`Washington, D.C.
`
`In the Matter of
`
`CERTAIN AIR MATTRESS SYSTEMS,
`COMPONENTS THEREOF, AND
`METHODS OF USING THE SAME
`
`Investigation No. 337-TA-971
`(Remand)
`
`ORDER
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`On December 26, 2017, the United States Court of Appeals for the Federal Circuit issued
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`an order holding that the appeal in Sizewise Rentals LLC v. International Trade Commission,
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`Appeal No. 2017-2334, had become moot during the pendency of the appeal and remanded the
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`investigation to the United States International Trade Commission to determine whether to
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`vacate the underlying final determination relating to the sole patent at issue on appeal, United
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`States Patent No. 5,904,172 ("the '172 patent").
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`The Federal Circuit appeal at issue stemmed from Investigation No. 337-TA-971, Certain
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`Air Mattress Systems, Components Thereof and Methods of Using the Same. This investigation
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`was instituted based on a complaint filed on October 16, 2015 by Complainants Select Comfort
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`Corporation and Select Comfort SC Corporation (collectively, "Complainants") that alleged
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`violations of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337, by Sizewise
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`Rentals LLC, American National Manufacturing Inc., and Dires LLC (d/b/a Personal Comfort
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`Bed) (collectively, "Respondents"), based upon the importation into the United States, the sale
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`for importation, and the sale within the United States after importation of certain air mattress
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`systems, components thereof, and methods of using the same that infringe certain claims of the
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`'172 patent and United States Patent No. 7,389,554 ("the '554 patent"). See 80 Fed. Reg. 72,738
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`(Nov. 20, 2015).
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`1
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`American National Manufacturing, Inc.
`EXHIBIT 1079
`IPR2019-00514
`Page 1
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`On November 18, 2016, the presiding Administrative Law Judge issued a final initial
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`determination ("ID") finding no violation of section 337 with respect to either patent. The
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`Commission determined to review the ID in part, and on review, the Commission found a
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`violation of section 337 with regard to the '172 patent and issued a limited exclusion order
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`prohibiting the unlicensed entry of infringing air mattress systems, components thereof, and
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`methods of using the same. Certain Air Mattress Systems, Components Thereof and Methods of
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`Using the Same, Inv. No. 337-TA-971, Comm'n Op. at 61-62 (May 17, 2018); 82 Fed. Reg.
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`8623 (Jan. 27, 2017); 82 Fed. Reg. 23593-5 (May 23, 2017). The Commission found no
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`violation with regard to the '554 patent.
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`On July 19, 2017, Respondents filed an appeal to the Federal Circuit requesting review of
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`the Commission's final determination regarding the '172 patent. Appeal No. 2017-2334. On
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`October 18, 2017, the Commission filed a motion to dismiss the appeal as moot because the '172
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`patent had expired on July 28, 2017. Respondents did not object to the dismissal but requested
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`vacatur of the Commission's final determination. Complainants also did not object to dismissal,
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`but did object to vacatur. On December 26, 2017, the Federal Circuit issued its Order in which
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`the Commission's motion was "granted to the extent that the appeal is deemed moot and the case
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`is remanded for the Commission to address whether to vacate its final determination relating to
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`the '172 patent." Court Order at 3.
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`On February 26, 2018, the Commission ordered the parties to submit comments on
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`whether the Commission should vacate its final determination regarding the '172 patent.
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`Commission Order at 3. All relevant parties timely filed opening and reply submissions.
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`Upon consideration of this matter, including the parties' submissions filed in response to
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`the Commission's Order, it is hereby ORDERED that:
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`American National Manufacturing, Inc.
`EXHIBIT 1079
`IPR2019-00514
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`(1) The Commission's final determination regarding the '172
`patent in this investigation and the Commission's Limited
`Exclusion Order based thereon are vacated.
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`(2) The Secretary to the Commission shall serve a copy of this
`Order upon each party to the investigation.
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`The Commission's opinion is being issued concurrently herewith.
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`By order of the Commission.
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`Issued: January 22, 2020
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`0o-sz)
`
`Lisa R. Barton
`Secretary to the Commission
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`American National Manufacturing, Inc.
`EXHIBIT 1079
`IPR2019-00514
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`CERTAIN AIR MATTRESS SYSTEMS, COMPONENTS
`THEREOF, AND METHODS OF USING THE SAME
`
`Inv. No. 337-TA-971
`(Remand)
`
`PUBLIC CERTIFICATE OF SERVICE
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`I, Lisa R. Barton, hereby certify that the attached ORDER has been served by hand upon
`the Commission Investigative Attorney, Andrew Beverina, Esq., and the following parties as
`indicated, on January 22,2020.
`
`116
`
`Lisa R. Barton, Secretary
`U.S. International Trade Commission
`500 E Street, SW, Room 112
`Washington, DC 20436
`
`On Behalf of Complainants Select Comfort Corporation and
`Select Comfort SC Corporation:
`
`Kecia J. Reynolds, Esq.
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`1200 Seventeenth Street, NW
`Washington, DC 20036
`
`I=1 Via Hand Delivery
`El Via Express Delivery
`ID Via First Class Mail
`El Other:
`
`On Behalf of Respondents Sizewise Rentals, LLC, American
`National Manufacturing, Inc., and Dires, LLC, d/b/a Personal
`Comfort Bed:
`
`Tom M. Schaumberg, Esq.
`ADDUCI, MASTRIANI &SCHAUMBERG, L.L.P.
`1133 Connecticut Ave., NW, 12th Floor
`Washington, DC 20036
`
`I=1 Via Hand Delivery
`El Via Express Delivery
`I=1 Via First Class Mail
`0 Other:
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`American National Manufacturing, Inc.
`EXHIBIT 1079
`IPR2019-00514
`Page 4
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`