[Federal Register Volume 79, Number 214 (Wednesday, November 5, 2014)]
[Notices]
[Pages 65698-65701]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2014-26246]
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INTERNATIONAL TRADE COMMISSION
[Investigation No. 337-TA-884]
Certain Consumer Electronics with Display and Processing
Capabilities; Commission Decision to Review In Part a Final Initial
Determination Finding a Violation of Section 337; Request for Written
Submissions; Extension of Target Date
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 presiding
administrative law judge's (``ALJ'') final initial determination
(``final ID'') issued on August 29, 2014, finding a violation of
section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337
(``section 337''), and to extend the target date in the above-captioned
investigation.
FOR FURTHER INFORMATION CONTACT: Megan M. Valentine, Office of the
General Counsel, U.S. International Trade Commission, 500 E Street SW.,
Washington, DC 20436, telephone (202) 708-2301. 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: The Commission instituted this investigation
on June 25, 2013, based on a complaint filed by Graphics Properties
Holdings, Inc. of New Rochelle, New York (``GPH''). 78 FR 38072-73
(June 25, 2013). The complaint alleged 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 consumer electronics with
display and processing capabilities by reason of infringement of
certain claims of United States Patent Nos. 6,650,327 (``the '327
patent''); 8,144,158 (``the '158 patent''); and 5,717,881 (``the '881
patent''). The notice of investigation named as respondents Panasonic
Corporation of Osaka, Japan and Panasonic Corporation of North America
of Secaucus, New Jersey (collectively ``Panasonic''); Toshiba
Corporation of Tokyo, Japan and Toshiba America Information Systems,
Inc. of Irvine, California (collectively ``Toshiba''); Toshiba America,
Inc. of New York, New York (``Toshiba America''); Vizio, Inc. of
Irvine, California (``Vizio''); AmTran Logistics, Inc. of Irvine,
California and AmTran Technology Co., Ltd. of New Taipei City, Taiwan
(collectively ``AmTran''); and ZTE Corporation of Shenzhen, China, ZTE
(USA) Inc. of Richardson, Texas, and ZTE Solutions of Richardson, Texas
(collectively, ``ZTE''). The Office of Unfair Import Investigations
(``OUII'') is a party to the investigation. The Commission later
terminated the investigation with respect to Panasonic, Vizio, AmTran,
and ZTE.
On March 31, 2014, the Commission determined not to review an ID
granting respondents' motion for summary determination that claim 1 of
the '881 patent is invalid for indefiniteness, thus terminating the
'881 patent from the investigation. Notice (Mar. 31, 2014); Order Nos.
53 (Feb. 27, 2014), 60 (Mar. 11, 2014, correcting Order No. 53).
On August 29, 2014, the ALJ issued his final ID, finding a
violation of section 337 with respect to Toshiba. Specifically, the ALJ
found that all of the accused products literally infringe claims 2, 3,
7, 25, and 26 of the '327 patent and claims 1, 4, 7, and 10 of the '158
patent (``the asserted claims''). The ALJ also found that none of the
asserted claims of the '327 patent are invalid as anticipated under 35
U.S.C. 102 or as obvious under 35 U.S.C. 103. The ALJ further found
that none of the asserted claims of the '158 patent are invalid as
anticipated under 35 U.S.C. 102, as obvious under 35 U.S.C. 103, or for
lack of written description under 35 U.S.C. 112. The ALJ also found
that the respondents did not establish that any of the asserted patents
are unenforceable due to estoppel based on GPH's obligation to license
the asserted patents under reasonable and nondiscriminatory (``RAND'')
terms or that license exhaustion applies with respect to any of the
asserted patents. The ALJ further found that a domestic industry exists
with respect to the '327 and '158 patents.
The ALJ found, however, that no violation of section 337 exists as
to respondent Toshiba America with respect to the asserted claims of
the '327 and '158 patents because GPH failed to satisfy the importation
or sale requirement of section 337 establishing subject matter
jurisdiction as to Toshiba America. No party petitioned for review of
this finding.
[[Page 65699]]
The final ID also includes the ALJ's recommended determination
(``RD'') on remedy and bonding. The ALJ recommends that the Commission
issue a limited exclusion order barring entry of Toshiba's consumer
electronics with display and processing capabilities that infringe the
asserted claims of the '327 and '158 patents in the event it finds a
violation of section 337. The ALJ also recommends issuance of a cease
and desist order against Toshiba, and recommends the imposition of a
zero percent bond during the period of Presidential review because GPH
failed to support its bond proposals.
On September 15, 2014, Toshiba filed a petition for review of the
final ID's finding of violation. In particular, Toshiba requested
review of the final ID's findings concerning claim construction,
invalidity, infringement, the economic prong of the domestic industry,
Toshiba's license defense, and Toshiba's RAND defense. Also on
September 15, 2014, GPH filed a contingent petition for review
concerning the ALJ's lack of findings with respect to whether GPH
additionally satisfied the economic prong of the domestic industry
requirement based on the domestic activities of its licensees pursuant
to 19 U.S.C. 1337(a)(3)(A) and (B).
