[Federal Register Volume 86, Number 176 (Wednesday, September 15, 2021)]
[Notices]
[Pages 51381-51384]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2021-19849]


-----------------------------------------------------------------------

INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-1200]


Certain Electronic Devices, Including Streaming Players, 
Televisions, Set Top Boxes, Remote Controllers, and Components Thereof; 
Commission Determination To Review the Final Initial Determination in 
Part and To Request Written Submissions on the Issues Under Review, 
Remedy, Bonding, and the Public Interest

AGENCY: U.S. International Trade Commission.

ACTION: Notice.

-----------------------------------------------------------------------

SUMMARY: Notice is hereby given that the U.S. International Trade 
Commission (``Commission'') has determined to review in part certain 
findings in a final initial determination (``ID'') issued by the 
presiding administrative law judge (``ALJ'') and to solicit briefing on 
the issues under review, as well as remedy, bonding, and the public 
interest.

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 (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 
on (202) 205-1810.

[[Page 51382]]


SUPPLEMENTARY INFORMATION: The Commission instituted this investigation 
on May 22, 2020, based on a complaint filed by Universal Electronics, 
Inc. (``UEI'') of Scottsdale, Arizona. 85 FR 31211-212 (May 22, 2020). 
The complaint, as supplemented, 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, sale for importation, or 
sale in the United States after importation of certain electronic 
devices, including streaming players, televisions, set top boxes, 
remote controllers, and components thereof, by reason of infringement 
of one or more of the asserted claims of U.S. Patent Nos. 7,696,514 
(``the '514 patent''); 9,911,325 (``the '325 patent''); 9,716,853 
(``the '853 patent''); 7,589,642 (``the '642 patent''); 10,593,196 
(``the '196 patent''); and 10,600,317 (``the '317 patent''). Id. The 
complaint alleges that a domestic industry exists. Id.
    The Commission's notice of investigation names the following 
respondents: Roku Inc. of Los Gatos, California (``Roku''); TCL 
Electronics Holdings Ltd. of New Territories, Hong Kong; Shenzhen TCL 
New Technology Co. Ltd. of Shenzhen, China; TCL King Electrical 
Appliances Co. Ltd. of Huizhou, China; TTE Technology Inc. of Corona, 
California; TCL Corp. of Huizhou City, China; TCL Moka Int'l Ltd. of 
New Territories, Hong Kong; TCL Overseas Marketing Ltd. of New 
Territories, Hong Kong; TCL Industries Holdings Co., Ltd. of New 
Territories, Hong Kong; and TCL Smart Device Co. of Bac Tan Uyen 
District, Vietnam (collectively, ``the TCL Respondents''); Hisense Co. 
Ltd. of Qingdao, China; Hisense Electronics Manufacturing Co. of 
America Corp. of Suwanee, Georgia; Hisense Import & Export Co. Ltd. of 
Qingdao, China; Qingdao Hisense Electric Co., Ltd. of Qingdao, China; 
and Hisense International Co., Ltd. of Shen Wang, Hong Kong 
(collectively, ``the Hisense Respondents''); Funai Electric Co., Ltd. 
of Osaka, Japan; Funai Corp. Inc. of Rutherford, New Jersey; and Funai 
Co., Ltd. of Nakhon Ratchasima, Thailand (collectively, ``the Funai 
Respondents''). Id. The Office of Unfair Import Investigations is not 
participating in this investigation. Id.
    The Commission partially terminated the investigation with respect 
to certain patents and patent claims that were withdrawn by UEI, 
including all of the asserted claims of the '514 patent, '325 patent, 
and '853 patent. See Order No. 27 (Dec. 2, 2020), unreviewed by Comm'n 
Notice (Dec. 23, 2020); Order No. 32 (Dec. 21, 2020), unreviewed by 
Comm'n Notice (Jan. 5, 2021); Order No. 33 (Dec. 29, 2020), unreviewed 
by Comm'n Notice (Jan. 13, 2021); Order No. 34 (Jan. 4, 2021), 
unreviewed by Comm'n Notice (Jan. 21, 2021); Order No. 44 (Feb. 2, 
2021), unreviewed by Comm'n Notice (Feb. 19, 2021); Order No. 49 (Feb. 
9, 2021), unreviewed by Comm'n Notice (Feb. 24, 2021); Order No. 66 
(March 23, 2021), unreviewed by Comm'n Notice (April 8, 2021); Order 
No. 67 (Apr. 6, 2021), unreviewed by Comm'n Notice (Apr. 22, 2021).
    The Commission also terminated the investigation with respect to 
the Hisense Respondents, the TCL Respondents, and the Funai 
Respondents. Order No. 67 (Apr. 6, 2021), unreviewed by Comm'n Notice 
