63094 Federal Register / Vol. 65, No. 204 / Friday, October 20, 2000 / Notices

INTERNATIONAL TRADE

COMMISSION

[Investigation No. 337–TA–424]

Certain Cigarettes and Packaging

Thereof; Notice of Issuance of General

Exclusion Order and Cease and Desist

Order

AGENCY: U.S. International Trade

Commission.

ACTION: Notice.

SUMMARY: Notice is hereby given that

the U.S. International Trade

Commission has issued a general

exclusion order and a cease and desist

order in the above-captioned

investigation.

FOR FURTHER INFORMATION CONTACT:

Shara L. Aranoff, Esq., Office of the

General Counsel, U.S. International

Trade Commission, 500 E Street, SW.,

Washington, DC 20436; telephone (202)

205–3090, e-mail saranoff@usitc.gov.

SUPPLEMENTARY INFORMATION: The

Commission instituted this investigation

on September 16, 1999, based on a

complaint and supplement to the

complaint filed by Brown & Williamson

Tobacco Corporation (‘‘complainant’’ or

‘‘Brown & Williamson’’). Complainant

alleged unfair acts in violation of

section 337 of the Tariff Act of 1930 (19

U.S.C. 1337) in the importation, sale for

importation, and/or sale within the

United States after importation of

certain cigarettes and packaging thereof,

by reason of: (a) Infringement of 11

federally registered U.S. trademarks

(U.S. Reg. Nos. 118,372; 311,961;

335,113; 366,744; 404,302; 508,538;

747,482; 747,490; 2,055,297; 2,174,493;

and 2,218,589) (‘‘the Brown &

Williamson trademarks’’); (b) trademark

dilution; (c) false representation of

source; and (d) false advertising. The

Commission’s notice of investigation

named Allstate Cigarette Distributors,

Inc. (‘‘Allstate’’), Dood Enterprises, Inc.

(‘‘Dood’’), Prestige Storage and

Distribution, Inc. (‘‘Prestige’’), and R.E.

Tobacco Sales, Inc. (‘‘R.E. Tobacco’’) as

respondents.

On December 15, 1999, the

Commission determined not to review

an initial determination (‘‘ID’’) (Order

No. 15) granting the motion of PTI, Inc.,

doing business as Ampac Trading

(‘‘PTI’’ or ‘‘intervenor’’), to intervene in

this investigation. On February 22,

2000, the Commission determined to

review and affirm an ID (Order No. 30)

granting the motion of respondent

Allstate to terminate the investigation as

to it based on a consent order. On March

24, 2000, the Commission determined

not to review two IDs (Orders Nos. 60

and 61) granting the motions of

respondents Prestige and R.E. Tobacco

to terminate the investigation as to them

based on consent orders. On April 27,

2000, the Commission determined not

to review an ID (Order No. 68) granting

the motion of respondent Dood to

terminate the investigation as to it based

on a consent order.

On March 24, 2000, the Commission

determined not to review an ID (Order

No. 59) granting complainant’s motion

for partial summary determination that

a domestic industry exists with respect

to complainant’s trademarks.

The presiding administrative law

judge (‘‘ALJ’’) held an evidentiary

hearing on violation beginning on

March 20, 2000. On March 24, 2000, the

last day of the hearing, PTI filed a

motion for dismissal of Brown &

Williamson’s complaint pursuant to

Federal Rule of Civil Procedure

(‘‘FRCP’’) 41(a), alleging that Brown &

Williamson failed to set forth facts

showing entitlement to relief for

trademark infringement. The ALJ

permitted complainant and the

Commission investigative attorney

(‘‘IA’’) to respond to PTI’s motion in

their posthearing briefs.

On June 22, 2000, the ALJ issued her

final ID finding a violation of section

337 and denying PTI’s motion to

dismiss. She found that there had been

imports of the accused products by

intervenor PTI; that PTI’s importation

and sale of certain ‘‘KOOL’’ and

‘‘LUCKY STRIKE’’ cigarettes infringed

the Brown & Williamson trademarks;

that PTI’s importation and sale of

accused cigarettes diluted the Brown &

Williamson trademarks; that PTI’s

importation and sale of accused

cigarettes constituted a false designation

of origin; that complainant had failed to

demonstrate that PTI engaged in false

advertising with respect to the accused

cigarettes; that PTI’s trademark dilution

and false designation had the threat or

effect of substantially injuring the

domestic industry; and that PTI was not

denied due process in proceedings

before the ALJ in this investigation.

On June 27, 2000, the Commission

determined to extend the date by which

it was required determine whether to

review the instant ID to August 28,

2000, and to extend the target date in

this investigation to October 16, 2000.

