Federal Register, Volume 78 Issue 134 (Friday, July 12, 2013)

[Federal Register Volume 78, Number 134 (Friday, July 12, 2013)]
[Notices]
[Pages 41950-41952]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2013-16709]

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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-770]

Certain Video Game Systems and Wireless Controllers and
Components Thereof; Commission Determination To Review-In-Part a Remand
Initial Determination; Schedule for Filing Written Submissions on
Review for Remand Initial Determination and Final Inital Determination

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 certain portions of the remand
initial determination (``ID'') issued by the presiding administrative
law judge (``ALJ'') on May 7, 2013 in the above-captioned
investigation.

FOR FURTHER INFORMATION CONTACT: Jia Chen, Office of the General
Counsel, U.S. International Trade Commission, 500 E Street SW.,
Washington, DC 20436, telephone (202) 708-4737. 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 http://www.usitc.gov. The public record for this investigation may be viewed
on the Commission's electronic docket (EDIS) at http://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: On April 27, 2011, the Commission instituted
the subject investigation based on a complaint filed by Creative
Kingdoms, LLC of Wakefield, Rhode Island and New Kingdoms, LLC of
Nehalem, Oregon (collectively, ``CK''). 76 FR 23624 (Apr. 27, 2011).
The complaint alleged violations of Section 337 of the Tariff Act of
1930, 19 U.S.C. 1337 (``Section 337'') by reason of infringement of
certain claims of United States Patent Nos. 7,896,742 (``the '742
patent''); 7,500,917 (``the '917 patent''); and 7,850,527 (``the '527
patent''). The named respondents are Nintendo Co., Ltd., of Kyoto,
Japan and Nintendo America, Inc. of Redmond, Washington (collectively,
``Nintendo'').
The products accused of infringing the asserted patents are gaming
systems and related components and software, including the Wii Remote,
Wii MotionPlus, Wii Remote Plus, Nunchuk, Wii console (versions RVL and
RVK), and Wii U console (collectively, the ``accused products'').
On August 31, 2012, the ALJ issued a final ID finding no violation
of section 337 by Nintendo. The ALJ found that the accused products
infringe sole asserted claim 24 of the '742 patent, but that the claim
is invalid for failing to satisfy the enablement requirement and the
written description requirement under 35 U.S.C. 112. The ALJ found that
no accused products infringe the asserted claims of the '917 patent and
'527 patents. The ALJ also found that the asserted claims of the '917
and '527 patents are invalid for failing to satisfy the enablement
requirement and the written description requirement. The ALJ concluded
that complainant has failed to show that a domestic industry exists in
the United States that exploits the asserted patents as required by 19
U.S.C. 1337(a)(2). The ALJ did not make a finding regarding the
technical prong of the domestic industry requirement with respect to
the asserted patents. The ALJ also did not make a finding with respect
to anticipation and obviousness of the asserted patents.
On September 17, 2012, CK filed a petition for review challenging
the ALJ's findings with respect to claim construction, infringement,
enablement and written description for the '917 patent, the ALJ's
findings with respect to enablement and written description of the '742
patent, as well as the ALJ's findings with respect to the domestic
industry requirement for the '917 and '742 patents. On the same day,
Nintendo filed a petition for review challenging the ALJ's finding with
respect to claim construction and infringement for the '742 patent.
Nintendo also challenged the ALJ's failure to address anticipation and
obviousness with respect to the '917 and '742 patents. The IA filed a
petition for review challenging the ALJ's finding with respect to the
domestic industry

[[Page 41951]]

