`Washington, D.C.
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`In the Matter of
`CERTAIN WEARABLE ELECTRONIC
`DEVICES WITH ECG
`FUNCTIONALITY AND COMPONENTS
`THEREOF
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`Investigation No. 337-TA-1266
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`CEASE AND DESIST ORDER
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`IT IS HEREBY ORDERED THAT Apple Inc., of Cupertino, California, cease and
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`desist from conducting any of the following activities in the United States: importing, selling,
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`offering for sale, marketing, advertising, distributing, transferring (except for exportation),
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`soliciting United States agents or distributors, and aiding or abetting other entities in the
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`importation, sale for importation, sale after importation, transfer (except for exportation), or
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`distribution of wearable electronic devices with ECG functionality and components thereof that
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`infringe one or more of claims 12, 13, and 19-23 of U.S. Patent No. 10,638,941 (“the ’941
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`patent”); and claims 1, 3, 5, 8-10, 12, 15, and 16 of U.S. Patent No. 10,595,731 (“the ’731
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`patent”) (collectively, the “Asserted Patents”) in violation of section 337 of the Tariff Act of
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`1930, as amended (19 U.S.C. § 1337).
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`I.
`Definitions
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`As used in this Order:
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`(A)
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`“Commission” shall mean the United States International Trade Commission.
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`(B)
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`“Complainant” shall mean AliveCor, Inc., of Mountain View, California.
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`(C)
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`“Respondent” shall mean Apple Inc., of Cupertino, California.
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`(D)
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`“Person” shall mean an individual, or any non-governmental partnership, firm,
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`association, corporation, or other legal or business entity other than Respondent or
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`its majority-owned or controlled subsidiaries, successors, or assigns.
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`(E)
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`“United States” shall mean the fifty States, the District of Columbia, and Puerto
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`Rico.
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`(F)
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`The terms “import” and “importation” refer to importation for entry for
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`consumption under the Customs laws of the United States.
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`(G)
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`The term “covered products” shall mean Certain Wearable Electronic Devices
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`with ECG Functionality and Components Thereof that infringe one or more of
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`claims 12, 13, and 19-23 of the ’941 patent; and claims 1, 3, 5, 8-10, 12, 15, and
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`16 of the ’731 patent. The Certain Wearable Electronic Devices with ECG
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`Functionality and Components Thereof subject to this order are as follows: Apple
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`Watches with ECG functionality, and hardware and software components thereof.
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`Covered products shall not include articles for which a provision of law or license
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`avoids liability for infringement.
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`II.
`Applicability
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`The provisions of this Cease and Desist Order shall apply to the Respondent and to any of
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`its principals, stockholders, officers, directors, employees, agents, distributors, controlled
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`(whether by stock ownership or otherwise) and majority-owned business entities, successors, and
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`assigns, and to each of them, insofar as they are engaging in conduct prohibited by section III,
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`infra, for, with, or otherwise on behalf of, Respondent.
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`2
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`III.
`Conduct Prohibited
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`The following conduct of Respondent in the United States is prohibited by this Order.
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`For the remaining terms of the Asserted Patents, Respondent shall not:
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`(A)
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`import or sell for importation into the United States covered products;
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`(B) market, distribute, sell, offer to sell, or otherwise transfer (except for exportation)
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`(C)
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`(D)
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`(E)
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`in the United States imported covered products;
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`advertise imported covered products;
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`solicit U.S. agents or distributors for imported covered products; or
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`aid or abet other entities in the importation, sale for importation, sale after
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`importation, transfer (except for exportation), or distribution of covered products.
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`IV.
`Conduct Permitted
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`Notwithstanding any other provision of this Order, specific conduct otherwise prohibited
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`by the terms of this order shall be permitted:
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`(A)
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`service, repair, or replacement of wearable electronic devices with ECG
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`functionality that were imported prior to the effective date of this Order pursuant
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`to existing service and warranty contracts,
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`(B)
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`if in a written instrument, the owner of the ’941 and ’731 patents licenses or
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`authorizes such specific conduct, or
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`(C)
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`if such specific conduct is related to the importation or sale of covered products
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`by or for the United States.
