[Federal Register Volume 87, Number 194 (Friday, October 7, 2022)]
[Notices]
[Pages 61098-61100]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2022-21828]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-1236]


Certain Polycrystalline Diamond Compacts and Articles Containing 
Same; Notice of the Commission's Final Determination Finding No 
Violation of Section 337; 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 determined to find no violation of section 337 of the 
Tariff Act of 1930, as amended, in this investigation. The 
investigation is terminated in its entirety.

FOR FURTHER INFORMATION CONTACT: Cathy Chen, 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 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: The Commission instituted this investigation 
on December 29, 2020, based on a complaint filed by US Synthetic 
Corporation (``USS'') of Orem, Utah. 85 FR 85661 (Dec. 29, 2020). The 
complaint alleged violations of section 337 of the Tariff Act of 1930, 
as amended, 19 U.S.C. 1337, based upon the importation into the United 
States, the sale for importation, and the sale within the United States 
after importation of certain polycrystalline diamond compacts and 
articles containing same by reason of infringement of certain claims of 
U.S.

[[Page 61099]]

Patent No. 10,507,565 (``the '565 patent''); U.S. Patent No. 10,508,502 
(``the '502 patent''); U.S. Patent No. 8,616,306 (``the '306 patent''); 
U.S. Patent No. 9,932,274 (``the '274 patent''); and U.S. Patent No. 
9,315,881 (``the '881 patent''). Id. The complaint further alleged that 
an industry in the United States exists as required by section 337. Id. 
The notice of investigation named as respondents: SF Diamond Co., Ltd., 
and SF Diamond USA, Inc. (collectively, ``SF Diamond''); Element Six 
Abrasives Holdings Ltd., Element Six Global Innovation Centre, Element 
Six GmbH, Element Six Limited, Element Six Production (Pty) Limited, 
Element Six Hard Materials (Wuxi) Co. Limited, Element Six Trading 
(Shanghai) Co., Element Six Technologies US Corporation, Element Six US 
Corporation, ServSix US, and Synergy Materials Technology Limited 
(collectively, ``Element Six''); Iljin Diamond Co., Ltd., Iljin 
Holdings Co., Ltd., Iljin USA Inc., Iljin Europe GmbH, Iljin Japan Co., 
and Ltd., Iljin China Co., Ltd. (collectively, ``Iljin''); Henan 
Jingrui New Material Technology Co., Ltd. (``Jingrui''); Zhenzghou New 
Asia Superhard Materials Composite Co., Ltd., and International Diamond 
Services, Inc. (collectively, ``New Asia/IDS''); CR Gems Superabrasives 
Co., Ltd. (``CR Gems''); FIDC Beijing Fortune International Diamond 
(``FIDC''); Fujian Wanlong Superhard Material Technology Co., Ltd. 
(``Wanlong''); Zhujau Juxin Technology (``Juxin''); \1\ and Shenzhen 
Haimingrun Superhard Materials Co., Ltd. (``Haimingrun'') (together, 
``the Respondents''). Id. at 85662. The Office of Unfair Import 
Investigations did not participate in the investigation. Id.
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    \1\ On February 8, 2021, Guangdong Juxin Materials Technology 
Co., Inc. was substituted in place of Zhuhai Juxin Technology. See 
Order No. 8 (Feb. 8, 2021).
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    USS moved to terminate the investigation as to Element Six and FIDC 
over the course of the investigation. All of the motions were granted 
by non-final initial determinations (``ID''), and the Commission did 
not review them. See Order Nos. 6 (Feb. 1, 2021), 8 (Feb. 8, 2021), 10 
(Feb. 24, 2021), and 16 (Apr. 1, 2021). Thus, the only remaining 
respondents are Iljin, SF Diamond, New Asia/IDS, Haimingrun, Juxin, CR 
Gems, Jingrui, and Wanlong.
    USS also moved for partial termination of the investigation with 
respect to certain asserted patents and claims. All the motions were 
granted by non-final IDs, and the Commission did not review them. See 
Order Nos. 26 (Jul. 14, 2021), 32 (Aug. 9, 2021), and 57 (Oct. 19, 
2021). As such, the '274 and '881 patents have been terminated from the 
investigation. Claims 1, 2, 4, 6, and 18 of the '565 patent; claims 1, 
2, 11, 15, and 21 of the '502 patent; and claim 15 of the '306 patent 
remain in this investigation (collectively, ``the Asserted Patents'').
    On April 27, 2021, a technology tutorial and Markman hearing was 
held. On May 24, 2021, Order No. 23 issued, which construed certain 
claim terms of the patents at issue. An evidentiary hearing took place 
