[Federal Register Volume 78, Number 134 (Friday, July 12, 2013)]
[Notices]
[Pages 41950-41952]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2013-16709]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-770]


Certain Video Game Systems and Wireless Controllers and 
Components Thereof; Commission Determination To Review-In-Part a Remand 
Initial Determination; Schedule for Filing Written Submissions on 
Review for Remand Initial Determination and Final Inital Determination

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 remand 
initial determination (``ID'') issued by the presiding administrative 
law judge (``ALJ'') on May 7, 2013 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: On April 27, 2011, the Commission instituted 
the subject investigation based on a complaint filed by Creative 
Kingdoms, LLC of Wakefield, Rhode Island and New Kingdoms, LLC of 
Nehalem, Oregon (collectively, ``CK''). 76 FR 23624 (Apr. 27, 2011). 
The complaint alleged violations of Section 337 of the Tariff Act of 
1930, 19 U.S.C. 1337 (``Section 337'') by reason of infringement of 
certain claims of United States Patent Nos. 7,896,742 (``the '742 
patent''); 7,500,917 (``the '917 patent''); and 7,850,527 (``the '527 
patent''). The named respondents are Nintendo Co., Ltd., of Kyoto, 
Japan and Nintendo America, Inc. of Redmond, Washington (collectively, 
``Nintendo'').
    The products accused of infringing the asserted patents are gaming 
systems and related components and software, including the Wii Remote, 
Wii MotionPlus, Wii Remote Plus, Nunchuk, Wii console (versions RVL and 
RVK), and Wii U console (collectively, the ``accused products'').
    On August 31, 2012, the ALJ issued a final ID finding no violation 
of section 337 by Nintendo. The ALJ found that the accused products 
infringe sole asserted claim 24 of the '742 patent, but that the claim 
is invalid for failing to satisfy the enablement requirement and the 
written description requirement under 35 U.S.C. 112. The ALJ found that 
no accused products infringe the asserted claims of the '917 patent and 
'527 patents. The ALJ also found that the asserted claims of the '917 
and '527 patents are invalid for failing to satisfy the enablement 
requirement and the written description requirement. The ALJ concluded 
that complainant has failed to show that a domestic industry exists in 
the United States that exploits the asserted patents as required by 19 
U.S.C. 1337(a)(2). The ALJ did not make a finding regarding the 
technical prong of the domestic industry requirement with respect to 
the asserted patents. The ALJ also did not make a finding with respect 
to anticipation and obviousness of the asserted patents.
    On September 17, 2012, CK filed a petition for review challenging 
the ALJ's findings with respect to claim construction, infringement, 
enablement and written description for the '917 patent, the ALJ's 
findings with respect to enablement and written description of the '742 
patent, as well as the ALJ's findings with respect to the domestic 
industry requirement for the '917 and '742 patents. On the same day, 
Nintendo filed a petition for review challenging the ALJ's finding with 
respect to claim construction and infringement for the '742 patent. 
Nintendo also challenged the ALJ's failure to address anticipation and 
obviousness with respect to the '917 and '742 patents. The IA filed a 
petition for review challenging the ALJ's finding with respect to the 
domestic industry

[[Page 41951]]

