82 FR 33513 - Certain Automated Teller Machines, ATM Modules, Components Thereof, and Products Containing the Same 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 82, Issue 138 (July 20, 2017)

Page Range		33513-33514
FR Document		2017-15200

Notice is hereby given that the U.S. International Trade Commission has found a violation of section 337 in this investigation and has issued a limited exclusion order prohibiting importation of infringing automated teller machines, ATM modules, components thereof, and products containing the same, as well as issued cease and desist orders directed to Diebold Nixdorf, Incorporated and Diebold Self- Service Systems both of North Canton, Ohio. The investigation is terminated.

Federal Register, Volume 82 Issue 138 (Thursday, July 20, 2017)

[Federal Register Volume 82, Number 138 (Thursday, July 20, 2017)]
[Notices]
[Pages 33513-33514]
From the Federal Register Online  [www.thefederalregister.org]
[FR Doc No: 2017-15200]


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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 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 in this investigation 
and has issued a limited exclusion order prohibiting importation of 
infringing automated teller machines, ATM modules, components thereof, 
and products containing the same, as well as issued cease and desist 
orders directed to Diebold Nixdorf, Incorporated and Diebold Self-
Service Systems both of North Canton, Ohio. The investigation is 
terminated.

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 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 Order No. 11. 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 
Order No. 17. See Notice of non-review (Aug. 16, 2016).
    On February 6, 2017, the ALJ granted a motion to amend the 
complaint and notice of investigation to reflect a corporate name 
change of Diebold, Incorporated to Diebold Nixdorf, Incorporated. See 
Order No. 32 (Feb. 6, 2017). The Commission determined not to review 
Order No. 32.
    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 ID finds that the

[[Page 33514]]

Commission has subject matter jurisdiction, in rem jurisdiction over 
the accused products, and in personam jurisdiction over Diebold. ID at 
9, 104-107. The ID finds that Nautilus satisfied the importation 
requirement of section 337 (19 U.S.C. 1337(a)(1)(B)). Id. The ID finds 
that the accused products directly infringe asserted claims 1-3, 6, 8, 
and 9 of the '235 patent, and that Diebold contributorily infringes 
those claims. See ID at 111-160, 163-172. The ID, however, finds that 
Diebold failed to establish that the asserted claims of the '235 patent 
are invalid for indefiniteness, anticipation, or obviousness. ID at 
232-311. Finally, the ID finds that Nautilus established the existence 
of a domestic industry that practices the asserted patent under 19 
U.S.C. 1337(a)(2). See ID at 212.
    The ALJ's recommended determination on remedy and bonding issued 
concurrently with the final ID. RD at 330-40. 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. RD 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. RD 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.'' RD at 341.
    On March 27, 2017, Diebold filed a petition for review of the ID. 
On April 4, 2017, Nautilus filed a response to Diebold's petition for 
review.
    On May 15, 2017, the Commission determined to review the final ID 
in part and requested the parties to brief certain issues. See 82 FR 
23064-66 (May 19, 2017). On May 25, 2017, the parties filed submissions 
to the Commission's question and on remedy, the public interest, and 
bonding. On June 1, 2017, the parties filed reply submissions.
    Having examined the record of this investigation, including the 
final ID, and the parties' submissions, the Commission has determined 
to (1) affirm the ALJ's finding that the accused products and domestic 
industry products satisfy the claim limitation ``horizontally transfer 
sheets along the main transfer path'' and (2) reverse 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.'' The Commission adopts the 
ID's findings to the extent they are not inconsistent with the 
Commission opinion issued herewith.
    Having found a violation of section 337 in this investigation, the 
Commission has determined that the appropriate form of relief is: (1) A 
limited exclusion order prohibiting the unlicensed entry of automated 
teller machines, ATM modules, components thereof, and products 
containing the same that infringe one or more of claims 1-3, 6, 8, and 
9 of the '235 patent that are manufactured on or behalf of, or imported 
on or behalf of Diebold or any of their affiliated companies, parents, 
subsidiaries, or other related business entities, or their successors 
or assigns, except under license of the patent owner or as provided by 
law, and except for service or repair articles imported for use in 
servicing or repairing automated teller machines, ATM modules, 
components thereof, and products containing the same, for identical 
articles that were imported as of the date of this Order. This 
exception does not permit the importation of automated teller machines 
to replace such articles that were previously imported; and (2) cease 
and desist orders prohibiting Diebold from conducting any of the 
following activities in the United States: Importing, selling, 
marketing, advertising, distributing, transferring (except for 
exportation), and soliciting U.S. agents or distributors for, automated 
teller machines, ATM modules, components thereof, and products 
containing the same covered by one or more of claims 1-3, 6, 8, and 9 
of the '235 patent. The proposed cease and desist orders include the 
following exemptions: if in a written instrument, the owner of the 
patents authorizes or licenses such specific conduct, such specific 
conduct is related to the importation or sale of covered products by or 
for the United States, or such specific conduct is related to service 
or repair articles imported for use in servicing or repairing automated 
teller machines, ATM modules, components thereof, and products 
containing the same, for identical articles that were imported as of 
the date of this Order. This exception does not permit the importation 
of automated teller machines to replace such articles that were 
previously imported.
    The Commission has also determined that the public interest factors 
enumerated in section 337(d) and (f) (19 U.S.C. 1337(d) and (f)) do not 
preclude issuance of the limited exclusion order or cease and desist 
orders. Finally, the Commission has determined that a bond in the 
amount of zero is required to permit temporary importation during the 
period of Presidential review (19 U.S.C. 1337(j)) of automated teller 
machines, ATM modules, components thereof, and products containing the 
same that are subject to the remedial orders. 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 14, 2017.
Lisa R. Barton,
Secretary to the Commission.
[FR Doc. 2017-15200 Filed 7-19-17; 8:45 am]
 BILLING CODE 7020-02-P