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`The enforcement of this Order, including the bond provision, is suspended pending final
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`resolution of the U.S. Patent and Trademark Office, Patent Trial and Appeal Board’s Final
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`Written Decisions finding the asserted patent claims unpatentable. See Apple, Inc. v. AliveCor,
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`Inc., IPR2021-00971, Patent 10,595,731, Final Written Decision Determining All Challenged
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`Claims Unpatentable (Dec. 6, 2022); Apple, Inc. v. AliveCor, Inc., IPR2021-00972, Patent
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`10,638,941, Final Written Decision Determining All Challenged Claims Unpatentable (Dec. 6,
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`2022). See 35 U.S.C. § 318(b).
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`V.
`Reporting
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`For purposes of this requirement, the reporting periods shall commence on July 1 of each
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`year and shall end on the subsequent June 30. The first report required under this section shall
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`cover the period from the date of issuance of this order through June 30, 2023. This reporting
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`requirement shall continue in force until such time as Respondent has truthfully reported, in two
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`consecutive timely filed reports, that it has no inventory of covered products in the United States.
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`Within thirty (30) days of the last day of the reporting period, Respondent shall report to
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`the Commission (a) the quantity in units and the value in dollars of covered products that it has
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`(i) imported and/or (ii) sold in the United States after importation during the reporting period,
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`and (b) the quantity in units and value in dollars of reported covered products that remain in
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`inventory in the United States at the end of the reporting period.
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`When filing written submissions, Respondent must file the original document
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`electronically on or before the deadlines stated above. Submissions should refer to the
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`investigation number (“Inv. No. 337-TA-1266”) in a prominent place on the cover pages and/or
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`the first page. (See Handbook for Electronic Filing Procedures,
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`4
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`http://www.usitc.gov/secretary/fed_reg_notices/rules/handbook_on_electronic_filing.pdf).
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`Persons with questions regarding filing should contact the Secretary (202-205-2000). If
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`Respondent desires to submit a document to the Commission in confidence, it must file the
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`original and a public version of the original with the Office of the Secretary and must serve a
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`copy of the confidential version on Complainant’s counsel.1
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`Any failure to make the required report or the filing of any false or inaccurate report shall
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`constitute a violation of this Order, and the submission of a false or inaccurate report may be
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`referred to the U.S. Department of Justice as a possible criminal violation of 18 U.S.C. § 1001.
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`VI.
`Record-Keeping and Inspection
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`(A)
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`For the purpose of securing compliance with this Order, Respondent shall retain
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`any and all records relating to the sale, marketing, or distribution in the United
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`States of covered products, made and received in the usual and ordinary course of
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`business, whether in detail or in summary form, for a period of three (3) years
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`from the close of the fiscal year to which they pertain.
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`(B)
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`For the purposes of determining or securing compliance with this Order and for
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`no other purpose, subject to any privilege recognized by the federal courts of the
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`United States, and upon reasonable written notice by the Commission or its staff,
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`duly authorized representatives of the Commission shall be permitted access and
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`the right to inspect and copy, in Respondent’s principal offices during office
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`1 Complainant must file a letter with the Secretary identifying the attorney to receive
`reports and bond information associated with this Order. The designated attorney must be on the
`protective order entered in the investigation.
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`5
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`hours, and in the presence of counsel or other representatives if Respondent so
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`chooses, all books, ledgers, accounts, correspondence, memoranda, and other
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`records and documents, in detail and in summary form, that must be retained
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`under subparagraph VI(A) of this Order.
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`VII.
`Service of Cease and Desist Order
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`The Secretary shall serve copies of this Order upon each party of record in this
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`investigation that has retained counsel or otherwise provided a point of contact for electronic
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`service.
