Certain Non-Volatile Memory Devices and Products Containing Same Notice of the Commission's Final Determination Finding a Violation of Section 337; Issuance of a Limited Exclusion Order and Cease and Desist Orders; Termination of the Investigation, 51980-51982 [2018-22325]
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Federal Register / Vol. 83, No. 199 / Monday, October 15, 2018 / Notices
needed to assist the regulatory authority
to determine the eligibility of an
applicant to conduct surface coal
mining operations on Federal lands.
DATES: Interested persons are invited to
submit comments on or before
November 14, 2018.
ADDRESSES: Send written comments on
this information collection request (ICR)
to the Office of Management and
Budget’s Desk Officer for the
Department of the Interior by email at
OIRA_Submission@omb.eop.gov; or via
facsimile to (202) 395–5806. Please
provide a copy of your comments to
John Trelease, Office of Surface Mining
Reclamation and Enforcement, 1849 C
Street NW, Mail Stop 4559, Washington,
DC 20240; or by email to jtrelease@
osmre.gov. Please reference OMB
Control Number 1029–0027 in the
subject line of your comments.
FOR FURTHER INFORMATION CONTACT: To
request additional information about
this ICR, contact John Trelease by email
at jtrelease@osmre.gov, or by telephone
at (202) 208–2783. You may also view
the ICR at https://www.reginfo.gov/
public/do/PRAMain.
SUPPLEMENTARY INFORMATION: In
accordance with the Paperwork
Reduction Act of 1995, we provide the
general public and other Federal
agencies with an opportunity to
comment on new, proposed, revised,
and continuing collections of
information. This helps us assess the
impact of our information collection
requirements and minimize the public’s
reporting burden. It also helps the
public understand our information
collection requirements and provides
the requested data in the desired format.
A Federal Register notice with a 60day public comment period soliciting
comments on this collection of
information was published on July 6,
2018 (83 FR 31567). No comments were
received.
We are again soliciting comments on
the proposed ICR that is described
below. We are especially interested in
public comment addressing the
following issues: (1) Is the collection
necessary to the proper functions of
OSMRE; (2) is the estimate of burden
accurate; (3) how might OSMRE
enhance the quality, utility, and clarity
of the information to be collected; and
(4) how might OSMRE minimize the
burden of this collection on the
respondents, including through the use
of information technology.
Comments that you submit in
response to this notice are a matter of
public record. Before including your
address, phone number, email address,
or other personal identifying
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information in your comment, you
should be aware that your entire
comment—including your personal
identifying information—may be made
publicly available at any time. While
you can ask us in your comment to
withhold your personal identifying
information from public review, we
cannot guarantee that we will be able to
do so.
Title of Collection: 30 CFR part 740—
General Requirements for Surface Coal
Mining and Reclamation Operations on
Federal Lands.
OMB Control Number: 1029–0027.
Abstract: Section 523 of the Surface
Mining Control and Reclamation Act of
1977 requires that a Federal lands
program be established to govern
surface coal mining and reclamation
operations on Federal lands. The
information is needed to assist the
regulatory authority to determine the
eligibility of an applicant to conduct
coal mining on Federal lands.
Form Number: None.
Type of Review: Extension of a
currently approved collection.
Respondents/Affected Public:
Applicants for surface coal mine
permits on Federal lands, and State
Regulatory Authorities.
Total Estimated Number of Annual
Respondents: 5 applicants and 5 States.
Total Estimated Number of Annual
Responses: 6 applicants and 6 States.
Estimated Completion Time per
Response: Varies from 1 to 244 hours for
applicants depending on the activity,
and 285 hours for each State regulatory
authority.
Total Estimated Number of Annual
Burden Hours: 1,225 hours for
applicants and 1,425 hours for States.
Respondent’s Obligation: Required to
obtain or retain a benefit.
Frequency of Collection: Once.
Total Estimated Annual Nonhour
Burden Cost: $0.
An agency may not conduct or
sponsor and a person is not required to
respond to a collection of information
unless it displays a currently valid OMB
control number.
Authority: The authorities for this
action are the Surface Mining Control
and Reclamation Act of 1977, as
amended (30 U.S.C. 1201 et seq.), and
the Paperwork Reduction Act of 1995
(44 U.S.C. 3501 et seq.).
John A. Trelease,
Acting Chief, Division of Regulatory Support.
