Sleep-Disordered Breathing: Commissioner Dissents

In Certain Sleep-Disordered Breathing Treatment Systems and Components Thereof, Inv. No. 337-TA-890, Comm’n Op. (Pub. Version) (Jan. 16, 2015), the Commission found a violation of Section 337 and issued a cease‑and‑desist order for infringement of all infringed patent claims. But one commissioner disagreed with the scope of the order, stating that it should instead have covered only infringed claims for which Complainants had established a commercially significant domestic inventory of covered products.

The asserted claims are directed to devices for treating sleep-disordered breathing, such as masks and humidifiers treating obstructive sleep apnea.  The ALJ issued an initial determination on August 21, 2014, finding a violation of Section 337 with respect to 30 asserted claims and recommending issuance of a limited exclusion order.  The ALJ found that commercially significant inventories existed in the United States for at least some infringing products, and therefore also recommended issuance of a cease‑and‑desist order.

The investigative attorney (IA) agreed with the recommendation for a cease‑and‑desist order, but argued that the order should cover only those claims for which Complainants had established a commercially significant domestic inventory of covered products.  According to the IA, Complainant had not established the existence of a commercially significant inventory of Respondents’ redesigned iVolve product.  Because the iVolve was the only product found to infringe eleven of the claims, the IA argued that the cease-and-desist order should not extend to those claims.

On review, the Commission found a Section 337 violation in connection with 25 of the 30 claims identified by the ALJ and issued a limited exclusion order.  The Commission also issued a cease‑and‑desist order for all 25 claims[1], including the eleven claims infringed exclusively by the iVolve product.  Subject to certain exceptions, the cease‑and‑desist order prohibits domestic Respondents from importing, selling, marketing, advertising, distributing, transferring, and soliciting distributors for devices that infringe any of the 25 claims.

Commissioner Johanson disagreed with the scope of the cease‑and‑desist order.  Instead, he adopted the IA’s position that the order should not extend to the claims infringed only by the iVolve products.  Commissioner Johanson reasoned that because the Complainants had not demonstrated a commercially significant inventory of iVolve products in the United States, “there is insufficient evidence that domestic inventory of the iVolve if sold would undercut the remedy provided by the exclusion order issued in this investigation.”  Id. at 49 fn. 14.

[1] The Commission did not indicate that claim 29 of U.S. Patent No. 7,950,392 violated Section 337, but issued a limited exclusion order and cease-and-desist order for claim 29.  This claim is included in the tally.