[Federal Register Volume 84, Number 164 (Friday, August 23, 2019)]
[Notices]
[Pages 44333-44334]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2019-18183]
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INTERNATIONAL TRADE COMMISSION
[Investigation No. 337-TA-1090]
Certain Intraoral Scanners and Related Hardware and Software;
Commission Determination To Vacate the Final Initial Determination
Finding No Violation of Section 337 and To Terminate the Investigation
in Its Entirety
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 vacate the presiding administrative law
judge's (``ALJ'') final initial determination (``ID'') issued on April
26, 2019, finding
[[Page 44334]]
no violation of section 337 in the above-referenced investigation, and
to terminate the investigation in its entirety.
FOR FURTHER INFORMATION CONTACT: Cathy Chen, Esq., Office of the
General Counsel, U.S. International Trade Commission, 500 E Street SW,
Washington, DC 20436, telephone (202) 205-2392. 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 at https://www.usitc.gov. The public record for this investigation may be viewed
on the Commission's electronic docket (EDIS) at https://edis.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: The Commission instituted this investigation
on December 19, 2017, based on a complaint filed on behalf of Align
Technology, Inc. (``Align'') of San Jose, California. 82 FR 60215 (Dec.
19, 2017). The complaint alleges violations of section 337 of the
Tariff Act of 1930, as amended, 19 U.S.C. 1337 (``section 337''), in
the importation into the United States, the sale for importation, or
the sale within the United States after importation of certain
intraoral scanners and related hardware and software by reason of
infringement of one or more claims of U.S. Patent Nos.: 9,615,901
(``the '901 patent''); 8,638,448 (``the '448 patent''); 8,638,447
(``the '447 patent''); 6,845,175 (``the '175 patent''); and 6,334,853
(``the '853 patent''). Id. The complaint further alleges that a
domestic industry exists. The Commission's notice of investigation
named as respondents 3Shape A/S of Copenhagen K, Denmark and 3Shape,
Inc., of Warren, New Jersey. The notice of investigation was amended to
add 3Shape Trios A/S of Copenhagen K, Denmark as a respondent. 83 FR
13782 (Mar. 30, 2018). The Office of Unfair Import Investigations is
not participating in the investigation. The investigation was
terminated as to the '853 and '175 patents and certain claims of the
'447, '448, and '901 patents based on the withdrawal of Align's
allegations. See ID at 1-2.
On April 26, 2019, the ALJ issued the final ID, finding no
violation of section 337 with respect to the '901, '448, and '447
patents. That same day, the ALJ issued her Recommended Determination on
Remedy and Bonding. On May 13, 2019, Align filed a petition for review
of the final ID, and Respondents filed a joint contingent petition for
review of the final ID. The parties filed responses to the petitions on
May 21, 2019.
On July 19, 2019, the Commission determined to review the final ID
in its entirety.
Having considered the record of the investigation, including the
parties' submissions to the Commission, the Commission decides as
follows. The Commission ``can issue only an exclusion order barring
future importation or a cease and desist order barring future
conduct,'' neither of which can issue as to an expired patent. Texas
Instruments Inc. v. U.S. Int'l Trade Comm'n, 851 F.2d 342, 344 (Fed.
Cir. 1988).
The '448 and '447 patents expired on August 5, 2019, which
terminated the Commission's jurisdiction as to these patents and
rendered the Commission's investigation with respect to these patents
moot. See id.; 19 U.S.C. 1337(a)(1)(B)(i).
The '901 patent will expire on August 30, 2019, four days after the
target date for completion of the investigation. Given the imminent
expiration of the '901 patent, the ID's finding of no violation with
respect to the '901 patent based on multiple grounds, and the schedule
for Commission review established by the Commission's Rules of Practice
and Procedure, the Commission finds that Align cannot obtain effective
relief as to the '901 patent prior to its expiration. Even if the
Commission were to reverse the ID in this investigation and find a
violation with respect to the '901 patent, the Commission finds that it
cannot grant relief as to the '901 patent before the patent expires
given its long-standing procedures for determining the appropriate
remedy and bonding, and for considering the public interest. Moreover,
any exclusion order with respect to the '901 patent would likely not
protect complainant from any injury until after the patent expires
given that the ALJ recommended that no bond be imposed during the 60-
day Presidential review period.
The Commission has therefore determined on review to vacate the
final ID as moot, including the ID's finding of no violation of section
337 with respect to the asserted patents. The investigation is
terminated in its entirety.
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
210).
By order of the Commission.
Issued: August 20, 2019.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2019-18183 Filed 8-22-19; 8:45 am]
BILLING CODE 7020-02-P