[Federal Register Volume 82, Number 241 (Monday, December 18, 2017)]
[Notices]
[Pages 60038-60041]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2017-27168]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-1012]


Certain Magnetic Data Storage Tapes and Cartridges Containing the 
Same; Commission Determination To Review-in-Part a Final Initial 
Determination Finding a Violation of Section 337; Request for Written 
Submissions; Extension of Target Date for Completion 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 determined to review in part the presiding 
administrative law judge's (``ALJ'') final initial determination 
(``Final ID'') issued on September 1, 2017, finding a violation of 
section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337 
(``section 337'') in the above-captioned investigation. The Commission 
has also determined to extend the target date for completion of the 
above-captioned investigation to February 20, 2018.

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 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 July 1, 2016, based on a Complaint filed by Fujifilm Corporation of 
Tokyo, Japan, and Fujifilm Recording Media U.S.A., Inc. of Bedford, 
Massachusetts (collectively, ``Fujifilm''). 81 FR 43243-44 (July 1, 
2016). The Complaint alleges violations of section 337 of the Tariff 
Act of 1930, as amended, 19 U.S.C. 1337 (``section 337''), in the sale 
for importation, importation, and sale within the United States after 
importation of certain magnetic data storage tapes and cartridges 
containing the same by reason of infringement of certain claims of U.S. 
Patent Nos. 6,641,891 (``the '891 patent''); 6,703,106 (``the '106 
patent''); 6,703,101 (``the '101 patent''); 6,767,612 (``the '612 
patent''); 8,236,434 (``the '434 patent''); and 7,355,805 (``the '805 
patent''). The Complaint further alleges the existence of a domestic 
industry. The Commission's Notice of Investigation named as respondents 
Sony Corporation of Tokyo, Japan, Sony Corporation of America of New 
York, New York, and Sony Electronics Inc. of San Diego, California 
(collectively, ``Sony''). The Office of Unfair Import Investigations 
(``OUII'') was also named as a party to the investigation. The 
Commission later terminated the investigation as to the '101 patent. 
Order No. 24 (Jan. 18, 2017); Notice (Feb. 15, 2017).
    On September 1, 2017, the ALJ issued his final ID finding a 
violation of section 337 with respect to claims 1, 4-9, 11, and 14 of 
the '891 patent and asserted claims 1, 2, 4, 5, 7, and 8 of the '612 
patent. The ALJ found no violation of section 337 with respect to 
asserted claims 9-11 of the '612 patent; asserted claim 2, 5, and 6 of 
the '106 patent; asserted claim 1 of the '434 patent; and asserted 
claims 3 and 10 of the '805 patent.
    In particular, the Final ID finds that Sony's accused products 
infringe claims 1, 4-9, 11, and 14 of the '891 Patent under 35 U.S.C. 
271(a). The Final ID also finds that Fujifilm's domestic industry 
(``DI'') products practice the asserted claims of the '891 Patent, thus 
Fujifilm has satisfied the technical prong of the domestic industry 
requirement with respect to the '891 Patent regarding its LTO-6 and 
LTO-7 DI products. The Final ID finds that Sony has not shown that the 
asserted claims of the '891 Patent are invalid under 35 U.S.C. 102, 
103, or 112.
    The Final ID finds that Sony's accused products infringe asserted 
claims 1, 2, 4, 5, 7, and 8 of the '612 Patent under 35 U.S.C. 271(a). 
The Final ID finds, however, that Fujifilm failed to show that Sony has 
induced infringement of claims 9-11 of the '612 Patent under 35 U.S.C. 
271(b). The Final ID further finds that Fujifilm's DI products practice 
claims 1, 2, 4, 5, and 7-11 of the '612 Patent and, thus, Fujifilm has 
satisfied the technical prong of the domestic industry requirement with 
respect to the '612 Patent regarding its LTO-6 and LTO-7 DI products. 
The Final ID finds that Sony has not shown that the asserted claims of 
the '612 Patent are invalid under 35 U.S.C. 102, 103, or 112.
    The Final ID finds that the accused products do not infringe 
asserted claims 2, 5, and 6 of the '106 Patent under 35 U.S.C. 271(a). 
The Final ID further finds that neither Fujifilm's LTO-6 nor LTO-7 DI 
products practice any claim of the '106 Patent, thus Fujifilm has 
failed to satisfy the technical prong of the domestic industry 
requirement with respect to the '106 Patent. The Final ID also finds 
that Sony has not shown that the asserted claims of the '106 Patent are 
invalid under 35 U.S.C. 102 or 103, but has shown that the asserted 
claims of the '106 Patent are indefinite under 35 U.S.C. 112.
    The Final ID finds that the accused products do not infringe 
asserted claim 1 of the '434 under 35 U.S.C. 271(a). The Final ID 
further finds that Fujifilm's LTO-7 DI products do not practice any 
claim of the '434 Patent, thus Fujifilm has failed to satisfy the 
technical prong of the domestic industry requirement with respect to 
the '434 Patent. The Final ID finds that Sony has not shown that the 
asserted claims of the '434 Patent are invalid under 35 U.S.C. 102, 
103, or 112.
    The Final ID finds the accused products do not infringe asserted 
claims 3 and 10 of the '805 Patent under 35 U.S.C. 271(a). The Final ID 
further finds that Fujifilm's LTO-7 DI products practice claims 1, 2, 
3, and 10 of the '805 Patent. The Commission notes that the Final ID 
misstates its finding concerning the technical prong in the Conclusions 
of Fact and Law with respect to the '805 Patent The Final ID finds that 
Sony has not shown that the asserted claims of the '805 Patent are 
invalid under 35 U.S.C. 102, 103, or 112.
    The Final ID finds that Fujifilm has satisfied the economic prong 
of the domestic industry requirement with

