2021-25061. Certain IP Camera Systems Including Video Doorbells and Components Thereof; Notice of a Commission Determination To Review an Initial Determination Terminating the Investigation in Its Entirety Due to the Invalidity of the Asserted ...

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 an initial determination (“ID”) (Order No. 16) of the presiding administrative law judge (“ALJ”), terminating the investigation in its entirety due to the invalidity of the asserted patents, and on review to affirm the ID. This investigation is hereby terminated.

FOR FURTHER INFORMATION CONTACT:

Ron Traud, 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:

On January 28, 2021, the Commission instituted this investigation based on a complaint filed by SkyBell Technologies, Inc. of Irvine, California; SB IP Holdings, LLC of Irvine, California; and Eyetalk365, LLC of Cornelius, North Carolina (collectively, “Complainants”). 86 FR 7412 (Jan. 28, 2021). The complaint, as supplemented, alleged violations of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337, due to the importation into the United States, sale for importation, or sale in the United States after importation of certain IP camera systems including video doorbells and components thereof by reason of infringement of certain claims of U.S. Patent Nos. 9,432,638; 9,485,478; 10,097,796; 10,097,797; 10,200,660; 10,523,906; and 10,674,120. Id. The complaint also alleged the existence of a domestic industry. Id. The notice of investigation named as respondents Vivint Smart Home, Inc. of Provo, Utah; SimpliSafe, Inc. of Boston, Massachusetts, and Arlo Technologies Inc. of San Jose, California (collectively, “Respondents”). Id. The Office of Unfair Import Investigations was not named as a party. Id.

On May 21, 2021, Respondents filed a motion for summary determination that all patent claims asserted in this investigation are invalid as anticipated. On June 3, 2021, Complainants filed a brief in opposition to the motion.

On September 15, 2021, the presiding ALJ issued the subject ID (Order No. 16) granting the motion. The ID found that there was no genuine issue of material fact as to whether the asserted patents are invalid and that Respondents were entitled to a finding of invalidity as a matter of law.

On September 27, 2021, Complainants filed a petition for review. On October 4, 2021, Respondents filed a response thereto.

The Commission has determined to review the subject ID. The Commission notes that the ID applied the current version of 35 U.S.C. 111, as amended by the America Invents Act (“AIA”). Because the claims of United States Patent Application No. 14/338,525 (“the '525 application”) have an effective filing date before March 16, 2013, the pre-AIA statutory provision should have been applied, but that error is harmless and does not change the outcome. On review, the Commission affirms the ID's findings under the pre-AIA version of 35 U.S.C. 111. The Commission also notes that the relevant provision of 35 U.S.C. 120 did not change with the AIA. Vice Chair Stayin joins the Commission's determination to affirm the ID, based on his view that the '525 application was abandoned no later than the expiration of the deadline to request an extension under 37 CFR 1.136(a), i.e., March 4, 2015. The investigation is hereby terminated in its entirety.

The Commission vote for this determination took place on November 10, 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: November 10, 2021.

Lisa Barton,

Secretary to the Commission.