Certain Magnetic Data Storage Tapes and Cartridges Containing the Same; Notice of Commission Final Determination of Violation of Section 337; Termination of Investigation; Issuance of Limited Exclusion Order and Cease and Desist Orders, 11245-11247 [2018-05093]
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Federal Register / Vol. 83, No. 50 / Wednesday, March 14, 2018 / Notices
INTERNATIONAL TRADE
COMMISSION
[Investigation No. 337–TA–1012]
Certain Magnetic Data Storage Tapes
and Cartridges Containing the Same;
Notice of Commission Final
Determination of Violation of Section
337; Termination of Investigation;
Issuance of Limited Exclusion Order
and Cease and Desist Orders
U.S. International Trade
Commission.
ACTION: Notice.
AGENCY:
Notice is hereby given that
the U.S. International Trade
Commission has found a violation in the
above-captioned investigation. The
Commission has determined to issue a
limited exclusion order and cease and
desist orders. The investigation is
terminated.
SUMMARY:
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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 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 July 1, 2016, based on a Complaint
filed by Fujifilm Corporation of Tokyo,
Japan, and Fujifilm Recording Media
U.S.A., Inc. of Bedford, Massachusetts
(collectively, ‘‘Fujifilm’’). 81 FR 43243–
44 (July 1, 2016). The Complaint alleges
violations of section 337 of the Tariff
Act of 1930, as amended, 19 U.S.C. 1337
(‘‘section 337’’), in the sale for
importation, importation, and sale
within the United States after
importation of certain magnetic data
storage tapes and cartridges containing
the same by reason of infringement of
certain claims of U.S. patent Nos.
6,641,891 (‘‘the ’891 patent’’); 6,703,106
(‘‘the ’106 patent’’); 6,703,101 (‘‘the ’101
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patent’’); 6,767,612 (‘‘the ’612 patent’’);
8,236,434 (‘‘the ’434 patent’’); and
7,355,805 (‘‘the ’805 patent’’). The
Complaint further alleges the existence
of a domestic industry. The
Commission’s Notice of Investigation
named as respondents Sony Corporation
of Tokyo, Japan, Sony Corporation of
America of New York, New York, and
Sony Electronics Inc. of San Diego,
California (collectively, ‘‘Sony’’). The
Office of Unfair Import Investigations
(‘‘OUII’’) was also named as a party to
the investigation. The Commission later
terminated the investigation as to the
’101 patent. Order No. 24 (Jan. 18,
2017); Notice (Feb. 15, 2017).
On September 1, 2017, the ALJ issued
his final ID finding a violation of section
337 with respect to claims 1, 4–9, 11,
and 14 of the ’891 patent and asserted
claims 1, 2, 4, 5, 7, and 8 of the ’612
patent. The ALJ found no violation of
section 337 with respect to asserted
claims 9–11 of the ’612 patent; asserted
claim 2, 5, and 6 of the ’106 patent;
asserted claim 1 of the ’434 patent; and
asserted claims 3 and 10 of the ’805
patent.
In particular, the Final ID finds that
Sony’s accused products infringe claims
1, 4–9, 11, and 14 of the ’891 patent and
claims 1, 2, 4, 5, 7, and 8 of the ’612
patent under 35 U.S.C. 271(a). The Final
ID also finds that Sony’s accused
products do not infringe claims 2, 5, and
6 of the ’106 patent, claim 1 of the ’434
patent, and claims 3 and 10 of the ’805
patent. The Final ID also finds that Sony
has not shown that the asserted claims
of the ’891 patent, the ’612 patent, the
’434 patent, or the ’805 patent are
invalid under 35 U.S.C. 102, 103, or
112. The Final ID further finds, however
that, while, Sony has not shown that the
asserted claims of the ’106 patent are
invalid under 35 U.S.C. 102 or 103,
Sony has shown that the asserted claims
of the ’106 patent are indefinite under
35 U.S.C. 112. The Final ID also finds
that Fujifilm has satisfied the technical
prong of the domestic industry
requirement with respect to the ’891
patent and the ’612 patent, but has not
satisfied the technical prong with
respect to the ’106 patent, the ’434
patent, and the ’805 patent. The Final ID
further finds that Fujifilm has satisfied
the economic prong of the domestic
industry requirement with respect to the
’891, ’612, and ’106 patent pursuant to
19 U.S.C. 1337(a)(3)(A) and (B) for the
asserted LTO–6 DI products. The Final
ID finds that Fujifilm has not satisfied
the economic prong requirement for the
asserted LTO–7 DI products.
