[Federal Register Volume 78, Number 230 (Friday, November 29, 2013)]
[Notices]
[Pages 71643-71645]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2013-28717]


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

INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-853]


Certain Wireless Consumer Electronics Devices and Components 
Thereof; Commission Determination To Review in Part A Final Initial 
Determination Finding No Violation of Section 337; Extension of Target 
Date

AGENCY: U.S. International Trade Commission.

ACTION: Notice.

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

SUMMARY: Notice is hereby given that the U.S. International Trade 
Commission has determined to review in part the presiding administrate 
law judge's (``ALJ'') final initial determination (``ID'') finding no 
violation of Section 337 in the above-referenced investigation. The 
Commission has also determined to extend the target date for completion 
of this investigation to January 29, 2014.

FOR FURTHER INFORMATION CONTACT: Megan M. Valentine, Office of the 
General Counsel, U.S. International Trade Commission, 500 E Street SW., 
Washington, DC 20436, telephone (202) 708-2301. 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 24, 2012, based on a complaint filed by Technology Properties 
Limited LLC and Phoenix Digital Solutions LLC, both of Cupertino, 
California; and Patriot Scientific Corporation of Carlsbad, California 
(collectively ``Complainants''). 77 FR 51572-573 (August 24, 2012). The 
complaint alleges violations of section 337 of the Tariff Act of 1930, 
as amended, 19 U.S.C. 1337 (``section 337''), in the importation into 
the United States, the sale for importation, and the sale within the 
United States after importation of certain wireless consumer 
electronics devices and components thereof by reason of infringement of 
certain claims of U.S. Patent No. 5,809,336 (``the '336 patent''). The 
Commission's notice of investigation named the following as 
respondents: Acer, Inc. of Taipei, Taiwan and Acer America Corporation 
of San Jose, California (collectively ``Acer''); Amazon.com, Inc. of 
Seattle, Washington (``Amazon''); Barnes and Noble, Inc. of New York, 
New York (``B&N''); Garmin Ltd of Schaffhausen, Switzerland, Garmin 
International, Inc. of Olathe, Kansas, and Garmin USA, Inc. of Olathe, 
Kansas (collectively ``Garmin''); HTC Corporation of Taoyuan, Taiwan 
and HTC America of Bellevue, Washington (collectively ``HTC''); Huawei 
Technologies Co, Ltd. of Shenzhen, China (``Huawei Tech.''); Huawei 
North America of Plano, Texas (``Huawei NA''); Kyocera Corporation of 
Kyoto, Japan and Kyocera Communications, Inc. of San Diego, California 
(collectively ``Kyocera''); LG Electronics, Inc. of Seoul, Korea and LG 
Electronics U.S.A., Inc. of Englewood Cliffs, New Jersey (collectively 
``LG''); Nintendo Co. Ltd. of Kyoto, Japan and Nintendo of America, 
Inc. of Redmond, Washington (collectively ``Nintendo''); Novatel 
Wireless, Inc. of San Diego, California (``Novatel''); Samsung 
Electronics Co., Ltd., of Seoul, Korea

[[Page 71644]]

