HYOSUNG TNS INC., NAUTILUS HYOSUNG AMERICA INC., HS GLOBAL, INC., Appellants
v.
INTERNATIONAL TRADE COMMISSION, Appellee DIEBOLD NIXDORF, INC., DIEBOLD SELF-SERVICE SYSTEMS, Intervenors
Appeal
from the United States International Trade Commission in
Investigation No. 337-TA-972
Gregory G. Garre, Latham & Watkins LLP, Washington, DC,
argued for appellants. Also represented by Gabriel Bell,
Elana Nightingale Dawson, Kevin Wheeler.
Sidney
A. Rosenzweig, Office of General Counsel, United States
International Trade Commission, Washington, DC, argued for
appellee. Also represented by Dominic L. Bianchi, Wayne W.
Herrington.
Patrick Flinn, Alston & Bird LLP, Atlanta, GA, argued for
intervenors. Also represented by Keith E. Broyles, Pamela
Councill, David Frist, Joshua Mark Weeks; Adam Swain,
Washington, DC.
Before
Dyk, Clevenger, and O'Malley, Circuit Judges.
DYK,
CIRCUIT JUDGE.
Hyosung
TNS Inc., Nautilus Hyosung America Inc., and HS Global, Inc.,
(collectively "Hyosung") appeal from a decision by
the International Trade Commission ("ITC"). The ITC
concluded that various automatic teller machine
("ATM") models imported by Hyosung infringed claims
of two patents owned by Diebold Nixdorf, Inc., and Diebold
Self-Service Systems (collectively "Diebold"), U.S.
Patent Nos. 6, 082, 616 ('616 patent) and 7, 832, 631
('631 patent).[1] The ITC issued a limited exclusion order
as well as cease and desist orders.
Because
the appeal has become moot as to the '616 patent, we
dismiss the appeal as to the '616 patent, vacate the
ITC's decision as to that patent, and remand with
instructions to revise the applicable orders. We affirm the
ITC's decision and orders as to the '631 patent.
Background
Hyosung
and Diebold are both in the market of manufacturing and
selling ATMs. Diebold owns the '616 and '631 patents
directed to ATMs. Diebold filed a complaint with the ITC
claiming that Hyosung's imported ATMs infringe claims in
the '616 and '631 patents and their importation
violates 19 U.S.C. § 1337(a)(1)(B). The ITC initiated an
investigation. The patented technology generally relates to
the structure and function of ATMs. The '616 patent
claims an ATM rollout tray that allows for easier servicing
of internal components of the ATM. The '631 patent
relates to a particular method for reading magnetic ink
character recognition ("MICR") data on checks
(e.g., ink used for the account and routing numbers) that are
inserted into an ATM regardless of their width or
orientation.
The ITC
concluded that Hyosung's accused products infringed both
the '616 and '631 patents; that the asserted claims
were not shown to be invalid; and that the domestic industry
requirement was met for both patents. The ITC entered a
limited exclusion order and cease and desist orders against
Hyosung.
Thereafter,
Hyosung redesigned its products in an effort to avoid
infringing the '616 patent. On May 26, 2017, it sought an
administrative ruling by U.S. Customs and Border Protection
("Customs") that the redesigned products did not
infringe the '616 patent, which would allow Hyosung's
importation of the redesigned ATM products. See 19
C.F.R. § 177. Both Hyosung and Diebold participated in
the proceeding. Customs concluded that the newly redesigned
products did not infringe the '616 patent and were
therefore not covered by the ITC's limited exclusion
order as to the '616 patent. Ruling Letter re Certain
Automated Teller Machs., ATM Modules, Components Thereof,
& Prods. Containing Same, HQ H286719 (Customs), 2017
WL 3371581, at *17 (July 24, 2017).
Hyosung
appeals the ITC's decision. We have jurisdiction under 28
U.S.C. § 1295(a)(6).
Discussion
We
review the ITC's factual findings for substantial
evidence and legal conclusions de novo. Honeywell
Int'l, Inc. v. Int'l Trade Comm'n,
341 F.3d 1332, 1338 (Fed. Cir. 2003).
I.
'616 Patent
Claims
1, 6, 10, 16, 26, and 27 of the '616 patent are at issue
on appeal. Representative claim 1 of the '616 patent
recites:
An automated banking machine apparatus comprising:
a housing bounding an interior area, the housing having a
first opening to the interior area;
a rollout tray movably supported on the housing, the rollout
tray including a wall portion, a service opening
extending through the wall portion, wherein the rollout tray
is movable between a first position wherein the tray extends
outward from the first opening and the service
opening is accessible from outside the housing, and a
second position wherein the tray is within the interior
area and the service opening is not accessible from outside
the housing;
a first serviceable component mounted in supporting
connection with the tray and overlying the service
opening, the serviceable component having a service
point, and wherein the service point is accessible from
outside the housing by extending a tool upwardly through ...