The Final ID finds Sony has not
shown that the ’891, ’106, and ’805
patents are essential to the LTO–7
PO 00000
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11245
Standard. The Final ID also finds that
Fujifilm has not breached any
provisions of the Fujifilm AP–75
agreement, in particular sections 8.2 or
11.11. The Final ID further finds that
Sony has not shown that the AP–75
agreement warrants barring Fujifilm’s
claims or terminating the investigation.
The Final ID also finds that patent
misuse does apply to bar Fujifilm’s
claims and that Fujifilm has not waived
its rights to enforce the patents-in-suit.
The Final ID also finds that Sony does
not have an implied license to the
patents-in-suit. The Final ID further
finds that Sony has not shown that
patent exhaustion applies.
On September 12, 2017, the ALJ
issued his recommended determination
on remedy and bonding. As instructed
by the Commission, the ALJ also made
findings concerning the public interest
factors set forth in 19 U.S.C. 1337(d)(1)
and (f)(1). See 81 FR 43243; 19 CFR
210.10(b). The ALJ recommended that
the appropriate remedy is a limited
exclusion order and a cease and desist
order against Sony. The ALJ
recommended that the Commission
require no bond during the period of
Presidential review. The ALJ further
found that public interest factors do not
bar or require tailoring the
recommended exclusion order. The ALJ
also found that even if the asserted
claims are essential, the public interest
does not favor tailoring or curbing and
exclusion order because Fujifilm did not
breach its obligations under the AP–75
Agreement.
On September 18, 2017, Sony and
OUII each filed petitions for review of
various aspects of the Final ID. Also on
September 18, 2017, Fujifilm filed a
contingent petition for review of various
aspects of the Final ID. On September
26, 2017, Fujifilm, Sony, and OUII filed
responses to the various petitions for
review.
On October 6, 2017, Fujifilm filed a
post-RD statement on the public interest
pursuant to Commission Rule
210.50(a)(4). Sony filed its statement on
October 13, 2017. No responses were
filed by the public in response to the
post-RD Commission Notice issued on
September 13, 2017. See Notice of
Request for Statements on the Public
Interest (Sept. 13, 2017); 82 FR 43567–
68 (Sept. 18, 2017).
On December 12, 2017, the
Commission determined to review the
Final ID in part. Notice (Dec. 12, 2017);
82 FR 60038–41 (Dec. 18, 2017).
Specifically, the Commission
determined to review-in-part the Final
ID’s finding of violation with respect to
the ’891 patent. In particular, the
Commission determined to review the
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Final ID’s findings with respect to
anticipation and obviousness. The
Commission further determined to
review the Final ID’s findings
concerning secondary considerations.
The Commission also determined to
review-in-part the Final ID’s finding of
violation with respect to the ’612 patent.
Specifically, the Commission
determined to review the Final ID’s
finding that the asserted claims of the
’612 patent are not obvious.
Accordingly, the Commission also
determined to review the Final ID’s
finding that Fujifilm has satisfied the
technical prong of the domestic industry
requirement with respect to the ’612
patent.
The Commission further determined
to review-in-part the Final ID’s findings
with respect to the ’106 patent.
Specifically, the Commission
determined not to review the Final ID’s
finding that the asserted claims of the
’106 patent are invalid as indefinite.
Accordingly, the Commission
determined to review the Final ID’s
findings with respect to the remaining
issues with respect to the ’106 Patent.
The Commission also determined to
review-in-part the Final ID’s findings
with respect to the ’434 patent.
Specifically the Commission
determined to review the Final ID’s
finding that Sony’s accused LTO–7
products do not infringe claim 1 of the
’434 patent. The Commission also
determined to review the Final ID’s
finding that Fujifilm’s LTO–7 DI
products do not practice claim 1. The
Commission further determined to
review the Final ID’s finding that claim
1 is not obvious.
The Commission further determined
to review-in-part the Final ID’s findings
with respect to the ’805 patent.
