Customs Ruling HQ H330951 - Ruling Request; U.S. International Trade Commission; Limited Exclusion Order; Investigation No. 337-TA-1265; Certain Fitness Devices, Streaming Components Thereof, and Systems Containing Same

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HQ H330951
Jun 30, 2023

Type : 19 U.S.C. § 1337; Unfair Competition • HTSUS :

OT:RR:BSTC:EOE H330951 WMW

Mr. David A. Hickerson
Foley & Lardner LLP
3000 K Street, N.W., Suite 600
Washington, DC 20007

VIA EMAIL: [email protected]

RE: Ruling Request; U.S. International Trade Commission; Limited Exclusion Order; Investigation No. 337-TA-1265; Certain Fitness Devices, Streaming Components Thereof, and Systems Containing Same

Dear Mr. Hickerson:

Pursuant to 19 C.F.R. Part 177, the Exclusion Order Enforcement Branch (“EOE Branch”), Regulations and Rulings, U.S. Customs and Border Protection (“CBP”) issues this ruling letter. We find that ICON Health & Fitness, Inc., FreeMotion Fitness, Inc., and NordicTrack Inc. (collectively, “iFIT”) has met its burden to show that certain redesigned fitness devices (“articles at issue” or “Redesign”) do not infringe one or more of claims 1, 2 and 4 of U.S. Patent No. 10,757,156 (“the ’156 patent”); claims 16, 17, and 20 of U.S. Patent No. 10,469,554 (“the ’554 patent”); or claims 10, 11, 14, and 15 of U.S. Patent No. 10,469,555 (“the ’555 patent”) (collectively, “patents at issue”). Thus, CBP’s position is that the articles at issue are not subject to the limited exclusion order issued by the U.S. International Trade Commission (“Commission” or “ITC”) in Investigation No. 337-TA-1265 (“the underlying investigation” or “the 1265 investigation”), pursuant to section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337 (“section 337”), as provided in this ruling. We further note that determinations of the Commission resulting from the underlying investigation or a related proceeding under 19 C.F.R. Part 210 are binding authority on CBP and, in the case of conflict, will by operation of law modify or revoke any contrary CBP ruling or decision regarding application of an exclusion order under section 337. This ruling letter is the result of a request for an administrative ruling from CBP under 19 C.F.R. Part 177, which was conducted on an inter partes basis. The process involved the two parties with a direct and demonstrable interest in the question presented by the ruling request: (1) your client, iFIT, the ruling requester and respondent in the 1265 investigation; and (2) DISH DBS Corporation, DISH Technologies, LLC, and Sling TV LLC (“collectively, “DISH”), complainant in the 1265 investigation. See, e.g., 19 C.F.R. § 177.1(c).

The parties were asked to clearly identify confidential information, including information subject to the administrative protective order in the underlying investigation, with [[red brackets]] in all of their submissions to CBP. See 19 C.F.R. §§ 177.2, 177.8. If there is information in this ruling letter not currently bracketed in red [[ ]] that either party believes constitutes confidential information that should be redacted from the published ruling, then the parties are directed to contact CBP within ten (10) working days of the date of this ruling letter. See, e.g., 19 C.F.R. § 177.8(a)(3).

Please note that disclosure of information related to administrative rulings under 19 C.F.R. Part 177 is governed by, for example, 6 C.F.R. Part 5, 31 C.F.R. Part 1, 19 C.F.R. Part 103, and 19 C.F.R. § 177.8(a)(3). See, e.g., 19 C.F.R. § 177.10(a). In addition, CBP is guided by the laws relating to confidentiality and disclosure, such as the Freedom of Information Act (“FOIA”), as amended (5 U.S.C. § 552), the Trade Secrets Act (18 U.S.C. § 1905), and the Privacy Act of 1974, as amended (5 U.S.C. § 552a). A request for confidential treatment of information submitted in connection with a ruling requested under 19 C.F.R. Part 177 faces a strong presumption in favor of disclosure. See, e.g., 19 C.F.R. § 177.8(a)(3). The person seeking this treatment must overcome that presumption with a request that is appropriately tailored and supported by evidence establishing that: the information in question is customarily kept private or closely-held and either that the government provided an express or implied assurance of confidentiality when the information was shared with the government or there were no express or implied indications at the time the information was submitted that the government would publicly disclose the information. See Food Marketing Institute v. Argus Leader Media, 588 U. S. ___, ___, 139 S. Ct. 2356, 2366 (2019) (concluding that “[a]t least where commercial or financial information is both customarily and actually treated as private by its owner and provided to the government under an assurance of privacy, the information is ‘confidential’ within the meaning of exemption 4.”); see also, e.g., U.S. Department of Justice, Office of Information Policy: Step-by-Step Guide for Determining if Commercial or Financial Information Obtained from a Person is Confidential Under Exemption 4 of the FOIA (updated 10/7/2019) and OIP Guidance: Exemption 4 after the Supreme Court’s Ruling in Food Marketing Institute v. Argus Leader Media (updated 10/4/2019).

BACKGROUND

ITC Investigation No. 337-TA-1265

Procedural History at the ITC

The Commission instituted Investigation No. 337-TA-1265 on May 19, 2021, based on a complaint filed by DISH. Certain Fitness Devices, Streaming Components Thereof, and Systems Containing Same, Inv. No. 337-TA-1265, EDIS Doc. ID 792088, Public Commission Opinion (Mar. 8, 2023) (“Comm’n Op.”) at 2 (citing 86 Fed. Reg. 27106-07 (May 19, 2021)). The complaint, as supplemented, alleged a violation of section 337 by reason of infringement of certain claims of U.S. Patent Nos. 10,951,689; 9,407,564; the ‘554 patent; the ‘555 patent; the ‘156 patent. Comm’n Op. at 2. The notice of investigation named iFIT, among other parties, as a respondent. Id. at 3. The Commission’s Office of Unfair Import Investigations was named as a party in the investigation. Comm’n Op. at 3.

