[Federal Register Volume 64, Number 127 (Friday, July 2, 1999)]
[Notices]
[Pages 36038-36040]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 99-16928]
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INTERNATIONAL TRADE COMMISSION
[Inv. No. 337-TA-409]
In the Matter of Certain CD-ROM Controllers and Products
Containing the Same--II; Notice of Commission Decisions to Review
Portions of One Initial Determination and All of a Second Initial
Determination, and Schedule for the Filing of 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 on May 12, 1999, by the presiding
administrative law judge (ALJ) in the above-captioned investigation
finding that there was no violation of section 337 of the Tariff Act of
1930, 19 U.S.C. 1337, and to review in its entirety an ID (ALJ Order
No. 15) issued on May 10, 1999, granting respondent United
Microelectronics Corporation's (UMC's) motion for a summary
determination terminating UMC from the investigation.
FOR FURTHER INFORMATION CONTACT: Timothy P. Monaghan, Esq., Office of
the General Counsel, U.S. International Trade Commission, 500 E Street,
SW, Washington, DC 20436, telephone 202-205-3152. 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 this matter can be obtained by contacting
the Commission's TDD terminal on 202-205-1810.
SUPPLEMENTARY INFORMATION: The Commission instituted this investigation
on May 13, 1998, based on a complaint filed by Oak Technology, Inc. 63
FR 26625 (1998). The complainant named four respondents: MediaTek, UMC,
Lite-On Technology Corp., and AOpen Inc. Actima Technology Corporation,
ASUSTek Computer, Incorporated, Behavior Tech Computer Corporation,
Data Electronics, Inc., Momitsu Multi Media Technologies, Inc., Pan-
International Industrial Corporation, and Ultima Electronics
Corporation were permitted to intervene.
In its complaint, Oak alleged that respondents violated section 337
by importing into the United States, selling for importation, and/or
selling in the United States after importation
[[Page 36039]]
electronic products and/or components that infringe claims 1-5 and 8-10
of U.S. Letters Patent 5,581,715 (`715 patent). The presiding ALJ held
an evidentiary hearing from January 11, 1999, to January 28, 1999.
On May 10, 1999, the ALJ issued an ID (Order No. 15) granting the
motion of respondent UMC for a summary determination terminating
respondent UMC from the investigation on the basis of a license
agreement. On May 12, 1999, the ALJ issued his final ID finding that
there was no violation of section 337. He found that there was no
infringement of any claims at issue. He further found that the claims
in issue of the `715 patent were invalid for on-sale bar under 35
U.S.C. 102(b), anticipation under 35 U.S.C. 102(a), obviousness under
35 U.S.C. 103, for indefiniteness under 35 U.S.C. 112(2), (6), and for
derivation under 35 U.S.C. 102(f). The ALJ found that there was a
domestic industry with respect to the `715 patent.
Complainant Oak filed a petition for review of Order No. 15 and
respondent UMC and the Commission investigative attorney (IA) filed
responses to Oak's petition for review of Order No. 15. Oak,
respondents, and the IA filed a petitions for review of the final ID,
and all parties subsequently responded to each other's petitions for
review of the final ID.
Having examined the record in this investigation, including Order
No. 15, the final ID, the petitions for review, and the responses
thereto, the Commission has determined not to review the ID's findings
with respect to the preamble and the Digital Signal Processor (DSP)
element. The Commission has determined to review the remainder of the
final ID and Order No. 15 in its entirety.
While the Commission expects the parties to brief all of the issues
being reviewed, the Commission is particularly interested in receiving
answers to the following questions:
(1) With respect to the claimed memory means, please cite and
discuss any Federal Circuit cases dealing with indefiniteness of an
issued patent, which carries a presumption of validity, in the context
of apparent confusion between the language of the claim and the content
of the specification.
(2) Should the claimed error detection and correction means be
interpreted as a means-plus-function element that necessarily includes
two specific circuits, but which may include more circuit structure?
(3) If the claimed error detection and correction means is
construed as a means-plus-function element--
(a) Is it possible under current Federal Circuit case law to
satisfy the requirements for structural description under 35 U.S.C. 112
para. 6 by references to ``circuits * * * commonly available as
hardware used in many other applications?''
(b) Is there any evidence of record of commonly available hardware,
at the time of the alleged infringement, for performing the error
detection function by a cyclic redundancy check other than by a linear
feedback shift register?
(c) Is common availability in hardware a prerequisite for
determining whether the error detection circuitry in any accused device
is an equivalent to a linear feedback shift register for purposes of
section 112 para. 6 at the time of the alleged infringement?
(d) Does the MediaTek Error Detection Processor perform the
identical function as the disclosed cyclic redundancy checker?
(e) At the time of the alleged infringement, would the MediaTek
Error Detection Processor be considered an equivalent device under
section 112 para. 6 for performing the claimed function?