and Samsung Electronics America, Inc. of Ridgefield Park, New Jersey 
(collectively ``Samsung''); Sierra Wireless, Inc. of British Columbia, 
Canada and Sierra Wireless America, Inc. of Carlsbad, California 
(collectively ``Sierra''); and ZTE Corporation of Shenzhen, China and 
ZTE (USA) Inc. of Richardson, Texas (collectively ``ZTE''). The Office 
of Unfair Import Investigations was named as a participating party.
    On February 4, 2013, the Commission terminated the investigation 
with respect to Sierra. Notice (Feb. 4, 2013); see Order No. 17 (Jan. 
15, 2013). On February 15, 2013, the Commission issued a notice 
indicating that the Notice of Investigation had been amended to remove 
Huawei NA as a respondent and to add Huawei Device Co., Ltd. of 
Shenzhen, China; Huawei Device USA Inc. of Plano, Texas; and Futurewei 
Technologies, Inc. d/b/a Huawei Technologies (USA) of Plano, Texas as 
respondents. Notice (Feb. 15, 2013); see Order No. 14 (Jan. 8, 2013).
    On August 23, 2013, Complainants and respondent Kyocera filed a 
joint motion to terminate the investigation with respect to Kyocera on 
the basis of a portfolio licensing agreement entered into between those 
parties. On August 23, 2013, Complainants and Kyocera filed a revised 
joint motion to indicate the positions of the other parties. On 
September 9, 2013, the ALJ issued a notice indicating that, because the 
final deadline for responses to the revised motion was not due to occur 
until after he had already issued the final ID, the motions were 
pending before the Commission. Notice (Sept. 9, 2013). On September 20, 
2013, the Commission granted a joint motion to terminate the 
investigation as to Kyocera based on the settlement agreement. Notice 
(Sept. 20, 2013).
    On September 6, 2013, the ALJ issued his final initial 
determination (``ID''), finding no violation of Section 337 with 
respect to all of the named respondents. Specifically, the ALJ found 
that the importation requirement of Section 337 is satisfied. The ALJ 
also found that none of the accused products directly or indirectly 
infringe the asserted claims of the '336 patent. The ALJ further found 
that the asserted claims of the '336 patent have not been found to be 
invalid. The ALJ also found that respondents have not shown that the 
accused LG product is covered by a license to the '336 patent. The ALJ 
further found that Complainants have satisfied the domestic industry 
requirement pursuant to 19 U.S.C. 1337(a)(3)(C) for the '336 patent 
because Complainants' licensing activities have a nexus to the '336 
patent and because Complainants' licensing investments with respect to 
the '336 patent are substantial. The ALJ also found that there are no 
public interest issues that would preclude issuance of a remedy were 
the Commission to find a violation of section 337. The ALJ also issued 
a recommended determination, recommending that the appropriate remedy 
is a limited exclusion order barring entry of infringing wireless 
consumer electronics devices and components thereof against the active 
respondents. The ALJ did not recommend issuance of a cease and desist 
order against any respondent. The ALJ also did not recommend the 
imposition of a bond during the period of Presidential review. On 
September 12, 2013, the ALJ issued a Notice of Clarification 
supplementing the Final ID. Notice of Clarification Regarding Final 
Initial Determination (Sept. 12, 2013).
    On September 17, 2013, Complainants and Amazon filed a joint motion 
to terminate Amazon from the investigation based on a settlement 
agreement. Also on September 17, 2013, Complainants and Acer filed a 
joint motion to terminate Acer from the investigation based on a 
settlement agreement. On September 24, 2013, the Commission 
investigative attorney (``IA'') filed individual responses to each 
joint motion, supporting the motions to terminate Amazon and Acer based 
on settlement.
    On September 23, 2013, Complainants filed a petition for review of 
certain aspects of the final ID as concern asserted claims 6 and 13 of 
the '336 patent. In particular, Complainants request that the 
Commission review the ID's construction of the ``entire oscillator'' 
terms recited in claims 6 and 13 and the ID's infringement findings 
based on those limitations. Complainants also request that the 
Commission review the ID's infringement findings concerning the 
limitations ``varying,'' ``independent,'' and ``asynchronous'' recited 
in claims 6 and 13. Also on September 23, 2013, the remaining 
Respondents who had not settled with Complainants filed a contingent 
petition for review of certain aspects of the final ID. In particular, 
Respondents request review of the ID's finding that Complainants have 
satisfied the domestic industry requirement based on licensing 
activities. On October 17, 2013, Respondents filed a response to 
Complainants' petition for review. Also on October 17, 2013, 
Complainants filed a response to Respondents' contingent petition for 
review. Further on October 17, 2013, the IA filed a joint response to 
the private parties' petitions.
    Also on October 17, 2013, Complainants' filed a post-RD statement 
on the public interest pursuant to Commission Rule 201.50(a)(4). On 
October 23, 2013, Respondents also filed a submission pursuant to the 
rule. No responses from the public were received in response to the 
post-RD Commission Notice issued on September 9, 2013. See Notice of 
Request for Statements on the Public Interest (Sept. 9, 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 final ID in part with 
respect to the ID's findings concerning claim construction and 
infringement of claims 6 and 13 of the '336 patent.
    As to the accused products listed at page 88 of the ID and products 
containing these chips, the Commission has determined not to review the 
ID's finding that Complainants have failed to satisfy their burden of 
proof with respect to infringement of claims 6 and 13.
    Regarding the ID's finding of domestic industry, the Commission has 
determined to review the ID to consider the question of whether the 
alleged industry still exists in light of TPL's relinquishing its right 
to license the '336 patent. The Commission has also determined to 
review the ID's domestic industry finding to consider whether 
Complainants have satisfied the economic prong of the domestic industry 
requirement. The Commission has further determined to review the ID's 
statement that Complainants need not show that at least one of their 
licensees practices the patent(s)-in-suit to demonstrate a license-
based domestic industry. See ID at 296 (Public Ver.) (Oct. 24, 2013).
    The Commission has determined not to review the remaining issues 
decided in the final ID.
    The Commission has also determined to grant the joint motions to 
terminate the investigation as to Amazon and Acer based on settlement.
    In connection with its review, the parties are requested to brief 
their positions on the following questions:
    1. With respect to the Accused Products using so-called ``current-
starved technology,'' specifically identify which accused chips are 
implicated, cite to the relevant evidence in the record, and discuss 
whether those products satisfy the ``entire oscillator'' limitation of 
claims 6 and 13 of the '336 patent.

