[Federal Register Volume 81, Number 246 (Thursday, December 22, 2016)]
[Notices]
[Pages 93960-93962]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2016-30811]


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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's Final 
Determination; Issuance of a Limited Exclusion Order; Termination of 
the Investigation

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 found a violation of section 337 in this investigation 
and has issued a limited exclusion order prohibiting importation of 
infringing lithium metal oxide cathode materials for consumption in the 
United States.

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 (https://www.usitc.gov). The public record for this investigation may be viewed 
on the Commission's electronic docket (EDIS) at https://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

[[Page 93961]]

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. 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 
and a motion for a Commission hearing. 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. On March 22, 2016, the 
parties filed responses to the petitions for review.
    On April 8, 2016, 3M Corporation (``3M'') filed a motion to 
intervene under Commission Rule 210.19. 3M requested that the 
Commission grant it ``with full participation rights in this 
Investigation in order to protect its significant interests in the 
accused materials.''
    On May 11, 2016, the Commission determined to review the final ID 
in part. 81 FR 30548-50 (May 17, 2016). Specifically, the Commission 
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 
determined to deny 3M's motion to intervene, but stated that it would 
consider 3M's comments in considering remedy, bonding and the public 
interest this investigation if a violation of Section 337 is found. 
Pursuant to Commission rule 210.45 (19 CFR 210.45), Umicore's request 
for a Commission hearing was granted.
    The Commission requested the parties to brief their positions on 
the issues under review with reference to the applicable law and the 
evidentiary record, and posed specific briefing questions. On May 23, 
2016, the parties filed submissions to the Commission's questions. On 
June 3, 2016, the parties filed responses to the initial submissions. 
Interested public entities, including 3M and the Belgian Ambassador 
also submitted comments on the public interest.
    On August 2, 2016, Complainants filed a motion pursuant to 19 CFR 
210.15(a)(2) and 19 CFR 210.38(a) for the Commission to reopen the 
record in this Investigation to admit a July 6, 2016 news article that 
allegedly includes statements by Umicore Greater China Senior Vice 
President Chuxian Feng as to this investigation. On August 11 & 12, 
2016, Umicore and the IA filed respective oppositions to the motion. 
The Commission has determined to deny Complainants motion to reopen the 
record.
    The Commission was interested in hearing presentations concerning 
the appropriate remedy (if any) and the effect that such remedy would 
have upon the public interest. The Commission invited Government 
agencies, public-interest groups, and interested members of the public 
to make oral presentations on the issues of remedy and the public 
interest. The Commission held a public hearing on Thursday, November 
17, 2016, in the USITC Main Hearing Room. The hearing was limited to 
the issues of laches, contributory infringement, and the public 
interest. The hearing consisted of two panels. The first panel was 
limited to the parties (i.e., complainants, respondents, and the IA), 
who were given an opportunity to comment on the issues identified 
above. The second panel consisted of non-party witnesses on the public 
interest.
    The Commission thanks the various entities who appeared to testify 
on the public interest.
    Having examined the record of this investigation, including the 
final ID, the petitions for review, responses thereto, and all other 
appropriate submissions, the Commission has determined to reverse the 
ALJ's finding that Umicore does not induce infringement. The Commission 
finds that the record evidence fails to support the ALJ's finding that 
Umicore had a good faith belief of non-infringement. The Commission has 
determined to affirm the ALJ's finding that Umicore's laches defense 
fails on the merits. The Commission vacates and takes no position on 
the legal question of whether laches is an available defense at the 
Commission. The Commission has determined to vacate and take no 
position on the ALJ's finding that Complainants established the 
existence of a domestic industry under 19 U.S.C. 1337(a)(3)(C) with 
respect to BASF.
    Having found a violation of section 337 in this investigation, the 
Commission has determined that the appropriate form of relief is a 
limited exclusion order prohibiting the unlicensed entry of lithium 
metal oxide cathode materials that infringe one or more of claims 1-4, 
7, 13, and 14 of the '082 patent, or claims 1-4, 8, 9, and 17 of the 
'143 patent that are manufactured by, or on behalf of, or imported by 
or on behalf of Umicore N.V. and Umicore USA Inc. or any of their 
affiliated companies, parents, subsidiaries, agents, or other related 
business entities, or their successors or assigns.
    The Commission has also determined that the public interest factors 
enumerated in section 337(d) (19 U.S.C. 1337(d)) does not preclude 
issuance of the limited exclusion order. Finally, the Commission has 
determined that a bond in the amount of three percent of entered value 
is required to permit

[[Page 93962]]

temporary importation during the period of Presidential review (19 
U.S.C. 1337(j)) of lithium metal oxide cathode materials that are 
subject to the limited exclusion order. The Commission's orders and 
opinion were delivered to the President and to the United States Trade 
Representative on the day of their issuance.
    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: December 16, 2016.
Lisa R. Barton,
Secretary to the Commission.
[FR Doc. 2016-30811 Filed 12-21-16; 8:45 am]
 BILLING CODE 7020-02-P