In the Matter of Certain Audio Digital-to-Analog Converters and Products Containing Same; Notice of a Commission Decision To Review and Reverse One Finding of the Administrative Law Judge in a Final Initial Determination; Commission Determination Not To Review the Remainder of the Initial Determination Finding a Violation of Section 337: Schedule for the Filing of Written Submissions on the Issues of Remedy, the Public Interest, and Bonding, 1275-1277 [05-251]

Agencies

• INTERNATIONAL TRADE COMMISSION

[Federal Register Volume 70, Number 4 (Thursday, January 6, 2005)]
[Notices]
[Pages 1275-1277]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 05-251]


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INTERNATIONAL TRADE COMMISSION

[Inv. No. 337-TA-499]


In the Matter of Certain Audio Digital-to-Analog Converters and 
Products Containing Same; Notice of a Commission Decision To Review and 
Reverse One Finding of the Administrative Law Judge in a Final Initial 
Determination; Commission Determination Not To Review the Remainder of 
the Initial Determination Finding a Violation of Section 337: Schedule 
for the Filing of Written Submissions on the Issues of 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 and reverse a finding contained in 
the final initial determination (``ID'') issued by the presiding 
administrative law judge (``ALJ'') in the above-captioned investigation 
on November 15, 2004. Specifically, the Commission has determined to 
review and reverse the ID's finding that the '928 patent is 
unenforceable due to incorrect inventorship in view of a recently 
issued Certificate of Correction by the U.S. Patent and Trademark 
Office (USPTO). The Commission has determined not to review the 
remainder of the ID, thereby finding a violation of section 337 of the 
Tariff Act of 1930, 19 U.S.C. 1337, in the above-captioned 
investigation.

FOR FURTHER INFORMATION CONTACT: Timothy P. Monaghan, Esq., Office of 
the General Counsel, U.S. International Trade Commission, 500 E Street, 
SW., Washington, DC 20436, telephone (202) 205-3152. Copies of the 
public version of the ID and all nonconfidential 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. Hearing-
impaired persons are advised that information on this matter can be 
obtained by contacting the Commission's TDD terminal on (202)

[[Page 1276]]

205-1810. General information concerning the Commission may also be 
obtained by accessing its Internet server (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.

