2024-18543. Certain Robotic Floor Cleaning Devices and Components Thereof; Notice of Commission Decision To Vacate the Portion of Its Final Determination Relating to an Expired Patent, To Institute a Rescission Proceeding, and To Rescind the ...

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International Trade Commission

1. [No. 337-TA-1252 (Rescission)]

AGENCY:

International Trade Commission.

ACTION:

Notice.

SUMMARY:

Notice is hereby given that the U.S. International Trade Commission has determined to vacate the portion of its final determination relating to U.S. Patent No. 10,813,517 (“the '517 patent”), which has now expired, and to dismiss the related portion of the complaint. The Commission has also determined to institute a rescission proceeding and to rescind the limited exclusion order and cease and desist orders (collectively, “the remedial orders”) issued in the underlying investigation which are based on the '517 patent. The rescission proceeding is terminated.

FOR FURTHER INFORMATION CONTACT:

Houda Morad, Office of the General Counsel, U.S. International Trade Commission, 500 E Street SW, Washington, DC 20436, telephone [phone]. 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 [e-mail]. 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 [phone].

SUPPLEMENTARY INFORMATION:

The Commission instituted this investigation on March 2, 2021, based on a complaint filed on behalf of iRobot Corporation (“iRobot” or “Complainant”) of Bedford, Massachusetts. See86 FR 12206-07 (Mar. 2, 2021). The complaint alleged violations of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337 (“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 robotic floor cleaning devices and components thereof based on the infringement of certain claims of the '517 patent; as well as U.S. Patent Nos. 9,884,423 (“the '423 patent”); 7,571,511 (“the '511 patent”); 10,835,096 (“the '096 patent”); and 10,296,007 (“the '007 patent”). See id. The Commission's notice of investigation named as respondents SharkNinja Operating LLC, SharkNinja Management LLC, SharkNinja Management Co., SharkNinja Sales Co., and EP Midco LLC, all of Needham, Massachusetts; and SharkNinja Hong Kong Co. Ltd. of Hong Kong Island, Hong Kong (collectively, “SharkNinja” or “Respondents”). See id. The Office of Unfair Import Investigations did not participate in the investigation. See id.

The Commission terminated the '007 patent from the investigation. See Order No. 23 (Sept. 13, 2021), unreviewed by Comm'n Notice (Oct. 5, 2021); Order No. 38 (Jan. 4, 2022), unreviewed by Comm'n Notice (Jan. 25, 2022).

On March 21, 2023, the Commission issued a final determination finding a violation of section 337 based on the infringement of claims 1 and 9 of the '517 patent. The Commission found no violation of section 337 based on the '423, '511, and '096 patents. Accordingly, the Commission issued the remedial orders based solely on the '517 patent.

On July 14, 2023, SharkNinja filed an appeal from the Commission's final determination with the U.S. Court of Appeals for the Federal Circuit. The appeal was docketed on July 20, 2023, as SharkNinja Operating LLC v. ITC, No. 23-2162 (Fed. Cir. July 20, 2023). Complainant iRobot did not seek to intervene in the Federal Circuit appeal.

On February 21, 2024, the Commission and SharkNinja filed a joint unopposed motion to stay and dismiss the appeal upon expiration of the '517 patent on July 24, 2024. Consistent with Federal Circuit precedent, the Commission and SharkNinja requested vacatur of the Commission's final determination as it relates to the '517 patent and a remand to the Commission with instructions to dismiss the relevant portion of the complaint and to rescind the remedial orders which are based solely on the '517 patent.

The Federal Circuit granted the motion to stay on March 22, 2024, and dismissed the appeal on July 24, 2024. See ECF No. 22 (Fed. Cir. Mar. 22, 2024); ECF No. 24 (Fed. Cir. July 24, 2024). The Federal Circuit remanded the appeal to the Commission with instructions to vacate its final determination and to dismiss the relevant portion of the complaint.

In view of the Federal Circuit's remand order and the expiration of the '517 patent, the Commission has determined to vacate the portion of its final determination relating to the '517 patent and to dismiss the related portion of the complaint.

In addition, as explained in the Commission Order issued concurrently herewith, the Commission finds that the conditions which led to the issuance of the remedial orders no longer exist, and therefore, a rescission of the remedial orders is warranted under section 337(k) (19 U.S.C. 1337(k)) and Commission Rule 210.76(a) (19 CFR 210.76(a)). Accordingly, the Commission has determined to institute a rescission proceeding and to rescind the remedial orders issued in the underlying investigation which are based on the '517 patent. The rescission proceeding is terminated.

The Commission's notice and order were delivered to the Secretary of the Treasury on the day of their issuance.

The Commission's vote for this determination took place on August 14, 2024.

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 14, 2024.

Lisa Barton,

Secretary to the Commission.