UNITED STATES INTERNATIONAL TRADE COMMISSION
`Washington, D.C. 20436
`
`In the Matter of
`
`CERTAIN FOAM MASKING TAPE
`
`1
`1
`)
`)
`)
`
`Inv. No. 337-TA-528
`
`NOTICE OF COMMISSION DECISION NOT TO REVIEW FOUR INITIAL
`DETERMINATIONS TERMINATING THE INVESTIGATION AS TO CERTAIN
`RESPONDENTS ON THE BASIS OF A SETTLEMENT AGREEMENT AND/
`CONSENT ORDER; ISSUANCE OF CONSENT ORDERS
`
`AGENCY: U.S. International Trade Commission.
`
`ACTION: Notice.
`
`.--
`SUMMARY: Notice is hereby given that the U.S. International Trade Commission has
`-:
`determined not to review four initial determinations (“IDS”) issued by the presiding administrative
`law judge (“ALJ”) in the above-captioned investigation terminating the investigation as to certain
`respondents on the basis of a settlement agreement and/or a consent order stipulation and consent
`order.
`
`FOR FURTHER INFORMATION CONTACT: Michael Diehl, Esq., Office of the General
`Counsel, U.S. International Trade Commission, 500 E Street, S.W., Washington, D.C. 20436,
`telephone (202) 205-3095. Copies of non-confidential documents filed in connection with this
`investigation are or will be available for inspection during official business hours (8:45 a.m. to
`5:15 p.m.) in the Office of the Secretary, U.S. International Trade Commission, 500 E Street, S.W.,
`Washington, D.C. 20436, telephone (202) 205-2000. General information concerning the
`Commission may also be obtained by accessing its Internet server (http://www. usitcgov). The
`public record for this investigation may be viewed on the Commission’s electronic docket (EDIS)
`at http://edis.usitc.gov. Hearing-impaired persons are advised that information on this matter can
`be obtained by contacting the Commission’s TDD terminal on (202) 205-1810.
`
`SUPPLEMENTARY INFORMATION: This patent-based section 337 investigation was
`instituted by the Commission based on a complaint filed by 3M Company, 3M Innovative
`Properties Company, and Mr. Jean Silvestre (collectively “3M”), which was subsequently
`amended. 70 Fed. Reg. 386 (Jan. 4, 2005). The complaint, as amended, alleged a violation of
`section 337 of the Tariff Act of 1930 in the importation into the United States, the sale for
`importation and/or sale within the United States after importation, of certain foam masking tape by
`reason of infringement of certain claims of U.S. Patents Nos. 4,996,092 (“the ‘092 patent”) and
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`5,260,097 (“the ‘097 patent”). The notice of investigation named 13 respondents.
`
`On February 4,2005,3M and several respondents filed three joint motions to terminate the
`investigation as to the moving respondents, each on the basis of a settlement agreement and/or a
`consent order.
`
`In the first of the motions, 3M and respondent Chemicar USA, Inc. of Memphis, Tennessee
`(“Chemicar”) sought to terminate the investigation as to Chemicar based on a settlement agreement
`and a consent order. The joint motion contains copies of the settlement agreement, consent order
`stipulation, and proposed consent order.
`
`In the second motion, 3M and respondent E.M.M. International B.V. of Zwolle, the
`Netherlands (“E.M.M. Int’l”) sought to terminate the investigation as to E.M.M. Int’l based on a
`consent order stipulation and a proposed consent order. The joint motion contains copies of the
`consent order stipulation and proposed consent order.
`
`In the third motion, 3M and respondent EMM America, Inc. of Campton, New Hampshire
`(“EMM America”) sought to terminate the investigation as to EMM America based on a settlement
`agreement and a consent order. The joint motion contains copies of the settlement agreement,
`consent order stipulation, and proposed consent order.
`
`On February 1 l,2005,3M and respondents Indasa, S.A. of Aveiro, Portugal and Indasa
`U.S.A., Inc. of Passaic, New Jersey (collectively, “Indasa”) filed ajoint motion to terminate the
`investigation as to Indasa based on a settlement agreement and a consent order. The joint motion
`contains copies of the settlement agreement, consent order stipulation, and proposed consent order.
`
`The Commission investigative attorney filed a combined response supporting the four joint
`motions.
`On March 1,2005, the ALJ issued four IDS (Orders Nos. 10-1 3), each granting one of the
`joint motions described above. No petitions for review were filed.
`
`Having considered the four IDS, the Commission has determined not to review them. In
`making its determination, the Commission understands each consent order as providing that it will
`not be enforced as to any expired patent.
