[Federal Register Volume 86, Number 97 (Friday, May 21, 2021)]
[Notices]
[Pages 27651-27653]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2021-10727]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-1170]


Certain Mobile Devices With Multifunction Emulators; Notice of a 
Commission Determination To Review in Part a Final Initial 
Determination Finding no Violation of Section 337; Request for Written 
Submissions on the Issues Under Review and on Remedy, the Public 
Interest, and Bonding

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 Administrative Law 
Judge's (``ALJ'') final initial determination (``ID'') issued on March 
16, 2021, finding no violation of section 337 in the above-referenced 
investigation. The Commission requests briefing from the parties on 
certain issues under review, as indicated in this notice, and 
submissions from the parties, interested government agencies, and 
interested persons on the issues of remedy, the public interest, and 
bonding, under the schedule set forth below.

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 may 
be viewed on the Commission's electronic docket (EDIS) at https://edis.usitc.gov. For help accessing EDIS, please email 
[email protected]. General information concerning the Commission may 
also be obtained by accessing its internet server at https://www.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: On August 16, the Commission instituted this 
investigation based on a complaint filed by Dynamics Inc. 
(``Dynamics'') of

[[Page 27652]]

Cheswick, Pennsylvania. 84 FR 42009-10 (Aug. 16, 2019). The complaint, 
as supplemented, 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, or the sale within the United States 
after importation of certain mobile devices with multifunction 
emulators by reason of infringement of one or more of claims 1 and 5-8 
of U.S. Patent No. 8,827,153 (``the '153 patent''); claims 1-20 of U.S. 
Patent No. 10,032,100 (``the '100 patent''); claims 1-7, 9-13, 19, 21, 
and 22 of U.S. Patent No. 10,223,631 (``the '631 patent''); and claims 
1-16 of U.S. Patent No. 10,255,545 (``the '545 patent''). Id. at 42010. 
The Commission's notice of investigation named as respondents Samsung 
Electronics Co., Ltd of Gyeonggi, Republic of Korea and Samsung 
Electronics America, Inc. of Ridgefield Park, New Jersey (collectively, 
``Samsung''). Id. The Office of Unfair Import Investigations is not 
participating in this investigation.
    On September 3, 2019, the ALJ set a sixteen-month target date of 
December 16, 2020 for completion of the investigation. Order No. 3 
(Sept. 3, 2019). The Order set an evidentiary hearing for May 11-15, 
2020.
    On November 26, 2019, the ALJ held a Markman hearing, and on 
January 31, 2020, issued Order No. 7, construing certain claim terms of 
the asserted patents.
    On May 20, 2020, the ALJ issued an initial determination granting 
Dynamics' unopposed motion for partial termination of the investigation 
as to claims 5, 6, and 8 of the '153 patent, claims 2, 3, 5, 7, 9-11, 
13-17, 19, and 20 of the '100 patent, claims 2, 3, 5, 7, 9-13, 19, and 
21 of the '631 patent, and claims 2, 4, and 6-16 of the '545 patent. 
Order No. 15 (May 20, 2020), unreviewed, Notice (June 15, 2020).
    Due to the ongoing COVID-19 pandemic, the ALJ amended the 
procedural schedule several times. On March 12, 2020, the Commission 
postponed all in-person hearings under section 337 scheduled within the 
next sixty days. See 85 FR 15498 (Mar. 18, 2020). Thus, the ALJ issued 
Order No. 10, rescheduling the evidentiary hearing for June 22-26, 
2020.
    On April 6, 2020, the ALJ issued Order No. 12, resetting the target 
date to February 23, 2021 due to the COVID-19 pandemic. Order No. 12 
(Apr. 6, 2020), unreviewed, Notice (Apr. 24, 2020).
    On May 14, 2020, the Commission extended the postponement of all 
section 337 hearings. See 85 FR 30734-5 (May 20, 2020). On June 22, 
2020 the Commission further extended the postponement of all in-person 
section 337 hearings ``until such time as the agency enters Phase Three 
of the Commission's three-phase plan to re-establish on-site business 
operations.'' 85 FR 38388-9 (June 26, 2020). This order is currently in 
effect.
    On August 11, 2020, the ALJ scheduled a virtual hearing using the 
Commission's newly established videoconference software for November 
16-20, 2020 and reset the target date for July 16, 2021. Order No. 24 
(Aug. 11, 2020), unreviewed, Notice (Sept. 8, 2020).
    On March 16, 2021, the ALJ issued the final ID, finding no 
