[Federal Register Volume 84, Number 247 (Thursday, December 26, 2019)]
[Notices]
[Pages 70999-71000]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2019-27759]
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INTERNATIONAL TRADE COMMISSION
[Investigation No. 337-TA-1068]
Certain Microfluidic Devices; Notice of the Commission's Final
Determination Finding a Violation of Section 337; Issuance of a Limited
Exclusion Order and Cease and Desist Order; Termination of the
Investigation
AGENCY: U.S. International Trade Commission.
ACTION: Notice.
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SUMMARY: Notice is hereby given that the U.S. International Trade
Commission (``Commission'') has found a violation of section 337 in the
above-captioned investigation. The Commission has determined to issue
tailored remedial orders that permit researchers to continue their work
in ongoing research projects using the infringing microfluidic devices
as explained in the accompanying opinion. These remedial orders
include: (1) A limited exclusion order (``LEO'') prohibiting the
unlicensed entry of infringing microfluidic devices covered by certain
claims of U.S. Patent Nos. 9,500,664 (``the '664 patent''); 9,636,682
(``the '682 patent''); and 9,649,635 (``the '635 patent'') that are
manufactured abroad for or on behalf of, or imported by or on behalf of
10X Genomics, Inc. of Pleasanton, California (``10X'') or any of its
affiliated companies, parents, subsidiaries, or other related business
entities, or its successors or assigns; and (2) a cease and desist
order (``CDO'') directed against 10X and its affiliated companies,
parents, subsidiaries, or other related business entities, or its
successors or assigns. This investigation is terminated.
FOR FURTHER INFORMATION CONTACT: Ron Traud, Office of the General
Counsel, U.S. International Trade Commission, 500 E Street SW,
Washington, DC 20436, telephone 202-205-3427. Copies of non-
confidential documents filed in connection with this investigation are
or will be available for inspection during official business hours
(8:45 a.m. to 5:15 p.m.) in the Office of the Secretary, U.S.
International Trade Commission, 500 E Street SW, Washington, DC 20436,
telephone 202-205-2000. General information concerning the Commission
may also be obtained by accessing its internet server at https://www.usitc.gov. The public record for this investigation may be viewed
on the Commission's electronic docket (``EDIS'') at https://edis.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.
SUPPLEMENTARY INFORMATION: On September 6, 2017, the Commission
instituted this investigation based on a complaint filed by Bio-Rad
Laboratories, Inc. of Hercules, California; and Lawrence Livermore
National Security, LLC of Livermore, California. 82 FR 42115 (Sept. 6,
2017). The complaint (and supplement thereto) alleges violations of
section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337
(``section 337'') based upon the importation into the United States,
the sale for importation, or the sale within the United States after
importation of certain microfluidic devices by reason of infringement
of one or more claims of the '664 patent, the '682 patent, the '635
patent, and U.S. Patent Nos. 9,089,844 (``the '844 patent'') and
9,126,160 (``the '160 patent). Id. The Commission's notice of
investigation named as the sole respondent 10X. Id. The Office of
Unfair Import Investigations was also named as a party to this
investigation. Id.
Prior to the issuance of the final initial determination (``ID'')
by the presiding administrative law judge (the ``ALJ''), the
investigation was terminated as to the '844 patent in its entirety and
as to certain claims of the '160, '664, '682, and '635 patents. See
Order No. 12, unreviewed, Notice (Mar. 6, 2018); Order No. 16,
unreviewed, Notice (Mar. 26, 2018); Order No. 19, unreviewed, Notice
(Apr. 16, 2018); Order No. 29, unreviewed, Notice (June 1, 2018). The
ALJ's final ID addressed the following claims: (i) Claim 20 of the '160
patent; (ii) claims 1, 2, 14, and 15 of the '664 patent; (iii) claims
14, 16, and 17 of the '682 patent; and (iv) claims 1, 13, 14, 16, and
21 of the '635 patent.
On September 20, 2018, the ALJ issued the final ID, which finds 10X
in violation of section 337 as to the remaining asserted claims of the
'664, '682 patent, and '635 patents. On September 28, 2018, the ALJ
issued her recommendations on remedy, bond, and the public interest.
The ALJ recommended that the Commission issue a limited exclusion order
directed to 10X's infringing products and a cease and desist order
directed to 10X. The ALJ also recommended a bond of 100 percent of
entered value during the
[[Page 71000]]
period of Presidential review. See 19 U.S.C. 1337(j)(3).
The private parties petitioned for the Commission to review certain
of the ALJ's determinations. On December 4, 2018, after considering the
parties' petitions and responses thereto, the Commission determined to
review the following issues:
(1) Whether 10X indirectly infringes the '682 and '635 patents;
(2) Whether 10X's Chip GB infringes claims 1 and 14 of the '664
patent; and
(3) Whether 10X's Chip SE infringes claim 20 of the '160 patent and
claim 1 of the '664 patent.
83 FR 63672 (Dec. 11, 2018). The Commission thereafter requested
briefing only on remedy, the public interest, and bonding.
On June 10, 2019, the Commission requested supplemental briefing on
the public interest. 84 FR 27802 (June 14, 2019); 84 FR 31912 (July 3,
2019) (modifying briefing schedule). Thereafter, the parties, members
of the public, and a government agency submitted public interest
briefing.
On review, and consistent with the simultaneously-issued Commission
opinion, the Commission has determined to affirm with modification the
final ID's finding of a violation of section 337 with respect to claims
1, 2, 14, and 15 of the '664 patent, claims 14, 16, and 17 of the '682
patent, and claims 1, 13, 14, 16, and 21 of the '635 patent.
The Commission has further determined that the public interest
factors enumerated in subsections (d)(l) and (f)(1) (19 U.S.C.
1337(d)(l), (f)(1)) do not preclude issuance of the above-referenced
remedial orders. However, the Commission has determined to tailor the
LEO and CDO to allow research studies using the infringing articles at
issue as of the date of issuance of the remedial orders to continue to
use those infringing articles.
The Commission has determined to impose a bond of three (3) percent
of entered value of the covered products during the period of
Presidential review (19 U.S.C. 1337(j)).
This investigation is terminated.
This action is taken under the authority of 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).
By order of the Commission.
Issued: December 18, 2019.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2019-27759 Filed 12-23-19; 8:45 am]
BILLING CODE 7020-02-P