[Federal Register Volume 78, Number 205 (Wednesday, October 23, 2013)]
[Notices]
[Pages 63243-63245]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2013-24752]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-837]


Certain Audiovisual Components and Products Containing the Same; 
Commission Determination To Review a Final Initial Determination 
Finding a Violation of Section 337 In Its Entirety; 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.

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SUMMARY: Notice is hereby given that the U.S. International Trade 
Commission has determined to review the final initial determination 
(``ID'') issued by the presiding administrative law judge (``ALJ'') on 
July 18, 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, 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 April 11, 2012, based on a complaint filed by LSI Corporation of 
Milpitas, California and Agere Systems Inc. of Allentown, Pennsylvania 
(collectively, ``LSI''). 77 FR 22803 (Apr. 11, 2012). The complaint 
alleged violations of section 337 of the Tariff Act of 1930, as amended 
(19 U.S.C. Sec.  1337), by reason of infringement of various claims of 
United States Patent Nos. 5,870, 087 (``the '087 patent''); 6,452,958 
(``the '958 patent''); 6,707,867 (``the '867 patent''); and 6,982,663 
(``the '663 patent''). The Commission's notice of investigation named 
several respondents, including Funai Electric Co., Ltd. of Osaka, 
Japan; Funai Corporation, Inc. of Rutherford, New Jersey; P&F USA, Inc. 
of Alpharetta, Georgia; and Funai Service Corporation of Groveport, 
Ohio (collectively, ``Funai''); and Realtek Semiconductor Corporation 
of Hsinchu, Taiwan (``Realtek''). The Office of Unfair Import 
Investigations is not participating in this investigation.
    On July 18, 2013, the ALJ issued the final ID, which found a 
violation of section 337 as to certain audiovisual components and 
products containing the same with respect to claims 1, 5, 7-11 and 16 
of the '087 patent. In particular, the ALJ found that Funai's accused 
products directly infringed claims 1, 5, 7-9 and 16 of the '087 patent 
and that Funai induced infringement of claims 10 and 11 of the '087 
patent. The ALJ found no violation of section 337 in connection with 
any asserted claims of the '958, the '867, and the '663 patents. The 
ALJ also found that the asserted patents were not shown to be invalid; 
that the domestic industry requirement is satisfied as to all the 
asserted patents; and that respondents did not prevail on any equitable 
or reasonable and non-

[[Page 63244]]

