In the Matter of: Certain Flash Memory Controllers, Drives, Memory Cards, and Media Players and Products Containing Same; Notice of Commission Determination To Review in Part A Final Determination Finding No Violation of Section 337; Schedule for Filing Written Submissions on the Issues Under Review and on Remedy, the Public Interest and Bonding, 44382-44384 [E9-20706]

Agencies

• INTERNATIONAL TRADE COMMISSION

[Federal Register Volume 74, Number 166 (Friday, August 28, 2009)]
[Notices]
[Pages 44382-44384]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: E9-20706]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-619]


In the Matter of: Certain Flash Memory Controllers, Drives, 
Memory Cards, and Media Players and Products Containing Same; Notice of 
Commission Determination To Review in Part A Final Determination 
Finding No Violation of Section 337; Schedule for Filing 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 final initial 
determination (``ID'') issued by the presiding administrative law judge 
(``ALJ'') on April 10, 2009 (a corrected version was issued on April 
16, 2009), finding no violation of section 337 of the Tariff Act of 
1930, 19 U.S.C. 1337, in this investigation.

FOR FURTHER INFORMATION CONTACT: Panyin A. Hughes, Esq., 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 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 
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. 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 12, 2007, based on a complaint filed by SanDisk Corporation 
of Milpitas, CA. 72 FR 70610 (Dec. 12, 2007). The complaint alleged 
violations of section 337 of the Tariff Act of 1930 (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 flash 
memory controllers, drives, memory cards, media players and products 
containing the same by reason of infringement of various claims of 
United States Patent Nos. 6,426,893; 6,763,424 (``the '424 patent''); 
5,719,808; 6,947,332; and 7,137,011 (``the '011 patent''). Three 
patents and several claims were subsequently terminated from the 
investigation. Claims 24 and 30 of the '424 patent and claim 8 of the 
'011 patent remain in the investigation. The complaint named nearly 
fifty respondents. Twenty-one of these respondents were terminated from 
the investigation based on settlement agreements, consent orders and 
withdrawal of allegations from the complaint. Five respondents 
defaulted. The following respondents remain in the investigation: 
Phison Electronics Corporation of Hsinchu, Taiwan; Silicon Motion 
Technology Corporation of Hsinchu, Taiwan; Silicon Motion, Inc. of 
Milpitas, CA; Skymedi Corporation of Hsinchu, Taiwan; Power Quotient 
International Co., Ltd. of Taipei, Taiwan; Power Quotient International 
(HK) Co., Ltd. of Hong Kong; Syscom Development Co., Ltd. of the 
British Virgin Islands; PQI Corporation of Fremont, California; 
Kingston Technology Corporation of Fountain Valley, CA; MemoSun, Inc. 
of Fountain Valley, CA; Transcend Information Inc. of Taipei, Taiwan; 
Transcend Information Inc. of Orange, CA; Transcend Information 
Maryland, Inc. of Linthicum, MD; Imation Corporation of Oakdale, MN; 
Imation Enterprises Corporation of Oakdale, MN; Memorex Products, Inc. 
of Cerritos, CA; Apacer Technology Inc. of Taipei Hsien, Taiwan; Apacer 
Memory America, Inc. of Milpitas, CA; Dane Memory S.A. of Bagnolet, 
France; Deantusaiocht Dane-Elec TEO of Spiddal, Galway, Ireland; Dane-
Elec Corporation USA of Irvine CA; LG Electronics U.S.A., Inc. of 
Englewood Cliffs, New Jersey; and LG Electronics, Inc. of Seoul, South 
Korea.
    On April 10, 2009, the ALJ issued his final ID finding no violation 
of section 337 by Respondents. The ALJ issued a corrected version of 
his final ID on April 16, 2009. The ID included the ALJ's recommended 
determination on remedy and bonding. In the subject ID, the ALJ found 
that the accused products do not infringe asserted claims, 17, 24 and 
30, of the '424 patent. The ALJ also found that none of the cited 
references anticipated the asserted claims and that none of the cited 
references rendered the asserted claims obvious. The ALJ further found 
the Respondents not liable for contributory or induced infringement of 
the asserted claims of the '424 patent. Likewise, the ALJ found that 
SanDisk failed to prove that the sole

