[Federal Register Volume 78, Number 246 (Monday, December 23, 2013)]
[Notices]
[Pages 77490-77492]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2013-30318]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-850]


Certain Electronic Imaging Devices; Notice of Commission 
Determination To Review-in-Part a Final 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 in-part the final initial 
determination (``ID'') issued by the presiding administrative law judge 
(``ALJ'') on September 30, 2013, finding a violation of Section 337 of 
the Tariff Act of 1930, 19 U.S.C. 1337 (``Section 337'').

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: The Commission instituted this investigation 
on June 29, 2012, based on a complaint filed by Flashpoint Technology, 
Inc. (``Flashpoint'') of Peterborough, New Hampshire alleging 
violations of Section 337 in the importation into the United States, 
the sale for importation, and the sale within the United States after 
importation of certain electronic imaging devices by reason of 
infringement of certain claims of U.S. Patent Nos. 6,504,575 (``the 
'575 patent''), 6,222,538 (``the '538 patent''), 6,400,471 (``the '471 
patent''), and 6,223,190 (``the '190 patent''). The notice of 
investigation named the following respondents: HTC Corporation of 
Taoyuan, Taiwan and HTC America, Inc. of Bellevue, Washington 
(collectively, ``HTC''); Pantech Co., Ltd. of Seoul, Republic of Korea 
and Pantech Wireless, Inc. of Atlanta, Georgia (collectively, 
``Pantech''); Huawei Technologies Co., Ltd. of Shenzhen, China; 
FutureWei Technologies, Inc. d/b/a Huawei Technologies (USA) of Plano, 
Texas (collectively ``Huawei''); ZTE Corporation of Shenzhen, China; 
and ZTE (USA) Inc. of Richardson, Texas (collectively ``ZTE''). The 
'575 patent and respondent Pantech have been terminated from the 
investigation. The Commission Office of Unfair Import Investigations 
did not participate in this investigation.
    On September 30, 2013, the ALJ issued a final ID finding a 
violation of Section 337 by HTC. Specifically, the ALJ concluded that 
two of the accused HTC smartphones, i.e., the HTC Vivid and HTC Droid 
Incredible 4G LTE, infringe the asserted claims of the '538 patent. The 
ALJ found, however, that none of the other accused HTC smartphones 
infringe the '538 patent and that none of the accused HTC, Huawei, or 
ZTE smartphones infringe the asserted claims of the '471 patent or the 
'190 patent. The ALJ found that the smartphones of Flashpoint's 
licensees [REDACTED] meet the technical prong of the domestic industry 
requirement with respect to the '538 patent, but that none of the 
licensed [REDACTED] smartphones meet the technical prong of the 
domestic industry requirement with respect to either the '471 or '190 
patents. The ALJ found that Flashpoint established the economic prong 
of the domestic industry requirement under Sections 337(a)(3)(A), (B), 
and (C) with respect to all of the asserted patents. The ALJ also found 
that HTC has not established that the asserted patents are invalid in 
view of the prior art or the on-sale bar. The ALJ further found that 
the '190 and '538 patents are not unenforceable for failure to name an 
inventor.
    On October 31, 2013, Flashpoint filed a petition for review, 
challenging the ALJ's determination with respect to: (1) The 
representativeness of the accused products for the '538 patent, (2) 
claim construction for the '471 patent, (3) non-infringement of the 
'471 patent, (4) non-infringement of the '190 patent, (5) technical 
prong for the '471 patent, and (6) technical prong for the '190 patent.
    On the same day, respondents HTC, Huawei, and ZTE filed a joint 
petition for review, challenging the ALJ's determination with respect 
to: (1) Non-infringement of the '190 patent, (2) validity of the '190 
patent for anticipation and obviousness, (3) validity of the '471 
patent for anticipation and obviousness (4) technical prong for the 
'190 patent, and (5) economic prong with respect to all asserted 
patents. HTC filed a separate petition for review with respect to 
issues affecting only HTC, challenging the ALJ's determination with 
respect to (1) claim construction for the '538 patent, (2) infringement 
of the '538 patent, (3) validity of the '538 patent for anticipation 
and obviousness, (4) non-infringement of the '471 patent; (5) validity 
of the asserted patents with respect to the on-sale bar, and (6) 
enforceability of the asserted patents.
    The Commission has determined to review the ALJ's findings 
regarding the following issues: (1) Infringement of the asserted claims 
of the '538 patent by the HTC Vivid and HTC Droid Incredible 4G LTE 
smartphones; (2) the technical prong of the domestic industry 
requirement for the '538 patent; (3) obviousness of the asserted claims 
of the '538 patent over U.S. Patent No. 5,835,772 to Thurlo 
(``Thurlo''), U.S. Patent No. 5,740,801 to Branson (``Branson''), the 
``Admitted Prior Art'' (``APA''), U.S. Patent No. 5,638,501 to Gough et 
al. (``Gough''), and U.S. Patent No. 5,898,434 to Small (``Small''); 
(4) claim construction of the term ``operating system'' in the asserted 
claims of the '471 patent; (5) infringement of the '471 patent by the 
accused HTC, Huawei, and ZTE products; (6) the technical prong of the 
domestic industry requirement for the '471 patent; (7) anticipation of 
the asserted claims of the '471 patent in view of U.S. Patent No. 
5,687,376 to Celi, Jr. et al.; (8) infringement of the asserted claim 
of the '190 patent; (9) technical prong of the domestic industry 
requirement for the '190 patent; (10) anticipation and obviousness of 
the '190 patent in view of U.S. Provisional Patent Application 60/
037,963 to Parulski; (11) anticipation and obviousness of the '190 
patent in view of the Zaurus; (12) anticipation and obviousness of the 
'`190 patent in view of the Japanese Laid-Open Patent Application No. 
H09-298678 to Kazu Saito; (13) validity of the '538, '471, and '`190 
patents in view of the on-sale bar; (14) enforceability of claim 19 of 
the '538 patent with respect to joint inventorship; and (15) the 
economic prong of the domestic industry requirement with respect to the 
'539, '471, and '190 patents. The

