2019-17766. Certain Magnetic Tape Cartridges and Components Thereof; Commission Decision Rescinding the Limited Exclusion Order and the 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 determined to rescind the limited exclusion order and the cease and desist orders issued in the above-captioned investigation.

FOR FURTHER INFORMATION CONTACT:

Cathy Chen, Esq., Office of the General Counsel, U.S. International Trade Commission, 500 E Street SW, Washington, DC 20436, telephone [phone]. 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 [phone]. 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 [phone].

SUPPLEMENTARY INFORMATION:

The Commission instituted this investigation on June 1, 2017. 82 FR 25333 (Jun. 1, 2017). The complaint, as amended, was filed by Sony Corporation of Tokyo, Japan; Sony Storage Media Solutions Corporation of Tokyo, Japan; Sony Storage Media Manufacturing Corporation of Miyagi, Japan; Sony DADC US Inc. of Terre Haute, Indiana; and Sony Latin America Inc. of Miami, Florida (collectively “Sony”). Id. The complaint alleged violations of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337, in the importation into the United States, the sale for importation, and the sale within the United States after importation of certain magnetic tape cartridges and components thereof by reason of infringement of certain claims of U.S. Patent Nos. 7,029,774 (“the '774 patent”); 6,674,596 (“the '596 patent”); and 6,979,501 (“the '501 patent”). Id. The notice of investigation named Fujifilm Holdings Corporation of Tokyo, Japan; Fujifilm Corporation of Tokyo, Japan; Fujifilm Media Manufacturing Co., Ltd. of Kanagawa, Japan; Fujifilm Holdings America Corporation of Valhalla, NY; and Fujifilm Recording Media U.S.A., Inc. of Bedford, MA (collectively “Fujifilm”) as respondents. Id. at 25334. The Office of Unfair Import Investigations (“OUII”) was also a party in this investigation. Id.

The ALJ found a violation of section 337. Following Commission review, on March 25, 2019, the Commission issued its final determination in the investigation, finding a violation of section 337 as to claims 1, 5-8, 10, 16, and 17 of the '774 patent and claims 1-13 of the '596 patent, and no violation of section 337 as to claims 1, 2, 4-6, and 8 of the '501 patent. 84 FR 11998-12000 (Mar. 29, 2019). An opinion accompanied the notice, and the Commission issued a limited exclusion order and cease and desist orders.

On July 23, 2019, Sony and Fujifilm entered into a Worldwide Resolution Agreement and Patent Cross-License (the “Agreement”). On July 25, 2019, Sony and Fujifilm jointly petitioned, pursuant to Commission Rule 210.76, 19 CFR 210.76, to rescind the limited exclusion order and the cease and desist orders. The joint petition attached an unredacted confidential version and a redacted public version of the Agreement. On August 5, 2019, OUII filed a response in support of the joint petition.

Having reviewed the joint petition and OUII's response, the Commission finds that the Agreement fully resolves the dispute between Sony and Fujifilm concerning the subject matter of the investigation. The Commission also finds that the joint petition complies with the requirements of Commission Rule 210.76, 19 CFR 210.76. Accordingly, the Commission has determined to rescind the limited exclusion order and the cease and desist orders issued in the investigation.

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 210).

By order of the Commission.

Issued: August 14, 2019.

Lisa Barton,

Secretary to the Commission.