Notice2022-14761
Certain UMTS and LTE Cellular Communications Modules and Products Containing the Same; Notice of a Commission Determination To Review in Part and, on Review, Affirm a Final Initial Determination Finding No Violation of Section 337; Termination of Investigation
Primary source
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Published
July 12, 2022
Issuing agencies
International Trade Commission
Abstract
Notice is hereby given that the U.S. International Trade Commission (the "Commission") has determined to review in part the final initial determination ("ID") issued by the presiding administrative law judge ("ALJ") on April 1, 2022. On review, the Commission has determined to take no position on certain non- dispositive issues. The Commission has determined not to review, and thereby adopts, the remaining findings in the ID. The Commission further determines to affirm the ID's finding of no violation with respect to each of the subject patents. This investigation is hereby terminated.
Full Text
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<title>Federal Register, Volume 87 Issue 132 (Tuesday, July 12, 2022)</title>
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[Federal Register Volume 87, Number 132 (Tuesday, July 12, 2022)]
[Notices]
[Pages 41352-41353]
From the Federal Register Online via the Government Publishing Office [<a href="http://www.gpo.gov">www.gpo.gov</a>]
[FR Doc No: 2022-14761]
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INTERNATIONAL TRADE COMMISSION
[Investigation No. 337-TA-1240]
Certain UMTS and LTE Cellular Communications Modules and Products
Containing the Same; Notice of a Commission Determination To Review in
Part and, on Review, Affirm a Final Initial Determination Finding No
Violation of Section 337; Termination of 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 (the ``Commission'') has determined to review in part the
final initial determination (``ID'') issued by the presiding
administrative law judge (``ALJ'') on April 1, 2022. On review, the
Commission has determined to take no position on certain non-
dispositive issues. The Commission has determined not to review, and
thereby adopts, the remaining findings in the ID. The Commission
further determines to affirm the ID's finding of no violation with
respect to each of the subject patents. This investigation is hereby
terminated.
FOR FURTHER INFORMATION CONTACT: Carl P. Bretscher, 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 system (``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#f7b2b3bea4c4bf929b87b782849e8394d9909881"><span class="__cf_email__" data-cfemail="c184858892f289a4adb181b4b2a8b5a2efa6aeb7">[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: The Commission instituted the present
investigation on January 27, 2021, based on a complaint, as
supplemented, filed by Koninklijke Philips N.V. of Eindhoven,
Netherlands and Philips RS North America LLC (f/k/a Respironics, Inc.)
of Pittsburgh, Pennsylvania. 86 FR 7305-06 (Jan. 27, 2021). The
complaint alleges a violation of section 337 of the Tariff Act, as
amended, 19 U.S.C. 1337, based on the importation, sale for
importation, or sale in the United States after importation of certain
UMTS and LTE cellular communication modules and products containing the
same by reason of infringement of certain claims of U.S. Patent Nos.
7,831,271; 8,199,711; 7,554,943; and 7,944,935. Id. The complaint
further alleges a domestic industry exists or is in the process of
being established. Id.
The Commission's notice of investigation names the following
respondents: Thales DIS AIS USA, LLC of Bellevue, Washington; Thales
DIS AIS Deutschland GmbH, Bayern, Germany (collectively, ``Thales'');
Thales USA, Inc., Arlington, Virginia; Thales S.A., Paris, France;
Telit Wireless Solutions, Inc. of Durham, North Carolina; Telit
Communications PLC, London, United Kingdom; Quectel Wireless Solutions
Co., Ltd., Shanghai, China; CalAmp Corp. of Irvine, California; Xirgo
Technologies, LLC of Camarillo, California; Laird Connectivity, Inc. of
Akron, Ohio (all collectively, ``Respondents''). Id. at 7306. The
Office of Unfair Import Investigations (``OUII'') is also named as a
party to this investigation. Id.
The presiding ALJ held an evidentiary hearing from October 8-13,
2021. The parties filed their opening post-hearing briefs on October
29, 2021, and their post-hearing reply briefs on November 15, 2021.
On April 1, 2022, the presiding ALJ issued the final ID at issue
finding no violation of Section 337 with respect to each of the four
asserted patents. In summary, the final ID finds that Philips failed to
prove that any of the asserted claims of the four asserted patents is
infringed, directly or indirectly, by any of the Respondents. The ID
further finds that Philips failed to prove that it satisfied the
technical prong of the domestic industry requirement with respect to
any of the four asserted patents. The ID further finds that asserted
claim 9 of the '711 patent is invalid as indefinite and asserted claims
9 and 12 are invalid as obvious. The ID further finds that asserted
claims 1-8 of the '271 patent are invalid as indefinite and for lack of
sufficient written description. The ID finds that claim 12 of the '943
patent is invalid as indefinite. The ID further finds that all four
patents are unenforceable under a doctrine of implied waiver, but it
rejects Respondents' proposed defenses of express and implied licenses
and equitable estoppel.
