[Federal Register Volume 85, Number 166 (Wednesday, August 26, 2020)]
[Notices]
[Pages 52640-52641]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2020-18695]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-1133]


Certain Unmanned Aerial Vehicles and Components Thereof; Final 
Determination Finding a Violation of Section 337 and Issuance of 
Remedial Orders; Suspension of Enforcement of the Remedial Orders 
Pending Final Resolution of a Final Written Decision by the Patent 
Trial and Appeal Board; and Termination of the Investigation

AGENCY: 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: (i) The 
respondents have violated Section 337 of the Tariff Act of 1930, as 
amended, by importing, selling for importation, or selling in the 
United States after importation certain unmanned aerial vehicles 
(``UAVs'') that infringe complainant's U.S. Patent No. 9,260,184 (``the 
'184 patent''); (2) the respondents' redesigned rotor locking 
assemblies were not ripe for adjudication in this investigation; (3) 
the appropriate remedies are a limited exclusion order and cease and 
desist orders; and (4) enforcement of said remedial orders will be 
suspended pending final resolution of a Final Written Decision by the 
Patent and Trademark Office (``PTAB'') that the asserted claims of the 
'184 patent are unpatentable. This investigation is terminated.

FOR FURTHER INFORMATION CONTACT: Carl P. Bretscher, Esq., 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 
[email protected]. 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 this investigation 
on October 2, 2018, based on a complaint filed by Autel Robotics USA, 
Inc. (``Autel'') of Bothell, Washington. 83 FR 49575-76 (Oct. 2, 2018). 
The complaint accuses respondents of violating 19 U.S.C. 1337 of the 
Tariff Act of 1930, as amended (``Section 337'') by importing into the 
United States, selling for importation, or selling in the United States 
after importation certain unmanned aerial vehicles and components 
thereof that infringe the asserted claims of the '184 patent as well as 
of U.S. Patent Nos. 7,979,174 (``the '174 patent'') and 10,044,013 
(``the '013 patent''). Id. The complaint also alleges the existence of 
a domestic industry. Id.
    The notice of investigation named the following respondents: SZ DJI 
Technology Co. Ltd. of Shenzhen, China; DJI Europe B.V. of Barendrecht, 
Netherlands; DJI Technology Inc. of Burbank, California; iFlight 
Technology Co., Ltd. (``iFlight'') of Hong Kong; DJI Baiwang Technology 
Co. Ltd. of Shenzhen, China; DJI Research LLC of Palo Alto, California; 
DJI Service LLC (``DJI Service'') of Cerritos, California; and DJI 
Creative Studio LLC of Burbank, California (collectively, ``DJI''). Id. 
The Office of Unfair Import Investigations is not a party to this 
investigation. Id.
    On September 13, 2019, the presiding Administrative Law Judge 
(``ALJ'') issued Order No. 21, granting in part Autel's motion to 
strike evidence and expert opinions relating to DJI's ``new designs'' 
for rotor and battery locking mechanisms that DJI allegedly disclosed 
after the close of discovery. Order No. 21 at 2-4 (Sept. 13, 2019).
    On October 17, 2019, the Commission determined not to review Order 
No. 22, which partially terminated the investigation with respect to 
certain patent claims withdrawn by Autel. Order No. 22 (Sept. 30, 
2019), unreviewed by Comm'n Notice (Oct. 17, 2019). The claims that 
remained at issue are claims 1, 2, and 5 of the '184 patent; claims 1, 
7, 8, 14, and 17 of the '174 patent; and claims 1, 3-5, 8, 10, 13-16, 
18, 22, or 23 of the '013 patent.
    The ALJ held an evidentiary hearing on October 21-23, 2019. At the 
start of that hearing, the ALJ announced that DJI's new designs are not 
part of this investigation.
    On March 2, 2020, the ALJ issued a combined Initial Determination 
on Violation of Section 337 (``ID'') and Recommended Determination 
(``RD'') on Remedy and Bonding, finding a violation of Section 337 by 
way of infringement of the '184 patent but no violation with respect to 
the '174 or '013 patents. On March 9, 2020, the ALJ issued an errata, 
which corrects a misstatement in the original ID regarding the '174 
patent but does not change the ID's findings on infringement or 
violation. See Notice of Errata to Final Initial Determination (Mar. 9, 
2020).
    On March 16, 2020, the parties filed petitions for review of 
certain findings in the final ID, pursuant to Commission Rule 210.43(a) 
(19 CFR 210.43(a)). The parties filed their respective responses on 
March 24, 2020, pursuant to Commission Rule 210.43(c) (19 CFR 
210.43(c)).
    On May 15, 2020, the Commission issued a notice soliciting public 
comments on the public interest factors, if any, that may be implicated 
if a remedy were to be issued in this investigation. 85 FR 30735 (May 
20, 2020). The Commission did not receive any comments in response to 
its notice.
    On May 29, 2020, while the petitions for review were still pending 
before the Commission, respondents' counsel filed a letter with the 
Commission attaching four recent Final Written Decisions by the Patent 
Trial and Appeal Board (``PTAB'') of the U.S. Patent and Trademark 
Office, in which the PTAB found the challenged claims of the '184, 
'174, and '013 patents, including the claims asserted in this 
investigation, to be unpatentable. See SZ DJI Technology Co. v. Autel 
Robotics USA LLC, Case IPR2019-00343, Final Written Decision Finding 
All Challenged Claims Unpatentable (PTAB May 21, 2020) (regarding '184 
patent); SZ DJI Technology Co. v. Autel Robotics USA LLC, Case IPR2019-
00250, Final Written Decision Finding All Challenged Claims 
Unpatentable (PTAB May 13, 2020) (regarding '174 patent); SZ DJI 
Technology Co. v. Autel Robotics USA LLC, Case IPR2019-00249, Final 
Written Decision Finding All Challenged Claims Unpatentable (PTAB May 
13, 2020) (regarding '174 patent); SZ DJI Technology Co. v. Autel 
Robotics USA LLC, Case IPR2019-00016, Final Written Decision Finding 
All Challenged Claims Unpatentable (PTAB May 14, 2020) (regarding '013 
patent).
    On June 8, 2020, the Commission issued a notice stating that it 
determined to partially review the ID with respect to infringement of 
the '184 patent, whether DJI's new rotor locking assemblies should be 
adjudicated as part of this investigation, and the impact on this 
investigation, if any, of the PTAB's Final Written Decision finding the 
challenged claims of the '184 patent