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`The authority for the Commission’s determination is contained in section 337 of the Tariff Act of
`1930, as amended (19 U.S.C. 9 1337), and in section 210.42(h) of the Commission’s Rules of
`Practice and Procedure (1 9 C.F.R. 0 2 10.42(h)).
`
`By order of the Commission.
`
`Issued: March 3 1,2005
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`3
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`

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`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`-
`
`In the Matter of
`
`CERTAIN FOAM MASKING TAPE
`
`Investigation No. 337-TA-528
`
`CONSENT ORDER
`
`The United States International Trade Commission on December 28, 2004 (70 Fed.
`
`Reg. 386 (Jan. 4, 2005)), instituted the above-captioned investigation under Section 337 of the
`Tariff Act o f 1930, as amended, (19 U.S.C. 5 1337) naming several respondents, including
`
`Indasa, S.A. ("Indasa") and Indasa U.S.A., Inc. ("Indasa U.S.A."), based upon the allegations
`
`contained in the amended complaint filed by Complainants 3M Company, 3M Innovative
`
`Properties Company and Mr. Jean Silvestre ("Complainants"), which allege unfair acts in the
`
`importation into the United States, the sale for importation and the sale within the United States
`
`after importation of certain foam masking tape.
`
`Indasa and Indasa U.S.A. have executed Consent Order Stipulations in which they agree
`
`to the entry o f this Consent Order and to all waivers and other provisions as required by
`Commission Rule of Practice and Procedure 2 10.2 1 (c) (1 9 C.F.R. 5 2 1 0.2 1 (c)). Complainants
`
`and Respondents Indasa and Indasa U.S.A. have filed a Joint Motion to Terminate the
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`Investigation as to Respondents Indasa and Indasa U.S.A. based on a Consent Order.
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`IT IS HEREBY ORDERED THAT:
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`1.
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`Upon entry o f this Consent Order, Indasa and Indasa U.S.A. shall not sell for
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`importation, import into the United States or sell in the United States after importation, or
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`knowingly aid, abet, encourage, participate in, or induce the sale for importation, importation
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`into the United States or sale in the United States after importation of foam masking tape that is
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`the subject o f this investigation or foam masking tape that infringes claims 1-4, 7- 10, 13, 16-2 1
`
`and/or 23-24 of U.S. Patent No. 4,996,092 ("the '092 patent"), or induces and/or contributes to
`
`the infringement o f claims 1 , 3, 4, 6-8, 10, 1 1 , 13, 14 andor 16 of U.S. Patent No. 5,260,097
`
`("the '097 patent"), including but not limited to Indasa and Indasa U.S.A.'s existing U.S.
`
`inventory except under consent or license from Complainants, their successors or assignees.
`
`2.
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`This Consent Order shall be applicable to and binding upon Indasa and Indasa
`
`U.S.A., their officers, directors, agents, servants, employees, and all persons, firms, or
`
`corporations acting or claiming to act on their behalf or under their direction or authority.
`
`3.
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`Indasa and Indasa U.S.A. shall be precluded from seeking judicial review or
`
`otherwise challenging or contesting the validity of this Consent Order.
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`I
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`\
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`4.
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`Indasa and Indasa U.S.A. shall cooperate with and shall not seek to impede by
`,
`litigation or other means the Commission's efforts to gather information under Subpart I o f the
`Commission's Rules o f Practice and Procedure, 19 C.F.R. Part 2 10.
`Indasa and Indasa U.S.A. shall not seek to challenge and are precluded from
`
`5.
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`making any challenges to the validity or enforceability of the claims of the '092 patent or the '097
`
`patent in any administrative or judicial proceeding to enforce the Consent Order.
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`6.
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`Indasa and Indasa U.S.A. stipulate that, as a condition of terminating the
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`investigation as to Indasa and Indasa U.S.A., they agree that they will not contest the legal
`
`conclusions or findings o f fact determined by the Commission in any final determination in this
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`investigation in any administrative or judicial proceeding to enforce the Consent Order. The
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`foregoing legal conclusions and findings of fact, which shall be law of the case, include, but are
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`not limited to, any determination as to claim construction and infringement.
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`7.
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`This Consent Order shall become null and void on the date the '092 patent or the
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`'097 patent expires, whichever is later.
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`8.
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`If any claim of the '092 patent or the '097 patent is held invalid or unenforceable
`
`by a court or agency of competent jurisdiction, in a final decision, the terms o f the Consent Order
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`as to such invalid or unenforceable claim shall be temporarily suspended during the pendency o f
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`any appeal o f the final decision. If such final decision becomes no longer subject to appeal, this
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`Consent Order shall become null and void as to such invalid or unenforceable claim.
