[Federal Register Volume 83, Number 129 (Thursday, July 5, 2018)]
[Notices]
[Pages 31416-31418]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2018-14380]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-1046]


Certain Non-Volatile Memory Devices and Products Containing Same; 
Notice of Commission Determination To Review in Part a Final Initial 
Determination Finding No Violation of Section 337; Schedule for Filing 
Written Submissions on the Issues Under Review and on Remedy, the 
Public Interest and Bonding; Extension of Target Date

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 April 27, 2018, finding no violation of section 337 of the 
Tariff Act of 1930, as amended (19 U.S.C. 1337), as to claims 1-8 of 
U.S. Patent No. 6,552,360 (``the '360 patent''); claims 1-10 of U.S. 
Patent No. 6,788,602 (``the '602 patent''); and claims 11-16 of U.S. 
Patent No. 8,035,417 (``the '417 patent''). The Commission has also 
determined to extend the target date for completion of this 
investigation until September 4, 2018.

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 Inv. No. 337-TA-
1046 on April 12, 2017, based on a complaint filed by Macronix 
International Co., Ltd. of Hsin-chu, Taiwan and Macronix America, Inc. 
of Milpitas, California (collectively, ``Macronix''). 82 FR 17687-88 
(Apr. 12, 2017). 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 non-volatile memory 
devices and products containing the same that infringe one or more of 
claims 1-8 of the '360 patent; claims 1-12 and 16 of the '602 patent; 
and claims 1-7, 11-16, and 18 of the '417 patent. The notice of 
investigation named the following respondents: Toshiba Corporation of 
Tokyo, Japan; Toshiba America, Inc. of New York, New York; Toshiba 
America Electronic Components, Inc. of Irvine, California; Toshiba 
America Information Systems, Inc. of Irvine, California; and Toshiba 
Information Equipment (Philippines), Inc. of Binan, Philippines 
(collectively, ``Toshiba''). The Office of Unfair Import Investigations 
is a party to the investigation.
    On June 16, 2017, the Commission determined not to review the ALJ's 
order (Order No. 11) granting an unopposed motion to amend the Notice 
of investigation to add Toshiba Memory Corporation of Tokyo, Japan as a 
respondent. See Order No. 11, Comm'n Notice of Non-Review (June 16, 
2017).
    On October 17, 2017, the Commission determined not to review the 
ALJ's order (Order No. 20) granting an unopposed motion to terminate 
the investigation as to claims 11, 12, and 16 of the '602 patent. See 
Order No. 20, Comm'n Notice of Non-Review (Oct. 17, 2017).
    On October 4, 2017, the ALJ held a Markman hearing to construe 
certain disputed claim terms. On December 5, 2017, the ALJ issued Order 
No. 23 (Markman Order), setting forth her construction of the disputed 
claim terms.
    On January 18, 2018, the Commission determined not to review the 
ALJ's

[[Page 31417]]