[FR Doc. 2018–22332 Filed 10–12–18; 8:45 am]
BILLING CODE 4310–05–P
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INTERNATIONAL TRADE
COMMISSION
[Investigation No. 337–TA–1046]
Certain Non-Volatile Memory Devices
and Products Containing Same Notice
of the Commission’s Final
Determination Finding a Violation of
Section 337; Issuance of a Limited
Exclusion Order and Cease and Desist
Orders; Termination of the
Investigation
U.S. International Trade
Commission.
ACTION: Notice.
AGENCY:
Notice is hereby given that
the U.S. International Trade
Commission has found a violation of
section 337 in this investigation and has
issued a limited exclusion order
prohibiting importation of infringing
non-volatile memory devices and
products containing the same and
issued cease and desist orders directed
to the domestic respondents Toshiba
America, Inc. and its subsidiaries,
Toshiba America Electronic
Components, Inc. and Toshiba America
Information Systems, Inc. The
investigation is terminated.
FOR FURTHER INFORMATION CONTACT:
Panyin A. Hughes, 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 (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 Inv. No. 337–
TA–1046 on April 12, 2017, based on a
complaint filed by Macronix
International Co., Ltd. of Hsin-chu,
Taiwan and Macronix America, Inc. of
Milpitas, California (collectively,
‘‘Macronix’’). 82 FR 17687–88 (Apr. 12,
2017). The complaint alleges violations
of section 337 of the Tariff Act of 1930,
as amended (19 U.S.C. 1337), in the
SUMMARY:
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importation into the United States, the
sale for importation, and the sale within
the United States after importation of
certain non-volatile memory devices
and products containing the same that
infringe one or more of claims 1–8 of
U.S. Patent No. 6,552,360 (‘‘the ’360
patent’’); claims 1–12 and 16 of U.S.
Patent No. 6,788,602 (‘‘the ’602 patent’’);
and claims 1–7, 11–16, and 18 of U.S.
Patent No. 8,035,417 (‘‘the ’417 patent’’).
The notice of investigation named the
following respondents: Toshiba
Corporation of Tokyo, Japan; Toshiba
America, Inc. of New York, New York;
Toshiba America Electronic
Components, Inc. of Irvine, California;
Toshiba America Information Systems,
Inc. of Irvine, California; and Toshiba
Information Equipment (Philippines),
Inc. of Binan, Philippines (collectively,
‘‘Toshiba’’). The Office of Unfair Import
Investigations is a party to the
investigation.
On June 16, 2017, the Commission
determined not to review the ALJ’s
order (Order No. 11) granting an
unopposed motion to amend the Notice
of investigation to add Toshiba Memory
Corporation of Tokyo, Japan as a
respondent. See Order No. 11, Comm’n
Notice of Non-Review (June 16, 2017).
On October 17, 2017, the Commission
determined not to review the ALJ’s
order (Order No. 20) granting an
unopposed motion to terminate the
investigation as to claims 11, 12, and 16
of the ’602 patent. See Order No. 20,
Comm’n Notice of Non-Review (Oct. 17,
2017).
On October 4, 2017, the ALJ held a
Markman hearing to construe certain
disputed claim terms. On December 5,
2017, the ALJ issued Order No. 23
(Markman Order), setting forth her
construction of the disputed claim
terms.
On January 18, 2018, the Commission
determined not to review the ALJ’s
order (Order No. 24) granting an
unopposed motion to terminate the
investigation as to claims 1–7 and 18 of
the ’417 patent. Order No. 24; Comm’n
Notice of Non-Review (Jan. 18, 2018).
The ALJ held an evidentiary hearing
from February 8, 2018, through
February 14, 2018, and thereafter
received post-hearing briefs.
On April 27, 2018, the ALJ issued her
final ID, finding no violation of section
337 by Toshiba in connection with the
remaining claims, i.e., claims 1–8 of the
’360 patent; claims 1–10 of the ’602
patent; and claims 11–16 of the ’417
patent. Specifically, the ALJ found that
the Commission has subject matter
jurisdiction, in rem jurisdiction over the
accused products, and in personam
jurisdiction over Toshiba. ID at 15–17.
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The ALJ also found that Macronix
satisfied the importation requirement of
section 337 (19 U.S.C. 1337(a)(1)(B)). Id.
The ALJ, however, found that the
accused products do not infringe the
asserted claims of the ’360 patent and
’417 patent. See ID at 19–65, 118–130.
