Notice2022-02795
Certain Shingled Solar Modules, Components Thereof, and Methods for Manufacturing the Same ; Commission Determination To Review in Part and Remand in Part a Final Initial Determination Finding a Violation of Section 337; Schedule for Filing Written Submissions on Remedy, the Public Interest, and Bonding
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Published
February 10, 2022
Issuing agencies
International Trade Commission
Abstract
Notice is hereby given that, on October 22, 2021, the presiding acting chief administrative law judge ("ALJ") issued a combined final initial determination ("ID") finding a violation of section 337 and a recommended determination ("RD") on remedy and bonding in the above-captioned investigation. The Commission has determined to review the final ID in part. The Commission has also determined to remand the ID in part to the ALJ to make a determination regarding whether an on-sale bar applies to the asserted claims of U.S. Patent No. 10,651,333 ("the '333 patent") based on alleged sales and offers for sale of certain products. The Commission requests briefing from the parties, interested government agencies, and interested persons on the issues of remedy, the public interest, and bonding.
Full Text
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<title>Federal Register, Volume 87 Issue 28 (Thursday, February 10, 2022)</title>
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[Federal Register Volume 87, Number 28 (Thursday, February 10, 2022)]
[Notices]
[Pages 7867-7870]
From the Federal Register Online via the Government Publishing Office [<a href="http://www.gpo.gov">www.gpo.gov</a>]
[FR Doc No: 2022-02795]
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INTERNATIONAL TRADE COMMISSION
[Investigation No. 337-TA-1223]
Certain Shingled Solar Modules, Components Thereof, and Methods
for Manufacturing the Same ; Commission Determination To Review in Part
and Remand in Part a Final Initial Determination Finding a Violation of
Section 337; Schedule for Filing Written Submissions on Remedy, the
Public Interest, and Bonding
AGENCY: U.S. International Trade Commission.
ACTION: Notice.
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SUMMARY: Notice is hereby given that, on October 22, 2021, the
presiding acting chief administrative law judge (``ALJ'') issued a
combined final initial determination (``ID'') finding a violation of
section 337 and a recommended determination (``RD'') on remedy and
bonding in the above-captioned investigation. The Commission has
determined to review the final ID in part. The Commission has also
determined to remand the ID in part to the ALJ to make a determination
regarding whether an on-sale bar applies to the asserted claims of U.S.
Patent No. 10,651,333 (``the '333 patent'') based on alleged sales and
offers for sale of certain products. The Commission requests briefing
from the parties, interested government agencies, and
[[Page 7868]]
interested persons on the issues of remedy, the public interest, and
bonding.
FOR FURTHER INFORMATION CONTACT: Richard P. Hadorn, Esq., Office of the
General Counsel, U.S. International Trade Commission, 500 E Street SW,
Washington, DC 20436, telephone (202) 205-3179. 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#a2e7e6ebf191eac7ced2e2d7d1cbd6c18cc5cdd4"><span class="__cf_email__" data-cfemail="2d6869647e1e6548415d6d585e44594e034a425b">[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, telephone (202) 205-1810.
SUPPLEMENTARY INFORMATION: On October 21, 2020, the Commission
instituted this investigation based on a complaint filed by The Solaria
Corporation (``Solaria'') of Fremont, California. 85 FR 67010-11 (Oct.
21, 2020). The complaint, as supplemented, alleges violations of
section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337),
based on the importation into the United States, the sale for
importation, or the sale within the United States after importation of
certain shingled solar modules, components thereof, and methods for
manufacturing the same by reason of infringement of certain claims of
U.S. Patent Nos. 10,522,707 (``the '707 patent''); the '333 patent; and
10,763,388 (``the '388 patent''). Id. at 67011. The complaint further
alleges that a domestic industry exists. Id. The notice of
investigation named two respondents: Canadian Solar Inc. of Guelph,
Ontario, Canada and Canadian Solar (USA) Inc. of Walnut Creek,
California (collectively, ``Canadian Solar''). Id. The Office of Unfair
Import Investigations is not named as a party. Id.
On July 15, 2021, the Commission determined to terminate the
investigation as to the '707 patent based on Solaria's withdrawal of
the allegations in the complaint as to that patent. Order No. 9 (June
28, 2021), unreviewed by Comm'n Notice (July 15, 2021). On October 13,
2021, the Commission determined to terminate the investigation as to
asserted claims 18-20 of the '333 patent and asserted claims 6, 7, and
10 of the '388 patent based on Solaria's withdrawal of the allegations
in the complaint as to those claims. Order No. 13 (Sept. 14, 2021),
unreviewed by Comm'n Notice (Oct. 13, 2021).
