PUBLIC VERSION
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`Washington, D.C.
`
`In the Matter of
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`CERTAIN MAGNETIC DATA
`STORAGE TAPES AND CARTRIDGES
`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 respondents 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 USInc. (“Sony DADC”) of Terre Haute, Indiana; and Sony Latin
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`AmericaInc. (“Sony Latin America”) of Miami, Florida (collectively, “Sony”) violated 19
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`U.S.C. § 1337, as amended (“Section 337”) by wayofinfringing claims 1-5 of U.S. Patent No.
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`6,630,256 (“the °256 patent”) and claims1, 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 determinedto enter a
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`limited exclusion order against Sony and cease anddesist 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 bondrate of: (a) 10.4 percent of entered value for Sony’s branded LTO-4tapes; (b) 7.9
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`percent of entered value for Sony’s branded LTO-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
`Sony v. FUJIFILM, 2018-00877
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`FUJIFILM, Exh. 2018, p. 1
`Sony v. FUJIFILM, 2018-00877
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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 History
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`The Commissioninstituted the present investigation on October 25, 2017, based on a
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`complaintfiled 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 andcartridges containing the samethat infringe one or more of the asserted claims
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`of Fujifilm’s ’256, ’899, 905, or 451 patents.! Jd. The notice of investigation named Sony as a
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`respondent. Jd. The Office of Unfair Import Investigations (“OUII”) was also namedas a party
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`to the investigation. Jd.
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`The accused products are Sony’s LTO-4, LTO-5, LTO-6, and LTO-8 magnetic data
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`storage tapes andtape 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.com/definition/Linear-Tape-Open-LTO(last viewed June3,
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`2019). LTO-4, LTO-5,etc., refers to sequential LTO-compliant product generations, which
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`represent improvements in storage capacity, data transfer rates, or other attributes. Jd.
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`On June 25-29, 2018, the presiding administrative law judge (“ALJ”) held an evidentiary
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`hearing on issuesrelating to the °256, ’899, ’905, and ’451 patents. By the timeofthe hearing,
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`the remaining asserted claims were claims 1-5 of the 256 patent; claims 1, 2, 7, 11, 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 °451 patent.
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`' Fujifilm also originally asserted U.S. 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. 11); Comm’n Notice (July 9, 2018) (aff’g Order No. 17); ID at 2-3.
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`2
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`FUJIFILM, Exh. 2018, p. 2
`Sony v. FUJIFILM, 2018-00877
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`FUJIFILM, Exh. 2018, p. 2
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`PUBLIC VERSION
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`On October 25, 2018, the ALJ issued a combinedinitial determination (“ID”) on
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`violation issues and a recommendeddetermination (“RD”) on remedy,the public interest, and
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`bondrates during the period of Presidential review. The ALJ found that Sony violated Section
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`337 by wayofinfringing one or moreofthe asserted claims of the ’256 and ’899 patents, and
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`that noneofthe 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 ofeither the °451 or °905 patent.
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`Id. The ALJ recommendedthat 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 SonyLatin
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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. Jd.
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`On November9, 2018, all parties, including OUII, filed a petition with the Commission
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`to review someportion of the ID. The partiesfiled their respective replies on November20,
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`2018, and their submissions on the public interest on November26, 2018.
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`Following the partial government shutdown in January 2019, the Commission issued, on
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`March15, 2019, a notice of its determination to review the ID in part with respect to the ’256,
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`°899, and ’905 patents, but not with respect to the °451 patent. In particular:
`
`e
`
`®
`
`e
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`With respect to the ’256 patent, the Commission determined to review the ID’s
`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 ID’s
`interpretation and application of limitations on the numberof surface projections
`havingcertain heights “per 6400 m?.” The Commission also determined to
`review whethertest 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 ID’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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`FUJIFILM, Exh. 2018, p. 3
`Sony v. FUJIFILM, 2018-00877
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`FUJIFILM, Exh. 2018, p. 3
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`PUBLIC VERSION
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`obviousin view ofthe prior art. The Commission did not review the ID’s
`findingsthat 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 responsesto the
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`Commission’s questions on review.” On April 5, 2019,the parties filed their respective replies.?
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`On May6, 2019, the Commission issued a notice ofits determination to extend thetarget date
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`for completion of this investigation to June 6, 2019. Comm’n Notice (May6, 2019).