[[Page 44383]]

respondent accused of infringing claim 8 of the '011 patent, Imation, 
induced or contributed to infringement of the patent. The ALJ also 
found that SanDisk's rights in the '011 patent were not exhausted and 
that claim 8 of the '011 patent satisfies the indefiniteness 
requirement of 35 U.S.C. 112, second paragraph. The ALJ, however, 
concluded that the prior art rendered claim 8 of the '011 patent 
obvious.
    On May 4, 2009, SanDisk and the Commission investigative attorney 
filed petitions for review of the ID. That same day, Respondents filed 
a collective contingent petition for review of the ID with respect to 
the '424 patent. Skymedi Corporation and Imation Respondents, in 
addition to joining the collective contingent petition for review, 
filed individual contingent petitions for review. On May 18, 2009, the 
parties filed responses to the various petitions and contingent 
petitions for review.
    On April 21, 2009, the Commission extended the date by which to 
determine whether to review the ALJ's initial ID from June 9, 2009, to 
June 22, 2009, and on May 28, 2009, the Commission extended the date 
for determining whether to review the ID from June 22, 2009, to August 
24, 2009. The Commission also extended the target date for completion 
of the investigation from August 10, 2009 to October 23, 2009.
    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. The 
Commission has determined to review the claim construction of claims 
17, 24 and 30 of the '424 patent; infringement of the asserted claims 
of the '424 patent; validity of the '424 patent; and the ALJ's decision 
not to consider the Sinclair PCT publication as evidence of prior art 
to claim 17 of the '424 patent. The Commission has determined not to 
review any other issues.
    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. Address whether the accused products would infringe claim 17 of 
the '424 patent if construction of the claim term ``updating pages of 
original data within any of the metablock component blocks less than 
all the pages within the block'' is construed to cover single-page 
updates. Please cite record evidence and/or relevant legal precedent to 
support your position.
    2. Address whether the claim term ``reading and assembling data 
from the first and second plurality of pages'' as recited in claim 20 
of the '424 patent should be construed to cover the so-called ``table 
method,'' and whether the accused products would infringe claims 24 and 
30 of the '424 patent as a result. See '424 patent (JX-2) at column 10, 
lines 44-59; FIG. 12. Please cite record evidence and relevant legal 
authority to support your position.
    3. Address why the Sinclair PCT publication was not listed on any 
notice of prior art as required by Ground Rule No. 5, and having 
violated the ground rule, why none of the parties availed itself of its 
remedy to submit a timely written motion showing good cause why the 
reference was not listed. See Order No. 2 at 9-10.
    4. Address under what circumstances, if any, the Commission should 
consider a reference that was not submitted in accordance with an ALJ's 
ground rule.
    5. Address the similarities and differences, if any, between U.S. 
Patent No. 6,725,321 to Alan Welsh Sinclair et al. (RX-628) and its 
corresponding Patent Cooperation Treaty publication, WO 00/49488 (``the 
Sinclair PCT publication'') (RX-1038--rejected by ALJ) and whether the 
Sinclair PCT publication invalidates claim 17 of the '424 patent. 
Please cite record evidence and any relevant legal authority to support 
your position.
    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 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).
    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. 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. Complainants and the IA are also requested to 
submit proposed remedial orders for the Commission's consideration. 
Complainants 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 Thursday, September 3, 2009. 
Reply submissions must be filed no later than the close of business on 
Friday, September 12, 2009. No further submissions on these issues will 
be permitted unless otherwise ordered by the Commission.
    Persons filing written submissions must file the original document 
and 12 true copies thereof 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

[[Page 44384]]

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 nonconfidential written submissions 
will be available for public inspection at the Office of the Secretary.
    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.

    Dated: Issued: August 24, 2009.
Marilyn R. Abbott,
Secretary to the Commission.
William R. Bishop,
Acting Secretary to the Commission.
[FR Doc. E9-20706 Filed 8-27-09; 8:45 am]
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