On July 12, 2000, intervenor PTI filed

a petition for review of the final ID. On

July 17, 2000, complainant and the IA

filed responses to the petition. On

August 28, 2000, the Commission

determined not to review the ID and

requested written submissions on the

issues of remedy, the public interest,

and bonding. 65 FR 53334 (Sept. 1,

2000).

Submissions on remedy, the public

interest, and bonding were received

from complainant, intervenor PTI, and

the IA. Reply submissions were received

from complainant and the IA.

Comments on the public interest were

received from one U.S. Senator,

nineteen Members of Congress, the

National Association of Attorneys

General, the Attorney General of

Florida, the Petroleum Marketers

Association of America, the National

Association of Convenience Stores, and

the National Grocers Association.

Having reviewed the record in this

investigation, including the written

submissions of the parties and the

public comments, the Commission has

determined that the appropriate form of

relief is a general exclusion order

prohibiting the unlicenced entry for

consumption of KOOL and LUCKY

STRIKE cigarettes manufactured by

Brown & Williamson that infringe the

eleven federally-registered Brown &

Williamson trademarks (U.S. Reg. Nos.

118,372; 311,961; 335,113; 366,744;

404,302; 508,538; 747,482; 747,490;

2,055,297; 2,174,493; and 2,218,589),

dilute the identified trademarks, or bear

the identified trademarks and falsely

represent that the trademark owner is

the source of such product, and a cease

and desist order directed to intervenor

PTI, prohibiting the importation, sale for

importation, or sale in the United States

after importation of KOOL and LUCKY

STRIKE cigarettes that infringe the

Brown & Williamson trademarks.

The Commission has also determined

that the public interest factors

enumerated in subsections 1337(d) and

(f) do not preclude the issuance of the

general exclusion order and the cease

and desist order, and that the bond

during the Presidential review period

shall be in the amount of seven dollars

($7.00) per carton of cigarettes.

This action is taken under the

authority of section 337 of the Tariff Act

of 1930 (19 U.S.C. 1337) and section

210.50 of the Commission’s Rules of

Practice and Procedure (19 CFR 210.50).

Copies of the Commission’s orders,

the public version of the Commission’s

opinion in support thereof, and all other

nonconfidential 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 can be obtained by

contacting the Commission’s TDD

Federal Register / Vol. 65, No. 204 / Friday, October 20, 2000 / Notices 63095

terminal on (202) 205–1810. Public

documents are available for

downloading from the Commission’s

Internet server (http://www.usitc.gov).

General information concerning the

Commission may also be obtained by

accessing its Internet server.

Issued October 16, 2000.

By order of the Commission.

Donna R. Koehnke,

Secretary.

[FR Doc. 00–27058 Filed 10–19–00; 8:45 am]

BILLING CODE 7020–02–P

INTERNATIONAL TRADE

COMMISSION

[Investigation No. 337–TA–395]

Certain EPROM, EEPROM, Flash

Memory, and Flash Microcontroller

Semiconductor Devices, and Products

Containing Same; Notice of Final

Determination and Issuance of Limited

Exclusion Order; Notice of Denial of

Motions for Sanctions, for Attorney’s

Fees, and for Dismissal of Complaint

AGENCY: U.S. International Trade

Commission.

ACTION: Notice.

SUMMARY: Notice is hereby given that

the U.S. International Trade

Commission has found a violation of

section 337 of the Tariff Act of 1930 (19

U.S.C. 1337) and has issued a limited

exclusion order in the above-captioned

investigation. The Commission has also

determined to deny a motion for

dismissal of Atmel’s complaint for

unclean hands and motions for

sanctions and attorney’s fees.

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.

SUPPLEMENTARY INFORMATION: The

Commission instituted this investigation

on March 18, 1997, based upon a

complaint filed by Atmel Corporation

alleging that Sanyo Electric Co., Ltd.

(‘‘Sanyo’’), Winbond Electronics

Corporation of Taiwan and Winbond

Electronics North America Corporation

of California (collectively ‘‘Winbond’’),

and Macronix International Co., Ltd.

and Macronix America, Inc.

(collectively ‘‘Macronix’’) had violated

section 337 in the sale for importation,

the importation, and the sale within the

United States after importation of

certain erasable programmable read only

memory (‘‘EPROM’’), electrically

erasable programmable read only

memory (‘‘EEPROM’’), flash memory,

and flash microcontroller

semiconductor devices, by reason of

infringement of one or more claims of

U.S. Letters Patent 4,511,811 (‘‘the ’811

patent’’), U.S. Letters Patent 4,673,829

(‘‘the ’829 patent’’), and U.S. Letters

Patent 4,451,903 (‘‘the ’903 patent’’)

assigned to Atmel. 62 FR 13706 (March

21, 1997). Silicon Storage Technology,

Inc. (‘‘SST’’) was permitted to intervene

in the investigation.

