PUBLIC VERSION
`
`UNITED STATES INTERNAl’IONAI, T&\DE
`Washinp ton, 1:) .C .
`
`lOMhlISSION
`
`In the Matter of
`
`CERTAIN RARE-EARTH
`MAGNETS AND MAGNETIC
`MATERIALS AND ARTICLES
`CONTAINING THE SAME
`
`1
`)
`)
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`1
`1
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`Imevtrgatton 10. 337-TA-413
`
`Order No. 21: Initial Determination Granting Complainants’ Motion No. 413-14
`To Amend Complaint And Notice of Investrgabati To Add A.R.E.,
`NEOCO. Jing; Ma and Xin €I-&in- __ -
`- -
`- .
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`On November 18, 1998, pursuant to Cormisston rub: 21d. 14(b). complainants
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`c
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`Magnequench International, Inc. (Magnequench) and SU miiomca Specia! Metals Co., Ltd
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`(SSMC) moved that the complaint and notice of investiptic~n ir t lis investigation be amended
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`to add the following companies as respondents:
`
`A.R.E., Inc. (A.R.E.)
`777 Linden Street
`Sharon, PA 16146
`or
`782 Pearl Street
`Sharon, PA 16146
`
`NEOCO, L.C. (NEOCO)
`777 Linden Street
`Sharon, PA 16146
`or
`3128 Walton Blvd.
`Suite 197
`Rochester Hills, MI 48309
`
`
`
`UNITED STATES INTERNAl’IONAI, T&\DE
`Washinp ton, 1:) .C .
`
`lOMhlISSION
`
`In the Matter of
`
`CERTAIN RARE-EARTH
`MAGNETS AND MAGNETIC
`MATERIALS AND ARTICLES
`CONTAINING THE SAME
`
`1
`)
`)
`)
`1
`1
`
`Imevtrgatton 10. 337-TA-413
`
`Order No. 21: Initial Determination Granting Complainants’ Motion No. 413-14
`To Amend Complaint And Notice of Investrgabati To Add A.R.E.,
`NEOCO. Jing; Ma and Xin €I-&in- __ -
`- -
`- .
`.
`On November 18, 1998, pursuant to Cormisston rub: 21d. 14(b). complainants
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`Magnequench International, Inc. (Magnequench) and SU miiomca Specia! Metals Co., Ltd
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`(SSMC) moved that the complaint and notice of investiptic~n ir t lis investigation be amended
`
`to add the following companies as respondents:
`
`A.R.E., Inc. (A.R.E.)
`777 Linden Street
`Sharon, PA 16146
`or
`782 Pearl Street
`Sharon, PA 16146
`
`NEOCO, L.C. (NEOCO)
`777 Linden Street
`Sharon, PA 16146
`or
`3128 Walton Blvd.
`Suite 197
`Rochester Hills, MI 48309
`
`
`
`Beijing Jing Ma Permanent Magnetic M.Lteria1.s Fxtury I Ti ig ML 1
`West Building Number 8
`Chaoyang District
`Beij ing , China
`
`Xin Huan Technology Development Co., Ltd. [Xin lIuan1
`No. 8 South 3'd Street
`Zhong Guan Cun Road
`Beijing, China
`
`(Motion Docket No. 413-14).
`
`Complainants argued that good cause ex S ~ S for xidiag A P .E , NEOCO, Jing Ma, and
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`Xin Huan as respondents, as they have imp0rtt.d into fht: UnitecI States sold for importation,
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`or sold within the United States after importatim. rare earti mtpliets, magnetic materials
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`and/or articles that contain same (Subject Mag,iets) that infi-ingi: rhe asserted claims of U.S.
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`Patent Nos. 4,851,058 ('058 patent), 4,802,931 ('931 patait), 4,496,395 ('395 patent),
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`5,645,651 ('651 patent), 4,770,723 ('723 pate&), ~JCJ
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`4,7$2,3r'18 ('368 patent) (Subject
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`Patents); and that adding these respondents will neither tirgudic e the public interest, nor the
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`rights of the present parties.