On April 13, 2022, Philips filed a petition for review of certain
no-violation findings in the final ID. On April 15, 2022, Thales filed
a contingent petition to review certain findings in the final ID.
On April 15, 2022, the presiding ALJ issued a recommended
determination on remedy and bonding.
On April 21, 2022, OUII filed a combined response opposing both
parties' petitions for review. On April 21, 2022, Respondents filed
their opposition to Philips' petition for review. On April 25, 2022,
Philips filed its opposition to Thales' contingent petition for review.
On May 16, 2022, Philips and Thales filed public interest
statements pursuant to Commission Rule 210.50(a)(4) (19 CFR
210.50(a)(4)). The Commission also received public interest statements
from a number of third parties as well as from interested individuals
in response to the post-RD Federal Register notice, including: ResMed
Corp. (May 13, 2022); the American Sleep Apnea Association (May 16,
2022); App Association (May 16, 2022); Continental Automotive Systems,
Inc., Denso Corporation, Bury S.p.z.o.o, the Alliance for Automotive
Innovation, and the European Association of Auto Suppliers (May 16,
2022); Congressmen Scott H. Peters and Congressman Bryan G. Steil (May
16, 2022); Federal Trade Commission Chair Lina M. Khan and Commissioner
Rebecca Kelly Slaughter (May 16, 2022); Professor Michael A. Carrier
(May 16, 2022); Dr. Kathleen Sarmiento, M.D (May 16, 2022); Dr. Patrick
J. Strollo, Jr., MD (May 8, 2022), Dr. Sanjay R. Patel, MD (May 5,
2022), and Dr. Sunil Sharma, M.D., Dr. Robert Stansbury, M.D., and
Chris Pham, D.O. of the West Virginia University Sleep Evaluation
Center (May 3, 2022). 87 FR 23884 (April 21, 2022).
Upon review of the subject ID, the parties' petitions, and
responses thereto, the Commission has determined to review and, on
review, take no position on the following issues: (1) the ID's
construction and application of the claim terms ``queue,'' ``queue
store,'' and ``means for transmitting the group'' in the '935 patent:
(2) the ID's finding that claims 9 and 12 of the '711 patent are
invalid as obvious; (3) the ID's finding on domestic industry for the
'271 patent, to the extent it might be interpreted to suggest that
``each and every'' asserted domestic industry product must be shown to
practice a claim of an asserted patent to satisfy the technical prong
of the domestic industry requirement (see ID at 221); (4) the ID's
finding that the accused products do not directly infringe method
claims 1-4 of the '271 patent on the basis that Philips did not prove
that they are used with an antenna, which conflicts with the ID's
construction of ``transmitting'' to not require an antenna (cf. ID at
210 with ID at 234); (5) the ID's finding that Philips
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satisfied the economic prong of the domestic industry requirement with
respect to the four asserted patents; (6) the ID's finding that Philips
has impliedly waived its rights to assert the four asserted patents;
and (7) the ID's finding that Respondents failed to prove either their
express/implied license defense or their equitable estoppel defense
with respect to any of the four asserted patents. See Beloit Corp. v.
Valmet Oy, 742 F.2d 1421, 1422-23 (Fed. Cir. 1984). Chair Johanson and
Commissioner Karpel base their decision to review and take no position
on the economic prong on the finding that the technical prong is not
met. Commissioner Kearns would affirm the ID's finding that the `271
patent is unenforceable under the doctrine of implied waiver (but takes
no position on implied waiver for the other three asserted patents),
and its findings that Respondents failed to prove both their express/
implied license defense and their equitable estoppel defense with
respect to the four asserted patents. Commissioner Kearns also notes
that his determination to review and take no position regarding
satisfaction of the economic prong is independent of his determination
regarding the technical prong.
The Commission has determined not to review, and thus adopts, the
remaining findings in the ID, including that: (1) the asserted claims
of the '935 patent, the '711 patent, the '943 patent, and the '271
patent are not infringed; (2) Philips did not satisfy the technical
prong of the domestic industry requirement with respect to any of the
four asserted patents; (3) claim 9 of the '711 patent and claim 12 of
the '943 patent are invalid as indefinite; and (4) the asserted claims
of the '271 patent are invalid as indefinite and for lack of written
description. Recognizing the Commission has determined not to review
the ID's finding that Philips did not satisfy the technical prong of
the domestic industry requirement with respect to any of the four
asserted patents, Commissioner Schmidtlein would otherwise affirm the
ID's analysis concerning whether the asserted economic prong
investments were significant under 19 U.S.C. 1337(a)(3)(A) and (B).
The Commission thus affirms the final ID's finding of no violation
of Section 337 with respect to each of the four asserted patents. This
investigation is hereby terminated.
The Commission voted to approve this determination on July 6, 2022.
The authority for the Commission's determinations 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 6, 2022.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2022-14761 Filed 7-11-22; 8:45 am]
BILLING CODE 7020-02-P
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