during the week of October 18-22, 2021.
    On March 3, 2022, the administrative law judge (``ALJ'') issued his 
final ID, finding no violation of section 337 by Respondents. 
Specifically, the ID found at least one accused product infringes all 
asserted claims of the Asserted Patents, but those claims are invalid 
under 35 U.S.C. 101 and/or 102. The ID also found that Complainant has 
shown that the domestic industry requirement has been satisfied with 
respect to the Asserted Patents. Complainant and Respondents filed 
separate petitions for review and responses to the petitions for 
review. On March 31, 2022, Iljin submitted a public interest statement.
    On May 9, 2022, the Commission determined to review the ID in part. 
87 FR 29375-377 (May 13, 2022). Specifically, the Commission determined 
to review: (1) the ID's finding that the asserted claims are invalid 
under 35 U.S.C. 101; (2) the ID's finding that the asserted claims of 
the '565 patent are not entitled to an earlier priority date and, thus, 
they are invalid as anticipated by the sale of the CT-57 product; (3) 
the ID's finding that the Mercury product anticipates claims 1 and 2 of 
the '565 patent and claims 1 and 11 of the '502 patent; (4) the ID's 
finding that Respondents did not prove that the asserted claims are not 
enabled; and (5) the ID's findings regarding the economic prong of the 
domestic industry requirement (including the ruling allowing USS to 
supplement its domestic industry contentions with a revenue-based 
allocation method). The Commission determined not to review any other 
findings presented in the ID, including the ID's finding of no 
violation of section 337 with respect to the '306 patent. The 
Commission requested briefing from the parties on certain issues under 
review and on remedy, the public interest, and bonding. Complainant and 
Respondents filed their opening written submissions on May 23, 2022, 
and their responsive written submissions on May 31, 2022. The 
Commission did not receive comments from the public on public interest 
issues raised by the ALJ's recommended relief.
    Having reviewed the record of the investigation, including the 
final ID and the parties' submissions, the Commission has found no 
violation of section 337 as to claims 1, 2, 4, 6, and 18 of the '565 
patent and claims 1, 2, 11, 15, and 21 of the '502 patent. 
Specifically, the Commission affirms with modifications the ID's 
finding that the asserted claims of the '502, '565, and '306 patents 
are directed to an abstract idea and, thus, are patent ineligible under 
35 U.S.C. 101. The Commission also affirms with modifications the ID's 
finding that the asserted claims of the '565 patent are not entitled to 
an earlier priority date and, thus, the claims are anticipated by the 
prior art CT-57. The Commission reverses the ID's finding that the 
Mercury PDC, manufactured by Diamond Innovations, Inc., anticipates 
claims 1 and 2 of the '565 patent and claims 1 and 11 of the '502 
patent. The Commission affirms with modifications the ID's finding that 
Respondents have not proven that the asserted claims of the '502, '565, 
and '306 patents are not enabled. Having affirmed the ID's findings 
that the asserted claims are invalid, the Commission has determined to 
take no position on the economic prong of the domestic industry 
requirement.
    Commissioner Schmidtlein joins the Commission's decision affirming 
the ID's section 102 findings as modified in the Majority opinion but 
dissents from the Majority's decision to affirm the ID's section 101 
findings as explained in her dissenting views. She would also affirm 
with modifications the ID's conclusion that USS established the 
economic prong of the domestic industry requirement for the '565 patent 
and the '502 patent under subsections (A), (B), and (C) of section 
337(a)(3). Accordingly, she would find a violation based on 
infringement of claims 1, 2, 11, 15, and 21 of the '502 patent.
    The investigation is terminated with a finding of no violation. The 
Commission's reasoning in support of its determinations is set forth 
more fully in its opinion issued concurrently herewith.
    The Commission vote for this determination took place on October 3, 
2022.
    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.


[[Page 61100]]


    Issued: October 3, 2022.
Katherine Hiner,
Acting Secretary to the Commission.
[FR Doc. 2022-21828 Filed 10-6-22; 8:45 am]
BILLING CODE 7020-02-P