Notice2021-26719
Certain Electronic Stud Finders, Metal Detectors and Electrical Scanners; Notice of a Commission Determination To Review in Part a Final Initial Determination Finding No Violation of Section 337; Schedule for Filing Written Submissions
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Published
December 10, 2021
Issuing agencies
International Trade Commission
Abstract
Notice is hereby given that the U.S. International Trade Commission has determined to review in part the Administrative Law Judge's ("ALJ") final initial determination ("ID"), issued on October 7, 2021, finding no violation of section 337 in the above- referenced investigation as to three asserted patents. The Commission requests briefing from the parties on certain issues under review. The Commission also requests briefing from the parties, interested government agencies, and other interested persons on remedy, the public interest, and bonding, as indicated in this notice.
Full Text
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<title>Federal Register, Volume 86 Issue 235 (Friday, December 10, 2021)</title>
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[Federal Register Volume 86, Number 235 (Friday, December 10, 2021)]
[Notices]
[Pages 70529-70532]
From the Federal Register Online via the Government Publishing Office [<a href="http://www.gpo.gov">www.gpo.gov</a>]
[FR Doc No: 2021-26719]
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INTERNATIONAL TRADE COMMISSION
[Investigation No. 337-TA-1221]
Certain Electronic Stud Finders, Metal Detectors and Electrical
Scanners; Notice of a Commission Determination To Review in Part a
Final Initial Determination Finding No Violation of Section 337;
Schedule for Filing Written Submissions
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 Administrative Law
Judge's (``ALJ'') final initial determination (``ID''), issued on
October 7, 2021, finding no violation of section 337 in the above-
referenced investigation as to three asserted patents. The Commission
[[Page 70530]]
requests briefing from the parties on certain issues under review. The
Commission also requests briefing from the parties, interested
government agencies, and other interested persons on remedy, the public
interest, and bonding, as indicated in this notice.
FOR FURTHER INFORMATION CONTACT: Benjamin S. Richards, Esq., Office of
the General Counsel, U.S. International Trade Commission, 500 E Street
SW, Washington, DC 20436, telephone (202) 708-5453. Copies of non-
confidential documents filed in connection with this investigation may
be viewed on the Commission's electronic docket (EDIS) at <a href="https://edis.usitc.gov">https://edis.usitc.gov</a>. For help accessing EDIS, please email
<a href="/cdn-cgi/l/email-protection#2267666b71116a474e526257514b56410c454d54"><span class="__cf_email__" data-cfemail="1f5a5b564c2c577a736f5f6a6c766b7c31787069">[email protected]</span></a>. General information concerning the Commission may
also be obtained by accessing its internet server at <a href="https://www.usitc.gov">https://www.usitc.gov</a>. 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: On October 5, 2020, the Commission
instituted this investigation based on a complaint filed on behalf of
Zircon Corporation of Campbell, California (``Zircon''). 85 FR 62758-59
(Oct. 5, 2020). The complaint alleged violations of section 337 of the
Tariff Act of 1930, as amended, 19 U.S.C. 1337, based upon the
importation into the United States, the sale for importation, and the
sale within the United States after importation of certain electronic
stud finders, metal detectors, and electrical scanners by reason of
infringement of one or more claims of U.S. Patent Nos. 6,989,662 (``the
'662 patent''), 7,148,703 (``the '703 patent''), 8,604,771 (``the '771
patent''), and 9,475,185 (``the '185 patent''). Id. at 62759. The
Commission's notice of investigation named as respondents Stanley Black
& Decker, Inc. of New Britain, Connecticut, and Black & Decker (U.S.),
Inc. of Towson, Maryland (together, ``Respondents''). Id. The Office of
Unfair Import Investigations is not participating in this
investigation. Id.
On April 22, 2021, the ALJ issued a claim construction order based
on briefs submitted by the parties. See Order No. 20. On June 15, 2021,
the ALJ granted a motion for summary determination of no infringement
concerning the '703 patent, which terminated that patent from the
investigation. See Order No. 27, unreviewed by Comm'n Notice (July 15,
2021).
On October 7, 2021, the ALJ issued the subject ID on violation,
which found no violation of section 337 as to any claim of the
remaining asserted patents by Respondents. Also, on October 7, 2021,
the ALJ issued his recommended determination (``RD'') on remedy and
bonding. The ALJ recommended, upon a finding of violation, that the
Commission issue a limited exclusion order and impose a bond in the
amount of zero percent of the entered value of any covered products
imported during the period of Presidential review.