On September 23, 2014, GPH filed a response to Toshiba's petition
for review, and Toshiba filed a response to GPH's contingent petition
for review. Also on September 23, 2014, the Commission investigative
attorney filed a joint response to the private parties' petitions.
On September 30, 2014, Toshiba filed a post-RD statement on the
public interest pursuant to Commission Rule 210.50(a)(4). On October 1,
2014, GPH filed its post-RD public interest statement pursant to the
Commission Rule 210.50(a)(4). No responses were filed by the public in
response to the post-RD Commission Notice issued on September 3, 2014.
See Notice of Request for Statements on the Public Interest (Sept. 3,
2014).
Having examined the record of this investigation, including the
ALJ's final ID, the petitions for review, and the responses thereto,
the Commission has determined to review the final ID in part.
Specifically, the Commission has determined to review the ALJ's
construction of the limitation ``frame buffer'' in claims 2, 3, and 7
of the '327 patent and claims 1, 7, and 8 of the '158 patents, and the
claim limitations ``scan converter'' and ``scan convert data'' recited
in claim 1 of the '158 patent. In addition, the Commission has
determined to review the final ID's finding that claim 1 of the '158
patent is not invalid under 35 U.S.C. 112 for failure to satisfy the
written description requirement.
The Commission has also determined to review the final ID's finding
that the reference Martin, P. et al., ``Turbo VRX: A High-Performance
Graphics Workstation Architecture'' (``the Martin publication'') does
not anticipate claim 2 of the '327 patent and claims 1, 4, 7, and 10 of
the '158 patent. The Commission has further determined to review the
final ID's finding that Toshiba failed to show by clear and convincing
evidence that the asserted claims of the '327 and '158 patents are
obvious in view of Martin, U.S. Patent No. 5,977,983 to Einkauf
(``Einkauf''), and AT&T's Pixel Machine (``Pixel Machine''), alone or
in combination with other asserted prior art.
Because the Commission has determined to review the ALJ's
constructions of the limitations ``frame buffer,'' ``scan converter,''
and ``scan convert data,'' the Commission has also determined to review
the final ID's finding of infringement with respect to all of the
accused graphics processing units, including those for which Toshiba
did not petition for review.
The Commission has determined to review the final ID's finding that
GPH has satisfied the economic prong of the domestic industry
requirement. Accordingly, the Commission has determined to review the
final ID's finding that GPH's motion for summary determination that it
satisfied the economic prong of the domestic industry requirement
through its licensees' activities under 337(a)(3)(A) and (B) for
expenditures in labor, capital, plant, and equipment with respect to
its licensees' research and development activities is moot.
Furthermore, because the Commission has determined to review the ALJ's
constructions of the limitations ``frame buffer,'' ``scan converter,''
and ``scan convert data,'' the Commission has determined to review the
final ID's finding that GPH satisfied the technical prong of the
domestic industry requirement.
The Commission has further determined to review the final ID's
finding that the defense of license exhaustion does not apply to
certain of Toshiba's accused products by virtue of a license agreement
concerning Toshiba's display panel manufacturers. The Commission has
also determined to review the final ID's finding that the '327 patent
is not subject to RAND encumbrances.
The Commission has determined not to review the remaining issues
decided in the final ID.
The parties are requested to 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:
1. Does the correct construction of the ``frame buffer''
limitation require that the claimed ``frame buffer'' must store
``floating point color values'' but need not store a ``full frame of
fragment or pixel data after rasterization is complete but
immediately prior to the values being scanned out to the display?''
Please discuss the correct construction of these terms in reference
to the intrinsic evidence and Silicon Graphics, Inc. v. ATI
Technologies, Inc., 607 F.3d 784, 792 (Fed. Cir. 2010).
2. Please discuss whether the claimed ``scan converter'' is
capable of operating on an entirely floating point basis while
receiving and outputting data that is not in floating point format.
Please address how this affects the proper construction of the claim
limitations ``scan converter'' and ``scan convert data'' and whether
claim 1 of the '158 patent is invalid under 35 U.S.C. 112 for
failure to satisfy the written description requirement.
3. Please discuss whether the Martin publication by itself is
enabling prior art. In addition, please address whether GPH's
reliance on the reference ``High Speed High Quality Antialiased
Vector Generation'' by A. Barkans to discredit the Martin
publication is legally permissible in the context of assessing
whether the Martin publication is enabled.
4. Please discuss whether, if the Martin publication is enabled,
the Martin publication itself reads on every limitation of claim 2
of the '327 patent and claims 1, 4, 7, and 10 of the '158 patent.
5. Please discuss whether, if the Martin publication is enabled,
Martin alone or in combination with other prior art renders obvious
the asserted claims of the '327 and '158 patents with respect to the
claim limitations ``frame buffer,'' ``s10e5 format,'' ``scan
converter,'' and ``scan convert data.''
