 
Office of the Secretary and on EDIS.
    The authority for the Commission's determination is contained in 
section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 337), and 
in Part 210 of the Commission's Rules of Practice and Procedure (19 CFR 
part 210).

    Issued: May 28, 2013.

    By order of the Commission.
William R. Bishop,
Supervisory Hearings and Information Officer.
[FR Doc. 2013-12979 Filed 5-31-13; 8:45 am]
BILLING CODE 7020-02-P