On September 9, 2022, the Administrative Law Judge (“ALJ”) issued a final initial determination (“FID”). Id. at 4. Specifically, the ALJ determined that a violation of section 337 occurred in the importation into the United States, the sale for importation, or the sale within the United States after importation, of the accused products that infringe claims 1 and 3-5 of the ’564 patent; claims 1, 2, 4 and 5 of the ’156 patent; and claims 16, 17, and 20 of the ’554 patent; and claims 10, 11, 14, and 15 of the ’555 patent. Id. at 5.

On November 18, 2022, the Commission determined to review the FID in part and requested briefing remedy, bonding, and the public interest. Id. at 6 (citing 87 Fed. Reg. 72510-13 (November 18, 2022)). The Commission, in its review of the ID, found a violation of section 337 by iFIT with respect to claims 16, 17 and 20 of the ’554 patent; claims 10, 11, 14, and 15 of the ‘555 patent; claims 1, 2, and 4 of the ’156 patent. Id. at 33. Furthermore, the Commission determined that the appropriate remedy was a limited exclusion order and cease and desist order directed to iFIT. Id. at 93.

In the limited exclusion order, the Commission ordered that “certain fitness devices, streaming components thereof, and systems containing the same (as defined in paragraph 2 below) that infringe one or more of claims 16, 17, and 20 of the ’554 patent; claims 10, 11, 14, and 15 of the ’555 patent; claims 1, 2, and 4 of the ’156 patent are excluded from entry for consumption into the United States, entry for consumption from a foreign-trade zone, or withdrawal from a warehouse for consumption, for the remaining terms of the Asserted Patents, except under license from, or with the permission of, the patent owner or as provided by law.” Certain Fitness Devices, Streaming Components Thereof, and Systems Containing Same, Inv. No. 337-TA-1265, EDIS Doc. ID 792086, Limited Exclusion Order (March 8, 2023) at 2 (“1265 LEO”). In paragraph 2, the Commission further defined the articles covered by the limited exclusion order as “fitness devices containing Internet-streaming enabled video displays that are capable of using adaptive bit-rate streaming to stream content, Internet-streaming enabled video displays that are capable of using adaptive bit-rate streaming to stream content and that are designed to be incorporated with fitness devices, and components thereof.” Id.

The Patents and Claims in the 1265 LEO

The 1265 LEO prohibits the unlicensed entry for consumption of certain fitness devices, streaming components thereof, and systems containing the same that infringe one or more of claims 16, 17, and 20 of the ’554 patent; claims 10, 11, 14, and 15 of the ’555 patent; claims 1, 2, and 4 of the ’156 patent. See 1265 LEO at 2. Claim 16 of the ‘554, claim 10 of the ‘555 patent, and claim 1 of the ‘156 are the only independent claims.

Claim 16 of the ’554 Patent

Claim 16 of the ’554 patent is reproduced below:

16. An end user station to stream a live event video over a network from a server for playback of the video, the content player device comprising:

a processor;

a digital processing apparatus memory device comprising non-transitory machine-readable instructions that, when executed, cause the processor to:

establish one or more network connections between the end user station and the server, wherein the server is configured to access at least one of a plurality of groups of streamlets;

wherein the live event video is encoded at a plurality of different bitrates to create a plurality of streams including at least a low quality stream, a medium quality stream, and a high quality stream, each of the low quality stream, the medium quality stream, and the high quality stream comprising a group of streamlets encoded at the same respective one of the different bitrates, each group comprising at least first and second streamlets, each of the streamlets corresponding to a portion of the live event video;

wherein at least one of the low quality stream, the medium quality stream, and the high quality stream is encoded at a bit rate of no less than 600 kbps; and

wherein the first streamlets of each of the low quality stream, the medium quality stream and the high quality stream each has an equal playback duration and each of the first streamlets encodes the same portion of the live event video at a different one of the different bitrates;

select a specific one of the low quality stream, the medium quality stream, and the high quality stream based upon a determination by the end user station to select a higher or lower bitrate version of the streams;

place a streamlet request to the server over the one or more network connections for tile first streamlet of the selected stream;

receive the requested first streamlet from the server via the one or more network connections;

and provide the received first streamlet for playback of the live event video.

‘554 patent at 20:3-48 (emphasis added).

Claim 10 of the ’555 Patent

Claim 10 of the ’555 patent is reproduced below:

1. A content player device to stream a video over a network from a server for playback of the video, the content player device comprising:

a processor;

a digital processing apparatus memory device comprising non-transitory machine-readable instructions that, when executed, cause the processor to:

establish one or more network connections between the client module and the server, wherein the server is configure to access at least one of a plurality of groups of streamlets;

wherein the video is encoded at a plurality of different bitrates to create a plurality of streams including at least a low quality stream, a medium quality stream, and a high quality stream, wherein each of the low quality, the medium quality stream, and the high quality stream comprises a streamlet that encodes the same portion of the video at a different one of the plurality of different bitrates;

wherein at least one of the low quality stream, medium quality stream, and high quality stream is encoded at a bit rate of no less than 600 kbps; and

wherein the streamlet encoding the same portion of the video in the low quality stream has an equal playback duration as the streamlet encoding the same portion of the video in the high quality stream;

select a specific one of the streams based upon a determination by the client module to select a higher or lower bitrate version of the streams;

place a streamlet request to the server over the one or more network connections for the selected stream;

receive the requested streamlets from the server via the one or more network connections; and

provide the received streamlets for playback of the video.

’555 patent at 19:45-20:15 (emphasis added).