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`Il.
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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’), Inv. No. 337-TA-1012, Comm’n Op.at 12 (March 8, 2018). Upon review,
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`the “Commissionhas ‘all the powers which it would have in makingtheinitial determination,’
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`except wherethe issues are limited on notice or by rule.” Jd. (quoting Certain Flash Memory
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`Circuits and Prods. Containing Same, Inv. No. 337-TA-382, 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 seg. Storage TapesI, Inv. 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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`? Complainants Fujifilm Corporation and Fujifilm Recording Media U.S.A., Inc.’s Opening Brief
`Regarding Commission Review (“Fujifilm’s Br.”); Respondents’ Initial Written Submission in
`Response to the Commission’s Determination to Review in Part a Final Initial Determination
`(“Sony’s Br.”); 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 Br.”).
`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 Staff'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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`FUJIFILM, Exh. 2018, p. 4
`Sony v. FUJIFILM, 2018-00877
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`FUJIFILM, Exh. 2018, p. 4
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`PUBLIC VERSION
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`Uponreview, “the Commission may affirm, reverse, modify, set aside or remand for
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`further proceedings, in whole orin part, the initial determination of the administrative law judge.
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`The Commission may also make any findings or conclusionsthat 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 TapesI, Inv.
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`No. 337-TA-1012, Comm’n Op.at 12; see also Spansion, Inc. v. Int’l 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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`. of articles that infringe a
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`valid and enforceable United States patent... .” 19 U.S.C. § 1337(a)(1)(B). Infringementis
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`found where an accused productor process practices each and every limitation of a patent claim,
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`eitherliterally or under the doctrine of equivalents. Cross Medical Products, Inc. v. Medtronic
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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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`Thefirst step of any infringementanalysis is to construe, or interpret, any disputed terms
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`in the asserted patent claims. SafeTCare Mfg., Inc. v. Tele-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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`Claim terms are normally construed according to their ordinary and customary meaningin the
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`art, as understood bya person ofordinary 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. AWH, 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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`>
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`FUJIFILM, Exh. 2018, p. 5
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`FUJIFILM, Exh. 2018, p. 5
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`PUBLIC VERSION
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`particular meaning in the relevant technical art, its construction may involvelittle more than
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`applying widely accepted meanings of commonly understood words. Phillips, 415 F.3d at 1314.
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`But wherea 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. Jd.
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`The Commission looksprimarily to intrinsic sources, i.e., the language of the claims
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`themselves, the remainderof the specification (of whichthe claimsareapart), and the patent’s
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`prosecution history, to determine the meaning of a claim term and whetherthe 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 whetherthe inventor intended to give a special meaningto a claim term that differs from
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`its original meaningor, alternatively, to disclaim or disavow some measure of claim scope. Jd.
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`(discussing Phillips, 415 F.3d at 1316). Asa general rule, embodiments or examples in the
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`specification may shed light on the meaning of claim terms, but they should notbe readinto the
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`claimsas limitations where they are not necessary. Markman, 52 F.3d at 978-79
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`The Commission should also consider the patent’s prosecution history, whereit is in
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`evidence,as it provides contemporaneous evidenceas 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 lacksthe clarity of the specification andis often less
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`useful for claim construction purposes becauseit reflects an ongoing negotiation between the
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`inventor and the PTOrather than the final product of that negotiation. Jd.
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`The Commission mayalso look to extrinsic evidence, such as expert and inventor
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`testimony, dictionaries, learned treatises, and other evidence externalto the patent andits
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`prosecution history, to discern the scope and meaning of a claim term. Jd. at 799. Extrinsic
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`evidence mayalso be useful in understanding relevant scientific principles, the meaning of
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`FUJIFILM, Exh. 2018, p. 6
`Sony v. FUJIFILM, 2018-00877
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`FUJIFILM, Exh. 2018, p. 6
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`PUBLIC VERSION
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`technical terms,and thestate of the art. Jd. at 796. Nonetheless, extrinsic evidence is generally
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`regardedas less reliable than intrinsic evidence and cannot be used to override the meaning of
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`claim terms providedbythe intrinsic evidence. Jd. at 799. “The constructionthat staystrue to
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`the claim language and mostnaturally 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.” SupremaInc. v. Int'l Trade Comm’n, 796 F.3d
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`1338, 1352-53 (Fed. Cir. 2015). A preponderance ofthe evidence is required to prove
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`infringement. Spansion, 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 foundin,
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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 infringementis not found, infringement maystill be found
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`underthe doctrine of equivalentsif 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 U.S. 17, 21 (1997); Microsoft Corp. v. GeoTag, Inc., 817 F.3d 1305, 1313 (Fed. Cir. 2016);
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`Advanced Steel Recovery, LLC v. X-Body Equipment, Inc., 808 F.3d 1313, 1319 (Fed. Cir. 2015).
