PUBLIC VERSION
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`UNITED STATES INTERNATIONAL TRADE COMMISSION
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`Washington, D.C.
`
`In the Matter of
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`CERTAIN MAGNETIC DATA
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`STORAGE TAPES AND CARTRIDGES
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`CONTAINING THE SAME (II)
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`
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`Inv. No. 337-TA-1076
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`COMMISSION OPINION
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`This opinion sets forth the Commission’s final determination on the issues under review
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`and remedy, the public interest, and bonding in the above-captioned investigation. The
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`Commission has determined that reSpondcnts Sony Corporation of Tokyo, Japan; Sony Storage
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`Media Solutions Corporation of Tokyo, Japan; Sony Storage Media Manufacturing Corporation
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`of Miyagi, Japan; Sony DADC US Inc. (“Sony DADC”) of Terre Haute, Indiana; and Sony Latin
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`America Inc. (“Sony Latin America") of Miami, Florida (collectively, “Sony”) violated 19
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`U.S.C. § 1337, as amended (“Section 337”) by way of infringing claims 1-5 of U.S. Patent No.
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`6,630,256 (“the ’256 patent”) and claims 1, 7, 11, and 12 of U.S. Patent No. 7,011,899 (“the ’899
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`patent”). The Commission has found no violation with respect to U.S. Patent Nos. 6,462,905
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`(“the ’905 patent”) or 6,835,451 (“the ’451 patent”). The Commission has determined to enter a
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`limited exclusion order against Sony and cease and desist orders directed to Sony‘s U.S.
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`subsidiaries, Sony DADC and Sony Latin America. The Commission has further determined to
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`set a bond rate of: (a) 10.4 percent of entered value for Sony’s branded LTD-4 tapes; (b) 7.9
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`percent of entered value for Sony’s branded LTD-6 tapes; and (c) 16.8 percent of entered value
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`for Sony’s OEM LTO-6 tapes during the period of Presidential review.
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`FUJIFILM, EXh. 2018, p. 1
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`PUBLIC VERSION
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`I.
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`BACKGROUND
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`A.
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`Procedural Histuu
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`The Commission instituted the present investigation on October 25, 2017, based on a
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`complaint filed by Fujifilm Corporation of Tokyo, Japan and Fujifilm Recording Media U.S.A.,
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`Inc. of Bedford, Massachusetts (collectively, “Fujifilm”). 82 Fed. Reg. 49421-22 (Oct. 25,
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`2017). The complaint alleged Sony violated Section 337 by importing into the United States,
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`selling for importation, or selling in the United States after importation certain magnetic data
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`storage tapes and cartridges containing the same that infringe one or more of the asserted claims
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`of Fujifilm’s ’256, ’899, ’905, or ’451 patents.) Id. The notice of investigation named Sony as a
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`respondent. Id. The Office of Unfair Import Investigations (“OUII”) was also named as a party
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`to the investigation. 1d.
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`The accused products are Sony’s LTO-4, LTO—S, LTD-6, and LTO-8 magnetic data
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`storage tapes and tape cartridges. Fujifilm’s domestic industry is represented by its own LTO
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`tape products. “LTO” refers to “linear tape open,” an open-format storage tape technology. See
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`https:#searchdatabackup.techtarget.comfdefinitionfLinear-Tape-Open—LTO (last viewed June 3,
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`2019). LTO-4, LTO-S, etc., refers to sequential LTD-compliant product generations, which
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`represent improvements in storage capacity, data transfer rates, or other attributes. Id.
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`On June 25~29, 2018, the presiding administrative law judge (“ALJ”) held an evidentiary
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`hearing on issues relating to the ’256, ”899, ’905, and ’451 patents. By the time of the hearing,
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`the remaining asserted claims were claims 1—5 of the ’256 patent; claims I, 2, 7, 1 1, and 12 of the
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`’899 patent; claims 1-3 of the ’905 patent; and claims 3, 5, and 12-14 of the ’45] patent.
