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`UNITED STATES INTERNATIONAL TRADE COMMISSION
`Washington, D.C.
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`In the Matter of
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`CERTAIN RADIO FREQUENCY
`TRANSMISSION DEVICES AND
`COMPONENTS THEREOF
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`Investigation No. 337-TA-1278
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`NOTICE OF COMMISSION DECISION TO REVIEW IN PART AND,
`ON REVIEW, TO AFFIRM A FINAL INITIAL DETERMINATION FINDING
`NO VIOLATION OF SECTION 337; TERMINATION OF INVESTIGATION
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` U.S. International Trade Commission.
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`Notice.
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`AGENCY:
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`ACTION:
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`SUMMARY: Notice is hereby given that the U.S. International Trade Commission has
`determined to review in part a final initial determination (“FID”) of the presiding Chief
`Administrative Law Judge (“Chief ALJ”) finding no violation of section 337 of the Tariff Act of
`1930 (“section 337”), as amended, in this investigation. On review, the Commission affirms
`with modification the FID’s finding of no violation of section 337. The investigation is
`terminated.
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`FOR FURTHER INFORMATION CONTACT: Houda Morad, Office of the General
`Counsel, U.S. International Trade Commission, 500 E Street SW, Washington, DC 20436,
`telephone (202) 708-4716. 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 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 on (202) 205-1810.
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`SUPPLEMENTARY INFORMATION: On September 2, 2021, the Commission instituted
`this investigation under section 337 based on a complaint filed by Zebra Technologies
`Corporation of Lincolnshire, Illinois (“Complainant”). See 86 FR 49344-45 (Sept. 2, 2021). The
`complaint, as supplemented, alleges a violation of section 337 based upon the importation into
`the United States, the sale for importation, and the sale within the United States after importation
`of certain radio frequency transmission devices and components thereof by reason of
`infringement of claims 1, 3-8, 10, 11, and 13-16 of U.S. Patent No. 6,895,219 (“the ’219 patent”)
`and claims 17-19 of U.S. Patent No. 7,683,788 (“the ’788 patent”) (collectively, the “Asserted
`Patents”). See id. The notice of investigation names OnAsset Intelligence, Inc. of Irving, Texas
`(“Respondent”) as the respondent in the investigation. See id. The Office of Unfair Import
`Investigations is not a party to the investigation. See id.
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`On May 31, 2022, the Commission partially terminated the investigation as to claims 7,
`8, and 16 of the ’219 patent based on the withdrawal of the allegations in the complaint as to
`those claims. See Order No. 20 (May 2, 2022), unreviewed by Comm’n Notice (May 31, 2022).
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`On September 16, 2022, the Chief ALJ issued the FID finding no violation of section
`337. Specifically, the FID finds that Complainant failed to establish infringement of the
`Asserted Patents by the Respondent. The FID also finds that claims 17 and 18 (but not claim 19)
`of the ’788 patent are invalid as anticipated by U.S. Patent No. 7,193,504 (“Carrender I”) (RX-
`132). The FID further finds that the domestic industry requirement is satisfied with respect to
`the ’788 patent. The FID does not reach invalidity and the domestic industry requirement as to
`the ’219 patent.
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`The FID also includes a Recommended Determination (“RD”) recommending, should the
`Commission find a violation of section 337, that the Commission issue: (1) a limited exclusion
`order against radio frequency transmission devices and components thereof that are imported
`into the United States, sold for importation, or sold within the United States after importation by
`or on behalf of the Respondent; and (2) a cease and desist order against the Respondent. The RD
`further recommends that the Commission set no bond during the period of Presidential review.
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`On September 30, 2022, Complainant filed a petition for Commission review of the FID.
`As to the ’788 patent, Complainant requests Commission review with respect to the FID’s
`findings concerning: (1) claim construction; (2) non-infringement; (3) invalidity of claims 17
`and 18; and (4) contingently, the domestic industry findings as to one of Complainant’s domestic
`industry products. As to the ’219 patent, Complainant does not challenge the FID’s findings but
`requests vacatur of such findings in view of the impending expiration of that patent on January
`27, 2023.
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`On October 11, 2022, Respondent filed a response to Complainant’s petition. The parties
`did not file a statement on the public interest pursuant to Commission Rule 210.50 (19 CFR
`210.50). Nor has the Commission received any submission in response to its post-RD Federal
`Register notice. See 87 FR 65249-50 (Oct. 28, 2022).
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`Having examined the record of this investigation, including the FID and the parties’
`submissions, the Commission has determined to review the FID in part, and upon review, to
`affirm the FID’s determination of no violation of section 337. Specifically, as explained in the
`Commission Opinion issued concurrently herewith, the Commission has determined to review
`and, on review, to vacate the FID’s findings as to the ’219 patent in view of the expiration of that
`patent during the pendency of the investigation. As to the ’788 patent, the Commission has
`determined to review and, on review, to: (1) modify and supplement the FID’s claim
`construction findings with respect to the term “common reference frequency”; (2) affirm with
`modification the FID’s non-infringement findings; (3) affirm with modification the FID’s
`findings on the technical prong of the domestic industry requirement; (4) take no position as to
`the economic prong of the domestic industry requirement; and (5) reverse the FID’s invalidity
`findings over Carrender I. The Commission adopts all findings in the FID that are not
`inconsistent with the Commission’s determination.
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`The investigation is terminated.
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`The Commission’s vote for this determination took place on February 13, 2023.
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`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).
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`By order of the Commission.
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`Issued: February 13, 2023
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`Lisa R. Barton
`Secretary to the Commission
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