On October 19, 2021, Zircon and Respondents submitted petitions for
review of the ID. On October 27, 2021, Zircon and Respondents submitted
responses to the petitions.
Having examined the record of this investigation, including the ID,
the petitions for review, and the responses thereto, the Commission has
determined to review the ID with respect to (1) the ID's infringement
findings for the '662 patent; (2) the ID's findings on the technical
prong of the domestic industry requirement for the '662 patent; (3) the
ID's obviousness findings for the '662 patent; (4) the ID's
infringement findings for the '771 patent; (5) the ID's anticipation
and obviousness findings for the '771 patent; (6) the ID's claim
construction and infringement findings for the '185 patent; (7) the
ID's anticipation and obviousness findings for the '185 patent; and (8)
the ID's findings on the economic prong of the domestic industry
requirement. The Commission has determined not to review the remainder
of the ID.
In connection with its review, Commission requests responses to the
following questions. The parties are requested to brief their positions
with reference to the applicable law and the existing evidentiary
record.
1. The ID found that the ``calibration value'' obtained during the
calibration mode of claim 1 of the '662 patent must be a reference
value for future measurements. Explain why or why not the [redacted]
value in the accused products is a reference value for either a
[redacted] value or a [redacted] value in those products. Include in
your answer an explanation of whether [redacted] values and/or
[redacted] values are ``future measurements'' as that phrase is used by
the ID.
2. Was the issue of whether the [redacted] value is a reference
value for either [redacted] values or [redacted] values raised before
the presiding ALJ? Provide citations to the record identifying all such
places where that issue was presented to the ALJ.
3. If the Commission finds that the [redacted] value in the accused
products practices the ``calibration value'' limitation of claim 1,
what effect, if any, would that finding have on the remainder of the
ID's findings?
4. Claim 12 of the '662 patent includes the limitation ``a
comparator adapted to compare the first memory location to the second
memory location, thereby determining if the calibration value
represents a value sensed over or near the stud, wherein the comparator
is operationally coupled to the first and second memories.'' Within the
meaning of that limitation, are the values [redacted] in the accused
products stored in either of the claimed ``first memory location'' or
``second memory location''? Support your answer with citations to
record evidence.
5. Zircon asserts, through its expert's testimony, that the
[redacted] is a comparison of the claimed first and second memory
locations. Identify all record evidence supporting or undermining the
conclusion that the value [redacted] is stored in the claimed first or
second memory location.
6. Identify any evidence of record, whether direct or
circumstantial, that shows that Respondents intended to induce their
customers to infringe the '622 patent through use of the accused
products. Indicate, with citations to the posthearing briefing, whether
any evidence of intent you identify was presented to the ALJ.
7. Identify any evidence of record establishing that Respondents
possessed a good-faith belief that the users of their accused products
did not infringe the '622 patent through use of those accused products.
Indicate, with citations to the posthearing briefing, whether any
evidence of such a good faith belief was presented to the ALJ.
8. Does the record of this investigation include any findings on
the level of ordinary skill in the art with respect to the '662 patent?
Identify where in the record any such findings are located. If the
record does not include findings on the level of ordinary skill in the
art with respect to the '662 patent, explain what the level of ordinary
skill art for the '662 patent is. Include any citations to record
evidence that support your explanation.
9. Explain whether Respondents have shown that the asserted claims
of the '662 patent are obvious according to the analysis laid out in
KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398 (2007). Address
specifically the effect of the level of ordinary skill in the art for
the '662 patent on that analysis.
10. In the context of the '771 and '185 patents, does the evidence
of record support the conclusion that the top edge of the Zircon 1
prior art device resists rotational movement of the device, or does not
resist rotational movement of the device, when held by a user?
[[Page 70531]]
Identify the evidence of record that supports your position.
11. Claim 14 of the '185 patent includes the term ``gripping
means.'' Did the parties agree to construe that term as a means-plus
function term? If the parties did so agree, what is the term's
corresponding function and what is the clearly linked structure in the
specification? If the parties did not so agree, what construction, if
any, did the parties propose for this term? Identify where in the
record, if anywhere, the parties addressed the construction of this
term. If the parties did not previously propose a construction for this
term, how should it be construed? If you contend that it should be
construed according to its plain and ordinary meaning, identify what
that plain and ordinary meaning is.
12. Please describe with particularity and citation to the record
the activities for which Zircon claims expenditures in: (a) Plant and
equipment, (b) labor or capitol, and (c) research and development
related to exploitation of the patents at issue. Please provide these
values separately for each patent that complainant alleges protects its
DI products. Identify where in the record, if anywhere, these
activities were presented to the ALJ in support of Zircon's domestic
industry contentions.
