81 FR 49264 - Certain Three-Dimensional Cinema Systems and Components Thereof Commission's Final Determination Finding a Violation of Section 337; Issuance of a Limited Exclusion Order and Cease and Desist Orders; Termination of the Investigation

INTERNATIONAL TRADE COMMISSION

Federal Register Volume 81, Issue 144 (July 27, 2016)

Notice is hereby given that the U.S. International Trade Commission has found a violation of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337, in this investigation. The Commission has issued a limited exclusion order prohibiting the importation of certain three-dimensional cinema systems, and components thereof, that infringe certain claims of the patents at issue. The Commission has also issued cease and desist orders directed to the two respondents. The remedial orders are suspended as to certain patent claims pending final resolution of a validity issue. The investigation is terminated.

[Federal Register Volume 81, Number 144 (Wednesday, July 27, 2016)]
[Notices]
[Pages 49264-49265]
From the Federal Register Online  [www.thefederalregister.org]
[FR Doc No: 2016-17711]


-----------------------------------------------------------------------

INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-939]


Certain Three-Dimensional Cinema Systems and Components Thereof 
Commission's Final Determination Finding a Violation of Section 337; 
Issuance of a Limited Exclusion Order and Cease and Desist Orders; 
Termination of the Investigation

AGENCY: U.S. International Trade Commission.

ACTION: Notice.

-----------------------------------------------------------------------

SUMMARY: Notice is hereby given that the U.S. International Trade 
Commission has found a violation of section 337 of the Tariff Act of 
1930, as amended, 19 U.S.C. 1337, in this investigation. The Commission 
has issued a limited exclusion order prohibiting the importation of 
certain three-dimensional cinema systems, and components thereof, that 
infringe certain claims of the patents at issue. The Commission has 
also issued cease and desist orders directed to the two respondents. 
The remedial orders are suspended as to certain patent claims pending 
final resolution of a validity issue. The investigation is terminated.

FOR FURTHER INFORMATION CONTACT: Lucy Grace D. Noyola, Office of the 
General Counsel, U.S. International Trade Commission, 500 E Street SW., 
Washington, DC 20436, telephone 202-205-3438. 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 investigation 
on December 12, 2014, based on a complaint filed by RealD, Inc. of 
Beverly Hills, California (``RealD''). 79 FR 73902-03 (Dec. 12, 2014). 
The complaint alleges 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 three-dimensional cinema systems, and 
components thereof, that infringe certain claims of U.S. Patent Nos. 
7,905,602 (``the '602 patent''); 8,220,934 (``the '934 patent''); 
7,857,455 (``the '455 patent''); and 7,959,296 (``the '296 patent''). 
Id. at 73902. The notice of investigation named as respondents 
MasterImage 3D, Inc. of Sherman Oaks, California, and MasterImage 3D 
Asia, LLC of Seoul, Republic of Korea (collectively, ``MasterImage''). 
Id. at 73903. The Office of Unfair Import Investigations was not named 
as a party to the investigation. Id.
    On July 23, 2015, the Commission terminated the investigation as to 
various of the asserted claims and the '602 patent in its entirety. 
Notice (July 23, 2015) (determining not to review Order No. 6 (July 2, 
2015)); Notice (Aug. 20, 2015) (determining not to review Order No. 7 
(Aug. 3, 2015)).
    On September 25, 2015, the Commission determined on summary 
determination that RealD satisfied the economic prong of the domestic 
industry requirement through its significant investment in plant, 
significant investment in labor, and substantial investment in 
engineering, research, and development. Notice (Sept. 25, 2015) 
(determining to review in part Order No. 9 (Aug. 20, 2015)). The 
Commission, however, reversed the summary determination with respect to 
RealD's investment in equipment. Id.
    On December 16, 2015, the presiding administrative law judge 
(``ALJ'') issued a final initial determination (``ID'') finding a 
violation of section 337 with respect to the three remaining asserted 
patents. The ALJ found that the asserted claims of the '455, '296, and 
'934 patents are infringed and not invalid or unenforceable. The ALJ 
found that the technical prong of the domestic industry requirement was 
satisfied for the '455, '296, and '934 patents. The ALJ also issued a 
Recommended Determination on Remedy and Bonding (``RD''), recommending 
that a limited exclusion order and cease and desist orders should issue 
and that a bond of 100 percent should be imposed during the period of 
Presidential review.
    On December 29, 2015, MasterImage filed a petition for review 
challenging various findings in the final ID. On January 6, 2016, RealD 
filed a response to MasterImage's petition. On January 15, 2016, and 
January 19, 2016, MasterImage and RealD respectively filed post-RD 
statements on the public interest under Commission Rule 210.50(a)(4). 
The Commission did not receive any post-RD public interest comments 
from the public in response to the Commission notice issued on December 
22, 2015. 80 FR 80795 (Dec. 28, 2015).
    On February 16, 2016, the Commission determined to review the final 
ID in part and requested additional briefing from the parties on 
certain issues. 81 FR at 8744-45. Specifically, the Commission 
determined to review (1) the ID's construction of the ``uniformly 
modulate'' limitation recited in claims 1 and 17 of the '455 patent; 
(2) the ID's infringement findings with respect to the asserted claims 
of the '455 patent; (3) the ID's findings on validity of the asserted 
claims of the '455 patent; (4) the ID's finding of proper inventorship 
of the '296 patent; (5) the ID's findings on validity of the asserted 
claims of the '934 patent; and (6) the ID's finding regarding the 
technical prong of the domestic industry requirement with respect to 
the '455 patent. Id. at 8745. The Commission also solicited briefing 
from the parties and the public on the issues of remedy, the public 
interest, and bonding. Id.
    On March 1, 2016, the parties filed initial written submissions 
addressing the Commission's questions and the issues of remedy, the 
public interest, and bonding. On March 11, 2016, the parties filed 
response briefs. No comments were received from the public. On April 
18, 2016, the Commission requested additional briefing on the effect of 
a Final Written Decision issued by the Patent Trial and

