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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`REMAND ORDER
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`The Commission instituted this investigation on June 11, 2018, based on a complaint, as
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`supplemented, filed by The Chamberlain Group, Inc. (“Chamberlain”) of Oak Brook, Illinois. 83
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`Fed. Reg. 27020-21 (June 11, 2018). The complaint alleged a violation of section 337 the Tariff
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`Act, as amended, 19 U.S.C. 1337 (“section 337”), by way of importation into the United States,
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`sale for importation, or sale in the United States after importation of certain movable barrier
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`operator systems and components thereof that allegedly infringe one or more of the asserted
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`claims of U.S. Patent Nos. 7,755,223 (“the ʼ223 patent”); 8,587,404 (“the ʼ404 patent”); and
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`6,741,052 (“the ʼ052 patent”). Id. The Commission’s notice of investigation named Nortek
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`Security & Control, LLC of Carlsbad, California; Nortek, Inc. of Providence, Rhode Island; and
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`GTO Access Systems, LLC of Tallahassee, Florida (collectively, “Nortek”) as respondents. Id.
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`The Office of Unfair Import Investigations did not participate in this investigation. See id.
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`On November 25, 2019, the presiding administrative law judge (“ALJ”) issued an initial
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`determination (“ID”) (Order No. 38) granting Chamberlain's motion for summary determination
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`that it satisfied the economic prong of the domestic industry requirement for all three patents at
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`issue. Order No. 38 (Nov. 25, 2019). On the same date, the ALJ issued the final ID, finding no
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`violation of section 337 because the asserted claims of the ʼ404 and ʼ223 patents were not
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`infringed and the asserted claim of the ʼ052 patent is invalid as obvious. ID at 286-87.
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`On February 19, 2020, the Commission determined to review Order No. 38 and the final
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`ID in part. 85 Fed. Reg. 10723-26 (Feb. 25, 2020). On April 22, 2020, the Commission issued a
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`final determination, adopting the ID’s findings of no violation with respect to the ʼ404 and ʼ052
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`patents. Comm’n Notice at 3 (April 22, 2020). The Commission, however, vacated Order No.
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`38 and remanded the economic prong issue to the ALJ with respect to the ʼ223 patent only, while
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`the Commission continued its analysis of the violation issues for that patent. Id.
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`On July 10, 2020, the ALJ issued a Remand Initial Determination (“Remand ID”),
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`finding that Chamberlain satisfied the economic prong of the domestic industry requirement for
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`the ʼ223 patent. Remand ID at 2 (July 10, 2020). The Remand ID found that Chamberlain’s
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`investments in plant and equipment and labor or capital were both quantitatively and
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`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 determined that Nortek violated section 337 by
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`way of infringing claims 1 and 21 of the ʼ223 patent. 85 Fed. Reg. 79217-18 (Dec. 9, 2020).
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`The Commission affirmed the Remand ID with a modified analysis of the economic prong and
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`issued a limited exclusion order and cease and desist order against each Nortek respondent with
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`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 asserted claim 11 of the ʼ404
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`patent is not infringed, and that asserted claim 1 of the ʼ052 patent is invalid. Nortek appealed
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`the Commission’s finding that asserted claims 1 and 21 of the ʼ223 patent are infringed. The
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`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
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`the issues on appeal in The Chamberlain Group, Inc. v. ITC, Appeal Nos. 2020-1965, 2021-
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`1829, __ F.4th __, 2023 WL 3115579 (Fed. Cir. April 27, 2023). The Federal Circuit affirmed
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`the Commission’s determination that Nortek infringed the ʼ223 patent but vacated and remanded
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`the Commission’s determination that Nortek did not infringe the ʼ404 patent based on the
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`Court’s construction of the claim term “movable barrier operator.” Id. at *1, *7-8. The Federal
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`Circuit also vacated and remanded the Commission’s determination regarding the now-expired
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`ʼ052 patent, with directions to dismiss the infringement claim as moot. Id. at *1, *4. The
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`Federal Circuit issued its mandate on July 19, 2023, returning jurisdiction to the Commission for
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`the remanded issues.