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`I Fujifilm also originally asserted US. Patent No. 6,783,094 (“the ’094 patent”), but later
`withdrew the ’094 patent and certain claims of the remaining patents. See Comm’n Notice (Apr.
`17, 2018) (aff’g Order No. l l); Comm’n Notice (July 9, 2018) (aff’g Order No. 17); ID at 2—3.
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`2
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`PUBLIC VERSION
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`On October 25, 2018, the ALJ issued a combined initial determination (“ID”) on
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`violation issues and a recommended determination (“RD") on remedy, the public interest, and
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`bond rates during the period of Presidential review. The ALJ found that Sony violated Section
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`337 by way of infringing one or more of the asserted claims of the '256 and ’899 patents, and
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`that none of the asserted claims of either patent was shown to be invalid. ID at 170-71. The ALJ
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`also found that Sony did not infringe any valid asserted claim of either the ’451 or ’905 patent.
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`Id. The ALJ recommended that the Commission issue a limited exclusion order against Sony
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`and cease and desist orders against its two U.S. subsidiaries, Sony DADC and Sony Latin
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`America. RD at 172-80. The ALJ also recommended imposing a bond during the period of
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`Presidential review, with different rate to be imposed on different LTO product generations. 1d.
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`On November 9, 2018, all parties, including OUII, filed a petition with the Commission
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`to review some portion of the ID. The parties filed their respective replies on November 20,
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`2018, and their submissions on the public interest on November 26, 2018.
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`Following the partial government shutdown in January 2019, the Commission issued, on
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`March 15, 2019, a notice of its determination to review the ID in part with respect to the ’25 6,
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`’899, and ’905 patents, but not with respect to the ’451 patent. In particular:
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`I
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`-
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`0
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`With respect to the ’256 patent, the Commission determined to review the IDS
`finding that the sample tapes Fujifilm tested for domestic industry purposes were
`representative of Fujifilm’s other LTO tapes. The Commission did not review
`and thus adopted the ID’s findings that claims 1~5 are infringed and not obvious.
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`With respect to the ’899 patent, the Commission determined to review the IDS
`interpretation and application of limitations on the number of surface projections
`having certain heights “per 6400 umz.” The Commission also determined to
`review whether test results taken from different Sony tape samples during
`different investigations could be combined for purposes of proving infringement
`of dependent claim 2. The Commission further reviewed the [D’s finding that the
`asserted claims of the ’899 patent are not invalid as obvious.
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`With respect to the ’905 patent, the Commission determined to review the lD’s
`finding that claim 3 is invalid due to an on-sale bar but was not anticipated by or
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`3
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`PUBLIC VERSION
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`obvious in view of the prior art. The Commission did not review the [D’s
`findings that claim 3, if valid, is infringed but claims 1-2 are not infringed.
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`See 84 Fed Reg. 10532-34 (Mar. 21, 2019)
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`On March 29, 2019, Fujifilm, Sony, and OUII filed their respective responses to the
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`Commission’s questions on review.2 On April 5, 2019, the parties filed their respective replies.3
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`011 May 6, 2019, the Commission issued a notice of its determination to extend the target date
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`for completion of this investigation to June 6, 2019. Comm’n Notice (May 6, 2019).
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`II.
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`STANDARD OF REVIEW
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`Once the Commission determines to review an initial determination, it conducts its
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`review de novo. Certain Magnetic Data Storage Tapes and Cartridges Containing Same
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`(“Storage Tapes I”), luv. No. 337—TA-1012, Comm’n Op. at 12 (March 8, 2018). Upon review,
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`the “Commission has ‘all the powers which it would have in making the initial determination,’
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`except where the issues are limited on notice or by rule.” Id. (quoting Certain Flash Memory
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`Circuits and Prods. Containing Same, Inv. No. 33 7-TA-3 82, USITC Pub. 3046, Comm’n Op. at
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`9-10 (July 1997) (internal quotations omitted». Commission practice in this regard is consistent
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`with the Administrative Procedure Act, 5 U.S.C. § 551 et seq. Storage Tapes I, luv. No. 337-
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`TA-1012, Comm’n Op. at 12; see also 5 U.S.C. § 557(b).
