Notice2022-13269
Certain Gas Spring Nailer Products and Components Thereof; Commission Decision To Grant Complainant's Motion To Terminate the Investigation on Remand; Rescission of Remedial Orders and Termination of the Investigation
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
June 22, 2022
Issuing agencies
International Trade Commission
Abstract
Notice is hereby given that the U.S. International Trade Commission ("the Commission") has determined to grant complainant's motion to terminate the investigation on remand and vacate the remedial orders issued in the underlying investigation. The investigation is terminated.
Full Text
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<title>Federal Register, Volume 87 Issue 119 (Wednesday, June 22, 2022)</title>
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[Federal Register Volume 87, Number 119 (Wednesday, June 22, 2022)]
[Notices]
[Pages 37358-37359]
From the Federal Register Online via the Government Publishing Office [<a href="http://www.gpo.gov">www.gpo.gov</a>]
[FR Doc No: 2022-13269]
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INTERNATIONAL TRADE COMMISSION
[Investigation No. 337-TA-1082 (CAFC Remand)]
Certain Gas Spring Nailer Products and Components Thereof;
Commission Decision To Grant Complainant's Motion To Terminate the
Investigation on Remand; Rescission of Remedial Orders and 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 (``the Commission'') has determined to grant complainant's
motion to terminate the investigation on remand and vacate the remedial
orders issued in the underlying investigation. The investigation is
terminated.
FOR FURTHER INFORMATION CONTACT: Sidney A. Rosenzweig, Esq., Office of
the General Counsel, U.S. International Trade Commission, 500 E Street
SW, Washington, DC 20436, telephone (202) 708-2532. 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#96d3d2dfc5a5def3fae6d6e3e5ffe2f5b8f1f9e0"><span class="__cf_email__" data-cfemail="1653525f45255e737a665663657f627538717960">[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
[[Page 37359]]
that information on this matter can be obtained by contacting the
Commission's TDD terminal, telephone (202) 205-1810.
SUPPLEMENTARY INFORMATION: The Commission instituted this investigation
on November 20, 2017, based on a complaint filed on behalf of Kyocera
Senco Brands Inc. (now known as Kyocera Senco Industrial Tools, Inc.)
(``Kyocera'') of Cincinnati, Ohio. 82 FR 55118-19 (Nov. 20, 2017). The
complaint, as amended and supplemented, alleged violations of the
Tariff Act of 1930, as amended, 19 U.S.C. 1337 (``section 337''), based
upon the importation into the United States, the sale for importation,
and the sale within the United States after importation of certain gas
spring nailer products and components thereof by reason of infringement
of, inter alia, certain claims of U.S. Patent Nos. 8,267,296 (``the
'296 patent''); 8,27,297 (``the '297 patent''); 8,387,718 (``the '718
patent''); 8,286,722 (``the '722 patent''); and 8,602,282 (``the '282
patent''). The complaint further alleged the existence of a domestic
industry. The Commission's notice of investigation named as a
respondent Hitachi Koki U.S.A., Ltd. (now known as Koki Holdings
America Ltd.) (``Koki'') of Braselton, Georgia. The Office of Unfair
Import Investigations did not participate in the investigation. Prior
to the evidentiary hearing, the parties stipulated that the '718 patent
was the only remaining patent at issue because no violation could be
shown as to the '296, '297, '722, and '282 patents based on claim
construction and an evidentiary ruling excluding Kyocera's expert
testimony with respect to proving infringement under the doctrine of
equivalents, but not literal infringement. See Initial Determination
(Jun. 7, 2019) at 1-2, unreviewed by Comm'n Notice (Aug. 14, 2019)
(``the August 14, 2019 Determination'').
On March 5, 2020, having found asserted claims 1, 10, and 16 of the
'718 patent infringed and not invalid and the domestic industry
requirement satisfied, the Commission issued its final determination
finding a violation of section 337. 85 FR 14244-46 (Mar. 11, 2020). The
Commission issued a limited exclusion order (``LEO'') directed against
Koki's infringing products and a cease and desist order (``CDO'')
directed against Koki. Id.
Both Kyocera and Koki timely appealed the August 14, 2019
Determination and the Commission's final determination, respectively,
to the Federal Circuit. The separate appeals were subsequently
consolidated. On January 21, 2022, the Court issued a decision vacating
and remanding (for further proceedings consistent with the Court's
opinion) the Commission's finding of a violation of section 337.
Kyocera Senco Indus. Tools Inc. v. ITC, 22 F.4th 1369 (Fed. Cir. 2022).
Specifically, the Federal Circuit: (1) ruled that Kyocera's expert
testimony should have been excluded for both infringement under the
doctrine of equivalents and literal infringement; (2) reversed the
Commission's finding that the ``lifter member'' limitation was not
means-plus-function; (3) held that the ``initiating a driving cycle''
limitation cannot be met by pressing the exit end of a safety contact
element against a workpiece; and (4) affirmed the Commission on all
other issues on appeal. The Court's mandate issued on March 14, 2022,
returning jurisdiction to the Commission for the remanded issues.
On March 28, 2022, the Commission issued an Order requesting the
parties to provide comments concerning what further proceedings are
appropriate consistent with the Court's judgment, including whether the
matter should be referred to the ALJ. See Comm'n Order (Mar. 28, 2022)
at 2-3.
On April 7, 2022, Kyocera and Koki each submitted comments. In
addition to its comments, on April 7, 2022, Kyocera filed a motion to
terminate the remand proceeding due to withdrawal of its complaint. On
April 14, 2022, Kyocera and Koki each submitted response comments. On
the same date, Koki also submitted an opposition to Kyocera's motion to
terminate.
The Commission has determined to terminate the investigation.
Kyocera, the complainant, no longer seeks relief. Koki seeks further
decision-making by the Commission in remand proceedings that, if Koki
were to prevail, would amount to a declaratory judgment of
noninfringement for Koki. The Commission, however, lacks the authority
to proceed with declaratory (or any other) counterclaims.\1\ 19 U.S.C.
1337(c); see also, e.g., Solomon Techs., Inc. v. ITC, 524 F.3d 1310,
1320 (Fed. Cir. 2008).
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\1\ The Commission's rules of practice, 19 CFR 210.21(a), do not
contemplate or specify procedures for a situation, as here, where
the Commission's final determination is vacated on appeal and
remanded for further proceedings. The Commission has the inherent
authority under these circumstances to manage its docket and to
terminate the investigation at Kyocera's request. Certain Digital
Satellite System (DSS) Receivers and Components Thereof, Inv. No.
337-TA-392, Notice, 64 FR 27295 (May 19, 1999). The relief that Koki
seeks, by opposing termination of the remanded investigation and
pressing to continue forward, would result in a waste of public and
private resources. Moreover, as set forth in the above text,
continuing now would be in tension, if not outright conflict, with
section 337(c).
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As part of this termination, the Commission rescinds the remedial
orders in their entirety.
The Commission has also determined that it would be premature at
this time for it to decide the effect, if any, of this termination on a
future complaint that might be filed. Accordingly, the Commission need
not and does not now decide what action it may take, or what conditions
may apply, should Kyocera in the future file a complaint based on the
same or similar alleged violations of section 337 by Koki. Nor does the
Commission now decide whether and how, if a new investigation were
instituted based on the same or similar allegations, the record from
the instant investigation may be used in such future investigation.
The investigation is terminated.
The Commission vote for this determination took place on June 15,
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: June 15, 2022.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2022-13269 Filed 6-21-22; 8:45 am]
BILLING CODE 7020-02-P
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