[Federal Register Volume 89, Number 218 (Tuesday, November 12, 2024)]
[Notices]
[Pages 89041-89044]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2024-26161]
-----------------------------------------------------------------------
INTERNATIONAL TRADE COMMISSION
[Investigation No. 337-TA-1368]
Certain Vaporizer Devices, Cartridges Used Therewith, and
Components Thereof; [Revised] Notice of Commission Determination To
Review in Part a Final Initial Determination Finding a Violation of
Section 337; Request for Written Submissions on the Issues Under Review
and on Remedy, the Public Interest, and Bonding
AGENCY: U.S. International Trade Commission.
ACTION: Notice.
-----------------------------------------------------------------------
SUMMARY: The Commission has determined to review in part a final
initial determination (``ID'') issued by the presiding administrative
law judge (``ALJ'') in the above-captioned investigation finding a
violation of section 337. The Commission requests written submissions
from the parties on the issues under review and submissions from the
parties, interested government agencies, and interested persons on the
issues of remedy, the public interest, and bonding under the schedule
set forth below.
FOR FURTHER INFORMATION CONTACT: Richard P. Hadorn, Esq., Office of the
General Counsel, U.S. International Trade Commission, 500 E Street SW,
Washington, DC 20436, telephone (202) 205-3179. 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: The Commission instituted this investigation
on August 7, 2023, based on a complaint filed by JUUL Labs, Inc. of
Washington, DC and VMR Products LLC of San Francisco, California
(together, ``JLI''). 88 FR 52207 (Aug. 7, 2023). The complaint, as
supplemented, alleges violations of section 337 of the Tariff Act of
1930, as amended, 19 U.S.C. 1337 (``section 337''), based on the
importation into the United States, the sale for importation, and/or
the sale within the United States after importation of certain
vaporizer devices, cartridges used therewith, and components thereof by
reason of infringement of certain claims of U.S. Patent Nos. RE49,114
(``the '114 patent''), 10,130,123 (``the '123 patent''), 10,709,173
(``the '173 patent''), 11,134,722 (``the '722 patent''), and 11,606,981
(``the '981 patent''). Id. The complaint further alleges that a
domestic industry (``DI'') exists. Id. The notice of investigation
names five respondents: (1) NJOY, LLC of Phoenix, Arizona; (2) NJOY
Holdings, Inc. of Scottsdale, Arizona; (3) Altria Group, Inc. of
Richmond, Virginia; (4) Altria Group Distribution Company of Richmond,
Virginia; and (5) Altria Client Services LLC of Richmond, Virginia
(collectively, ``NJOY''). Id. The Office of Unfair Import
Investigations (``OUII'') is also named as a party. Id. The Commission
also directed the ALJ to take evidence on and provide factual findings
and a recommended determination concerning the public interest. Id.
On April 3, 2024, the Commission terminated the investigation as to
the following asserted claims based on partial withdrawal of the
complaint: (i) claims 1, 5-7, 29, 30, 36, 80, 89, and 93 of the '114
patent; (ii) claims 16, 18, 29, and 31 of the '123 patent; (iii) claims
3, 8, 14, and 17 of the '722 patent; and (iv) claims 6, 9-11, 17, and
18 of the '981
[[Page 89042]]
patent. Order No. 18 (Mar. 6, 2024), unreviewed by Comm'n Notice (Apr.
3, 2024).
On April 26, 2024, the Commission terminated the investigation as
to the following asserted claims based on partial withdrawal of the
complaint: (i) claims 43, 44, 76, 77, 81, and 86 (all remaining claims)
of the '114 patent, thus terminating the '114 patent in its entirety;
(ii) claim 14 of the '123 patent; (iii) claims 2, 3, 6, 7, 15, 16, 18-
25, 28, and 30 of the '173 patent; (iv) claims 5, 7, 9-13, 16, and 18-
21 of the '722 patent; and (v) claims 2, 5, and 13-16 of the '981
patent. Order No. 21 (Apr. 2, 2024), unreviewed by Comm'n Notice (Apr.
26, 2024).
On June 18, 2024, the Commission affirmed an initial determination
granting summary determination that JLI has satisfied the economic
prong of the DI requirement as to the remaining asserted patents, i.e.,
the '123, '173, '722, and '981 patents. Order No. 22 (Apr. 3, 2024),
aff'd by Comm'n Notice (June 20, 2024).