Claim 1 of the ’156 Patent

Claim 1 of the ’156 patent is reproduced below:

1. An apparatus for rendering a video that is adaptively received as a digital stream from a video server over a network, the apparatus comprising;

a media player operating on the apparatus, wherein the media player is configure to stream the video from the video server via at least one transmission control protocol (TCP) connection over the network, wherein the video server stores multiple different copies of the video encoded at different bit rates as multiple sets of streamlets, wherein each of the streamlets yields a different portion of the video on playback, wherein the streamlets across the different copies yield the same portions of the video on playback, and wherein the streamlets in the different copies are aligned in time such that the streamlets that play back the same portion of the video for the different copies each begin at the same playback time in relation to the beginning of the video, and wherein the media player streams the video by:

requesting sequential streamlets of one of the copies from the video server according to the playback times of the streamlets by transmitting hypertext transport protocol (HTTP) GET request that identify the selected streamlets stored by the video server, wherein the sequential streamlets are selected by the media player from the based upon successive determinations to shift the playback quality to a higher or lower quality one of the different copies of the video;

repeatedly generating, by the media player, a factor relating to the performance of the network that is indicative of an ability to sustain the streaming of the video;

adapting the successive determinations to shift the playback quality based on the factor to achieve continuous playback of the video using the streamlets of the highest quality copy of the video that is determined to be sustainable at that time; and

presenting the video for playback by providing the requested streamlets in order of ascending start time.

’156 patent at 13:51-14:22.

Patented Technology

During the underlying investigation, DISH and iFIT agreed that, as a general description, the relevant technology involves:

the delivery of video over networks such as the Internet using adaptive bitrate streaming. Streaming refers to technology that delivers audio/video content from a server to a client at a bitrate that allows the user to view the content contemporaneous with its receipt. The higher the bitrate of the video, the more data (in bits) it takes to represent and stream that video. The delivery of the content may be limited by the speed of the end-user’s network connection. The network speed can change during the course of content delivery resulting in buffering and stalling. Adaptive bitrate streaming systems may shift the bitrate of the audio/video content based on the network speed in an attempt to avoid stalling.

See FID at 5 (citing Joint Technology Stip. at 2 (Oct. 15, 2021), EDIS Doc. ID 754337).

Furthermore, the ALJ found that “the asserted patents relate to ‘adaptive bitrate’ streaming, which is a technique for delivering content, such as video, over the Internet. The adaptive bitrate streaming technology includes encoding the content file into at least three different ‘quality’ streams, as shown in Figure 2b of the ’564 patent, reproduced below:”

FID at 6 (internal citations removed).

The ALJ continued to describe the technology at issue by stating:

If the performance factor indicates that a higher-quality stream (comprised of higher-quality streamlets) can be used, for example, then the system shifts to the higher-quality stream. If the factor indicates that a higher-quality stream cannot be used, then the system determines whether it should shift to a lower-quality stream, and if so, the system shifts to a lower-quality stream (and requests lower-quality streamlets).

FID at 7 (internal citations removed).

Legacy iFIT Products Found to Infringe

DISH alleged that iFIT infringed certain claims of the asserted patents with respect to the following products:

Respondent(s) Representative Product Accused Product(s) iFit NordicTrack Commercial S15i running iFit application software available on April 13, 2021 NordicTrack Commercial S15i running iFit application software available on April 13, 2021 is representative, for the purposes of determining DISH’s allegations of infringement in this Investigation, of ProForm Vue, NordicTrack Vault (complete), NordicTrack Vault (standalone), ProForm Studio Bike Pro, ProForm Studio Bike Pro 22, FreeMotion r22.9, FreeMotion u22.9, FreeMotion Coachbike, NordicTrack Commercial S15i, NordicTrack Commercial S22i, NordicTrack Commercial VR25, NordicTrack Commercial R35, NordicTrack Commercial VU 19, NordicTrack Commercial VU 29, ProForm R10, NordicTrack RW600, NordicTrack RW700, NordicTrack RW900, ProForm Carbon T7, ProForm Carbon T10, ProForm Pro 2000, ProForm Pro 9000, ProForm Carbon E7, ProForm Pro E14, ProForm Carbon HIIT H7, ProForm Carbon HIIT H14, FreeMotion i22.9, FreeMotion t22.9, FreeMotion e22.9 Elliptical, NordicTrack X22i, NordicTrack X32i, NordicTrack Commercial 1750, NordicTrack Commercial 2450, NordicTrack Commercial 2950, NordicTrack EXP 7i, NordicTrack EXP 10i, NordicTrack T 6.5 Si, NordicTrack FS10i, NordicTrack FS14i, NordicTrack Commercial 9.9, NordicTrack Commercial 14.9, and NordicTrack SpaceSaver SE9iproducts running iFit application software available on April 13, 2021

See FID at 18 and 19.

The accused products found to infringe during the underlying investigation at the Commission included a variety of exercise equipment all of which utilized a protocol call HTTP Live Streaming (“HLS”) to stream video from servers to viewers. See FID at 20. HLS incorporates mechanisms to adapt to unreliable network conditions without causing user-visible playback stalling. Id. For example, on an unreliable wireless network, HLS allows transition to a lower quality video, reducing bandwidth usage. Id. HLS works by breaking a video stream into a sequence of small HTTP-based file downloads. Id. These streams are encoded at different bit rates. Id. The ability to switch between these streams is an integral part of the patents at issue in the 1265 LEO.

19 C.F.R. Part 177 Ruling Request

Procedural History

On March 24, 2023, iFIT submitted a request to CBP for an administrative ruling pursuant to 19 C.F.R. Part 177, which included ten attachments (collectively, “Ruling Request”). iFIT Email to EOE Branch, dated March 24, 2023. iFIT requested “a ruling that fitness devices that have been modified to be incapable of using adaptive bitrate streaming to stream content are outside the scope of the Limited Exclusion Order (‘LEO’) issued in ITC Investigation No. 337-TA-1265.” Ruling Request at 1.

