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)

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, 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.

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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