Notice2021-25062
Certain Electronic Devices, Including Streaming Players, Televisions, Set Top Boxes, Remote Controllers, and Components Thereof; Notice of a Final Determination Finding a Violation of Section 337, Denying a Motion To Reopen the Record, and Issuing a Limited Exclusion Order and Cease and Desist Order; Termination of the Investigation
Primary source
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Published
November 17, 2021
Issuing agencies
International Trade Commission
Abstract
Notice is hereby given that the U.S. International Trade Commission ("Commission") has determined that respondent Roku Inc. has violated Section 337 of the Tariff Act of 1930, as amended, by importing, selling for importation, or selling in the United States after importation certain electronic devices, including streaming players, televisions, set top boxes, remote controllers, and components thereof, that infringe one or more claims of complainant's U.S. Patent No. 10,593,196 ("the '196 patent"). The Commission has determined that the appropriate remedies are a limited exclusion order and a cease and desist order against the respondent. The Commission has also determined to set a bond in the amount of zero (0) percent (i.e., no bond) of the entered value of the excluded products imported during the period of Presidential review. This investigation is hereby terminated.
Full Text
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<title>Federal Register, Volume 86 Issue 219 (Wednesday, November 17, 2021)</title>
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[Federal Register Volume 86, Number 219 (Wednesday, November 17, 2021)]
[Notices]
[Pages 64228-64229]
From the Federal Register Online via the Government Publishing Office [<a href="http://www.gpo.gov">www.gpo.gov</a>]
[FR Doc No: 2021-25062]
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INTERNATIONAL TRADE COMMISSION
[Investigation No. 337-TA-1200]
Certain Electronic Devices, Including Streaming Players,
Televisions, Set Top Boxes, Remote Controllers, and Components Thereof;
Notice of a Final Determination Finding a Violation of Section 337,
Denying a Motion To Reopen the Record, and Issuing a Limited Exclusion
Order and Cease and Desist Order; 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 (``Commission'') has determined that respondent Roku Inc.
has violated Section 337 of the Tariff Act of 1930, as amended, by
importing, selling for importation, or selling in the United States
after importation certain electronic devices, including streaming
players, televisions, set top boxes, remote controllers, and components
thereof, that infringe one or more claims of complainant's U.S. Patent
No. 10,593,196 (``the '196 patent''). The Commission has determined
that the appropriate remedies are a limited exclusion order and a cease
and desist order against the respondent. The Commission has also
determined to set a bond in the amount of zero (0) percent (i.e., no
bond) of the entered value of the excluded products imported during the
period of Presidential review. This investigation is hereby terminated.
FOR FURTHER INFORMATION CONTACT: Carl P. Bretscher, Esq., Office of the
General Counsel, U.S. International Trade Commission, 500 E Street SW,
Washington, DC 20436, telephone (202) 205-2382. 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#92d7d6dbc1a1daf7fee2d2e7e1fbe6f1bcf5fde4"><span class="__cf_email__" data-cfemail="0c4948455f3f4469607c4c797f65786f226b637a">[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: The Commission instituted this investigation
on May 22, 2020, based on a complaint filed by Universal Electronics,
Inc. (``UEI'') of Scottsdale, Arizona. 85 FR 31211-212 (May 22, 2020).
The complaint, as supplemented, alleges violations of section 337 of
the Tariff Act of 1930, as amended, 19 U.S.C. 1337 (``Section 337''),
in the importation into the United States, sale for importation, or
sale in the United States after importation of certain electronic
devices, including streaming players, televisions, set top boxes,
remote controllers, and components thereof, by reason of infringement
of one or more of the asserted claims of the '196 patent and U.S.
Patent Nos. 7,696,514 (``the '514 patent''), 9,911,325 (``the '325
patent''), 9,716,853 (``the '853 patent''), 7,589,642 (``the '642
patent''), and 10,600,317 (``the '317 patent''). Id. The complaint
alleges that a domestic industry exists. Id.