[[Page 49265]]

Appeal Board of the U.S. Patent and Trademark Office (``PTAB'') on 
April 14, 2016, finding certain claims of the '934 patent unpatentable, 
on the Commission's final determination. 81 FR 23749-50 (Apr. 22, 
2016). On April 26, 2016, the parties filed initial written submissions 
addressing the Commission's question. On May 3, 2016, the parties filed 
response briefs.
    Having examined the record of this investigation, including the 
final ID and the parties' submissions, the Commission has determined 
that RealD has proven a violation of section 337 based on infringement 
of claims 1-3, 9-11, 13, 15, 17-19, and 21 of the '455 patent; claims 
1, 2, 7, 8, 11, and 12 of the '296 patent; and claims 1, 6, and 11 of 
the '934 patent. The Commission has determined to modify the ALJ's 
construction of the ``uniformly modulate'' limitation recited in claims 
1 and 17 of the '455 patent. Under the modified construction, the 
Commission has determined that RealD has proven that the accused 
MasterImage Horizon 3D, 3D S, M, Rv1, and Rv2 products infringe the 
asserted claims of the '455 patent and that the technical prong of the 
domestic industry requirement is satisfied with respect to that patent. 
The Commission has determined that the asserted claims of the '455 
patent are not invalid under 35 U.S.C. 102(e), 102(g), 103, and 112, ]] 
1 and 2. The Commission has determined that the asserted claims of the 
'296 patent are not invalid under 35 U.S.C. 116 for improper 
inventorship. The Commission has also determined that the asserted 
claims of the '934 patent are not invalid under 35 U.S.C. 102(g) and 
103.
    The Commission has determined the appropriate remedy is a limited 
exclusion order prohibiting the importation of certain three-
dimensional cinema systems, and components thereof, that infringe the 
asserted claims of the '455, '296, and '934 patents and cease and 
desist orders directed against MasterImage. The Commission has 
determined the public interest factors enumerated in section 337(d)(1) 
and (f)(1) do not preclude issuance of the limited exclusion order or 
cease and desist orders.
    In view of the PTAB's Final Written Decision finding certain claims 
of the '934 patent unpatentable, the Commission has determined to 
suspend the enforcement of the limited exclusion order and cease and 
desist orders as to claims 1, 6, and 11 of the '934 patent pending 
final resolution of the PTAB's Final Written Decision. See 35 U.S.C. 
318(b). The Commission has also determined to set a bond in the amount 
of 100 percent of the entered value of excluded products imported 
during the period of Presidential review (19 U.S.C. 1337(j)). The 
Commission's orders and opinion were delivered to the President and to 
the United States Trade Representative on the day of their issuance.
    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 
part 210).

    By order of the Commission.

    Issued: July 21, 2016.
Lisa R. Barton,
Secretary to the Commission.
[FR Doc. 2016-17711 Filed 7-26-16; 8:45 am]
BILLING CODE 7020-02-P