On March 31, 2023, the EOE Branch had an initial conference call with iFIT and DISH, during which both parties agreed to the EOE Branch conducting this proceeding on an inter partes basis. The parties submitted a joint proposed procedural schedule on April 13, 2023. iFIT Email to EOE Branch, dated April 13, 2023. On April 13, 2023, after considering the party submission, the EOE Branch established the procedural schedule for this inter partes proceeding. See EOE Branch email to Parties, dated April 13, 2023. That procedural schedule is below:

Event Agreed Schedule

Deadline for DISH to file a substantive response to 177 request May 11, 2023 Deadline for iFIT to file a reply to DISH’s substantive response to 177 request May 18, 2023 Agreed extension of PRP to May 18, 2023 May 18, 2023 Deadline for DISH to file a sur-reply to iFIT’s reply to DISH’s substantive response to 177 request May 25, 2023 Oral Discussion before the EOE Branch June 1, 2023 Deadline for Parties to file post-oral discussion briefs June 8, 2023 Target Date for EOE Branch Ruling June 29, 2023 Potential extension of Target Date for EOE Branch Ruling July 6 - July 20, 2023 On May 11, 2023, DISH provided its response to the Ruling Request (“DISH Response”). On May 18, 2023, iFIT provided its reply to DISH’s Response (“iFIT Reply”). On May 21, 2023, DISH notified CBP that it believed that iFIT had included a fourth redesign which had not previously been described nor had the source code been provided. DISH email to EOE Branch, dated May 21, 2023. On May 22, 2023, the EOE Branch had a conference call with the parties to discuss the allegations raised in DISH’s May 21st email. Following the conference call, the EOE Branch sent an email maintaining the procedural schedule while providing for the discussion of any consequences based on the alleged “newly updated code” in the Sur-Reply. See EOE Branch email to Parties, dated May 22, 2023. Additionally, this email memorialized certain positions that the parties maintained during the conference call, namely:

First, the EOE Branch understands that DISH takes the position that the “newly updated code” is only relevant to the third redesign in iFIT’s ruling request. Second, the EOE Branch understands that iFIT takes the position that each of its redesigns are separate grounds for non-infringement and do not depend on each other.

EOE Branch email to Parties, dated May 22, 2023.

On May 25, 2023, DISH provided its sur-reply (“DISH Sur-Reply”) to iFIT’s Reply. On June 1, 2023, the EOE Branch conducted an oral discussion with the parties, for which both parties submitted presentations (respectively, “iFIT Oral Discussion Presentation” and “DISH Oral Discussion Presentation”). The parties provided post-oral discussion submissions on June 8, 2023 (respectively, “iFIT Post-Oral Discussion Submission” and “DISH Post-Oral Discussion Submission”).

The Articles at Issue

The articles at issue in the Ruling Request are fitness devices that iFIT contends have been modified to be incapable of using adaptive bitrate streaming. Ruling Request at 1. Specifically, iFIT has submitted three redesigns that concern modifications purported to remove the ability to perform adaptive bitrate streaming. The three redesigns are as follows: (1) modify the fitness devices to force video playback through non-adaptive bitrate streaming, (2) modify the servers only to provide a single bitrate quality stream to the fitness devices, and (3) modify the fitness devices as proposed in the first redesign and modify the servers as proposed in the second redesign. Ruling Request at 13-14.

iFIT states that each of the infringed claims at issue in the 1265 LEO requires the adaptation between multiple different copies of the same video available on a video server based on a determination to select a higher or lower bitrate version of the video. Id. at 15-16. Additionally, iFIT claims that each of the infringed claims requires multiple different copies of the same video for the devices to switch between. Id. at 17.

DISH responded to each redesign in its submissions to CBP. DISH contends that the modified products, as described in the first redesign, are substantially identical to the prior version of the software originally found to infringe by the ITC. See DISH Response at 14. DISH further states that the modified products described under the first redesign are still infringing because software need not be “active or enabled” in order to infringe system claims reciting “software elements” with capability language. Id. at 15. DISH additionally states that iFIT has not met the burden of showing that its products are not “reasonably capable of satisfying the claim limitations” of the asserted claims. Id. Lastly, regarding the first redesign, DISH states that the modified software is still performing the initial and subsequent selections of a stream from a plurality of steams meeting the plain requirements of the patents at issue. Id.

Regarding the second redesign, DISH claims that the client is still making a determination and as such meets the claim limitations of the patents at issue. Id. at 26. Furthermore, DISH states that the legacy software found to infringe would still be present in the unmodified client devices. Id. As for the third redesign, DISH states that the modification does not actually function or, as a combination of the two redesigns disputed above, still infringes the patents at issue. Id. at 33.

Additionally, with respect to Redesign 3, based on its technical review of the samples provided, DISH argues in its sur-reply that iFIT has sought to introduce a fourth redesign into this proceeding that was not disclosed in the initial ruling request. See DISH email to EOE Branch and iFIT, dated May 21, 2023. This version of the server modification, DISH alleges, sends a single bitrate stream to products that have not yet received the modification as described in Redesign (1) but sends a full manifest of multiple resolutions to products that have received the modification. See DISH Post-Oral Discussion Submission at 11. DISH believes this redesign is untimely and therefore should not considered as a part of this inter partes proceeding. Id. at 12.

ISSUE

Whether iFIT has met its burden to show that the articles at issue do not infringe the patents at issue, and thus are not subject to the general exclusion order issued in the 1265 investigation. See Ruling Request at 1.

