[Federal Register Volume 88, Number 49 (Tuesday, March 14, 2023)]
[Notices]
[Pages 15736-15738]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2023-05144]


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INTERNATIONAL TRADE COMMISSION

[Investigation No. 337-TA-1265]


Certain Fitness Devices, Streaming Components Thereof, and 
Systems Containing Same Notice of the Commission's Final Determination 
Finding a Violation of Section 337; Issuance of a Limited Exclusion 
Order and Cease and Desist Orders; 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 has found a violation of section 337 in the above-captioned 
investigation. The Commission has determined to issue: (1) a limited 
exclusion order (``LEO'') prohibiting the unlicensed entry of fitness 
devices, streaming components thereof, and systems containing same 
infringing certain claims of U.S. Patent Nos. 10,469,554 (``the '554 
patent''); 10,469,555 (``the '555 patent''); and 10,757,156 (``the '156 
patent'') that are manufactured by or on behalf of, or imported by or 
on behalf of, respondents ICON Health & Fitness, Inc. of Logan, Utah 
(``ICON'' or ``iFIT Inc.''); FreeMotion Fitness, Inc. of Logan, Utah 
(``FreeMotion''); NordicTrack Inc. of Logan, Utah (``NordicTrack,'' and 
together with ICON and FreeMotion, ``iFit''); and Peloton Interactive, 
Inc. of New York, New York (``Peloton''), or any of their affiliated 
companies, parents, subsidiaries, or other related business entities, 
or their successors or assigns; and (2) cease and desist orders 
(``CDOs'') directed against iFit and Peloton, or any of their 
affiliated companies, parents, subsidiaries, or other related business 
entities, or their successors or assigns. The Commission has also 
determined to grant a joint motion filed by complainants DISH DBS 
Corporation of Englewood, Colorado; DISH Technologies, L.L.C., of 
Englewood, Colorado; and Sling TV L.L.C., of Englewood, Colorado 
(collectively, ``DISH'') and respondents lululemon athletica inc., of 
Vancouver, Canada (``lululemon''); and Curiouser Products Inc. d/b/a 
MIRROR of New York, New York (together with lululemon, ``MIRROR'') that 
sought to terminate the investigation as to MIRROR on the basis of a 
settlement agreement. This investigation is terminated.

FOR FURTHER INFORMATION CONTACT: Ronald A. Traud, Esq., Office of the

[[Page 15737]]

General Counsel, U.S. International Trade Commission, 500 E Street SW, 
Washington, DC 20436, telephone (202) 205-3427. 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.

