[Federal Register Volume 76, Number 78 (Friday, April 22, 2011)]
[Notices]
[Pages 22726-22728]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2011-9784]
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INTERNATIONAL TRADE COMMISSION
[Investigation No. 337-TA-694]
Certain Multimedia Display and Navigation Devices and Systems,
Components Thereof, and Products Containing Same; Notice of Commission
Determination To Extend the Target Date; Request for Supplemental
Briefing
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 extend the target date for completion of
the above-captioned investigation from April 18, 2011, to June 17,
2011. The Commission is requesting supplemental briefing from the
public and from the parties to the investigation with respect to
certain questions set forth below.
FOR FURTHER INFORMATION CONTACT: Daniel E. Valencia, Office of the
General Counsel, U.S. International Trade Commission, 500 E Street,
SW., Washington, DC 20436, telephone (202) 205-1999. Copies of non-
confidential documents filed in connection with this investigation are
or will be available for
[[Page 22727]]
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 at 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 the instant
investigation on December 16, 2009, based on a complaint filed by
Pioneer Corporation of Tokyo, Japan and Pioneer Electronics (USA) Inc.
of Long Beach, California (collectively, ``Pioneer''). 74 FR 66676
(Dec. 16, 2009). 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 multimedia display and
navigation devices and systems, components thereof, and products
containing same by reason of infringement of various claims of United
States Patent Nos. 5,365,448 (``the '448 patent''), 5,424,951 (``the
'951 patent''), and 6,122,592 (``the '592 patent''). The complaint
named Garmin International, Inc. of Olathe, Kansas, Garmin Corporation
of Taiwan (collectively, ``Garmin'') and Honeywell International Inc.
of Morristown, New Jersey (``Honeywell'') as the proposed respondents.
Honeywell was subsequently terminated from the investigation.
On December 16, 2010, the ALJ issued his final initial
determination (``ID''). In his final ID, the ALJ found no violation of
section 337 by Garmin. Specifically, the ALJ found that the accused
products do not infringe claims 1 and 2 of the '448 patent, claims 1
and 2 of the '951 patent, or claims 1 and 2 of the '592 patent. The ALJ
found that the `592 patent was not proven to be invalid and that
Pioneer has established a domestic industry under 19 U.S.C.
1337(a)(3)(C). On February 23, 2011, the Commission determined to
review the final ID in part.
Target Date: The Commission has determined to extend the target
date for completion of the investigation by sixty (60) days from April
18, 2011 to June 17, 2011, to accommodate supplemental briefing.
Supplemental Briefing Request: A domestic industry may be shown to
exist, inter alia, by ``substantial investment'' in the
``exploitation'' of an asserted patent. 19 U.S.C. 1337(a)(3)(C). Such
investment may take the form of ``engineering, research and
development, or licensing,'' but other kinds of investments are not
precluded. See Certain Coaxial Cable Connectors and Components Thereof
and Products Containing Same, Inv. No. 337-TA-650, Comm'n Op. at 45
(Apr. 14, 2010). The following questions explore the domestic industry
requirement in the context of a complainant that invests in licensing a
patent portfolio, which includes the asserted patent among the licensed
patents.
(1) Assuming that the evidence in the record does not show the
patent asserted in a section 337 investigation to have more or less
value than the rest of the patents of a portfolio, to what extent
should the Commission attribute total expenses in licensing the
portfolio toward the complainant's investment in exploitation of the
asserted patent under section 337(a)(3)(C)? Please comment on whether
the statute authorizes the Commission to allocate to the asserted
patent the amount of the total expenses divided by the number of
patents in the portfolio?
(2) Assuming that the statute authorizes allocation of total
licensing expenses across all of the patents in the portfolio, what is
the significance of evidence demonstrating that at the time the
licensing expenses were incurred, the complainant did or did not
present information to potential licensees that the asserted patent was
being practiced or infringed by the respondent or a third party? What
is the significance of evidence showing that the asserted patent was
more or less important or valuable than the others in the portfolio?
What is the significance of evidence indicating that, while total
expenses in licensing a portfolio may be substantial, the share of the
expenses allocated to the asserted patent is not?
(3) In light of any practical benefits of licensing a group of
patents in a portfolio rather than licensing patents individually, does
the statute permit expenses in the licensing of an entire portfolio to
be considered an investment in the exploitation of the individual
asserted patent?
(4) How should licensing expenses and activities relating to (a)
cross-licenses and (b) global portfolio licenses (i.e., U.S. and
foreign patents) be treated under section 337(a)(3)(C)?
