By John Presper

On November 9, 2021, ALJ Cameron Elliot issued the public version of Order No. 25 (dated November 1, 2021) denying Complainant EcoFactor, Inc.’s (“EcoFactor”) motion for summary determination of lack of jurisdiction over Respondent Google LLC’s (“Google”) alleged redesign that has not been imported in Certain Smart Thermostat Systems, Smart HVAC Systems, Smart HVAC Control Systems, and Components Thereof (Inv. No. 337-TA-1258).

By way of background, this investigation was instituted on March 30, 2021 based on a complaint by EcoFactor alleging violations of section 337 by nine respondents in the importation and/or sale of certain smart thermostat systems, smart HVAC systems, smart HVAC control systems, and components thereof that infringe one or more claims of U.S. Patent Nos. 8,423,322 (“the ’322 patent”); 8,019,567 (“the ’567 patent”); 10,612,983 (“the ’983 patent”); 8,596,550 (“the ’550 patent”); and 8,886,488 (“the ’488 patent”).  See our April 1, 2021 post for more details regarding the complaint and Notice of Investigation.

According to the order, EcoFactor argued that “Google has a planned redesign product … which has never been imported into the United States, and thus EcoFactor does not ‘have any basis on which to determine if any alleged redesign is ‘sufficiently fixed in design.’”  ALJ Elliot observed that the Commission’s test for determining whether a respondent has met its burden for adjudication of a redesigned product includes four factors: (1) whether the product is within the scope of the investigation; (2) whether it has been imported; (3) whether it is sufficiently fixed in design; and (4) whether it has been sufficiently disclosed by respondent during discovery (citing Certain Human Milk Oligosaccharides and Methods of Producing the Same, Inv. No. 337-TA-1120, Comm’n Op. at 18 (June 8, 2020)).  However, the ALJ noted the Commission’s “standing policy in favor of adjudicating redesigns to prevent subsequent and potentially burdensome proceedings that could have been resolved in the first instance in the original Commission investigation” and, despite factor (2) above, that “redesigns do not actually need to be imported at all” (citing Certain Television Sets, Television Receivers, Television Tuners, and Components Thereof, Inv. No. 337-TA-910, Order No. 46 at 29 (November 3, 2014)).  ALJ Elliot thus determined that whether Google’s alleged redesign has been imported is not dispositive, and further, that Google raised material issues of fact regarding (i) its planned importation of the alleged redesign, (ii) whether such product is sufficiently “fixed in design,” and (iii) whether Google produced sufficient evidence of the new design during discovery.  Accordingly, EcoFactor’s motion was denied.