Federal Register / Vol. 82, No. 138 / Thursday, July 20, 2017 / Notices 33513

This notice corrects the minimum Caddo Nation of Oklahoma; Cheyenne may be viewed on the Commission’s
number of individuals and number of and Arapaho Tribes, Oklahoma electronic docket (EDIS) at https://
associated funerary objects published in (previously listed as the Cheyenne- edis.usitc.gov. Hearing-impaired
a Notice of Inventory Completion in the Arapaho Tribes of Oklahoma); persons are advised that information on
Federal Register (66 FR 32845–32846, Comanche Nation, Oklahoma; Kiowa this matter can be obtained by
June 18, 2001). A re-evaluation of the Indian Tribe of Oklahoma; Pawnee contacting the Commission’s TDD
inventory resulted in an increase in the Nation of Oklahoma; Wichita and terminal on 202–205–1810.
minimum number of individuals Affiliated Tribes (Wichita, Keechi, Waco SUPPLEMENTARY INFORMATION: The
removed from the Footprint site. The & Tawakonie), Oklahoma; and the Commission instituted this investigation
total number of associated funerary Cohuiltecan Nation, an Indian group on March 14, 2016, based on a
objects has been found to be incorrectly that is not federally recognized, that this complaint filed by Nautilus Hyosung
calculated, though all funerary objects notice has been published. Inc. of Seoul, Republic of Korea and
are accounted for. Transfer of control of Dated: May 30, 2017. Nautilus Hyosung America Inc. of
the items in this correction notice has Melanie O’Brien, Irving, Texas (collectively, ‘‘Nautilus’’).
not occurred. Manager, National NAGPRA Program. 81 FR 13149 (Mar. 14, 2016). The
Correction [FR Doc. 2017–15217 Filed 7–19–17; 8:45 am] complaint alleges violations of section
BILLING CODE 4312–52–P
337 of the Tariff Act of 1930, as
In the Federal Register (66 FR 32845, amended (19 U.S.C. 1337), in the
June 18, 2001), column 2, paragraph 2, importation into the United States, the
sentence 1 is corrected by substituting sale for importation, and the sale within
the following sentence: INTERNATIONAL TRADE
COMMISSION the United States after importation of
In 1964, human remains representing a certain automated teller machines, ATM
minimum of 43 individuals were recovered [Investigation No. 337–TA–989] modules, components thereof, and
during legally-authorized excavation by F.E. products containing the same by reason
Green of Texas Tech University at the Certain Automated Teller Machines,
Footprint site, then under the management of
of infringement of one or more of claims
ATM Modules, Components Thereof, 1–3 and 5 of U.S. Patent No. 7,891,551
the U.S. Department of the Interior, Bureau and Products Containing the Same
of Reclamation. (‘‘the ’551 patent’’); claims 1 and 6 of
Commission’s Final Determination U.S. Patent No. 7,950,655 (‘‘the ’655
In the Federal Register (66 FR 32845, Finding a Violation of Section 337; patent’’); claims 1–4, 6, and 7 of U.S.
June 18, 2001), column 3, paragraph 2, Issuance of a Limited Exclusion Order Patent No. 8,152,165 (‘‘the ’165 patent’’);
sentences 1 and 2 are corrected by and Cease and Desist Orders; and claims 1–3, 6, 8, and 9 of U.S.
