[Federal Register Volume 87, Number 119 (Wednesday, June 22, 2022)]
[Notices]
[Pages 37358-37359]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[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 https://edis.usitc.gov. 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 https://www.usitc.gov. 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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