On August 23, 2024, the ALJ issued the final ID, which finds a
violation of section 337 as to claims 27 and 32 of the '123 patent,
claims 1 and 4 of the '173 patent, claims 1 and 15 of the '722 patent,
and claims 1 and 8 of the '981 patent. The ID also includes the ALJ's
recommended determination (``RD'') on remedy, the public interest, and
bonding. The RD recommends that, should the Commission determine that a
violation of section 337 has occurred, the Commission should: (i) issue
a limited exclusion order against NJOY's infringing products; (ii)
issue cease and desist orders against each of the NJOY respondents; and
(iii) impose no bond (0 percent bond) for importations of infringing
products during the period of Presidential review. The ALJ also found
that the statutory public interest factors do not support denying or
delaying the recommended relief set forth in the RD.
On September 6, 2024, NJOY filed a petition seeking review of
certain findings in the ID, including (i) claim construction and
infringement of the asserted claims of the '722 and '981 patents, (ii)
claim construction, infringement, the technical and economic prongs of
the DI requirement, and validity of the asserted claims of the '123
patent, and (iii) claim construction, infringement, and the technical
prong of the DI requirement of the asserted claims of the '173 patent.
That same day, JLI filed a contingent petition seeking review of
certain of the ID's findings concerning (i) claim construction,
infringement, and validity of the '722 and '981 patents, (ii) the
technical prong of the DI requirement and validity of the '123 patent,
and (iii) validity of the '173 patent. On September 16, 2024, JLI and
NJOY each filed a response opposing the other's petition. That same
day, OUII filed a response addressing both petitions.
On September 23, 2024, NJOY filed a motion for leave to file a
reply in support of its petition for review, addressing certain
positions taken by OUII in its response to NJOY's petition. On
September 25 and 27, 2024, OUII and JLI, respectively, filed a response
opposing NJOY's motion for leave.
On September 24, 2024, JLI and NJOY each filed a submission on the
public interest pursuant to Commission Rule 210.50(a)(4) (19 CFR
210.50(a)(4)). The Commission did not receive any submissions on the
public interest from members of the public or interested government
agencies in response to the Commission's Federal Register notice. See
89 FR 70668-69 (Aug. 30, 2024).
Having reviewed the record of the investigation, including the
final ID, the parties' submissions to the ALJ, the petitions and the
responses thereto, and NJOY's motion for leave and the responses
thereto, the Commission has determined to review the ID in part.
Specifically, the Commission has determined to review the ID's
construction of the ``pressure sensor'' limitations (limitations 27[d]
and 27[e]) recited in claim 27 of the '123 patent. The Commission has
also determined to review the ID's findings that the NJOY ACE accused
product, the asserted [ ] and JAGWAR iterations of the JUUL DI system,
and the asserted JUUL2 DI system literally practice limitations 27[d]
and 27[e] of claim 27 of the '123 patent under the ID's construction of
those limitations.
The Commission has further determined to review certain of the ID's
findings regarding claim construction and satisfaction of the technical
prong of the DI requirement with respect to the '173 patent. In
particular, the Commission has determined to review the ID's
construction of the claim terms ``mouthpiece'' and ``disposed within''
recited in the asserted claims 1 and 4 of the '173 patent. The
Commission has further determined to review the ID's finding that the
JUUL2 DI system practices claims 1 and 4 of the '173 patent.
In view of the parties' submissions and the issues raised with
regard to satisfaction of the technical prong of the DI requirement,
the Commission has further determined to reconsider its previous
finding that JLI has satisfied the economic prong of the DI requirement
with respect to the '123 patent and the '173 patent based on
investments related to both the JUUL DI system and the JUUL2 DI system.
19 CFR 210.47, .48.
The Commission has determined not to review the remaining findings
in the ID, including the ID's findings of a violation of section 337 as
to the '722 and '981 patents. The Commission has further determined to
deny NJOY's motion for leave to file a reply in support of its petition
for review.
In connection with its review, the Commission requests responses to
the following questions. The parties are requested to brief their
positions with reference to the applicable law and the existing
evidentiary record.
(1) Please explain whether the final ID correctly finds that
``JLI does not rely on the [ ] iteration as a domestic industry
product.'' ID at 123 (citing Case Management Conf. Tr. at 8:16-24
(April 26, 2024) (EDIS Doc. ID 820002)). To the extent it is argued
that the final ID errs in this finding and JLI asserted the [ ]
iteration of the JUUL system to satisfy the technical prong of the
domestic industry requirement with respect to the '123 patent,
please identify where in the record JLI timely preserved this
contention so as to avoid a finding of waiver.
(2) Did JLI explicitly or implicitly waive its right to rely on
the [ ] iteration of the JUUL system to satisfy the DI requirement
with respect to the '123 patent?
(3) Can OUII, as a party to the investigation, assert that the [
] iteration of the JUUL system satisfies the DI requirement with
respect to the '123 patent where the complainant did not allege that
this product satisfies that requirement? See John Mezzalingua
Assocs., Inc. v. ITC, 660 F.3d 1322, 1331 (Fed. Cir. 2011); but see
Certain Liquid Transfer Devices with an Integral Vial Adapter, Inv.