[[Page 71645]]

    2. With respect to Complainants' alleged licensed-based domestic 
industry, is there a continuing revenue stream from the existing 
licenses and is the licensing program ongoing? If the licensing program 
is ongoing, which complainant(s) is/are investing in the program and 
what is the nature (not amounts) of those investments?
    3. Please describe the claimed expenditures for patent prosecution 
and litigation and explain how they relate to Complainants' domestic 
industry in licensing the '336 patent. Please provide an estimate of 
the proportion of the total claimed investments in licensing the `336 
patent accounted for by the claimed patent prosecution and litigation 
expenditures.
    4. 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). Assuming that is so, please 
identify and describe the evidence in the record that establishes 
articles protected by the asserted patents.
    The parties have been invited to brief only the discrete issues 
described above, with reference to the applicable law and evidentiary 
record. The parties are not to brief other issues on review, which are 
adequately presented in the parties' existing filings.
    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 a cease and desist order that could result in the respondent 
being required to cease and desist from engaging in unfair acts in the 
importation and sale of such articles. 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 a cease and desist order 
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.
    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 and prescribed by the 
Secretary of the Treasury.
    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, the 
Office of Unfair Import Investigations, 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 
and the ALJ's recommendation regarding the public interest. Complainant 
and OUII 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 
December 23, 2013. Initial submissions are limited to 50 pages, not 
including any attachments or exhibits related to discussion of the 
public interest. Reply submissions must be filed no later than the 
close of business on December 30, 2013. Reply submissions are limited 
to 25 pages, not including any attachments or exhibits related to 
discussion of 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-853'') 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 any confidential filing. All non-confidential 
written submissions will be available for public inspection at the 
Office of the Secretary and on EDIS.
    The target date for completion of this investigation is extended to 
January 29, 2014.
    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: November 25, 2013.
Lisa R. Barton,
Acting Secretary to the Commission.
[FR Doc. 2013-28717 Filed 11-27-13; 8:45 am]
BILLING CODE 7020-02-P