Specifically, the Commission
determined to review the Final ID’s
finding that Sony’s accused LTO–7
products do not infringe asserted claims
3 and 10 of the ’805 patent. The
Commission also determined to review
the Final ID’s finding that U.S. patent
No. 6,710,967 (‘‘Hennecken’’) does not
anticipate claims 3 and 10.
The Commission also determined to
review the Final ID’s findings that the
asserted claims of the ’612, ’106, and
’805 patents are not essential to the
LTO–7 Standard.
The Commission further determined
to review the Final ID’s findings
concerning the economic prong of the
domestic industry.
The Commission determined not to
review the remaining issues decided in
the Final ID.
In its notice of review, the
Commission posed several briefing
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questions to the parties, and requested
briefing on remedy, the public interest,
and bonding. 82 FR at 60040. On
January 3, 2018, the parties submitted
their initial responses to the
Commission’s briefing questions. On
January 12, 2018, the parties filed their
reply submissions.
On December 26, 2017, Quantum
Corporation filed a submission in
response to the Commission’s notice.
On January 2, 2018, Hewlett Packard
Enterprise Company filed a submission
in response to the Commission’s notice.
On January 3, 2018, International
Business Machines Corporation filed a
submission in response to the
Commission’s notice.
Having examined the record of this
investigation, including the Final ID, the
petitions for review, the responses
thereto, and the parties’ submissions on
review, the Commission has determined
to find that a violation of section 337
has occurred with respect to the
asserted claims of the ’891 patent. The
Commission has found no violation
with respect to the ’612, ’106, ’434, and
’805 patents.
The Commission affirms with
modification the Final ID’s findings that
the asserted claims of the ’891 patent are
not invalid as anticipated or obvious.
The Commission finds that Sony has
shown by clear and convincing
evidence that the asserted claims of the
’612 patent are prima facie obvious over
the asserted prior art and that there are
no secondary considerations that
overcome this finding. Accordingly, the
Commission finds that Fujifilm has
failed to satisfy the technical prong of
the domestic industry requirement by
failing to show that its domestic
industry products practice a valid claim
of the ’612 patent. The Commission has
further determined not to reach the
Final ID’s findings concerning the
technical prong with respect to the ’612
Patent.
The Commission determined not to
review the Final ID’s finding that the
asserted claims of the ’106 patent are
invalid as indefinite. Accordingly, the
Commission has determined not to
reach the Final ID’s findings on the
remaining issues with respect to the
’106 patent.
With respect to the ’434 patent, the
Commission has determined to construe
the limitations ‘‘a power spectrum
density at a pitch of 10 micrometers
ranges from 800 to 10,000 nm3 on the
magnetic layer surface’’ and ‘‘a power
spectrum density at a pitch of 10
micrometers ranges from 20,000 to
80,000 nm3 on the backcoat layer
surface’’ recited in claim 1 of the ’434
patent to require that the entire surface
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Fmt 4703
Sfmt 4703
of each layer must have power spectrum
density measurements within the
claimed range. The Commission has
further determined to find that Fujifilm
has failed to show by a preponderance
of the evidence that the accused LTO–
7 tapes infringe claim 1 of the ’434
patent. The Commission has also
determined to find that Fujifilm has
failed to satisfy the technical prong of
the domestic industry requirement with
respect to the ’434 patent. The
Commission has determined to affirm
with modification the Final ID’s finding
that Sony has failed to show by clear
and convincing evidence that the
asserted prior art renders obvious
asserted claim 1 of the ’434 patent.
Specifically, the Commission has
determined not to reach the question of
whether the asserted prior art discloses
the limitation ‘‘the magnetic layer has a
center surface average surface roughness
Ra, as measured by an atomic force
microscope, ranging from 0.5 to 2.5
nm.’’
The Commission has determined to
affirm with modification the Final ID’s
finding that Fujifilm has failed to show
by a preponderance of the evidence that
the accused LTO–7 tapes infringe claims
3 and 10 of the ’805 patent. The
Commission has also determined to
affirm with modification the Final ID’s
finding that the asserted prior art does
not anticipate the asserted claims of the
’805 patent. The Commission also
corrects the misstatement in the Final
ID’s ‘‘Conclusions of Fact and Law’’ that
Fujifilm failed to satisfy the technical
prong with respect to the ’805 patent.
