[Federal Register Volume 70, Number 184 (Friday, September 23, 2005)]
[Notices]
[Pages 55919-55920]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 05-19036]


-----------------------------------------------------------------------

INTERNATIONAL TRADE COMMISSION

[Inv. No. 337-TA-454]


In the Matter of Certain Set-Top Boxes and Components Thereof; 
Notice of Commission Determination To Terminate the Investigation on 
the Basis of a Settlement Agreement

AGENCY: International Trade Commission.

ACTION: Notice.

-----------------------------------------------------------------------

SUMMARY: Notice is hereby given that the U.S. International Trade 
Commission has determined to terminate the above-captioned 
investigation on the basis of a settlement agreement.

FOR FURTHER INFORMATION CONTACT: Wayne Herrington, Esq., Office of the 
General Counsel, U.S. International Trade Commission, 500 E Street, 
SW., Washington, DC 20436, telephone (202) 205-3090, or Michael 
Liberman, Esq., Office of the General Counsel, U.S.

[[Page 55920]]

International Trade Commission, 500 E Street, SW., Washington, DC 
20436, telephone (202) 205-3115. 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. 
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. 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 patent-based 
investigation, which concerns allegations of unfair acts in violation 
of section 337 of the Tariff Act of 1930 in the importation and sale of 
certain set-top boxes, on March 21, 2001. 66 FR 15887 (March 21, 2001). 
Complainants Gemstar-TV Guide International, Inc. of Pasadena, 
California, and StarSight Telecast, Inc. of Fremont, California 
(collectively, ``Gemstar''), named Pioneer Corporation, Pioneer North 
America, Inc., Pioneer Digital Technologies, Inc., and Pioneer New 
Media Technologies, Inc. (collectively, ``Pioneer''); EchoStar 
Communications Corporation and SCI Systems, Inc. (collectively, 
``Echostar''); and Scientific-Atlanta, Inc. (``Scientific-Atlanta'') as 
respondents. Gemstar alleged that these respondents infringed certain 
claims of its patents, including: U.S. Patent No. 4,706,121 (``the '121 
patent''); U.S. Patent No. 5,479,268 (``the `268 patent''); and U.S. 
Patent No. 5,809,204 (``the '204 patent'').
    The presiding administrative law judge (``the ALJ'') issued his 
final initial determination (``final ID'') on June 21, 2002, in which 
he concluded that there was no violation of section 337, based on the 
following findings: (a) Complainants had failed to establish that 
asserted claims 18-24, 26-28, 31-33, 36, 42-43, 48-50, 54, 57, 59-61, 
and 66 of the '121 patent; claims 1, 3, 8, and 10 of the '268 patent; 
and claims 1, 3, 8, and 10 of the '204 patent are infringed by 
respondents; (b) respondents had failed to establish that the asserted 
claims are not valid; (c) respondents had established that the '121 
patent is unenforceable for failure to name a co-inventor; (d) 
complainants had engaged in patent misuse with respect to the '121 
patent; (e) no industry existed in the United States, as required by 
subsection (a)(2) of section 337, that exploits each of the '121, '268, 
and '204 patents in issue; and (f) there had been an importation of the 
set-top boxes which are the subject of this investigation.
    On July 5, 2002, all parties to the investigation, including the 
Commission investigative attorney, filed petitions for review of 
various portions of the final ID.
    On August 29, 2002, the Commission issued notice that it had 
determined to review in part, to take no position in part, and to not 
review in part the ALJ's final ID. Specifically, the Commission 
determined to review the issue of the technical prong of the domestic 
industry as it relates to claim 42 of '204 patent for the purpose of 
making a finding as to claim 42 of that patent. This finding had been 
omitted by the ALJ. The Commission also determined to take no position 
on the issue of patent misuse and not to review the remainder of the 
final ID. Finally, the Commission determined to affirm three ALJ 
rulings (involving ALJ Order No. 62, an ALJ ruling excluding evidence 
concerning the doctrine of equivalents, and an ALJ ruling limiting the 
testimony time of one witness) that were appealed to the Commission by 
the complainants. In light of these determinations, the Commission 
determined that there was no violation of section 337 in this 
investigation.
    Gemstar appealed the Commission's final determination to the United 
States Court of Appeals for the Federal Circuit (``the Federal 
Circuit'' or ``the Court''). During the course of the appeal, Gemstar 
settled with Pioneer and EchoStar, and these respondents were dismissed 
from the appeal. On September 16, 2004, the Federal Circuit issued its 
decision in the appeal, in which the Commission's final determination 
was affirmed in part, vacated in part, and reversed in part, and the 
case remanded for further proceedings consistent with the Court's 
opinion. Gemstar-TV Guide International, Inc. v. International Trade 
Commission, 383 F.3d 1352 (Fed. Cir. 2004).
    On November 29, 2004, the Court denied Scientific-Atlanta's 
petitions for rehearing and rehearing en banc. On January 11, 2005, the 
Court denied Scientific-Atlanta's motion to stay issuance of the 
mandate and simultaneously issued its mandate, returning the case to 
the Commission, with Scientific-Atlanta as the sole respondent.
    On February 8, 2005, the Commission issued an order seeking 
comments from the parties as to how they believed the Commission should 
proceed with the remanded investigation. The original 30-day deadline 
for receiving comments from the parties was extended twice, to June 13, 
2005. On that date the private parties filed a joint motion to 
terminate the investigation based on a settlement agreement, including 
a patent license agreement. On June 23, 2005, the Commission 
investigative attorney filed a response supporting the joint motion. On 
August 5, 2005, the private parties filed a public version of the joint 
motion.
    Having examined the joint motion to terminate the investigation, 
the response thereto, and other relevant documents of record in this 
investigation, the Commission has determined to grant the joint motion, 
terminating this investigation in its entirety.
    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 section 210.21 of the Commission's Rules of Practice and Procedure 
(19 CFR 210.21).

    Issued: September 19, 2005.

    By order of the Commission.
Marilyn R. Abbott,
Secretary to the Commission.
[FR Doc. 05-19036 Filed 9-22-05; 8:45 am]
BILLING CODE 7020-02-P