(Apr. 22, 2021).
    On February 18, 2021, the Commission determined not to review an ID 
entering summary determination that claim 19 of the '642 patent is 
practiced by the domestic industry products and infringed by the 
accused ``Elk'' series of products. Order No. 38 (Jan. 19, 2021), 
unreviewed by Comm'n Notice (Feb. 18, 2021). On February 24, 2021, the 
Commission determined not to review an ID entering summary 
determination that the technical prong of the domestic industry 
requirement is satisfied for claims 1-3, 5-8, and 16 of the '325 
patent. Order No. 41 (Jan. 25, 2021), unreviewed by Comm'n Notice (Feb. 
24, 2021).
    On February 24, 2021, the Commission determined to review and 
reverse an ID granting Roku's motion for summary determination that UEI 
lacks standing to assert the '196 patent and to remand the standing 
question to the ALJ for further consideration. Order No. 40 (Jan. 25, 
2021), reviewed by Comm'n Notice (Feb. 24, 2021); see also Comm'n Op. 
(Mar. 3, 2021).
    The ALJ held on evidentiary hearing from April 19-23, 2021. By the 
time of the hearing, the only remaining respondent was Roku and the 
only remaining claims at issue for infringement or domestic industry 
purposes were claim 19 of the '642 patent; claims 3, 6, 9, and 11 of 
the '347 patent; and claims 1-3, 11, and 13-15 of the '196 patent.
    On July 9, 2021, the ALJ issued the subject final ID, finding a 
violation of Section 337 as to the '196 patent but no violation with 
respect to either the '642 patent or '317 patent.
    On July 23, 2021, both UEI and Roku filed petitions for review of 
certain findings in the final ID, pursuant to Commission Rule 210.43(a) 
(19 CFR 210.43(a)). On August 2, 2021, the parties filed their 
respective replies, pursuant to Commission Rule 210.43(c) (19 CFR 
210.43(c)).
    Having reviewed the record in this investigation, including the 
final ID, the parties' petitions, and responses thereto, the Commission 
has determined to review all issues relating to the '196 patent, 
whether UEI satisfied the technical prong for the '317 patent, and the 
ID's conclusion that UEI satisfied the economic prong of the domestic 
industry requirement under Section 337(a)(3)(B) with respect to the 
'196 patent, the '317 patent, and the '642 patent. The Commission 
further notes that the parties have agreed that Roku's Alice-5 remote 
control is not among the accused products. See ID at 23. The Commission 
has determined not to review any of the ID's other findings.
    The parties are asked to provide additional briefing on the 
following issues under review:
    (A) Does the limitation ``for use in configuring the remote control 
device to transmit'' in the final clause of claim 1 of the '196 patent 
require construction? See '196 patent at 17:23-25 (emphasis added). If 
so, how should it be construed?
    (B) In view of the response to Question (A), supra, do the accused 
Roku products infringe claim 1 of the '196 patent, with particular 
attention to: (i) Whether converting a radiofrequency (``RF'') signal 
to an infrared (``IR'') signal in the accused remote control devices 
satisfies the limitation ``for use in configuring the remote control 
device to transmit a second command''; and (ii) whether the accused 
products use the same ``first data'' to indicate whether the ``second 
media device'' will be ``responsive'' or ``unresponsive'' to the 
``first command,'' as set forth in the final clause of claim 1. See 
'196 patent at 17:13-32.
    (C) Does your response to Question (A), supra, affect the ID's 
invalidity analysis? Would the ID's invalidity analysis with respect to 
the '196 patent be affected if the term ``for use in configuring the 
remote control device to transmit'' in the final clause of claim 1 was 
found not to cover converting an RF signal to an IR signal?
    (D) With respect to the ID's invalidity analysis for the '196 
patent, explain whether or how Chardon (U.S. Patent Application Pub. 
No. 2012/0249890) or Mishra (U.S. Patent Application No. 2001/0005197), 
singly or in combination, discloses to a person of ordinary skill in 
the art a ``first media device'' that either ``cause[s] the first media 
device to be configured to transmit a first command directly to the 
second media device [via HDMI]'' or ``transmit[s] a second data to a 
remote control device . . . for use in configuring the remote control 
device to

