ITC Monthly Wrap-Up: November 2021

November brought another busy month for the ITC. Final Determinations were issued by the Commission in two Section 337 Investigations: Certain Electronic Devices, Including Streaming Players, Televisions, Set Top Boxes, Remote Controllers, and Components Thereof, Inv. No. 337-TA-1200 (Nov. 10, 2021) and Certain Cloud-Connected Wood-Pellet Grills and Components Thereof, Inv. No. 337-TA-1237 (Nov. 18, 2021). The Commission instituted one Section 337 Investigation: Certain Oil-Vaping Cartridges, Components Thereof, And Products Containing the Same, Inv. No. 337-TA-1286 (Nov. 4, 2021). Five Section 337 Investigations were either stayed or dismissed pending settlements: Certain Skin Rejuvenation Devices, Components Thereof, and Products Containing the Same, Inv. No. 337-TA-1262 (Nov. 3, 2021); Certain Flocked Swabs, Products Containing Flocked Swabs, And Methods of Using Same, Inv. No. 337-TA-1279 (Nov. 15, 2021); Certain Portable Battery Jump Starters & Components Thereof, Inv. No. 337-TA-1256 (Nov. 15, 2021); Certain Vehicle Control Systems, Vehicles Containing the Same, and Components Thereof, Inv. No. 337-TA-1235 (Nov. 18, 2021); Certain Electronic Devices Having Wireless Communication Capabilities and Components Thereof, Inv. No. 337-TA-1284 (Nov. 30, 2021). And the Commission received two complaints: Certain Integrated Circuits, Chipsets, and Electronic Devices, and Products Containing the Same, Inv. No. 337-TA-1287 (Nov. 1, 2021); Certain Playards and Strollers, Inv. No. 337-TA-3577 (Nov. 23, 2021); Certain Video Processing Devices, Components Thereof, and Digital Smart Televisions Containing the Same II, Inv. No. 337-TA-3578 (Nov. 24, 2021).

This month's ITC wrap-up serves as an important reminder to any party to collect the necessary evidence when seeking a bond or an exemption to an exclusion order. Many parties ignore the need to gather such evidence to justify the request for a bond (complainants) or an exemption (respondents), ultimately leading to an unfavorable result. The Commission addressed this issue in Certain Electronic Devices, Including Streaming Players, Televisions, Set Top Boxes, Remote Controllers, and Components Thereof. Inv. No 337-TA-1200 (public version issued Dec. 3, 2021) (hereinafter Streaming Players).

Under Section 337(d)(1), if the Commission determines as a result of an investigation that there is a violation of section 337, the Commission is authorized to enter either a limited or a general exclusion order. See 19 U.S.C. 1337(d)(1). A limited exclusion order ("LEO") instructs the U.S. Customs and Border Protection ("CBP") to exclude from entry all articles that are covered by the patent at issue and that originate from a named respondent in the investigation. Certain exceptions may apply to an LEO, including a warranty and repair exception. Whether to include such an exception involves a consideration of the public interest. Certain Two-Way Radio Equipment and Systems, Related Software and Components Thereof, Inv. No. 337-TA-1053, Comm'n Op. at 31-32 (Dec. 18, 2018). And the Commission has regularly determined that such exceptions should not apply without sufficient evidentiary support. See e.g. Certain High-Density Fiber Optic Equipment and Components Thereof, Inv. No 337-TA-1194, Comm'n Op. at 79-80 (Aug. 23, 2021) (declining service and repair exception where respondents failed to provide any evidentiary support and citing string of supporting Commission Opinions on same).

And under Section 337(j), during the 60-day period of Presidential review, "articles directed to be excluded from entry under subsection (d) . . . shall . . . be entitled to entry under bond prescribed by the Secretary in an amount determined by the Commission to be sufficient to protect the complainant from any injury." See 19 U.S.C. 1337(j)(3). The purpose of the bond is to protect the complainant from injury from continued importation by the respondents during Presidential review. Certain Electric Skin Care Devices, Inv. No. 337-TA-959, Comm'n Op. at 35 (Feb. 13, 2017). "The complainant bears the burden of establishing the need for a bond" during that time. See Certain Robotic Vacuum Cleaning Devices and Components Thereof Such as Spare Parts, Inv. No. 337-TA-1057, Comm'n Op. at 68 (Feb. 1, 2019). The Commission may set a bond in an amount that would eliminate the price differential between the domestic and imported, infringing products, when reliable price information is available in the record. See Certain Microsphere Adhesives, Processes for Making Same, & Prods. Containing Same, Including Self-stick Repositionable Notes, Inv. No. 337-TA-366, Comm'n Op. at 24 (Jan. 16, 1996). Similarly, the commission has used a reasonable royalty rate to set the bond amount where a reasonable royalty rate is ascertainable from evidence in the record. See Certain Audio Digital-to-Analog Converters & Prods. Containing Same, Inv. No. 337-TA-499, Comm'n Op. at 25 (Mar. 3, 2005). If neither option is viable, the Commission has imposed a 100% bond. See Certain Liquid Crystal Display Modules, Prods. Containing Same, & Methods Using the Same, Inv. No. 337-TA-634, Comm'n Op at 6-7 (Nov. 24, 2009).