requirement for the '917 and '742 patents. None of the parties 
challenged the ALJ's final ID with respect to the '527 patent.
    On November 6, 2012, the Commission determined to review the 
following issues: (1) Claim construction of the limitation ``toy wand'' 
of the asserted claim of the '917 patent; (2) non-infringement of the 
asserted claim of the '917 patent; (3) infringement of the asserted 
claim of the '742 patent; (4) validity of the asserted claims of the 
'917 and '742 patents under the enablement requirement; (5) validity of 
the asserted claims of the '917 and '742 patents under the written 
description requirement; and (6) whether the domestic industry 
requirement is met with respect to the '917 and '742 patents. On the 
same day, the Commission issued an opinion with respect to the proper 
claim construction of the term ``toy wand'' of the asserted claim of 
the '917 patent. Specifically, the Commission disagreed with the ALJ 
that the term ``toy wand'' should be construed as ``an elongated hollow 
pipe or tube consistent with a wand associated with magic or 
illusion.'' The Commission found that the term ``toy wand'' should be 
construed as ``an elongated hollow pipe or tube used for play.'' The 
Commission determined to remand this case to the ALJ to determine the 
following issues: (a) Direct infringement of the asserted claim of the 
'917 patent in light of the proper construction of the term ``wand'' as 
set forth in the Commission opinion; (b) whether the independently sold 
Wii MotionPlus and Nunchuck accessories contributorily infringe the 
asserted claims of the '917 and '742 patents; (c) anticipation and 
obviousness with respect to the asserted claim of the '917 patent; (d) 
obviousness with respect to the asserted claim of the '742 patent; and 
(e) whether CK has satisfied the technical prong of the domestic 
industry requirement with respect to the '917 and '742 patents, and if 
necessary, whether CK has satisfied the economic prong of the domestic 
industry requirement with respect to the '917 and '742 patents in light 
of the ALJ's technical prong determination.
    On May 7, 2013, the ALJ issued a remand ID finding no violation of 
section 337. The ALJ found that (i) the accused products do not 
infringe claim 7 of the '917 patent; (ii) Nintendo does not contribute 
to the infringement of claim 24 of the '742 patent through its sale of 
the Wii Nunchuk and the Wii MotionPlus accessories; (iii) the asserted 
claim of the '917 patent is not invalid for anticipation; (iv) the 
asserted claim of the '917 patent is not invalid for obviousness; (v) 
the asserted claim of the '742 patent is not invalid for obviousness; 
(vi) complainant has satisfied the technical prong of the domestic 
industry requirement for the '917 patent; and (vii) complainant has 
satisfied the technical prong of the domestic industry requirement for 
the '742 patent. The ALJ determined that it was unnecessary to revisit 
his previous finding in his final ID that complainant has not satisfied 
the economic prong of the domestic industry requirement for the '742 
and '917 patents.
    On May 21, 2013, CK filed a petition for review of the remand ID, 
challenging the ALJ's finding that complainant has not satisfied the 
economic prong of the domestic industry requirement for the `742 and 
`917 patents. CK also challenges the ALJ's finding that the accused 
products do not directly infringe the `917 patent and that the 
separately sold Wii Nunchuk or the Wii MotionPlus accessories do not 
contributorily infringe the asserted claim of the `742 patent. On the 
same day, Nintendo filed a petition for review of the remand ID, 
challenging the ALJ's finding with respect to obviousness of the 
asserted claim of the `742 patent. The IA did not submit a petition for 
review. On June 3, 2013, CK, Nintendo, and the IA each filed reply 
briefs.
    Having examined the record of this investigation, the Commission 
has determined to review the following issues from the remand ID: (1) 
Whether the accused products directly infringe the asserted claim of 
the `917 patent; (2) whether the independently sold Wii MotionPlus and 
Nunchuck accessories contributorily infringe the asserted claim of the 
`742 patent; (3) non-obviousness of the asserted claim of the `742 
patent; and (4) whether the technical prong of the domestic industry 
requirement is met with respect to the `917 and `742 patents. In 
addition, the following issues from the final ID are currently under 
review: (a) whether the accused products directly infringe the asserted 
claim of the `742 patent; (b) validity of the asserted claims of the 
`917 and `742 patent under the enablement requirement; (c) validity of 
the asserted claims of the `917 and `742 patent under the written 
description requirement; and (d) whether the economic prong of the 
domestic industry requirement is met with respect to the `917 and `742 
patents.
    The parties should brief their positions on the issues under 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:
    Question 1: Please explain whether the accused products meet the 
following limitations of the asserted claim of the `917 patent: (a) 
``a toy wand,'' i.e., ``an elongated hollow pipe or tube used for 
play''; (b) ``an elongated body having a first end and a second 
end''; (c) ``a pair of first motion sensors configured to generate a 
first signal in response to a first motion of the elongated body''; 
(d) ``a second motion sensor configured to generate a second signal 
in response to a second motion of the elongated body, wherein the 
second motion is different from the first motion, and wherein the 
second motion sensor is different than either of the pair of first 
motion sensors''; (e) ``a transmitter disposed within the elongated 
body and capable of wireless communication with at least one 
receiver''; and (f) ``the transmitter configured to send to the at 
least one receiver a first command to control a first play effect 
based on the first signal, the transmitter further configured to 
send a second command to the at least one receiver to control a 
second play effect based on the second signal.''
    Question 2: With respect to CK's contributory infringement claim 
for the independently sold Nunchuk and MotionPlus accessories, 
please cite to and discuss all evidence indicating (1) whether there 
is an act of direct infringement; and (2) whether Nintendo had 
knowledge that the combination of the Nunchuk or MotionPlus 
accessories with the Wii Remote controller was covered by the `742 
patent.
    Question 3: What are the novel aspects of the invention of claim 
7 of the `917 patent, and are those novel aspects supplied by the 
specification of the `917 patent? See Automotive Technologies v. BMW 
of North America Inc., 501 F.3d 1274, 1283 (Fed. Cir. 2007) (``It is 
the specification, not the knowledge of one skilled in the art, that 
must supply the novel aspects of an invention in order to constitute 
adequate enablement.'').
    Question 4: Would it have been known to a person of ordinary 
skill in the art in light of the `917 patent specification to 
configure the disclosed accelerometers or other motion sensors to 
sense motion as required by claim 7?
    Question 5: What are the novel aspects of the invention of claim 
24 of the `742 patent, and are those novel aspects supplied by the 
specification of the `742 patent?
    Question 6: Please discuss whether claim 24 of the `742 patent 
is rendered obvious by the combination of Silfer, Han, and Nitta.
    Question 7: Please discuss whether claim 24 of the `742 patent 
is rendered obvious by the combination of Willner, Silfer, and 
Goschy.
    Question 8: Assuming that the technical prong of the domestic 
industry requirement is met and assuming that the patented article 
is the toy wand (as opposed to the entire MagiQuest attraction 
including the toy wand), do the ``realities of the marketplace'' 
dictate that the entire MagiQuest attraction (including the physical 
space, themes, props, other peripheral items, and sales and training 
staff) is the article of commerce in competition? See e.g., Certain 
Double-Sided Floppy Disk Drives and Components Thereof, Inv. No. 
337-TA-215, USITC Pub. 1860,

