[Federal Register Volume 85, Number 48 (Wednesday, March 11, 2020)]
[Notices]
[Pages 14244-14246]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2020-04925]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-1082]


Certain Gas Spring Nailer Products and Components Thereof; Notice 
of Commission Determination Finding a Violation of Section 337; 
Issuance of Limited Exclusion Order and Cease and Desist 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 (``the Commission'') has determined to find a violation of 
section 337. Specifically, the Commission has determined to affirm in 
part, reverse in part, and modify in part both an initial determination 
(``ID'') and a remand initial determination (``RID'') of the presiding 
administrative law judge (``ALJ''). The Commission has issued a limited 
exclusion order (``LEO'') directed against infringing gas spring nailer 
products and components thereof of respondent Hitachi Koki U.S.A., Ltd. 
(``Hitachi'') of Braselton, Georgia and a cease and desist order 
(``CDO'') directed

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against Hitachi. The investigation is terminated.

FOR FURTHER INFORMATION CONTACT: Clint Gerdine, Esq., Office of the 
General Counsel, U.S. International Trade Commission, 500 E Street SW, 
Washington, DC 20436, telephone (202) 708-2310. 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 November 20, 2017, based on a complaint filed on behalf of Kyocera 
Senco Brands Inc. (``Kyocera'') of Cincinnati, Ohio. 82 FR 55118-19 
(Nov. 20, 2017). The complaint, as amended and supplemented, alleges 
violations of section 337 of the Tariff Act of 1930, as amended, 19 
U.S.C. 1337 (``section 337''), based upon the importation into the 
United States, the sale for importation, and the sale within the United 
States after importation of certain gas spring nailer products and 
components thereof by reason of infringement of certain claims of U.S. 
Patent Nos. 8,011,547 (``the '547 patent''); 8,267,296 (``the '296 
patent''); 8,27,297 (``the '297 patent''); 8,387,718 (``the '718 
patent''); 8,286,722 (``the '722 patent''); and 8,602,282 (``the '282 
patent''). The complaint further alleges the existence of a domestic 
industry. The Commission's notice of investigation named Hitachi as a 
respondent. The Office of Unfair Import Investigations is not 
participating in the investigation. The '547 patent has been terminated 
from the investigation and the notice of investigation was amended to 
add claim 30 of the '297 patent to the investigation. Order No. 13 
(June 4, 2018), unreviewed by Comm'n Notice (June 22, 2018); Order No. 
15 (June 19, 2018), unreviewed by Comm'n Notice (July 9, 2018), 83 FR 
32685-66 (July 15, 2018). Prior to the evidentiary hearing, the parties 
stipulated that the '718 patent is the only remaining patent at issue 
because no violation could be shown as to the '296, '297, '722, and 
'282 patents based on an evidentiary ruling limiting the Kyocera's 
expert's testimony. See ID at 1-2. At the hearing, Kyocera asserted 
claims 1, 10, and 16 (the ``asserted claims'') of the '718 patent. Id. 
at 2, 21.
    On June 7, 2019, the ALJ issued a final ID finding no violation of 
section 337 as to the '718 patent based on non-infringement and the 
failure of Kyocera to establish the existence of a domestic industry 
(``DI'') that practices the '718 patent. Specifically, the ID finds 
that Kyocera failed to show that the accused products or the domestic 
industry products practice the asserted claims. The ID also finds that 
Kyocera satisfied the economic prong of the DI requirement under 
section 337(a)(3)(B). The ID also includes a recommended determination 
on remedy and bonding (``RD'') during the period of Presidential 
review. The RD recommends an LEO directed to gas spring nailer products 
and components thereof that infringe the asserted claims of the '718 
patent, and recommends a CDO directed against Hitachi. The RD does not 
recommend imposing a bond.
    On August 14, 2019, the Commission determined to review the ID in 
part and remand in part. See Comm'n Notice (Aug. 14, 2019). 
Specifically, the Commission determined to review the ID's finding that 
Kyocera did not establish: (1) Either direct or induced infringement of 
the asserted claims of the '718 patent, and (2) practice of the 
asserted claims by the DI products to satisfy the DI requirement. The 
Commission also determined to review the ID's finding that Kyocera has 
satisfied the economic prong of the DI requirement. Id. The Commission 
remanded the issues of whether Kyocera has established, by a 
preponderance of the evidence, that: (1) The remaining limitations 
(irrespective of the ``system controller'' limitation, i.e., ``a 
circuit configured to control operation based on received input 
signals'') of the asserted claims of the '718 patent are met by the 
accused products; (2) the remaining limitations of the asserted claims 
are practiced by the DI products (``the DI products''); and (3) Hitachi 
induced infringement of the asserted claims. Id.
    On October 28, 2019, the ALJ issued an RID finding no violation of 
section 337 as to the '718 patent based on non-infringement and the 
failure of Kyocera to establish the existence of a domestic industry 
that practices the '718 patent. Specifically, the RID finds that: (1) 
Neither the accused products nor the DI products satisfy the 
``displacement volume'' limitation (i.e., ``(A) a hollow cylinder 
comprising a cylindrical wall with a movable piston therewith, said 
hollow cylinder containing a displacement volume created by a stroke of 
said piston'') and the ``initiating a driving cycle'' limitation (i.e., 
``initiating a driving cycle by pressing said exit end against a 
workpiece and actuating said trigger, thereby causing said fastener 
driving mechanism to force the driver member to move toward said exit 
end and drive a fastener into said workpiece'') of the asserted claims; 
and (2) Kyocera failed to establish that Hitachi possesses the 
requisite specific intent to induce infringement of the claims.
    On November 12, 2019, Kyocera petitioned, and Hitachi contingently 
petitioned, for review of the RID. On November 20, 2019, Kyocera and 
Hitachi each filed a response in opposition to the other party's 
petition for review.
    On December 12, 2019, the Commission determined to review the RID 
in part. Specifically, the Commission determined to review the RID's 
finding that Kyocera did not establish: (1) Direct infringement of the 
asserted claims with respect to the ``displacement volume'' and 
``initiating a driving cycle'' limitations; (2) practice of the 
asserted claims by the DI products with respect to these limitations; 
and (3) induced infringement of the asserted claims. 84 FR 69391-92 
(Dec. 18, 2019). The Commission determined not to review the remainder 
of the RID. Id. The Commission also requested the parties to respond to 
certain questions concerning the issues under review with respect to 
the ID and RID, and requested written submissions on the issues of 
remedy, the public interest, and bonding from the parties and 
interested non-parties. Id.
    On January 3 and 10, 2020, Kyocera and Hitachi each filed a brief 
and a reply brief, respectively, on all issues for which the Commission 
requested written submissions. Having reviewed the record in this 
investigation, including the final ID, the RID, and the parties' 
written submissions, the Commission has determined to find a violation 
of section 337. Specifically, the Commission has determined that: (1) 
The accused and DI products meet the ``system controller,'' 
``displacement volume,'' and ``initiating a driving cycle'' limitations 
of the asserted claims 1, 10, and 16 of the '718 patent, and therefore 
the accused products infringe these claims; (2) the DI products 
practice these claims and therefore Kyocera has satisfied the technical 
prong of the DI requirement; (3) Hitachi has induced infringement of 
the asserted claims; and (4) Kyocera has

