Notice2021-15857
Certain Smart Thermostats, Smart HVAC Systems, and Components Thereof; Commission Determination To Review in Part a Final Initial Determination Finding No Violation of Section 337 and, on Review, To Affirm the Finding of No Violation; Termination of the Investigation
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Published
July 26, 2021
Issuing agencies
International Trade Commission
Abstract
Notice is hereby given that the U.S. International Trade Commission has determined to review in part a final initial determination ("ID") issued by the presiding administrative law judge ("ALJ") on April 20, 2021, finding no violation of section 337 in the above-referenced investigation and, on review, to affirm the finding of no violation. The investigation is terminated.
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<title>Federal Register, Volume 86 Issue 140 (Monday, July 26, 2021)</title>
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[Federal Register Volume 86, Number 140 (Monday, July 26, 2021)]
[Notices]
[Pages 40077-40078]
From the Federal Register Online via the Government Publishing Office [<a href="http://www.gpo.gov">www.gpo.gov</a>]
[FR Doc No: 2021-15857]
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INTERNATIONAL TRADE COMMISSION
[Investigation No. 337-TA-1185]
Certain Smart Thermostats, Smart HVAC Systems, and Components
Thereof; Commission Determination To Review in Part a Final Initial
Determination Finding No Violation of Section 337 and, on Review, To
Affirm the Finding of No Violation; Termination of the Investigation
AGENCY: U.S. International Trade Commission.
ACTION: Notice.
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SUMMARY: Notice is hereby given that the U.S. International Trade
Commission has determined to review in part a final initial
determination (``ID'') issued by the presiding administrative law judge
(``ALJ'') on April 20, 2021, finding no violation of section 337 in the
above-referenced investigation and, on review, to affirm the finding of
no violation.
The investigation is terminated.
FOR FURTHER INFORMATION CONTACT: Michael Liberman, Esq., Office of the
General Counsel, U.S. International Trade Commission, 500 E Street SW,
Washington, DC 20436, telephone (202) 708-4716. Copies of non-
confidential documents filed in connection with this investigation may
be viewed on the Commission's electronic docket (EDIS) at <a href="https://edis.usitc.gov">https://edis.usitc.gov</a>. For help accessing EDIS, please email
<a href="/cdn-cgi/l/email-protection#2461606d77176c4148546451574d50470a434b52"><span class="__cf_email__" data-cfemail="3c7978756f0f7459504c7c494f55485f125b534a">[email protected]</span></a>. General information concerning the Commission may
also be obtained by accessing its internet server at <a href="https://www.usitc.gov">https://www.usitc.gov</a>. 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: On November 27, 2019, the Commission
instituted this investigation under section 337 of the Tariff Act of
1930, as amended, 19 U.S.C. 1337 (``section 337''), based on a
complaint filed by EcoFactor, Inc. of Palo Alto, California
(``EcoFactor''). See 84 FR 65421-22 (Nov. 27, 2019). The complaint
alleges a violation of section 337 based upon the importation into the
United States, the sale for importation, and the sale within the United
States after importation of certain smart thermostats, smart HVAC
systems, and components thereof by reason of infringement of certain
claims of U.S. Patent Nos. 8,131,497 (``the '497 patent''); 8,423,322
(``the '322 patent''); 8,498,753 (``the '753 patent''); and 10,018,371
(``the '371 patent''). See id. The notice of investigation names the
following respondents: Daikin Industries, Ltd. of Osaka, Japan; Daikin
America, Inc. of Orangeburg, New York; and Daikin North America LLC of
Houston, Texas (collectively, ``the Daikin Respondents''); Schneider
Electric USA, Inc. of Andover, Massachusetts and Schneider Electric SE
of Rueil-Malmaison, France (collectively, ``the Schneider
Respondents''); ecobee Ltd. and ecobee, Inc., both of Toronto, Canada
(collectively, ``ecobee''); Google LLC of Mountain View, California;
<a href="http://Alarm.com">Alarm.com</a> Incorporated and <a href="http://Alarm.com">Alarm.com</a> Holdings, Inc. of Tysons, Virginia
(collectively, ``<a href="http://Alarm.com">Alarm.com</a>''); and Vivint, Inc. of Provo, Utah
(``Vivint''). The Office of Unfair Import Investigations (``OUII'') is
also a party to the investigation.
On June 11, 2020, the ALJ issued an ID (Order No. 10) granting a
joint motion to partially terminate the investigation as to the Daikin
Respondents based on settlement. See Order No. 10 (June 11, 2020),
unreviewed by Comm'n Notice (July 1, 2020). On August 10, 2020, the ALJ
issued an ID (Order No. 15) granting a joint motion to terminate the
[[Page 40078]]
investigation in part as to the Schneider Respondents based on
settlement. See Order No. 15 (Aug. 10, 2020), unreviewed by Comm'n
Notice (Aug. 31, 2020). On November 27, 2020, the ALJ issued an ID
(Order No. 27) granting an unopposed motion for partial termination of
the investigation as to the asserted claims of the '753 patent; the
asserted claims of the '322 patent and the '371 patent as to ecobee;
and the asserted claims of the '497 patent as to <a href="http://Alarm.com">Alarm.com</a>. See Order
No. 27, unreviewed by Comm'n Notice (Dec. 15, 2021).
