2022-22102. Notice of a Commission Determination To Review in Part a Final Determination To Review in Part a Final Initial Determination Finding No Violation of Section 337 and Two Related Orders

AGENCY:

U.S. International Trade Commission.

ACTION:

Notice.

SUMMARY:

Notice is hereby given that the U.S. International Trade Commission has determined to review in part a final initial determination (“ID”) issued by the presiding administrative law judge (“ALJ”) on June 28, 2022, finding no violation of section 337 in the above-referenced investigation and two related Orders (Order Nos. 30 and 37).

FOR FURTHER INFORMATION CONTACT:

Michael Liberman, Esq., 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 May 14, 2021, the Commission instituted this investigation under section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337, based on a complaint filed by Roku, Inc. of San Jose, California (“Roku”). 86 FR 26542-43 (May 14, 2021). The complaint alleged a violation of section 337 in the importation into the United States, the sale for importation, or the sale within the United States after importation of certain televisions, remote controls, and components thereof by reason of infringement of certain claims of U.S. Patent Nos. 8,378,875 (“the '875 patent”) and 7,388,511 (“the '511 patent”). The complaint also alleged that a domestic industry exists or is in the process of being established. The notice of investigation named as respondents: Universal Electronics, Inc. of Scottsdale, Arizona; Gemstar Technology (Qinzhou) Co. Ltd. of Qinzhou, China; Gemstar Technology (Yangzhou) Co. Ltd of Yanzhou, China.; C.G. Development Ltd. of Kowloon, Hong Kong; Universal Electronics BV of Enschede, the Netherlands; UEI Brasil Controles Remotos Ltda. of ManausAmazonas-Brasil, Brazil; CG México Remote Controls, S. de R.L. de C.V. of Nuevo Leon, Mexico; LG Electronics Inc. of Seoul, Republic of Korea; LG Electronics USA, Inc. of Englewood Cliffs, New Jersey; Samsung Electronics Co., Ltd. of Gyeonggi do, Republic of Korea; Samsung Electronics America, Inc. of Ridgefield Park, New Jersey; Charter Communications, Inc. of Stamford, Connecticut; Charter Communications Operating, LLC of St. Louis, Missouri; Spectrum Management Holding Company, LLC of Stamford, Connecticut; Altice USA, Inc. of Long Island City, New York; Cablevision Systems Corp. of Bethpage, New York; Cequel Communications, LLC d/b/a Suddenlink Communications of Long Island City, New York; and WideOpenWest, Inc. of Englewood, Colorado (collectively, “Respondents”). Id. at 26543. The Commission's Office of Unfair Import Investigations was not named as a party in this investigation. Id.

Subsequently, UEI Brasil Controles Remotos Ltda. was terminated from this investigation. Order No. 20 (Nov. 19, 2021), unreviewed by Comm'n Notice (Dec. 14, 2021). Also, on November 19, 2021, an initial determination issued that granted Roku's motion for partial termination of the investigation based upon withdrawal of claim 11 of the '875 patent. Order No. 19 (Nov. 19, 2021), unreviewed by Comm'n Notice (Dec. 14, 2021).

On June 24, 2022, the presiding ALJ issued an initial determination (Order No. 37) granting summary determination in part on the invalidity of the '511 patent and granting a joint motion for the reconsideration of Motion Docket No. 1263-015. On July 1, 2022, complainant Roku filed a petition for review of Order No. 37. On July 11, 2022, respondents Universal Electronics Inc.; Gemstar Technology (Qinzhou) Co. Ltd.; Gemstar Technology (Yangzhou) Co. Ltd.; C.G. Development Ltd.; Universal Electronics BV; CG México Remote Controls, S. de R.L. de C.V.; Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc.; LG Electronics, Inc.; and LG Electronics USA, Inc. filed a response to Roku's petition for review of Order No. 37.

On June 28, 2022, the ALJ issued a final ID on violation of section 337 and a recommended determination (“RD”) on remedy and bond finding no violation of section 337. The ID held that no violation of section 337 has occurred in the importation into the United States, the sale for importation, or the sale within the United States after importation, of certain televisions, remote controls, and components thereof of claims 1-5, 8-10, and 14 of the '875 patent and claim 5 of the '511 patent.

The ID found that the Representative Accused Products, UEI OFA Streamer Remote (URC 7935), Charter Spectrum RF4CE Remote (URC 1160), Altice/Charter Pulse RF Remote (URC 2068), and WOW Experience Remote (URC 2135), satisfy claims 1-5, 8, and 10 of the '875 patent. The ID also found that Representative Accused Products, Altice/Charter Pulse RF Remote (URC 2068) and WOW Experience Remote (URC 2135), satisfy claim 9 of the '875 patent. The ID further found that it has been shown by clear and convincing evidence that the asserted claims of the '875 and '511 patents are invalid. The ID found that Roku's domestic industry product does not practice any of the claims of the '875 patent. The ID also found that Roku's domestic activities with respect to its DI product do not satisfy the economic prong of the domestic industry requirement under 19 U.S.C. 337(a)(3)(B).

On July 11, 2022, complainant Roku filed a petition for review of various portions of the final ID. Likewise, on July 11, 2022, respondents Universal Electronics Inc.; Gemstar Technology (Qinzhou) Co. Ltd.; Gemstar Technology (Yangzhou) Co. Ltd.; C.G. Development Ltd.; Universal Electronics BV; CG México Remote Controls, S. de R.L. de C.V.; Charter Communications, Inc., Charter Communications Operating, LLC, and Spectrum Management Holding Company, LLC; Altice USA, Inc., Cablevision Systems Corp., and Cequel Communications, LLC d/b/a Suddenlink Communications; and WideOpenWest, Inc. filed a contingent petition for review of the various portions of the final ID.

On July 19, 2022, Respondents filed a response to Roku's petition for review. On the same day, Roku filed its response to Respondents' contingent petition for review of the final ID. No other petitions or responses to petitions were filed.

Having examined the record in this investigation, including the final ID, the petitions for review, and the responses thereto, the Commission has determined to review in part the ID and Order Nos. 30 and 37. Specifically, the Commission has determined to review the ID's infringement, invalidity, technical prong, and economic prong findings regarding the '875 patent and the invalidity findings regarding the '511 patent. The Commission has also determined to review Order Nos. 30 and 37 as they relate to the invalidity of the '511 patent.

The Commission has determined not to review the remainder of the ID and Order Nos. 30 and 37. The Commission does not request additional briefing.

The Commission vote for this determination took place on October 5, 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: October 5, 2022.

William Bishop,

Supervisory Hearings and Information Officer.