requirement for the '917 and '742 patents. None of the parties
challenged the ALJ's final ID with respect to the '527 patent.
On November 6, 2012, the Commission determined to review the
following issues: (1) Claim construction of the limitation ``toy wand''
of the asserted claim of the '917 patent; (2) non-infringement of the
asserted claim of the '917 patent; (3) infringement of the asserted
claim of the '742 patent; (4) validity of the asserted claims of the
'917 and '742 patents under the enablement requirement; (5) validity of
the asserted claims of the '917 and '742 patents under the written
description requirement; and (6) whether the domestic industry
requirement is met with respect to the '917 and '742 patents. On the
same day, the Commission issued an opinion with respect to the proper
claim construction of the term ``toy wand'' of the asserted claim of
the '917 patent. Specifically, the Commission disagreed with the ALJ
that the term ``toy wand'' should be construed as ``an elongated hollow
pipe or tube consistent with a wand associated with magic or
illusion.'' The Commission found that the term ``toy wand'' should be
construed as ``an elongated hollow pipe or tube used for play.'' The
Commission determined to remand this case to the ALJ to determine the
following issues: (a) Direct infringement of the asserted claim of the
'917 patent in light of the proper construction of the term ``wand'' as
set forth in the Commission opinion; (b) whether the independently sold
Wii MotionPlus and Nunchuck accessories contributorily infringe the
asserted claims of the '917 and '742 patents; (c) anticipation and
obviousness with respect to the asserted claim of the '917 patent; (d)
obviousness with respect to the asserted claim of the '742 patent; and
(e) whether CK has satisfied the technical prong of the domestic
industry requirement with respect to the '917 and '742 patents, and if
necessary, whether CK has satisfied the economic prong of the domestic
industry requirement with respect to the '917 and '742 patents in light
of the ALJ's technical prong determination.
On May 7, 2013, the ALJ issued a remand ID finding no violation of
section 337. The ALJ found that (i) the accused products do not
infringe claim 7 of the '917 patent; (ii) Nintendo does not contribute
to the infringement of claim 24 of the '742 patent through its sale of
the Wii Nunchuk and the Wii MotionPlus accessories; (iii) the asserted
claim of the '917 patent is not invalid for anticipation; (iv) the
asserted claim of the '917 patent is not invalid for obviousness; (v)
the asserted claim of the '742 patent is not invalid for obviousness;
(vi) complainant has satisfied the technical prong of the domestic
industry requirement for the '917 patent; and (vii) complainant has
satisfied the technical prong of the domestic industry requirement for
the '742 patent. The ALJ determined that it was unnecessary to revisit
his previous finding in his final ID that complainant has not satisfied
the economic prong of the domestic industry requirement for the '742
and '917 patents.
On May 21, 2013, CK filed a petition for review of the remand ID,
challenging the ALJ's finding that complainant has not satisfied the
economic prong of the domestic industry requirement for the `742 and
`917 patents. CK also challenges the ALJ's finding that the accused
products do not directly infringe the `917 patent and that the
separately sold Wii Nunchuk or the Wii MotionPlus accessories do not
contributorily infringe the asserted claim of the `742 patent. On the
same day, Nintendo filed a petition for review of the remand ID,
challenging the ALJ's finding with respect to obviousness of the
asserted claim of the `742 patent. The IA did not submit a petition for
review. On June 3, 2013, CK, Nintendo, and the IA each filed reply
briefs.
Having examined the record of this investigation, the Commission
has determined to review the following issues from the remand ID: (1)
Whether the accused products directly infringe the asserted claim of
the `917 patent; (2) whether the independently sold Wii MotionPlus and
Nunchuck accessories contributorily infringe the asserted claim of the
`742 patent; (3) non-obviousness of the asserted claim of the `742
patent; and (4) whether the technical prong of the domestic industry
requirement is met with respect to the `917 and `742 patents. In
addition, the following issues from the final ID are currently under
review: (a) whether the accused products directly infringe the asserted
claim of the `742 patent; (b) validity of the asserted claims of the
`917 and `742 patent under the enablement requirement; (c) validity of
the asserted claims of the `917 and `742 patent under the written
description requirement; and (d) whether the economic prong of the
domestic industry requirement is met with respect to the `917 and `742
patents.
The parties should brief their positions on the issues under review
with reference to the applicable law and the evidentiary record. In
connection with its review, the Commission is particularly interested
in responses to the following questions:
Question 1: Please explain whether the accused products meet the
following limitations of the asserted claim of the `917 patent: (a)
``a toy wand,'' i.e., ``an elongated hollow pipe or tube used for
play''; (b) ``an elongated body having a first end and a second
end''; (c) ``a pair of first motion sensors configured to generate a
first signal in response to a first motion of the elongated body'';
(d) ``a second motion sensor configured to generate a second signal
in response to a second motion of the elongated body, wherein the
second motion is different from the first motion, and wherein the
second motion sensor is different than either of the pair of first
motion sensors''; (e) ``a transmitter disposed within the elongated
body and capable of wireless communication with at least one
receiver''; and (f) ``the transmitter configured to send to the at
least one receiver a first command to control a first play effect
based on the first signal, the transmitter further configured to
send a second command to the at least one receiver to control a
second play effect based on the second signal.''
Question 2: With respect to CK's contributory infringement claim
for the independently sold Nunchuk and MotionPlus accessories,
please cite to and discuss all evidence indicating (1) whether there
is an act of direct infringement; and (2) whether Nintendo had
knowledge that the combination of the Nunchuk or MotionPlus
accessories with the Wii Remote controller was covered by the `742
patent.
Question 3: What are the novel aspects of the invention of claim
7 of the `917 patent, and are those novel aspects supplied by the
specification of the `917 patent? See Automotive Technologies v. BMW
of North America Inc., 501 F.3d 1274, 1283 (Fed. Cir. 2007) (``It is
the specification, not the knowledge of one skilled in the art, that
must supply the novel aspects of an invention in order to constitute
adequate enablement.'').
Question 4: Would it have been known to a person of ordinary
skill in the art in light of the `917 patent specification to
configure the disclosed accelerometers or other motion sensors to
sense motion as required by claim 7?
Question 5: What are the novel aspects of the invention of claim
24 of the `742 patent, and are those novel aspects supplied by the
specification of the `742 patent?
Question 6: Please discuss whether claim 24 of the `742 patent
is rendered obvious by the combination of Silfer, Han, and Nitta.
Question 7: Please discuss whether claim 24 of the `742 patent
is rendered obvious by the combination of Willner, Silfer, and
Goschy.
Question 8: Assuming that the technical prong of the domestic
industry requirement is met and assuming that the patented article
is the toy wand (as opposed to the entire MagiQuest attraction
including the toy wand), do the ``realities of the marketplace''
dictate that the entire MagiQuest attraction (including the physical
space, themes, props, other peripheral items, and sales and training
staff) is the article of commerce in competition? See e.g., Certain
Double-Sided Floppy Disk Drives and Components Thereof, Inv. No.
337-TA-215, USITC Pub. 1860,