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`The entry of this Consent Order does not constitute a determination as to violation
`9.
`of 19 U.S.C. 6 1337 by Indasa and Indasa U.S.A.
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`10.
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`This investigation is hereby terminated with respect to Indasa and Indasa U.S.A.
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`Indasa and Indasa U.S.A. are hereby dismissed as named respondents in this investigation
`
`provided, however, that enforcement, modification, or revocation of this Consent Order shall be
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`carried out pursuant to Subpart I of the Commission's Rules o f Practice and Procedure, 19 C.F.R.
`
`Part 210.
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`In determining whether Indasa and Indasa U.S.A. are in violation of this Consent
`
`Order, the Commission may infer facts adverse to Indasa and Indasa U S A . i f Indasa and Indasa
`
`U.S.A. fail to provide adequate or timely information. The Commission may impose upon any
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`person who violates this Consent Order a penalty of not more than the greater of $100,000 or
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`twice the domestic value o f any articles entered or sold for each day on which the Consent Order
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`is violated. The Commission's assessment of any such penalty shall have the force of a judgment
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`and liability for payment o f such penalty shall accrue upon administrative assessment by the
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`Commission.
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`By order of the Commission
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`Issued: March 31, 2005
`
`R.Abbott
`l!dq%J&
`Secretary to the Commission
`
`3
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`

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`CERTAIN FOAM MASKING TAPE
`
`337-TA-528
`
`CERTIFICATE OF SERVICE
`
`I, Marilyn R. Abbott, hereby certify that the attached NOTICE OF COMMISSION DECISION
`NOT TO REVIEW FOUR INITIAL DETERMINATIONS TERMINATING THE
`INVESTIGATION AS TO CERTAIN RESPONDENETS ON THE BASIS OF A
`SETTLEMENT AGREEMENT AND/OR A CONSENT ORDER; ISSUANCE OF
`CONSENT ORDERS were served upon the Commission Investigative Attorney Steven R.
`Pederson, Esq., and upon all parties via first c
`
`-
`
`Marilyn R . W Secretary
`U.S. Interna nal Trade Commission
`500 E Street, S.W. Room 112
`Washington, D.C. 20436
`
`ON BEHALF OF INTERTAPE POLYMER
`CORPORATION, IPG ADMINISTRATIVE
`SERVICES. INC., AND INTERTAPE
`POLYMER GROUP, INC.:
`
`John K. Abokhair, Esq.
`Shauna M. Wertheim, Esq.
`ROBERTS ABOKHAIR & MARDULA, LLC
`1 1800 Sunrise Valley Drive
`Suite 1000
`Reston, Virginia 20 19 1
`
`ON BEHALF OF SAINT-GOBAIN
`ABRASIFS AND SAINT-GOBAIN
`BRASNES, INC.:
`
`Gregory C. Dorris, Esq.
`Edward M. Andries, Esq.
`PEPPER HAMILTON LLP
`600 14* Street, N.W.
`Washington, D.C. 20005-2004
`
`Matthew B. Lowrie, Esq.
`Emily A. Berger, Esq.
`LOWRIE, LAND0 & ANASTASI LLP
`Riverffont Office Park
`One Main Street, 1 lth Floor
`Cambridge, MA 02142
`
`COUNSEL FOR COMPLAINANTS:
`
`Tom M. Schaumberg, Esq.
`Louis S. Mastriani, Esq.
`ADDUCI, MASTRIANI & SCHAUMBERG,
`LLP
`1200 17* Street, N.W.
`Washington, D.C. 20036
`
`Jonathan E. Singer, Esq.
`FISH & RICHARDSON, P.C., P.A.
`3300 Dain Rauscher Plaza
`60 South Sixth Street
`Minneapolis, Minnesota 55402
`
`Hildy Bowbeer
`John A. Burtis
`3M Company
`Office of Intellectual Property Counsel
`3M Center
`P.O. Box 33427
`St. Paul Minnesota 55 133
`
`ON BEHALF OF BOSS AUTO IMPORTS,
`- S.A.:
`
`Robert D. Katz, Esq.
`COOPER & DUNHAM LLP
`1 185 Avenue of the Americas
`New York, N.Y. 10036
`
`

`
`ON BEHALF OF CHEMICAR USA. INC.:
`
`Jorge Almonte, Esq.
`POWELL GOLDSTEIN LLP
`901 New York Avenue 3rd F1.
`Washington, D.C. 20001-4413
`
`EMM America, Inc.
`349 Owl Street
`Campton, New Hampshire 03223
`
`E.M.M. International B.V.
`Marsweg 59
`8013 PE Zwolle
`NETHERLANDS
`
`Indasa, S.A.
