Certain Automated Teller Machines, ATM Modules, Components Thereof, and Products Containing the Same; Commission Decision To Institute a Rescission Proceeding; Rescission of a Limited Exclusion Order and Cease and Desist Orders; Termination of Rescission Proceeding

AGENCY:

U.S. International Trade Commission.

ACTION:

Notice.

SUMMARY:

Notice is hereby given that the U.S. International Trade Commission (“Commission”) has determined to institute a rescission proceeding in the above-captioned investigation and to grant a joint motion for rescission of a limited exclusion order (“LEO”) and three cease and desist orders (“CDOs”) previously issued in the investigation. The LEO and CDOs are rescinded, and the rescission proceeding is terminated.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 EDIS3Help@usitc.gov. General information concerning the Commission may also be obtained by accessing its internet server at https://www.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 investigation on November 20, 2015, based on a complaint filed by Diebold Incorporated and Diebold Self-Service Systems (collectively, “Diebold”). 80 FR 72735-36 (Nov. 20, 2015). The complaint alleged violations of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337, in the importation into the United States, the sale for importation, and the sale within the United States after importation of certain automated teller machines, ATM modules, components thereof, and products containing the same by reason of infringement of certain claims of six United States Patents, including U.S. Patent No. 6,082,616 (“the '616 patent”); and U.S. Patent No. 7,832,631 (“the '631 patent”). Id. The notice of investigation named as respondents Nautilus Hyosung Inc. of Seoul, Republic of Korea; Nautilus Hyosung America Inc. of Irving, Texas (collectively, “Nautilus”); and HS Global, Inc. of Brea, California (“HS Global”). Id. at 72736. The Office of Unfair Import Investigations was not named as a party. Id. Nautilus Hyosung Inc. subsequently changed its name to Hyosung TNS Inc. See Commission Order Amending the Remedial Orders at 1 n.1 (Aug. 13, 2019).

On May 19, 2017, the Commission terminated the investigation with a finding of violation of section 337 as to certain claims of the '616 patent and '631 patent. 82 FR 24143-44 (May 25, 2017). The Commission issued a limited exclusion order prohibiting the entry of infringing automated teller machines, ATM modules, components thereof, and products containing the same, and (2) cease and desist orders directed to each of the three respondents. Id. at 24144. On August 13, 2019, the Commission amended the remedial orders to remove the references to the '616 patent, which had expired on June 2, 2018. Order at 2 (Aug. 13, 2019); see generally Hyosung TNS Inc. v. ITC, 926 F.3d 1353, 1359 (Fed. Cir. 2019) (finding any disputes concerning the '616 patent to have been mooted by that patent's expiration).

On December 1, 2021, Diebold and Nautilus jointly filed confidential and public versions of a petition to rescind all of the remedial orders based on a settlement agreement. No responses to the petition were filed. Despite that HS Global is not a party to the settlement, Diebold and Nautilus seek the rescission of the remedial orders in their entirety. Diebold and Nautilus also moved that service among the private parties of the settlement agreement be limited to Diebold and Hyosung, and not to HS Global. The Commission has determined to grant that request concerning service.

Having reviewed the petition and determined that it complies with Commission rules, see 19 CFR 210.76(a)(3), the Commission has determined to institute a rescission proceeding and to grant the petition. The LEO and the CDOs directed to each of the three respondents are hereby rescinded.

The rescission proceeding is terminated.

The Commission vote for this determination took place on December 20, 2021.

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).