LEGAL FRAMEWORK

Section 337 Exclusion Order Administration

The Commission shall investigate any alleged violation of section 337 to determine, with respect to each investigation conducted by it under this section, whether there is a violation of this section. See 19 U.S.C. § 1337(b)(1) and (c). If the Commission determines, as a result of an investigation under this section, that there is a violation of this section, it shall direct that the articles concerned, imported by any person violating the provision of this section, be excluded from entry into the United States unless the Commission finds based on consideration of the public interest that such articles should not be excluded from entry. See 19 U.S.C. § 1337(d)(1).

When the Commission determines that there is a violation of section 337, it generally issues one of two types of exclusion orders: (1) a limited exclusion order or (2) a general exclusion order. See Fuji Photo Film Co., Ltd. v. ITC, 474 F.3d 1281, 1286 (Fed. Cir. 2007). Both types of orders direct CBP to bar infringing products from entering the country. See Yingbin-Nature (Guangdong) Wood Indus. Co. v. ITC, 535 F.3d 1322, 1330 (Fed Cir. 2008). “A limited exclusion order is ‘limited’ in that it only applies to the specific parties before the Commission in the investigation. In contrast, a general exclusion order bars the importation of infringing products by everyone, regardless of whether they were respondents in the Commission's investigation.” Id. A general exclusion order is appropriate only if two exceptional circumstances apply. See Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1356. A general exclusion order may only be issued if (1) “necessary to prevent circumvention of a limited exclusion order,” or (2) “there is a pattern of violation of this section and it is difficult to identify the source of infringing products.” 19 U.S.C. § 1337(d)(2); see Kyocera, 545 F.3d at 1356 (“If a complainant wishes to obtain an exclusion order operative against articles of non-respondents, it must seek a GEO [general exclusion order] by satisfying the heightened burdens of §§ 1337(d)(2)(A) and (B).”).

In addition to the action taken above, the Commission may issue an order under 19 U.S.C. § 1337(i) directing CBP to seize and forfeit articles attempting entry in violation of an exclusion order if their owner, importer, or consignee previously had articles denied entry on the basis of that exclusion order and received notice that seizure and forfeiture would result from any future attempt to enter articles subject to the same. An exclusion order under § 1337(d)—either limited or general—and a seizure and forfeiture order under § 1337(i) apply at the border only and are operative against articles presented for customs examination or articles conditionally released from customs custody but still subject to a timely demand for redelivery. See 19 U.S.C. §§ 1337(d)(1) (“The Commission shall notify the Secretary of the Treasury of its action under this subsection directing such exclusion from entry, and upon receipt of such notice, the Secretary shall, through the proper officers, refuse such entry.”); id., at (i)(3) (“Upon the attempted entry of articles subject to an order issued under this subsection, the Secretary of the Treasury shall immediately notify all ports of entry of the attempted importation and shall identify the persons notified under paragraph (1)(C).”) (emphasis added).

Significantly, unlike district court injunctions, the Commission can issue a general exclusion order that broadly prohibits entry of articles that violate section 337 of the Tariff Act of 1930 without regard to whether the persons importing such articles were parties to, or were related to parties to, the investigation that led to issuance of the general exclusion order. See Vastfame Camera, Ltd. v. ITC, 386 F.3d 1108, 1114 (Fed. Cir. 2004). The Commission also has recognized that even limited exclusion orders have broader applicability beyond just the parties found to infringe during an investigation. See Certain GPS Devices and Products Containing Same, Inv. No. 337-TA-602, Comm’n Op. at 17, n.6, Doc ID 317981 (Jan. 2009) (“We do not view the Court’s opinion in Kyocera as affecting the issuance of LEOs [limited exclusion orders] that exclude infringing products made by respondents found to be violating Section 337, but imported by another entity. The exclusionary language in this regard that is traditionally included in LEOs is consistent with 19 U.S.C. § 1337(a)(1)(B)-(D) and 19 U.S.C. § 1337(d)(1).”).

Moreover, “[t]he Commission has consistently issued exclusion orders coextensive with the violation of section 337 found to exist.” See Certain Erasable Programmable Read Only Memories, Inv. No. 337-TA-276, Enforcement Proceeding, Comm’n Op. at 11, Doc ID 43536 (Aug. 1991) (emphasis added). “[W]hile individual models may be evaluated to determine importation and [violation], the Commission's jurisdiction extends to all models of [violative] products that are imported at the time of the Commission’s determination and to all such products that will be imported during the life of the remedial orders.” See Certain Optical Disk Controller Chips and Chipsets, Inv. No. 337-TA-506, Comm’n Op. at 56-57, USITC Pub. 3935, Doc ID 287263 (July 2007).

Lastly, despite the well-established principle that “the burden of proving infringement generally rests upon the patentee [or plaintiff],” Medtronic, Inc. v. Mirowski Family Ventures, LLC, 571 U.S. 191 (2014), the Commission has held that Medtronic is not controlling precedent and does not overturn its longstanding practice of placing the burden of proof on the party who, in light of the issued exclusion order, is seeking to have an article entered for consumption. See Certain Sleep-Disordered Breathing Treatment Systems and Components Thereof, Inv. No. 337-TA-879, Advisory Opinion at 6-11. In particular, the Commission has noted that “[t]he Federal Circuit has upheld a Commission remedy which effectively shifted the burden of proof on infringement issues to require a company seeking to import goods to prove that its product does not infringe, despite the fact that, in general, the burden of proof is on the patent to prove, by a preponderance of the evidence, that a given article does infringe. . . .” Certain Integrated Circuit Telecommunication Chips, Inv. No. 337-TA-337, Comm’n Op. at 21, n.14, USITC Pub. 2670, Doc ID 217024 (Aug. 1993), (emphasis in original) (citing Sealed Air Corp. v. ITC, 645 F.2d 976, 988-89 (C.C.P.A. 1981)).

