[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