[[Page 41952]]

Comm'n Op., at 55-56 (Oct. 15, 1985) (``The patented article in this 
investigation may be in and of itself an article of commerce, but . 
. . [the patented] head assemblies are not the actual articles of 
commerce at issue when viewed according to the competitive realities 
of the marketplace.''). Are CK's operational activities with respect 
to the entire attraction facility essential to practicing the 
claimed wand?
    Question 9: Please cite to and discuss evidence pertaining to 
whether the economic prong of the domestic industry requirement is 
shown with respect to the electronics and software used in the 
MagiQuest attraction that interacts with the MagiQuest wand, and 
discuss whether the electronics and software are designed, 
developed, and/or manufactured in the United States?
    Question 10: Please cite to and discuss evidence relating to the 
strength of the nexus between the asserted patents and CK's alleged 
licensing activities, including evidence showing that the activities 
are particularly focused on the asserted patents. What are the 
relative importance or value of the asserted patents within the 
overall intellectual property portfolio in CK's agreements with its 
customers to operate the MagiQuest attraction?

    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 Certain Devices for Connecting Computers via Telephone 
Lines, Inv. No. 337-TA-360, USITC Pub. No. 2843, Comm'n Op. at 9 
(December 1994).
    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 subheadings under which the 
accused products are imported. The written submissions and proposed 
remedial orders must be filed no later than close of business on 
Thursday, July 18, 2013. Reply submissions must be filed no later than 
the close of business on Thursday, July 25, 2013. 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 do so in accordance with 
Commission rule 210.4(f), 19 CFR 210.4(f), which requires electronic 
filing. The original document and 8 true copies thereof must also be 
filed 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 will be 
treated accordingly. 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. 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: July 8, 2013.
Lisa R. Barton,
Acting Secretary to the Commission.
[FR Doc. 2013-16709 Filed 7-11-13; 8:45 am]
BILLING CODE 7020-02-P