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`2 Complainants Fujifilm Corporation and Fujifilm Recording Media U.S.A., Inc.’s Opening Brief
`Regarding Commission Review (“Fujifilm’s BL”); Respondents’ Initial Written Submission in
`Response to the Commission’s Determination to Review in Part a Final Initial Determination
`(“Sony’s BL”); Commission Investigative Staff’s Response to the Commission’s Request for
`Written Submissions on the Issues Under Review and on Remedy, the Public Interest, and
`Bonding (“OUII’s B13”).
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`3 Complainants Fujifilm Corporation and Fujifilm Recording Media U.S.A., Inc.’s Opening Brief
`Regarding Commission Review (“Fujifilm’s Reply”); Respondents’ Reply to Complainants” and
`OUII’s Written Submissions in Response to the Commission’s Determination to Review in Part
`a Final Initial Determination (“Sony’s Reply”); Commission Investigative Stafi‘s Reply to the
`Parties’ Responses to the Commission’s Request for Written Submissions (“OUII’s Reply”).
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`4
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`PUBLIC VERSION
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`Upon review, “the Commission may affirm, reverse, modify, set aside or remand for
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`further proceedings, in whole or in part, the initial determination of the administrative law judge.
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`The Commission may also make any findings or conclusions that in its judgment are proper
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`based on the record in the proceeding.” 19 C.F.R. § 210.45. This rule reflects the fact that the
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`Commission is the body responsible for making the final agency decision. Storage Tapes I, luv.
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`No. 337—TA-1012, Comm’n 0p. at 12; see also Spansion, Inc. v. Int ’1 Trade Comm ’n, 629 F.3d
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`1331, 1349 (Fed. Cir. 2010) (only the Commission’s final determination is at issue on appeal).
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`III.
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`RELEVANT LAW
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`Section 337 prohibits, inter alia, “[t]he importation into the United States, the sale for
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`importation, or the sale within the United States after importation .
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`.
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`. of articles that infringe a
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`valid and enforceable United States patent .
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`.
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`. .” 19 U.S.C. § 1337(a)(1)(B). Infringement is
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`found where an accused product or process practices each and every limitation of a patent claim,
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`either literally or under the doctrine of equivalents. Cross Medical Products, Inc. v. Medrronic
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`Sofamor Danek, Inc, 424 F.3d 1293, 1310-11 (Fed. Cir. 2005).
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`A.
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`Claim Construction
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`The first step of any infringement analysis is to construe, or interpret, any disputed terms
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`in the asserted patent claims. SafizTCare Mfg, Inc. v. Tetra-Made, Inc, 497 F.3d 1262, 1268
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`(Fed. Cir. 2007) (citing Cybor Corp. v. FAS Techns., Inc, 138 F.3d 1448, 1454 (Fed. Cir. 1998)
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`(en banc)). Claim construction “begin[s] with and remain[s] centered on the language of the
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`claims themselves.” Storage Tech. Corp. v. Cisco Sys, Inc. , 329 F.3d 823, 830 (Fed. Cir. 2003).
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`Ciaim terms are normally construed according to their ordinary and customary meaning in the
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`art, as understood by a person of ordinary skill in the art at the time of the invention. Continental
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`Circuits LLC v. Intel Corp. , 915 F.3d 788, 796 (Fed. Cir. 2019) (citing Phillips v. A WH, 415 F.3d
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`1303, 1312—13 (Fed. Cir. 2005) (en banc)). In cases where a claim term does not have a
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`particular meaning in the relevant technical art, its construction may involve little more than
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`applying widely accepted meanings of commonly understood words. Phiilips, 415 F.3d at 1314.
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`But where a claim term has a specialized meaning, it is necessary to determine what a person
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`skilled in the art would have understood the diSputed claim language to mean. Id.
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`The Commission looks primarily to intrinsic sources, i.e., the language of the claims
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`themselves, the remainder of the specification (of which the claims are a part), and the patent’s
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`prosecution history, to determine the meaning of a claim term and whether the inventor used it in
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`an idiosyncratic manner. See Continental Circuits, 915 F.3d at 796. The specification may also
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`indicate whether the inventor intended to give a special meaning to a claim term that differs from
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`its original meaning or, alternatively, to disclaim or disavow some measure of claim scope. Id.