This approach is supported by Federal Circuit precedent. See Hyundai Elecs. Indus. Co. v. ITC, 899 F.2d 1204, 1210 (Fed. Cir. 1990) (“Indeed, we have recognized, and Hyundai does not dispute, that in an appropriate case the Commission can impose a general exclusion order that binds parties and non-parties alike and effectively shifts to would-be importers of potentially infringing articles, as a condition of entry, the burden of establishing noninfringement. The rationale underlying the issuance of general exclusion orders—placing the risk of unfairness associated with a prophylactic order upon potential importers rather than American manufacturers that, vis-a-vis at least some foreign manufacturers and importers, have demonstrated their entitlement to protection from unfair trade practices—applies here [in regard to a limited exclusion order] with increased force.”) (emphasis added) (internal citation omitted).

Patent Infringement

Determining patent infringement requires two steps. Advanced Steel Recovery, LLC v. X-Body Equip., Inc., 808 F.3d 1313, 1316 (2015). The first is to construe the limitations of the asserted claims and the second is to compare the properly construed claims to the accused product. Id. To establish literal infringement, every limitation recited in a claim must be found in the accused product whereas, under the doctrine of equivalents, infringement occurs when there is equivalence between the elements of the accused product and the claimed elements of the patented invention. Microsoft Corp. v. GeoTag, Inc., 817 F.3d 1305, 1313 (Fed. Cir. 2016). One way to establish equivalence is by showing, on an element-by-element basis, that the accused product performs substantially the same function in substantially the same way with substantially the same result as each claim limitation of the patented invention, which is often referred to as the function-way-result test. See Intendis GmbH v. Glenmark Pharms., Inc., 822 F.3d 1355, 1361 (Fed. Cir. 2016).

As for the first step above, claim construction is a matter of law. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). However, it sometimes involves “evidentiary underpinnings” that require courts to resolve underlying factual disputes. See Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 331-32 (2015) (internal quotation marks omitted). For example, “when a written instrument uses ‘technical words or phrases not commonly understood,’” such words or terms may “give rise to a factual dispute,” and factual findings will “‘preced[e]’ the ‘function of construction.’” See id. at 837-38 (citing Great Northern R. Co. v. Merchants Elevator Co., 259 U.S. 285, 292 (1922)).

The words of a claim “are generally given their ordinary and customary meaning.” Vitronics Corp. v. Conceptronic, 90 F.3d 1576, 1582 (Fed. Cir. 1996). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Vitronics, 90 F.3d at 1580). “The standards for finding lexicography and disavowal are exacting.” Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014). “To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning.’” Thorner, 669 F.3d at 1365. In such cases, the patentee must “‘clearly express an intent’ to redefine the term.” Id. Regarding disavowal, “[w]here the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.” Id. at 1366 (citing Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001)) (internal quotation marks omitted).

The ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art at the time of the invention. See Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005). “In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges.” Id. at 1314. Claim construction in those cases requires “little more than the application of the widely accepted meaning of commonly understood words.” Id.

“Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Phillips, 415 F.3d at 1313. Such context constitutes intrinsic evidence which is necessary for claim construction. See id. at 1313-17. However, “there is sometimes a fine line between reading a claim in light of the specification, and reading a limitation into the claim from the specification.” Phillips, 415 F.3d at 1305 (citing Comark Communs., Inc. v. Harris Corp., 156 F.3d 1182, 1186-87 (Fed. Cir. 1998)) (internal quotation marks omitted). “To avoid importing limitations from the specification into the claims, it is important to keep in mind that the purposes of the specification are to teach and enable those of skill in the art to make and use the invention and to provide a best mode for doing so.” Id. at 1323. For example, even if “the only embodiments, or all of the embodiments, contain a particular limitation,” one may not use such limitation to “limit claims beyond their plain meaning.” See Evolusion Concepts, Inc. v. HOC Events, Inc., 22 F.4th 1361, 1367 (Fed. Cir. 2022).

In construing claim language, in addition to consulting the claims and specification of a patent, a court “should also consider the patent's prosecution history,” which is also considered intrinsic evidence. See Phillips, 415 F.3d at 1317 (citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995)) (internal quotation marks omitted). However, because the prosecution history represents an “ongoing negotiation between the PTO and the applicant,” it “often lacks the clarity of the specification” and is “less useful for claim construction purposes.” See id.

Where further clarification on the scope of the patented invention, claim meaning, or the underlying science of the claim meaning is required after reviewing the intrinsic record, a court may need to consult extrinsic evidence. See Phillips, 415 F.3d at 1317, 1319. However, since extrinsic evidence is generally less reliable than the intrinsic record, it may not be used to contradict a claim meaning that is “unambiguous in light of the intrinsic evidence.” See id. at 1318, 1324.

The second step to establish infringement involves a comparison of the claims, as properly construed, to the accused product, which is a question of fact. Apple Inc. v. Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1040 (Fed. Cir. 2016) (en banc).

LAW AND ANALYSIS

Redesign 1 (Modification of the Client Device to Only Allow Non-Adaptive Bitrate Streaming)

iFIT argues that the modification for the first redesign alters the ability of the client device to select a playback type, setting it permanently to “fixed,” and removes the ability to choose “hls” that the ITC found to infringe in the underlying investigation. See Ruling Request at 11. DISH responded with multiple arguments as to how the modification was not sufficient to avoid infringement. The first argument presented was that the modified client still contains the video player software (“ExoPlayer”) that contained the infringing functionality at issue before the ITC and that iFIT only modified its own code. See DISH Response at 16. iFIT responded to the argument by stating that the modification to its code nevertheless was effective in removing the ability for the client to use adaptive bit-rate streaming. See Reply at 5. Following this, DISH does not seem to have pursued this argument beyond its initial response to the ruling request.