[[Page 60039]]

respect to the '891, '612, and '106 Patent pursuant to 19 U.S.C. 337(A) 
and (B) for the asserted LTO-6 DI products. The Final ID finds that 
Fujifilm has not satisfied the economic prong requirement for the 
asserted LTO-7 DI products, which Fujifilm asserted alone with respect 
to the '434 and '805 patents.
    The Final ID finds Sony has not shown that the '612, '106, and '805 
Patents are essential to the LTO-7 Standard. The Final ID also finds 
that Fujifilm has not breached any provisions of the Fujifilm AP-75 
agreement, in particular Sec. Sec.  8.2 or 11.11. The Final ID further 
finds that Sony has not shown that the AP-75 agreement warrants barring 
Fujifilm's claims or terminating the investigation. The Final ID also 
finds that patent misuse does apply to bar Fujifilm's claims. The Final 
ID further finds that Fujifilm has not waived its rights to enforce the 
patents-in-suit. The Final ID also finds that Sony does not have an 
implied license to the patents-in-suit. The Final ID further finds that 
Sony has not shown that patent exhaustion applies.
    On September 12, 2017, the ALJ issued his recommended determination 
on remedy and bonding. As instructed by the Commission, the ALJ also 
made findings concerning the public interest factors set forth in 19 
U.S.C. 1337(d)(1) and (f)(1). See 81 FR 43243. The ALJ recommended that 
the appropriate remedy is a limited exclusion order and a cease and 
desist order against Sony. The ALJ recommended that the Commission 
require no bond during the period of Presidential review. The ALJ 
further found that public interest factors do not bar or require 
tailoring the recommended exclusion order. The ALJ also found that even 
if the asserted claims are essential, the public interest does not 
favor tailoring or curbing and exclusion order because Fujifilm did not 
breach its obligations under the AP-75 Agreement.
    On September 18, 2017, Sony and OUII each filed petitions for 
review of various aspects of the Final ID. Also on September 18, 2017, 
Fujifilm filed a contingent petition for review of various aspects of 
the Final ID.
    Sony petitions for review of the Final ID's finding that the 
asserted claims of the '891 Patent are not invalid as indefinite, 
anticipated, or obvious. Sony also petitions for review of the Final 
ID's findings that Sony's accused products infringe the asserted claims 
1, 2, 4, 5, 7, and 8 of the '612 Patent and that the asserted claims of 
the '612 Patent are not invalid as obvious or indefinite. Sony 
contingently petitions for review of the Final ID's finding that the 
asserted claims are not invalid as obvious. Sony also contingently 
petitions for review of the Final ID's findings that the asserted claim 
of the '434 Patent is not invalid as indefinite or obvious. Sony 
further contingently petitions for review of the Final ID's findings 
that claims 3 and 10 are not invalid as anticipated. Sony also 
petitions for review of the Final ID's finding regarding Fujifilm's AP-
75 Agreement. Sony further petitions for review of the Final ID's 
finding that Fujifilm has satisfied the economic prong of the domestic 
industry requirement with respect to its LTO-6 DI products.
    OUII petitions for review of the Final ID's finding that Fujifilm 
failed to satisfy the technical prong of the domestic industry 
requirement with respect to the '434 Patent and that Sony's accused 
products do not infringe claim 1 of the '434 Patent.
    Fujifilm contingently petitions for review of the Final ID's 
findings that Sony's accused LTO-7 products do not infringe claim 1 of 
the '434 Patent and that Fujifilm's LTO-7 DI products do not satisfy 
the technical prong with respect to claim 1 of the '434 Patent. 
