PUBLIC VERSION
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`Washington, D.C.
`
`In the Matter of
`
`CERTAIN INDUSTRIAL AUTOMATION
`SYSTEMS AND COMPONENTS THEREOF
`INCLUDING CONTROL SYSTEMS,
`CONTROLLERS, VISUALIZATION
`HARDWARE, MOTION CONTROL
`SYSTEMS, NETWORKING EQUIPMENT,
`SAFETY DEVICES, AND POWER
`SUPPLIES
`
`Inv. No. 337-TA-1074
`
`DENYING RESPONDENT RADWELL INTERNATIONAL, INC.’S
`ORDER NO. 38:
`" ~ MOTION FOR TERMINATION OF COPYRIGHT
`INFRINGEMENT CLAIM, OR, IN THE ALTERNATIVE,
`SUMMARY DETERMINATION OF NO COPYRIGHT
`INFRINGEMENT
`
`’
`
`I. BACKGROUND
`
`(July 12, 2018)
`
`'
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`On October 16, 2017, the Commission instituted this investigation based on a complaint
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`by Rockwell Automation, Inc. (“Rockwell”) for alleged violations of section 337 “based upon
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`the importation into the United States, the sale for importation, and the sale within the United
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`States after importation of certain industrial automation systems and components thereof
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`including control systems, controllers, visualization hardware, motion and motor control
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`systems, networking equipment, safety devices, and power supplies” under subsection (a)(l)(B)
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`and (C) of section 337 by reasonsof infringement of various copyrights and trademarks, and
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`under subsection (a)(l)(A) of section 337 “by reason of unfair methods of competition[] and
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`unfair acts, the threat or effect of which is to destroy or substantially injure an industry in the
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`

`

`PUBLIC VERSION
`
`United States.” 83 F.R. 48113-48114 (Oct. 16, 2017). Among other respondents, the complaint
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`names Radwell lntemational, Inc. (“Radwell”).
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`Rockwell alleges that its products use its copyrighted firmware as the operating system
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`that enables users’ “customized logic programs to use and interface with the hardware
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`components.” Complaint at 51. “For example,” Rockwell alleges, “a user may compose a logic
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`program using Rockwell’s Studio 5000 software, load the logic program onto a ControlLogix®
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`controller and the controller will execute the logic program with the help of the controller’s_
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`copyrighted firmware.” Id. Rockwell says its controllers are not sold with the firmware pre­
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`installed, “Instead, authorized purchasers are directed to download or otherwise obtain
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`compatible firmware from Rockwell to install on their controllers at the time that the controller is
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`put into use.” Id. at 52.
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`_
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`Rockwell alleges that when an end user buys a Rockwell controller, “the user is
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`instructed to download and install the necessary firmware.” Id. According to Rockwell, unless
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`the end user got the controller from Rockwell or an authorized distributor, the user is not
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`permitted to download the firmware. If a user downloads the finnware to use on a controller
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`obtained from another source, Rockwell says the user infringes Rockwell’s copyright in the
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`firmware. Id. at 52-53. Rockwell alleges that Radwell contributes to and induces infringement
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`through the unauthorized download of Rockwell’s firmware by users who obtained Rockwell
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`controllers from Radwell and that Radwell “knows or should know of the infringing activity as
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`the infringing products have no other use than to infringe the Asserted Copyrights.” 1d. at 53.
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`1
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`On May 25, 2018, Radwell moved to terminate Rockwell’s claim of copyright
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`infringement or, in the alternative, for summary determination of no copyright infringement
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`(Motion Docket No. 1074-21) (the “motion”). Radwell says that to prevail on a claim of indirect
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`2
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`

