On October 19, 2015, Diebold, Inc. and Diebold Self-Service Systems (collectively, "Diebold")—both of North Canton, Ohio—filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.
The complaint alleges that Nautilus Hyosung Inc. of South Korea and Nautilus Hyosung America Inc. of Irving, Texas (collectively, "Hyosung"), and HS Global, Inc. of Brea, California (all collectively, the "Proposed Respondents") unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain automated teller machines, ATM modules, components thereof, and products containing same that infringe one or more claims of U.S. Patent Nos. 6,082,616 (the '616 patent), 7,121,461 (the '461 patent), 7,229,010 (the '010 patent), 7,249,761 (the '761 patent), 7,314,163 (the '163 patent), and 7,832,631 (the '631 patent) (collectively, the "asserted patents").
According to the complaint, the asserted patents generally relate to features that enhance the deposit automation experience for end-users and financial institutions, streamline cash handling and accounting procedures for financial institutions, secure sensitive user data, and simplify maintenance procedures. In particular, the '616 patent relates to an automated teller machine that includes a rollout tray that may be pulled out from, or retracted back into, the ATM housing. The '461 patent relates to a removable cassette that separately stores notes that are unpresentable to a customer, as well as notes that were presented to, but not taken by a customer and subsequently retracted into the machine for storage. The '010 patent relates to an ATM that accepts checks and dispenses cash to users. The '761 patent relates to a presenter for a currency dispenser including a gate assembly through which a stack of notes may be conveyed to a customer. The '163 patent relates to an ATM that accepts and processes checks from users, and includes an imaging device for creating a digital image of each deposited check. Lastly, the '631 patent relates to a deposit accepting apparatus for an ATM that is able to sense and read indicia printed on a deposited document regardless of the orientation in which the document is inserted into the ATM.
In the complaint, Diebold states that the Proposed Respondents import and sell products that infringe the asserted patents. The complaint specifically refers to various Hyosung ATMs and components thereof as infringing products.
Regarding domestic industry, Diebold states that its Opteva line of terminals and its Diebold Series terminals practice one or more claims of the asserted patents. Diebold further states that it has invested hundreds of millions of dollars in the domestic manufacture, assembly, research, development, engineering, delivery, installation, service, and support of its domestic industry products.
As to related litigation, Diebold states that, concurrently with the filing of the instant ITC complaint, it is also filing a complaint for infringement of the asserted patents in the U.S. District Court for the Northern District of Ohio.
With respect to potential remedy, Diebold requests that the Commission issue a permanent limited exclusion order and permanent cease and desist orders directed at the Proposed Respondents and related entities.