[[Page 41952]]

Comm'n Op., at 55-56 (Oct. 15, 1985) (``The patented article in this
investigation may be in and of itself an article of commerce, but .
. . [the patented] head assemblies are not the actual articles of
commerce at issue when viewed according to the competitive realities
of the marketplace.''). Are CK's operational activities with respect
to the entire attraction facility essential to practicing the
claimed wand?
Question 9: Please cite to and discuss evidence pertaining to
whether the economic prong of the domestic industry requirement is
shown with respect to the electronics and software used in the
MagiQuest attraction that interacts with the MagiQuest wand, and
discuss whether the electronics and software are designed,
developed, and/or manufactured in the United States?
Question 10: Please cite to and discuss evidence relating to the
strength of the nexus between the asserted patents and CK's alleged
licensing activities, including evidence showing that the activities
are particularly focused on the asserted patents. What are the
relative importance or value of the asserted patents within the
overall intellectual property portfolio in CK's agreements with its
customers to operate the MagiQuest attraction?

In connection with the final disposition of this investigation, the
Commission may (1) issue an order that could result in the exclusion of
the subject articles from entry into the United States, and/or (2)
issue one or more cease and desist orders that could result in a
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 9
(December 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 United States
Trade Representative, as delegated by the President, has 60 days to
approve or disapprove the Commission's action. 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 the investigation are requested
to file written submissions on the issues identified in this notice.
Parties to the investigation, interested government agencies, and any
other interested parties are encouraged to file written submissions on
the issues of remedy, the public interest, and bonding. Such
submissions should address the recommended determination by the ALJ on
remedy and bonding. Complainant and the Commission investigative
attorney are also requested to submit proposed remedial orders for the
Commission's consideration. Complainant is also requested to state the
date that the patent expires and the HTSUS subheadings under which the
accused products are imported. The written submissions and proposed
remedial orders must be filed no later than close of business on
Thursday, July 18, 2013. Reply submissions must be filed no later than
the close of business on Thursday, July 25, 2013. The written
submissions must be no longer than 50 pages and the reply submissions
must be no longer than 25 pages. No further submissions on these issues
will be permitted unless otherwise ordered by the Commission.
Persons filing written submissions must do so in accordance with
Commission rule 210.4(f), 19 CFR 210.4(f), which requires electronic
filing. The original document and 8 true copies thereof must also be
filed on or before the deadlines stated above with the Office of the
Secretary. 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. All non-confidential written submissions will be
available for public inspection at the Office of the Secretary and on
EDIS.
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 sections 210.42-46 and 210.50 of the Commission's Rules of Practice
and Procedure (19 CFR 210.42-46 and 210.50).

By order of the Commission.

Issued: July 8, 2013.
Lisa R. Barton,
Acting Secretary to the Commission.
[FR Doc. 2013-16709 Filed 7-11-13; 8:45 am]
BILLING CODE 7020-02-P