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`PUBLIC VERSION
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`copyright infringement, Rockwell “must first prove an underlying direct infringement by a third
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`party.” Motion at 1 (quoting BMG Rights Mgmt. (US) LLC v. Cox Commc ’nInc, 199 F. Supp.
`
`3d 958, 969 (E.D. Va. 2016), qfi"’din part and rev ’d inpart, 881 F.3d 293 (4th Cir. 2018)).
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`Radwell maintains that “in its Complaint, contentions and expert reports,” Rockwell “has not
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`shown an instance of direct infringement of the Assefled Copyrights by any third-party.” Id.
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`Radwell also maintains that “Rockwell has not shown a nexus between any alleged direct
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`infringement by a third party and the importation of an accused product by Radwell, a necessary
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`element for finding a violation of Section 337.” Id. at 1-2. For these reasons, Radwell seeks
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`termination of the copyright infringement claim under Commission Rule 210.2l(a) or summary
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`detennination under Commission Rule 210.18.
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`On June 7, 2018, Rockwell filed an opposition (“Opp."’). Rockwell argues that “all of
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`Radwell’s customers of imported Rockwell Copyright Products (of which there are -
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`known
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`examples) directly infringe Rockwell’s Asserted Copyrights.” Opp. at 2. Rockwell claims,
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`moreover, that its copyright infringement claims may be proven by circumstantial evidence, and
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`no direct evidence of a user downloading the Rockwell firmware is required for Rockwell to
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`prevail.
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`_
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`p
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`-On June 7, 2018, Staff filed its response, in which it opposes the motion. Staff interprets
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`Radwell’s motion as one challenging the sufficiency of Rockwell’s interrogatory responses.
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`Staff Response at 4. Staff says Radwell lacks standing to challenge Rockwell’s responses
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`because Radwell did not propound an interrogatory on the issue of copyright infringement. Staff
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`also maintains that Rockwell has adduced strong circumstantial evidence of direct infringement
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`by end users of products sold by Radwell. On the importation issue, Staff says Radwell has not
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`contested importation and that there is evidence in the record of specific purchase orders. On the
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`3
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`

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`PUBLIC VERSION
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`basis of this evidence, Staff says “Rockwell can easily establish a nexus between any alleged
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`direct infringement by a third party and the importation of an accused product by Radwell.” Id.
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`at 7.‘
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`On June l2, 2018, Radwell filed a reply brief, in which it argues that circumstantial
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`I
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`evidence cannot be used to demonstrate copyright infringement where the accused products have
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`non-infringing uses, citing ACCO Brands, Inc. v. ABA Locks Mfi. C0., 501 F.3d 1307, l3l3
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`(Fed. Cir. 2007). Radwell says the accused products “can be and are used by third parties in the
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`United States without the alleged unlawful download of firmware.” Reply at 7. Radwell says
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`“customers purchase products from Radwell to replace units they already owned which have
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`failed” and that such purchasers “necessarily were already in possession of the firmware they i
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`needed to operate the devices they purchased from Radwell.” Id. Radwell argues that because
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`there are non-infringing uses of the products sold by Radwell, it follows that Rockwell must
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`present direct evidence of infringement by end users.
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`On June 22, 2018, Rockwell filed a motion for leave to file a sur-reply in opposition to
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`the motion. Motion Docket No. 1074-30 (Rockwell‘s motion). Rockwell argues that it should
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`be permitted to file a sur-reply because Radwell argues for the first time in its reply brief that the
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`accused products have non-infringing uses. Rockwell points to Radwell’s discovery responses
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`and claims that the omission ofthe non-infringing uses argument “is not only fatal to Radwell’s
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`motion for summary determination, it is solid ground for exclusion of any such defense in this
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`case.” Sur-reply at 3.2 Rockwell argues that even if Radwell’s argument is deemed timely,
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`1Staff s argument concerning Radwell’s failure to propound contention interrogatories appears
`to be inapposite. The relief requested by Radwell is not a discovery sanction but a substantive
`ruling that, on this record, there can be no liability based on copyright infringement.
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`2Even if, as Rockwell argues, the issue of non-infringing uses should have been asserted by
`Radwell in response to contention interrogatories, it appears that Radwell alluded to the issue in ,
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`4
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`

