[Federal Register Volume 81, Number 95 (Tuesday, May 17, 2016)]
[Notices]
[Pages 30548-30550]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2016-11563]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-951]


Certain Lithium Metal Oxide Cathode Materials, Lithium-Ion 
Batteries for Power Tool Products Containing Same, and Power Tool 
Products With Lithium-Ion Batteries Containing Same; Commission 
Determination To Review in Part a Final Initial Determination; Deny 
Certain Motions; and Grant a Request for a Commission Hearing; Request 
for Written Submissions on the Issues Under Review and on 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 part the final initial 
determination (``ID'') issued by the presiding administrative law judge 
(``ALJ'') on February 29, 2016, finding a violation of section 337 of 
the Tariff Act of 1930, as amended (19 U.S.C. 1337), as to the asserted 
patent claims in this investigation. The Commission has also determined 
to deny motions for intervention and to reopen the record. Pursuant to 
Commission Rule 210.45 (19 CFR 210.45), Respondents' request for a 
Commission hearing has been granted. A notice providing the scope and 
details of the hearing will be forthcoming.

FOR FURTHER INFORMATION CONTACT: Panyin A. Hughes, Office of the 
General Counsel, U.S. International Trade Commission, 500 E Street SW., 
Washington, DC 20436, telephone 202-205-3042. 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 (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 March 30, 2015, based on a complaint filed by BASF Corporation of 
Florham Park, New Jersey and UChicago Argonne LLC of Lemont, Illinois 
(collectively, ``Complainants''). 80 FR 16696 (Mar. 30, 2015). The 
complaint alleges violations of section 337 of the Tariff Act of 1930, 
as amended (19 U.S.C. 1337), in the importation into the United States, 
the sale for importation, and the sale within the United States after 
importation of certain lithium metal oxide cathode materials, lithium-
ion batteries for power tool products containing same, and power tool 
products with lithium-ion batteries containing same by reason of 
infringement of one or more of claims 1-4, 7, 13, and 14 of U.S. Patent 
No. 6,677,082 (``the '082 patent'') and claims 1-4, 8, 9, and 17 of 
U.S. Patent No. 6,680,143 (``the '143 patent''). Id. The notice of 
investigation named the following respondents: Umicore N.V. of 
Brussels, Belgium; Umicore USA Inc. of Raleigh, North Carolina 
(collectively, ``Umicore''); Makita Corporation of Anjo, Japan; Makita 
Corporation of America of Buford, Georgia; and Makita U.S.A. Inc. of La 
Mirada, California (collectively, ``Makita''). Id. The Office of Unfair 
Import Investigations is a party to the investigation.
    On November 5, 2015, the ALJ granted a joint motion by Complainants 
and Makita to terminate the investigation as to Makita based upon 
settlement. See Order No. 32 (Nov. 5, 2015). The Commission determined 
not to review. See Notice (Nov. 23, 2015).
    On December 1, 2015, the ALJ granted an unopposed motion by 
Complainants to terminate the investigation as to claim 8 of the '082 
patent. See Order No. 35 (Dec. 1, 2015). The Commission determined not 
to review Order No. 35. See Notice (Dec. 22, 2015).
    On February 29, 2016, the ALJ issued his final ID, finding a 
violation of section 337 by Umicore in connection with claims 1-4, 7, 
13, and 14 of the '082 patent and claims 1-4, 8, 9, and 17 of the '143 
patent. Specifically, the ID found that the Commission has subject 
matter jurisdiction, in rem jurisdiction over the accused products, and 
in personam jurisdiction over Umicore. ID at 10-11. The ID found that 
Complainants satisfied the importation requirement of section 337 (19 
U.S.C.

[[Page 30549]]

1337(a)(1)(B)). Id. at 9-10. The ID found that the accused products 
directly infringe asserted claims 1-4, 7, 13, and 14 of the '082 
patent; and asserted claims 1-4, 8, 9, and 17 of the '143 patent, and 
that Umicore contributorily infringes those claims. See ID at 65-71, 
83-85. The ID, however, found that Complainants failed to show that 
Umicore induces infringement of the asserted claims. Id. at 79-83. The 
ID further found that Umicore failed to establish that the asserted 
claims of the '082 or '143 patents are invalid for lack of enablement 
or incorrect inventorship. ID at 118-20. The ID also found that 
Umicore's laches defense fails as a matter of law (ID at 122-124) and 
also fails on the merits (ID at 124-126). Finally, the ID found that 
Complainants established the existence of a domestic industry that 
practices the asserted patents under 19 U.S.C. 1337(a)(2). See ID at 
18, 24.
    On March 14, 2016, Umicore filed a petition for review of the ID. 
Also on March 14, 2016, the Commission investigative attorney (``IA'') 
petitioned for review of the ID's finding that a laches defense fails 
as a matter of law in section 337 investigations. Further on March 14, 
2016, Complainants filed a contingent petition for review of the ID. 
That same day, Umicore filed a motion under Commission Rules 
210.15(a)(2) and 210.38(a) (19 CFR 210.15(a)(2) and 210.38(a)), for the 
Commission to reopen the record in this investigation to admit a paper 
published on October 29, 2015, and a press release issued that day 
(collectively, ``documents''). On March 22, 2016, the parties filed 
responses to the petitions for review. On March 24, 2016, Complainants 
and the IA filed oppositions to Umicore's motion to reopen the record. 
On April 5, 2016, Umicore moved for leave to file a reply. The 
Commission has determined to grant Umicore's motion for leave to file a 
reply.
    On April 8, 2016, 3M Corporation (``3M'') filed a motion to 
intervene under Commission Rule 210.19. 3M requests that the Commission 
grant it ``with full participation rights in this Investigation in 
order to protect its significant interests in the accused materials.''
    Having examined the record of this investigation, including the 
final ID, the petitions for review, and the responses thereto, the 
Commission has determined to review the final ID in part. Specifically, 
the Commission has determined to review (1) the ID's contributory and 
induced infringement findings; (2) the ID's domestic industry findings 
under 19 U.S.C. 1337(a)(3)(C); and (3) the ID's findings on laches.
    The Commission has determined to deny Umicore's motion to reopen 
the record to admit the documents. The Commission notes that the 
documents that Umicore seeks to introduce into evidence were available 
as of October 29, 2015, the last day of the hearing before the ALJ. 
Thus, Umicore could not have presented them prior to the hearing. 
Nothing, however, prevented Umicore from filing a timely motion under 
Commission Rule 210.42(g) requesting the ALJ to reopen the record and 
consider the documents prior to issuance of the final ID. The 
Commission notes that the final ID did not issue until February 29, 
2016, four months after the documents were published. Yet, Umicore made 
no attempt to request the ALJ to consider the documents in the final 
ID. Thus, the Commission has determined to deny Umicore's motion to 
reopen the record at this late stage.
    The Commission has determined to deny 3M's motion to intervene. The 
Commission notes that 3M filed a public interest statement on April 8, 
2016, making substantially the same arguments it makes in its motion to 
intervene. The Commission will consider 3M's comments in considering 
remedy, bonding and the public interest this investigation if a 
violation of section 337 is found.
    The parties are requested to 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 interested in 
responses to the following questions:

    1. Please discuss whether laches should be an available defense 
in a section 337 investigation. In your response, please address how 
SCA Hygiene Products v. First Quality Baby Prod., 807 F.3d 1311 
(Fed. Cir. 2015), cert. granted, 578 U.S.__(May 2, 2016), applies 
and any statutory support for your position.
    2. Please discuss whether a good faith belief of non-
infringement negates a contributory infringement finding, where the 
accused products have no substantial non-infringing uses. In your 
response, please address the impact of the following cases: Commil 
USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920 (2015); Global-Tech 
Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2068 (2011); 
Spansion, Inc. v. International Trade Comm'n, 629 F.3d 1331, 1359 
(Fed. Cir. 2010); Golden Blount, Inc. v. Robert H. Peterson Co., 438 
F.3d 1354 (Fed. Cir. 2006).
    3. Please point to evidence (or lack of evidence) showing that 
Umicore had a good faith belief of non-infringement, including 
evidence showing that Umicore relied upon that belief.
    4. Please discuss in detail the extent to which an exclusion 
order would affect research and development efforts with respect to 
lithium ion batteries by universities and private companies. See 
Statement of Umicore S.A. And Umicore USA Inc. Regarding the Public 
Interest at 1 (Apr. 4, 2016). In your response, identify each 
university and private company engaged in such research and 
development efforts.
    5. Please provide a detailed discussion of the record evidence 
as to whether Umicore's NMC material is uniquely suited for specific 
applications in energy saving technology, cutting-edge research and 
development, including identifying those specific areas and volumes 
involved and whether any other material can be used in such 
applications. See Statement of Umicore S.A. And Umicore USA Inc. 
Regarding the Public Interest at 1-2.
    6. Please discuss whether each of the research companies and 
universities currently using Umicore NMC material (See Statement of 
Umicore S.A. And Umicore USA Inc. Regarding the Public Interest at 
1-2) may also use materials from other sources for each of their 
specific research projects.
    7. Please discuss whether NMC materials produced by other 
suppliers have lower performance characteristics and consistency. 
See Statement of Umicore S.A. And Umicore USA Inc. Regarding the 
Public Interest at 2-3.
    8. Please discuss how the Umicore NMC material relates to 3M's 
research and whether other suppliers provide comparable material 
that 3M can use in its research. See 3M Company's Comments on the 
Effect on the Public Interest of the Proposed Remedy in the 
Recommended Determination (Apr. 8, 2016).
    9. Please identify the suppliers of NMC to the U.S. market and 
the percentage of the market held by each.

    Pursuant to Commission rule 210.45 (19 CFR 210.45), Umicore's 
request for a Commission hearing has been granted. A notice providing 
the scope and details of the hearing will be forthcoming.
    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 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

[[Page 30550]]

Lines, Inv. No. 337-TA-360, USITC Pub. No. 2843 (December 1994) 
(Commission Opinion).
    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 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. Complainants and the IA are requested to submit 
proposed remedial orders for the Commission's consideration. 
Complainants are also requested to state the date that the patents 
expire and the HTSUS numbers under which the accused products are 
imported. Complainants are further requested to supply the names of 
known importers of the Umicore products at issue in this investigation. 
The written submissions and proposed remedial orders must be filed no 
later than close of business on May 23, 2016. Reply submissions must be 
filed no later than the close of business on June 2, 2016. Opening 
submissions are limited to 50 pages. Reply submissions are limited to 
25 pages. Such submissions should address the ALJ's recommended 
determinations on remedy and bonding. No further submissions on any of 
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 eight 
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-951'') 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 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 part 210 of the Commission's Rules of Practice and Procedure (19 CFR 
part 210).

    By order of the Commission.

    Issued: May 11, 2016.
Lisa R. Barton,
Secretary to the Commission.
[FR Doc. 2016-11563 Filed 5-16-16; 8:45 am]
BILLING CODE 7020-02-P