6. Please discuss whether Einkauf, alone or in combination with
other prior art, renders obvious the asserted claims of the '327 and
'158 patents with respect to the claim limitations ``frame buffer,''
``s10e5 format,'' ``scan converter,'' and ``scan convert data.''
7. Please discuss whether Pixel Machine, alone or in combination
with other prior art, renders obvious the asserted claims of the
'327 and '158 patents with respect to the claim limitations ``frame
buffer,'' ``texture circuit,'' ``s10e5 format,'' ``scan converter,''
and ``scan convert data.'' In particular, please address if the
question of whether Pixel Machine renders obvious the ``texture
circuit'' limitation in claim 4 of the '158 patent remains at issue.
8. In light of the Commission's determination to review the
ALJ's construction of the claim limitations ``frame buffer,'' ``scan
converter,'' and ``scan convert data,'' please discuss whether any
of the
[[Page 65700]]
accused products infringe the asserted claims of the '327 and '158
patents. Also, please address whether the source code upon which
GPH's expert relied with respect to his opinion that the accused
Toshiba products infringe the asserted claims of the '327 and '158
patents accurately reflects the operation of those products.
9. Please discuss, based on record evidence, the extent to which
GPH's purported licensing-based domestic industry will be ongoing
following the termination of this investigation.
10. Please discuss whether GPH has satisfied the economic prong
of the domestic industry requirement through its licensees'
activities under 337(a)(3)(A) and (B) for expenditures in labor,
capital, plant, and equipment with respect to its licensees'
research and development activities.
11. In light of the Commission's determination to review the
ALJ's construction of the claim limitations ``frame buffer,'' ``scan
converter,'' and ``scan convert data,'' please discuss whether GPH
has satisfied the technical prong of the domestic industry
requirement.
12. Please explain the scope of licensed products recited in the
license agreement concerning certain of Toshiba's display panel
manufacturers in accordance with the laws of the state of New York.
Please discuss whether Toshiba is a sublicensee pursuant to this
license agreement.
13. Please discuss whether GPH incurred a RAND obligation as to
the '327 and/or '158 patent by reason of GPH's or SGI's conduct (1)
before any of the standards committees with which GPH or SGI was
involved, or (2) in negotiations with potential licensees. In
particular, please address: (1) The legal significance of SGI's
purported statement to the OpenGL Architecture Review Board and the
Khronos Group Board of Promoters that, as to the '327 patent, it
will discuss licensing on RAND terms; (2) whether the '327 patent is
incorporated into an optional extension; (3) if the '327 patent is
incorporated into an optional extension, is it considered part of
the Ratified Specification; and (4) whether the asserted claims of
the '327 and/or '158 patent are ``Necessary Claims'' or ``Necessary
Patent Claims.''
14. Please discuss the course of conduct between Toshiba and GPH
regarding negotiations on RAND licensing terms.
15. Please discuss whether GPH ever submitted an IP Disclosure
Certificate in connection with its participation with the Open GL
standard under the Khronos Group Membership Agreement.
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 the
respondent(s) 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 (December
1994) (Commission Opinion).
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
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, including
OUII, are requested to file written submissions on the issues
identified in this notice. Parties to the investigation, including
OUII, 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
is also requested to submit proposed remedial orders for the
Commission's consideration and to provide identification information
for all importers of the subject articles. Complainant and OUII are
also requested to state the dates that the patents expire and the HTSUS
numbers under which the accused products are imported. The written
submissions and proposed remedial orders must be filed no later than
close of business on November 21, 2014. Initial submissions are limited
to 125 pages, not including any attachments or exhibits related to
discussion of the public interest. Reply submissions must be filed no
later than the close of business on December 5, 2014. Reply submissions
are limited to 75 pages, not including any attachments or exhibits
related to discussion of the public interest. The parties may not
incorporate by reference their filings before the ALJ. No further
submissions on 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 and submit 8
true paper copies to the Office of the Secretary by noon the next day
pursuant to section 210.4(f) of the Commission's Rules of Practice and
Procedure (19 C...210.4(f)). Submissions should refer to the
investigation number (``Inv. No. 337-TA-884'') in a prominent place on
the cover page and/or the first page. (See Handbook for Electronic
Filing Procedures, http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf). Persons with questions
regarding filing should contact the Secretary (202-205-2000).
Any person desiring to submit a document to the Commission in
confidence must request confidential treatment. All such requests
should be directed to the Secretary to the Commission and must include
a full statement of the reasons why the Commission should grant such
treatment. See 19 CFR 01.6. Documents for which confidential treatment
by the Commission is properly sought will be treated accordingly. A
redacted non-confidential version of the document must also be filed
simultaneously with the any confidential filing. All non-confidential
written submissions will be available for public inspection at the
Office of the Secretary and on EDIS.
The target date for completion of the investigation is extended to
January 16, 2015.
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).
Issued: October 30, 2014.
[[Page 65701]]
By order of the Commission.
Lisa R. Barton,
Secretary to the Commission.
[FR Doc. 2014-26246 Filed 11-4-14; 8:45 am]
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