Fujifilm also contingently petitions for review of the Final ID's 
finding that Sony's accused products do not infringe the asserted 
claims of the '805 Patent. Fujifilm further contingently petitions for 
review of the Final ID's findings that Sony's accused LTO-7 products do 
not infringe the asserted claims of the '106 Patent, that Fujifilm's 
LTO products do not satisfy the technical prong with respect to the 
asserted claims of the '106 Patent, and that the asserted claims of the 
'106 Patent are invalid as indefinite. Fujifilm also contingently 
petitions for review of the Final ID's findings with respect to 
secondary considerations of non-obviousness with respect to the 
patents-in-suit. Fujifilm further contingently petitions for review of 
the Final ID's finding that Fujifilm has failed to satisfy the economic 
prong with respect to its LTO-7 DI products.
    On September 26, 2017, Fujifilm, Sony, and OUII filed responses to 
the various petitions for review.
    On October 6, 2017, Fujifilm filed a post-RD statement on the 
public interest pursuant to Commission Rule 210.50(a)(4). Sony filed 
its statement on October 13, 2017. No responses were filed by the 
public in response to the post-RD Commission Notice issued on September 
13, 2017. See Notice of Request for Statements on the Public Interest 
(Sept. 13, 2017); 82 FR 43567-68 (Sept. 18, 2017).
    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-in-part the 
Final ID's finding of violation with respect to the '891 Patent. In 
particular, the Commission has determined to review the Final ID's 
findings with respect to anticipation and obviousness. The Commission 
has further determined to review the Final ID's findings concerning 
secondary considerations.
    The Commission has also determined to review-in-part the Final ID's 
finding of violation with respect to the '612 Patent. Specifically, the 
Commission has determined to review the Final ID's finding that the 
asserted claims of the '612 Patent are not obvious. Accordingly, the 
Commission has also determined to review the Final ID's finding that 
Fujifilm has satisfied the technical prong of the domestic industry 
requirement with respect to the '612 Patent.
    The Commission has further determined to review-in-part the Final 
ID's findings with respect to the '106 Patent. Specifically, the 
Commission has determined not to review the Final ID's finding that the 
asserted claims of the '106 Patent are invalid as indefinite. The 
Commission has also determined to determine to review the Final ID's 
findings with respect to obviousness, infringement, and the technical 
prong of the domestic industry requirement.
    The Commission has also determined to review-in-part the Final ID's 
findings with respect to the '434 Patent. Specifically the Commission 
has determined to review the Final ID's finding that Sony's accused 
LTO-7 products do not infringe claim 1 of the '434 Patent. The 
Commission has also determined to review the Final ID's finding that 
Fujifilm's LTO-7 DI products do not practice claim 1. The Commission 
has further determined to review the Final ID's finding that claim 1 is 
not obvious.
    The Commission has further determined to review-in-part the Final 
ID's findings with respect to the '805 Patent. Specifically, the 
Commission has determined to review the Final ID's finding that Sony's 
accused LTO-7 products do not infringe asserted claims 3 and 10 of the 
'805 Patent. The Commission has also determined to review the Final 
ID's finding that U.S. Patent No. 6,710,967 (``Hennecken'') does not 
anticipate claims 3 and 10.
    The Commission has also determined review the Final ID's findings 
that the asserted claims of the '612, '106, and '805 Patents are not 
essential to the LTO-7 Standard.