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`C.
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`Validity
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`Onecannotbe heldliable for practicing an invalid patent claim. Pandrol 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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`FUJIFILM, Exh. 2018, p. 7
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`FUJIFILM, Exh. 2018, p. 7
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`PUBLIC VERSION
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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 maybe 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 burdenis 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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`1.
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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 ... , 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 groundsofanticipation (lack of novelty), a challenger must prove by clear
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`and convincing evidencethat 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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`mustdisclose each such claim limitation either expressly or inherently, where “inherent
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`anticipation” requires that any elementthat 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 priorart
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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 sectionsof 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 amendmentsto 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 vy. Activision Blizzard Inc., 908 F.3d 765, 772 n.6 (Fed.Cir.
`2018); Belden Inc. v. Berk-Tek LLC, 610 F. App’x 997, 998 n.1 (Fed. Cir. 2015).
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`8
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`FUJIFILM, Exh. 2018, p. 8
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`PUBLIC VERSION
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`Anticipation further requires that the prior art’s disclosures mustbe sufficient to enable a
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`person ofordinary skill in the art to practice the claimed invention “without undue
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`experimentation.” Jn 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 overcomethis presumption by
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`presenting evidence of nonenablement. Jmpax Labs., Inc. v. Aventis Pharms. Inc., 468 F.3d
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`1366, 1382 (Fed. Cir. 2006). “[W]hethera 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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`De
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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 onsale in this
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`country, more than oneyear 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-sale bar is intended to prevent a patentee from using the
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`claimedinvention,after it is ready for patenting, “for a profit, and not by way of experiment,” for
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`more than one year beforefiling for a patent application. Quest Integrity USA, LLCv.
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`Cokebusters USA Inc.,__ F.3d __, 2019 WL 2180591, *5 (Fed. Cir. May 21, 2019) (quoting
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`Pfaffv. 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.” Jd. (quoting Pfaff, 525 U.S. at 68).
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`The party asserting invalidity pursuantto 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 embodimentof 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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`FUJIFILM, Exh. 2018, p. 9
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`PUBLIC VERSION
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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.” Pfaff; 525 U.S. 55, 67
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`(1998). The former condition maybe satisfied by a commercial offer to sell or a sale of the
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`product, but actual delivery of the product priorto the critical date is not required. Helsinn
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`Healthcare S.A. v. Teva Pharms. USA, Inc., 855 F.3d 1356, 1370 (Fed. Cir. 2017) (discussing
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`pre-AIA § 102(b)), aff'd, 139 S. Ct. 628 (2019); Medicines Co. v. Hospira Inc., 881 F.3d 1347,
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`1351 (Fed. Cir. 2018) (en banc). 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. Jd. 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 & Platt, 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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`Thelatter condition (“ready for patenting”) maybe satisfied either “by proof of reduction
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`to practice before thecritical date” or “by proof that prior to the critical date the inventor had
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`prepared drawingsorotherdescriptions of the invention that were sufficiently specific to enable
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`a personskilled in the art to practice the invention.” Hamilton Beach Brands, Inc. v. Sunbeam
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`Prods., Inc., 726 F.3d 1370, 1377 (Fed. Cir. 2013). In Pfaff; 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 drawingsto the manufacturerthat “fully disclosed the
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`invention,”but not the productitself. 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 andthe prior art are such that the subject matter as a whole would have been obviousat
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`10
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`the time the invention was madeto a person havingordinary skill in the art to which said subject
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`matter pertains.” 35 U.S.C. § 103 (pre-AIA). Obviousnessis 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 Co., 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 contentofthe 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 objective evidence of non-obviousness, such as commercial
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`successof 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 vy. John Deere Co., 383 U.S. 1, 17-18
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`(1966)). A party asserting obviousness must also showthata personskilled in the art had a
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`reason to combinethe asserted pieces ofprior 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 KSR Int'l Co. y. Teleflex Inc., 550 U.S. 398, 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 byclear and convincing evidencethat a
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`person ofordinary 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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`550 U.S. at 415, 419-22). “While anticipation is proven based on the express and inherent
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`teachingsof a single prior art reference, an obviousnessanalysis reaches beyondthepriorart
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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 commonsensethat an ordinarily skilled artisan would have brought
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`to bear when considering combinations or modifications,” the “inferences and creative stepsthat
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`a person ofordinary skill in the art would employ,” and “demands known to the design
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`community.” Jntercontinental Great Brands, 869 F.3d at 1344 (internal quotes omitted).