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`PUBLIC VERSION
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`Radwell provides no instance of actual non-infringing use and has not shown that alleged non­
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`infringing uses ‘“are not unusual, far-fetched, illusory, impractical, occasional, aberrant, or
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`experimental.”’ Id. at 3 (quoting Vita-MixCorp. v. Basic Holding, Inc, 581 F.3d l3l7,
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`l327
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`(Fed. Cir. 2009)). On July 5, 2018, Radwell filed an opposition to Rockwell’s motion to file a
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`sur-reply. Radwell argues that there are no extraordinary circumstances that justify permitting a
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`sur-reply, citing Ground Rule 3.1.2.
`
`A
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`With respect to the sur-reply, on Radwell’s theory that Rockwell cannot prevail on
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`circumstantial evidence of infringement unless Rockwell demonstrates that there are no non­
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`infringing uses, Radwell needed to move for a summary detennination on that ground, as well as
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`the ground that Rockwell has allegedly failed to present direct evidence of end-user
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`infringement. By holding back the non-infringing uses argument, Radwell unfairly prejudiced
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`Rockwell by depriving Rockwell of the opportunity to oppose that prong of Radwell’s argument.
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`Because Radwell did not raise the issue of non-infringing uses in its original motion, Rockwell’s
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`motion to file a sur-reply, Motion Docket No. 1074-O30,is hereby GRANTED.
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`II. DISCUSSION
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`~
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`A. Termination
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`Commission Rule 2lO.2l(a) states, in sum, that a party may move at any time to
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`terminate an investigation in Whole or in part for good cause. 19 C.F.R. § 2l 0.21(a).
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`ln Certain
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`response to Rockwell’s interrogatories. As shown in Exhibit A to Rockwell’s motion for leave
`to file a sur-reply, Radwell states, “It is important to note that the gravamen of Rockwell’s theory
`is that the imported units have no use other than to infringe (at the point that end-uscrs install
`firmware on them) . . . .” Motion for Sur-Reply Exh. A. at 26, n.l4. Radwell’s responses were
`submitted on March 23, 2018, within the time for seeking further discovery. Sur-Reply Exh. A
`at 86; Order No. 6 at 2 (setting April 4, 2018 as discovery cutoff). If Rockwell had duly noted
`Radwell’s “important” assertion, it could have asked Radwell whether it contended that the
`products Radwell sold had significant non-infringing uses. l-laving failed to do so, Rockwell
`cannot now fault Radwell for failing to disclose such alleged non-infringing uses.
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`5
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`

`

`PUBLIC VERSION
`
`Carbon and Alloy Steel Products, Inv. No. 337-TA-1002, the Commission affirmed that an ALJ
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`may terminate a claim “for failure to state a viable cause of action,” as under Fed. R. Civ. P.
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`12(b)(6). Comm’n Op. at 8 (citing Amgen Inc. v. Int’! Trade Comm ’n, 902 F.2d 1532 (Fed. Cir.
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`1990)).3
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`"
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`B. Summary Determination
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`Commission Rule 210. l 8(b) states that the summary determination “shall be rendered if
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`pleadings and any depositions, answers to interrogatories, and admissions on file, together with
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`the affidavits, if any, show that there is no genuine issue as to any material fact and that the
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`moving party is entitled to a summary determination as a matter of law.” 19 C.F.R. § 210. l 8(b).
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`The rule is patterned on Fed. R. Civ. P. 56. See Certain Carbon and Alloy Steel Products
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`.
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`(“Carbon and Alloy Steel”), Inv. No. 337-TA-1002, Initial Determination, 2017 WL 5167413 at
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`*11, not reviewed by Connnission Notice, 2017 WL 6434923 (Nov. 1, 2017).4
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`I
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`Under Rule 56, summary judgment is required where a party fails to make a showing
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`“sufficient to establish the existence of an element essential to that party's case, and on which
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`that party will bear the burden of proof at trial.” Celotex Corp. v. Catrett, 477 U.S. 317, 322
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`(1986). The burdcn of the moving party may be discharged by pointing out to the comt the lack
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`3Rockwell’s Complaint explicitly alleges that Radwell “knows or should know of the infringing
`activity as the infringing products have no other use than to infringe the Asserted Copyrights.”
`Compl. at 53. Radwel1’s motion for termination fails for this reason alone, since Rockwell has
`not failed to state a claim. Even assuming that, as Radwell maintains, the existence of no non­
`infringing uses is part of Rockwell’s case-in-chief, Rockwell has in fact made the claim that
`there are no non-infringing uses in its complaint.
`
`4Under Rule 56 the court must decide whether there is a triable issue of fact decision based on
`the record as a whole. See generally, e.g., Faust v. PemcoAeroplex, Ina, 226 F. App'x 887, 889
`(1lth Cir. 2007) (“In the context of summary judgment, we must look at the record as a wholc,
`reviewing all of the evidence in the record”) (quoting Reeves v. Sanderson Plumbing Prods,
`Inc, 530 U.S. 133, 151 (2000) (internal quotation marks omitted)).
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`6
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`

