Notice2022-10304
Certain Polycrystalline Diamond Compacts and Articles Containing Same; Commission Determination To Review in Part a Final Initial Determination Finding No Violation of Section 337; Request for Written Submissions on the Issues Under Review and on Remedy, the Public Interest, and Bonding
Primary source
Metadata and text below are from the Federal Register, a public-domain U.S. government work. Always verify the official published version before relying on it for any legal matter.
Published
May 13, 2022
Issuing agencies
International Trade Commission
Abstract
Notice is hereby given that the U.S. International Trade Commission has determined to review in part a final initial determination ("ID") issued by the presiding administrative law judge ("ALJ"), finding no violation of section 337 of the Tariff Act of 1930. The Commission requests written submissions from the parties on the issues under review and submissions from the parties, interested government agencies, and interested persons on the issues of remedy, the public interest, and bonding, under the schedule set forth below.
Full Text
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<title>Federal Register, Volume 87 Issue 93 (Friday, May 13, 2022)</title>
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[Federal Register Volume 87, Number 93 (Friday, May 13, 2022)]
[Notices]
[Pages 29375-29377]
From the Federal Register Online via the Government Publishing Office [<a href="http://www.gpo.gov">www.gpo.gov</a>]
[FR Doc No: 2022-10304]
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INTERNATIONAL TRADE COMMISSION
[Investigation No. 337-TA-1236]
Certain Polycrystalline Diamond Compacts and Articles Containing
Same; Commission Determination To Review in Part a Final Initial
Determination Finding No Violation of Section 337; Request for 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 a final initial
determination (``ID'') issued by the presiding administrative law judge
(``ALJ''), finding no violation of section 337 of the Tariff Act of
1930. The Commission requests written submissions from the parties on
the issues under review and submissions from the parties, interested
government agencies, and interested persons on the issues of remedy,
the public interest, and bonding, under the schedule set forth below.
FOR FURTHER INFORMATION CONTACT: Cathy Chen, Office of the General
Counsel, U.S. International Trade Commission, 500 E Street SW,
Washington, DC 20436, telephone 202-205-2392. 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#71343538224239141d013104021805125f161e07"><span class="__cf_email__" data-cfemail="d297969b81e19ab7bea292a7a1bba6b1fcb5bda4">[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: The Commission instituted this investigation
on December 29, 2020, based on a complaint filed by US Synthetic
Corporation (``USS'') of Orem, Utah. 85 FR 85661 (Dec. 29, 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 polycrystalline diamond compacts and
articles containing same by reason of infringement of certain claims of
U.S. Patent No. 10,507,565 (``the '565 patent''), U.S. Patent No.
10,508,502 (``the '502 patent''), U.S. Patent No. 8,616,306 (``the '306
patent''), U.S. Patent No. 9,932,274 (``the '274 patent''), and U.S.
Patent No. 9,315,881 (``the '881 patent''). Id. The complaint further
alleged that an industry in the United States exists as required by
section 337. Id. The notice of investigation named as respondents: SF
Diamond Co., Ltd., and SF Diamond USA, Inc. (collectively, ``SF
Diamond''); Element Six Abrasives Holdings Ltd., Element Six Global
Innovation Centre, Element Six GmbH, Element Six Limited, Element Six
Production (Pty) Limited, Element Six Hard Materials (Wuxi) Co.
Limited, Element Six Trading (Shanghai) Co., Element Six Technologies
US Corporation, Element Six US Corporation, ServSix US, and Synergy
Materials Technology Limited (collectively, ``Element Six''); Iljin
Diamond Co., Ltd., Iljin Holdings Co., Ltd., Iljin USA Inc., Iljin
Europe GmbH, Iljin Japan Co., and Ltd., Iljin China Co., Ltd.
(collectively, ``Iljin''); Henan Jingrui New Material Technology Co.,
Ltd. (``Jingrui''); Zhenzghou New Asia Superhard Materials Composite
Co., Ltd., and International Diamond Services, Inc. (collectively,
``New Asia/IDS''); CR Gems Superabrasives Co., Ltd. (``CR Gems''); FIDC
Beijing Fortune International Diamond (``FIDC''); Fujian Wanlong
Superhard Material Technology Co., Ltd. (``Wanlong''); Zhujau Juxin
Technology (``Juxin''); \1\ and Shenzhen Haimingrun Superhard Materials
Co., Ltd. (``Haimingrun'') (together, ``the Respondents''). Id. at
85662. The Office of Unfair Import Investigations is not participating
in the investigation. Id.