The Commission's notice of investigation names the following
respondents: Roku Inc. of Los Gatos, California (``Roku''); TCL
Electronics Holdings Ltd. of New Territories, Hong Kong; Shenzhen TCL
New Technology Co. Ltd. of Shenzhen, China; TCL King Electrical
Appliances Co. Ltd. of Huizhou, China; TTE Technology Inc. of Corona,
California; TCL Corp. of Huizhou City, China; TCL Moka Int'l Ltd. of
New Territories, Hong Kong; TCL Overseas Marketing Ltd. of New
Territories, Hong Kong; TCL Industries Holdings Co., Ltd. of New
Territories, Hong Kong; and TCL Smart Device Co. of Bac Tan Uyen
District, Vietnam (collectively, ``the TCL Respondents''); Hisense Co.
Ltd. of Qingdao, China; Hisense Electronics Manufacturing Co. of
America Corp. of Suwanee, Georgia; Hisense Import & Export Co. Ltd. of
Qingdao, China; Qingdao Hisense Electric Co., Ltd. of Qingdao, China;
and Hisense International Co., Ltd. of Shen Wang, Hong Kong
(collectively, ``the Hisense Respondents''); Funai Electric Co., Ltd.
of Osaka, Japan; Funai Corp. Inc. of Rutherford, New Jersey; and Funai
Co., Ltd. of Nakhon Ratchasima, Thailand (collectively, ``the Funai
Respondents''). Id. The Office of Unfair Import Investigations did not
participate as a party in this investigation. Id.
The Commission partially terminated the investigation with respect
to certain patents and claims that were withdrawn by UEI, including all
of the asserted claims of the '514 patent, '325 patent, and '853
patent. See Order No. 27 (Dec. 2, 2020), unreviewed by Comm'n Notice
(Dec. 23, 2020); Order No. 32 (Dec. 21, 2020), unreviewed by Comm'n
Notice (Jan. 5, 2021); Order No. 33 (Dec. 29, 2020), unreviewed by
Comm'n Notice (Jan. 13, 2021); Order No. 34 (Jan. 4, 2021), unreviewed
by Comm'n Notice (Jan. 21, 2021); Order No. 44 (Feb. 2, 2021),
unreviewed by Comm'n Notice
[[Page 64229]]
(Feb. 19, 2021); Order No. 49 (Feb. 9, 2021), unreviewed by Comm'n
Notice (Feb. 24, 2021); Order No. 66 (March 23, 2021), unreviewed by
Comm'n Notice (April 8, 2021); Order No. 67 (Apr. 6, 2021), unreviewed
by Comm'n Notice (Apr. 22, 2021).
The Commission also terminated the investigation with respect to
the Hisense Respondents, the TCL Respondents, and the Funai
Respondents. Order No. 67 (Apr. 6, 2021), unreviewed by Comm'n Notice
(Apr. 22, 2021).
As a result of these terminations, the only remaining respondent is
Roku, and the only claims still at issue for infringement or domestic
industry purposes are claim 19 of the '642 patent; claims 3, 6, 9, and
11 of the '317 patent; and claims 1-3, 11, and 13-15 of the '196
patent.
On August 19, 2020, the ALJ held a technology tutorial and Markman
hearing. The ALJ issued a Markman order on October 1, 2020. Order No.
24 (Oct. 1, 2020).
On February 18, 2021, the Commission determined not to review an
initial determination (``ID'') granting UEI's motion for summary
determination that claim 19 of the '642 patent is practiced by the
domestic industry products and infringed by the accused ``Elk'' series
of products. Order No. 38 (Jan. 19, 2021), unreviewed by Comm'n Notice
(Feb. 18, 2021).
On February 24, 2021, the Commission determined to review and
reverse an ID granting Roku's motion for summary determination that UEI
lacks standing to assert the '196 patent and to remand the standing
question to the ALJ for further consideration. Order No. 40 (Jan. 25,
2021), reviewed by Comm'n Notice (Feb. 24, 2021); see also Comm'n Op.
(Mar. 3, 2021).
The ALJ held on evidentiary hearing from April 19-23, 2021.
On July 9, 2021, the ALJ issued a final ID, finding a violation of
Section 337 as to the '196 patent because: (i) UEI has standing to
assert the '196 patent; (ii) the accused Roku Ultra and Soundbar
products infringe claims 1, 3, 11, and 13-15 of the '196 patent but its
revised Ultra and Soundbar products do not infringe any asserted
claims; (iii) the asserted claims are not invalid as obvious; and (iv)
UEI satisfied the technical and economic prongs of the domestic
industry requirement with respect to this patent. The ID, however,
finds no violation with respect to the '642 patent or the '317 patent
because the asserted claims of those patents, though infringed, are
invalid.