substituting the following sentences: Termination of the Investigation Patent No. 8,523,235 (‘‘the ’235 patent’’).
Based on the above-mentioned AGENCY: U.S. International Trade Id. The notice of investigation named
information, the superintendent of Lake the following respondents: Diebold,
Meredith National Recreation Area has Commission.
determined that, pursuant to 43 CFR 10.2 ACTION: Notice. Incorporated of North Canton, Ohio and
(d)(1), the human remains listed above Diebold Self-Service Systems of North
represent the physical remains of 49 SUMMARY: Notice is hereby given that Canton, Ohio (collectively, ‘‘Diebold’’).
individuals of Native American ancestry. The the U.S. International Trade Id. The Office of Unfair Import
superintendent of Lake Meredith National Commission has found a violation of Investigations is not a party to the
Recreation Area also has determined that, section 337 in this investigation and has investigation.
pursuant to 43 CFR 10.2 (d)(2), the 347 issued a limited exclusion order On June 30, 2016, the ALJ granted a
objects listed above are reasonably believed prohibiting importation of infringing motion by Nautilus to terminate the
to have been placed with or near individual automated teller machines, ATM
human remains at the time of death or later investigation as to all asserted claims of
as a part of a death rite or ceremony. modules, components thereof, and the ’551 patent and the ’165 patent. See
products containing the same, as well as Order No. 11 (June 30, 2016). The
Additional Requestors and Disposition issued cease and desist orders directed Commission determined not to review
Lineal descendants or representatives to Diebold Nixdorf, Incorporated and Order No. 11. See Notice of non-review
of any Indian Tribe or Native Hawaiian Diebold Self-Service Systems both of (July 27, 2016).
organization not identified in this notice North Canton, Ohio. The investigation is On July 21, 2016, the ALJ granted a
that wish to request transfer of control terminated. motion by Nautilus to terminate the
of these human remains and associated FOR FURTHER INFORMATION CONTACT: investigation as to all asserted claims of
funerary objects should submit a written Panyin A. Hughes, Office of the General the ’655 patent. See Order No. 17 (July
request with information in support of Counsel, U.S. International Trade 21, 2016). The Commission determined
the request to Robert Maguire, Commission, 500 E Street SW., not to review Order No. 17. See Notice
Superintendent, Lake Meredith National Washington, DC 20436, telephone 202– of non-review (Aug. 16, 2016).
Recreation Area, P.O. Box 1460, Fritch, 205–3042. Copies of non-confidential On February 6, 2017, the ALJ granted
TX 79036, telephone (806) 857–3151, documents filed in connection with this a motion to amend the complaint and
email robert_maguire@nps.gov, by investigation are or will be available for notice of investigation to reflect a
August 21, 2017. After that date, if no inspection during official business corporate name change of Diebold,
asabaliauskas on DSKBBXCHB2PROD with NOTICES