13. Please state the metric(s) or method(s) by which Zircon seeks
to establish that its expenditures falling under section 337(a)(3)(A),
(B), and (C) are significant or substantial, in relation to the DI
products protected by each patent and state why these measures provide
an appropriate basis for assessing whether the claimed expenditures
constitute ``significant'' or ``substantial'' investments in plant and
equipment, labor or capitol, and/or R&D in the United States. Please
cite relevant Commission precedent as applicable. Identify which of
these bases for assessing whether Zircon's investments are
``significant'' or ``substantial'' were presented to the ALJ and which,
if any, were not. For arguments presented to the ALJ, include citations
to the posthearing briefing where those arguments were raised. For
arguments not presented to the ALJ, explain whether those arguments
could have been presented to the ALJ.
14. Does the evidence of record support the cost of goods analysis
Zircon presents in its petition for review?
15. Discuss cases where the Commission and/or the Federal Circuit
have included, as part of a domestic industry's investments in plant
and equipment, labor or capital and exploitation of a patent or other
IP right, the complainant's expenditures related to sales, marketing,
and/or administrative expenditures and cases where they have not.
Please explain whether and why the Commission should or should not
consider Zircon's sales, marketing, and/or administrative expenditures
in this investigation.
16. Do the activities Zircon conducts in the United States support
the conclusion that it is more than a ``mere importer''?
17. How much R&D does Zircon conduct abroad relating to (a) the
asserted patents and (b) the DI products that Zircon alleges are
protected by each asserted patent? What portion of total R&D in these
categories are conducted in the United States? How, if at all, does
this support the existence of a domestic industry in the United States.
18. Is there a nexus between Zircon's investments in research and
development and each of the three remaining patents asserted in this
investigation? Identify where, if anywhere, in the posthearing briefing
before the ALJ this issue was addressed.
19. Does section 337(a)(2)-(3) require a patent-by-patent analysis
of the significance or substantiality of a complainant's domestic
industry investments and activities? Identify any precedents from the
Commission and/or from the U.S. Court of Appeals for the Federal
Circuit that support your position.
20. Concerning the economic prong of the domestic industry
requirement, did Zircon advance a patent-by-patent analysis of the
significance or substantiality of its investments for each of the
asserted patents before the ALJ? Did the ID conduct such a patent-by-
patent analysis? Provide any citations to the posthearing briefing
before the ALJ and to the ID that support your answer.
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
statute authorizes issuance of, inter alia, (1) an exclusion order that
could result in the exclusion of the subject articles from entry into
the United States; and/or (2) cease and desist orders that could result
in the respondents 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, Comm'n Op.
at 7-10 (Dec. 1994).
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 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.
In their initial submissions, Complainant is also requested to
identify the remedy sought and Complainant is requested to submit
proposed remedial orders for the Commission's consideration.
Complainant is further requested to provide the HTSUS subheadings under
which the accused products are imported, and to supply the
identification information for all known importers of the products at
issue in this investigation. The initial written submissions and
proposed remedial orders must be filed no later than close
[[Page 70532]]
of business on December 20, 2021. Reply submissions must be filed no
later than the close of business on January 3, 2022. Opening
submissions are limited to 150 pages. Reply submissions are limited to
150 pages. No further submissions on 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. The
Commission's paper filing requirements in 19 CFR 210.4(f) are currently
waived. 85 FR 15798 (March 19, 2020). Submissions should refer to the
investigation number (Inv. No. 337-TA-1221) in a prominent place on the
cover page and/or the first page. (See Handbook for Electronic Filing
Procedures, <a href="https://www.usitc.gov/documents/handbook_on_filing_procedures.pdf">https://www.usitc.gov/documents/handbook_on_filing_procedures.pdf</a>). 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 by marking each document
with a header indicating that the document contains confidential
information. This marking will be deemed to satisfy the request
procedure set forth in Rules 201.6(b) and 210.5(e)(2) (19 CFR 201.6(b)
& 210.5(e)(2)). Documents for which confidential treatment by the
Commission is properly sought will be treated accordingly. A redacted
non-confidential version of the document must also be filed
simultaneously with any confidential filing. 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, solely for cybersecurity purposes.
All contract personnel will sign appropriate nondisclosure agreements.
All nonconfidential written submissions will be available for public
inspection on EDIS.
The Commission vote for this determination took place on December
6, 2021.
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
210).
By order of the Commission.
Issued: December 6, 2021.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2021-26719 Filed 12-9-21; 8:45 am]
BILLING CODE 7020-02-P
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