UNITED STATES INTERNATIONAL TRADE COMMISSION
`Washington, D.C.
`
`
`
`In the Matter of
`CERTAIN WEARABLE ELECTRONIC
`DEVICES WITH ECG
`FUNCTIONALITY AND COMPONENTS
`THEREOF
`
`
`
`Investigation No. 337-TA-1266
`
`
`CEASE AND DESIST ORDER
`
`IT IS HEREBY ORDERED THAT Apple Inc., of Cupertino, California, cease and
`
`
`
`desist from conducting any of the following activities in the United States: importing, selling,
`
`offering for sale, marketing, advertising, distributing, transferring (except for exportation),
`
`soliciting United States agents or distributors, and aiding or abetting other entities in the
`
`importation, sale for importation, sale after importation, transfer (except for exportation), or
`
`distribution of wearable electronic devices with ECG functionality and components thereof that
`
`infringe one or more of claims 12, 13, and 19-23 of U.S. Patent No. 10,638,941 (“the ’941
`
`patent”); and claims 1, 3, 5, 8-10, 12, 15, and 16 of U.S. Patent No. 10,595,731 (“the ’731
`
`patent”) (collectively, the “Asserted Patents”) in violation of section 337 of the Tariff Act of
`
`1930, as amended (19 U.S.C. § 1337).
`
`I.
`Definitions
`
`As used in this Order:
`
`(A)
`
`“Commission” shall mean the United States International Trade Commission.
`
`(B)
`
`“Complainant” shall mean AliveCor, Inc., of Mountain View, California.
`
`(C)
`
`“Respondent” shall mean Apple Inc., of Cupertino, California.
`
`
`Washington, D.C.
`
`
`
`In the Matter of
`CERTAIN WEARABLE ELECTRONIC
`DEVICES WITH ECG
`FUNCTIONALITY AND COMPONENTS
`THEREOF
`
`
`
`Investigation No. 337-TA-1266
`
`
`CEASE AND DESIST ORDER
`
`IT IS HEREBY ORDERED THAT Apple Inc., of Cupertino, California, cease and
`
`
`
`desist from conducting any of the following activities in the United States: importing, selling,
`
`offering for sale, marketing, advertising, distributing, transferring (except for exportation),
`
`soliciting United States agents or distributors, and aiding or abetting other entities in the
`
`importation, sale for importation, sale after importation, transfer (except for exportation), or
`
`distribution of wearable electronic devices with ECG functionality and components thereof that
`
`infringe one or more of claims 12, 13, and 19-23 of U.S. Patent No. 10,638,941 (“the ’941
`
`patent”); and claims 1, 3, 5, 8-10, 12, 15, and 16 of U.S. Patent No. 10,595,731 (“the ’731
`
`patent”) (collectively, the “Asserted Patents”) in violation of section 337 of the Tariff Act of
`
`1930, as amended (19 U.S.C. § 1337).
`
`I.
`Definitions
`
`As used in this Order:
`
`(A)
`
`“Commission” shall mean the United States International Trade Commission.
`
`(B)
`
`“Complainant” shall mean AliveCor, Inc., of Mountain View, California.
`
`(C)
`
`“Respondent” shall mean Apple Inc., of Cupertino, California.
`
`
`
`
`
`(D)
`
`“Person” shall mean an individual, or any non-governmental partnership, firm,
`
`association, corporation, or other legal or business entity other than Respondent or
`
`its majority-owned or controlled subsidiaries, successors, or assigns.
`
`(E)
`
`“United States” shall mean the fifty States, the District of Columbia, and Puerto
`
`Rico.
`
`(F)
`
`The terms “import” and “importation” refer to importation for entry for
`
`consumption under the Customs laws of the United States.
`
`(G)
`
`The term “covered products” shall mean Certain Wearable Electronic Devices
`
`with ECG Functionality and Components Thereof that infringe one or more of
`
`claims 12, 13, and 19-23 of the ’941 patent; and claims 1, 3, 5, 8-10, 12, 15, and
`
`16 of the ’731 patent. The Certain Wearable Electronic Devices with ECG
`
`Functionality and Components Thereof subject to this order are as follows: Apple
`
`Watches with ECG functionality, and hardware and software components thereof.
`
`Covered products shall not include articles for which a provision of law or license
`
`avoids liability for infringement.
`
`II.
