[Federal Register Volume 84, Number 61 (Friday, March 29, 2019)]
[Notices]
[Pages 11998-12000]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2019-06046]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-1058]


Certain Magnetic Tape Cartridges and Components Thereof; Notice 
of a Commission Final Determination Finding a Violation of Section 337; 
Issuance of a Limited Exclusion Order and Cease and Desist Orders; 
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 and cease and desist orders. 
The remedial orders are suspended as to claim 17 of U.S. Patent No. 
7,029,774 pending final resolution of a validity issue. The 
investigation is terminated.

FOR FURTHER INFORMATION CONTACT: Cathy Chen, Esq., Office of the 
General Counsel, U.S. International Trade Commission, 500 E Street SW, 
Washington, DC 20436, telephone (202) 205-2392. Copies of non-
confidential documents filed in connection with this investigation are 
or will be available for

[[Page 11999]]

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 June 1, 2017, based on a complaint, as amended, filed by Sony 
Corporation of Tokyo, Japan; Sony Storage Media Solutions Corporation 
of Tokyo, Japan; Sony Storage Media Manufacturing Corporation of 
Miyagi, Japan; Sony DADC US Inc. of Terre Haute, Indiana; and Sony 
Latin America Inc. of Miami, Florida (collectively ``Sony''). 82 FR 
25333 (Jun. 1, 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 magnetic 
tape cartridges and components thereof by reason of infringement of 
claims 1-11 and 15-20 of U.S. Patent No. 7,029,774 (``the '774 
patent''); claims 1-19 of U.S. Patent No. 6,674,596 (``the '596 
patent''); and claims 1-6, and 8 of U.S. Patent No. 6,979,501 (``the 
'501 patent''). Id. The complaint further alleges that an industry in 
the United States exists as required by 19 U.S.C. 1337(a)(2). Id. The 
notice of investigation named Fujifilm Holdings Corporation of Tokyo, 
Japan; Fujifilm Corporation of Tokyo, Japan; Fujifilm Media 
Manufacturing Co., Ltd. of Kanagawa, Japan; Fujifilm Holdings America 
Corporation of Valhalla, New York; and Fujifilm Recording Media U.S.A., 
Inc. of Bedford, Massachusetts (collectively ``Fujifilm''), as 
respondents. Id. at 25334. The Office of Unfair Import Investigations 
is also a party in this investigation. Id.
    On March 22, 2018, the administrative law judge (``ALJ'') granted 
Sony's motion to terminate claims 2-4, 9, 11, 15, and 18-20 of the '774 
patent, claim 3 of the '501 patent, and claims 14-19 of the '596 patent 
from the investigation. See Order No. 26; Comm'n Notice of Non-Review 
(Apr. 23, 2018).
    The ALJ held an evidentiary hearing on May 8-11, 2018, and 
thereafter received post-hearing briefs.
    On August 17, 2018, the ALJ issued his final initial determination 
(``ID''), finding a violation of section 337 by Fujifilm in connection 
with claims 1, 5-8, 10, 16, and 17 of the '774 patent, and claims 1-13 
of the '596 patent, but not in connection with claims 1, 2, 4-6, and 8 
of the '501 patent. Specifically, the ID found that Fujifilm's accused 
products infringe the asserted claims of the '774 and the '596 patents; 
that the asserted claims of the '774 and '596 patents are not invalid; 
and that a domestic industry exists with respect to both patents. 
Although the ID also found that Fujifilm's accused products infringe 
the asserted claims of the '501 patent, and that a domestic industry 
exists with respect to that patent, the ID found no violation as to the 
'501 patent because Fujifilm established that the asserted claims are 
invalid.
    On August 17, 2018, the ALJ also issued his recommended 
determination on remedy and bonding. As instructed by the Commission, 
the ALJ made findings of fact and recommendations concerning the public 
interest factors set forth in 19 U.S.C. 1337(d)(1) and (f)(1). 82 FR 
25334; 19 CFR 210.10(b), 210.42(a)(1)(ii)(C). The ALJ recommended that 
the appropriate remedy is a limited exclusion order and cease and 
desist orders directed to Fujifilm. The ALJ also recommended that the 
Commission require no bond during the period of Presidential review. 
The ALJ further recommended, based on the evidence presented, that 
public interest factors do not weigh against or warrant tailoring any 
remedy.
    On September 4, 2018, Sony, Fujifilm, and the Commission's 
Investigative Attorney each filed a timely petition for review of the 
final ID. Thereafter, the parties filed timely responses to the 
petitions for review and public interest comments pursuant to 
Commission Rule 210.50(a)(4).
    On October 18, 2018, the Commission determined to review the final 
ID in part and requested the parties to brief certain issues under 
review and to brief issues of remedy, bonding, and the public interest. 
The Commission determined to review the ID's finding that the economic 
prong of the domestic industry requirement has been satisfied for all 
three asserted patents under sections 337(a)(3)(B) and (C) based on the 
domestic activities of Sony's licensee. In addition, with respect to 
the '774 patent, the Commission determined to review the ID's findings 
that the asserted claims are not invalid for lack of enablement and are 
not invalid for lack of written description, and the ID's finding that 
certain prior art tapes do not anticipate claim 17. The Commission also 
determined to review the ID's findings with respect to the '596 patent 
in their entirety. Other than the ID's economic prong finding, the 
Commission did not review any other finding related to the '501 patent.
    On October 23, 2018, the Patent Trial and Appeal Board (``PTAB'') 
of the U.S. Patent and Trademark Office issued a Final Written Decision 
in an inter partes review finding claims 15 and 17 of the '774 patent 
unpatentable.
    On November 1, 2018, the parties filed submissions to the 
Commission's questions and also briefed the issues of remedy, bonding, 
and the public interest. As part of its submission, Fujifilm requested 
that the Commission stay the enforcement of any remedial orders should 
the Commission find a violation of section 337 in connection with 
claims 15 and 17 of the '774 patent in view of the PTAB's Final Written 
Decision finding those claims invalid. On November 8, 2018, the parties 
filed responses to the initial submissions. That same day, Sony and 
Fujifilm also filed a joint unopposed motion to submit certain 
replacement pages to their respective initial written submission.
    Having examined the record of this investigation, including the 
final ID, and the parties' submissions, the Commission has determined 
to (1) affirm the ID's findings that the asserted claims of the '774 
patent are not invalid for lack of enablement and are not invalid for 
lack of written description; (2) affirm with modifications the ID's 
finding that certain prior art tapes do not anticipate claim 17 of the 
'774 patent; (3) affirm with modifications the ID's finding that 
Fujifilm has not proven that the asserted claims of the '596 patent are 
obvious over Platte and Kano; (4) take no position on whether 
Fujifilm's own acts of direct infringement can form a basis for a 
violation of section 337 with respect to the '596 patent, and whether 
Fujifilm contributorily infringes the '596 patent; (5) affirm with 
modifications the ID's finding that the economic prong of the domestic 
industry requirement has been satisfied for the '596 patent under 
sections 337(a)(3)(B) and (C) based on the domestic activities of 
Sony's licensee; (6) affirm with modifications the ID's finding that 
the economic prong of the domestic industry requirement has been 
satisfied with respect to the '774 and the '501 patents under section 
337(a)(3)(B) based on the domestic activities of Sony's licensee; and 
(7) take no position on whether the economic