violation of section 337. The ID found that the importation requirement 
under 19 U.S.C. 1337(a)(1)(B) is satisfied. ID at 28. Specifically, the 
ID found that ``[t]he parties stipulated to facts establishing the 
importation requirement is met for both respondents'' and that 
``Samsung does not dispute the Commission's jurisdiction over this 
investigation or that the requisite importation or sale in connection 
with importation has taken place for each Accused Product.'' Id. 
Accordingly, the ID found that the Commission has jurisdiction over 
this investigation and that the importation requirement has been 
satisfied. Id.
    With respect to the domestic industry requirement, the ID found 
that Dynamics had satisfied the domestic industry requirement for the 
'100 patent, but not the '153, '631, and '545 patents. ID at 183-84. 
For the domestic industry requirement's technical prong, the ID found 
that Dynamics failed to show it practiced any claim of the '153 and 
'631 patents. Id. at 60-64, 127-31. For the '545 patent, however, the 
ID found that Dynamics had shown it was ``in the process'' of 
practicing claim 1 of the '545 patent. Id. at 148-52. With respect to 
the domestic industry requirement's economic prong, for the '153 and 
'631 patents, the ID found that Dynamics had shown it had made 
significant investments in satisfaction of section 337(a)(3)(A) and 
(B), 19 U.S.C. 1337(a)(3)(A)-(B). Id. at 158-79. For the '545 patent, 
the ID found that Dynamics had not shown that it was ``in the process'' 
of establishing a U.S. industry. Id. at 180-83.
    With respect to infringement and validity, the ID found that 
Samsung infringes claims 1 and 7 of the '153 patent and that Samsung 
failed to establish that those claims are invalid. ID at 45-58, 64-69. 
The ID also found that Samsung infringes claims 1, 4, 6, 12, and 18 of 
the '100 patent (except for claim 6 as to certain modified products), 
but that the asserted claims, except for claim 4 are invalid as 
anticipated or obvious by prior art. Id. at 83-88, 96-115. The ID 
further found that Samsung directly infringes claims 1, 4, 6, and 22 of 
the '631 patent, but that those claims are invalid as anticipated or 
obvious by prior art. Id. at 121-127, 131-140. The ID also found that 
Samsung directly infringes claims 1, 3, and 5 of the '545 patent, but 
that those claims are invalid for anticipation. Finally, the ID found 
that Samsung failed to carry its burden with respect to various 
additional affirmative defenses under 35 U.S.C. 102(f), 116 
(inventorship), or 112 (written description and enablement).
    The ID included the ALJ's recommended determination on remedy and 
bonding (``RD''). The RD recommended that the Commission should issue a 
limited exclusion order and cease and desist orders if it finds a 
violation. ID/RD at 186-91. The ID, however, recommended imposing no 
bond on covered products that may be imported during the period of 
Presidential review. Id. at 193.
    On March 29, 2021, Dynamics filed a petition for review of the ID, 
and Samsung filed a contingent petition for review. On April 8, 2021, 
Dynamics and Samsung submitted responses to each other's petition.
    Having examined the record of this investigation, including the ID, 
the petitions for review, and the responses thereto, the Commission has 
determined to review the ID with respect to the following: (1) For the 
'153 patent, claim construction of the term ``analog waveform'' as well 
as the related infringement and technical prong analysis, (2) for the 
'153 patent, the ID's finding that the combination of Shoemaker and 
Gutman fails to render the asserted claims obvious; (3) for the '100 
patent, whether Doughty in combination with VivoTech renders obvious 
claim 4 and whether such issue was waived, whether claims 4 and 6 are 
infringed, and whether the domestic industry requirement is satisfied; 
and (4) for the '545 patent, the ID's domestic industry findings. The 
Commission has determined not to review the remainder of the ID.
    The parties are requested to brief their positions on only the 
following issues:
    1. If the Commission construes ``analog waveform'' to mean ``a wave 
shape whose amplitude changes in a continuous fashion'' that includes 
so-called real-world square waves, please cite record evidence and 
explain whether the accused products and DI products meet the relevant 
claim limitations.
    2. Given Gutman's disclosure that ``communication of data by the 
card of

