UNITED STATES INTERNATIONAL TRADE COMMISSION
`Washington, D.C.
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`In the Matter of
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`CERTAIN MOVABLE BARRIER
`OPERATOR SYSTEMS AND
`COMPONENTS THEREOF
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`Investigation No. 337-TA-1118
`(Remand)
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`NOTICE OF A COMMISSION REQUEST FOR WRITTEN SUBMISSIONS AND
`REMAND FOR AN INITIAL DETERMINATION ON THE ECONOMIC PRONG OF
`THE DOMESTIC INDUSTRY REQUIREMENT PURSUANT TO A COURT REMAND
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`AGENCY: U.S. International Trade Commission.
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`ACTION: Notice.
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`SUMMARY: Notice is hereby given that the U.S. International Trade Commission (the
`“Commission”) has determined to set a briefing schedule for the issues under consideration on
`remand from the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit” or “Court”).
`The Commission has further determined to remand the investigation to the presiding
`administrative law judge (“ALJ”) for an initial determination on the economic prong of the
`domestic industry requirement. The Commission has determined to dismiss the infringement
`claim against an expired patent and vacate all findings regarding that expired patent as moot.
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`FOR FURTHER INFORMATION CONTACT: Carl P. Bretscher, Office of the General
`Counsel, U.S. International Trade Commission, 500 E Street SW, Washington, DC 20436,
`telephone (202) 205-2382. Copies of non-confidential documents filed in connection with this
`investigation may be viewed on the Commission’s electronic docket system (“EDIS”) at
`https://edis.usitc.gov. For help accessing EDIS, please email EDIS3Help@usitc.gov. 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.
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`SUPPLEMENTARY INFORMATION: The Commission instituted this investigation on June
`11, 2018, based on a complaint, as supplemented, filed by The Chamberlain Group, Inc.
`(“Chamberlain”) of Oak Brook, Illinois. 83 FR 27020-21 (June 11, 2018). The complaint
`alleged a violation of section 337 the Tariff Act, as amended, 19 U.S.C. 1337 (“section 337”), by
`way of the importation into the United States, sale for importation, or sale in the United States
`after importation of certain movable barrier operator systems and components thereof that
`allegedly infringe one or more of the asserted claims of U.S. Patent Nos. 7,755,223 (“the ʼ223
`patent”); 8,587,404 (“the ʼ404 patent”); and 6,741,052 (“the ʼ052 patent”). Id. The
`Commission’s notice of investigation named Nortek Security & Control, LLC of Carlsbad,
`California; Nortek, Inc. of Providence, Rhode Island; and GTO Access Systems, LLC of
`Tallahassee, Florida (collectively, “Nortek”) as respondents.
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`Id. The complaint further alleged the existence of a domestic industry. The Office of
`Unfair Import Investigations was not named as a party to this investigation. See id.
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`On November 25, 2019, the presiding ALJ issued an initial determination (“ID”) (Order
`No. 38) granting Chamberlain's motion for summary determination that it satisfied the economic
`prong of the domestic industry requirement for all three patents at issue. Order No. 38 (Nov. 25,
`2019). On the same date, the ALJ issued the final ID, finding no violation of section 337
`because the asserted claims of the ʼ404 and ʼ223 patents were not infringed and the asserted
`claim of the ʼ052 patent is invalid as obvious. ID at 286-87. The ID further finds that the
`asserted claim of the ʼ404 patent is not patent-ineligible under 35 U.S.C. § 101. Id. at 86-96.
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`On February 19, 2020, the Commission determined to review Order No. 38 and the final
`ID in part. 85 FR 10723-26 (Feb. 25, 2020). On April 22, 2020, the Commission issued a final
`determination adopting the ID’s findings of no violation with respect to the ʼ404 and ʼ052
`patents. Comm’n Notice at 3 (April 22, 2020). The Commission took no position on whether
`the asserted claim of the ’404 patent is invalid under 35 U.S.C. § 101. Id. The Commission
`vacated Order No. 38 and remanded the economic prong issue to the ALJ with respect to the
`’223 patent, the only patent still at issue. Id.
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`On July 10, 2020, the ALJ issued a Remand Initial Determination (“Remand ID”),
`finding that Chamberlain satisfied the economic prong of the domestic industry requirement for
`the ʼ223 patent. Remand ID at 2 (July 10, 2020). The Remand ID found that Chamberlain’s
`investments in plant and equipment and labor or capital were both quantitatively and
`qualitatively significant under sections 337(a)(3)(A) and (B), respectively. Id. at 31-35.
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`On December 3, 2020, the Commission completed its review regarding the ʼ223 patent
`and concluded that Nortek violated section 337 by way of infringing claims 1 and 21 of the ʼ223
`patent. 85 FR 79217-18 (Dec. 9, 2020). The Commission affirmed the Remand ID with a
`modified analysis of the economic prong and issued a limited exclusion order and cease and
`desist order against each of the Nortek respondents with respect to those claims. Id.; see also
`Comm’n Op. (Jan. 12, 2021) (Public Version).