order (Order No. 24) granting an unopposed motion to terminate the 
investigation as to claims 1-7 and 18 of the '417 patent. Order No. 24; 
Comm'n Notice of Non-Review (Jan. 18, 2018).
    The ALJ held an evidentiary hearing from February 8, 2018, through 
February 14, 2018, and thereafter received post-hearing briefs.
    On April, 27 2018, the ALJ issued her final ID, finding no 
violation of section 337 by Toshiba in connection with the remaining 
claims, i.e., claims 1-8 of the '360 patent; claims 1-10 of the '602 
patent; and claims 11-16 of the '417 patent. Specifically, the ALJ 
found that the Commission has subject matter jurisdiction, in rem 
jurisdiction over the accused products, and in personam jurisdiction 
over Toshiba. ID at 15-17. The ALJ also found that Macronix satisfied 
the importation requirement of section 337 (19 U.S.C. 1337(a)(1)(B)). 
Id. The ALJ, however, found that the accused products do not infringe 
the asserted claims of the '360 patent and '417 patent. See ID at 19-
65, 118-130. The ALJ also found that Toshiba failed to establish that 
the asserted claims of the '417 patent are invalid for obviousness. ID 
at 132-141. Toshiba did not challenge the validity of the '360 patent. 
ID at 70. With respect to the '602 patent, the ALJ found that certain 
accused products infringe asserted claims 1-10, but that claims 1-5 and 
7-10 are invalid for obviousness. ID at 71-88, 91-117. Finally, the ALJ 
found that Macronix failed to establish the existence of a domestic 
industry that practices the asserted patents under 19 U.S.C. 1337(a)(2) 
and also failed to show a domestic industry in the process of being 
established. See ID at 257-261, 288-294.
    On May 10, 2018, the ALJ issued her recommended determination on 
remedy and bonding. Recommended Determination on Remedy and Bonding 
(``RD''). The ALJ recommends that in the event the Commission finds a 
violation of section 337, the Commission should issue a limited 
exclusion order prohibiting the importation of Toshiba's accused 
products that infringe the asserted claims of the asserted patents. RD 
at 1-5. The ALJ also recommends issuance of cease and desist orders 
against the domestic Toshiba respondents based on the presence of 
commercially significant inventory in the United States. RD at 5. With 
respect to the amount of bond that should be posted during the period 
of Presidential review, the ALJ recommends that the Commission set a 
bond in the amount of 100 percent of entered value for Toshiba flash 
memory devices and solid state drives, and a bond in the amount of six 
percent of entered value for Toshiba PCs imported during the period of 
Presidential review. RD at 6-9.
    On May 14, 2018, Macronix filed a petition for review challenging 
the ID's finding of no violation of section 337. The IA also filed a 
petition for review that day, challenging the ID's finding that 
Macronix failed to establish a domestic industry in the process of 
being established and certain findings as to the '602 patent. Also on 
May 14, 2018, Toshiba filed a contingent petition for review of the ID 
``in the event that the Commission decides to review the ID.'' On May 
22, 2018, Macronix and Toshiba filed their respective responses to the 
petitions for review. On May 23, 2018, the IA filed a response to the 
private parties' petitions for review. The Chairman granted the IA's 
motion for leave to file the response one day late.
    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. 
Specifically, the Commission has determined to review the following: 
(1) The finding that Macronix failed to satisfy the domestic industry 
requirement; and (2) the findings of infringement and invalidity as to 
the '602 patent.
    In connection with its review, the Commission is interested in 
responses to the following questions:
    1. Would one of ordinary skill in the art understand that the claim 
term ``coupled'' in the asserted claims of the '602 patent construed to 
mean ``conductively connected'' requires select transistors? If yes, 
how does it affect the ID's infringement, domestic industry technical 
prong, and invalidity findings?
    2. Would one of ordinary skill in the art understand that the claim 
term ``memory array'' in the asserted claims of the '602 patent 
construed to mean ``multiple memory cells coupled to a grid of word 
lines and bit lines'' necessarily includes select transistors? If yes, 
how does it affect the ID's infringement, domestic industry technical 
prong, and invalidity findings?
    3. The ID states that under the adopted construction of ``memory 
array'' (set forth above), ``a memory array consistent with the '602 
patent . . . could span an entire plane or only a subset of memory 
cells in a plane.'' ID at 80. Is this additional language consistent 
with the ID's construction? If that additional language is omitted, how 
will the ID's infringement, domestic industry technical prong, and 
invalidity findings be affected?
    4. Please discuss the showing necessary to meet the statutory 
requirement of ``articles protected by the patent'' for a domestic 
industry in the process of being established under section 337(a)(2).
    The parties are requested to brief only the discrete issues 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 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. In connection with this, the 
Commission is interested in responses to the following questions:
    1. If an exclusion order issues against Toshiba's accused products, 
can Dell's other SSD suppliers or other SSD suppliers in general fill 
any void that may be created?
    2. What domestic Dell products will be impacted by an exclusion 
order?
    3. Toshiba and Dell request a delay in implementing any exclusion 
order. If an exclusion order issues, what specific

[[Page 31418]]

product(s) should a delay apply to? What should be the duration of the 
delay?
    4. Macronix and Toshiba present vastly different views about the 
ability of suppliers to satisfy domestic demand if an exclusion order 
issues. Please discuss the ability of suppliers other than Toshiba to 
satisfy domestic demand for each and every product that may be affected 
by an exclusion order.
    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.
    The Commission has also determined to extend the target date for 
completion of this investigation until September 4, 2018.
    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 Respondents' products at issue in this 
investigation. The written submissions and proposed remedial orders 
must be filed no later than close of business on July 12, 2018. Reply 
submissions must be filed no later than the close of business on July 
19, 2018. Opening submissions are limited to 75 pages. Reply 
submissions are limited to 50 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-1046'') 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. 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 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: June 28, 2018.
Katherine Hiner,
Supervisory Attorney.
[FR Doc. 2018-14380 Filed 7-3-18; 8:45 am]
 BILLING CODE 7020-02-P