On July 13, 2021, the Commission issued a notice soliciting public
comments on the public interest factors, if any, that may be implicated
if a remedy were issued. See 86 FR 38126 (July 19, 2021). The
Commission did not receive any comments in response to its notice. No
party submitted public interest comments pursuant to Commission Rule
210.50(a)(4) (19 CFR 210.50(a)(4)).
On July 23, 2021, both UEI and Roku filed petitions for review of
certain findings in the final ID, pursuant to Commission Rule 210.43(a)
(19 CFR 210.43(a)). On August 2, 2021, the parties filed their
respective replies, pursuant to Commission Rule 210.43(c) (19 CFR
210.43(c)).
On September 9, 2021, the Commission determined to review the ID
with respect to certain issues, including: (i) All issues in the ID
relating to the '196 patent, including claim construction,
infringement, and validity (Questions A-D); (ii) whether UEI satisfied
the technical prong of the domestic industry requirement with respect
to the '317 patent (Question E); and (iii) whether UEI satisfied the
economic prong of the domestic industry requirement under Section
337(a)(3)(B) for the '196 patent and '317 patent (Question F), as well
as the '642 patent. 86 FR 51381, 51382-83 (Sept. 15, 2021). The
Commission determined not to review any other issues relating to the
'317 patent or '642 patent. See id.
On September 24, 2021, UEI and Roku filed their initial responses
to the Commission's questions on review and on remedy, the public
interest, and bonding. On October 1, 2021, the parties filed their
replies to each other's initial submissions to the Commission.
On October 26, 2021, while the investigation was still pending
final determination by the Commission, Roku filed a Motion for a
Limited Reopening of the Record and for a Shortened Response Time
(``Motion'') so that the Commission could consider allegedly
contradictory deposition testimony from a certain UEI fact witness
taken in another investigation involving the same parties, products,
and technology. See Certain Televisions, Remote Controls, and
Components Thereof, Inv. No. 337-TA-1263 (``the 1263 Investigation'').
On the same date, Roku and UEI filed a Joint Motion to Amend the
Protective Order to Add Provisions Relating to Materials from Inv. No.
337-TA-1263 (``Joint APO Motion'').
On October 28, 2021, the Commission granted Roku's motion for a
shortened response time, directing UEI to file its response by the
close of business on November 2, 2021. Comm'n Order (Oct. 28, 2021).
The Commission denied the parties' Joint APO Motion as moot. Id.
On November 2, 2021, UEI filed its opposition to Roku's Motion, in
accordance with the Commission's order.
The Commission, having reviewed the parties' submissions, the ID,
and the deposition testimony at issue, has determined to deny Roku's
Motion to reopen the record.
Furthermore, the Commission, having reviewed the record in this
investigation, including the final ID, the parties' petitions, and
responses thereto, has determined that Roku violated section 337 by
importing into the United States, selling for importation, or selling
in the United States after importation certain electronic devices,
including streaming players, televisions, set-top boxes, remote
controllers, and components thereof that infringe one or more of claims
1, 3, 11, and 13-15 of the '196 patent. The Commission finds no
violation with respect to the '317 patent and '642 patent.
The Commission has determined that the appropriate remedy is: (i) A
limited exclusion order prohibiting the importation of certain
electronic devices, including streaming players, televisions, set-top
boxes, remote controllers, and components thereof that infringe one or
more of claims 1, 3, 11, and 13-15 of the '196 patent; and (ii) a cease
and desist order against Roku. The Commission has determined that the
public interest factors do not preclude issuance of a remedy. The
Commission has determined to set a bond in the amount of zero (0)
percent (i.e., no bond) of the entered value of the excluded products
imported during the period of Presidential review (19 U.S.C. 1337(j)).
The Commission issues its opinion herewith setting forth its
determinations on certain issues. This investigation is hereby
terminated.
The Commission's orders and opinion were delivered to the President
and United States Trade Representative on the day of their issuance.
The Commission voted to approve these determinations on November
10, 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: November 10, 2021.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2021-25062 Filed 11-16-21; 8:45 am]
BILLING CODE 7020-02-P
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