On October 22, 2021, the ALJ issued the subject final ID on
violation and RD on remedy and bonding. The ID finds violations of
section 337 with respect to all asserted claims still at issue--i.e.,
asserted claims 1-5, 8, 9, 11, 15-17, 19, and 20 of the '388 patent and
asserted claims 1, 8, 9, and 12-17 of the '333 patent. Specifically,
the ID finds that: (i) Solaria has standing to assert both the '388 and
'333 patents; (ii) the asserted claims of each patent are infringed and
not invalid; (iii) the '333 patent is not unenforceable due to unclean
hands; and (iv) Solaria satisfied the technical and economic prongs of
the domestic industry requirement as to both patents. The RD recommends
that, should the Commission determine that violations of section 337
occurred, then the Commission should: (i) Issue a limited exclusion
order against Canadian Solar's infringing products; (ii) not issue a
cease and desist order against Canadian Solar; and (iii) set a 100
percent bond for any importations of infringing products during the
period of Presidential review.
On November 5, 2021, Canadian Solar filed a petition for review of
the ID on violation, including the ID's findings concerning standing,
claim construction, infringement, invalidity, unenforceability, and
satisfaction of the technical prong of the domestic industry
requirement. On November 15, 2021, Solaria filed a response to Canadian
Solar's petition.
On November 22, 2021, Canadian Solar filed a notice of supplemental
authority to inform the Commission that a claim construction order
issued in a related district court litigation (``district court
order'') involving the same parties and patents at issue in this
investigation.
On November 23, 2021, Canadian Solar filed a submission on the
public interest pursuant to Commission Rule 210.50(a)(4) (19 CFR
210.50(a)(4)). The Commission did not receive a public interest
submission from Solaria. The Commission also did not receive any
submissions on the public interest from members of the public in
response to the Commission's Federal Register notice. 86 FR 62845-46
(Nov. 12, 2021).
The Commission has determined to review the ID in part and remand
the ID in part. Specifically, the Commission has determined to review:
(i) The ID's construction of the claim term ``ablation'' of the '388
and '333 patents in light of the district court order's construction of
that term; (ii) the ID's allocation of the burden of proof regarding
the asserted claims' entitlement to claim priority to the filing date
of U.S. Provisional Application No. 62/349,547 (``the '547 provisional
application''); (iii) the ID's finding that claim 19 of the '388 patent
and claim 8 of the '333 patent find written description support in the
'547 provisional application; (iv) the ID's findings on validity for
the '388 patent; and (v) the ID's finding concerning secondary
considerations with respect to the '333 patent. The Commission has
determined to remand the ID to the ALJ to address, in the first
instance, Canadian Solar's on-sale bar defenses as to the asserted
claims of the '333 patent based on alleged sales and offers for sale of
Solaria's BIPV and GIPV products. The Commission has also determined to
correct one typographical error on page 48 of the ID. The Commission
has determined not to review the remaining findings in the ID.
In connection with its review, the Commission requests responses to
the following questions. The parties are requested to brief their
positions with reference to the applicable law and the existing
evidentiary record.
(1) Explain the proper allocation of burdens in the context of
showing a patentee's entitlement to rely on a parent application to
avoid prior art. See ID at 62 (citing Tech. Licensing Corp. v.
Videotek, Inc., 545 F.3d 1316, 1327-28 (Fed. Cir. 2008)).
(2) Explain whether claim 19 of the '388 patent and claim 8 of the
'333 patent find written description support in the '547 provisional
application. Provide any citations to the record that support your
contention.
(3) Identify each product-by-process limitation recited in the
asserted claims of the '388 patent (e.g., ``cut by an ablation from
multiple passes of a laser beam'') and explain whether each such
limitation should be accorded patentable weight in the validity
analysis of the claims at issue.
The parties are not to brief other issues on review, which are
adequately presented in the parties' existing filings.
In connection with the final disposition of this investigation, the
statute authorizes issuance of: (1) An exclusion order that could
result in the exclusion of the subject articles from entry into the
United States, and/or (2) a cease and desist order that could result in
the respondents being required to cease and desist from engaging in
unfair acts in the importation and sale of such articles. Accordingly,
the Commission is interested in receiving written submissions that
address the form of remedy, if any, that should be ordered. If a party
seeks exclusion of an article from entry into the United States for
purposes other than entry for
[[Page 7869]]
consumption, the party should so indicate and provide information
establishing that activities involving other types of entry either are
adversely affecting it or likely to do so. For background, see Certain
Devices for Connecting Computers via Telephone Lines, Inv. No. 337-TA-
360, USITC Pub. No. 2843, Comm'n Op. at 7-10 (December 1994).
The statute requires the Commission to consider the effects of any
remedy upon the public interest. The public interest factors the
Commission will consider include the effect that an exclusion order
and/or cease and desist order would have on: (1) The public health and
welfare; (2) competitive conditions in the U.S. economy; (3) U.S.
production of articles that are like or directly competitive with those
that are subject to investigation; and (4) U.S. consumers. The
Commission is therefore interested in receiving written submissions
that address the aforementioned public interest factors in the context
of this investigation.
The Commission requests full briefing on the public interest,
setting forth a complete and fulsome discussion of whether exclusion of
the accused products would have an effect on each public interest
factor and providing evidence to substantiate factual assertions.
Within the context of the applicable public interest factor, please
include particular briefing on the following public interest issues:
(1) Please identify and describe any planned but not yet completed
projects involving the accused products, including the amount (wattage)
of accused products needed to complete the project and the anticipated
power generation associated with the project.