[[Page 77491]]

Commission has determined not to review any of the remaining issues.
    The parties should brief their positions on the issues on 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: The Federal Circuit issued an opinion in Suprema Inc. 
v. ITC on December 13, 2013, holding that ``an exclusion order based on 
a violation of 19 U.S.C. Sec.  1337(a)(1)(B)(i) may not be predicated 
on a theory of induced infringement under 35 U.S.C. 271(b) where direct 
infringement does not occur until after importation of the articles the 
exclusion order would bar.'' Opinion at 4. Please address whether the 
Court's holding regarding induced infringement applies to the facts of 
this case.
    Question 2: Please discuss whether Flashpoint has presented 
sufficient evidence that HTC had specific intent to induce infringement 
of the asserted claims of the '538 patent [REDACTED] Specifically, 
please address whether this case is or is not distinguishable from the 
facts of i4i Ltd. Partnership v. Microsoft Corp., 598 F.3d 831, 851-52 
(Fed. Cir. 2010).
    Question 3: Please discuss whether Flashpoint has presented 
sufficient evidence showing acts of direct infringement as to the 
asserted claims of the '538 patent. [REDACTED]
    Question 4: Please discuss whether the asserted claims of the '538 
patent are obvious over Thurlo, Branson, the APA, Gough, and/or Small. 
Specifically, please address whether a person of ordinary skill in the 
art would be motivated to combine Thurlo, Branson, and the APA, and 
whether a person of ordinary skill in the art would be motivated to 
combine Thurlo, Branson, and the APA, with Gough and/or Small. Please 
cite to the record, including relevant prosecution history and expert 
testimony.
    Question 5: With respect to the proper construction of the term 
``operating system'' of the asserted claims of the '471 patent, discuss 
whether the preferred embodiments of the '471 patent are implemented 
using an ``operating system'' that does not include the kernel and 
device drivers. Please also discuss, even if the preferred embodiments 
of the '471 patent are implemented using an operating system that does 
not include the kernel and device drivers, whether under the ALJ's 
construction of the term ``operating system,'' the kernel and device 
drivers are necessarily included.
    Question 6: Discuss whether the accused products meet each of the 
limitations of the asserted claims of the '471 patent, including the 
term ``operating system'' under the proper construction of that term 
and the term ``image processing system,'' as construed by the ALJ.
    Question 7: [REDACTED]
    Question 8: Discuss whether the asserted claims of the '471 patent 
are anticipated by the Celi reference under the ALJ's construction of 
the term ``image processing subsystem.''
    Question 9: [REDACTED]
    Question 10: Discuss whether the accused products meet the 
limitation ``wherein the formatted document is formatted in accordance 
with a predefined model'' of claim 13 of the '190 patent. [REDACTED]
    Question 11: Please provide evidentiary support in the record 
regarding whether the U.S. investments alleged by complainant are 
significant or substantial in the context of the complainant's 
business, the relevant industry, and market realities.
    Question 12: Assume for purposes of this question that the ITC 
issues an exclusion order covering the ``no-contract'' and ``pay as you 
go'' phones described on page 4 of ZTE Corporation and ZTE (USA) Inc.'s 
Statement on the Public Interest filed on November 18, 2013. Please 
provide the percentage of the total ``no contract'' and ``pay as you 
go'' phone market that would be affected by such an exclusion order.
    Question 13: Several entities submitted statements on the public 
interest asserting that there should be a transition period for any 
remedy issued against HTC. Please explain and provide evidence 
regarding whether such a transition period is warranted in this 
investigation. Additionally, please explain and provide evidence 
regarding the appropriate duration for any such transition period.
    Question 14: Several entities submitted statements on the public 
interest asserting that the Commission should consider in its public 
interest analysis the fact that HTC's accused products are complex 
devices comprising numerous components, whereas Flashpoint's 
infringement allegations are directed to a single component of the 
accused devices. How (if at all) should the Commission consider such a 
factor in determining whether to issue such a remedy or in fashioning 
an appropriate remedy in this investigation?
    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 Fed. Reg. 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 is

[[Page 77492]]

also requested to submit proposed remedial orders for the Commission's 
consideration. Complainant is also requested to state the date that the 
patents expire 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, 
January 3, 2014. Reply submissions must be filed no later than the 
close of business on Thursday, January 10, 2014. The written 
submissions must be no longer than 75 pages and the reply submissions 
must be no longer than 35 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).

     Issued: December 16, 2013.

    By order of the Commission.
Lisa R. Barton,
Acting Secretary to the Commission.
[FR Doc. 2013-30318 Filed 12-20-13; 8:45 am]
BILLING CODE 7020-02-P