`Zona Industrial de Aveiro
`Lote 46, P.O. Box 3005
`3801-903, Aveiro
`PORTUGAL
`
`Indasa U.S.A., Inc.
`9 Falstrom Court
`Passaic, NJ 07055
`
`Transtar Autobody Technologies, Inc.
`2040 Heiserman Drive
`Brighton, Michigan 481 14
`
`Vosschemie GmbH
`Esinger Steinweg 50
`D-25436 Uetersen
`GERMANY
`
`

`
`CERTAIN FOAM MASKING TAPE
`
`337-TA-528
`
`CERTIFICATE OF SERVICE
`
`I, Marilyn R. Abbott, hereby certify that the attached NOTICE OF COMMISSION DECISION
`NOT TO REVIEW FOUR INITIAL DETERMINATIONS TERMINATING THE
`INVESTIGATION AS TO CERTAIN RESPONDENTS ON THE BASIS OF A
`SETTLEMENT AGREEMENT AND/OR A CONSENT ORDER; ISSUANCE OF
`CONSENT ORDERS were served upon the Commission Investigative Attorney
`Steven R. Pederson, Esq., and upon all parties via first class mail and air mail on April 1 , 2005.
`
`U.S. International Trade Commission
`500 E Street, S.W. Room 112
`Washington, D.C. 20436
`
`COUNSEL FOR COMPLAINANTS:
`
`Tom M. Schaumberg, Esq.
`Louis S. Mastriani, Esq.
`ADDUCI, MASTFUANI & SCHAUMBERG,
`LLP
`1200 17* Street, N.W.
`Washington, D.C. 20036
`
`Jonathan E. Singer, Esq.
`FISH & RICHARDSON P.C., P.A.
`3300 Dain Rauscher Plaza
`60 South Sixth Street
`Minneapolis, Minnesota 55402
`
`Hildy Bowbeer
`John A. Burtis
`3M Company
`Office of Intellectual Property CoGsel
`3M Center
`P.O. Box 33427
`St. Paul Minnesota 55133
`
`ON BEHALF OF BOSS AUTO IMPORTS,
`S.A.: -
`Robert D. Katz, Esq.
`COOPER & DUNHAM LLP
`1 185 Avenue of the Americas
`New York, N.Y. 10036
`
`ON BEHALF OF INTERTAPE POLYMER
`CORPORATION, IPG ADMINISTRATIVE
`SERVICES, INC., AND INTERTAPE
`POLYMER GROUP, INC.:
`
`John K. Abokhair, Esq.
`Shauna M. Wertheim, Esq.
`ROBERTS ABOKHAIR & MARDULA, LLC
`1 1800 Sunrise Valley Drive
`Suite 1000
`Reston, Virginia 20 19 1
`
`ON BEHALF OF SAINT-GOBAIN
`ABRASIFS AND SAINT-GOBAIN
`BRASIVES, INC.:
`
`Gregory C. Dorris, Esq.
`Edward M. Andnes, Esq.
`PEPPER HAMILTON LLP
`600 14" Street, N.W.
`Washington, D.C. 20005-2004
`
`Matthew B. Lowrie, Esq.
`Emily A. Berger, Esq.
`LOWRIE, LAND0 & ANASTASI LLP
`Riverfront Office Park
`One Main Street, 1 l* Floor
`Cambridge, MA 02 142
`
`

`
`ON BEHALF OF CHEMICAR USA, INC.:
`
`Jorge Almonte, Esq.
`POWELL GOLDSTEIN LLP
`901 New York Avenue 31d F1.
`Washington, D.C. 20001-4413
`
`RESPONDENTS:
`
`EMM America, Inc.
`349 Owl Street
`Campton, New Hampshire 03223
`
`E.M.M. International B.V.
`Marsweg 59
`80 13 PE Zwolle
`NETHERLANDS
`
`Indasa, S.A.
`Zona Industrial de Aveiro
`Lote 46, P.O. Box 3005
`3801-903, Aveiro
`PORTUGAL
`
`Indasa U.S.A., Inc.
`9 Falstrom Court
`Passaic, NJ 07055
`
`Transtar Autobody Technologies, Inc.
`2040 Heiserman Drive
`Brighton, Michigan 48 1 14
`
`Vosschemie GmbH
`Esinger Steinweg 50
`D-25436 Uetersen
`GERMANY
`
`Continental Marketing International
`3 13 Chun-Fu 1 l* Road
`Taichung, Taiwan
`REPUBLIC OF CHINA
`
`Jevtech, Ltd.
`Bellgreen House
`Fountain Street
`Macclesfield, Cheshire SKlO 1JN
`UNITED KINGDOM