[Federal Register Volume 83, Number 241 (Monday, December 17, 2018)]
[Notices]
[Pages 64599-64600]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2018-27193]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-989 (Rescission Proceeding)]


Certain Automated Teller Machines, ATM Modules, Components 
Thereof, and Products Containing the Same; Commission Determination To 
Institute a Rescission Proceeding, To Rescind the Remedial Orders, and 
To Terminate the Rescission Proceeding

AGENCY: U.S. International Trade Commission.

ACTION: Notice.

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SUMMARY: Notice is hereby given that the U.S. International Trade 
Commission (``the Commission'') has determined to institute a 
rescission proceeding, to rescind a limited exclusion order and two 
cease-and-desist orders, and to terminate the rescission proceeding.

FOR FURTHER INFORMATION CONTACT: Robert J. Needham, Esq., Office of the 
General Counsel, U.S. International Trade Commission, 500 E Street SW, 
Washington, DC 20436, telephone 202-205-2382. 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, telephone 202-205-1810.

SUPPLEMENTARY INFORMATION: On March 14, 2016, the Commission instituted 
the original investigation based on a Complaint filed by Nautilus 
Hyosung Inc. (now Hyosung TNS Inc.) of Seoul, Republic of Korea, and 
Nautilus Hyosung America Inc. of Irving, Texas (collectively, 
``Complainants''). The Notice of Investigation named Diebold Nixdorf, 
Incorporated, and Diebold Self-Service Systems, both of North Canton, 
Ohio (collectively, ``Respondents'') as Respondents. The Complaint 
alleged Respondents were violating section 337 of the Tariff Act of 
1930, as amended, 19 U.S.C. 1337, by importing into the United States, 
selling for importation, or selling within the United States after 
importation certain automated teller machines, ATM modules, components 
thereof, and products containing same that infringe one or more of 
claims 1-3, 6, 8, and 9 (``the asserted claims'') of U.S. Patent No. 
8,523,235 (``the '235 patent''). The Office of Unfair Import 
Investigations (``OUII'') was not named as a party.
    On July 14, 2017, the Commission found Respondents in violation of 
section 337 with respect to the asserted claims of the '235 patent, and 
issued a limited exclusion order and two cease-and-desist orders with 
respect to the asserted claims (``the remedial orders''). Respondents 
appealed the Commission's determination to the U.S. Court of Appeals 
for the Federal Circuit (``Federal Circuit'').
    On August 15, 2018, the Federal Circuit issued an opinion finding 
the asserted claims of the '235 patent invalid for indefiniteness 
pursuant to 35 U.S.C. 112(6), and reversing the Commission's 
determination that Respondents violated section 337. Diebold Nixdorf, 
Inc. v. International Trade Comm'n, Appeal No. 2017-2553, 899 F.3d 1291 
(Fed. Cir. 2018). The mandate issued on November 9, 2018.

[[Page 64600]]

    On November 13, 2018, Respondents petitioned the Commission to 
rescind the remedial orders based on the Federal Circuit ruling that 
the asserted claims are invalid. On November 23, 2018, Complainants 
opposed the petition, and argued that the Commission should instead 
reopen the record for further evidence on indefiniteness.
    Also on November 13, 2018, Complainants moved to reopen the record 
for the limited purpose of admitting evidence relating to 
indefiniteness. On November 23, 2018, Respondents opposed the motion, 
arguing that the Federal Circuit invalidity ruling is binding on the 
Commission. Respondents also argued Complainants should have to show 
cause why they should not be sanctioned for a frivolous filing. On 
November 29, 2018, Complainants moved for leave to file a reply in 
support of their motion.
    Having considered the petition and response, the Commission has 
determined to institute a rescission proceeding, and finds that the 
Federal Circuit's ruling that the asserted claims are invalid is a 
changed circumstance that warrants rescinding the remedial orders. The 
Commission therefore has determined to rescind the remedial orders.
    In light of the Commission's determination to rescind the remedial 
orders, the Commission has also determined to deny as moot 
Complainants' motion to reopen the record. The Commission also denies 
Respondents' request for sanctions, and denies Complainants' motion for 
leave to file a reply. The rescission proceeding is hereby terminated.
    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 11, 2018.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2018-27193 Filed 12-14-18; 8:45 am]
 BILLING CODE 7020-02-P