Case Overview: In the Matter of Certain Electronic Devices, Including Streaming Players, Televisions, Set Top Boxes, Remote Controller, and Components Thereof, Inv. No. 337-TA-1200.

On May 22, 2020, the Commission instituted an Investigation based on a complaint filed by Universal Electronics Inc. ("UEI") against eighteen respondents, including Roku, Inc. ("Roku"). At issue was the infringement of six patents related to remote control devices and systems that are capable of controlling multiple consumer media devices.

Following an evidentiary hearing held April 19-23, 2021, the ALJ issued the Final Initial Determination on July 9, 2021, finding that certain Roku products infringed several claims of one of the asserted patents and that UEI satisfied both the technical and economic prongs of the domestic industry requirement. (Final Initial Determination). The ALJ also recommended that the Commission should issue a LEO, but because public interest was not delegated to the ALJ, he did not provide any indication whether the LEO should include a warranty and repair exception, despite the parties' dispute on this issue. Id. As to the issue of bond, the ALJ determined that UEI had not shown the need for a bond, in the event of a violation, because "UEI offered no evidence that it competes with Roku, and concede[d] that a reasonably royalty [was] not ascertainable." Id.

On September 9, 2021, the Commission decided to review certain of the ALJ's determinations, and requested the parties provide written submissions addressing the form of remedy, if any, that should be ordered, any effect such remedy may have on the public interest, and the amount of bond that should be imposed. 86 Fed. Reg. 51381, 51382-83 (Sept. 15, 2021). The parties provided such written submissions on September 24, 2021. Their arguments are summarized as follows:

Service and Repair Exception

In its submission, Roku requested that if the Commission issued a LEO, it "should contain an express exemption allowing for Roku to continue to provide [] updates and services to customers" who had already purchased the accused products. (Respondent Roku's Opening Submission, EDIS No. 753569). To support this request, Roku appears to have cited primarily deposition testimony regarding the software updates and return and replacement services to customers Roku provides. Id. Roku further asserts that not providing an exemption would harm established customers, given their investment in purchasing the accused products, their expectations of continued use of the products, and the cost in obtaining alternatives. Id.

UEI argued that such an exception should not apply, however, "because there is no palpable concern that would merit a carve-out for service and repair" and Roku did not provide evidence of what such a carve out would be. (Complainant's Response to the Commission Notice of Review, EDIS No. 753603).

Bond

In its submission, UEI requested 100% bond because, even though UEI does not directly compete with Roku, its licensee does. Moreover, UEI argued that a price comparison was not practical because of the range of prices for the accused products and a reasonable royalty was not obtainable on the patents at issue.

Roku, however, argued that no bond is warranted because UEI failed to (1) show it would be injured during the Presidential review because it does not compete with Roku, (2) provide evidence as to the appropriate amount of bond, or (3) identify any evidence of competition between UEI's licensee and Roku, with respect to the accused products. Specifically, Roku argued that UEI provided no expert testimony, or any other evidence, regarding a price comparison, reasonable royalty analysis, or other analysis to support a bond amount, even though Roku provided pricing information and UEI had established licensing agreements for the asserted technology that it could reference for comparison. Nor did UEI identify any Samsung products that allegedly compete with the accused products.

On November 10, 2021, the Commission issued its opinion. In it, the Commission "decline[d] Roku's request for an exemption for warranty, service, and repair because Roku failed to provide sufficient evidence to support such a provision." (Comm'n Op., EDIS No. 757848). Specifically, the Commission noted that Roku failed to "identify any spare parts to be exempted, or explain the importance of such spare parts." Id. This is similar to the Commission decision to deny inclusion of a similar exception in Certain Non-Volatile Memory Devices and Products Containing Same, when the responded did not identify any specific replacement parts or explain what repairs were needed. Inv. No. 337-TA-1056. Regarding bond, the Commission determined to impose a bond of $0 because UEI neither provided price comparisons, nor explained which or to what extent the accused products competed with UEI's licensee's products.

Conclusion

The 1200 Investigation is an excellent reminder to parties to collect and provide sufficient evidence to support their respective requests regarding remedy and bond. Without such evidence, the Commission can, and likely will, deny requests like UEI's and Roku's, which can drastically affect the severity of the remedy and amount of bond - topics that are typically very important to one's client.