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`Respondent is ordered and directed to:
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`(A)
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`Serve, within fifteen days after the effective date of this Order, a copy of this
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`Order upon each of its respective officers, directors, managing agents, agents, and
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`employees who have any responsibility for the importation, marketing,
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`distribution, or sale of imported covered products in the United States;
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`(B)
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`Serve, within fifteen days after the succession of any persons referred to in
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`subparagraph VII(A) of this order, a copy of the Order upon each successor; and
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`(C) Maintain such records as will show the name, title, and address of each person
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`upon whom the Order has been served, as described in subparagraphs VII(A) and
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`VII(B) of this Order, together with the date on which service was made.
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`The obligations set forth in subparagraphs VII(B) and VII(C) shall remain in effect until
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`the expiration dates of the Asserted Patents.
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`6
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`VIII.
`Confidentiality
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`Any request for confidential treatment of information obtained by the Commission
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`pursuant to Section VI of this Order should be made in accordance with section 201.6 of the
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`Commission's Rules of Practice and Procedure (19 C.F.R. § 201.6). For all reports for which
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`confidential treatment is sought, Respondent must provide a public version of such report with
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`confidential information redacted.
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`IX.
`Enforcement
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`Violation of this Order may result in any of the actions specified in section 210.75 of the
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`Commission's Rules of Practice and Procedure (19 C.F.R. § 210.75), including an action for civil
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`penalties under section 337(f) of the Tariff Act of 1930 (19 U.S.C. § 1337(f)), as well as any
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`other action that the Commission deems appropriate. In determining whether Respondent is in
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`violation of this Order, the Commission may infer facts adverse to Respondent if it fails to
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`provide adequate or timely information.
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`X.
`Modification
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`The Commission may amend this Order on its own motion or in accordance with the
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`procedure described in section 210.76 of the Commission's Rules of Practice and Procedure (19
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`C.F.R. § 210.76).
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`XI.
`Bonding
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`The conduct prohibited by Section III of this Order may be continued during the sixty
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`(60) day period in which this Order is under review by the United States Trade Representative,
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`as delegated by the President (70 Fed. Reg. 43,251 (Jul. 21, 2005)), subject to Respondent
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`posting of a bond in the amount of $2 per unit of the covered products. This bond provision does
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`not apply to conduct that is otherwise permitted by Section IV of this Order. Covered products
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`imported on or after the date of issuance of this Order are subject to the entry bond set forth in
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`the exclusion order issued by the Commission, and are not subject to this bond provision.
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`The bond is to be posted in accordance with the procedures established by the
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`Commission for the posting of bonds by complainants in connection with the issuance of
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`temporary exclusion orders. (See 19 C.F.R. § 210.68.) The bond and any accompanying
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`documentation are to be provided to and approved by the Commission prior to the
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`commencement of conduct that is otherwise prohibited by section III of this Order. Upon the
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`Secretary’s acceptance of the bond, (a) the Secretary will serve an acceptance letter on all
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`parties, and (b) Respondent must serve a copy of the bond and accompanying documentation on
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`Complainant’s counsel.2
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`The bond is to be forfeited in the event that the United States Trade Representative
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`approves this Order (or does not disapprove it within the review period), unless (i) the U.S. Court
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`of Appeals for the Federal Circuit, in a final judgment, reverses any Commission final
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`determination and order as to Respondent on appeal, or (ii) Respondent exports or destroys the
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`products subject to this bond and provides certification to that effect that is satisfactory to the
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`Commission.
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`This bond is to be released in the event (i) the United States Trade Representative
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`disapproves this Order and no subsequent order is issued by the Commission and approved (or
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`not disapproved) by the United States Trade Representative, (ii) the U.S. Court of Appeals for
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`2 See Footnote 1.
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`the Federal Circuit, in a final judgment, reverses any Commission final determination and order
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`as to Respondent on appeal, or (iii) Respondent exports or destroys the products subject to this
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`bond and provides certification to that effect that is satisfactory to the Commission, upon service
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`on Respondent of an order issued by the Commission based upon application therefor made by
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`Respondent to the Commission.
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`By order of the Commission.
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`Issued: December 22, 2022
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` Katherine M. Hiner
` Acting Secretary to the Commission
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`9
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