[[Page 51383]]

transmit a second command directly to the second media device,'' 
depending on whether the ``second media device'' is ``responsive'' or 
``unresponsive'' to a ``first command,'' respectively, as set forth in 
the final clause of claim 1. See '196 patent at 17:13-32. Explain 
whether there is a motivation to combine the references and clear and 
convincing evidence of obviousness.
    (E) Do the Samsung televisions that UEI identified as satisfying 
the technical prong of the domestic industry requirement practice the 
asserted claims of the '317 patent, with particular attention to: (i) 
Whether the term ``a display device coupled to the controlled device'' 
in claim 1 can cover an electronic component (e.g., LCD display screen) 
contained within an electronic device (e.g., an LCD television) (see 
'317 patent at 8:55-56 (emphasis added)); and (ii) identify the 
``controlled device,'' ``receiver,'' ``transmitter,'' ``display 
device,'' ``processing device,'' and other components recited in the 
asserted claims of the '317 patent to the extent the asserted claims 
read on UEI's domestic industry products.
    (F) Given that the domestic industry products for the '196 and '317 
patents include downstream products, such as televisions (ID at 6, 51, 
102), to what extent should an evaluation of the significance of 
investments in labor and capital under Section 337(a)(3)(B) take into 
account labor and capital associated with the downstream products?
    The parties are requested to brief only the discrete issues 
identified above, with reference to the applicable law and evidentiary 
record. The parties are not to brief any other issues on review, which 
have already been adequately presented in the parties' previous 
filings.
    In connection with the final disposition of this investigation, the 
statute authorizes issuance of: (1) An order that could result in the 
exclusion of the subject articles from entry into the United States, 
and/or (2) cease-and-desist orders that could result in the respondents 
being required to cease and desist from engaging in unfair acts in the 
importation and sale of such articles. Accordingly, the Commission is 
interested in receiving written submissions that address the form of 
remedy, if any, that should be ordered. If a party seeks exclusion of 
an article from entry into the United States for purposes other than 
entry for consumption, the party should so indicate and provide 
information establishing that activities involving other types of entry 
either are adversely affecting it or likely to do so. For background, 
see Certain Devices for Connecting Computers via Telephone Lines, Inv. 
No. 337-TA-360, USITC Pub. No. 2843, Comm'n Op. at 7-10 (December 
1994).
    The statute requires the Commission to consider the effects of any 
remedy upon the public interest. The public interest factors the 
Commission will consider include the effect that an exclusion order 
and/or cease-and-desist order would have on: (1) The public health and 
welfare; (2) competitive conditions in the U.S. economy; (3) U.S. 
production of articles that are like or directly competitive with those 
that are subject to investigation; and (4) U.S. consumers. The 
Commission is therefore interested in receiving written submissions 
that address the aforementioned public interest factors in the context 
of this investigation.
    If the Commission orders some form of remedy, the U.S. Trade 
Representative, as delegated by the President, has 60 days to approve, 
disapprove, or take no action on the Commission's action. See 
Presidential Memorandum of July 21, 2005. 70 FR 43251 (July 26, 2005). 
During this period, the subject articles would be entitled to enter the 
United States under bond, in an amount determined by the Commission and 
prescribed by the Secretary of the Treasury. The Commission is 
therefore interested in receiving submissions concerning the amount of 
the bond that should be imposed if a remedy is ordered.
    Written Submissions: Parties to this investigation are requested to 