`The staff, in a response dated December 2, 1998, ar#ued ta: at cornplainants have
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`demonstrated good cause for adding A.R.E., bEOC( 1, .!in@ Mii, and X rn Huan as respondents
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`and accordingly that Motion No. 413-14 shoulci be granted
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`Proposed intervenor respondents A.R.E. and NEiCICC) in d -espoiiqe dated December 8,
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`1998,l opposed Motion No. 413-14 as it relate:; to tht)se prrrposcc reqx ndents. It is argued
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`that A.R.E. neither imports articles that are the subjea rlf diis hestigation nor is the owner,
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`- See Order No. 15 which granted A.R.E's aid NBi3COv ; motion to intervene for the
`limited purpose of opposing Motion No. 413-14.
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`
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`importer or consignee of the imported subject zttcles. rely ng 6 1 x 1 an arached affidavit of Tao
`(Exh. C at 77 3-7). It is also argued that siiiu NEOCCb is a licensee or the U.S. Navy, adding
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`NEOCO and A.R.E. to this investigation would Interfere uith nh: Navy’s exploitation of its
`patents;2 that this investigation’s procedural sclieclule woulc na allow fair participation by the
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`intervenors; and that the complainants delayed in atti-nil itin ; to add the intervenors, even
`
`though they had knowledge of the intervenors orior IO iristPuticrn of the investigation.
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`The administrative law judge has also received a letter dated Dec-hrnber 8, 1998 from
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`Richard H. Rein, Head, Technology Transfer, Dcpaitmcnt of MBvy stating that NEOCO is a
`licensee of U.S. Patent No. 4,402,770 (the ‘770 patent) Nk . 4, W9,04? and No. 4,533,408
`which issued to Norman C . Koon and are assigned €0 the U . S . N ivy; that the U. S. Patent and
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`Trademark Office (USPTO) has declared Inter‘erenc I bo. 103. R(2 between the ‘770 patent
`iht: ‘6 3 1 ;tnj ‘051 patents; and that
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`and two of patents involved in this investigatio 1. v&
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`judgment by the USPTO has not yet been rendmd. It was requested tliat NEOCO not be
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`added as a respondent to the Commission complaint. pendirtg n.si11utior1 by the USPTO of the
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`Interference proceeding because the import by NEOC’O 43f t r m t t on mctal and lanthanide
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`magnetic materials is “practice of a Navy invention” ~ ~ C : ~ I E E d wider valid Navy patents by
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`NEOCO.
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`No other responses to Motion No. 413-1 4 were ceceried.
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`No facts are set forth as to what constitutes the “havy s exploitation of its patents.”
`For example, whether the U.S. government is an e n t q and the Q 1J.y entity that is using the
`imports of NEOCO is unclear. On this point, the Tao affidavit mtes that{
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`
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`Commission Rule 210.14(b)(l) provides, irr pertint-xi part:
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`After an investigation has been instituted, the tompk int or notice of
`investigation may be amended onl;, by L a w o$ the C ommission for
`good cause shown and upon such conditions as are wcessary to avoid
`prejudicing the public interest and the riqhts of the puties io the
`investigation. A motion for amendment mast be matie to tine presiding
`administrative law judge. If the ps-oposed ameiidmer t of the
`complaint would require amending the notice 6f imertigatim, the
`presiding administrative law judge may grant die 1110 ion oiily by filing
`with the Commission an initial detennimtic n. All of her dispositions
`of such motions shall be by order.
`
`In past investigations, parties have demonstrated thaf p o d :auw ;xists for amending the
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`complaint and notice of investigation to add a new respcmht \ d e n thc nature of the proposed
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`respondent’s activities was only revealed through discocery . &g e.g. Certain Digital
`
`Satellite System (DSS) Receivers and Compog:gts’Jhe_rc:of
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`In! . No. 337-TA-392, Order No.
`
`16 (unreviewed initial determination) at 4-5 (March 14, 1W7) rgranting: motion to add new
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`respondents where complainant learned through discovery that pr )pose( t respondents
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`manufactured components of accused devices.
