[Federal Register Volume 87, Number 132 (Tuesday, July 12, 2022)]
[Notices]
[Pages 41352-41353]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[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 
https://edis.usitc.gov. 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 https://www.usitc.gov. 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

[[Page 41353]]

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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