[Federal Register Volume 87, Number 250 (Friday, December 30, 2022)]
[Notices]
[Pages 80569-80571]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2022-28409]


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

INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-1266]


Certain Wearable Electronic Devices With ECG Functionality and 
Components Thereof; Notice of the Commission's Final Determination 
Finding a Violation of Section 337; Issuance and Suspension of a 
Limited Exclusion Order and a Cease and Desist Order; Termination of 
the Investigation

AGENCY: U.S. International Trade Commission.

ACTION: Notice.

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

SUMMARY: Notice is hereby given that the U.S. International Trade 
Commission (``Commission'') has determined that there is a violation of 
section 337 in the above-captioned investigation. The Commission has 
further determined to issue a limited exclusion order and a cease and 
desist order and to set a bond in the amount of $2 per unit of covered 
articles imported or sold during the period of Presidential review. The 
enforcement of these orders, including the bond provision, is suspended 
pending final resolution of the U.S. Patent and Trademark Office, 
Patent Trial and Appeal Board's (``PTAB'') Final Written Decisions 
finding the asserted patent claims unpatentable.

FOR FURTHER INFORMATION CONTACT: Panyin A. Hughes, Office of the 
General

[[Page 80570]]

Counsel, U.S. International Trade Commission, 500 E Street SW, 
Washington, DC 20436, telephone (202) 205-3042. 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, telephone (202) 205-1810.