(4) If the claimed error detection and correction means is not
construed as a means-plus-function element, please discuss, to the
extent the record will allow, whether the MediaTek Error Detection
Processor, considering its operation from both a hardware and software
standpoint, may be considered a cyclic redundancy checker?
(5) Under Federal Circuit case law, what is necessary to conclude
that a feature of disclosed circuitry is directly linked to a claimed
function in order to make it part of the ``corresponding structure''
under section 112 para. 6? In particular, could a patentee demonstrate
this required linkage by showing, as a matter of logic, that the
circuitry of the claimed means could not work without the feature in
question, even though there is no explicit textual reference to the
claimed function in the portion(s) of the specification dealing with
that feature?
(6) Please discuss which features of the claimed host interface
means should be included in the ``corresponding structure'' for
purposes of construing this element.
(7) Please discuss, including all the engineering detail the record
will allow, including timing relationships, signal characteristics,
sequence of operations, and any other design parameters you deem
relevant, how the claimed host interface means functions.
(8) With respect to the claimed host interface means--
(a) Does the preamble to claim 1 require that the host interface
means directly connect to the IDE/ATA bus and have sufficient circuitry
to support any IDE-based command set?
(b) Aside from expanding to eight registers and changing the
addressing scheme, what design problems had to be solved to go from the
Mitsumi daughterboard to the claimed invention? Where are the solutions
to those problems reflected in the patent specification?
(c) What design problems of the host interface means, if any, would
remain unsolved in view of the ATA or ATAPI specifications? To the
extent you contend that design features of the host interface means are
disclosed by the engineering information in these specifications,
please cite specific references, at least to sections and preferably to
page numbers, where the information may be found.
(9) With respect to the ALJ's obviousness analysis, what is the
teaching, motivation, or suggestion to combine the references employed?
(a) If you contend that the teaching, motivation, or suggestion
derives, in whole or in part, from ``the nature of the problem,''
please discuss the extent to which Federal Circuit case law has
extended this concept beyond simple mechanical contexts.
(b) If you contend that it derives, in whole or in part, from the
teachings of pertinent references, please cite to the passages in the
references in question that you contend furnish such a suggestion.
(c) If you contend that it derives, in whole or in part, from the
knowledge of those of ordinary skill in the art of the importance of
certain references, please be specific as to how all or portions of the
references in any given combination were well known in the art prior to
the invention and how a person of ordinary skill in the art would have
known to combine material from other references in the combination that
are not so well known.
(10) 35 U.S.C. 103 directs that the reference point for an
obviousness analysis is ``at the time the invention was made.'' In view
of the evidence of a conception date no later than April 1993, what is
the relevance under governing case law of the ATAPI standard, which was
apparently available to no one before June 10, 1993?
In connection with the final disposition of this investigation, the
Commission may issue (1) an order that could result in the exclusion of
the subject articles from entry into the United States, and/or (2)
cease and desist orders that could result in respondents being required
to cease and desist from engaging in unfair acts in
[[Page 36040]]
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 President has 60
days to approve or disapprove the Commission's action. During this
period, the subject articles would be entitled to enter the United
States under a bond, in an amount determined by the Commission and
prescribed by the Secretary of the Treasury. The Commission is
therefore interested in receiving submissions concerning the amount of
the bond that should be imposed.
Written Submissions
The parties to the investigation, interested government agencies,
and any other interested parties are encouraged to file written
submissions on the issues under review, and on remedy, the public
interest, and bonding. Such submissions should address the May 26,
1999, recommended determination by the ALJ on remedy and bonding.
Complainant and the Commission investigative attorney are also
requested to submit proposed remedial orders for the Commission's
consideration. The written submissions and proposed remedial orders
must be filed no later than close of business on July 12, 1999. Reply
submissions must be filed no later than the close of business on July
19, 1999. No further submissions on these issues will be permitted
unless otherwise ordered by the Commission.
Persons filing written submissions must file with the Office of the
Secretary the original document and 14 true copies thereof on or before
the deadlines stated above. Any person desiring to submit a document
(or portion thereof) 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 why the Commission should grant such
treatment. See section 201.6 of the Commission's Rules of Practice and
Procedure, 19 CFR 201.6. 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.
This action is taken under the authority of section 337 of the
Tariff Act of 1930, 19 U.S.C. 1337, and sections 210.45-210.51 of the
Commission's Rules of Practice and Procedure, 19 CFR 210.45-210.51.
Copies of the public versions of the subject IDs, and all other
nonconfidential 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.
By order of the Commission.
Issued: June 28, 1999.
Donna R. Koehnke,
Secretary.
[FR Doc. 99-16928 Filed 7-1-99; 8:45 am]
BILLING CODE 7020-02-P