[[Page 52641]]

unpatentable. Comm'n Notice at 2-3 (June 9, 2020). The Commission 
determined not to review the ID's findings that the asserted claims of 
the '184 patent are not invalid, the domestic industry requirement is 
satisfied, and there is no violation of Section 337 with respect to 
either the '174 or '013 patents. Id. The Commission asked the parties 
to brief several questions regarding: (i) The impact, if any, of the 
PTAB's Final Written Decision finding that asserted claims of the '184 
patent, among others, are unpatentable; (ii) whether DJI's new rotor 
locking designs should be adjudicated as part of this investigation; 
and (iii) whether DJI's Phantom 4 Pro and Inspire UAVs infringe the 
asserted claims of the '184 patent. Id. at 3-4. The Commission also 
asked the parties for briefing on remedy, bonding, and the public 
interest and extended the target date for completion of this 
investigation to August 10, 2020. Id. at 4-5. The target date was 
further extended to August 20, 2020. Comm'n Notice (August 10, 2020).
    The parties filed their initial responses to the Commission's 
review questions on June 24, 2020, and their respective reply briefs on 
July 1, 2020.
    Having considered the parties' submissions, the ID, and the record 
in this investigation, the Commission has determined that DJI has 
violated Section 337 by importing into the United States, selling for 
importation, or selling in the United States after importation certain 
unmanned aerial vehicles and components thereof that infringe claims 1 
and 2 of the '184 patent. In particular, the parties did not petition 
for review of the ID's findings that DJI's Mavic Pro, Mavic Air, and 
Spark UAVs infringe claim 1 of the '184 patent. The Commission has 
determined that those UAVs also infringe claim 2 and that DJI's Phantom 
4 Pro UAV infringes both claims 1 and 2. The Commission further 
determines that DJI's Inspire UAV does not infringe either claim 1 or 2 
of the '184 patent. The Commission also affirms the ALJ's decision not 
to adjudicate DJI's new rotor locking designs in the present 
investigation.
    The Commission has determined that the appropriate remedy is: (a) A 
limited exclusion order prohibiting the importation of certain unmanned 
aerial vehicles and components thereof that are covered by claims 1 or 
2 of the '184 patent; and (b) cease and desist orders against 
respondents iFlight and DJI Service. The Commission has determined that 
the public interest factors enumerated in Section 337(d)(1) and (f)(1) 
do not preclude issuance of the limited exclusion order or cease and 
desist orders. The Commission has also determined to set a bond in the 
amount of 11.5 percent of the entered value of the excluded products 
imported during the period of Presidential review (19 U.S.C. 1337(j)).
    The Commission has also determined to suspend enforcement of the 
limited exclusion order, cease and desist orders, and bond provision 
pending final resolution of the PTAB's Final Written Decision regarding 
the '184 patent. See 35 U.S.C. 318(b); SZ DJI Technology Co. v. Autel 
Robotics USA, LLC, IPR2019-00343, Patent 9,260,184, Final Written 
Decision Determining All Challenged Claims Unpatentable (May 21, 2020).
    The Commission's orders and opinion were delivered to the President 
and United States Trade Representative on the day of their issuance.
    The Commission voted to approve these determinations on August 20, 
2020. This investigation is hereby terminated.
    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: August 20, 2020.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2020-18695 Filed 8-25-20; 8:45 am]
BILLING CODE 7020-02-P