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`(discussing Phillips, 415 F.3d at 1316). As a general rule, embodiments or examples in the
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`specification may shed light on the meaning of claim terms, but they should not be read into the
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`claims as limitations where they are not necessary. Marbnan, 52 F.3d at 978-79
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`The Commission should also consider the patent’s prosecution history, where it is in
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`evidence, as it provides contemporaneous evidence as to how the inventor and the U.S. Patent
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`and Trademark Office (“PTO”) understood the term. See Continental Circuits, 915 F.3d at 796.
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`The prosecution history, however, often lacks the clarity of the specification and is often less
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`useful for claim construction purposes because it reflects an ongoing negotiation between the
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`inventor and the PTO rather than the final product of that negotiation. Id.
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`The Commission may also look to extrinsic evidence, such as expert and inventor
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`testimony, dictionaries, learned treatises, and other evidence external to the patent and its
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`prosecution history, to discern the scope and meaning of a claim term. Id. at 799. Extrinsic
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`evidence may also be useful in understanding relevant scientific principles, the meaning of
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`technical terms, and the state of the art. Id. at 796. Nonetheless, extrinsic evidence is generally
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`regarded as less reliable than intrinsic evidence and cannot be used to override the meaning of
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`claim terms provided by the intrinsic evidence. Id. at 799. “The construction that stays true to
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`the claim language and most naturally aligns with the patent’s description of the invention will
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`be, in the end, the correct construction.” Phillips, 415 F.3d at 1316.
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`B.
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`Infringement
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`Patent infringement under Section 337 includes “all forms of infringement, including
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`direct, contributory, and induced infringement.” Supreme Inc. v. Int ’1 Trade Comm ’n, 796 F.3d
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`1338, 1352-53 (Fed. Cir. 2015). A preponderance of the evidence is required to prove
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`infringement. Spamion, 629 F.3d at 1349.
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`After construing any disputed claim terms, the next step is to compare the properly
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`construed claim to the allegedly infringing product or process. SafeTCare, 497 F.3d at 1268.
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`Literal infringement is found where every limitation of a claim literally reads on, or is found in,
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`the accused product or process. Duncan Parking Techns., Inc. v. IPS Group, Inc, 914 F.3d
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`1347, 1360 (Fed. Cir. 2019). If literal infringement is not found, infringement may still be found
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`under the doctrine of equivalents if there is equivalence between the elements of accused product
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`and the claimed elements of the patented invention, subject to prosecution history estoppel, claim
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`vitiation, and other constraints. See Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co. ,
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`520 US. 17, 21 (1997); Microsofi Corp. v. GeoTag, Inc, 817 F.3d 1305, 1313 (Fed. Cir. 2016);
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`Advanced Steel Recovery, LLC v. X-Bady Equipment, Inc, 808 F.3d 1313, 1319 (Fed. Cir. 2015).
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`c. me
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`One cannot be held liable for practicing an invalid patent claim. Pandroi USA, LP v.
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`AirBoss Railway Prods, Inc, 320 F.3d 1354, 1365 (Fed. Cir. 2003). Patent claims are presumed
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`valid upon issuance. 35 U.S.C. § 282. Nonetheless, there are multiple bases by which a patent
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`claim may be found invalid, such as anticipation (35 U.S.C. § 102), obviousness (35 U.S.C.
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`§ 103), or failure to comply with requirements of definiteness, written description, or enablement
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`(35 U.S.C. § 112).4 The burden is on the challenger to prove by clear and convincing evidence
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`that a claim is invalid. Norgren Inc. v. International Trade Comm ’n, 699 F.3d 1317, 1322 (Fed.
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`Cir. 2012); Tessera, Inc. v. International Trade Comm ’n, 646 F.3d 1357, 1366 (Fed. Cir. 2011).
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`l.