SUPPLEMENTARY INFORMATION: On May 26, 2021, the Commission instituted 
this investigation based on a complaint filed by AliveCor, Inc. of 
Mountain View, California (``AliveCor''). 86 FR 28382 (May 26, 2021). 
The complaint alleged violations of section 337 based on the 
importation into the United States, the sale for importation, or the 
sale within the United States after importation of certain wearable 
electronic devices with ECG functionality and components thereof by 
reason of infringement of one or more of claims 1-30 of U.S. Patent No. 
10,595,731 (``the '731 patent''); claims 1-23 of U.S. Patent No. 
10,638,941 (``the '941 patent''); and claims 1-4, 6-14, 16-20 of U.S. 
Patent No. 9,572,499 (``the '499 patent''). Id. The Commission's notice 
of investigation named Apple Inc. of Cupertino, California (``Apple'') 
as the sole respondent. The Office of Unfair Import Investigations 
(``OUII'') is named as a party in this investigation. Id.
    On February 23, 2022, the ALJ issued an initial determination 
granting AliveCor's motion to terminate the investigation as to (1) 
claims 1-4, 6-14, and 18-20 of the '499 patent; (2) claims 2, 4, 6, 7, 
11, 13, 14, and 17-30 of the '731 patent; and (3) claims 1-11, 14, 15, 
17, and 18 of the '941 patent based upon withdrawal of allegations from 
the complaint as to those claims. Order No. 16 (Feb. 23, 2022), 
unreviewed by Notice (Mar. 18, 2022).
    On June 27, 2022, the ALJ issued the final initial determination 
(``ID'') finding a violation of section 337 as to the '941 and '731 
patents, and no violation of section 337 as to the '499 patent. The ID 
found that the parties do not contest personal jurisdiction and that 
the Commission has in rem jurisdiction over the accused products. ID at 
18. The ID further found that the importation requirement under 19 
U.S.C. 1337(a)(1)(B) is satisfied. Id. (citing CX-0904C (Apple 
stipulating that it imports the accused products into the United 
States)). Regarding the '941 patent, the ID found that AliveCor has 
proven infringement of the asserted claims, claims 12, 13, 19, and 20-
23, and that Apple failed to show that any of the asserted claims are 
invalid. Id. at 30-45, 60-98. For the '731 patent, the ID found that 
AliveCor has proven infringement of the asserted claims, claims 1, 3, 
5, 8-10, 12, 15, and 16, but that Apple has proven that claims 1, 8, 
12, and 16 are invalid for obviousness. Id. at 105-108, 113-127. For 
the '499 patent, the ID found that AliveCor failed to prove 
infringement of the asserted claims, claims 16 and 17, and that claim 
17 is invalid for lack of patentable subject matter under 35 U.S.C. 
101. Id. at 129-138, 140-152. Finally, the ID found that AliveCor has 
proven the existence of a domestic industry that practices the asserted 
patents as required by 19 U.S.C. 1337(a)(2). Id. at 152-183. The ID 
included the ALJ's recommended determination on remedy and bonding 
(``RD''). The RD recommended that, should the Commission find a 
violation, issuance of a limited exclusion order and a cease and desist 
order would be appropriate. ID/RD at 190-193. The RD also recommended 
imposing no bond for covered products imported during the period of 
Presidential review. ID at 193-95.
    On July 11, 2022, Apple filed a petition for review of the ID, and 
AliveCor filed a combined petition and contingent petition for review 
of the ID. On July 19, 2022, the private parties and OUII's 
investigative attorney filed responses to the petitions.
    On September 22, 2022, the Commission determined to review the 
final ID in part. 87 FR 58819-21 (Sept. 28, 2022). Specifically, the 
Commission determined to review the final ID's invalidity findings, 
including patent eligibility under 35 U.S.C. 101 and obviousness under 
35 U.S.C. 103, and the economic prong of the domestic industry 
requirement for all three patents. Id. The Commission requested 
briefing from the parties on certain issues under review. The 
Commission requested briefing from the parties, interested government 
agencies, and interested persons on remedy, the public interest, and 
bonding. Id.
    On October 6, 2022, the parties filed initial submissions in 
response to the Commission's request for briefing. On October 14, 2022, 
the parties filed reply submissions. On October 21, 2022, Apple moved 
for leave to file a sur-reply to AliveCor's reply submission. On 
October 24, 2022, AliveCor filed an opposition. OUII filed a response 
in opposition on November 2, 2022.
    The Commission has determined to deny Apple's motion for leave to 
file a sur-reply to AliveCor's reply submission.
    On December 7, 2022, Apple filed an emergency motion, asking ``the 
Commission to suspend any remedial orders or, in the alternative, 
extend the December 12, 2022 Target Date of its Final Determination and 
stay all proceedings prior to issuance of any Final Determination 
pending final resolution of any appeal of the PTAB's decisions'' 
finding the asserted patent claims unpatentable. Apple Emergency Motion 
at 1. On December 9, 2022, AliveCor filed an opposition to Apple's 
motion. On December 16, 2022, OUII filed a response in support of 
Apple's motion, but only to the extent that any remedy the Commission 
issues be suspended pending appeal of the PTAB decisions. OUII Reply to 
Emergency Motion at 4.
    Upon review of the parties' submissions, the ID, the RD, evidence 
of record, and public interest filings, the Commission has determined 
that Apple violated section 337 by reason of importation and sale of 
articles that infringe asserted claims 12, 13, and 19-23 of the '941 
patent; and claims 1, 3, 5, 8-10, 12, 15, and 16 of the '731 patent. 
Regarding the issues under review, the Commission has determined to 
affirm the ID's economic prong of the domestic industry findings with 
the modifications described in the accompanying Commission opinion. 
Concerning invalidity, the Commission has determined to affirm the ID's 
patent eligibility findings under 35 U.S.C. 101 as to one claim with 
modifications explained in the Commission opinion and reverse as to 
another; and to correct the ID for not considering objective indicia of 
non-obviousness for certain asserted claims. For remedy, the Commission 
has determined to issue a limited exclusion order prohibiting further 
importation of infringing products and a cease and desist order against 
Apple. The Commission has determined that the public interest factors 
do not counsel against issuing remedial orders. The Commission has 
determined that a bond in the amount of $2 per unit of covered articles 
is required for covered products imported or sold during the period of 
Presidential review.
    The enforcement of these orders, including the bond provision, is 
suspended pending final resolution of the PTAB's Final Written 
Decisions finding the asserted patent claims unpatentable. See 35 
U.S.C. 318(b); Apple, Inc. v. AliveCor, Inc., IPR2021-00971, Patent 
10,595,731, Final Written

[[Page 80571]]

Decision Determining All Challenged Claims Unpatentable (Dec. 6, 2022); 
Apple, Inc. v. AliveCor, Inc., IPR2021-00972, Patent 10,638,941, Final 
Written Decision Determining All Challenged Claims Unpatentable (Dec. 
6, 2022).
    The Commission's vote on this determination took place on December 
22, 2022.
    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: December 22, 2022.
Katherine Hiner,
Acting Secretary to the Commission.
[FR Doc. 2022-28409 Filed 12-29-22; 8:45 am]
BILLING CODE 7020-02-P