`
`The administrative law judge rejects A.R.E.’s argumnt ih; t its activities do not fall
`
`within the jurisdiction of the Commission because A.R.15. is nor the owner, importer or
`
`consignee of the imported subject articles and therefcm its r.aleh and purchases are wholly
`
`
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`within domestic commerce. Thus, in Certain ~~~ldeil_I_~~aSandu.~h_P_anel Inserts and Methods
`
`for Their Installation, Inv. No. 337-Ta-99 USiTC Pub, 1246. Ccimmission Opinion at 4 (May
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`1982)’ the Commission stated “This investigati In ha: es lab4 ished that Witco, Weber Aircraft,
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`and UOP Aerospace purchased imported insert,; from ‘I‘YE, the isiportcr of those articles.
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`Those firms are thus involved in the ‘sale’ of imported insets d i u infringe complainant Shur-
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`
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`Lok’s patents. As such, Hitco, Weber Aircraft, and IJOP 4eroh>ace are within the
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`Commission’s jurisdiction under section 337. ”
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`alw Cr rtain [Join:! lperated Audiovisual
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`Games and Components Thereof, Inv. No. 3’7-TA-10-5 WISITG Pub. 1267, Commission
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`Opinion at 4 (July 1982) (Commission held thit respowleas, as I’irst purchasers of imported
`
`articles from importers, were subject to the Ccmnission’s . urisdiction. ) Moreover the Tao
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`affidavit does represent that NEOCO purchase i rare-eath NdFcEb mapets from{
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`Moreovtr it amears that Exhibits 17a,
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`17b and 17c, at least in part, were generated hi disccivery ii thss rnvestIgation.
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`Referring to the Rein letter of Decembei 8. 1998. Imerference No. 103,812 was
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`commented on at the preliminary conference on November 19, 1 J98 aid Magnequench’s
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`counsel Brian Poissant, identified himself as the desiqmted lead I ounsc 1 for Magnequench in
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`said interference (Tr. at 10). He indicated thai he had tsllcr:d u it I the rSPTO and that there
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`had been no decision in the interference on any pending mcltions and it was not expected that
`the motions would be reached for “conservatively a year to 18 a mths’ (Tr. at 11). Poissant’s
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`personal opinion was that it was going to be at least iwc to threa years, possibly longer, before
`
`the USPTO renders any decision (Tr. at 12). kef‘erring to *e i ai get date of September 7,
`
`1999 set by Order No. 4, Poissant’s personal clpinion was that lie was * very, very surprised if
`anything happens between now and next September” (Ti.. ar 16,. Mortover it is a fact that
`
`each of A.R.E. and NEOCO are accused of i n h g i n g , not onh claims of the ‘058 and ‘931
`
`patents involved in Interference No. 103,112 but also claias of the ‘395, ‘651, ‘723 and ‘368
`
`patents in issue. Hence what happens in the interference: wmld rot appear to affect the ‘395,
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`‘651, ‘723 and ‘368 patents.
`
`11
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`
`
`NEOCO and A.R.E. have argued that the prwedtiral .;tiedule would not allow for fair
`
`participation by them. The procedural schedule in effett (Oraer No. 14) was based on a target
`
`date of September 8. Accordingly, it set inter alia a discoveq cut-cafl date of January 25,
`
`1999 and a date as early as January 4 for idennificaticm of prior art. Because this order is not
`
`being issued until December 10 and based on the nihstiklice ‘if this order, the administrative
`law judge is issuing Order No. 22 with this order. Ckdcr No- 22 extends the target date to
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`November 8, 1999 and attaches a revised p -oeedurai sclleduie
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`The administrative law judge, on the present rccasd, fmds that complainants’ have
`established good cause for adding A.R.E., ,YEOCO, Jirjg Ma and Xin Hum as respondents.
`
`Accordingly, Motion No. 413-14 is granted.
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`This initial determination is hereby CER.TFIED t t i tht: Commission, together with
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`supporting documentation. Pursuant to Commission fmtl mlk 210.42fi)(3), this initial
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`determination shall become the determination of the Cotmklrion within thirty (30) days after
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`of the date of service hereof unless the Coxrmlssiun Eraits a pztition for review of this initial
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`determination pursuant to Commission final rule 210 43, or alders on its own motion a review
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`of the initial determination or certain issues therein priraiant to Commission interim rule
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`210.44.
