[Federal Register Volume 87, Number 123 (Tuesday, June 28, 2022)]
[Notices]
[Pages 38424-38425]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2022-13717]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-1258]


Certain Smart Thermostat Systems, Smart HVAC Systems, Smart HVAC 
Control Systems, and Components Thereof; Commission Decision To Review 
in Part a Final Initial Determination; Commission Final 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 has determined to review in part a final initial 
determination (``FID'') of the presiding Administrative Law Judge 
(``ALJ''). On review, the Commission affirms the FID's finding of no 
violation of section 337 of the Tariff Act of 1930, as amended, in this 
investigation. The investigation is terminated.

FOR FURTHER INFORMATION CONTACT: Houda Morad, 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#51141518026219343d211124223825327f363e27"><span class="__cf_email__" data-cfemail="8dc8c9c4debec5e8e1fdcdf8fee4f9eea3eae2fb">[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 April 2, 2021, 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 (``Complainant''). See 86 
FR 17402-03 (Apr. 2, 2021). The complaint, as amended and supplemented, 
alleges a violation of section 337 based upon the importation into the 
United States, the sale for

[[Page 38425]]

importation, and the sale within the United States after importation of 
certain smart thermostat systems, smart HVAC systems, smart HVAC 
control systems, and components thereof by reason of infringement of 
certain claims of U.S. Patent Nos. 8,423,322 (``the '322 patent''); 
8,019,567 (``the '567 patent''); 10,612,983 (``the '983 patent''); 
8,596,550 (``the '550 patent''); and 8,886,488 (``the '488 patent''). 
See id. The notice of investigation names the following respondents: 
ecobee Ltd. and ecobee, Inc. of Toronto, Canada (collectively, 
``ecobee''); Google LLC of Mountain View, California (``Google''); 
Carrier Global Corporation of Palm Beach Gardens, Florida 
(``Carrier''); Emerson Electric Co. of St. Louis, Missouri 
(``Emerson''); Honeywell International Inc. of Charlotte, North 
Carolina (``Honeywell''); Resideo Technologies, Inc. of Austin, Texas 
(``Resideo''); Johnson Controls International, PLC of Cork, Ireland 
(``JCP''); and Siemens Industry, Inc. of Buffalo Grove, Illinois and 
Siemens AG of Munich, Germany (collectively, ``Siemens''). See id. The 
Office of Unfair Import Investigations is not a party to the 
investigation. See id.
    The Commission previously terminated the investigation as to 
respondents Emerson, Siemens, Honeywell, Resideo, and Carrier based on 
the withdrawal of the allegations in the complaint as to those 
respondents. See Order No. 3 (Apr. 12, 2021), unreviewed by Comm'n 
Notice (Apr. 29, 2021); Order No. 7 (May 13, 2021), unreviewed by 
Comm'n Notice (May 24, 2021); Order No. 13 (July 16, 2021), unreviewed 
by Comm'n Notice (July 30, 2021).
    On May 11, 2021, the Commission amended the complaint and notice of 
investigation to add respondent Johnson Controls Inc. (``JCI'') and to 
terminate respondent JCP. See Order No. 4 (Apr. 20, 2021), unreviewed 
by Comm'n Notice (May 11, 2021). On August 6, 2021, the Commission 
terminated the investigation as to JCI based on settlement. See Order 
No. 17 (Aug. 6, 2021), unreviewed by Comm'n Notice (Aug. 18, 2021). 
Respondents ecobee and Google (hereinafter, ``Respondents'') remain in 
this investigation.
    On August 18, 2021, the Commission terminated the investigation as 
to the '322 patent based on the withdrawal of the allegations in the 
complaint as to that patent. See Order No. 16 (Aug. 5, 2021), 
unreviewed by Comm'n Notice (Aug. 18, 2021). On December 8, 2021, the 
Commission terminated the investigation as to the '567 and '983 patents 
based on the withdrawal of the allegations in the complaint as to those 
patents. See Order No. 26 (Nov. 8, 2021), unreviewed by Comm'n Notice 
(Dec. 8, 2021). Claims 9 and 17 of the '550 patent and claims 1 and 2 
of the '488 patent (collectively, ``the Asserted Patents'') remain in 
this investigation.
    On September 1, 2021, the ALJ issued a claim construction order 
construing certain terms disputed by the parties before the ALJ. See 