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\1\ On February 8, 2021, Guangdong Juxin Materials Technology
Co., Inc. was substituted in place of Zhuhai Juxin Technology. ID at
1 n.1 (citing Order No. 8).
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USS moved to terminate the investigation as to Element Six and FIDC
over the course of the investigation. All of the motions were granted
by non-final IDs, and the Commission did not review them. ID at 2
(citing Order Nos. 6, 8, 10, and 16). Thus, the only remaining
respondents are Iljin, SF Diamond, New Asia/IDS, Haimingrun, Juxin, CR
Gems, Jingrui, and Wanlong.
USS also moved for partial termination of the investigation with
respect to certain asserted patents and claims. All the motions were
granted by non-final IDs, and the Commission did not review them. ID at
3 (citing Order Nos. 26, 32, and 57). As such, the '274 and '881
patents have been terminated from the investigation. Claims 1, 2, 4, 6,
and 18 of the '565 patent; claims 1, 2, 11, 15, and 21 of the '502
patent; and claim 15 of the '306 patent remain in this investigation
(collectively, ``the Asserted Patents'').
On May 24, 2021, Order No. 23 issued, which construed certain claim
terms of the asserted patents. An evidentiary hearing was held on
October 18-22, 2021.
On March 3, 2022, the ALJ issued his final ID, finding no violation
of section 337 by Respondents. Specifically, the ID found at least one
accused product infringes all asserted claims of the Asserted Patents,
but those claims are invalid under 35 U.S.C. 101 and/or 102. The ID
also found that Complainants have shown that the domestic industry
requirement has been satisfied with respect to the Asserted Patents.
On March 15, 2022, Complainant filed a petition for review seeking
review of certain patent invalidity findings. That same day,
Respondents filed two contingent petitions for review. The first
petition submitted by all active Respondents seeks review of certain
findings related to infringement, the technical prong of the domestic
industry requirement, and invalidity. The second petition submitted by
Respondents New Asia, Haimingrun, and Juxin seeks review of Order No.
46, which allowed Complainant to present evidence regarding its
revenue-based investment allocation method for the economic prong of
the domestic industry requirement. On March 23, 2022, the parties filed
separate replies to the petitions for review. On March 31, 2022, the
Iljin Respondents submitted their public interest statement. The
Commission solicited submissions from the public on public interest
issues raised by the recommended determination. No submissions were
filed.
Having reviewed the record of the investigation, including the
final ID, the parties' submissions to the ALJ, the petitions for
review, and the responses thereto, the Commission has determined to
review the ID in part. Specifically, the
[[Page 29376]]
Commission has determined to review: (1) The ID's finding that the
asserted claims are invalid under 35 U.S.C. 101; (2) the ID's finding
that the asserted claims of the '565 patent are not entitled to an
earlier priority date and, thus, they are invalid as anticipated by the
sale of the CT-57 product; (3) the ID's finding that the Mercury
product anticipates claims 1 and 2 of the '565 patent and claims 1 and
11 of the '502 patent; (4) the ID's finding that Respondents did not
prove that the asserted claims are not enabled; and (5) the ID's
findings regarding the economic prong of the domestic industry
requirement (including the ruling allowing USS to supplement its
domestic industry contentions with a revenue-based allocation method).
The Commission has determined not to review any other findings
presented in the final ID, including the ID's finding of no violation
of section 337 with respect to the '306 patent.
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. Is each of the asserted patent claims directed to an abstract
idea under the step one analysis of Alice Corp. v. CLS Bank Int'l, 573
U.S. 208 (2014) and, if so, what do you allege is the abstract idea?
Are the claims directed to the abstract idea of ``enhanced'' or a
``high-degree'' of diamond-to-diamond bonding?
2. Is each of the individual claimed ``performance standards'' and
``electrical and magnetic side effects,'' as discussed in the ID,
directed to an abstract idea? For each of the claimed PDC
characteristics (including coercivity, specific magnetic saturation,
specific permeability, average electrical conductivity, G-Ratio, and
thermal stability), please discuss the expert testimony and any other
record evidence relevant to whether that characteristic is indicative
of ``the extent of diamond-to-diamond bonding,'' ``the amount of the
metal-solvent catalyst present,'' or any other physical characteristics
of the diamond microstructure as discussed in the patent
specifications.