On March 19, 1998, the presiding

administrative law judge (‘‘ALJ’’) issued

his final initial determination (‘‘ID’’)

finding that respondents had not

violated section 337, based on his

finding that neither the ’811 patent, the

’829 patent, nor the ’903 patent was

infringed by any product imported and

sold by respondents or intervenor. He

also found, that the ’903 patent is

unenforceable because of waiver and

implied license by legal estoppel, that

claims 2–8 of that patent are invalid for

indefiniteness, but that the ’903 patent

is not unenforceable for failure to name

a co-inventor. Complainant Atmel

petitioned for review of the ALJ’s final

ID, and on May 6, 1998 the Commission

determined to review most of the ALJ’s

findings and requested written

submissions on the issues of remedy,

the public interest, and bonding. 63 FR

25867 (May 11, 1998).

On review, the Commission

determined that the ’811 patent and the

’829 patent were invalid on the basis of

collateral estoppel in light of a U.S.

district court decision (Atmel Corp. v.

Information Storage Devices, Inc., No.

C–95–1987–FMS, 1998 WL 184274

(N.D. Cal. April 14, 1998)), and that the

’903 patent was unenforceable for

failure to name a co-inventor. The

investigation was terminated with a

finding of no violation of section 337.63

FR 37133 (July 9, 1998).

On August 11, 1998, after issuance of

the Commission opinion, Atmel filed a

petition with the U.S. Patent and

Trademark Office (‘‘PTO’’) to correct the

inventorship of the ’903 patent. The

PTO granted Atmel’s petition on August

18, 1998, and issued a certificate of

correction on October 6, 1998.

On September 8, 1998, Atmel filed

with the Commission a ‘‘Petition For

Relief From Final Determination

Finding U.S. Patent No. 4,451,903

Unenforceable.’’ Respondents and the

Commission’s Office of Unfair Import

Investigations (‘‘OUII’’) filed responses

to the petition. The Commission ruled

on Atmel’s petition on January 25, 1999.

It determined to treat Atmel’s petition as

a petition for reconsideration, granted

the petition, and reopened the record of

the investigation for the limited purpose

of resolving the issues arising from the

PTO’s issuance of the certificate of

correction for the ’903 patent. The

investigation was remanded to the ALJ

who issued an ID on May 17, 2000,

finding that complainant Atmel had

committed inequitable conduct at the

PTO in the procurement of the

certificate of correction for the ’903

patent; that the inventors listed on the

PTO certificate of correction are not the

correct inventors; and that no

inequitable conduct was shown to have

taken place at the PTO in the

prosecution of the original patent

application that matured into the ’903

patent.

On May 30, 2000, Atmel petitioned

for review of the ID of May 17, 2000,

and certain orders issued by the ALJ.

Respondents, intervenor, and the

Commission investigative attorney

(‘‘IA’’) filed responses to Atmel’s

petition. On July 17, 2000, the

Commission determined to review the

ALJ’s determination that the PTO

certificate of correction for the ’903

patent was procured inequitably; the

ALJ’s determination that the inventors

named on the PTO certificate of

correction are incorrect; the ALJ’s ruling

in Order No. 50 that Atmel had waived

the attorney-client and attorney work

product privileges; and the ALJ’s ruling

in Order No. 69 that Atmel bore the

burden of proof by clear and convincing

evidence that the inventors shown on

the PTO certificate of correction are the

correct inventors. The Commission

requested briefs on the issues under

review, and posed briefing questions for

the parties to answer. The Commission

also requested written submissions on

remedy, the public interest, and

bonding. 65 FR 45406 (July 21, 2000).

On August 28, 1998, Atmel appealed

the Commission’s ‘‘no violation’’

determination of July 2, 1998, to the

U.S. Court of Appeals for the Federal

Circuit. Sanyo, Winbond, Macronix, and

SST intervened in support of the

Commission. On November 6, 1998,

Sanyo and Winbond moved to dismiss

the portion of the appeal concerning the

’903 patent. On December 8, 1998, the

Federal Circuit stayed the appeal

pending a ruling from the Commission

on Atmel’s then pending motion for the

Commission to reconsider its prior

determination on inventorship.

On February 10, 1999, Winbond filed

a petition for a writ of mandamus with

the Federal Circuit. Winbond asked the

Federal Circuit to direct the

Commission to vacate its January 25,

1999, order remanding the inventorship

issue to the ALJ. Winbond argued that

the Commission was without authority

to grant relief from its final

determination of ‘‘no violation’’ because