See Final ID at 385.
The Commission has determined to
affirm with modification the Final ID’s
finding that the asserted claims of the
’612, ’106, and ’805 patents are not
essential to the LTO–7 Standard. In
particular, with respect to the ’106
patent, the Commission has determined
not to reach the issue of whether the
LTO–7 Standard requires a tape having
a magnetic layer that contains an
abrasive. The Commission has
determined to otherwise adopt the Final
ID’s findings that the LTO–7 Standard
does not require practice of the asserted
claims of the ’612, ’106, and ’805
Patents. The Commission has
determined not to reach any other issues
concerning Sony’s essentiality defenses.
The Commission has determined to
find that Fujifilm’s plant and equipment
and labor and capital investments in its
LTO–6 domestic industry products are
significant under section 337(a)(3)(A)
and (B), thus satisfying the economic
prong of the domestic industry
requirement with respect to the ’891
patent. The Commission has determined
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not to reach the issue of whether
Fujifilm has satisfied the economic
prong with respect to its domestic
investments in its LTO–7 DI products.
Accordingly, the Commission has
determined the appropriate remedy is a
limited exclusion order against Sony’s
products that infringe claims 1, 4–9, 11,
and 14 of the ’891 patent, and a cease
and desist order against each of the
Sony respondents. The Commission has
also determined that the public interest
factors enumerated in subsections
337(d)(l) and (f)(1) (19 U.S.C. 1337(d)(l),
(f)(1)) do not preclude issuance of the
limited exclusion order and cease and
desist order. The Commission has,
however, determined to exempt Sony’s
magnetic data storage tapes and
cartridges containing the same that are
imported or used for the purpose of
supporting Sony’s warranty, service,
repair, and compliance verification
obligations. The Commission has further
determined to set a bond at zero (0)
percent of entered value during the
Presidential review period (19 U.S.C.
1337(j)).
The Commission’s orders and opinion
were delivered to the President and to
the United States Trade Representative
on the day of their issuance.
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.
Issued: March 8, 2018.
Katherine M. Hiner,
Supervisory Attorney.
Retirement Plan for recovery of past
response costs incurred at the Widefield
PCE Superfund Site (‘‘Site’’) in El Paso
County, Colorado. The Site comprises a
former dry cleaners at 3217 South
Academy Boulevard in Colorado
Springs and related contamination of
soil and groundwater, including of the
Widefield Aquifer. The El Paso County
Retirement Plan was the owner of the
3217 South Academy Boulevard
property at the time of disposal of
hazardous substances. The proposed
Consent Decree requires the El Paso
County Retirement Plan to pay $420,000
in reimbursement of past response costs
incurred by the United States with
respect to the Site. The proposed
Consent Decree provides the El Paso
County Retirement Plan with a covenant
not to sue for past response costs
incurred by the United States in
connection with the Site and
contribution protection under CERCLA.
The publication of this notice opens
a period for public comment on the
proposed Consent Decree. Comments
should be addressed to the Assistant
Attorney General, Environment and
Natural Resources Division, and should
refer to United States v. El Paso County
Retirement Plan, D.J. Ref. No. 90–11–3–
11721/1. All comments must be
submitted no later than thirty (30) days
after the publication date of this notice.
Comments may be submitted either by
email or by mail:
To submit
comments:
By email ......
[FR Doc. 2018–05093 Filed 3–13–18; 8:45 am]
Send them to:
pubcomment-ees.enrd@
usdoj.gov.
Assistant Attorney General,
U.S. DOJ—ENRD, P.O. Box
7611, Washington, DC
20044–7611.
By mail ........
BILLING CODE 7020–02–P
DEPARTMENT OF JUSTICE
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Notice of Lodging of Proposed
Consent Decree Under the
Comprehensive Environmental
Response, Compensation and Liability
Act
On March 8, 2018, the Department of
Justice lodged a proposed Consent
Decree with the United States District
Court for the District of Colorado in the
lawsuit entitled United States v. El Paso
County Retirement Plan, Civil Action
No. 1:18–cv–00552.