additional requestors have come hours (8:45 a.m. to 5:15 p.m.) in the Incorporated to Diebold Nixdorf,
forward, transfer of control of the Office of the Secretary, U.S. Incorporated. See Order No. 32 (Feb. 6,
human remains and associated funerary International Trade Commission, 500 E 2017). The Commission determined not
objects to the Kiowa Indian Tribe of Street SW., Washington, DC 20436, to review Order No. 32.
Oklahoma, and the Wichita & Affiliated telephone 202–205–2000. General On March 13, 2017, the ALJ issued his
Tribes (Wichita, Keechi, Waco & information concerning the Commission final ID, finding a violation of section
Tawakonie), Oklahoma, may proceed. may also be obtained by accessing its 337 by Diebold in connection with
Lake Meredith National Recreation Internet server (https://www.usitc.gov). claims 1–3, 6, 8, and 9 of the ’235
Area is responsible for notifying the The public record for this investigation patent. Specifically, the ID finds that the

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33514 Federal Register / Vol. 82, No. 138 / Thursday, July 20, 2017 / Notices

Commission has subject matter ALJ’s finding that certain prior art does U.S.C. 1337(d) and (f)) do not preclude
jurisdiction, in rem jurisdiction over the not disclose the preamble to claim 1: issuance of the limited exclusion order
accused products, and in personam ‘‘Automatic depositing apparatus for or cease and desist orders. Finally, the
jurisdiction over Diebold. ID at 9, 104– automatically depositing a bundle of Commission has determined that a bond
107. The ID finds that Nautilus satisfied banknotes including at least one in the amount of zero is required to
the importation requirement of section cheque.’’ The Commission adopts the permit temporary importation during
337 (19 U.S.C. 1337(a)(1)(B)). Id. The ID ID’s findings to the extent they are not the period of Presidential review (19
finds that the accused products directly inconsistent with the Commission U.S.C. 1337(j)) of automated teller
infringe asserted claims 1–3, 6, 8, and 9 opinion issued herewith. machines, ATM modules, components
of the ’235 patent, and that Diebold Having found a violation of section thereof, and products containing the
contributorily infringes those claims. 337 in this investigation, the same that are subject to the remedial
See ID at 111–160, 163–172. The ID, Commission has determined that the orders. The Commission’s orders and
however, finds that Diebold failed to appropriate form of relief is: (1) A opinion were delivered to the President
establish that the asserted claims of the limited exclusion order prohibiting the and to the United States Trade
’235 patent are invalid for unlicensed entry of automated teller Representative on the day of their
indefiniteness, anticipation, or machines, ATM modules, components issuance.
obviousness. ID at 232–311. Finally, the thereof, and products containing the The authority for the Commission’s
ID finds that Nautilus established the same that infringe one or more of claims determination is contained in section
existence of a domestic industry that 1–3, 6, 8, and 9 of the ’235 patent that 337 of the Tariff Act of 1930, as
practices the asserted patent under 19 are manufactured on or behalf of, or amended (19 U.S.C. 1337), and in Part
U.S.C. 1337(a)(2). See ID at 212. imported on or behalf of Diebold or any 210 of the Commission’s Rules of
The ALJ’s recommended of their affiliated companies, parents, Practice and Procedure (19 CFR part
determination on remedy and bonding subsidiaries, or other related business 210).
issued concurrently with the final ID. entities, or their successors or assigns, By order of the Commission.
RD at 330–40. The ALJ recommends that except under license of the patent
Issued: July 14, 2017.
in the event the Commission finds a owner or as provided by law, and except
violation of section 337, the for service or repair articles imported for Lisa R. Barton,
Commission should issue a limited use in servicing or repairing automated Secretary to the Commission.
exclusion order prohibiting the teller machines, ATM modules, [FR Doc. 2017–15200 Filed 7–19–17; 8:45 am]
importation of Diebold’s automated components thereof, and products BILLING CODE 7020–02–P
teller machines, ATM modules, containing the same, for identical
components thereof, and products articles that were imported as of the