file written submissions on the issues identified above in this notice. 
In addition, the parties, interested government agencies, and any other 
interested parties are requested to file written submissions on the 
issues of remedy, the public interest, and bonding. Such initial 
submissions should include views on the recommended determination by 
the ALJ on remedy and bonding. Explain whether your views on public 
interest or bonding would differ if the redesigned products (or 
redesigned components of a product) put forward by Respondents were 
excluded from any remedy.
    In its initial submission, Complainant is requested to identify the 
remedy sought and to submit proposed remedial orders for the 
Commission's consideration. Complainant is also requested to provide 
the HTSUS subheadings under which the accused products are imported. 
Complainant is further requested to supply the names of known importers 
of the Respondents' products at issue in this investigation. 
Complainant is also requested to identify and explain, from the record, 
articles that it contends are ``components of'' the subject products, 
and thus potentially covered by the proposed remedial orders, if 
imported separately from the subject products. See 85 FR at 31211. 
Failure to provide this information may result in waiver of any remedy 
directed to ``components of'' the subject products, in the event any 
violation may be found.
    The parties' written submissions and proposed remedial orders must 
be filed no later than the close of business on September 24, 2021. 
Reply submissions must be filed no later than the close of business on 
October 1, 2021. Opening submissions are limited to 40 pages. Reply 
submissions are limited to 35 pages. No further submissions on any of 
these issues will be permitted unless otherwise ordered by the 
Commission.
    Persons filing written submissions must file the original document 
electronically on or before the deadlines stated above. The 
Commission's paper filing requirements in 19 CFR 210.4(f) are currently 
waived. 85 FR 15798 (Mar. 19, 2020). Submissions should refer to the 
investigation number (``Inv. No. 337-TA-1200'') in a prominent place on 
the cover page and/or first page. (See Handbook for Electronic Filing 
Procedures, https://www.usitc.gov/documents/handbook_on_filing_procedures.pdf). Persons with questions regarding 
filing should contact the Secretary (202-205-2000).
    Any person desiring to submit a document to the Commission in 
confidence must request confidential treatment by marking each document 
with a header indicating that the document contains confidential 
information. This marking will be deemed to satisfy the request 
procedure set forth in Rules 201.6(b) and 210.5(e)(2) (19 CFR 201.6(b) 
& 210.5(e)(2)). Documents for which confidential treatment by the 
Commission is properly sought will be treated accordingly. All 
information, including confidential business information and documents 
for which confidential treatment is properly sought, submitted to the 
Commission for purposes of this Investigation may be disclosed to and 
used: (i) By the Commission, its employees and Offices, and contract 
personnel (a) for developing or maintaining the records of this or a 
related proceeding, or (b) in internal investigations, audits, reviews, 
and evaluations relating to the programs, personnel, and operations of 
the Commission including under 5 U.S.C. Appendix 3; or (ii) by U.S. 
government employees and contract

[[Page 51384]]

personnel, solely for cybersecurity purposes. All contract personnel 
will sign appropriate nondisclosure agreements. All non-confidential 
written submissions will be available for public inspection at the 
Office of the Secretary and on EDIS.
    The Commission vote for this determination took place on September 
9, 2021.
    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: September 9, 2021.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2021-19849 Filed 9-14-21; 8:45 am]
BILLING CODE 7020-02-P