The proposed Consent Decree
resolves the United States’ claim under
Section 107 of the Comprehensive
Environmental Response, Compensation
and Liability Act (‘‘CERCLA’’), 42 U.S.C.
9607, against the El Paso County
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18:17 Mar 13, 2018
Jkt 244001
During the public comment period,
the proposed Consent Decree may be
examined and downloaded at this
Justice Department website: https://
www.justice.gov/enrd/consent-decrees.
We will provide a paper copy of the
proposed Consent Decree upon written
request and payment of reproduction
costs. Please mail your request and
payment to: Consent Decree Library,
U.S. DOJ—ENRD, P.O. Box 7611,
Washington, DC 20044–7611.
Please enclose a check or money order
for $3.75 (25 cents per page
PO 00000
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11247
reproduction cost) payable to the United
States Treasury.
Robert Brook,
Assistant Section Chief, Environmental
Enforcement Section, Environment and
Natural Resources Division.
[FR Doc. 2018–05182 Filed 3–13–18; 8:45 am]
BILLING CODE 4410–15–P
DEPARTMENT OF JUSTICE
Notice of Lodging of Proposed
Consent Decree Under the
Comprehensive Environmental
Response, Compensation, and Liability
Act
On February 27, 2018, the Department
of Justice lodged a proposed Consent
Decree with the United States District
Court for the Southern District of Ohio
in the lawsuit entitled United States v.
Bridgestone Americas Tire Operations et
al., Case No. 3:18–cv–00054 (S.D. Ohio).
The proposed consent decree resolves
claims of the United States
Environmental Protection Agency
(‘‘EPA’’) against seven defendants—
Bridgestone Americas Tire Operations,
LLC; Cargill, Inc.; Flowserve
Corporation; Kelsey-Hayes Company;
NCR Corporation; Northrop Grumman
Systems Corporation, and Waste
Management of Ohio (collectively
‘‘Defendants)—for response costs and
injunctive relief with respect to the
North Sanitary (aka ‘‘Valleycrest’’)
Landfill Superfund Site in Dayton, Ohio
(‘‘Site’’). A complaint, which was filed
simultaneously with the proposed
consent decree, alleges that the
Defendants are liable under Sections
106, 107(a), and 113(g)(2) of the
Comprehensive Environmental
Response, Compensation, and Liability
Act (‘‘CERCLA’’), 42 U.S.C. 9606,
9607(a), and 9613(g)(2). Under the
proposed consent decree, the
defendants will perform the remedy
selected by EPA to address
contamination at the Site by, among
other things, designing and constructing
a landfill ‘‘cap’’ that will cover
approximately 70 acres of the Site.
Other significant remedial actions will
include the design and construction of
a system to address landfill gas, as well
as a system to prevent leachate from
contaminating groundwater.
Additionally, the Defendants will
reimburse EPA for its future response
costs, but they will not reimburse EPA
for its future oversight costs unless and
until such costs, together with past
response costs and interim costs
incurred before entry of the consent
decree, exceed $8.37 million. The
proposed consent decree will provide
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Agencies
[Federal Register Volume 83, Number 50 (Wednesday, March 14, 2018)]
[Notices]
[Pages 11245-11247]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2018-05093]
[[Page 11245]]
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INTERNATIONAL TRADE COMMISSION
[Investigation No. 337-TA-1012]
Certain Magnetic Data Storage Tapes and Cartridges Containing the
Same; Notice of Commission Final Determination of Violation of Section
337; Termination of Investigation; Issuance of Limited Exclusion Order
and Cease and Desist Orders
AGENCY: U.S. International Trade Commission.
ACTION: Notice.
-----------------------------------------------------------------------
SUMMARY: Notice is hereby given that the U.S. International Trade
Commission has found a violation in the above-captioned investigation.
The Commission has determined to issue a limited exclusion order and
cease and desist orders. The investigation is terminated.