(5) What is the nature and extent of the ``nexus'' between an
asserted patent and a licensing expense or activity that is sufficient
to prove that such expense or activity constitutes an investment in the
asserted patent? What factors should be considered in determining
whether the required nexus is established? What is the evidentiary
showing required to prove a nexus between the asserted patent and the
licensing activities and expenses in the context of a portfolio
license?
(6) Is a ``nexus'' between an asserted patent and a licensing
activity sufficient to prove that expenses associated with that
licensing activity are an investment in the asserted patent under
section 337(a)(3)(C) even if other patents are involved? See ID at 165
(citing Certain 3G Wideband Code Division Multiple Access (WCDMA)
Handsets and Components Thereof, Inv. No. 337-TA-601, Order No. 20
(unreviewed ID) (June 24, 2010)). If a ``nexus'' is sufficient, is the
strength of that nexus relevant in determining the amount of investment
in the asserted patent(s)? For example, is the number of patents
included in a license relevant in determining the amount of investment
in an asserted patent(s) compared to the expenses generally associated
with licensing all of the patents? Is the breadth of technology covered
by the portfolio, as a whole, relative to the breadth of technology
covered by the asserted patent(s) relevant in determining the amount of
investment in the asserted patent(s)?
(7) In Certain Stringed Musical Instruments and Components Thereof,
Inv. No. 337-TA-586, the Commission noted that ``the requirement for
showing the existence of a domestic industry will depend on the
industry in question, and the complainant's relative size.'' Comm'n Op.
at 25-26 (May 16, 2008). Please comment on the appropriate context for
determining whether a complainant's investments in licensing a
portfolio of patents, which includes the asserted patent, is
``substantial'' within the meaning of section 337(a)(3)(C) in a
particular industry? In other words, in determining whether
appropriately identified investments in licensing the portfolio
constitute a ``substantial investment in [the asserted patent's]
exploitation'' within the meaning of the statute, against what specific
measure should those investments be assessed? In discussing the context
for determining whether portfolio licensing investments are
substantial, please discuss relevant factors, criteria, and evidence
that should be considered in determining whether the complainant's
licensing investments are ``substantial'' in the
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context of a portfolio license. Please include in the discussion, how
these factors, criteria, and evidence may vary depending on the
industry in question and complainant's relative size.
(8) Please comment on the significance of whether and to what
extent the complainant receives royalties under the license agreement
or acquires other rights or benefits as a result of a portfolio license
in assessing whether the complainant's licensing expenses and
activities constitute a ``substantial investment in [the asserted
patent's] exploitation.''
(9) Please comment on the significance of whether and to what
extent a complainant engages in ancillary exploitation activities that
frequently accompany licensing efforts, such as development,
engineering, or servicing of licensed articles, in assessing whether a
complainant has made a ``substantial investment in [the asserted
patent's] exploitation'' through licensing.
(10) For the parties to the investigation only:
a. Please cite and discuss the specific evidence of record in this
investigation supporting your position as to each of the above
questions.
b. Assuming the licensing efforts of complainant Pioneer and
Discovision Associaties are viewed together, to what extent did the
expenses in licensing Pioneer's navigation portfolio (before Pioneer
retained outside counsel) represent Pioneer's investment in licensing
the asserted patents? Please support your response with citations to
the record.
c. Please comment on the weight that should be given to documents
concerning complainant's licensing activities and expenses from which
information has been redacted. Please discuss the significance, vel
non, of the content of the redacted documents to the complainant's
licensing activities and investments in view of such redactions.
Parties to the investigation and members of the public are invited
to file written submissions addressing the questions set forth above
regarding the domestic industry requirement of section 337(a)(3)(C).
Opening submissions of the parties to the investigation are due no
later than May 3, 2011. A public version of these submissions must be
filed with the Secretary no later than May 10, 2011. Reply submissions
of the parties to the investigation are due no later than May 17, 2011.
Written submissions from members of the public will be accepted anytime
on or before May 17, 2011. No further submissions on these issues will
be permitted unless otherwise ordered by the Commission.
Persons filing written submissions must file the original document
and 12 true copies thereof on or before the deadlines stated above with
the Office of the Secretary. Any person desiring to submit a document
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 19 CFR 210.6. 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 and may
be viewed on the Commission's electronic docket (EDIS) at http://edis.usitc.gov.
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 sections 210.42-50 of the Commission's Rules of Practice and
Procedure (19 CFR 210.42-50).
By order of the Commission.
Issued: April 18, 2011.
James R. Holbein,
Acting Secretary to the Commission.
[FR Doc. 2011-9784 Filed 4-21-11; 8:45 am]
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