The ALJ also found that Toshiba failed
to establish that the asserted claims of
the ’417 patent are invalid for
obviousness. ID at 132–141. Toshiba did
not challenge the validity of the ’360
patent. ID at 70. With respect to the ’602
patent, the ALJ found that certain
accused products infringe asserted
claims 1–10, but that claims 1–5 and 7–
10 are invalid for obviousness. ID at 71–
88, 91–117. Finally, the ALJ found that
Macronix failed to establish the
existence of a domestic industry that
practices the asserted patents under 19
U.S.C. 1337(a)(2) and also failed to show
a domestic industry in the process of
being established. See ID at 257–261,
288–294.
On May 10, 2018, the ALJ issued her
recommended determination on remedy
and bonding. Recommended
Determination on Remedy and Bonding
(‘‘RD’’). The ALJ recommends that in the
event the Commission finds a violation
of section 337, the Commission should
issue a limited exclusion order
prohibiting the importation of Toshiba’s
accused products that infringe the
asserted claims of the asserted patents.
RD at 1–5. The ALJ also recommends
issuance of cease and desist orders
against the domestic Toshiba
respondents based on the presence of
commercially significant inventory in
the United States. RD at 5. With respect
to the amount of bond that should be
posted during the period of Presidential
review, the ALJ recommends that the
Commission set a bond in the amount
of 100 percent of entered value for
Toshiba flash memory devices and solid
state drives, and a bond in the amount
of six percent of entered value for
Toshiba PCs imported during the period
of Presidential review. RD at 6–9.
On May 14, 2018, Macronix filed a
petition for review challenging the ID’s
finding of no violation of section 337.
The IA also filed a petition for review
that day, challenging the ID’s finding
that Macronix failed to establish a
domestic industry in the process of
being established and certain findings as
to the ’602 patent. Also on May 14,
2018, Toshiba filed a contingent petition
for review of the ID ‘‘in the event that
the Commission decides to review the
ID.’’ On May 22, 2018, Macronix and
Toshiba filed their respective responses
to the petitions for review. On May 23,
2018, the IA filed a response to the
private parties’ petitions for review. The
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51981
Chairman granted the IA’s motion for
leave to file the response one day late.
On June 28, 2018, the Commission
determined to review the final ID in part
and requested the parties to brief certain
issues. See 83 FR 31416–18 (July 5,
2018). Specifically, the Commission
determined to review the following: (1)
The finding that Macronix failed to
satisfy the domestic industry
requirement; and (2) the findings of
infringement and invalidity as to the
’602 patent. On July 12, 2018, the
parties filed submissions to the
Commission’s questions and also
briefed the issues of remedy, the public
interest and bonding. On July 19, 2018,
the parties filed responses to the initial
submissions.
Having examined the record of this
investigation, including the final ID, and
the parties’ submissions, the
Commission has determined to (1)
reverse the ALJ’s finding that the
accused products do not directly
infringe the asserted claims of the ’602
patent; (2) affirm the ALJ’s indirect
infringement and invalidity findings as
to the ’602 patent; and (3) reverse the
ALJ’s finding that Macronix failed to
establish a domestic industry in the
process of being established. The
Commission adopts the ID’s findings to
the extent they are not inconsistent with
the Commission opinion issued
herewith. The Commission action
results in a violation of section 337 as
to claim 6 of the ’602 patent.
Having found a violation of section
337 in this investigation, the
Commission has determined that the
appropriate form of relief is: (1) A
limited exclusion order prohibiting the
unlicensed entry of non-volatile
memory devices and products
containing the same that infringe claim
6 of the ’602 patent that are
manufactured by, or on behalf of, or are
imported by or on behalf of
Respondents or any of their affiliated
companies, parents, subsidiaries, agents,
or other related business entities, or
their successors or assigns, are excluded
from entry for consumption into the
United States, entry for consumption
from a foreign-trade zone, or withdrawal
from a warehouse for consumption, for
the remaining term of the ’602 patent
except under license of the patent
owner or as provided by law; and (2)
cease and desist orders prohibiting
domestic respondents Toshiba America,
Inc. and its subsidiaries, Toshiba
America Electronic Components, Inc.
and Toshiba America Information
Systems, Inc. from conducting any of
the following activities in the United
States: Importing, selling, marketing,
advertising, distributing, transferring
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Federal Register / Vol. 83, No. 199 / Monday, October 15, 2018 / Notices
(except for exportation), and soliciting
U.S. agents or distributors for, nonvolatile memory device and products
containing same covered by claim 6 of
the ’602 patent.
