Notice2025-12789
Certain Audio Players and Components Thereof (I); Notice of a Commission Determination To Adopt an Initial Determination Granting Summary Determination of Invalidity and Finding No Violation; Termination of Investigation
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Published
July 10, 2025
Issuing agencies
International Trade Commission
Abstract
Notice is hereby given that the U.S. International Trade Commission ("Commission") has determined to adopt an initial determination ("ID") (Order No. 39) issued by the presiding administrative law judge ("ALJ") granting respondent's motion for summary determination of invalidity of the asserted patent claims due to indefiniteness. The Commission previously vacated the ID's termination for "good cause." The investigation is terminated with a finding of no violation of section 337.
Full Text
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<title>Federal Register, Volume 90 Issue 130 (Thursday, July 10, 2025)</title>
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[Federal Register Volume 90, Number 130 (Thursday, July 10, 2025)]
[Notices]
[Pages 30683-30684]
From the Federal Register Online via the Government Publishing Office [<a href="http://www.gpo.gov">www.gpo.gov</a>]
[FR Doc No: 2025-12789]
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INTERNATIONAL TRADE COMMISSION
[Investigation No. 337-TA-1329]
Certain Audio Players and Components Thereof (I); Notice of a
Commission Determination To Adopt an Initial Determination Granting
Summary Determination of Invalidity and Finding No Violation;
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 (``Commission'') has determined to adopt an initial
determination (``ID'') (Order No. 39) issued by the presiding
administrative law judge (``ALJ'') granting respondent's motion for
summary determination of invalidity of the asserted patent claims due
to indefiniteness. The Commission previously vacated the ID's
termination for ``good cause.'' The investigation is terminated with a
finding of no violation of section 337.
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#99dcddd0caaad1fcf5e9d9eceaf0edfab7fef6ef"><span class="__cf_email__" data-cfemail="4401000d17770c2128340431372d30276a232b32">[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 September 15, 2022, based on a complaint filed by Google LLC
(``Google'') of Mountain View, California. 87 FR 56702-703 (Sept. 15,
2022). 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
audio players and components thereof by reason of infringement of
certain asserted claims of U.S. Patent Nos. 7,705,565 (``the '565
patent''); 10,593,330 (``the '330 patent''); and 10,134,398 (``the '398
patent''). Id. The complaint further alleges that a domestic industry
exists. Id. The Commission's notice of investigation names Sonos, Inc.
(``Sonos'') of Santa Barbara, California as the sole respondent. Id. at
56703. The Office of Unfair Import Investigations was not named as a
party to this investigation. Id.
On November 2, 2022, the Commission terminated the investigation
with respect to the '565 patent. Order No. 7 (Oct. 18, 2022),
unreviewed by Comm'n Notice (Nov. 2, 2022).
On November 30, 2022, the parties filed a joint claim construction
chart, identifying the term ``low power mode'' among the terms in
dispute. The ALJ held a Markman hearing on January 19, 2023.
After the Markman hearing, the Commission granted the parties'
multiple requests for extensions of time, in order to accommodate the
U.S. Patent and Trademark Office Patent Trial and Appeal Board's
(``PTAB'') inter partes review (``IPR'') of the patents at issue. On
May 15, 2024, the PTAB issued two Final Written Decisions (``FWD''),
concluding that all of the challenged claims of the asserted patents
are unpatentable under 35 U.S.C. 318(a). Sonos, Inc. v. Google LLC,
IPR2023-00119, Patent No. 10,593,330, Final Written Decision
Determining All Challenged Claims Unpatentable (May 15, 2024); Sonos,
Inc. v. Google LLC, IPR2023-00118, Patent No. 10,134,398, Final Written
Decision Determining All Challenged Claims Unpatentable (May 15, 2024).
On May 17, 2023, Sonos filed a motion for summary determination of
invalidity, arguing that the asserted claims of the '330 patent and the
'398 patent are, inter alia, invalid as indefinite (``First MSD'').
Google filed its opposition to Sonos's First MSD on May 30, 2023.
On July 31, 2024, Sonos filed its second motion for summary
determination of invalidity (``Second MSD''), arguing that all of the
asserted patent claims are invalid as anticipated or obvious. Google
filed its opposition to Sonos's Second MSD on August 20, 2024.
On February 4, 2025, the presiding ALJ issued an order (Order No.