`Applicability
`
`The provisions of this Cease and Desist Order shall apply to the Respondent and to any of
`
`its principals, stockholders, officers, directors, employees, agents, distributors, controlled
`
`(whether by stock ownership or otherwise) and majority-owned business entities, successors, and
`
`assigns, and to each of them, insofar as they are engaging in conduct prohibited by section III,
`
`infra, for, with, or otherwise on behalf of, Respondent.
`
`
`
`
`
`2
`
`
`
`
`
`III.
`Conduct Prohibited
`
`The following conduct of Respondent in the United States is prohibited by this Order.
`
`For the remaining terms of the Asserted Patents, Respondent shall not:
`
`(A)
`
`import or sell for importation into the United States covered products;
`
`(B) market, distribute, sell, offer to sell, or otherwise transfer (except for exportation)
`
`(C)
`
`(D)
`
`(E)
`
`in the United States imported covered products;
`
`advertise imported covered products;
`
`solicit U.S. agents or distributors for imported covered products; or
`
`aid or abet other entities in the importation, sale for importation, sale after
`
`importation, transfer (except for exportation), or distribution of covered products.
`
`IV.
`Conduct Permitted
`
`Notwithstanding any other provision of this Order, specific conduct otherwise prohibited
`
`by the terms of this order shall be permitted:
`
`(A)
`
`service, repair, or replacement of wearable electronic devices with ECG
`
`functionality that were imported prior to the effective date of this Order pursuant
`
`to existing service and warranty contracts,
`
`(B)
`
`if in a written instrument, the owner of the ’941 and ’731 patents licenses or
`
`authorizes such specific conduct, or
`
`(C)
`
`if such specific conduct is related to the importation or sale of covered products
`
`by or for the United States.
`
`
`
`3
`
`
`
`
`
`The enforcement of this Order, including the bond provision, is suspended pending final
`
`resolution of the U.S. Patent and Trademark Office, Patent Trial and Appeal Board’s Final
`
`Written Decisions finding the asserted patent claims unpatentable. See Apple, Inc. v. AliveCor,
`
`Inc., IPR2021-00971, Patent 10,595,731, Final Written Decision Determining All Challenged
`
`Claims Unpatentable (Dec. 6, 2022); Apple, Inc. v. AliveCor, Inc., IPR2021-00972, Patent
`
`10,638,941, Final Written Decision Determining All Challenged Claims Unpatentable (Dec. 6,
`
`2022). See 35 U.S.C. § 318(b).
`
`V.
`Reporting
`
`For purposes of this requirement, the reporting periods shall commence on July 1 of each
`
`year and shall end on the subsequent June 30. The first report required under this section shall
`
`cover the period from the date of issuance of this order through June 30, 2023. This reporting
`
`requirement shall continue in force until such time as Respondent has truthfully reported, in two
`
`consecutive timely filed reports, that it has no inventory of covered products in the United States.
`
`Within thirty (30) days of the last day of the reporting period, Respondent shall report to
`
`the Commission (a) the quantity in units and the value in dollars of covered products that it has
`
`(i) imported and/or (ii) sold in the United States after importation during the reporting period,
`
`and (b) the quantity in units and value in dollars of reported covered products that remain in
`
`inventory in the United States at the end of the reporting period.
`
`When filing written submissions, Respondent must file the original document
`
`electronically on or before the deadlines stated above. Submissions should refer to the
`
`investigation number (“Inv. No. 337-TA-1266”) in a prominent place on the cover pages and/or
`
`the first page. (See Handbook for Electronic Filing Procedures,
`
`
`
`4
`
`
`
`
`
`http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf).
`
`Persons with questions regarding filing should contact the Secretary (202-205-2000). If
`
`Respondent desires to submit a document to the Commission in confidence, it must file the
`
`original and a public version of the original with the Office of the Secretary and must serve a
`
`copy of the confidential version on Complainant’s counsel.1
`
`Any failure to make the required report or the filing of any false or inaccurate report shall
`
`constitute a violation of this Order, and the submission of a false or inaccurate report may be
`
`referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001.
`
`VI.
`Record-Keeping and Inspection
`
`(A)
`
`For the purpose of securing compliance with this Order, Respondent shall retain
`
`any and all records relating to the sale, marketing, or distribution in the United
`
`States of covered products, made and received in the usual and ordinary course of
`
`business, whether in detail or in summary form, for a period of three (3) years
`
`from the close of the fiscal year to which they pertain.