The Commission has also determined
that the public interest factors
enumerated in section 337(d) and (f) (19
U.S.C. 1337(d) and (f)) do not preclude
issuance of the limited exclusion order
or cease and desist orders. Finally, the
Commission has determined that a bond
in the amount of 100 percent of entered
value for Toshiba flash memory devices,
solid-state drives, USB flash drives, and
microcontroller units; and a bond in the
amount of six percent of entered value
for Toshiba personal computers, multifunction printers, and air conditioners is
required to permit temporary
importation during the period of
Presidential review (19 U.S.C. 1337(j))
of products that are subject to the
remedial orders. 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: October 9, 2018
Katherine Hiner,
Supervisory Attorney.
[FR Doc. 2018–22325 Filed 10–12–18; 8:45 am]
BILLING CODE 7020–02–P
DEPARTMENT OF JUSTICE
Drug Enforcement Administration
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Phillip O. Rawlings, Jr., M.D.; Decision
and Order
On March 8, 2018, the Acting
Assistant Administrator, Diversion
Control Division, Drug Enforcement
Administration (DEA), issued an Order
to Show Cause to Phillip O. Rawlings,
Jr., M.D. (Registrant), of Mobile,
Alabama. The Show Cause Order
proposed the revocation of Registrant’s
DEA Certificate of Registration No.
FR0024997 on the ground that he has
‘‘no state authority to handle controlled
substances.’’ Order to Show Cause,
Government Exhibit (GX) 8, at 1 (citing
21 U.S.C. 824(a)(3)). For the same
reason, the Order also proposed the
denial of any of Registrant’s
‘‘applications for renewal or
modification of such registration and
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21:34 Oct 12, 2018
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any applications for any other DEA
registrations.’’ Id.
Regarding the Agency’s jurisdiction,
the Show Cause Order alleged that
Registrant holds DEA Certificate of
Registration No. FR0024997, pursuant to
which he is authorized to dispense
controlled substances as a practitioner
in schedules II through V at the
registered address of Providence Family
Physicians, 8833 Cottage Hill Road,
Mobile, Alabama. Id. The Order also
alleged that this registration was set to
expire by its terms on April 30, 2018. Id.
The substantive ground for the
proceeding set forth in the Show Cause
Order is that Registrant is ‘‘currently
without authority to practice medicine
or handle controlled substances in the
State of Alabama, the state in which [he
is] registered with the DEA’’ because
Registrant’s Alabama Medical License
and Alabama Controlled Substances
Certificate have been in ‘‘Inactive-By
Request’’ status since December 31,
2016 . Id. As a consequence, the Order
alleged that ‘‘DEA must revoke your
DEA registration.’’ Id. at 2.
The Show Cause Order notified
Registrant of his right to request a
hearing on the allegations or to submit
a written statement in lieu of a hearing,
the procedures for electing each option,
and the consequences for failing to elect
either option. Id. (citing 21 CFR
1301.43). The Order also notified
Registrant of the opportunity to submit
a corrective action plan. Id. at 2–3
(citing 21 U.S.C. 824(c)(2)(C)).
On April 26, 2018, my office received
the Government’s Second Request for
Final Agency Action (SRFAA) 1
describing Diversion Investigators’
attempts to serve the Show Cause Order
and seeking a final order revoking
Registrant’s registration. SRFAA, at 2, 6.
1 On January 10, 2018, the Government submitted
a Request for Final Agency Action seeking to revoke
Registrant’s same DEA registration based on an
October 31, 2017 Order to Show Cause. GX 6. In
that Request, the Government represented that
Registrant did not request a hearing and ‘‘ha[d] not
otherwise corresponded or communicated with
DEA regarding the Order served on him . . . within
30 days of receipt of the Order.’’ Id. at 1–2.
However, on February 6, 2018, the then-Acting
Administrator issued an Order noting that,
‘‘although the Government is clearly in possession
of information suggesting that Registrant now lives
in California, it has offered no explanation for why
it did not attempt to obtain Registrant’s address
from the Board of Medical Examiners and serve
Registrant at that address.’’ GX 7, at 1. As a result,
the then-Administrator denied the Government’s
Request for Final Agency Action without prejudice.