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 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 July 1, 2016, based on a Complaint filed by Fujifilm Corporation of
Tokyo, Japan, and Fujifilm Recording Media U.S.A., Inc. of Bedford,
Massachusetts (collectively, ``Fujifilm''). 81 FR 43243-44 (July 1,
2016). The Complaint alleges violations of section 337 of the Tariff
Act of 1930, as amended, 19 U.S.C. 1337 (``section 337''), in the sale
for importation, importation, and sale within the United States after
importation of certain magnetic data storage tapes and cartridges
containing the same by reason of infringement of certain claims of U.S.
patent Nos. 6,641,891 (``the '891 patent''); 6,703,106 (``the '106
patent''); 6,703,101 (``the '101 patent''); 6,767,612 (``the '612
patent''); 8,236,434 (``the '434 patent''); and 7,355,805 (``the '805
patent''). The Complaint further alleges the existence of a domestic
industry. The Commission's Notice of Investigation named as respondents
Sony Corporation of Tokyo, Japan, Sony Corporation of America of New
York, New York, and Sony Electronics Inc. of San Diego, California
(collectively, ``Sony''). The Office of Unfair Import Investigations
(``OUII'') was also named as a party to the investigation. The
Commission later terminated the investigation as to the '101 patent.
Order No. 24 (Jan. 18, 2017); Notice (Feb. 15, 2017).
On September 1, 2017, the ALJ issued his final ID finding a
violation of section 337 with respect to claims 1, 4-9, 11, and 14 of
the '891 patent and asserted claims 1, 2, 4, 5, 7, and 8 of the '612
patent. The ALJ found no violation of section 337 with respect to
asserted claims 9-11 of the '612 patent; asserted claim 2, 5, and 6 of
the '106 patent; asserted claim 1 of the '434 patent; and asserted
claims 3 and 10 of the '805 patent.
In particular, the Final ID finds that Sony's accused products
infringe claims 1, 4-9, 11, and 14 of the '891 patent and claims 1, 2,
4, 5, 7, and 8 of the '612 patent under 35 U.S.C. 271(a). The Final ID
also finds that Sony's accused products do not infringe claims 2, 5,
and 6 of the '106 patent, claim 1 of the '434 patent, and claims 3 and
10 of the '805 patent. The Final ID also finds that Sony has not shown
that the asserted claims of the '891 patent, the '612 patent, the '434
patent, or the '805 patent are invalid under 35 U.S.C. 102, 103, or
112. The Final ID further finds, however that, while, Sony has not
shown that the asserted claims of the '106 patent are invalid under 35
U.S.C. 102 or 103, Sony has shown that the asserted claims of the '106
patent are indefinite under 35 U.S.C. 112. The Final ID also finds that
Fujifilm has satisfied the technical prong of the domestic industry
requirement with respect to the '891 patent and the '612 patent, but
has not satisfied the technical prong with respect to the '106 patent,
the '434 patent, and the '805 patent. The Final ID further finds that
Fujifilm has satisfied the economic prong of the domestic industry
requirement with respect to the '891, '612, and '106 patent pursuant to
19 U.S.C. 1337(a)(3)(A) and (B) for the asserted LTO-6 DI products. The
Final ID finds that Fujifilm has not satisfied the economic prong
requirement for the asserted LTO-7 DI products.
The Final ID finds Sony has not shown that the '891, '106, and '805
patents are essential to the LTO-7 Standard. The Final ID also finds
that Fujifilm has not breached any provisions of the Fujifilm AP-75
agreement, in particular sections 8.2 or 11.11. The Final ID further
finds that Sony has not shown that the AP-75 agreement warrants barring
Fujifilm's claims or terminating the investigation. The Final ID also
finds that patent misuse does apply to bar Fujifilm's claims and that
Fujifilm has not waived its rights to enforce the patents-in-suit. The
Final ID also finds that Sony does not have an implied license to the
patents-in-suit. The Final ID further finds that Sony has not shown
that patent exhaustion applies.
On September 12, 2017, the ALJ issued his recommended determination
on remedy and bonding. As instructed by the Commission, the ALJ also
made findings concerning the public interest factors set forth in 19
U.S.C. 1337(d)(1) and (f)(1). See 81 FR 43243; 19 CFR 210.10(b). The
ALJ recommended that the appropriate remedy is a limited exclusion
order and a cease and desist order against Sony. The ALJ recommended
that the Commission require no bond during the period of Presidential
review. The ALJ further found that public interest factors do not bar
or require tailoring the recommended exclusion order. The ALJ also
found that even if the asserted claims are essential, the public
interest does not favor tailoring or curbing and exclusion order
because Fujifilm did not breach its obligations under the AP-75
Agreement.
