[Federal Register Volume 70, Number 184 (Friday, September 23, 2005)]
[Notices]
[Pages 55919-55920]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 05-19036]
-----------------------------------------------------------------------
INTERNATIONAL TRADE COMMISSION
[Inv. No. 337-TA-454]
In the Matter of Certain Set-Top Boxes and Components Thereof;
Notice of Commission Determination To Terminate the Investigation on
the Basis of a Settlement Agreement
AGENCY: International Trade Commission.
ACTION: Notice.
-----------------------------------------------------------------------
SUMMARY: Notice is hereby given that the U.S. International Trade
Commission has determined to terminate the above-captioned
investigation on the basis of a settlement agreement.
FOR FURTHER INFORMATION CONTACT: Wayne Herrington, Esq., Office of the
General Counsel, U.S. International Trade Commission, 500 E Street,
SW., Washington, DC 20436, telephone (202) 205-3090, or Michael
Liberman, Esq., Office of the General Counsel, U.S.
[[Page 55920]]
International Trade Commission, 500 E Street, SW., Washington, DC
20436, telephone (202) 205-3115. 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 (http://www.usitc.gov). The public record
for this investigation may be viewed on the Commission's electronic
docket (EDIS) at http://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 this patent-based
investigation, which concerns allegations of unfair acts in violation
of section 337 of the Tariff Act of 1930 in the importation and sale of
certain set-top boxes, on March 21, 2001. 66 FR 15887 (March 21, 2001).
Complainants Gemstar-TV Guide International, Inc. of Pasadena,
California, and StarSight Telecast, Inc. of Fremont, California
(collectively, ``Gemstar''), named Pioneer Corporation, Pioneer North
America, Inc., Pioneer Digital Technologies, Inc., and Pioneer New
Media Technologies, Inc. (collectively, ``Pioneer''); EchoStar
Communications Corporation and SCI Systems, Inc. (collectively,
``Echostar''); and Scientific-Atlanta, Inc. (``Scientific-Atlanta'') as
respondents. Gemstar alleged that these respondents infringed certain
claims of its patents, including: U.S. Patent No. 4,706,121 (``the '121
patent''); U.S. Patent No. 5,479,268 (``the `268 patent''); and U.S.
Patent No. 5,809,204 (``the '204 patent'').
The presiding administrative law judge (``the ALJ'') issued his
final initial determination (``final ID'') on June 21, 2002, in which
he concluded that there was no violation of section 337, based on the
following findings: (a) Complainants had failed to establish that
asserted claims 18-24, 26-28, 31-33, 36, 42-43, 48-50, 54, 57, 59-61,
and 66 of the '121 patent; claims 1, 3, 8, and 10 of the '268 patent;
and claims 1, 3, 8, and 10 of the '204 patent are infringed by
respondents; (b) respondents had failed to establish that the asserted
claims are not valid; (c) respondents had established that the '121
patent is unenforceable for failure to name a co-inventor; (d)
complainants had engaged in patent misuse with respect to the '121
patent; (e) no industry existed in the United States, as required by
subsection (a)(2) of section 337, that exploits each of the '121, '268,
and '204 patents in issue; and (f) there had been an importation of the
set-top boxes which are the subject of this investigation.
On July 5, 2002, all parties to the investigation, including the
Commission investigative attorney, filed petitions for review of
various portions of the final ID.
On August 29, 2002, the Commission issued notice that it had
determined to review in part, to take no position in part, and to not
review in part the ALJ's final ID. Specifically, the Commission
determined to review the issue of the technical prong of the domestic
industry as it relates to claim 42 of '204 patent for the purpose of
making a finding as to claim 42 of that patent. This finding had been
omitted by the ALJ. The Commission also determined to take no position
on the issue of patent misuse and not to review the remainder of the
final ID. Finally, the Commission determined to affirm three ALJ
rulings (involving ALJ Order No. 62, an ALJ ruling excluding evidence
concerning the doctrine of equivalents, and an ALJ ruling limiting the
testimony time of one witness) that were appealed to the Commission by
the complainants. In light of these determinations, the Commission
determined that there was no violation of section 337 in this
investigation.
Gemstar appealed the Commission's final determination to the United
States Court of Appeals for the Federal Circuit (``the Federal
Circuit'' or ``the Court''). During the course of the appeal, Gemstar
settled with Pioneer and EchoStar, and these respondents were dismissed
from the appeal. On September 16, 2004, the Federal Circuit issued its
decision in the appeal, in which the Commission's final determination
was affirmed in part, vacated in part, and reversed in part, and the
case remanded for further proceedings consistent with the Court's
opinion. Gemstar-TV Guide International, Inc. v. International Trade
Commission, 383 F.3d 1352 (Fed. Cir. 2004).
On November 29, 2004, the Court denied Scientific-Atlanta's
petitions for rehearing and rehearing en banc. On January 11, 2005, the
Court denied Scientific-Atlanta's motion to stay issuance of the
mandate and simultaneously issued its mandate, returning the case to
the Commission, with Scientific-Atlanta as the sole respondent.
On February 8, 2005, the Commission issued an order seeking
comments from the parties as to how they believed the Commission should
proceed with the remanded investigation. The original 30-day deadline
for receiving comments from the parties was extended twice, to June 13,
2005. On that date the private parties filed a joint motion to
terminate the investigation based on a settlement agreement, including
a patent license agreement. On June 23, 2005, the Commission
investigative attorney filed a response supporting the joint motion. On
August 5, 2005, the private parties filed a public version of the joint
motion.
Having examined the joint motion to terminate the investigation,
the response thereto, and other relevant documents of record in this
investigation, the Commission has determined to grant the joint motion,
terminating this investigation in its entirety.
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 section 210.21 of the Commission's Rules of Practice and Procedure
(19 CFR 210.21).
Issued: September 19, 2005.
By order of the Commission.
Marilyn R. Abbott,
Secretary to the Commission.
[FR Doc. 05-19036 Filed 9-22-05; 8:45 am]
BILLING CODE 7020-02-P