Id. at 2. See also SRFAA, at 1–2. By that time, the
December 26, 2017 hearing date listed in the 2017
Show Cause Order had passed. SRFAA, at 2 n.1. As
a result, the Agency issued the pending Show Cause
Order on March 8, 2018, with a new hearing date
of April 24, 2018. Id.; GX 8, at 1. It is this new Show
Cause Order for which the Government now seeks
final agency action.
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The Government also submitted a
Certification of Registration History,
which was sworn to on December 28,
2017 by the Associate Chief of the
Registration and Program Support
Section. GX 1. In that Certification, she
stated that DEA Registration No.
FR0024997 ‘‘expires on April 30, 2018.’’
Id. at 1. The Associate Chief further
stated that ‘‘Phillip O. Rawlings, Jr.,
M.D., has no other pending or valid
DEA registration(s) in Alabama.’’ Id.
According to the Agency’s current
registration records for Registrant, of
which I take official notice,2 DEA
Registration No. FR0024997 expired on
April 30, 2018, and he has not
submitted an application to renew his
registration or for any other registration
in the State of Alabama. Thus, I find
that Registrant’s registration expired on
April 30, 2018, and that there is no
application upon which to act.3
DEA has long held that ‘‘ ‘if a
registrant has not submitted a timely
renewal application prior to the
expiration date, then the registration
expires and there is nothing to revoke.’ ’’
Donald Brooks Reece II, M.D., 77 FR
35054, 35055 (2012) (quoting Ronald J.
Riegel, 63 FR 67312, 67133 (1998)); see
also Greg N. Rampey, D.O., 83 FR
2 Under the Administrative Procedure Act (APA),
an agency ‘‘may take official notice of facts at any
stage in a proceeding—even in the final decision.’’
U.S. Dept. of Justice, Attorney General’s Manual on
the Administrative Procedure Act 80 (1947) (Wm.
W. Gaunt & Sons, Inc., Reprint 1979). In accordance
with the APA and DEA’s regulations, Registrant is
‘‘entitled on timely request to an opportunity to
show to the contrary.’’ 5 U.S.C. 556(e); see also 21
CFR 1316.59(e). To allow Registrant the opportunity
to refute the facts of which I take official notice,
Registrant may file a motion for reconsideration
within 15 calendar days of service of this order
which shall commence on the date this order is
mailed.
3 As already noted, my Office received the
Government’s Second Request for Final Agency
Action on April 26, 2018. This filing arrived in my
office too late for me to issue a final decision and
order before the registration would expire on April
30, 2018. DEA regulation 21 CFR 1316.67 requires
that I issue a final order that takes effect not less
than 30 days from the date of publication in the
Federal Register unless the public interest
necessitates an earlier effective date. The record
before me fails to include facts supporting a finding
that ‘‘the public interest in the matter necessitates
an earlier effective date.’’ 21 CFR 1316.67. Thus,
even if I had submitted a final order in this case
to the Federal Register on the same day (April 26,
2018) that my office received the SRFAA to revoke
Registrant’s registration, I could not have issued an
order that would have taken effect by April 30, 2018
because the Federal Register would not have been
able to publish it 30 days before the registration’s
April 30, 2018 expiration. And as the Agency has
previously noted, there is no point in issuing a
ruling on a Show Cause Order where, as here, that
ruling would constitute an advisory opinion subject
to vacation on judicial review. See, e.g., Josip Pasic,
M.D., 82 FR 24146, 24147 (2017) (‘‘As the requested
factual findings and legal conclusions would be
subject to vacation on judicial review, there is no
point in making them.’’).
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]]>Agencies
[Federal Register Volume 83, Number 199 (Monday, October 15, 2018)]
[Notices]
[Pages 51980-51982]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2018-22325]
=======================================================================
-----------------------------------------------------------------------
INTERNATIONAL TRADE COMMISSION
[Investigation No. 337-TA-1046]
Certain Non-Volatile Memory Devices and Products Containing Same
Notice of the Commission's Final Determination Finding a Violation of
Section 337; Issuance of a Limited Exclusion Order and Cease and Desist
Orders; Termination of the Investigation
AGENCY: U.S. International Trade Commission.
ACTION: Notice.
