By Eric Schweibenz
On November 17, 2017, Nautilus Hyosung Inc. of South Korea and Nautilus Hyosung America Inc. of Irving, Texas (collectively, “Nautilus Hyosung”) filed an enforcement complaint in Certain Automated Teller Machines, ATM Modules, Components Thereof, and Products Containing the Same (Inv. No. 337-TA-989). The enforcement complaint alleges that Diebold Nixdorf Inc. and Diebold Self-Service Systems (collectively, “Diebold”)—both of North Canton, Ohio—have violated a cease and desist order (“CDO”) issued in the underlying investigation.

By way of background, the underlying investigation is based on a complaint filed by Nautilus Hyosung alleging violation of Section 337 by Diebold in the importation into the U.S. and sale of certain automated teller machines, ATM modules, components thereof, and products containing same that infringe one or more claims of U.S. Patent Nos. 7,891,551; 7,950,655; 8,152,165; and 8,523,235 (the ’235 patent). See our February 9, 2016 and March 10, 2016 posts for more details on the underlying investigation. After holding an evidentiary hearing in November 2016, the ALJ issued an initial determination on March 13, 2017 finding a violation of Section 337 by Diebold in connection with the ’235 patent. The Commission subsequently issued a limited exclusion order and CDO directed at Diebold in connection with the ’235 patent. See our August 21, 2017 post for more details.

In the enforcement complaint, Nautilus Hyosung alleges that Diebold has violated the CDO issued in the underlying investigation. In particular, Nautilus Hyosung accuses Diebold of continuing to market, distribute, offer for sale, sell, advertise, and/or aid and abet other entities in the sale and/or distribution of imported products that infringe the asserted claims of the ’235 patent and are covered by the CDO.

In view of these alleged violations of the CDO, Nautilus Hyosung requests that the Commission institute a formal enforcement proceeding pursuant to 19 C.F.R. § 210.75. With respect to potential remedy, Nautilus Hyosung requests that the Commission enforce the CDO and impose civil penalties for violation of the CDO, and if necessary, bring a civil action in an appropriate U.S. district court pursuant to 19 C.F.R. § 210.75 requesting the imposition of civil penalties or the issuance of an injunction preventing further violation of the CDO.