containing the same that infringe the date of this Order. This exception does INTERNATIONAL TRADE
asserted claims of the ’235 patent. RD at not permit the importation of automated COMMISSION
335. The ALJ also recommends issuance teller machines to replace such articles [USITC SE–17–030]
of cease and desist orders based on the that were previously imported; and (2)
presence of Diebold’s commercially cease and desist orders prohibiting Sunshine Act Meeting
significant inventory in the United Diebold from conducting any of the
States. RD at 338. With respect to the following activities in the United States: AGENCY HOLDING THE MEETING: United
amount of bond that should be posted Importing, selling, marketing, States International Trade Commission.
during the period of Presidential review, advertising, distributing, transferring TIME AND DATE: July 27, 2017 at 11:00
the ALJ recommends that the (except for exportation), and soliciting a.m.
Commission set a bond in the amount U.S. agents or distributors for, PLACE: Room 101, 500 E Street SW.,
of zero (i.e., no bond) during the period automated teller machines, ATM Washington, DC 20436, Telephone:
of Presidential review because Nautilus modules, components thereof, and (202) 205–2000.
‘‘did not attempt any type of price products containing the same covered STATUS: Open to the public.
comparison.’’ RD at 341. by one or more of claims 1–3, 6, 8, and MATTERS TO BE CONSIDERED:
On March 27, 2017, Diebold filed a 9 of the ’235 patent. The proposed cease 1. Agendas for future meetings: None.
petition for review of the ID. On April and desist orders include the following 2. Minutes.
4, 2017, Nautilus filed a response to exemptions: if in a written instrument, 3. Ratification List.
Diebold’s petition for review. the owner of the patents authorizes or 4. Vote in Inv. Nos. 701–TA–563 and
On May 15, 2017, the Commission licenses such specific conduct, such 731–TA–1331–1332 (Final) (Finished
determined to review the final ID in part specific conduct is related to the Carbon Steel Flanges from India and
and requested the parties to brief certain importation or sale of covered products Italy). The Commission is currently
issues. See 82 FR 23064–66 (May 19, by or for the United States, or such scheduled to complete and file its
2017). On May 25, 2017, the parties specific conduct is related to service or determinations and views of the
filed submissions to the Commission’s repair articles imported for use in Commission by August 14, 2017.
question and on remedy, the public servicing or repairing automated teller 5. Vote in Inv. No. 731–TA–669
interest, and bonding. On June 1, 2017, machines, ATM modules, components (Fourth Review) (Cased Pencils from
the parties filed reply submissions. thereof, and products containing the China). The Commission is currently
asabaliauskas on DSKBBXCHB2PROD with NOTICES

Having examined the record of this same, for identical articles that were scheduled to complete and file its
investigation, including the final ID, and imported as of the date of this Order. determination and views of the
the parties’ submissions, the This exception does not permit the Commission by August 17, 2017.
Commission has determined to (1) importation of automated teller 6. Outstanding action jackets: None.
affirm the ALJ’s finding that the accused machines to replace such articles that In accordance with Commission
products and domestic industry were previously imported. policy, subject matter listed above, not
products satisfy the claim limitation The Commission has also determined disposed of at the scheduled meeting,
‘‘horizontally transfer sheets along the that the public interest factors may be carried over to the agenda of the
main transfer path’’ and (2) reverse the enumerated in section 337(d) and (f) (19 following meeting.

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Document Created: 2017-07-20 06:58:00
Document Modified: 2017-07-20 06:58:00

Category		Regulatory Information
Collection		Federal Register
sudoc Class		AE 2.7: GS 4.107: AE 2.106:
Publisher		Office of the Federal Register, National Archives and Records Administration
Section		Notices
Action		Notice.
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 this matter can be obtained by contacting the Commission's TDD terminal on 202-205- 1810.
FR Citation		82 FR 33513