(2) Please address the extent to which domestic industry products
or other products are technically and practicably capable of replacing
the accused products in the planned projects. Please address the extent
to which replacing the accused products would result in project delays,
additional costs, or reduced power generation.
(3) To the extent that cancellation, delay, or reduced power
generation of a project would result from a remedy in this
investigation, how would that impact the overall supply of solar and
other forms of clean energy in the United States? Please be as specific
as possible.
(4) What is Solaria's and its manufacturing partners' capacity to
produce domestic industry products and do they currently have available
capacity that could be used to increase production to replace the
accused products? To the extent products other than domestic industry
products are capable of replacing the accused products, please address
the available capacity of any producers to supply those products.
(5) What is the relevant market for purposes of considering the
public interest in this investigation, for example, the market for
shingled solar modules or the broader solar module market? What share
of the market do the various market participants hold, including
Canadian Solar and Solaria? What market share do domestically-produced
solar modules have?
(6) Please address whether an exception to any remedial orders for
modules and/or parts for warranty, service, or repair obligations is
necessary to address any identified public interest concerns. Please
identify the scope of any such exception, if any, and any evidence
relevant to this issue. Please also address whether Canadian Solar's
warranty, service, or repair obligations could be met with non-
infringing alternatives.
(7) Please address whether Canadian Solar's U.S. inventories of
accused products are commercially significant in an appropriate
context. Are these inventories sufficient to supply the planned
projects identified in response to Question 1?
(8) To the extent tailoring is requested of any remedial orders to
address one or more public interest concerns, is non-issuance of a
cease and desist order (i.e., allowing Canadian Solar to continue to
sell infringing U.S. inventories) sufficient to address those concerns?
If the Commission orders some form of remedy, the U.S. Trade
Representative, as delegated by the President, has 60 days to approve,
disapprove, or take no action on the Commission's determination. See
Presidential Memorandum of July 21, 2005. 70 FR 43251 (July 26, 2005).
During this period, the subject articles would be entitled to enter the
United States under bond, in an amount determined by the Commission and
prescribed by the Secretary of the Treasury. The Commission is
therefore interested in receiving submissions concerning the amount of
the bond that should be imposed if a remedy is ordered.
Written Submissions: The parties, interested government agencies,
and any other interested parties are invited to file written
submissions on the issues of remedy, the public interest, and bonding.
Such submissions should include views on the recommended determination
by the ALJ on remedy and bonding.
In its initial written submission, Solaria is requested to submit
proposed remedial orders for the Commission's consideration. Solaria is
further requested to identify the dates the asserted patents expire, to
provide the HTSUS subheadings under which the subject articles are
imported, and to supply identification information for all known
importers of the subject articles. Solaria is additionally requested to
identify and explain, from the record, articles that are ``components
of'' the subject articles, and thus covered by the proposed remedial
orders, if imported separately from the subject articles.
Initial written submissions, including proposed remedial orders,
must be filed no later than close of business on February 18, 2022.
Reply submissions must be filed no later than the close of business on
March 4, 2022. No further submissions on any of these issues will be
permitted unless otherwise ordered by the Commission.
Persons filing written submissions must file the original document
electronically on or before the deadlines stated above. The
Commission's paper filing requirements in 19 CFR 210.4(f) are currently
waived. 85 FR 15798 (Mar. 19, 2020). Submissions should refer to the
investigation number (Inv. No. 337-TA-1223) in a prominent place on the
cover page and/or the first page. (See Handbook for Electronic Filing
Procedures, <a href="https://www.usitc.gov/documents/handbook_on_filing_procedures.pdf">https://www.usitc.gov/documents/handbook_on_filing_procedures.pdf</a>). Persons with questions regarding
filing should contact the Secretary (202-205-2000).
Any person desiring to submit a document to the Commission in
confidence must request confidential treatment by marking each document
with a header indicating that the document contains confidential
information. This marking will be deemed to satisfy the request
procedure set forth in Rules 201.6(b) and 210.5(e)(2) (19 CFR 201.6(b)
& 210.5(e)(2)). Documents for which confidential treatment by the
Commission is properly sought will be treated accordingly. A redacted
non-confidential version of the document must also be filed
simultaneously with any confidential filing. All information, including
confidential business information and documents for which confidential
treatment is properly sought, submitted to the Commission for purposes
of this investigation may be disclosed to and used: (i) By the
Commission, its employees and Offices, and contract personnel (a) for
developing or maintaining the records of this or a related proceeding,
or (b) in internal investigations, audits, reviews,
[[Page 7870]]
and evaluations relating to the programs, personnel, and operations of
the Commission including under 5 U.S.C. Appendix 3; or (ii) by U.S.
government employees and contract personnel,\1\ solely for
cybersecurity purposes. All contract personnel will sign appropriate
nondisclosure agreements. All nonconfidential written submissions will
be available for public inspection on EDIS.
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\1\ All contract personnel will sign appropriate nondisclosure
agreements.
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The Commission vote for this determination took place on February
4, 2022.
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: February 4, 2022.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2022-02795 Filed 2-9-22; 8:45 am]
BILLING CODE 7020-02-P
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