discriminatory (RAND) defenses. On July 31, 2013, the ALJ made 
recommendations on appropriate remedies and bonding should the 
Commission find a violation of section 337.
    On August 5, 2013, LSI and Funai filed their respective petitions 
for review of the final ID. That same day, Realtek filed a contingent 
petition for review of the final ID. The parties filed timely responses 
on August 13, 2013. Non-party Koninklijke Philips N.V. filed its public 
interest comments on August 30, 2013. On September 3, 2013, the parties 
filed their respective public interest comments pursuant to Commission 
rule 210.50(a)(4).
    On August 16, 2013, the Commission determined to extend the date by 
which the Commission determines whether to review the final ID to 
October 1, 2013, and the target date for completion of the 
investigation to December 9, 2013. Due to the federal government 
shutdown and the Commission Notice extending all deadlines by the 
length of the shutdown, the date by which the Commission determines 
whether to review the final ID was extended to October 17, 2013.
    Having examined the record of this investigation, including the 
ALJ's final ID, the petitions for review, and the responses thereto, 
the Commission has determined to review the ALJ's final ID in its 
entirety.
    In connection with its review of the final ID, 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. What evidence in the record supports or does not support the 
conclusion that the two DRAMs in each of the Funai products accused of 
infringing the '087 patent is a single memory having one or more memory 
chips? With respect to each of the Funai products accused of infringing 
the '087 patent, what evidence in the record supports or does not 
support the conclusion that the two DRAMs used by the transport logic, 
MPEG decoder and system controller function as a unit? To the extent 
that each Funai product includes a flash memory, what code and/or data 
is stored in the flash memory and does the flash memory function as a 
unit with the two DRAMs?
    2. What record evidence supports or does not support finding direct 
infringement by a third party user of each of the Funai products 
accused of infringing claims 10 and 11 of the '087 patent?
    3. Please discuss and cite the record evidence, if any, that shows 
Funai actively and knowingly aided and abetted another's direct 
infringement of claims 10 and 11 of the '087 patent.
    4. Please discuss and cite the record evidence, if any, of how a 
person of ordinary skill in the art would interpret steps (A), (B), and 
(C) of claim 1 and elements (i), (ii) and (iii) of claim 11 of the '663 
patent. Please also discuss how such record evidence shows or does not 
show that each step and element are or are not met literally and/or 
under the doctrine of equivalents by each of the accused Funai products 
containing MediaTek decoders.
    5. Please discuss and cite the record evidence, if any, that shows 
a third party user of each of the Funai products accused of infringing 
the '663 patent performed each and every step of asserted claims 1-9 of 
the '663 patent.
    6. Please discuss and cite the record evidence, if any, that shows 
Funai actively and knowingly aided and abetted another's direct 
infringement of claims 1-9 of the '663 patent.
    7. Please discuss and cite the record evidence, if any, of Funai's 
pre-suit knowledge of the '087 patent and/or the '663 patent and 
Funai's pre-suit knowledge that the induced acts constitute 
infringement of the '087 patent and/or the '663 patent.
    8. What record evidence supports or does not support the conclusion 
that the '958 patent is entitled to the July 30, 1996 priority date of 
U.S. Patent No. 5,862,182?
    9. Please discuss and cite the record evidence, if any, that shows 
the asserted claims of the '958 patent are invalid as being anticipated 
or rendered obvious by Prasad. Assuming the priority date of the '958 
patent is April 22, 1998, please discuss and cite the record evidence, 
if any, that shows the combination of the Harris Proposal in view of 
the van Nee article, and the combination of the Proakis textbook in 
view of the Weathers patent render the asserted claims of the '958 
patent obvious.
    10. What record evidence supports or does not support the 
conclusion that U.S. Patent Application No. 08/155,661 was abandoned in 
December 2001 because the applicant failed to file a reply to the 
Office Action mailed on June 7, 2001 within the six-month statutory 
deadline (35 U.S.C. 133)? Please discuss and cite the record evidence, 
if any, showing proof of the USPTO's grant of an extension in December 
2001.
    11. Please discuss and cite any record evidence of the standard 
essential nature of the '663, the '958, and the '867 patents.
    12. Please discuss, in light of the statutory language, legislative 
history, the Commission's prior decisions, and relevant court 
decisions, including InterDigital Commc'ns, LLC v. Int'l Trade Comm'n, 
690 F.3d 1318 (Fed. Cir. 2012), 707 F.3d 1295 (Fed. Cir. 2013), and 
Microsoft Corp. v. Int'l Trade Comm'n, Nos. 2012-1445, -1535 (Oct. 3, 
2013), whether establishing a domestic industry based on licensing 
under 19 U.S.C. 1337 (a)(3)(C) requires proof of ``articles protected 
by the patent'' (i.e., a technical prong). If so, please identify and 
describe the evidence in the record that establishes articles protected 
by the asserted patents.
    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 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. Please discuss and cite any record evidence of the allegedly 
RAND-encumbered nature of the declared standard essential '663, '958, 
and '867 patents. With regard to the '958 patent and the '867 patent, 
what specific contract rights and/or obligations exist between the 
patentee and the applicable standard-setting organization, i.e., the 
Institute of Electrical and Electronic Engineers, Inc. (IEEE)? With 
regard to the '663 patent, what specific contract rights and/or 
obligations exist between

[[Page 63245]]

the patentee and the applicable standard-setting organization, i.e., 
the International Telecommunication Union (ITU)?
    2. Please summarize the history to date of negotiations between LSI 
and Funai and between LSI and Realtek concerning any potential license 
to the '663, the '958, and the '867 patents, either alone, in 
conjunction with each other and/or the '087 patent, and/or in 
conjunction with non-asserted patents. Please provide copies of, or 
cite to their location in the record evidence, all offers and 
communications related to the negotiations including any offer or 
counteroffer made by Funai and Realtek.
    3. Please summarize all licenses to the '663, the '958, and the 
'867 patents granted by LSI to any entity including evidence of the 
value of each patent if such patent was licensed as part of a patent 
portfolio. Please provide copies of, or cite to their location in the 
record evidence, all agreements wherein LSI grants any entity a license 
to these patents. Please also provide a comparison of the offers made 
to Funai and/or Realtek with offers made to these other entities.
    4. If applicable, please discuss the industry practice for 
licensing patents involving technology similar to the technology in the 
'663, the '958, and the '867 patents individually or as part of a 
patent portfolio.
    5. Please identify the forums in which you have sought and/or 
obtained a determination of a RAND rate for the '663, the '958, and the 
'867 patents. LSI, Funai and Realtek are each requested to submit 
specific licensing terms for the '663, the '958, and the '867 patents 
that each believes are reasonable and non-discriminatory.
    6. Please discuss and cite any record evidence of any party 
attempting to gain undue leverage, or constructively refusing to 
negotiate a license, with respect to the '663, the '958, and the '867 
patents. Please specify how that evidence is relevant to whether 
section 337 remedies with respect to such patents would be detrimental 
to competitive conditions in the U.S. economy and any other statutory 
public interest factor.
    If 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 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 with respect to the asserted patents. Complainant is 
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 Friday, 
November 1, 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 Monday, November 11, 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-837'') 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. 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).

    Issued: October 17, 2013.

    By order of the Commission.
Lisa R. Barton,
Secretary to the Commission.
[FR Doc. 2013-24752 Filed 10-22-13; 8:45 am]
BILLING CODE 7020-02-P