No. 337-TA-1362, Comm'n Op. at 16-19 (July 26, 2024) (recognizing
that OUII should have been allowed to raise an invalidity argument
that was waived by respondents).
(4) Do the asserted JAGWAR iteration of the JUUL DI system and
the asserted JUUL2 DI system practice (literally and/or under the
doctrine of equivalents) limitations 27[d] and 27[e] of claim 27 of
the '123 patent under a construction of those limitations requiring
at least one ``pressure sensor'' that has both ``a first side . . .
exposed to a sealed air flow path'' and ``a second side . . .
exposed to a device air path open to ambient pressure.''
(5) Assuming that only the JAGWAR iteration of the JUUL DI
system and the JUUL2 DI system can be relied upon to satisfy the
technical prong of the DI requirement, is there any need to further
consider the allocation of investments related to the economic prong
findings as to the '123 patent in Order 22? In responding to this
question, please address the ALJ's finding in Order 26 that JLI
``did not rely on its [ ] JUUL System for economic domestic industry
for the '123 patent'' (Order 26 at 1) and the statement in NJOY's
petition for review that it had not opposed the summary
determination that JLI has satisfied the economic prong of the
domestic industry
[[Page 89043]]
requirement ``based on the understanding that JUUL Jagwar and JUUL 2
were the only domestic industry products for the '123 Patent.'' NJOY
Pet. at 29.
(6) Assuming that only the JAGWAR iteration of the JUUL DI
system and the JUUL2 DI system can be relied upon to satisfy the
technical prong of the DI requirement, does the record in this
investigation support an allocation of JLI's investments to only one
or both those DI products?
(7) Please confirm that the investments asserted by JLI as to
the ``JUUL system'' regarding the '123 patent in Order 22 do not
include investments relating to [ ]. If [ ] investments are
included, what are the amounts specific only to JAGWAR and to JUUL2?
Are these revised investments in JAGWAR and JUUL2 regarding the '123
patent significant under section 337(a)(3) (A) and (B)?
(8) Please comment on whether remand is necessary to determine
whether the domestic industry requirement is satisfied as to the
'123 patent.
The parties are invited to brief only the discrete issues requested
above. The parties are not to brief other issues on review, which are
adequately presented in the parties' existing filings.
In connection with the final disposition of this investigation, the
statute authorizes issuance of, inter alia, (1) an exclusion 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 (Dec. 1994).
The statute requires the Commission to consider the effects of that
remedy upon the public interest. The public interest factors the
Commission will consider include the effect that an exclusion order and
cease and desist orders 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 determination. 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: The parties to the investigation are requested
to file written submissions on the issues identified in this notice.
Parties to the investigation, interested government agencies, and any
other interested parties are encouraged to file written submissions on
the issues of remedy, the public interest, and bonding. Such
submissions should address the recommended determination by the ALJ on
remedy, the public interest, and bonding.
In its initial written submission, JLI is also requested to
identify the remedy sought and to submit proposed remedial orders for
the Commission's consideration. JLI is further requested to state the
dates that the asserted patents expire, to provide the HTSUS
subheadings under which the accused products are imported, and to
supply the identification information for all known importers of the
products at issue in this investigation. In its written submission,
OUII is also requested to submit proposed remedial orders for the
Commission's consideration.
The initial written submissions and proposed remedial orders from
the parties must be filed no later than the close of business on
November 7, 2024. Reply submissions from the parties must be filed no
later than the close of business on November 14, 2024. Initial written
submissions from interested government agencies, and any other
interested parties must be filed no later than the close of business on
November 20, 2024. Reply submissions from the interested government
agencies, and any other interested parties must be filed no later than
the close of business on November 27, 2024. Opening submissions are
limited to 60 pages. Reply submissions are limited to 40 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-1368) in a prominent place on the
cover page and/or the 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. Any non-
party wishing to submit comments containing confidential information
must serve those comments on the parties to the investigation pursuant
to the applicable Administrative Protective Order. A redacted non-
confidential version of the document must also be filed with the
Commission and served on any parties to the investigation within two
business days of any confidential filing. 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 personnel, solely for cybersecurity purposes.
All contract personnel will sign appropriate nondisclosure agreements.
All nonconfidential written submissions will be available for public
inspection on EDIS.
The Commission vote for this determination took place on October
24, 2024.
The authority for the Commission's determination is contained in
section
[[Page 89044]]
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: November 6, 2024.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2024-26161 Filed 11-8-24; 8:45 am]
BILLING CODE 7020-02-P