SUPPLEMENTARY INFORMATION: The Commission instituted this investigation 
on November 14, 2003, based on a complaint filed on behalf of Cirrus 
Logic, Inc. of Austin, TX (``Cirrus''). 68 FR 64641 (Nov. 14, 2003). 
The complaint, as supplemented, alleged violations of section 337 in 
the importation into the United States, sale for importation, and sale 
within the United States after importation of certain audio digital-to-
analog converters and products containing same by reason of 
infringement of claims 1 and 11 of U.S. Patent No. 6,492,928 (``the 
'928 patent''). The notice of investigation named Wolfson 
Microelectronics, PLC of Edinburgh, United Kingdom; and Wolfson 
Microelectronics, Inc. of San Diego, CA (collectively ``Wolfson'') as 
respondents.
    On December 29, 2003, the ALJ issued an ID (Order No. 5) granting 
complainant's motion to amend the complaint and notice of investigation 
to add allegations of infringement of claims 2, 3, 5, 6, and 15 of the 
'928 patent, and of claims 9, 12, and 19 of U.S. Patent No. 6,011,501 
(``the `501 patent''). 69 FR 4177 (Jan. 28, 2004). On July 1, 2004, the 
ALJ issued an ID (Order No. 16) granting complainant's motion to 
terminate the investigation as to claims 1 and 2 of the '928 patent. On 
July 27, 2004, the ALJ issued an ID (Order No. 24) granting 
complainant's motion to terminate the investigation in part as to claim 
11 of the '928 patent. Orders Nos. 5, 16, and 24 were not reviewed by 
the Commission; consequently, claims 3, 5, 6 and 15 of the '928 patent 
and claims 9, 12, and 19 of the '501 patent remain in the 
investigation. An evidentiary hearing was held from August 3-August 11, 
2004.
    On November 15, 2004, the ALJ issued his final ID finding a 
violation of section 337 based on his findings that the asserted claims 
of the '501 patent are infringed, that they are not invalid in view of 
any prior art, and that claims 9 and 12 of the '501 patent are not 
invalid because of failure to provide an enabling written description 
of the claimed invention. The ALJ found that the '928 patent is 
unenforceable because the inventors intentionally withheld highly 
material prior art from the examiner during the prosecution of the '928 
patent application at the USPTO. Independently, the ALJ found that the 
'928 patent is unenforceable because one person was mistakenly listed 
as an inventor on the patent. On November 23, 2004, a certificate 
correcting inventorship was issued by the USPTO. Accordingly, 
unenforceability on this ground has been cured. Viskase Corp. v. 
American National Can Co., 261 F.3d 1316, 1329 (Fed. Cir. 2001) 
(``Absent fraud or deceptive intent, the correction of inventorship 
does not affect the validity or enforceability of the patent for the 
period before the correction.''). The ALJ found that the accused 
devices infringe the asserted claims of the '928 patent, if 
enforceable, and that the asserted claims of the '928 patent are not 
invalid in view of any prior art, or for failure to provide an enabling 
written description of the claimed invention or for failure to disclose 
the best mode. The ALJ also issued his recommendations on remedy and 
bonding during the period of Presidential review on November 15, 2004.
    On November 30, 2004, Cirrus, Wolfson, and the Commission's 
investigative attorney filed petitions for review of the final ID. On 
December 7, 2004, all parties filed responses.
    Having examined the record in this investigation, including the 
ALJ's final ID, the petitions for review, and the responses thereto, 
the Commission has determined to review and reverse the ID's finding 
that the '928 patent is unenforceable due to incorrect inventorship in 
view of the recently issued certificate of correction by the USPTO. The 
Commission has determined not to review the remainder of the ID, 
thereby finding a violation of section 337.
    In connection with the final disposition of this investigation, the 
Commission may issue (1) an order that could result in the exclusion of 
the subject articles from entry into the United States, and/or (2) 
cease and desist orders that could result in respondents being required 
to cease and desist from engaging in unfair action 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 are either 
adversely affecting it or likely to do so. For background, see In the 
Matter of Certain Devices for Connecting Computers via Telephone Lines, 
Inv. No. 337-TA-360, USITC Pub. No. 2843 (December 1994) (Commission 
Opinion).
    When 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 President has 60 
days to approve or disapprove the Commission's action. During this 
period, the subject articles would be entitled to enter the United 
States under a 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.
    Written Submissions: The parties to the investigation, interested 
government agencies, and any other interested persons are encouraged to 
file written submissions on the issues of remedy, the public interest, 
and bonding. Such submissions should address the ALJ's recommended 
determination on remedy and bonding. Complainant and the Commission 
investigative attorney are also requested to submit proposed remedial 
orders for the Commission's consideration. The written submissions and 
proposed remedial orders must be filed no later than the close of 
business on Monday, January 10, 2005, and reply submissions must be 
filed no later than close of business on Monday, January 17, 2005. No 
further submissions will be permitted unless otherwise ordered by the 
Commission.
    Persons filing written submissions must file the original document 
and 14 true copies thereof with the Office of the Secretary on or 
before the deadlines stated above. Any person desiring to submit a 
document (or portions thereof) 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

[[Page 1277]]

Commission should grant such treatment. See 19 CFR 210.5. Documents for 
which confidential treatment is granted by the Commission will be 
treated accordingly. All nonconfidential written submissions will be 
available for public inspection at the Office of the Secretary.
    This action is taken under the authority of section 337 of the 
Tariff Act of 1930, as amended (19 U.S.C. 1337), and sections 210.42, 
210.46, and 210.50 of the Commission's Interim Rules of Practice and 
Procedure (19 CFR 210.42, 210.46, and 210.50).

    By order of the Commission.

    Issued: December 30, 2004.
Marilyn R. Abbott,
Secretary to the Commission.
[FR Doc. 05-251 Filed 1-5-05; 8:45 am]
BILLING CODE 7020-02-P