[Federal Register Volume 78, Number 210 (Wednesday, October 30, 2013)]
[Notices]
[Pages 64977-64979]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2013-25643]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-841]


Certain Computer and Computer Peripheral Devices, and Components 
Thereof, and Products Containing Same; Commission Decision to Review an 
Initial Determination; Schedule for Filing Written Submissions 
Including 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 in the entirety the final initial 
determination (``ID'') issued by the presiding administrative law judge 
(``ALJ'') on August 2, 2013, finding a violation of section 337 of the 
Tariff Act of 1930, 19 U.S.C. 1337, in this investigation.

FOR FURTHER INFORMATION CONTACT: Sidney A. Rosenzweig, Office of the 
General Counsel, U.S. International Trade Commission, 500 E Street SW., 
Washington, DC 20436, telephone (202) 708-2532. 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 May 2, 2012, based on a complaint filed by Technology Properties 
Limited, LLC (``TPL'') of Cupertino, California. 77 FR 26041 (May 2, 
2012). The complaint alleges violations of section 337 of the Tariff 
Act of 1930, as amended, 19 U.S.C. 1337, by reason of infringement of 
certain claims of U.S. Patent Nos. 6,976,623 (``the '623 patent''), 
7,162,549 (``the '549 patent''), 7,295,443 (``the '443 patent''), 
7,522,424 (``the '424 patent''), 6,438,638 (``the '638 patent''), and 
7,719,847 (``the '847 patent''). The complaint further alleges the 
existence of a domestic industry. The notice of investigation named 
twenty-one respondents, some of whom have since settled from the 
investigation. As a result of these settlements, the '638 patent is no 
longer at issue, as it has not been asserted against the remaining 
respondents. The remaining respondents are Acer Inc. of New Taipei 
City, Taiwan (``Acer''); Canon Inc. of Toyko, Japan; Hewlett-Packard 
Company of Palo Alto, California (``HP''); HiTi Digital, Inc. of New 
Taipei City, Taiwan; Kingston Technology Company, Inc. of Fountain 
Valley, California (``Kingston''); Newegg, Inc. and Rosewill Inc., both 
of City of Industry, California (``Newegg/Rosewill''); and Seiko Epson 
Corporation of Nagano, Japan.
    On October 4, 2012, the ALJ issued a Markman order construing 
disputed claim terms of the asserted patents. Order No. 23. On January 
7-11, 2013, the ALJ conducted a hearing, and on August 2, 2013, the ALJ 
issued the final ID. The ALJ found that TPL demonstrated the existence 
of a domestic industry, as required by 19 U.S.C. 1337(a)(2), through 
TPL's licensing investment under 19 U.S.C. 1337(a)(3)(C). ID at 152-55. 
The ALJ rejected TPL's showing based upon OnSpec Electronic, Inc.'s 
research and development, and engineering investments for section 
337(a)(3)(C), as well as subsections (a)(3)(A) and (a)(3)(B). Id. at 
155-57.
    The ALJ found that the respondents had not shown that any of the 
asserted patent claims are invalid. However, the ALJ found that TPL 
demonstrated infringement of the '623 patent, and not the other 
patents. With respect to the '623 patent, the ALJ found that TPL 
demonstrated direct infringement of the asserted apparatus claims 
(claims 1-4 and 9-12). Accordingly, the ALJ found a violation of 
section 337 by Acer, Kingston and Newegg/Rosewill (collectively, ``the 
'623 respondents'') as to these apparatus claims of the ``623 patent.

[[Page 64978]]

    On August 19, 2013, the parties filed petitions for review. TPL's 
petition challenges the ALJ's noninfringement determinations for the 
'443, '424, and '847 patents. TPL did not petition for review of the 
ALJ's noninfringement determination for the '549 patent. The '623 
respondents challenge one of the ALJ's claim constructions, and 
independently challenge the ALJ's finding that the asserted claims of 
the '623 patent are not anticipated by, or obvious in view of, three 
pieces of prior art. The '623 respondents also challenge the ALJ's 
finding that TPL demonstrated the existence of a domestic industry, and 
subscribe to the analysis presented by the respondents against whom the 
'623 patent was not asserted.
    The respondents against whom the '623 patent was not asserted 
contingently challenge TPL's evidence of expenditures, as well as the 
nexus between those expenditures and the asserted patents, for purposes 
of showing a domestic industry under section 337(a)(3)(C). They also 
argue that ``[t]here is no evidence that TPL's licensees' efforts 
relate to 'an article protected by' any of the asserted patents.'' 
Resp'ts' Pet. 42, 54-56. The respondents against whom the '623 patent 
was not asserted also argue that the four patents asserted against them 
are invalid as anticipated or obvious in view of the prior art. They 
also make additional non-infringement arguments for the three patents 
asserted against them for which TPL has petitioned for review (the 
'443, '424 and '847 patents).
    Respondent HP filed a short petition for review on its own behalf. 
HP argues for a narrow interpretation of articles ``protected by'' an 
asserted patent. HP Pet. 5.
    On August 27, 2013, the parties filed responses to each other's 
petitions.
    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 ID in its entirety.
    In connection with the Commission's review, the parties are asked 
to brief only the issues enumerated below. See 19 CFR 210.43(b)(2).
    (1) Discuss, in light of the statutory language, legislative 
history, the Commission's prior decisions, and relevant court 
decisions, including InterDigital Communications, LLC v. ITC, 690 F.3d 
1318 (Fed. Cir. 2012), 707 F.3d 1295 (Fed. Cir. 2013) and Microsoft 
Corp. v. ITC, Nos. 2012-1445 & -1535, 2013 WL 5479876 (Fed. Cir. 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.
    (2) Discuss the construction of ``accessible in parallel'' in view 
of the prosecution history of the '623 patent (including the Examiner's 
Statement of Reasons for Allowance, see Salazar v. Proctor & Gamble 
Co., 414 F.3d 1342, 1347 (Fed. Cir. 2005)), and whether the asserted 
patent claims are infringed and not invalid based upon that 
construction. Invalidity arguments not dependent on that claim 
construction should not be briefed.
    (3) Comment on whether the respondents' invalidity evidence and 
analysis as to the Pro II system, the Uno Mas article, the Kaneshiro 
patent, and the '928 Publication, and TPL's evidence and analysis as to 
the technical prong of the domestic industry requirement, were 
undisputed. Please cite all evidence in the record that supports your 
position.
    (4) Discuss whether TPL demonstrated that the products accused of 
infringing the '443, '424, and '847 patents receive or interface with 
SD cards that operate in a four-bit-bus mode, and if so, whether the 
accused products infringe the asserted claims.
    (5) If the Commission were to find that the accused products 
infringe the '443, '424, and '847 patents, discuss whether the SD 
specification invalidates the asserted claims of those 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. 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. 
(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 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 as set forth above. 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. 
The complainants are also requested to submit proposed remedial orders 
for the Commission's consideration. The complainants are also requested 
to state the date that the asserted 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 Thursday, November 7, 2013 and responses to the 
Commission's questions should not exceed 75 pages. Reply submissions 
must be filed no later than the close of business on Friday, November 
15, 2013, and such replies should not exceed 50 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 
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

[[Page 64979]]

210.4(f)). Submissions should refer to the investigation number (``Inv. 
No. 337-TA-841'') 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 of the Commission's Rules of Practice and 
Procedure (19 CFR 210.42-46).

    By order of the Commission.

    Issued: October 24, 2013.
Lisa R. Barton,
Acting Secretary to the Commission.
[FR Doc. 2013-25643 Filed 10-29-13; 8:45 am]
BILLING CODE 7020-02-P