82 FR 23064 - Certain Automated Teller Machines, ATM Modules, Components Thereof, and Products Containing the Same; Notice of Commission Determination To Review in Part a Final Initial Determination Finding a Violation of Section 337; Schedule for Filing Written Submissions on the Issues Under Review and on Remedy, the Public Interest and Bonding

INTERNATIONAL TRADE COMMISSION

Federal Register Volume 82, Issue 96 (May 19, 2017)

Notice is hereby given that the U.S. International Trade Commission has determined to review in part the final initial determination (``ID'') issued by the presiding administrative law judge (``ALJ'') on March 13, 2017 (served on March 14, 2017), finding a violation of section 337 of the Tariff Act of 1930, as amended, as to the pending patent claims in this investigation.

[Federal Register Volume 82, Number 96 (Friday, May 19, 2017)]
[Notices]
[Pages 23064-23066]
From the Federal Register Online  [www.thefederalregister.org]
[FR Doc No: 2017-10144]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-989]


Certain Automated Teller Machines, ATM Modules, Components 
Thereof, and Products Containing the Same; Notice of Commission 
Determination To Review in Part a Final Initial Determination Finding a 
Violation of Section 337; Schedule for Filing 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 by the presiding administrative law judge 
(``ALJ'') on March 13, 2017 (served on March 14, 2017), finding a 
violation of section 337 of the Tariff Act of 1930, as amended, as to 
the pending patent claims in this investigation.

FOR FURTHER INFORMATION CONTACT: Panyin A. Hughes, Office of the 
General Counsel, U.S. International Trade Commission, 500 E Street SW., 
Washington, DC 20436, telephone 202-205-3042. 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 (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

[[Page 23065]]

this matter can be obtained by contacting the Commission's TDD terminal 
on 202-205-1810.

SUPPLEMENTARY INFORMATION: The Commission instituted this investigation 
on March 14, 2016, based on a complaint filed by Nautilus Hyosung Inc. 
of Seoul, Republic of Korea and Nautilus Hyosung America Inc. of 
Irving, Texas (collectively, ``Nautilus''). 81 FR 13149 (Mar. 14, 
2016). 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 automated teller machines, ATM 
modules, components thereof, and products containing the same by reason 
of infringement of one or more of claims 1-3 and 5 of U.S. Patent No. 
7,891,551 (``the '551 patent''); claims 1 and 6 of U.S. Patent No. 
7,950,655 (``the '655 patent''); claims 1-4, 6, and 7 of U.S. Patent 
No. 8,152,165 (``the '165 patent''); and claims 1-3, 6, 8, and 9 of 
U.S. Patent No. 8,523,235 (``the '235 patent''). Id. The notice of 
investigation named the following respondents: Diebold, Incorporated of 
North Canton, Ohio and Diebold Self-Service Systems of North Canton, 
Ohio (collectively, ``Diebold''). Id. The Office of Unfair Import 
Investigations is not a party to the investigation.
    On June 30, 2016, the ALJ granted a motion by Nautilus to terminate 
the investigation as to all asserted claims of the '551 patent and the 
'165 patent. See Order No. 11 (June 30, 2016). The Commission 
determined not to review the ID. See Notice of non-review (July 27, 
2016).
    On July 21, 2016, the ALJ granted a motion by Nautilus to terminate 
the investigation as to all asserted claims of the '655 patent. See 
Order No. 17 (July 21, 2016). The Commission determined not to review 
the ID. See Notice of non-review (Aug. 16, 2016).
    On March 13, 2017, the ALJ issued his final ID, finding a violation 
of section 337 by Diebold in connection with claims 1-3, 6, 8, and 9 of 
the '235 patent. Specifically, the ALJ found that the Commission has 
subject matter jurisdiction, in rem jurisdiction over the accused 
products, and in personam jurisdiction over Diebold. ID at 9, 104-107. 
The ALJ also found that Nautilus satisfied the importation requirement 
of section 337 (19 U.S.C. 1337(a)(1)(B)). Id. The ALJ further found 
that Diebold's accused products directly infringe asserted claims 1-3, 
6, 8, and 9 of the '235 patent, and that Diebold also contributorily 
infringes those claims. See ID at 111-160, 163-172. The ALJ also found 
that Diebold failed to establish that the asserted claims of the '235 
are invalid for (1) indefiniteness (2) anticipation, or (3) 
obviousness. ID at 232-311. Finally, the ALJ found that Nautilus 
established the existence of a domestic industry that practices the 
asserted patents under 19 U.S.C. 1337(a)(2). See ID at 212.
    The final ID contains the ALJ's recommended determination on remedy 
and bonding. ID at 330-340. The ALJ recommends that in the event the 
Commission finds a violation of section 337, the Commission should 
issue a limited exclusion order prohibiting the importation of 
Diebold's automated teller machines, ATM modules, components thereof, 
and products containing the same that infringe the asserted claims of 
the '235 patent. ID at 335. The ALJ also recommends issuance of cease 
and desist orders based on the presence of Diebold's commercially 
significant inventory in the United States. ID at 338. With respect to 
the amount of bond that should be posted during the period of 
Presidential review, the ALJ recommends that the Commission set a bond 
in the amount of zero (i.e., no bond) during the period of Presidential 
review because Nautilus ``did not attempt any type of price 
comparison.'' ID at 341.
    On March 27, 2017, Diebold filed a petition for review of the ID, 
challenging a number of the ALJ's findings. See Respondents' Petition 
for Review and Contingent Petition for Review. Specifically, Diebold 
questions the ALJ's construction of certain claim limitations, 
infringement findings, and the ALJ's finding that asserted claims are 
not invalid. Id.
    On April 4, 2017, Nautilus filed a response to Diebold's petition 
for review. See Complainants' Response to Respondents' Petition for 
Review.
    Having examined the record of this investigation, including the 
ALJ's final ID, the petition for review, and the response thereto, the 
Commission has determined to review the final ID in part. Specifically, 
the Commission has determined to review (1) the ALJ's finding that the 
accused products and domestic industry products satisfy the claim 
limitation ``a main transfer unit coupled to the bundle separator and 
configured to horizontally transfer the individual sheets of the 
banknotes along a main transfer path'' and (2) the ALJ's finding that 
certain prior art does not disclose the preamble to claim 1: 
``automatic depositing apparatus for automatically depositing a bundle 
of banknotes including at least one cheque.''
    In connection with its review, the Commission is interested in 
responses to the following question:

    1. Do the main transfer paths in the accused and domestic 
industry products deviate sufficiently from horizontal such that 
they do not fall within the claim limitation: ``a main transfer unit 
coupled to the bundle separator and configured to horizontally 
transfer the individual sheets of the banknotes along a main 
transfer path''? Please consider the doctrine of equivalents in your 
answer.

    The parties are requested to brief only the discrete issue above, 
with reference to the applicable law and evidentiary record. The 
parties are not to brief other issues on review, which are adequately 
presented in the parties' existing filings.
    In connection with the final disposition of this investigation, the 
Commission may (1) issue an order that could result in the exclusion of 
the subject articles from entry into the United States, and/or (2) 
issue one or more cease and desist orders that could result in the 
respondent being required to cease and desist from engaging in unfair 
acts in 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 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 U.S. Trade 
Representative, as delegated by the President, has 60 days to approve 
or disapprove the Commission's action. See Presidential Memorandum of 
July

[[Page 23066]]

21, 2005. 70 FR 43251 (July 26, 2005). During this period, the subject 
articles would be entitled to enter the United States under 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 if 
a remedy is ordered.
    Written Submissions: The parties to the investigation are requested 
to file written submissions on the issues identified in this notice. 
Parties to the investigation, interested government agencies, and any 
other interested parties are encouraged to file written submissions on 
the issues of remedy, the public interest, and bonding. Such 
submissions should address the recommended determination by the ALJ on 
remedy and bonding. Complainants are requested to submit proposed 
remedial orders for the Commission's consideration. Complainants are 
also requested to state the date that the patent expires and the HTSUS 
numbers under which the accused products are imported. Complainants are 
further requested to supply the names of known importers of the 
Nautilus products at issue in this investigation. The written 
submissions and proposed remedial orders must be filed no later than 
close of business on May 25, 2017. Reply submissions must be filed no 
later than the close of business on June 1, 2017. Opening submissions 
are limited to 50 pages. Reply submissions are limited to 25 pages. 
Such submissions should address the ALJ's recommended determinations on 
remedy and bonding. No further submissions on any of these issues will 
be permitted unless otherwise ordered by the Commission.
    Persons filing written submissions must file the original document 
electronically on or before the deadlines stated above and submit eight 
true paper copies to the Office of the Secretary by noon the next day 
pursuant to section 210.4(f) of the Commission's Rules of Practice and 
Procedure (19 CFR 210.4(f)). Submissions should refer to the 
investigation number (``Inv. No. 337-TA-989'') in a prominent place on 
the cover page and/or the first page. (See Handbook for Electronic 
Filing Procedures, http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf). Persons with questions 
regarding filing should contact the Secretary (202-205-2000).
    Any person desiring to submit a document to the Commission in 
confidence must request confidential treatment. All such requests 
should be directed to the Secretary to the Commission and must include 
a full statement of the reasons why the Commission should grant such 
treatment. See 19 CFR 201.6. Documents for which confidential treatment 
by the Commission is properly sought will be treated accordingly. All 
information, including confidential business information and documents 
for which confidential treatment is properly sought, submitted to the 
Commission for purposes of this Investigation may be disclosed to and 
used: (i) By the Commission, its employees and Offices, and contract 
personnel (a) for developing or maintaining the records of this or a 
related proceeding, or (b) in internal investigations, audits, reviews, 
and evaluations relating to the programs, personnel, and operations of 
the Commission including under 5 U.S.C. Appendix 3; or (ii) by U.S. 
government employees and contract personnel,\1\ solely for 
cybersecurity purposes. All nonconfidential written submissions will be 
available for public inspection at the Office of the Secretary and on 
EDIS.
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    \1\ All contract personnel will sign appropriate nondisclosure 
agreements.
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    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: May 15, 2017.
William R. Bishop,
Supervisory Hearings and Information Officer.
[FR Doc. 2017-10144 Filed 5-18-17; 8:45 am]
 BILLING CODE 7020-02-P