On September 18, 2017, Sony and OUII each filed petitions for
review of various aspects of the Final ID. Also on September 18, 2017,
Fujifilm filed a contingent petition for review of various aspects of
the Final ID. On September 26, 2017, Fujifilm, Sony, and OUII filed
responses to the various petitions for review.
On October 6, 2017, Fujifilm filed a post-RD statement on the
public interest pursuant to Commission Rule 210.50(a)(4). Sony filed
its statement on October 13, 2017. No responses were filed by the
public in response to the post-RD Commission Notice issued on September
13, 2017. See Notice of Request for Statements on the Public Interest
(Sept. 13, 2017); 82 FR 43567-68 (Sept. 18, 2017).
On December 12, 2017, the Commission determined to review the Final
ID in part. Notice (Dec. 12, 2017); 82 FR 60038-41 (Dec. 18, 2017).
Specifically, the Commission determined to review-in-part the Final
ID's finding of violation with respect to the '891 patent. In
particular, the Commission determined to review the
[[Page 11246]]
Final ID's findings with respect to anticipation and obviousness. The
Commission further determined to review the Final ID's findings
concerning secondary considerations.
The Commission also determined to review-in-part the Final ID's
finding of violation with respect to the '612 patent. Specifically, the
Commission determined to review the Final ID's finding that the
asserted claims of the '612 patent are not obvious. Accordingly, the
Commission also determined to review the Final ID's finding that
Fujifilm has satisfied the technical prong of the domestic industry
requirement with respect to the '612 patent.
The Commission further determined to review-in-part the Final ID's
findings with respect to the '106 patent. Specifically, the Commission
determined not to review the Final ID's finding that the asserted
claims of the '106 patent are invalid as indefinite. Accordingly, the
Commission determined to review the Final ID's findings with respect to
the remaining issues with respect to the '106 Patent.
The Commission also determined to review-in-part the Final ID's
findings with respect to the '434 patent. Specifically the Commission
determined to review the Final ID's finding that Sony's accused LTO-7
products do not infringe claim 1 of the '434 patent. The Commission
also determined to review the Final ID's finding that Fujifilm's LTO-7
DI products do not practice claim 1. The Commission further determined
to review the Final ID's finding that claim 1 is not obvious.
The Commission further determined to review-in-part the Final ID's
findings with respect to the '805 patent. Specifically, the Commission
determined to review the Final ID's finding that Sony's accused LTO-7
products do not infringe asserted claims 3 and 10 of the '805 patent.
The Commission also determined to review the Final ID's finding that
U.S. patent No. 6,710,967 (``Hennecken'') does not anticipate claims 3
and 10.
The Commission also determined to review the Final ID's findings
that the asserted claims of the '612, '106, and '805 patents are not
essential to the LTO-7 Standard.
The Commission further determined to review the Final ID's findings
concerning the economic prong of the domestic industry.
The Commission determined not to review the remaining issues
decided in the Final ID.
In its notice of review, the Commission posed several briefing
questions to the parties, and requested briefing on remedy, the public
interest, and bonding. 82 FR at 60040. On January 3, 2018, the parties
submitted their initial responses to the Commission's briefing
questions. On January 12, 2018, the parties filed their reply
submissions.
On December 26, 2017, Quantum Corporation filed a submission in
response to the Commission's notice. On January 2, 2018, Hewlett
Packard Enterprise Company filed a submission in response to the
Commission's notice. On January 3, 2018, International Business
Machines Corporation filed a submission in response to the Commission's
notice.
Having examined the record of this investigation, including the
Final ID, the petitions for review, the responses thereto, and the
parties' submissions on review, the Commission has determined to find
that a violation of section 337 has occurred with respect to the
asserted claims of the '891 patent. The Commission has found no
violation with respect to the '612, '106, '434, and '805 patents.
The Commission affirms with modification the Final ID's findings
that the asserted claims of the '891 patent are not invalid as
anticipated or obvious.
The Commission finds that Sony has shown by clear and convincing
evidence that the asserted claims of the '612 patent are prima facie
obvious over the asserted prior art and that there are no secondary
considerations that overcome this finding. Accordingly, the Commission
finds that Fujifilm has failed to satisfy the technical prong of the
domestic industry requirement by failing to show that its domestic
industry products practice a valid claim of the '612 patent. The
Commission has further determined not to reach the Final ID's findings
concerning the technical prong with respect to the '612 Patent.
