2025-01461. Certain Nanolaminate Alloy Coated Metal Parts and Products Containing Same; Notice of Institution of Investigation

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International Trade Commission

1. [Investigation No. 337-TA-1431]

AGENCY:

U.S. International Trade Commission.

ACTION:

Notice.

SUMMARY:

Notice is hereby given that a complaint was filed with the U.S. International Trade Commission on November 19, 2024, under section 337 of the Tariff Act of 1930, as amended, on behalf of Modumetal, Inc. of Snohomish, Washington. A letter supplementing the complaint was filed on December 4, 2024. The complaint, as supplemented, alleges violations of section 337 based upon the importation into the United States, the sale for importation, and the sale within the United States after importation of certain nanolaminate alloy coated metal parts, components thereof, and products containing the same by reason of the infringement of certain claims of U.S. Patent No. 10,253,419 (“the '419 patent”) and U.S. Patent No. 11,242,613 (“the '613 patent”). The complaint further alleges that an industry in the United States exists as required by the applicable Federal Statute. The complainant requests that the Commission institute an investigation and, after the investigation, issue a limited exclusion order and cease and desist orders.

ADDRESSES:

The complaint, except for any confidential information contained therein, may be viewed on the Commission's electronic docket (EDIS) at https://edis.usitc.gov. For help accessing EDIS, please email [e-mail]. Hearing impaired individuals are advised that information on this matter can be obtained by contacting the Commission's TDD terminal on [phone]. Persons with mobility impairments who will need special assistance in gaining access to the Commission should contact the Office of the Secretary at [phone]. General information concerning the Commission may also be obtained by accessing its internet server at https://www.usitc.gov.

FOR FURTHER INFORMATION CONTACT:

Susan Orndoff, The Office of Docket Services, U.S. International Trade Commission, telephone [phone].

SUPPLEMENTARY INFORMATION:

Authority: The authority for institution of this investigation is contained in section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337, and in section 210.10 of the Commission's Rules of Practice and Procedure, 19 CFR 210.10 (2024).

Scope of Investigation: Having considered the complaint, the U.S. International Trade Commission, on January 15, 2025, ordered that —

(1) Pursuant to subsection (b) of section 337 of the Tariff Act of 1930, as amended, an investigation be instituted to determine whether there is a violation of subsection (a)(1)(B) of section 337 in the importation into the United States, the sale for importation, or the sale within the United States after importation of certain products identified in paragraph (2) by reason of infringement of one or more of claims 1-3, 5, and 7 of the '419 patent and claims 1-3 and 5 of the '613 patent, and whether an industry in the United States exists as required by subsection (a)(2) of section 337;

(2) Pursuant to section 210.10(b)(1) of the Commission's Rules of Practice and Procedure, 19 CFR 210.10(b)(1), the plain language description of the accused products or category of accused products, which defines the scope of the investigation, is “metal parts coated with Parker Hannifin's ToughShield® Plus coating as well as bundles containing one or more parts with ToughShield® Plus coating”; ^[1 2 3]

(3) For the purpose of the investigation so instituted, the following are hereby named as parties upon which this notice of investigation shall be served:

(a) The complainant is:

Modumetal, Inc., 20124 Broadway Ave., Building A, Snohomish, WA 98296

(b) The respondents are the following entities alleged to be in violation of section 337, and are the parties upon which the complaint is to be served:

Parker Hannifin Corporation, 6035 Parkland Boulevard, Cleveland, OH 44124

Lu Chu Shin Yee Works Co., Ltd., 46, Shin Ming Road, Luchu District, Kaohsiung City, Taiwan 82146

(4) For the investigation so instituted, the Chief Administrative Law Judge, U.S. International Trade Commission, shall designate the presiding Administrative Law Judge. The Office of Unfair Import Investigations will not participate as a party in this investigation. ( print page 7705)

Responses to the complaint and the notice of investigation must be submitted by the named respondents in accordance with section 210.13 of the Commission's Rules of Practice and Procedure, 19 CFR 210.13. Pursuant to 19 CFR 201.16(e) and 210.13(a), as amended in 85 FR 15798 (March 19, 2020), such responses will be considered by the Commission if received not later than 20 days after the date of service by the complainant of the complaint, as supplemented, and the notice of investigation. Extensions of time for submitting responses to the complaint and the notice of investigation will not be granted unless good cause therefor is shown.

Failure of a respondent to file a timely response to each allegation in the complaint and in this notice may be deemed to constitute a waiver of the right to appear and contest the allegations of the complaint, as supplemented, and this notice, and to authorize the administrative law judge and the Commission, without further notice to the respondent, to find the facts to be as alleged in the complaint, as supplemented, and this notice and to enter an initial determination and a final determination containing such findings, and may result in the issuance of an exclusion order or a cease and desist order or both directed against the respondent.

By order of the Commission.

Issued: January 16, 2025.

Lisa Barton,

Secretary to the Commission.

Footnotes

1.  The Commission is not making a decision on the merits at this stage. Rather, the Commission has only assessed whether the complainant has satisfied the pleading requirements for purposes of institution. To that end, the scope of this investigation includes only those articles as to which the complaint states factual allegations of an alleged violation of section 337 as required by the statute and Commission regulations. The complaint as supplemented fails to contain any factual allegation that metal parts are being imported into the United States for domestic ToughShield Plus finishing in violation of section 337. For this reason, the Commission has determined to modify the plain language description of the accused products proposed by the complainant by deleting the phrase “components that are metal parts imported into the United States for domestic ToughShield® Plus finishing.” The complainant may move to amend the complaint and NOI to add components, including metal parts imported for finishing, to the scope of the investigation if complainant makes factual allegations in support thereof for example based on information received in discovery. Further, there is no requirement that “components thereof” must appear in the case caption in order for the Commission to take action against any attempts to circumvent a Commission remedial order. See also Certain Crafting Machines and Components Thereof, Inv. No. 337-TA-1426, Notice of Investigation, 89 FR 99905 (Dec. 11, 2024).

2.  While Commissioner Schmidtlein agrees to institute this investigation and agrees with the modification of the plain language description of accused articles, she disagrees with her fellow Commissioners' decision to change the caption by deleting the phrase “components thereof.” The Commission has routinely included “components thereof” language in the caption when proposed by complainants, and she sees no reason to treat it differently here. In Commissioner Schmidtlein's view, the absence of such language raises the question of whether a later enforcement action could be brought to remedy circumvention of an order through the importation of components given that the Commission's practice has been to define the scope of remedial orders consistent with the notice of investigation. See Certain Automated Mech. Transmission Sys. for Medium-Duty and Heavy-Duty Trucks and Components Thereof, Inv. No. 337-TA-503, Comm'n Op., 2007 WL 4473082, *10 (Aug. 1, 2007) (“[T]he scope of the remedy is dependent upon the scope of the investigation, which is determined by the notice of investigation.”).

3.  Commissioner Kearns agrees with the majority that Complainant has failed to provide any factual allegations that the only components identified in the Complaint, “metal parts imported into the United States for ToughShield plus finishing,” violate section 337 either based on direct or indirect infringement. He also agrees that the Commission may take action against attempts to circumvent a remedial order even if “components thereof” does not appear in the case caption. He notes, moreover, that if sufficient allegations were presented in the Complaint, the Commission does have the authority under appropriate circumstances to investigate a section 337 violation involving imported components that are used to directly infringe the patent only after importation. See Certain High-Density Fiber Optic Equipment and Components Thereof, Inv. No. 337-TA-1194, Comm'n Op. at 98-104 (Additional Views of Chair Kearns Regarding “Articles that Infringe”).