-----------------------------------------------------------------------
SUMMARY: Notice is hereby given that the U.S. International Trade
Commission has found a violation of section 337 in this investigation
and has issued a limited exclusion order prohibiting importation of
infringing non-volatile memory devices and products containing the same
and issued cease and desist orders directed to the domestic respondents
Toshiba America, Inc. and its subsidiaries, Toshiba America Electronic
Components, Inc. and Toshiba America Information Systems, Inc. The
investigation is terminated.
FOR FURTHER INFORMATION CONTACT: Panyin A. Hughes, 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 (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 Inv. No. 337-TA-
1046 on April 12, 2017, based on a complaint filed by Macronix
International Co., Ltd. of Hsin-chu, Taiwan and Macronix America, Inc.
of Milpitas, California (collectively, ``Macronix''). 82 FR 17687-88
(Apr. 12, 2017). The complaint alleges violations of section 337 of the
Tariff Act of 1930, as amended (19 U.S.C. 1337), in the
[[Page 51981]]
importation into the United States, the sale for importation, and the
sale within the United States after importation of certain non-volatile
memory devices and products containing the same that infringe one or
more of claims 1-8 of U.S. Patent No. 6,552,360 (``the '360 patent'');
claims 1-12 and 16 of U.S. Patent No. 6,788,602 (``the '602 patent'');
and claims 1-7, 11-16, and 18 of U.S. Patent No. 8,035,417 (``the '417
patent''). The notice of investigation named the following respondents:
Toshiba Corporation of Tokyo, Japan; Toshiba America, Inc. of New York,
New York; Toshiba America Electronic Components, Inc. of Irvine,
California; Toshiba America Information Systems, Inc. of Irvine,
California; and Toshiba Information Equipment (Philippines), Inc. of
Binan, Philippines (collectively, ``Toshiba''). The Office of Unfair
Import Investigations is a party to the investigation.
On June 16, 2017, the Commission determined not to review the ALJ's
order (Order No. 11) granting an unopposed motion to amend the Notice
of investigation to add Toshiba Memory Corporation of Tokyo, Japan as a
respondent. See Order No. 11, Comm'n Notice of Non-Review (June 16,
2017).
On October 17, 2017, the Commission determined not to review the
ALJ's order (Order No. 20) granting an unopposed motion to terminate
the investigation as to claims 11, 12, and 16 of the '602 patent. See
Order No. 20, Comm'n Notice of Non-Review (Oct. 17, 2017).
On October 4, 2017, the ALJ held a Markman hearing to construe
certain disputed claim terms. On December 5, 2017, the ALJ issued Order
No. 23 (Markman Order), setting forth her construction of the disputed
claim terms.
On January 18, 2018, the Commission determined not to review the
ALJ's order (Order No. 24) granting an unopposed motion to terminate
the investigation as to claims 1-7 and 18 of the '417 patent. Order No.
24; Comm'n Notice of Non-Review (Jan. 18, 2018).
The ALJ held an evidentiary hearing from February 8, 2018, through
February 14, 2018, and thereafter received post-hearing briefs.
On April 27, 2018, the ALJ issued her final ID, finding no
violation of section 337 by Toshiba in connection with the remaining
claims, i.e., claims 1-8 of the '360 patent; claims 1-10 of the '602
patent; and claims 11-16 of the '417 patent. Specifically, the ALJ
found that the Commission has subject matter jurisdiction, in rem
jurisdiction over the accused products, and in personam jurisdiction
over Toshiba. ID at 15-17. The ALJ also found that Macronix satisfied
the importation requirement of section 337 (19 U.S.C. 1337(a)(1)(B)).
Id. The ALJ, however, found that the accused products do not infringe
the asserted claims of the '360 patent and '417 patent. See ID at 19-
65, 118-130. The ALJ also found that Toshiba failed to establish that
the asserted claims of the '417 patent are invalid for obviousness. ID
at 132-141. Toshiba did not challenge the validity of the '360 patent.
ID at 70. With respect to the '602 patent, the ALJ found that certain
accused products infringe asserted claims 1-10, but that claims 1-5 and
7-10 are invalid for obviousness. ID at 71-88, 91-117. Finally, the ALJ
found that Macronix failed to establish the existence of a domestic
industry that practices the asserted patents under 19 U.S.C. 1337(a)(2)
and also failed to show a domestic industry in the process of being
established. See ID at 257-261, 288-294.