[[Page 27653]]

the current invention is independent of movement of the card or 
placement of the card within the magnetic card reader'' (Gutman at 
col.17 ll.10-13), please explain why or why not one of ordinary skill 
would be motivated to combine Shoemaker with Gutman.
    3. While Gutman states that ``no `swiping' movement is necessary,'' 
the disclosure ``allows users to perform the familiar `swiping' 
movement while using the card 200 of the present invention for users 
that have become accustomed to the `swiping' movement of the card 
106.'' Gutman at col.16 l.66--col.17 l.4. Please discuss the legal 
significance of this disclosure to an obviousness inquiry in light of 
Samsung's proposal to combine Gutman with Shoemaker to solve the so-
called directionality problem associated with ``swiping.''
    The parties are requested to brief their positions with reference 
to the applicable law and the existing 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 issue: (1) An exclusion order that could result in the 
exclusion of the subject articles from entry into the United States, 
and/or (2) a cease-and-desist order 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, Comm'n Op. at 7-10 (Dec. 1994).
    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, 
disapprove, or take no action on the Commission's determination. 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 this investigation are 
requested to file written submissions on the issues identified in this 
Notice and on the issues of remedy, the public interest, and bonding. 
Complainant is requested to submit proposed remedial orders for the 
Commission's consideration. Complainant is also requested to state the 
date that the patents expire and the HTSUS subheadings under which the 
accused products are imported. Complainant is further requested to 
supply the names of known importers of Respondents' products at issue 
in this investigation.
    The parties' written submissions and proposed remedial orders must 
be filed no later than the close of business on Wednesday, June 2. 
Reply submissions must be filed no later than the close of business on 
Wednesday, June 9. Opening submissions are limited to 50 pages. Reply 
submissions are limited to 30 pages. Such submissions should address 
the ALJ's recommended determination on remedy and bonding. Interested 
government agencies and any other interested parties are also 
encouraged to file written submissions on the issues of remedy, the 
public interest, and bonding. Third-party submissions should be filed 
no later than the close of business on Wednesday, June 9. 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. The 
Commission's paper filing requirements in 19 CFR 210.4(f) are currently 
waived. 85 FR 15798 (March 19, 2020). Submissions should refer to the 
investigation number (``Inv. No. 337-TA-1170'') in a prominent place on 
the cover page and/or the first page. (See Handbook on Filing 
Procedures, https://www.usitc.gov/documents/handbook_on_filing_procedures.pdf). Persons with questions regarding 
filing should contact the Secretary at (202) 205-2000.
    Any person desiring to submit a document to the Commission in 
confidence must request confidential treatment unless the information 
has already been granted such treatment during the proceedings. All 
such requests should be directed to the Secretary of the Commission and 
must include a full statement of the reasons why the Commission should 
grant such treatment. See 19 CFR 210.6. Documents for which 
confidential treatment by the Commission is sought will be treated 
accordingly. A redacted non-confidential version of the document must 
also be filed simultaneously with any confidential filing. 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 non-confidential 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's vote on this determination took place on May 17, 
2021.
    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 
210).

    By order of the Commission.

    Issued: May 17, 2021.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2021-10727 Filed 5-20-21; 8:45 am]
BILLING CODE 7020-02-P