`
`(B)
`
`For the purposes of determining or securing compliance with this Order and for
`
`no other purpose, subject to any privilege recognized by the federal courts of the
`
`United States, and upon reasonable written notice by the Commission or its staff,
`
`duly authorized representatives of the Commission shall be permitted access and
`
`the right to inspect and copy, in Respondent’s principal offices during office
`
`
`
`1 Complainant must file a letter with the Secretary identifying the attorney to receive
`reports and bond information associated with this Order. The designated attorney must be on the
`protective order entered in the investigation.
`
`5
`
`
`
`
`
`
`
`hours, and in the presence of counsel or other representatives if Respondent so
`
`chooses, all books, ledgers, accounts, correspondence, memoranda, and other
`
`records and documents, in detail and in summary form, that must be retained
`
`under subparagraph VI(A) of this Order.
`
`
`VII.
`Service of Cease and Desist Order
`
`The Secretary shall serve copies of this Order upon each party of record in this
`
`investigation that has retained counsel or otherwise provided a point of contact for electronic
`
`service.
`
`Respondent is ordered and directed to:
`
`(A)
`
`Serve, within fifteen days after the effective date of this Order, a copy of this
`
`Order upon each of its respective officers, directors, managing agents, agents, and
`
`employees who have any responsibility for the importation, marketing,
`
`distribution, or sale of imported covered products in the United States;
`
`(B)
`
`Serve, within fifteen days after the succession of any persons referred to in
`
`subparagraph VII(A) of this order, a copy of the Order upon each successor; and
`
`(C) Maintain such records as will show the name, title, and address of each person
`
`upon whom the Order has been served, as described in subparagraphs VII(A) and
`
`VII(B) of this Order, together with the date on which service was made.
`
`The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until
`
`the expiration dates of the Asserted Patents.
`
`
`
`6
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`
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`
`
`VIII.
`Confidentiality
`
`Any request for confidential treatment of information obtained by the Commission
`
`pursuant to Section VI of this Order should be made in accordance with section 201.6 of the
`
`Commission's Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
`
`confidential treatment is sought, Respondent must provide a public version of such report with
`
`confidential information redacted.
`
`IX.
`Enforcement
`
`Violation of this Order may result in any of the actions specified in section 210.75 of the
`
`Commission's Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for civil
`
`penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as any
`
`other action that the Commission deems appropriate. In determining whether Respondent is in
`
`violation of this Order, the Commission may infer facts adverse to Respondent if it fails to
`
`provide adequate or timely information.
`
`X.
`Modification
`
`The Commission may amend this Order on its own motion or in accordance with the
`
`procedure described in section 210.76 of the Commission's Rules of Practice and Procedure (19
`
`C.F.R. § 210.76).
`
`XI.
`Bonding
`
`The conduct prohibited by Section III of this Order may be continued during the sixty
`
`(60) day period in which this Order is under review by the United States Trade Representative,
`
`as delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent
`
`
`
`7
`
`
`
`
`
`posting of a bond in the amount of $2 per unit of the covered products. This bond provision does
`
`not apply to conduct that is otherwise permitted by Section IV of this Order. Covered products
`
`imported on or after the date of issuance of this Order are subject to the entry bond set forth in
`
`the exclusion order issued by the Commission, and are not subject to this bond provision.
`
`The bond is to be posted in accordance with the procedures established by the
`
`Commission for the posting of bonds by complainants in connection with the issuance of
`
`temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying
`
`documentation are to be provided to and approved by the Commission prior to the
`
`commencement of conduct that is otherwise prohibited by section III of this Order. Upon the
`
`Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all
`
`parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on
`
`Complainant’s counsel.2
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`The bond is to be forfeited in the event that the United States Trade Representative
`
`approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court
`
`of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final
`
`determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the
`
`products subject to this bond and provides certification to that effect that is satisfactory to the
`
`Commission.
`
`This bond is to be released in the event (i) the United States Trade Representative
`
`disapproves this Order and no subsequent order is issued by the Commission and approved (or
`
`not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for
`
`
`
`8
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`2 See Footnote 1.
`
`
`
`
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`
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`the Federal Circuit, in a final judgment, reverses any Commission final determination and order
`
`as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this
`
`bond and provides certification to that effect that is satisfactory to the Commission, upon service
`
`on Respondent of an order issued by the Commission based upon application therefor made by
`
`Respondent to the Commission.
`
`By order of the Commission.
`
`Issued: December 22, 2022
`
`
` Katherine M. Hiner
` Acting Secretary to the Commission
`
`
`
`
`
`9
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`
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