The second argument made by DISH regarding the first redesign has to do with claim construction. The relevant claim limitations from the ‘554 patent and the ‘555 patent, respectively, are as follows:

select a specific one of the low quality stream, the medium quality stream, and the high quality stream based upon a determination by the end user station to select a higher or lower bitrate version of the streams

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select a specific one of the streams based upon a determination by the client module to select a higher or lower bitrate version of the streams

DISH argues that the selection of stream by the modified fitness device practices the patents and, in particular, satisfies the claim limitations above because at the initiation of playback the fitness device will select a specific stream. See DISH Post-Hearing Brief at 4. DISH contends that “adaptive” and “single fixed bitrate” are not mutually exclusive, such that a streaming device does not become “non-adaptive” simply because it selects a single bitrate stream. See DISH Sur-Reply at 8. For DISH, a fitness device “is ‘adaptive’ when it adapts to network conditions by selecting a ‘single fixed bitrate’ stream that is ‘higher’ or ‘lower’ based on those conditions[.]” Id. iFIT argues in response that during the pendency of the investigation, DISH and the Commission treated the asserted claims as having the capability to “shift” to a “higher or lower” bitrate during playback (i.e., that they required “adaptive bitrate” functionality). See iFIT Post-Oral Discussion Brief at 4. iFIT points to the Joint Technology Stipulation submitted by the parties to further support its point, which indicated that “[t]he network speed can change during the course of content delivery resulting in buffering and stalling. Adaptive bitrate streaming systems may shift the bitrate of the audio/video content based on the network speed in an attempt to avoid stalling.” See also Comm’n Opinion at 9.

The plain and ordinary meaning of the claim limitations coupled with the way the adaptive bitrate technology is described by the Commission and in the 1265 LEO offers greater support for iFIT’s understanding of these claim limitations. In describing the technology at issue, the Commission stated that these patents “allows [the] end user equipment to switch between different quality streamlets in response to changing network conditions.” Id. at 10. DISH’s view would negate the adaptability of the steaming technology at issue and would bleed into other approaches to streaming capability specifically allowed by the Commission. Id. at 84. For instance, the Commission stated that the infringed claims “do not generally cover all fitness devices, or even all fitness devices with streaming capabilities—they cover only infringing apparatuses using a particular method of streaming content (i.e., adaptive, multi-bitrate streaming).” Id. Given the Commission’s stance, were the interpretation proposed by DISH to stand, every type of fitness device that streams content by selecting a single fixed bitrate stream would be infringing, but such an outcome would contradict what the Commission described in the underlying investigation, as shown above.

The third argument DISH raised with respect to the first redesign is that the client is still “reasonably capable” of infringing the asserted patents. See DISH Post Hearing Brief at 5. DISH cites Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197 (Fed. Cir. 2010), and states that “iFIT was required to demonstrate that its redesigned products are not ‘reasonably capable of satisfying’ the limitations of each Asserted Claim.” Id. at 17. In Finjan, the Federal Circuit held that “depending on the claims, ‘an accused device may be found to infringe if it is reasonably capable of satisfying the claim limitations, even though it may also be capable of noninfringing modes of operation.’” Finjan at 1204.

iFIT argues that “unlike in Finjan, iFIT’s Non-Adaptive Products do not present a situation in which functionality may be re-enabled by a consumer.” iFIT Post-Oral Discussion Submission at 14. iFIT goes on to cite “proof of reasonable capability of performing claimed functions requires, at least as a general matter, proof that an accused product—when put into operation—in fact executes all of the claimed functions at least some of the time or at least once in the claim-required environment.” Id. at 14-15 (emphasis in submission) (quoting INVT SPE LLC v. Int’l Trade Comm’n, 46 F.4th 1261, 1377 (Fed. Cir. 2022).

The proposed software update on its exercise equipment proposed by iFIT is not able to be modified by the end user of the exercise equipment. This functionality is only able to be modified by iFIT itself and removes the ability to switch between different quality streams depending on network conditions. This approach comports with Federal Circuit precedent. See Versata Software, Inc. v. SAP Am., Inc., 717 F.3d 1255, 1262 (Fed. Cir. 2013) (quoting High Tech Med. Instrumentation v. New Image Indus., Inc., 49 F.3d 1551, 1555 (Fed. Cir. 1995)) (“[A] device does not infringe simply because it is possible to alter it in a way that would satisfy all the limitations of a patent claim.”)). If iFIT were to later modify the software of the exercise equipment to reenable this functionality, that would place the products outside the application of this ruling and, as such, they would be subject to exclusion until determined to be admissible. Accordingly, the modified products, as described by iFIT, where their ability to adaptively stream content has been removed cannot be said to be reasonably capable of practicing the patents at issue. We find that, under the language of the claim and the relevant case law, in order to infringe, the features of the device (i.e., the modified client device) must be capable of operating in the infringing mode without modification. See e.g., Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 994 (Fed. Cir. 2009) (noting that the “reasonably capable” test applies “only to claim language that specifies that the claim is drawn to capability.”).

Based on the above, we find that proposed modification to the client side device by iFIT does not practice the claims of the relevant patents at issue in this ruling request. The devices have been modified to utilize a single fixed bitrate stream as opposed to the adaptive multi-bitrate streaming technology as described in the LEO and the Commission Opinion. Without modification, that only iFIT is able to perform, these products cannot operate in an infringing mode and, as such, are not subject to the exclusion order.