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`Anticipation
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`A patent claim is invalid if “the invention was patented or described in a printed
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`publication in this or a foreign country .
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`.
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`.
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`, more than one year prior to the date of the
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`application for patent in the United States.” 35 U.S.C. § 102(b) (pre-AIA). To invalidate a
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`patent claim on the grounds of anticipation (lack of novelty), a challenger must prove by clear
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`and convincing evidence that a single prior art reference discloses each and every limitation of
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`the claim. Tessera, 646 F.3d at 1366; Spansion, 629 F.3d at 1355-56. The prior art reference
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`must disclose each such claim limitation either expressly or inherently, where “inherent
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`anticipation” requires that any element that is not expressly disclosed, or “missing,” in that
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`reference must be “necessarily present, not merely probably or possibly present, in the prior art
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`[reference].” Tintec Indus., Inc. v. Top—U.S.A. Corp, 295 F.3d 1292, 1295 (Fed. Cir. 2002).
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`Anticipation, including inherency, is a question of fact. Motorola Mobility, LLC v. International
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`Trade Comm ’n, 737 F.3d 1345, 1348 (Fed. Cir. 2013).
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`4 These and other sections of the patent statutes, title 35 of the United States Code, were
`amended by the “America Invents Act” (“AIA”), P.L. 112—92, 125 Stat. 284 (Sept. 16, 2011).
`The AIA’s amendments to sections 102 and 103 went into effect on March 16, 2013. All of the
`patents in suit issued from applications filed before that date and are thus subject to the pre-AIA
`statutes. See Acceleration Bay, LLC v. Activision Blizzard Inc. , 908 F.3d 765, 772 n.6 (Fed. Cir.
`2018); Belden Inc. v. Berk—Tel: LLC, 610 F. App’x 997, 998 n.1 (Fed. Cir. 2015).
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`8
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`Anticipation fiuther requires that the prior art’s disclosures must be sufficient to enable a
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`person of ordinary skill in the art to practice the claimed invention “without undue
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`experimentation.” In re Gleave, 560 F.3d 1331, 1334-35 (Fed. Cir. 2009). A prior art reference
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`is presumably enabled for invalidity purposes, but a patentee may overcome this presumption by
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`presenting evidence of nonenablement. Impax Labs, Inc. v. Aventt's Phat-ms. Inc. , 468 F.3d
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`1366, 1382 (Fed. Cir. 2006). “[W]hether a prior art reference is enabling is a question of law
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`based on underlying factual findings.” Gleave, 560 F.3d at 1335.
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`2.
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`On-Sale Bar
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`A patent claim is also invalid if “the invention was .
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`.
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`. in public use or on sale in this
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`country, more than one year prior to the date of the application for patent in the United States.”
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`35 U.S.C. § 102(b) (pre-AIA). The on—saie bar is intended to prevent a patentee from using the
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`claimed invention, after it is ready for patenting, “for a profit, and not by way of experiment,” for
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`more than one year before filing for a patent application. Quest Integrity USA, LLC v.
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`Cokebusters USA Inc, _ F.3d _, 2019 WL 2180591, *5 (Fed. Cir. May 21, 2019) (quoting
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`Pfaflv. Wells Electronics, Inc. , 525 U.S. 55, 67 (1998)). In other words, the inventor “must
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`content himself with either secrecy, or legal monopoly.” Id. (quoting Pfafi", 525 U.S. at 68).
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`The party asserting invalidity pursuant to this “on-sale bar” must prove, by clear and
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`convincing evidence, that the object of the alleged sale or use met each and every limitation of
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`the contested claim, and thus was an embodiment of the claimed invention. Juicy Whip, Inc. v.
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`Orange Bang, Inc, 292 F.3d 728, 737-38 (Fed. Cir. 2002). The object of the sale must meet
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`each claim limitation expressly or inherently, which requires that each claim limitation must
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`necessarily be present. See Quest Integrity, 2019 WL 2180591, at *5; Tintec, 295 F.3d at 1295.
