[Federal Register Volume 84, Number 62 (Monday, April 1, 2019)]
[Notices]
[Pages 12292-12293]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2019-06209]
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INTERNATIONAL TRADE COMMISSION
[Investigation No. 337-TA-1065]
Certain Mobile Electronic Devices and Radio Frequency and
Processing Components Thereof; Notice of the Commission's Final
Determination Finding No Violation of Section 337; 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 (the ``Commission'') has determined that no violation of
Section 337 of the Tariff Act of 1930 (``Section 337''), has been
proven in the above-captioned investigation and accordingly no remedial
orders shall be issued, which renders moot any issues of remedy, the
public interest, or bonding. The investigation is 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 are
or will be available for inspection during official business hours
(8:45 a.m. to 5:15 p.m.) in the Office of the Secretary, U.S.
International Trade Commission, 500 E Street SW, Washington, DC 20436,
telephone (202) 205-2000. General information concerning the Commission
may also be obtained by accessing its internet server (https://www.usitc.gov). The public record for this investigation may be viewed
on the Commission's Electronic Docket Information System (``EDIS'')
(https://edis.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: On August 14, 2017, the Commission
instituted this investigation based on a Complaint and amendment
thereto filed by Qualcomm Incorporated of San Diego, California
(``Qualcomm''). 82 FR 37899 (Aug. 14, 2017). The Complaint alleged that
19 U.S.C. 1337, as amended (``Section 337''), has been violated by way
of importation into the United States, sale for importation, or sale
within the United States after importation of certain mobile electronic
devices and radio frequency and processing components thereof that
infringe one or more claims of U.S. Patent No. 9,535,490 (``the '490
patent''), U.S. Patent No. 8,698,558 (``the '558 patent''), U.S. Patent
No. 8,633,936 (``the '936 patent''), U.S. Patent No. 8,838,949 (``the
'949 patent''), U.S. Patent No. 9,608,675 (``the '675 patent''), and
U.S. Patent No. 8,487,658 (``the '658 patent''). The notice of
investigation named Apple Inc. of Cupertino, California (``Apple'') as
Respondent. The Commission also named the Office of Unfair Import
Investigations (``OUII'') as a party.
The Commission, following Qualcomm's motions, partially terminated
the investigation with respect to the following claims and patents: All
asserted claims of the '658, '949, and '675 patents; claims 1, 20-24,
26, 38, 67, and 68 of the '936 patent; claims 1, 6, and 8-20 of the
'558 patent; and claims 1-6, 8, 10, and 16-17 of the '490 patent.
Comm'n Notice (July 17, 2018) (aff'g Order No. 43); Comm'n Notice (May
23, 2018) (aff'g Order No. 37); Comm'n Notice (May 9, 2018) (amending
notice of investigation); Comm'n Notice (Apr. 6, 2018) (aff'g Order No.
34); Comm'n Notice (Mar. 22, 2018) (aff'g Order No. 24); Comm'n Notice
(Sept. 20, 2017) (aff'g Order No. 6). The only claims that remain at
issue in this investigation are claim 31 of the '490 patent, claim 7 of
the '558 patent, and claims 19, 25, and 27 of the '936 patent.
The ALJ held an evidentiary hearing from June 19-27, 2018. On
September 28, 2018, the ALJ issued a combined initial determination
(``ID'') on violation
[[Page 12293]]
issues and recommended determination (``RD'') on remedy, the public
interest, and bonding in this investigation. The ID found a violation
of Section 337 due to infringement of the '490 patent. ID at 197. The
ID found no infringement and hence no violation of Section 337 with
respect to the '558 patent or the '936 patent. Id. The ID found that
Qualcomm satisfied the technical and economic prongs of the domestic
industry requirement with respect to the '490 patent, but did not
satisfy the technical prong with respect to the '558 patent or the '936
patent. Id. The ID also found that it was not shown by clear and
convincing evidence that any asserted claim was invalid. Id. The ALJ
further recommended that no limited exclusion order or cease-and-desist
order be issued in this investigation due to their prospective effects
on competitive conditions in the United States, national security, and
other public interest concerns. RD at 199-200. The ALJ recommended that
bond be set at zero-percent of entered value during the Presidential
review period, if any. Id. at 201.