`

`PUBLIC VERSION
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`of evidence supporting the nonrnoving party's case; Id. at 325. Where the non-moving party
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`bears the burden of proof at trial, that party must produce more than a “scintilla of evidence . . . ;
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`there must be evidence on which the jury could reasonably find for the plaintiff.” Anderson v.
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`Liberty Lobby, Inc., 477 U.S. 242, 252 (1986).
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`If an element of a cause of action deemed essential as a matter of law cannot be proven,
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`summary judgment is appropriate regardless of disputes over other issues. “[A] complete failure
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`of proof concerning an essential element of the nonrnoving party’s case necessarily renders all
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`other facts immaterial.” Celotex, 477 U.S. at 322-23. Deciding which facts are material requires
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`“analyzing the logic of the case.”’ Carbon and Alloy Steel, 2017 WL 5167413 at *12 (quoting
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`William W. Schwarzer, et al., Federal Judicial Center, “The Analysis and Decision of Summary
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`Judgment Motions,” 139 F.R.D. 441, 477 (1992)). “By this process, courts can ascertain which
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`issues may be dispositive of the case, rendering other factual disputes immaterial." Id.
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`Once the legal or statutory requirements have been determined and the court has
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`V
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`identified the facts that must be demonstrated in order to prevail, it remains.for the court to
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`decide whether there are genuine factual disputes under the appropriate legal standards. “[T]he
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`test of a dispute is whether a reasonable jury could find for the nonmovant.” Id. In making this
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`determination, the court “must draw all reasonable inferences and resolve all genuine factual
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`disputes in favor of the nonmovant.” Id. at 480. However, “the substantive law can limit the
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`range of inferences that a jury may draw.” Id. at 489-490 (citing Monsanto Co. v. Spray-Rite,
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`Service C0rp., 465 U.S. 752 (1984)).
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`C. Copyright Infringement
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`\
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`The federal statutory and common law of copyright applies to Rockwell’s claim under
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`section 337. TianRui Group C0. Ltd. v. ITC, 661 F.3d 1322, 1327-28 (Fed. Cir. 2011); Certain
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`7
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`\
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`

`

`PUBLIC VERSION
`
`TVPrograms, Literary Worksfor TVProd, & Episode Guides, Inv. No. 337-TA-886 (Feb. 6,
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`2014). Initial Detennination at 8-9, not reviewed by Commission Notice, 79 F.R. 24752 (May 1,
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`2014). There is a well-developed body of law concerning the fact-bound showing required to
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`prove contributory or induced copyright infringement. See, e.g., BMG Rights Management (US)
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`LLC v. Cox Comma ’ns,1nc., 881 F.3d 293, 306-307 (4th Cir. 2018) (extensively discussing
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`secondary liability for copyright infringement).
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`Whether the record before me requires a finding of no secondary liability has not been
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`briefed under the correct legal standards by any of the parties. In Rockwell’s opposition and
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`Radwe1l’s reply brief, the parties address this issue by discussing patent law cases related to non­
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`infringing alternatives, instead of copyright law. See Opp. at 6-8, Reply at S-10. For these
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`reasons and because there are numerous factual questions that need to be resolved before a
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`determination on secondary liability can be reached, RadWell’smotion is denied.5
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`III. CONCLUSION
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`Based on the foregoing reasons, Motion Docket No. 1074-021 is hereby DENIED.
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`This order is being issued with a confidential designation, and pursuant to Ground Rule
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`1.10, each party shall submit to the Administrative Law Judge a statement as to Whether or not it
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`seeks to have any portion of this order deleted from the public version within seven (7) days.
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`See 19 C.F.R. § 2lO.5(t). A party seeking to have a portion of the order deleted from the public
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`version thereof must attach to its submission a copy of the order with red brackets indicating the
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`5Radwell’s argument based on lack of a nexus to importation depends on Rockwell’s alleged
`failure to demonstrate direct infringement. The nexus argument fails for the same reasons
`discussed above.
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`8
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`

`

`PUBLIC VERSION
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`p0rti0n(s) asserted to contain confidential business infonnationé The parties’ submissions under
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`this subsection need not be filed with the Commission Secretary but shall be submitted by paper
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`copy to the Administrative Law Judge and by e-mail to the Administrative Law Judge’s attomey
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`advisor.
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`SO ORDERED.
`
`$4,
`
`Dee Lord
`Administrative Law Judge
`\
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`6Redactions should be limited to avoid depriving the public of the basis for understanding the
`result and reasoning underlying the decision. Parties who submit excessive redactions may be
`required to provide an additional written statement, supported by declarations from individuals
`with personal knowledge, justifying each proposed redaction and specifically explaining why the
`information sought to be redacted meets the definition for confidential business infonnation set
`forth in Commission Rule 201.6(a). 19 C.F.R. § 201.6(a).
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`9
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`