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`An on-sale bar further requires: (1) “the product must be the subject of a commercial
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`offer for sale”; and (2) “the invention must be ready for patenting.” Pfafl; 525 U.S. 55, 67
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`(1998). The former condition may be satisfied by a commercial offer to sell or a sale of the
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`product, but actual delivery of the product prior to the critical date is not required. Helsinn
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`Healthcare SA. v. Teva Pharms. USA, Inc, 855 F.3d 1356, 1370 (Fed. Cir. 2017) (discussing
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`pre-AIA § 102(b)), aflh‘, 139 S. Ct. 628 (2019); Medicines Co. v. Hospira Inc, 881 F.3d 1347,
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`1351 (Fed. Cir. 2018) (en bane). The sale must also be public, but this does not mean that the
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`invention itself must be made public. Helsinn, 139 S. Ct. at 633. Even “secret sales” may create
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`an invalidating on-sale bar in certain cases. Id. An “experimental use,” however, can in some
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`cases negate applicability of the on-sale bar. Barry, 914 F.3d at 1331; but see, e.g, Atlanta
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`Attachment Co. v. Leggett & Flatt, Inc, 516 F.3d 1361, 1365-66 (“once there has been a
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`commercial offer [for sale], there can be no experimental use exception“).
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`The latter condition (“ready for patenting”) may be satisfied either “by proof of reduction
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`to practice before the critical date” or “by proof that prior to the critical date the inventor had
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`prepared drawings or other descriptions of the invention that were sufficiently specific to enable
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`a person skilled in the art to practice the invention.” Hamilton Beach Brands, Inc. v. Sunbeam
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`Freda, Inc, 726 F.3d 1370, 1377 (Fed. Cir. 2013). In Pfajfi for example, the Supreme Court
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`found the product that was the object of the sale was ready for patenting because, prior to the
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`critical date, the patentee had sent drawings to the manufacturer that “fully disclosed the
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`invention,” but not the product itself. 525 U.S. at 67—68.
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`3.
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`Obviousness
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`A patent claim is also invalid “if the differences between the subject matter sought to be
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`patented and the prior art are such that the subject matter as a whole would have been obvious at
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`the time the invention was made to a person having ordinary skill in the art to which said subject
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`matter pertains." 35 U.S.C. § 103 (pre—AIA). Obviousness is a question of law based on
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`underlying facts and must be proven by clear and convincing evidence. Intercontinental Great
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`Brands LLC v. Kellogg North America Ca, 869 F.3d 1336, An1343-44 (Fed. Cir. 2017).
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`The underlying factual inquiries for obviousness, known as the Graham factors, include
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`consideration of: (1) the scope and content of the prior art; (2) the difference between the prior
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`art and the claimed invention; (3) the level of ordinary skill in the pertinent art (the field of the
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`invention); and (4) any relevant obj ective evidence of non-obviousness, such as commercial
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`success of the invention, long-felt but unmet need of the invention, or failure of others to achieve
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`it. ZUP, LLC v. Nash Mfg, Inc, 896 F.3d 1365, 1371 (Fed. Cir. 2018), cert. denied, No. 18-823,
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`2019 WL 659872 (U.S. Feb. 19, 2019) (citing Graham v. John Deere C0,, 383 US. 1, 17-18
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`(1966)). A party asserting obviousness must also show that a person skilled in the art had a
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`reason to combine the asserted pieces of prior art in the way that was eventually claimed in the
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`patent at issue, and that such a skilled artisan would have had a reasonable expectation of success
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`in doing so. See KER Int ’1 Co. v. Teleflex Inc, 550 US. 393, 421, 427 (2007); Senju Pharm. Co.
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`v. Lupin Ltd, 780 F.3d 1337, 1341 (Fed. Cir. 2015) (“a defendant asserting obviousness in view
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`of a combination of references has the burden to show by clear and convincing evidence that a
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`person of ordinary skill in the relevant field had reason to combine the elements in the manner
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`claimed"). Obviousness, moreover, requires only a reasonable expectation of success, not proof
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`of actual success. Endo Pharms. Inc. v. Actavis LLC, 922 F.3d 1365, 1379 (Fed. Cir. 2019).