3. For any asserted claim that you allege invokes a judicial
exception to patentability for being an abstract idea, does the claim
recite additional elements that integrate the judicial exception into a
practical application under step two of Alice? Please discuss whether
the structures recited in each claim are well-known, routine, and
conventional. See Yu v. Apple Inc., 1 F.4th 1040, 1045 (Fed. Cir.
2021).
4. Do the specifications of U.S. Patent No. 7,866,418 (``the '418
patent'') and the '565 patent disclose, either expressly or inherently,
an exemplary PDC exhibiting ``an average electrical conductivity of
less than about 1200 S/m'' as required, for example, in claim 1 of the
'565 patent? Please cite the relevant portions of the specification and
expert testimony.
5. USS argues that the ID erred in relying on Dr. German's
electrical conductivity measurements of other PDCs because there is no
information confirming these other PDCs were manufactured in the same
way as the disclosed examples in the '418 and '565 patents. See Compl.
Pet. at 46. Is the way a PDC is manufactured relevant to USS's argument
that electrical conductivity is inherently disclosed in the '418
patent? If it is relevant, please discuss whether Dr. Barron's
mathematical model to predict the electrical conductivity from cobalt
content assumes the same materials and manufacturing conditions as
described in the '418 patent. Is USS's argument consistent with its
contention that the electrical conductivity of a PDC is indicative of
``a PDC's microstructure''? See id. at 39.
6. Respondents argue that even if the '418 patent discloses example
PDCs having specific electrical conductivities of less than 1200 S/m,
those examples are insufficient to provide written description support
for the entire claimed electrical conductivity range of ``less than
about 1200 S/m.'' See Resp. Response at 34-37. Was this argument timely
raised before the ALJ? Should the Commission find this argument is
waived? If not waived, please discuss whether the '418 patent
specification provides written description support for the entire
claimed electrical conductivity range.
7. What evidence in the record supports the ID's finding that the
Mercury 1613 sample tested by Mr. Bellin is prior art to the '565 and
'502 patents? Please discuss whether and to what extent Mr. Gledhill's
testimony regarding manufacturing practices at Diamond Innovations,
including his testimony at Tr. 525:17-540:19, was admitted into the
record in view of Order No. 48 and the ALJ's oral order at the
evidentiary hearing, Tr. 667:5-72:22).
8. Please explain what appropriate methods of valuation provide a
reliable estimate of the Complainant's investments in plant and
equipment with respect to the articles protected by the '565 and '502
patents, including an explanation of any adjustments that are necessary
to approximate those investments based on the record evidence and legal
authority for such adjustments. For equipment that is purchased and
placed into service years before the DI products are manufactured as
described in the ID at page 148, please explain whether governing legal
authority requires that the purchase price of the equipment be
amortized or depreciated in order to be counted as an ``investment in .
. . equipment'' under section 337(a)(3)(A). Discuss, with relevant
legal authority, whether replacement costs may be used as a basis to
estimate investments in equipment and if so must any adjustments be
made to rely on such replacement costs.
The parties are invited to brief only the discrete issues requested
above. 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).
The statute requires the Commission to consider the effects of that
remedy upon the public interest. The public interest factors the
Commission will consider include the effect that an exclusion order
and/or a cease and desist order 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
[[Page 29377]]
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,
disapprove, or take no action on the Commission's determination. 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.
The parties' opening submissions should not exceed 100 pages, and their
reply submissions should not exceed 60 pages. 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 and OUII are 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 of business
on Monday, May 23, 2022. Reply submissions must be filed no later than
the close of business on Tuesday, May 31, 2022. 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-1236) 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. Any non-
party wishing to submit comments containing confidential information
must serve those comments on the parties to the investigation pursuant
to the applicable Administrative Protective Order. A redacted non-
confidential version of the document must also be filed with the
Commission and served on any parties to the investigation within two
business days of 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 May 9,
2022.
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 9, 2022.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2022-10304 Filed 5-12-22; 8:45 am]
BILLING CODE 7020-02-P
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