35) inviting the parties to file a motion to terminate the
investigation in view of the PTAB's two FWDs finding the asserted
patent claims ``unpatentable'' under 35 U.S.C. 318(a). Order No. 35
(Feb. 4, 2025), clarified in Order No. 36 (Feb. 19, 2025).
On February 14, 2025, Sonos moved to terminate the investigation
for ``good cause'' in view of the PTAB's FWDs of unpatentability.
Google filed its opposition to Sonos's termination motion on February
28, 2025.
On March 7, 2025, the presiding ALJ issued a claim construction
order (Order No. 37) finding that the claim term ``low power mode,''
which is used in both of the remaining patents, is indefinite, and the
asserted patent claims are thus invalid. Order No. 37 (March 7, 2025).
Also on March 7, 2025, the ALJ issued an order (Order No. 38)
denying Sonos' Second MSD because Sonos is estopped from asserting the
same prior art in the present investigation that it asserted in the
PTAB proceedings. Order No. 38 (March 7, 2025) (citing 35 U.S.C.
315(e)(2)).
Further on March 7, 2025, the ALJ issued the subject ID (Order No.
39) granting Sonos's First MSD of invalidity because the claim term
``low power mode'' is indefinite. Order No. 39 (March 7, 2025) (citing
Order No. 37, supra). The ALJ also granted Sonos's motion to terminate
the investigation for ``good cause'' due to the PTAB's two FWDs of
unpatentability.
No party timely filed a petition for review of the subject ID.
On April 8, 2025, the Commission reviewed the ID in part and, on
review, adopted the ID's finding that the asserted patent claims are
invalid as indefinite, but vacated that portion of the ID that
terminated the investigation for ``good cause.'' 90 FR 15579-80 (Apr.
14, 2025). The Commission thus
[[Page 30684]]
terminated the investigation with a finding of no violation of section
337 due to the finding that the claims are invalid as indefinite and
thus cannot be infringed.
On April 18, 2025, Google filed a Petition for Reconsideration and
Petition for Review of the ALJ's Initial Determination Granting Motion
for Summary Determination Based on Indefiniteness. Google argued that
it did not receive timely service of the ID and, thus, did not have the
opportunity to file a timely petition for review of the ID. Google
attached its petition for review to its petition for reconsideration.
On April 25, 2025, Sonos filed a response to Google's petition for
reconsideration. While noting that the ID was publicly available and
that Google only implied it did not have actual notice of the ID, Sonos
took no position on Google's motion for reconsideration. Sonos also
asked for eight days to respond to Google's petition for review if its
motion for reconsideration were granted.
On May 27, 2025, the Commission granted Google's petition for
reconsideration, vacated its previous determination of April 8, 2025,
and reopened the investigation to consider Google's petition for
review. Comm'n Notice (May 27, 2025). The Commission accepted Google's
petition for review as filed, gave Sonos eight days to respond to
Google's petition for review, and reinstated the investigation's
previous target date of July 7, 2025.
Sonos timely filed its response to Google's petition for review on
June 5, 2025.
Upon consideration of Order Nos. 37 and the ID, Google's petition
for review, Sonos's response thereto, and related submissions, the
Commission has determined to adopt the ID's finding that the asserted
claims of the '330 patent and '398 patent are invalid because the term
``low power mode'' is indefinite. Accordingly, the Commission finds
there is no violation of section 337, per 19 U.S.C. 1337(a)(1)(B)(1)
(requiring infringement of a valid claim for a finding of violation).
The Commission previously vacated the ID's termination for ``good
cause.'' Comm'n Notice (Apr. 8, 2025). There is no basis in either
Commission precedent or the Commission's rules to terminate an
investigation based on a PTAB final written decision that may still be
appealed. See Certain Network Devices, Related Software and Components
Thereof (II), Inv. No. 337-TA-945, Comm'n Op. at 12 (Aug. 2017)
(explaining that ``the law is clear that patent claims are valid until
the PTO issues certificates cancelling those claims, which it cannot do
until the exhaustion of any appeals . . . take[n] from the PTAB's final
written decisions'').
The investigation is terminated based on the finding of no
violation.
The Commission vote for this determination took place on July 7,
2025.
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 7, 2025.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2025-12789 Filed 7-9-25; 8:45 am]
BILLING CODE 7020-02-P
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