[Federal Register: May 6, 2005 (Volume 70, Number 87)]
[Notices]
[Page 24117-24118]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr06my05-116]
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INTERNATIONAL TRADE COMMISSION
[Inv. No. 337-TA-499]
In the Matter of Certain Audio Digital-To-Analog Converters and
Products Containing Same; Notice of Commission Determination To Rescind
a Limited Exclusion Order
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 rescind the limited exclusion order in the
above-captioned investigation.
FOR FURTHER INFORMATION CONTACT: Timothy P. Monaghan, Esq., Office of
the General Counsel, U.S. International Trade Commission, 500 E Street,
SW., Washington, DC 20436, telephone (202) 205-3152. 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. Hearing-impaired persons are advised
that information on this matter can be obtained by contacting the
Commission's TDD terminal on (202) 205-1810. General information
concerning the Commission may also be obtained by accessing its
Internet server (http://www.usitc.gov). The public record for this
investigation may be viewed on the Commission's electronic docket
(EDIS) at http://edis.usitc.gov.
SUPPLEMENTARY INFORMATION: The Commission instituted this investigation
on November 14, 2003, based on a complaint filed on behalf of Cirrus
Logic, Inc. of Austin, TX (``Cirrus''). 68 FR 64641 (Nov. 14, 2003).
The complaint, as supplemented, alleged violations of section 337 in
the importation into the United States, sale for importation, and sale
within the United States after importation of certain audio digital-to-
analog converters and products containing same by reason of
infringement of claims 1 and 11 of U.S. Patent No. 6,492,928 (``the
'928 patent''). The notice of investigation named Wolfson
Microelectronics, PLC of Edinburgh, United Kingdom; and Wolfson
Microelectronics, Inc. of San Diego, CA (collectively ``Wolfson'') as
respondents.
On December 29, 2003, the ALJ issued an ID (Order No. 5) granting
complainant's motion to amend the complaint and notice of investigation
to add allegations of infringement of claims 2, 3, 5, 6, and 15 of the
'928 patent, and of claims 9, 12, and 19 of U.S. Patent No. 6,011,501
(``the '501 patent''). 69 FR 4177 (Jan. 28, 2004). On July 1, 2004, the
ALJ issued an ID (Order No. 16) granting complainant's motion to
terminate the investigation as to claims 1 and 2 of the '928 patent. On
July 27, 2004, the ALJ issued an ID (Order No. 24) granting
complainant's motion to terminate the investigation in part as to claim
11 of the '928 patent. Orders Nos. 5, 16, and 24 were not reviewed by
the Commission.
The ALJ held an evidentiary hearing in the investigation from
August 3, 2004, to August 11, 2004, and on November 15, 2004, he issued
his final ID finding a violation of section 337 based on his findings
that the asserted claims of the '501 patent are infringed, that they
are not invalid in view of any prior art, and that claims 9 and 12 of
the '501 patent are not invalid because of failure to provide an
enabling written description of the claimed invention. The ALJ found
the '928 patent to be unenforceable because the inventors intentionally
withheld highly material prior art from the examiner during the
prosecution of the '928 patent application at the United States Patent
and Trademark Office (``USPTO''). As an independent ground for
unenforceability, the ALJ found that the '928 patent is unenforceable
because one person was mistakenly listed on the patent as an inventor.
The ALJ found that the accused devices infringe the asserted claims of
the '928 patent, if enforceable, that the asserted claims of the '928
patent are not invalid in view of any prior art, or because of a
failure to provide an enabling written description of the claimed
invention, or for failure to disclose the best mode.
On November 23, 2004, the USPTO issued a certificate correcting the
inventorship of the '928 patent thereby curing one ground on which the
Commission had found the patent unenforceable. On December 30, 2004,
the Commission determined to review and reverse the ID's finding that
the '928 patent is unenforceable due to incorrect inventorship in view
of the issued certificate of correction by the USPTO. 70 FR 1275 (Jan.
6, 2005). It further determined not to review the remainder of the ID,
thereby finding a violation of section 337. Id.
On February 16, 2005, the Commission determined that the
appropriate form of relief is a limited exclusion order prohibiting the
importation of Wolfson's audio digital-to-analog converters that
infringe claims 9, 12 and 19 of the '501 patent. The limited exclusion
order applies to any of the affiliated companies, parents,
subsidiaries, licensees, contractors, or other related business
entities, or their successors or assigns, of Wolfson.
Complainants Cirrus and respondents Wolfson report that they have
now settled all outstanding patent disputes and related actions.
Accordingly, on April 4, 2005, pursuant to Commission rule
210.76(a)(1), Cirrus and Wolfson filed a joint petition for rescission
of the limited exclusion order issued in the investigation.
Having reviewed the parties' submissions, the Commission has
determined that the settlement agreement satisfies the requirement of
Commission rule 210.76(a)(1), 19 CFR 210.76(a)(1), for changed
conditions of fact or law. The Commission therefore has issued an order
rescinding the limited exclusion order previously issued in this
investigation.
This action is taken under the authority of section 337 of the
Tariff Act of 1930 (19 U.S.C. 1337) and section
[[Page 24118]]
210.76(a)(1) of the Commission's Rules of Practice and Procedure (19
CFR 210.76(a)(1)).
By order of the Commission.
Issued: May 3, 2005.
Marilyn R. Abbott,
Secretary to the Commission.
[FR Doc. 05-9133 Filed 5-5-05; 8:45 am]
BILLING CODE 7020-02-P