Apple and Qualcomm filed their respective petitions for review on
October 15, 2018. The parties, including OUII, filed their respective
responses to the petitions on October 23, 2018. The parties also filed
their submissions on the public interest on October 31, 2018. Intel
Corporation, an interested third party, submitted its comments on the
public interest on November 8, 2018.
On December 18, 2018, the Commission determined to review the final
ID in part with respect to certain findings regarding the '490 patent.
83 FR 64875 (Dec. 18, 2018). The Commission determined to review the
ID's construction of the term ``hold'' and its findings on infringement
and the technical prong of domestic industry to the extent they may be
affected by that claim construction. Id. at 64876. The Commission
further determined to review the ID's findings as to whether claim 31
of the '490 patent is invalid as obvious. Id. at 64876-77. The
Commission determined not to review any of the ID's findings with
respect to the '558 patent, the '936 patent, or the economic prong of
the domestic industry requirement. Id. at 64876.
In the same notice, the Commission asked the parties to brief
issues of remedy, the public interest, and bonding. Id. at 64877. The
Commission also invited members of the public and interested government
agencies to comment on the RD's findings on the public interest,
remedy, and bonding. Id. The Commission received a number of public
interest statements from third parties, including but not limited to
Intel Corporation; ACT/The App Association; the American Antitrust
Institute; the American Conservative Union; Americans for Limited
Government; the Club for Growth; the Computer and Communications
Industry Association; Conservatives for Property Rights; Frances
Brevets; Frontiers of Freedom; Innovation Alliance; Inventors Digest;
IP Europe; Public Knowledge and Open Markets (a joint submission); R
Street Institute, the Electronic Frontier Foundation, Engine Advocacy,
and Lincoln Network (a joint submission), et al.; RED Technologies;
TiVo; certain members of the U.S. Senate and the U.S. House of
Representatives; Hon. Paul Michel, former Chief Judge, U.S. Court of
Appeals for the Federal Circuit; and various professors of law or
economics.
On March 19, 2019, while Commission review was ongoing, the parties
informed the Commission of a jury verdict in a parallel lawsuit in the
U.S. District Court for the Southern District of California, Qualcomm
Inc. v. Apple Inc., Case No. 3:17-cv-01375 (S.D. Cal.). See Letter of
D. Okun to D. Johanson, Chairman, U.S. International Trade Commission
of March 19, 2019 (``Qualcomm Letter''); Respondent Apple Inc.'s
Request for Leave to Submit a Supplemental Response to Question D of
the Commission's Questions on the Public Interest (``Apple Request'').
The jury found that the accused Apple iPhones infringe three Qualcomm
patents. Qualcomm Letter at 1-2. Two of those three patents, the '490
and '936 patents, are also part of this investigation. Id. The jury was
not asked to determine, nor did it determine, whether any claim of the
'490, '936, or '949 patents is invalid as obvious. Id.
In view of the jury's verdict and damages award, Apple requested
leave to supplement its response to the Commission's Question D on
public interest, as set forth in the Commission's notice of partial
review. See 83 FR at 64877. Qualcomm filed an opposition to Apple's
request. The Commission has determined to grant Apple's request for the
limited purpose of supplementing the record with respect to the jury's
verdict. Neither Apple's nor Qualcomm's submissions affect the outcome
of this investigation or any issue decided by the Commission.
On review of the submissions from the parties and the public, the
prior art, the ID, and the evidence of record, the Commission has
determined: (1) The term ``hold'' in claim 31 of the '490 patent means
``to prevent data from traveling across the bus, or to store, buffer,
or accumulate data''; and (2) Apple has shown by clear and convincing
evidence that claim 31 of the '490 patent is invalid as obvious over
U.S. Patent No. 9,329,671 (Heinrich) in combination with U.S. Patent
No. 8,160,000 (Balasubramanian), which reflects knowledge in the art.
The Commission previously declined to review, and therefore
adopted, the ID's finding that there is no infringement of either of
the other two patents asserted in this investigation, the '558 patent
or the '936 patent. 83 FR at 64876. Accordingly, the Commission has
concluded that Complainant has not shown a violation of Section 337 and
no remedial orders shall be issued, which renders moot any issues of
remedy, the public interest, or bonding.
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: March 26, 2019.
Katherine Hiner,
Acting Secretary to the Commission.
[FR Doc. 2019-06209 Filed 3-29-19; 8:45 am]
BILLING CODE 7020-02-P