SUPPLEMENTARY INFORMATION: The Commission instituted this investigation 
under section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 
1337, on May 19, 2021, based on a complaint filed by DISH. 86 FR 27106-
07 (May 19, 2021). The complaint alleged a violation of section 337 
based upon the importation into the United States, the sale for 
importation, and the sale within the United States after importation of 
certain fitness devices, streaming components thereof, and systems 
containing same by reason of infringement of certain claims of U.S. 
Patent Nos. 9,407,564 (``the '564 patent''); 10,951,680 (``the '680 
patent''); the '554 patent; the '555 patent; and the '156 patent. Id. 
at 27106. The notice of investigation named as respondents iFit, 
MIRROR, and Peloton (collectively, ``Respondents''). Id.; Order No. 14 
(Nov. 4, 2021), unreviewed by Comm'n Notice (Dec. 6, 2021), 86 FR 70532 
(Dec. 10, 2021). The Commission's Office of Unfair Import 
Investigations (``OUII'') also was named as a party in this 
investigation. 86 FR at 27106.
    Prior to the issuance of the Final ID, the complaint and notice of 
investigation were amended to change the name of ICON to iFIT Inc. 
Order No. 14 (Nov. 4, 2021), unreviewed by Comm'n Notice (Dec. 6, 
2021), 86 FR at 70532. The investigation was also terminated in part as 
to claims 6, 11, and 12 of the '156 patent, claim 22 of the '554 
patent, and claim 17 of the '555 patent. Order No. 15 (Nov. 19, 2021), 
unreviewed by Comm'n Notice (Dec. 20, 2021). Moreover, claims 9 and 12 
of the '156 patent, claim 19 of the '554 patent, claims 12 and 13 of 
the '555 patent, and claim 6 of the '564 patent are no longer asserted 
against iFit and Peloton. Id. The investigation was further terminated 
as to claims 6-8, 10, and 13-15 of the '564 patent, claims 3 and 6-12 
of the '156 patent, claims 18, 19, 21-25, and 30 of the '554 patent, 
claims 12, 13, 16, 17, 26, and 27 of the '555 patent, and all asserted 
claims of the '680 patent. Order No. 21 (Mar. 3, 2022), unreviewed by 
Comm'n Notice (Mar. 23, 2022).
    At the time of the Final ID, DISH asserted the following claims 
against MIRROR and iFit: claims 1, 3, and 5 of the '564 patent; claims 
16, 17 and 20 of the '554 patent; claims 10, 11, 14, and 15 of the '555 
patent; and claims 1, 4, and 5 of the '156 patent. DISH also asserted 
the following claims against Peloton: claims 1 and 3-5 of the '564 
patent; claims 16, 17, and 20 of the '554 patent; claims 10, 11, 14, 
and 15 of the '555 patent; and claims 1, 2, 4, and 5 of the '156 
patent.
    On September 9, 2022, the Chief Administrative Law Judge (``CALJ'') 
issued the Final ID, which found that Respondents violated section 337.
    The CALJ's recommendation on remedy and bonding (the ``RD'') 
recommended that, if the Commission finds a violation of section 337, 
the Commission should issue an LEO and a CDO directed to each of the 
Respondents. The RD further recommended that the Commission impose a 
zero percent (0%) bond during the period of Presidential Review. The 
Commission did not direct the CALJ to make findings and a 
recommendation on the statutory public interest factors.
    On September 23, 2022, Respondents and OUII filed petitions for 
review of the Final ID. On October 3, 2022, DISH and OUII filed 
responses to the petitions.
    On October 11, 2022, DISH and Respondents filed their public 
interest comments pursuant to Commission Rule 210.50(a)(4) (19 CFR 
210.50(a)(4)).
    On November 18, 2022, the Commission determined to review the Final 
ID in part. 87 FR 72510, 72510-12 (Nov. 25, 2022). In particular, the 
Commission reviewed the following:
    (1) whether DISH satisfied the technical prong of the domestic 
industry requirement as to all Asserted Patents;
    (2) whether claims 16, 17, and 20 of the '554 patent and claims 14 
and 15 of the '555 patent are entitled to claim priority to U.S. App. 
No. 60/566,831;
    (3) whether claims 16, 17, and 20 of the '554 patent and claims 14 
and 15 of the '555 patent are invalid as anticipated over the prior 
public use of the Move Media Player;
    (4) whether the asserted claims of the '555 patent are invalid for 
misjoinder of Mr. Brueck; and
    (5) whether the preamble of claim 10 of the '555 patent is 
limiting.
    Id. The Commission requested briefing on certain issues under 
review and on remedy, the public interest, and bonding. See id.
    On December 2, 2022, the parties filed their written submissions on 
the issues under review and on remedy, public interest, and bonding, 
and on December 9, 2022, the parties filed their reply submissions. The 
Commission did not receive comments on the public interest from non-
parties.
    On February 13, 2023, MIRROR and DISH filed a joint, unopposed 
motion to partially terminate the investigation as to MIRROR based on a 
settlement agreement between DISH and MIRROR. The Commission has 
determined to grant the motion.
    On review, and consistent with the simultaneously-issued Commission 
opinion, the Commission affirms-in-part and reverses-in-part, on other 
grounds, the Final ID's finding that DISH's domestic industry products 
practice the asserted claims of the Asserted Patents. The Commission 
also resolves in the first instance the claim construction dispute 
amongst the parties regarding whether the asserted claims require a 
display. The Commission concludes that the asserted claims of the '156, 
'554, and '555 patents do not require a display, but the asserted 
claims of the '564 patent do require a display. Accordingly, the 
Commission further finds that DISH has satisfied the technical prong of 
the domestic industry requirement as to the '156, '554, and '555 
patents, but not as to '564 patent. The Commission also affirms with 
modifications the Final ID's findings that the asserted claims of the 
'554 and '555 patents can properly claim priority to U.S. App. No. 60/
566,831 and affirms the Final ID's findings that those claims are not 
invalid over the prior public use of the Move Media Player. The 
Commission additionally finds that the respondents did not show that 
the asserted claims of the '555 patent are invalid for misjoinder of 
inventorship.
    The Commission has determined that the appropriate form of relief 
is an LEO prohibiting (1) the unlicensed entry of infringing fitness 
devices, streaming components thereof, and systems containing same 
manufactured by or on behalf of iFit, Peloton, or any of their 
affiliated companies, parents, subsidiaries, or other related business 
entities, or their successors or assigns. The Commission has also 
determined to issue CDOs against iFit and Peloton. The Commission has 
determined to include an exemption to the remedial orders for repair 
or, under warranty terms, replacement of products purchased by 
consumers prior to the date of the remedial orders.

[[Page 15738]]

    The Commission has further determined that the public interest 
factors enumerated in subsections (d)(l) and (f)(1) (19 U.S.C. 
1337(d)(l), (f)(1)) do not preclude issuance of the above-referenced 
remedial orders. Additionally, the Commission has determined to impose 
a bond of zero (0%) (i.e., no bond) of entered value of the covered 
products during the period of Presidential review (19 U.S.C. 1337(j)). 
This investigation is terminated.
    The Commission vote for this determination took place on March 8, 
2023.
    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 8, 2023.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2023-05144 Filed 3-13-23; 8:45 am]
BILLING CODE 7020-02-P