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`Chamberlain timely appealed the Commission’s finding that the asserted claim 11 of the
`ʼ404 patent is not infringed, and that asserted claim 1 of the ʼ052 patent claim is invalid. Nortek
`appealed the Commission’s finding that asserted claims 1 and 21 of the ʼ223 patent are infringed.
`The ʼ052 patent expired while the appeals were pending.
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`On April 27, 2023, the U.S. Court of Appeals for the Federal Circuit issued its opinion on
`the issues on appeal in The Chamberlain Group, Inc. v. ITC, Appeal Nos. 2020-1965, 2021-
`1829, __ F.4th __, 2023 WL 3115579 (Fed. Cir. April 27, 2023). The Federal Circuit affirmed
`the Commission’s determination that Nortek infringed the ʼ223 patent but vacated and remanded
`the Commission’s determination that Nortek did not infringe the ʼ404 patent based on the
`Court’s construction of the claim term “movable barrier operator.” Id. at *1, *7-8. The Federal
`Circuit also vacated and remanded the Commission’s determination regarding the now-expired
`ʼ052 patent, with directions to dismiss the infringement claim as moot. Id. at *1, *4. The
`Federal Circuit issued its mandate on July 19, 2023, returning jurisdiction to the Commission for
`the remanded issues.
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`On August 4, 2023, the Commission issued a notice soliciting written submissions from
`Chamberlain and Nortek on proceedings to be conducted on remand. Comm’n Notice (Aug. 4,
`2023). On August 14, 2023, Chamberlain and Nortek submitted their initial responses to the
`Commission’s notice. On August 21, 2023, the parties submitted their respective replies.
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`Having reviewed the parties’ submissions and the record below, including the ID and
`Remand ID, the Commission has determined to remand the investigation to the presiding ALJ
`for an ID on whether Chamberlain has satisfied the economic prong of the domestic industry
`requirement with regard to articles protected by the ʼ404 patent in view of the Court’s decision.
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`The Commission has further determined to request written submissions from the parties
`on whether claim 11 of the ʼ404 patent is infringed (see Chamberlain, 2023 WL 3115579 at *5-
`7) and whether the ID errs in finding claim 11 is not patent-ineligible under 35 U.S.C. § 101.
`The Commission further finds the parties’ dispute over sanctions to be moot, and that no action
`is required at this time with respect to Nortek’s prospective motion for return of bond.
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`The Commission has also determined to dismiss the infringement claim and vacate all
`other findings with respect to the ʼ052 patent as moot, as directed by the Federal Circuit. See
`Chamberlain, 2013 WL 3115579 at *1.
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`WRITTEN SUBMISSIONS: The parties to the investigation are requested to file written
`submissions regarding the following issues on remand: (i) whether Nortek infringes claim 11 of
`the ʼ404 patent, in view of the Federal Circuit’s opinion and (ii) whether the final ID correctly
`finds that claim 11 of the ʼ404 patent is not patent-ineligible under 35 U.S.C. § 101. All
`responses must be based on the present evidentiary record; no new evidentiary material may be
`submitted without authorization from the Commission.
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`Opening submissions may be no longer than 25 pages and must be filed no later than the
`close of business on October 27, 2023. Reply submissions may be no longer than 20 pages and
`must be filed no later than the close of business on November 10, 2023. No further submissions
`on these issues will be permitted unless ordered by the Commission.
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`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 (March 19, 2020). Submissions should refer to the
`investigation number (Inv. No. 337-TA-1118) in a prominent place on the cover page 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 at (202) 205-2000.
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`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.
`A redacted non-confidential version of the document must also be filed simultaneously with any
`confidential filing. All information, including confidential business information and documents
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`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.
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`The Commission voted to approve this determination on October 4, 2023.
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`The authority for the Commission’s determinations 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).
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`By order of the Commission.
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`Lisa R. Barton
`Secretary to the Commission
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`Issued: October 4, 2023
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`CERTAIN MOVABLE BARRIER OPERATOR SYSTEMS
`AND COMPONENTS THEREOF
`
`Inv. No. 337-TA-1118
`(Remand)
`
`PUBLIC CERTIFICATE OF SERVICE
`
`I, Lisa R. Barton, hereby certify that the attached NOTICE has been served upon the
`following parties as indicated, on October 4, 2023.
`
`Lisa R. Barton, Secretary
`U.S. International Trade Commission
`500 E Street, SW, Room 112
`Washington, DC 20436
`
`On Behalf of The Chamberlain Group, Inc.:
`
`David C. Marcus, Esq.
`WILMER CUTLER PICKERING HALE AND DORR LLP
`350 South Grand Avenue, Suite 2400
`Los Angeles, CA 90071
`Email: David.marcus@wilmerhale.com
`
`On Behalf of Nortek, Inc., Nortek Security & Control, LLC
`f/k/a Linear, LLC, and GTO Access Systems LLC. f/k/a Gates
`That Open, LLC:
`
`Matthew C. Bernstein, Esq.
`PERKINS COIE LLP
`11452 El Camino Real, Suite 300
`San Diego, CA 92130
`Email: MBernstein@perkinscoie.com
`
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