On May 10, 2018, the ALJ issued her recommended determination on
remedy and bonding. Recommended Determination on Remedy and Bonding
(``RD''). The ALJ recommends that in the event the Commission finds a
violation of section 337, the Commission should issue a limited
exclusion order prohibiting the importation of Toshiba's accused
products that infringe the asserted claims of the asserted patents. RD
at 1-5. The ALJ also recommends issuance of cease and desist orders
against the domestic Toshiba respondents based on the presence of
commercially significant inventory in the United States. RD at 5. With
respect to the amount of bond that should be posted during the period
of Presidential review, the ALJ recommends that the Commission set a
bond in the amount of 100 percent of entered value for Toshiba flash
memory devices and solid state drives, and a bond in the amount of six
percent of entered value for Toshiba PCs imported during the period of
Presidential review. RD at 6-9.
On May 14, 2018, Macronix filed a petition for review challenging
the ID's finding of no violation of section 337. The IA also filed a
petition for review that day, challenging the ID's finding that
Macronix failed to establish a domestic industry in the process of
being established and certain findings as to the '602 patent. Also on
May 14, 2018, Toshiba filed a contingent petition for review of the ID
``in the event that the Commission decides to review the ID.'' On May
22, 2018, Macronix and Toshiba filed their respective responses to the
petitions for review. On May 23, 2018, the IA filed a response to the
private parties' petitions for review. The Chairman granted the IA's
motion for leave to file the response one day late.
On June 28, 2018, the Commission determined to review the final ID
in part and requested the parties to brief certain issues. See 83 FR
31416-18 (July 5, 2018). Specifically, the Commission determined to
review the following: (1) The finding that Macronix failed to satisfy
the domestic industry requirement; and (2) the findings of infringement
and invalidity as to the '602 patent. On July 12, 2018, the parties
filed submissions to the Commission's questions and also briefed the
issues of remedy, the public interest and bonding. On July 19, 2018,
the parties filed responses to the initial submissions.
Having examined the record of this investigation, including the
final ID, and the parties' submissions, the Commission has determined
to (1) reverse the ALJ's finding that the accused products do not
directly infringe the asserted claims of the '602 patent; (2) affirm
the ALJ's indirect infringement and invalidity findings as to the '602
patent; and (3) reverse the ALJ's finding that Macronix failed to
establish a domestic industry in the process of being established. The
Commission adopts the ID's findings to the extent they are not
inconsistent with the Commission opinion issued herewith. The
Commission action results in a violation of section 337 as to claim 6
of the '602 patent.
Having found a violation of section 337 in this investigation, the
Commission has determined that the appropriate form of relief is: (1) A
limited exclusion order prohibiting the unlicensed entry of non-
volatile memory devices and products containing the same that infringe
claim 6 of the '602 patent that are manufactured by, or on behalf of,
or are imported by or on behalf of Respondents or any of their
affiliated companies, parents, subsidiaries, agents, or other related
business entities, or their successors or assigns, are excluded from
entry for consumption into the United States, entry for consumption
from a foreign-trade zone, or withdrawal from a warehouse for
consumption, for the remaining term of the '602 patent except under
license of the patent owner or as provided by law; and (2) cease and
desist orders prohibiting domestic respondents Toshiba America, Inc.
and its subsidiaries, Toshiba America Electronic Components, Inc. and
Toshiba America Information Systems, Inc. from conducting any of the
following activities in the United States: Importing, selling,
marketing, advertising, distributing, transferring
[[Page 51982]]
(except for exportation), and soliciting U.S. agents or distributors
for, non-volatile memory device and products containing same covered by
claim 6 of the '602 patent.
The Commission has also determined that the public interest factors
enumerated in section 337(d) and (f) (19 U.S.C. 1337(d) and (f)) do not
preclude issuance of the limited exclusion order or cease and desist
orders. Finally, the Commission has determined that a bond in the
amount of 100 percent of entered value for Toshiba flash memory
devices, solid-state drives, USB flash drives, and microcontroller
units; and a bond in the amount of six percent of entered value for
Toshiba personal computers, multi-function printers, and air
conditioners is required to permit temporary importation during the
period of Presidential review (19 U.S.C. 1337(j)) of products that are
subject to the remedial orders. 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: October 9, 2018
Katherine Hiner,
Supervisory Attorney.
[FR Doc. 2018-22325 Filed 10-12-18; 8:45 am]
BILLING CODE 7020-02-P