Order No. 18 (Sept 1, 2021). In addition, the ALJ determined that the 
asserted claims of the '567 patent were invalid as indefinite. See id.
    On April 4, 2022, the ALJ issued the FID finding no violation of 
section 337. In particular, the FID finds that Complainant failed to 
establish infringement of any of the asserted claims of the '550 and 
'488 patents by the Respondents. In addition, the FID finds all of the 
asserted claims to be invalid as follows: (1) claims 9 and 17 of the 
'550 patent and claims 1 and 2 of the '488 patent lack written 
description under 35 U.S.C. 112 (section 112); and (2) claim 9 (but not 
claim 17) of the '550 patent and claims 1 and 2 of the '488 patent are 
patent ineligible under 35 U.S.C. 101 (section 101). The FID also finds 
that claims 9 and 17 of the '550 patent and claims 1 and 2 of the '488 
patent are not invalid as anticipated or obvious under 35 U.S.C. 102 or 
103 (section 102 or 103). Furthermore, the FID finds that the technical 
prong is not satisfied with respect to any of the asserted claims. The 
FID also finds that the economic prong of the domestic industry 
requirement is satisfied with respect to both Asserted Patents.
    The ALJ's Recommended Determination (``RD'') recommends, should the 
Commission find a violation of section 337, that the Commission issue a 
limited exclusion order against smart thermostat systems, smart HVAC 
systems, smart HVAC control systems, and components thereof imported by 
or on behalf of the Respondents. The RD does not recommend issuance of 
a cease and desist order against any of the Respondents. In addition, 
the RD recommends that the Commission decline to set a bond during the 
period of Presidential review.
    On April 18, 2022, both Complainant and Respondents filed petitions 
for Commission review of the FID. Complainant petitions for Commission 
review of the FID's findings on: (1) certain claim constructions; (2) 
non-infringement; (3) invalidity for lack of written description under 
section 112; and (4) patent ineligibility under section 101 of claim 9 
of the '550 patent and claims 1 and 2 of the '488 patent. Respondents 
contingently petition for Commission review of the FID's findings on: 
(1) certain infringement findings; (2) validity of claims 1 and 2 of 
the '488 patent under section 102 or 103; (3) patent eligibility of 
claim 17 of the '550 patent under section 101; and (4) the economic 
prong of the domestic industry requirement. On April 26, 2022, the 
parties filed responses to each other's petition.
    Having examined the record of this investigation, including the FID 
and the parties' submissions, the Commission has determined to review 
in part and, upon review, to affirm the FID's determination of no 
violation of section 337. Specifically, as explained in the Commission 
Opinion issued concurrently herewith, the Commission has determined to: 
(1) modify the FID's claim construction findings with respect to the 
terms ``measurement'' and ``operational efficiency''; (2) affirm with 
modifications the FID's non-infringement findings as to both Asserted 
Patents; (3) take no position as to the FID's finding that the 
technical prong of the domestic industry requirement is not satisfied 
as to both Asserted Patents; (4) take no position as to the FID's 
invalidity findings for lack of written description and patent 
ineligibility as to both Asserted Patents; (5) take no position as to 
the FID's finding that claim 1 of the '488 patent is not anticipated by 
U.S. Patent No. 6,478,233 (``Shah'') and that claim 2 of the '488 
patent is not obvious over Shah in view of U.S. Patent No. 6,789,739 
(``Rosen''); and (6) take no position as to the economic prong of the 
domestic industry requirement. The Commission adopts all findings in 
the FID that are not inconsistent with the Commission's determination.
    The investigation is terminated.
    The Commission's vote for this determination took place on June 22, 
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: June 22, 2022.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2022-13717 Filed 6-27-22; 8:45 am]
BILLING CODE 7020-02-P


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