[Federal Register Volume 86, Number 140 (Monday, July 26, 2021)]
[Notices]
[Pages 40077-40078]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[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 https://edis.usitc.gov. 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 https://www.usitc.gov. 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; 
Alarm.com Incorporated and Alarm.com Holdings, Inc. of Tysons, Virginia 
(collectively, ``Alarm.com''); 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 Alarm.com. 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 Alarm.com 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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