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`Evidence of obviousness must be reviewed using an “expansive and flexible approach,”
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`rather than a “rigid approach to determining obviousness based on disclosures of individual
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`prior-art references[.]” Intercontinental Great Brands, 869 F.3d at 1344 (citing inter alia KSR,
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`ll
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`550 U.S. at 415, 419—22). “While anticipation is proven based on the express and inherent
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`teachings of a single prior art reference, an obviousness analysis reaches beyond the prior art
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`reference and takes into account other considerations such as the level of ordinary skill in the art
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`and any objective indicia of nonobviousness.” Vivint, Inc. v. Alarm. com, Inc. , 741 Fed. Appx.
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`786, 791-92 (Fed. Cir. July 26, 2018) (unpublished) (citing Cohesive Techns., Inc. v. Waters
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`Corp, 543 F.3d 1351, 1364 (Fed. Cir. 2008)). In particular, obviousness must also consider “the
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`knowledge, creativity, and common sense that an ordinarily skilled artisan would have brought
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`to bear when considering combinations or modifications,” the “inferences and creative steps that
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`a person of ordinary skill in the art would employ,” and “demands known to the design
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`community.” Intercontinenta! Great Brands, 869 F.3d at 1344 (internal quotes omitted).
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`With these principles in mind, courts have found that “[t]he combination of familiar
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`elements according to known methods is likely to be obvious when it does no more than yield
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`predictable results.” Norgren, 699 F.3d at 1322 (quoting KSR, 550 U.S. at 416). Also, “one of
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`the ways in which a patent’s subject matter can be proved obvious is by noting that there existed
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`at the time of invention a known problem for which there was an obvious solution encompassed
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`by the patent’s claims.” Id. (quoting KSR, 550 U.S. at 419-20). “[A]ny need or problem known
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`in the field of endeavor at the time of invention and addressed by the patent can provide a reason
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`for combining the elements in the manner claimed.” Id. (quoting KSR, 550 U.S. at 420). This
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`may include, but is not limited to, the particular problem motivating the patentee. See id.
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`Moreover, “if a technique has been used to improve one device, and a person of ordinary skill in
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`the art would recognize that it would improve similar devices in the same way, [then] using the
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`technique is obvious unless its actual applicatiou is beyond his or her skill.” Intercontinental
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`Great Brands, 869 F.3d at 1344 (quoting KSR, 550 U.S. at 417). Likewise, “[w]hen there is a
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`design need or market pressure to solve a problem and there are a finite number of identified,
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`predictable solutions, a person of ordinary skill has good reason to pursue the known options
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`within his or her technical grasp. If this leads to the anticipated success, it is likely the product
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`not of innovation but of ordinary skill and common sense.” KSR, 550 U.S. at 421.
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`When a patent is challenged for obviousness, the patentee may present objective evidence
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`(also called secondary considerations) of non-obviousness, such as a long-felt but unmet need for
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`the invention, its commercial success, failure of others, unexpected results, or copying. The
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`patentee must also demonstrate a nexus between the alleged secondary considerations and the
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`merits of the invention. See Bosch Automotive Service Solutions, LLC v. Motel, 878 F.3d 1027,
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`1038 (Fed. Cir. 2017); In re Harri-Hung Koo, 639 F.3d 1057, 1068 (Fed. Cir. 2011). Objective
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`evidence of non-obviousness must be considered in every case in which it is presented. Apple
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`Inc. v. Somsung Electronics Co., 839 F.3d 1034, 1048 (Fed. Cir. 2016).
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`D.
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`Domestic Industg;
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`Section 337 states that it is unlawful to import into the United States, sell for importation,
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`or sell in the United States after importation articles that infringe a valid and enforceable U.S.
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`patent “only if an industry in the United States, relating to articles protected by the patent .
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`.
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`.