[[Page 60040]]

    The Commission has further determined to review the Final ID's 
findings concerning the economic prong of the domestic industry.
    The Commission has determined not to review the remaining issues 
decided in the Final ID.
    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 particularly 
interested in responses to the following questions:
    1. With respect to claim 1 of the '434 patent, please address the 
proper scope of the limitations ``a power spectrum density at a pitch 
of 10 micrometers ranges from 800 to 10,000 nm\3\ on the magnetic layer 
surface.'' In particular, please explain whether the entirety of the 
claimed ``magnetic layer surface'' must exhibit the recited range of 
power spectrum densities such that a finding of infringement would 
require that no portion of the claimed ``magnetic layer surface'' 
exhibits a power spectrum density outside of the claimed range.
    2. With respect to claim 1 of the '434 patent, please address the 
proper scope of the limitations ``a power spectrum density at a pitch 
of 10 micrometers ranges from 20,000 to 80,000 nm\3\ on the backcoat 
layer surface.'' In particular, please explain whether the entirety of 
the claimed ``backcoat layer surface'' must exhibit the recited range 
of power spectrum densities such that a finding of infringement would 
require that no portion of the claimed ``backcoat layer surface'' 
exhibits a power spectrum density outside of the claimed range.
    3. Please address whether the backcoat layer of the accused 
products exhibit any power spectrum density values outside of the range 
recited in claim 1 of the '434 patent.
    4. Please address whether the backcoat layer of the asserted 
domestic industry products exhibit any power spectrum density values 
outside of the range recited in claim 1 of the '434 patent.
    5. Please address whether the magnetic layer of the asserted 
domestic industry products exhibit any power spectrum density values 
outside of the range recited in claim 1 of the '434 patent.
    6. Please address how the asserted domestic industry products 
practice the limitation ``a first step of encoding data for specifying 
a servo band where the servo signal positions'' recited in claims 3 and 
10 of the '805 patent and how, or if, that informs whether the accused 
products infringe that claim limitation.
    7. Please provide a comparison of Fujifilm's domestic revenues to 
its global revenues for the LTO-6 DI Products for fiscal year 2013-
2015, and address whether Fujifilm's domestic investments in the LTO-6 
are significant in this context.
    The parties have been invited to brief only these discrete issues, 
as enumerated 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 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 (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, including 
the Office of Unfair Import Investigations, are requested to file 
written submissions on the issues identified in this notice. Parties to 
the investigation, including the Office of Unfair Import 
Investigations, 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 and the Office of Unfair Import Investigations are 
also requested to submit proposed remedial orders for the Commission's 
consideration. Complainant is further requested to state the dates that 
the patents expire, the HTSUS numbers under which the accused products 
are imported, and any known importers of the accused products. The 
written submissions and proposed remedial orders must be filed no later 
than close of business on December 27, 2017. 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 January 5, 2018. Reply 
submissions are limited to 25 pages, not including any attachments or 
exhibits related to discussion of remedy, the public interest, and 
bonding. 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-1012'') in a prominent place on 
the cover page and/or the first page. (See Handbook for Electronic 
Filing Procedures, https://www.usitc.gov/secretary/documents/handbook_on_filing_procedures.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

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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. All 
information, including confidential business information and documents 
for which confidential treatment is properly sought, submitted to the 
Commission for purposes of this Investigation may be disclosed to and 
used: (i) By the Commission, its employees and Offices, and contract 
personnel (a) for developing or maintaining the records of this or a 
related proceeding, or (b) in internal investigations, audits, reviews, 
and evaluations relating to the programs, personnel, and operations of 
the Commission including under 5 U.S.C. Appendix 3; or (ii) by U.S. 
government employees and contract personnel,\1\ solely for 
cybersecurity purposes. All nonconfidential written submissions will be 
available for public inspection at the Office of the Secretary and on 
EDIS.
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    \1\ All contract personnel will sign appropriate nondisclosure 
agreements.
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    The Commission has also determined to extend the target date for 
completion of the above-captioned investigation to February 20, 2018.
    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 12, 2017.
Lisa R. Barton,
Secretary to the Commission.
[FR Doc. 2017-27168 Filed 12-15-17; 8:45 am]
 BILLING CODE 7020-02-P