On April 20, 2021, the ALJ issued the final ID in this
investigation, holding that no violation of section 337 has occurred in
the importation into the United States, the sale for importation, or
the sale within the United States after importation, of certain smart
thermostats, smart HVAC systems, and components thereof, with respect
to asserted claims 1, 2, and 5 of patent '497, asserted claims 1, 2,
and 5 of patent '322, and asserted claim 9 of patent '371.
Concerning infringement, the ID finds that respondent Google
indirectly infringes all of the asserted claims. Specifically, the ID
finds that Google induces infringement of all of the asserted claims
and contributorily infringes the asserted claims of the '497 and '371
patents. The ID finds that EcoFactor has not shown that respondents
ecobee, Vivint and <a href="http://Alarm.com">Alarm.com</a> infringe any of the asserted claims of the
asserted patents.
Regarding the domestic industry requirement, the ID finds that
EcoFactor has not satisfied the technical or economic prongs of the
domestic industry requirement with respect to any of the asserted
patents.
Concerning validity, with respect to the '497 patent, the ID finds
that asserted claims 1, 2, and 5 have not been shown to be patent
ineligible under 35 U.S.C. 101, and have not been shown to be invalid
as anticipated or obvious under 35 U.S.C. 102 or 103, respectively. The
ID further finds that the asserted claims of the '497 patent have not
been shown to be invalid for indefiniteness under 35 U.S.C. 112, ] 2.
The ID finds, however, that the asserted claims of the '497 patent have
been shown to be invalid for lack of written description and enablement
under 35 U.S.C. 112, ] 1.
As to the '322 patent, the ID finds that asserted claims 1, 2, and
5 have not been shown to be patent ineligible under 35 U.S.C. 101. The
ID further finds that the asserted claims of the '322 patent have been
shown to be invalid for lack of written description and enablement
under 35 U.S.C. 112, ] 1. The ID also finds that the asserted claims of
the '322 patent have not been shown to be invalid for indefiniteness
under 35 U.S.C. 112, ] 2. The ID finds, however, that claim 1 has been
shown to be invalid as anticipated under 35 U.S.C. 102, but that claims
2 and 5 have been shown to be invalid as obvious under 35 U.S.C. 103.
With respect to the '371 patent, the ID finds that asserted claim 9
has not been shown to be patent ineligible under 35 U.S.C. 101, and has
not been shown to be invalid under 35 U.S.C. 102 or 103.
On May 3, 2021, EcoFactor filed a petition for review of various
portions of the ID, and respondent Google filed a contingent review for
certain aspects of the ID. On May 4, 2021, respondent ecobee filed a
contingent petition for review of certain aspect of the ID.
On May 11, 2021, complainant EcoFactor filed a response to
Respondents' petitions for review. Also on May 11, 2021, respondents
ecobee, Vivint, and Google each filed their respective responses. On
May 12, 2021, OUII filed a response to the private parties' petitions.
Having examined the record in this investigation, including the
final ID, the petitions for review, and the responses thereto, the
Commission has determined to review in part the ID: (1) To review the
language supporting the ID's determination that EcoFactor failed to
satisfy the economic prong of the domestic industry requirement under
subparagraphs (A) and (B), and on review to strike the last paragraph
on page 560 (see ID at 560-561); (2) to review the ID's findings
regarding induced and contributory infringement, and on review to
additionally provide the requisite findings that Google was willfully
blind with respect to the asserted patents and thus possessed the
requisite knowledge that its products infringe those patents (with the
exception of contributory infringement of the '322 patent) (see ID at
404-405, 408-409); and (3) to review the ID's conclusions of fact and
law Nos. 14 and 22 on page 576, and on review to correct clerical
errors so that each of them reads as follows: ``Respondents have shown,
through clear and convincing evidence, that the asserted claims are
invalid under 35 U.S.C. 112, ] 1, and have not shown, through clear and
convincing evidence, that the asserted claims are invalid under 35
U.S.C. 112, ] 2.''
The Commission has determined not to review the remainder of the
ID, including the ID's finding of no violation of section 337 in this
investigation.
The investigation is terminated.
The Commission vote for this determination took place on July 20,
2021.
The authority for the Commission's determination is contained in
section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337), and
in part 210 of the Commission's Rules of Practice and Procedure (19 CFR
part 210).
By order of the Commission.
Issued: July 20, 2021.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2021-15857 Filed 7-23-21; 8:45 am]
BILLING CODE 7020-02-P
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