The Commission determined not to review the Final ID's finding that
the asserted claims of the '106 patent are invalid as indefinite.
Accordingly, the Commission has determined not to reach the Final ID's
findings on the remaining issues with respect to the '106 patent.
With respect to the '434 patent, the Commission has determined to
construe the limitations ``a power spectrum density at a pitch of 10
micrometers ranges from 800 to 10,000 nm\3\ on the magnetic layer
surface'' and ``a power spectrum density at a pitch of 10 micrometers
ranges from 20,000 to 80,000 nm\3\ on the backcoat layer surface''
recited in claim 1 of the '434 patent to require that the entire
surface of each layer must have power spectrum density measurements
within the claimed range. The Commission has further determined to find
that Fujifilm has failed to show by a preponderance of the evidence
that the accused LTO-7 tapes infringe claim 1 of the '434 patent. The
Commission has also determined to find that Fujifilm has failed to
satisfy the technical prong of the domestic industry requirement with
respect to the '434 patent. The Commission has determined to affirm
with modification the Final ID's finding that Sony has failed to show
by clear and convincing evidence that the asserted prior art renders
obvious asserted claim 1 of the '434 patent. Specifically, the
Commission has determined not to reach the question of whether the
asserted prior art discloses the limitation ``the magnetic layer has a
center surface average surface roughness Ra, as measured by an atomic
force microscope, ranging from 0.5 to 2.5 nm.''
The Commission has determined to affirm with modification the Final
ID's finding that Fujifilm has failed to show by a preponderance of the
evidence that the accused LTO-7 tapes infringe claims 3 and 10 of the
'805 patent. The Commission has also determined to affirm with
modification the Final ID's finding that the asserted prior art does
not anticipate the asserted claims of the '805 patent. The Commission
also corrects the misstatement in the Final ID's ``Conclusions of Fact
and Law'' that Fujifilm failed to satisfy the technical prong with
respect to the '805 patent. See Final ID at 385.
The Commission has determined to affirm with modification the Final
ID's finding that the asserted claims of the '612, '106, and '805
patents are not essential to the LTO-7 Standard. In particular, with
respect to the '106 patent, the Commission has determined not to reach
the issue of whether the LTO-7 Standard requires a tape having a
magnetic layer that contains an abrasive. The Commission has determined
to otherwise adopt the Final ID's findings that the LTO-7 Standard does
not require practice of the asserted claims of the '612, '106, and '805
Patents. The Commission has determined not to reach any other issues
concerning Sony's essentiality defenses.
The Commission has determined to find that Fujifilm's plant and
equipment and labor and capital investments in its LTO-6 domestic
industry products are significant under section 337(a)(3)(A) and (B),
thus satisfying the economic prong of the domestic industry requirement
with respect to the '891 patent. The Commission has determined
[[Page 11247]]
not to reach the issue of whether Fujifilm has satisfied the economic
prong with respect to its domestic investments in its LTO-7 DI
products.
Accordingly, the Commission has determined the appropriate remedy
is a limited exclusion order against Sony's products that infringe
claims 1, 4-9, 11, and 14 of the '891 patent, and a cease and desist
order against each of the Sony respondents. The Commission has also
determined that the public interest factors enumerated in subsections
337(d)(l) and (f)(1) (19 U.S.C. 1337(d)(l), (f)(1)) do not preclude
issuance of the limited exclusion order and cease and desist order. The
Commission has, however, determined to exempt Sony's magnetic data
storage tapes and cartridges containing the same that are imported or
used for the purpose of supporting Sony's warranty, service, repair,
and compliance verification obligations. The Commission has further
determined to set a bond at zero (0) percent of entered value during
the Presidential review period (19 U.S.C. 1337(j)).
The Commission's orders and opinion were delivered to the President
and to the United States Trade Representative on the day of their
issuance.
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.
Issued: March 8, 2018.
Katherine M. Hiner,
Supervisory Attorney.
[FR Doc. 2018-05093 Filed 3-13-18; 8:45 am]
BILLING CODE 7020-02-P