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`concerned, exists or is in the process of being established.” 19 U.S.C. § 1337(a)(2); Certain
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`Ammonium Octamolybdate Isomers, Inv. No. 337-TA-477, Comm’n 013. at 55 (Jan. 2004). This
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`“domestic industry requirement” consists of an economic prong (i.e., the activities of, or
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`investment in, a domestic industry) and a technical prong (i.e. , whether the complainant practices
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`its own patents). Certain Stringed Musical Instruments and Components Thereofi Inv. No. 33 7-
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`TA-586, Connn‘n Op. at 12—14, 2009 WL 5134139 (Dec. 2009). The complainant bears the
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`burden of establishing that the domestic industry requirement is satisfied. See Certain Set- Top
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`Boxes and Components Thereofi Inv. No. 33 7-TA—454, Final Initial Determination at 294, 2002
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`WL 31556392 (June 21, 2002) (mireviewed by Commission in relevant part).
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`The technical prong of the domestic industry requirement is satisfied when the
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`complainant in a patent-based Section 337 investigation establishes that it is practicing or
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`exploiting the patents at issue, e. g. , through engineering, research, development or licensing. See
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`19 U.S.C. § 1337(a)(3)(C). The test for proving that the complainant is practicing the claimed
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`invention “is essentially the same as that for infringement, f.e., a comparison of the domestic
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`products to the asserted claims.” Crocs, Inc. v. International Trade Comm ’n, 498 F.3d 1294,
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`1306-07 (Fed. Cir. 2010) (quoting Alloc, Inc. v. International Trade Comm ’n, 342 F.3d 1361 ,
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`1375 (Fed. Cir. 2003). “In other words, the technical prong requires proof that the patent claims
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`cover the articles of manufacture that establish the domestic industry. Put simply, the
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`complainant must practice its own paten .” Id. It is not necessary, however, for the complainant
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`to show that it is practicing the same claims it is asserting for infringement purposes. Certain
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`Ammonium Octamolbydate Isomers, Inv. No. 337-TA-447, Comm’n Op. at 55 (Jan. 2004).
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`Rather, “it is sufficient to show that the domestic industry practices any claim of that patent, not
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`necessarily an asserted claim of that patent." Id. The complainant may show it is practicing the
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`asserted domestic industry claims either literally or under the doctrine of equivalents, as is the
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`case for infringement. See Certain Refitgerators and Components Thereofi Inv. No. 337-TA-
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`632, Comm’n Op. at Remand at 66-67 (Mar. 11, 2010) (public version) (affirming the Final ID’s
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`finding that the complainant satisfied the technical prong under the doctrine of equivalents).
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`With respect to the economic prong, the Commission has held that “whether a
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`complainant has established that its investment andt‘or employment activities are significant with
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`respect to the articles protected by the intellectual property right concerned is not evaluated
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`according to any rigid mathematical formula.” Certain Printing and Imaging Devices and
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`Components Thereofi Inv. N0. 337-TA—690, Comm’n Op. at 2'? (Feb. 17, 2011). Rather, the
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`Cammission examines “the facts in each investigation, the article of commerce, and the realities
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`of the marketplace.” Id. “The determination takes into account the nature of the investment
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`and/or employment activities, ‘the industry in question, and the complainant’s relative size.m Id.
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`(quoting Stringed Musical Instruments at 26).
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`IV.
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`ANALYSIS OF ISSUES UNDER REVIEW
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`A.
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`Review Of The ’256 Patent
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`1.
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`Background on the ’256 Patent
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`A magnetic data storage tape typically comprises multiple layers: (i) a nonmagnetic
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`lower supporting layer comprising an inorganic powder and a binder; (ii) an upper magnetic
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`layer comprising a ferromagnetic powder and a binder in that order; and (iii) a backcoating layer
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`on the opposite surface of the tape. See '256 patent at 3:58-64. The inventors of the ’256 patent
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`reported that deformation of the tape edge and other wear and tear on magnetic tapes can be
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`reduced by limiting the density and mean diameter of filler particles in the magnetic tape’s
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`backcoating layer. Id. at 3:47-4:57. For example, the inventors found that tape performance can
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`be optimized by limiting the mean (average) diameter of inorganic powder particles in the
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`support layer to 40 to 200 nanometers (“nm”)5, and limiting the number of such