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`This order will be made public unless a bracketed comkential version is received no
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`later than December 18,1998.
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`Issued: December 10, 1998
`
`Paul J. Iudkcrn
`ihdrnimstrdtire L m Judge
`
`6
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`CERTAIN RARE-EARTH MAGNETS ANI) MAGNE'FlC
`MATERIALS AND ARTICLES CONTAINING TIEI?: s&IMf3
`
`Inv. No. 337-TA-413
`
`CERTIFICAJ E- 03 SERVICE
`
`I, Donna R. Koehnke, hereby certify that the attached Otder (Public Version) was
`served by hand upon Thomas S . Fusco, Esq., and Bcrljamin D 14. Wood, Esy. and upon the
`following parties via first class mail, and air maill where necessav. on October 20 1999
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`#dLLkUx __- K&k&!44&4
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`Donna R. Koehnke, Secreraq
`U . S . Internatiom 1 Trade C'oa rmis sit In
`500 E Street, S.W.
`Washington, D. C:. 20436
`
`For Complainant Magnequench International, lnc, :
`
`Thomas G. Rowan
`PENNIE & EDMONDS L.L.P.
`1155 Avenue of the Americas
`New York, NY 10036-271 1
`
`Marcia H. Sundeen
`PENNIE & EDMONDS LLP
`1667 K Street, N.W.
`Washington, D . C . 20006
`
`For Complainant Sumitomo Special Metals Clo., LLd.
`
`Robert P. Parker
`PAUL, WEISS, RIFKIND, WHARTON BL. GARRISON
`1615 L Street, N.W.
`Washington, D.C. 20036-5694
`
`For Respondents High End Metals Corp., Harvard hrdustrid Amei ica, Inc.:
`
`Aldo Noto, Esq.
`Munford Page Hall, I1
`L. Daniel Mullaney
`DORSEY & WHITNEY L.L.P.
`1330 Connecticut Avenue, N.W., Suitc 200
`Washington, DC 20036
`
`
`
`CERTAIN RARE-EARTH MAGNETS ANI) MAGNETtC
`MATERIALS AND ARTICLES CONTAINlNG TIW S W
`
`I ~ v . NO. 337-TA-413
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`For Respondent NEOCO, L.C. :
`
`Del A. Szura, Esq.
`Szura & Delonis, P.L.C.
`23003 Greater Mack Avenue, Ste. B
`St. Clair Shores, MI 48080
`
`For Respondent Multi-Trend International Corp. :
`
`Eric F. Hartman, Esq.
`Law Office of Eric F. Hartman
`300 S. First Street, #210
`San Jose, California 95113
`
`
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`CERTAIN RARE-EARTH MAGNETS ANIS MAGNETIC
`MATERIALS AND ARTICLES CONTAINNG THE SYWi
`
`Inv. No. 337-TA-413
`
`Donna S. Wirt
`Lexis-Nexis
`1150 Eighteenth St., N.W., Suite 600
`Washington, D.C. 20036
`
`Ronnita Green
`West Group
`901 Fifteenth Street, N.W., Suite 1010
`Washington, D.C. 20005
`
`(PARTIES NEED NOT SERVE C0PII:S ON LEXE O B WEST PUBLISHING)
`
`
`
`Charles S. Stark, Esq.-
`Antitrust Divison
`U.S. Department of Justice
`Penn. Ave., & 10th St., N.W
`Washington, D.C. 20530
`
`Randy Tritell, Esq.
`Director for Int'l Antitrust
`Federal Trade Comm., Rm. 380
`Penn. Ave., at 6th St., N.W.
`Washington, D.C. 20580
`
`Richard Lambert, Esq.
`Nat'l Institute of Health
`9000 Rockville Pike
`Bldg. 3 1, Room 2B50
`Bethesda, MD 20892-21 11
`
`Michael Smith, Acting Chief
`Intellectual Property Rights Branch
`U.S. Customs Service
`Ronald Reagan Building, 3rd Floor
`1300 Penn Ave., N.W.
`Washington, D.C. 20229
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