04-14507. In the Matter of Certain Abrasive Products Made Using a Process for Powder Preforms, and Products Containing Same; Notice of Commission Decision to Vacate Limited Exclusion Order and Cease and Desist Order

AGENCY:

U.S. International Trade Commission.

ACTION:

Notice.

SUMMARY:

Notice is hereby given that the U.S. International Trade Commission has vacated the limited exclusion order and cease and desist order issued at the conclusion of the above-captioned investigation.

FOR FURTHER INFORMATION CONTACT:

Michael K. Haldenstein, Esq., Office of the General Counsel, U.S. International Trade Commission, telephone [phone]. General information concerning the Commission may also be obtained by accessing its Internet server (http://www.usitc.gov). Hearing-impaired persons are advised that information on the matter can be obtained by contacting the Commission's TDD terminal on 202-205-1810.

Copies of the public 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 [phone].

SUPPLEMENTARY INFORMATION:

The Commission instituted this investigation on February 5, 2001, based upon a complaint filed on January 5, 2001, by 3M Company of St. Paul, Minnesota and Ultimate Abrasive Systems, LLC (“UAS”) of Atlanta, Georgia. 66 FR 9720 (Feb. 9, 2001). The complaint named Kinik Company (“Kinik”) of Taipei, Taiwan and Kinik Corporation of Anaheim, California as respondents. Kinik Corporation was subsequently terminated from the investigation.

Complainants alleged that respondents had violated section 337 of the Tariff Act of 1930 by importing into the United States, selling for importation, and selling within the United States after importation certain abrasive products that are made using a process for making powder preforms that is covered by claims 1, 4, 5, and 8 of U.S. Patent No. 5,620,489 (“the ‘489 patent”), owned by UAS and exclusively licensed to 3M. The complaint further alleged that an industry in the United States exists as required by subsection (a)(2) of section 337. On February 8, 2002, the ALJ issued his final initial determination (“ID”), in which he determined that Kinik's accused DiaGrid abrasive products infringed claims 1, 4, 5, and 8 of the ‘489 patent and that the ‘489 patent is valid and enforceable. Based upon these findings, he found a violation of section 337.

On February 21, 2002, Kinik petitioned for review of the ALJ's final ID. Kinik also appealed Order No. 40, issued by the ALJ on October 12, 2001. That order precluded Kinik from asserting 35 U.S.C. 271(g) as a non-infringement defense. On February 28, 2002, 3M and the Commission investigative attorney filed oppositions to Kinik's petition for review and its appeal of Order No. 40.

On March 29, 2002, the Commission determined not to review the ALJ's final ID, which therefore became the determination of the Commission. The Commission also issued an opinion affirming the ALJ's Order No. 40.

On August 16, 2002, Kinik appealed the Commission's determination to the U.S. Court of Appeals for the Federal Circuit. 3M intervened in the appeal and the parties filed briefs with the Court. The Federal Circuit issued an opinion on March 25, 2004. The Court construed claim 1 more narrowly than had the Commission and reversed the Commission's finding of infringement. 3M filed a petition for a panel rehearing and hearing en banc with the Court on April 20, 2004. However, the Federal Circuit denied the petitions and issued the mandate on May 20, 2004. As the Federal Circuit has reversed the Commission's finding of infringement with respect to Kinik's process, the Commission determined that there was no longer a basis for the limited exclusion order or the cease and desist order issued in this investigation, and therefore vacated the orders.

This action is taken under the authority of section 337 of the Tariff Act of 1930, 19 U.S.C. 1337.

By order of the Commission.

Issued: June 21, 2004.

Marilyn R. Abbott,

Secretary to the Commission.