On July 17, 2013, ALJ E. James Gildea issued Order No. 11 granting Respondents Apex Medical Corp. and Apex Medical USA Corp.’s (collectively, “Apex”) amended motion to terminate the investigation in Certain Sleep-Disordered Breathing Treatment Systems and Components Thereof (Inv. No. 337-TA-879).

By way of background, the investigation is based on a March 28, 2013 complaint and April 19, 2013 letter supplementing the complaint filed by ResMed Corp. of San Diego, California, ResMed Inc. of San Diego, California, and ResMed Ltd. of Australia (collectively, “ResMed”) alleging violation of Section 337 in the importation into the U.S. and sale of certain sleep-disordered breathing treatment systems and components thereof that infringe one more claims of U.S. Patent Nos. 7,159,587; 7,487,772; 7,997,267; 7,743,767; 6,216,691; 6,935,337; and 7,614,398.  See our March 29, 2013 post for more details on the complaint.

According to the Order, on July 2, 2013, Apex filed a motion to terminate the investigation based on a consent order and a separate motion to stay the investigation pending Apex’s motion to terminate.  On July 5, 2013, Apex filed an amended motion, which contained additional admissions, waivers, and statements responsive to certain concerns raised by the Commission Investigative Staff (“OUII”).  The amended motion also addressed the requirements of Commission Rule 210.21(c).

On July 16, 2013, ResMed opposed the motion, arguing that the following language of the consent order is unclear regarding what products Apex will not import:

“Upon entry of the Consent Order, Apex will cease the importation, distribution, sale, or other transfers (other than exportation) of any sleep-disordered breathing treatment systems and components thereof that infringe the Asserted Patent Claims (collectively, ‘Subject Articles’) in the United States, except under consent or license from ResMed, its successors, or assignees.”

Specifically, ResMed asserted that the Commission Rules require consent orders to cover the articles named in the Complaint and that it is unclear what the above language refers to, particularly in view of Apex’s removal in its Amended Motion of specific reference to products identified in the Complaint.  OUII, however, in support of Apex’s motion, did not raise any concerns regarding the above language.

Having reviewed the parties’ arguments and submission by OUII, ALJ Gildea determined to grant Apex’s motion to terminate, effectively ending the investigation.  As to the allegedly ambiguous language cited by ResMed, the ALJ found that the proposed consent order properly covers all products within the scope of the investigation, which is defined by the Notice of Investigation, and that the Commission Rules do not require a specific listing of accused products in a proposed order.  Further, ALJ Gildea found that Apex’s proposed consent order met all requirements of both the pre and post-amendment Commission Rule 210.21(c).  Rule 210.21(c) was amended on May 20, 2013 and, although the amended rules are not applicable to investigations instituted before that date, the Commission has issued a notice encouraging parties to investigations instituted before May 20, 2013 to submit proposed consent orders consistent with the amended Rule.