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prong of the domestic industry requirement has been satisfied with 
respect to the '774 and the '501 patents under section 337(a)(3)(C) 
based on the domestic activities of Sony's licensee. The Commission 
adopts the ID's findings to the extent that they are not inconsistent 
with the Commission opinion issued herewith. The Commission action 
results in a violation of section 337 as to claims 1, 5-8, 10, 16, and 
17 of the '774 patent, and claims 1-13 of the '596 patent, but not as 
to claims 1, 2, 4-6, and 8 of the '501 patent.
    The Commission has also determined to grant Sony's and Fujifilm's 
joint motion to submit certain replacement pages to their respective 
initial written submission.
    Having found a violation of section 337 in this investigation, the 
Commission has determined that the appropriate form of relief is: (1) A 
limited exclusion order prohibiting the unlicensed entry of magnetic 
tape cartridges and components thereof that infringe one or more of 
claims 1, 5-8, 10, 16, and 17 of the '774 patent, and claims 1-13 of 
the '596, and (2) cease and desist orders directed to the domestic 
Fujifilm respondents. The Commission has also determined that the 
public interest factors enumerated in section 337(d) and (f) (19 U.S.C. 
1337(d) and (f)) do not preclude issuance of the limited exclusion 
order or cease and desist orders. The Commission has, however, 
determined to exempt Fujifilm's magnetic tape cartridges and components 
thereof that are imported or used for the purpose of compliance 
verification testing.
    In view of the PTAB's Final Written Decision finding claim 17 of 
the '774 patent unpatentable, the Commission has determined to suspend 
the enforcement of the limited exclusion order and cease and desist 
orders as to that claim pending final resolution of the PTAB's Final 
Written Decision. See 35 U.S.C. 318(b).
    The Commission has further determined to set a bond at zero (0) 
percent of entered value during the period of Presidential review (19 
U.S.C. 1337(j)). 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: March 25, 2019.
Katherine Hiner,
Acting Secretary to the Commission.
[FR Doc. 2019-06046 Filed 3-28-19; 8:45 am]
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