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`With these principles in mind, courts have foundthat “[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 obviousis by noting that there existed
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`at the time ofinvention a known problem for which there was an obvious solution encompassed
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`by the patent’s claims.” Jd. (quoting KSR, 550 U.S. at 419-20). “[A]ny need or problem known
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`in the field of endeavorat 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.” Jd. (quoting KSR, 550 U.S. at 420). This
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`may include, butis 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 application is beyond his or herskill.” Jntercontinental
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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 andthereare a finite numberofidentified,
`predictable solutions, a person ofordinary 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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`Whena 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 betweenthe alleged secondary considerations and the
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`merits of the invention. See Bosch Automotive Service Solutions, LLC v. Matal, 878 F.3d 1027,
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`1038 (Fed. Cir. 2017); In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). Objective
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`evidence of non-obviousness must be considered in every case in whichit is presented. Apple
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`Inc. v. Samsung Electronics Co., 839 F.3d 1034, 1048 (Fed. Cir. 2016).
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`D.
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`Domestic Industry
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`Section 337 states that it is unlawful to import into the United States, sell for importation,
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`orsell in the United States after importationarticles 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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`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 Op. 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 Thereof, Inv. No. 337-
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`TA-586, Comm’n Op. at 12-14, 2009 WL 5134139 (Dec. 2009). The complainant bears the
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`burdenofestablishing that the domestic industry requirementis satisfied. See Certain Set-Top
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`Boxes and Components Thereof, Inv. No. 337-TA-454, Final Initial Determination at 294, 2002
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`WL 31556392 (June 21, 2002) (unreviewed by Commission in relevant part).
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`The technical prong of the domestic industry requirementis 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, developmentorlicensing. See
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`19 U.S.C. § 1337(a)(3)(C). The test for proving that the complainantis practicing the claimed
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`invention “is essentially the sameas that for infringement, i.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 proofthat the patent claims
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`coverthe articles of manufacture that establish the domestic industry. Put simply, the
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`complainant must practice its own patent.” Jd. It is not necessary, however, for the complainant
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`to showthat it is practicing the same claimsit 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.” Jd. The complainant may showit is practicing the
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`asserted domestic industry claimseitherliterally or under the doctrine of equivalents,as is the
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`case for infringement. See Certain Refrigerators and Components Thereof, 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 complainantsatisfied the technical prong underthe 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 and/or employmentactivities are significant with
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`respect to the articles protected by the intellectual property right concernedis not evaluated
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`according to any rigid mathematical formula.” Certain Printing and Imaging Devices and
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`Components Thereof, Inv. No. 337-TA-690, Comm’n Op.at 27 (Feb. 17, 2011). Rather, the
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`Commission examines“the facts in each investigation, the article of commerce, and therealities
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`of the marketplace.” Jd. “The determination takes into account the nature of the investment
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`and/or employmentactivities, ‘the industry in question, and the complainant’s relative size.’” 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 powderanda binder;(ii) an upper magnetic
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`layer comprising a ferromagnetic powder anda binderin 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 diameteroffiller 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 powderparticles in the
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`support layer to 40 to 200 nanometers (“‘nm”)°, and limiting the numberof such particles to 10-
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`200 particles per 100 pm?.° Jd. at 3:58-4:15, 4:33-57.
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`Fujifilm accuses Sony’s LTO-4, LTO-5, and LTO-6tapesof infringing claims 1-5 of the
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`°256 patent. Representative claim 1 is below, with the terms of interest in underlined italics:
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`> A nanometer(“n