`

`CERTAIN INDUSTRIAL AUTOMATION SYSTEMS AND
`COMPONENTS THEREOF INCLUDING CONTROL
`SYSTEMS, CONTROLLERS, VISUALIZATION
`HARDWARE, MOTION CONTROL SYSTEMS,
`NETWORKING EQUIPMENT, SAFETY DEVICES, AND
`POWER SUPPLIES
`
`Inv. No. 337-TA-1074
`
`‘
`
`PUBLIC CERTIFICATE OF SERVICE
`
`I, Lisa R. Barton, hereby certify that the attached ORDER has been served by hand upon
`the Commission Investigative Attorney, Brian K00, Esq., and the following parties as indicated,
`on 7/20/2018
`
`Lisa R. Barton, Secretary
`U.S. International Trade Commission
`500 E Street, SW, Room 112
`Washington, DC 20436
`
`On Behalf of Complainants Rockwell Automation. Inc.:
`
`Adam D. Swain
`ALSTON & BIRD LLP
`950 F Street NW
`Washington, DC 20004
`
`On Behalf of Respondent Radwell International
`d/b/a PLC Center:
`
`Deanna Tanner Okun
`ADDUCI, MASTRIANI & SCHAUMBERG LLP
`1133 Connecticut Ave, NW
`Washington, DC 20036
`
`Respondents:
`
`Can Electric Limited
`No. 2 Danan Rd, Yueziu District
`Guangzhou, Guangdong, 5101 15
`China
`
`Capnil (HK) Company Limited
`Unit 603 6/F Koon Wah Mirrow
`Factory 3 lnd Bldg 5-9 Ka Hing
`Rd Kln Hk
`Hong Kong
`
`|:l Via Hand Delivery
`[Z(Via Express Delivery
`[:1Via First Class Mail
`II] Other:
`
`1:}Via Hand Delivery
`E(Via Express Delivery
`II] Via First Class Mail
`U Other:
`
`El Via Hand Delivery
`lj Via Express Delivery
`III Via First Class Mail
`II] Other:
`
`El Via Hand Delivery
`|ZlVia Express Delivery
`III Via First Class Mail
`III Other:
`
`­
`­
`­
`

`

`CERTAIN INDUSTRIAL AUTOMATION SYSTEMS AND
`COMPONENTS THEREOF INCLUDING CONTROL
`SYSTEMS, CONTROLLERS, VISUALIZATION
`HARDWARE, MOTION CONTROL SYSTEMS,
`NETWORKING EQUIPMENT, SAFETY DEVICES, AND
`POWER SUPPLIES
`
`Inv. N0. 337-TA-1074
`
`Certificate of Service —Page 2
`
`Fujian Dahong Trade C0., Ltd.
`A15-2303 Taihongyu Pushang Road
`Cangshan Fuzhou Fujian _
`Fuj ian 350008
`China
`
`Huang Wei Feng d/b/a A-O-M Industry
`Room 201 N0. 55 2 Qu,
`Tdngshuiwei, Minzhi,
`Longhua, B0a’An, Shenzhen 511700
`China
`
`i
`
`PLC-VIP Shop d/b/a VIP Tech Limited
`95 Fuk Wing Street,
`Cheung Sha Wan, Kowloon
`Hong Kong
`
`Wenzhou Sparker Group C0. Ltd. L
`d/b/a Sparker Instruments
`Room 503, Oujiang Masion, Wenzhou Road,
`Wenzhou, 325000, China
`
`Yaspro Electronics (Shanghai) C0., Ltd.
`Room l808E,,N0. 488, Vaohua Road
`Pudong New District
`Shanghai, China
`
`Cl Via Hand Delivery
`E{Via Express Delivery
`III Via First Class Mail
`El Other:
`
`l:l Via Hand Delivery
`lZfVia Express Delivery
`U Via First Class Mail
`Cl Other:
`
`Cl Via Hand Delivery
`lY(Via Express Delivery
`Ill Via First Class Mail
`[1 Other:
`
`El Via Hand Delivery
`dVia ExpressDelivery
`El Via First Class Mail
`III Other:
`V
`
`El Via Hand Delivery
`E(Via Express Delivery
`Cl Via First Class Mail
`l:| Other:
`
`