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satisfied the economic prong of the DI requirement under section 
337(a)(3)(C). The Commission reverses the ID's and RID's findings to 
the contrary and takes no position on the ID's finding that Kyocera has 
satisfied the economic prong of the DI requirement under section 
337(a)(3)(B). Accordingly, the Commission finds a violation based on 
Hitachi's induced infringement of the asserted claims. The Commission 
has issued an opinion explaining the basis for the Commission's 
determination.
    Having found a violation of section 337 as to the '718 patent, the 
Commission has determined that the appropriate form of relief is an LEO 
prohibiting the entry of unlicensed gas spring nailer products and 
components thereof that infringe one or more of claims 1, 10, and 16 of 
the '718 patent, and that are manufactured abroad by or on behalf of, 
or imported by or on behalf of Hitachi, or any of its affiliated 
companies, parents, subsidiaries, or other related business entities, 
or their successors or assigns. Appropriate relief also includes a CDO 
prohibiting Hitachi from conducting any of the following activities in 
the United States: Importing, selling, marketing, advertising, 
distributing, offering for sale, transferring (except for exportation), 
and soliciting U.S. agents or distributors for gas spring nailer 
products and components thereof that infringe one or more of claims 1, 
10, and 16 of the '718 patent.
    The Commission has further determined that the public interest 
factors enumerated in sections 337(d)(1) and 337(f)(1) (19 U.S.C. 
1337(d)(1) and 1337(f)(1)) do not warrant denying relief. Finally, the 
Commission has determined that no bond is required during the period of 
Presidential review (19 U.S.C. 1337(j)). The Commission's order was 
delivered to the President and to the United States Trade 
Representative on the day of its issuance.
    The Commission has terminated this investigation. 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 5, 2020.
William Bishop,
Supervisory Hearings and Information Officer.
[FR Doc. 2020-04925 Filed 3-10-20; 8:45 am]
BILLING CODE 7020-02-P