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`On August 4, 2023, the Commission issued a notice soliciting written submissions from
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`Chamberlain and Nortek on proceedings to be conducted on remand. Comm’n Notice (Aug. 4,
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`2023). On August 14, 2023, Chamberlain and Nortek submitted their initial responses to the
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`Commission’s notice.1 On August 21, 2023, Chamberlain and Nortek submitted their replies.2
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`In accordance with the remand from the Federal Circuit, and on review of the record in
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`this investigation, including the ID, Remand ID, and the parties’ submissions, the Commission
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`has determined to remand to the presiding ALJ the issue of whether Chamberlain has satisfied
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`the economic prong of the domestic industry requirement with respect to articles protected by the
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`ʼ404 patent in view of the Court’s decision. The ALJ may take into consideration the factual
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`findings in the Remand ID, to the extent the domestic industry products and financial figures
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`relevant to analyzing the economic prong for articles protected by the ʼ223 patent may also be
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`1 See Complainant The Chamberlain Group, Inc.’s Response to the Commission’s Request for
`Written Submissions Pursuant to a Court Remand (Aug. 14, 2023) (“Chamberlain’s Br.”);
`Respondents’ Written Submission Concerning Proceedings to be Conducted on Remand (Aug.
`14, 2023) (“Nortek’s Br.”).
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`2 See Complainant The Chamberlain Group, Inc.’s Reply to Respondents’ Written Submission
`Concerning Proceedings to be Conducted on Remand (Aug. 21, 2023); Respondents’ Response
`to Complainant’s Written Submission Concerning Proceedings to be Conducted on Remand
`(Aug. 21, 2023).
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`3
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`relevant to articles protected by the ʼ404 patent. The Commission notes that both parties have
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`indicated that additional fact-finding should not be necessary to resolve this issue. See
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`Chamberlain’s Br. at 1, 7-8; Nortek’s Br. at 3-4. The Commission, however, leaves this issue,
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`including whether a reopening of the record for the taking of additional evidence is necessary, to
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`the ALJ’s discretion.
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`Upon consideration of this matter, the Commission hereby ORDERS that:
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`1)
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`2)
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`3)
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`4)
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`5)
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`The issue of whether Chamberlain has satisfied the economic prong with respect
`to the articles protected by the ʼ404 patent is remanded to the ALJ for a remand
`initial determination (“RID”) on this issue in view of the Court’s decision,
`including such proceedings as the ALJ may deem necessary to render the RID.
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`The ALJ shall issue the RID expeditiously, using such materials in the present
`evidentiary record and the previous Remand ID regarding the ʼ223 patent as the
`ALJ deems relevant and appropriate.
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`The RID shall become final 45 days after issuance unless it is reviewed by the
`Commission.
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`Either Chamberlain or Nortek, or both, may petition the Commission to review
`the RID within ten (10) days after service of said RID. Any party may file a
`response to such petition(s) for review within five (5) business days after service
`of the petition(s) for review.
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`The Secretary shall serve a copy of this Order upon each of the Complainant and
`Respondents.
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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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`4
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`CERTAIN MOVABLE BARRIER OPERATOR SYSTEMS
`AND COMPONENTS THEREOF
`
`Inv. No. 337-TA-1118
`(Remand)
`
`PUBLIC CERTIFICATE OF SERVICE
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`I, Lisa R. Barton, hereby certify that the attached ORDER, COMMISSION has
`been served upon the following parties as indicated, on October 4, 2023.
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`Lisa R. Barton, Secretary
`U.S. International Trade Commission
`500 E Street, SW, Room 112
`Washington, DC 20436
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`On Behalf of The Chamberlain Group, Inc.:
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`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
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`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:
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`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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