Redesign 2 (Modification of the Servers to Only Provide a Single Bitrate Quality Stream to Devices)

iFIT argues that this modification to its servers from which videos are provided to its devices with only a single bitrate quality stream to the devices. See Ruling Request at 12. DISH responds with multiple arguments why the modification is not sufficient to avoid infringement. DISH reiterates many of the arguments used for the first redesign regarding whether the servers would still be “reasonably capable” of infringing despite the modifications. See DISH Post-Hearing Brief at 20-21. However, as with the first redesign, the only party that will have access to the servers in question is iFIT and if at some later time iFIT were to modify its servers so that, returning to the legacy products or implementing unadjudicated products for multiple bitrate streams offered to the client side exercise equipment, that would place iFIT’s future importations outside the application of this ruling. As it stands, the second redesign would limit the server to only being able to provide a single bitrate stream to all client side devices, which would place the devices outside the scope of the patents at issue.

The argument presented by DISH regarding the server modification of Redesign 2 is that there is potential for a loophole to return an infringing full manifest to legacy products. See Sur-Reply at 13. DISH goes on to state that iFIT uses third-party software, LaunchDarkly, to determine whether a full or single-variant manifest file is provided to each client device. Id. DISH states that the modified servers could still receive different “variant” information from LaunchDarkly for the individual clients. Id. iFIT responded to this argument by stating that the only entity capable of managing the settings of LaunchDarkly is iFIT. See iFIT Post-Oral Discussion Submission at 16. iFIT states that DISH’s argument is based on pure speculation and about a future hypothetical modification to iFIT’s servers that is not part of iFIT’s ruling request. Id. This argument is similar to that above with regard to the first redesign proposed by iFIT. Without modification, which can only be done by iFIT, the server is incapable of streaming more than a single bitrate stream. CBP finds that a further modification of the servers, as envisioned in the hypothetical proposed by DISH, would fall outside the admissibility determination addressed in this ruling. The second redesign that only provides a single bitrate stream would not allow any choice at the device side of the streaming method such that the modified products could not practice the patents at issue.

For these reasons, we find that Redesign 2 with the modification to the servers described above does not infringe the asserted claims from the 1265 LEO. Without a further modification by iFIT, that would take the further modified device outside the scope of this ruling, the servers cannot stream more than one bitrate stream and cannot infringe on that basis.

Redesign 3 (Modification of the Devices in Redesign 1 and the Servers in Redesign 2)

While iFIT’s view is that either of the two redesigns above, if implemented separately, would prevent the articles at issue from being capable of adaptive bitrate streaming, iFIT additionally argues that it can combine both redesigns into what it refers to as Redesign 3. See Ruling Request at 14. Specifically, the modified iFIT devices would force video playback through non-adaptive streaming (i.e., fixed) bitrate streaming coupled with server modification to provide only a single bitrate quality stream. Id. DISH has responded to iFIT’s position by arguing that the source code iFIT provided regarding this combination does not perform as described. See Response at 34. DISH points to the fact that the modified source code at issue communicates differently with a modified client machine versus a legacy machine. Id. DISH alleges that iFIT failed to meet its burden to show non-infringement of the proposed redesign by failing to provide DISH and the EOE Branch evidence of the redesign. Id. iFIT responded to these arguments by stating that DISH never tested the devices in combination with the modified server test environment. See Reply at 24. As noted above, after receipt of the iFIT Reply, DISH notified CBP that, in its view, a different source code implementing Redesign 3 was referenced than the one that was originally provided to DISH by iFIT with the original ruling request. See DISH email to Parties, dated May 21, 2023. As confirmed in the response from the EOE Branch after the conference call with the parties, there is no dispute that the “newly updated code” is only relevant to the third redesign from iFIT’s ruling request. See CBP email to Parties, dated May 22, 2023. In its Sur-Reply, DISH broke the third redesign into a third and fourth redesign for purposes of its analysis. See DISH Sur-Reply at 16-20.

DISH argues that this redesign was not made available in a timely fashion during the pendency of this inter partes proceeding and that iFIT should be required to file a new Part 177 ruling request for adjudication of this redesign. See Sur-Reply at 20. Upon consideration of the various arguments from the parties and the evidence available in the administrative record, as well as the findings reached in this ruling, the EOE Branch has determined not to rule on Redesign 3 at this time pursuant to 19 C.F.R. § 177.7 and in the sound administration of the Customs and related laws. iFIT may pursue a separate administrative ruling on Redesign 3 under this inter partes proceeding by submitting a notice to the EOE Branch and DISH with its intention to do so no later than two business days from the date of this ruling. The notice should provide an abbreviated procedural schedule for the adjudication of Redesign 3, including the date by which iFIT will provide the relevant source code to DISH for its review. Any procedural schedule that iFIT proposes must be less than sixty calendar days from the date of this ruling and include sufficient time for the EOE Branch to issue the administrative ruling within that time. If the EOE Branch does not receive this notice from iFIT within the two business days reference above, it shall consider iFIT not to have met its burden under section 337 to establish admissibility with respect any articles at issue that implement Redesign 3.

V. HOLDING

We find that iFIT has met its burden to establish that the articles at issue do not infringe one or more of claims 16, 17, and 20 of the ’554 patent; claims 10, 11, 14, and 15 of the ’555 patent; or claims 1, 2, and 4 of the ’156 patent with respect to Redesign 1 and Redesign 2. Accordingly, we find that the articles at issue that implement one or the other are not subject to the LEO issued as result of Investigation No. 337-TA-1265.

The decision is limited to the specific facts set forth herein. If articles differ in any material way from the articles at issue described above, or if future importations vary from the facts stipulated to herein, this decision shall not be binding on CBP as provided for in 19 C.F.R. §§ 177.2(b)(1), (2), (4), and 177.9(b)(1) and (2).

Sincerely,

Dax Terrill
Chief, Exclusion Order Enforcement Branch

CC: Ms. Lisa M. Kattan
Baker Botts LLP
700 K Street, NW
Washington, DC 20001
[email protected]