Washington, D.C. DEVICES, BRUSHES AND CHARGERS THEREFOR ... · Clarisonic Trade Dress as defined in...
Transcript of Washington, D.C. DEVICES, BRUSHES AND CHARGERS THEREFOR ... · Clarisonic Trade Dress as defined in...
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
C E R T A I N E L E C T R I C SKIN C A R E D E V I C E S , BRUSHES AND C H A R G E R S T H E R E F O R , AND K I T S CONTAINING SAME
Inv. No. 337-TA-959
O R D E R NO. 10: INITIAL DETERMINATION TERMINATING INVESTIGATION AS TO RESPONDENT NUTRA L U X E M.D., L L C . BASED ON CONSENT O R D E R
(August 28, 2015)
On August 17, 2015, Complainant Pacific Bioscience Laboratories, Inc. ("PBL") and
Respondent Nutra-Luxe M.D., LLC ("NutraLuxe") jointly moved to terminate this investigation
as to NutraLuxe based on a consent order stipulation (Motion Docket No. 959-006). PBL and
NutraLuxe certify that they conferred with the other Respondents who have made an appearance
pursuant to Ground Rule 3.2. On August 27, 2015, the Commission Investigative Staff ("Staff)
filed a response in support of the motion. No other responses were received.
Commission Rule 210.21(a)(2) states in relevant part that "[a]ny party may move at any
time for an order to terminate an investigation in whole or in part as to any or all respondents on
the basis of a settlement, a licensing or other agreement... or consent order , as provided in
paragraphs (b), (c) and (d) of this section." 19 C.F.R. § 210.21(a)(2). Commission Rule
210.21(c)(l)(ii) provides in relevant part that "[ i ]n investigations under Section 337 of the Tariff
Act of 1930, a proposal to terminate by consent order shall be submitted as a motion to the
administrative law judge with a stipulation that incorporates a proposed consent order."
19 C.F.R. § 210.21(c)(l)(ii). Commission Rule 210.21(c)(3) sets forth the information that must
be included in the consent order stipulation. 19 C.F.R. § 210.21(c)(3). Commission Rule
210.21(c)(4) sets forth the information that must be included in the proposed consent order.
19 C.F.R. § 210.21(c)(4). A consent order may not include terms beyond or inconsistent with
those set forth by Commission Rule 210.21(c)(4). Id.
The joint motion includes a Consent Order Stipulation (Exhibit A) and Proposed Consent
Order (Exhibit B). PBL and NutraLuxe state that there are no other agreements, written or oral,
express or implied between the parties concerning the subject matter of the investigation. The
Consent Order Stipulation was signed by a representative for NutraLuxe on August 14, 2015.
The Staff reviewed the Consent Order Stipulation and found that it meets the Commission's
requirements. The Staff also reviewed the Proposed Consent Order and found that it does not
appear to have terms beyond, or materially inconsistent with the Commission's rules. I agree
with the Staff and find that NutraLuxe's Consent Order Stipulation conforms with Commission
Rule 210.21(c)(3) and that the Proposed Consent Order is consistent with Commission Rule
210.21(c)(4). See 19 U.S.C. § 210.21(c)(3)-(4).
Commission Rule 210.50(b)(2) provides that in the case of a proposed termination by
settlement agreement or consent order, the parties may file statements regarding the impact of
the proposed termination on the public interest, and the administrative law judge may hear
argument, although no discovery may be compelled, with respect to issues relating solely to the
public interest. 19 C.F.R. § 210.50(b)(2). In any initial determination terminating an
investigation by settlement agreement or consent order, the administrative law judge is directed
to consider and make appropriate findings regarding the effect of the proposed settlement on the
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public health and welfare, competitive conditions in the United States economy, the production
of like or directly competitive articles in the United States, and United States consumers. Id.
PBL and NutraLuxe argue that termination is in the public interest, and the Staff agrees.
I do not find any public interest concerns that would weigh against termination of the
investigation based on the Proposed Consent Order. I also find nothing to suggest that
termination of NutraLuxe from the Investigation would impose an undue burden on the public
health and welfare, competitive conditions in the U.S. economy, the production of similar or
directly competitive articles in the United States, or U.S. consumers. See 19 U.S.C. § 1337(d). I
therefore find that termination of the investigation as to NutraLuxe is in the public interest,
which favors settlement to avoid needless litigation and to conserve public resources. See
Certain Navigation Products, Including GPS Devices, Navigation and Display Systems, Radar
Systems, Navigational Aids, Mapping Systems and Related Software, Inv. No. 337-TA-900,
Order No. 27 (August 21, 2014).
Accordingly, it is my Initial Determination that Motion Docket No. 959-006 is
GRANTED. A l l deadlines in the Investigation are hereby stayed as to Nutraluxe pending the
Commission's disposition of this hiitial Determination. Pursuant to Commission Rule 210.42(h),
this Initial Determination shall become the determination of the Commission unless a party files
a petition for review pursuant to Commission Rule 210.43(a), or the Commission orders, on its
own motion, a review of the Initial Determination or certain issues herein pursuant to
Commission Rule § 210.44. 19 C.F.R. § 210.42(h), 210.43(a), 210.44.
SO ORDERED.
Dee Lord Administrative Law Judge
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Exhibit A
UNITED STATES INTERNATIONAL TRADE COMMISSION WASHINGTON, D.C.
Before the Honorable Dee Lord Administrative Law Judge
In the Matter of:
CERTAIN E L E C T R I C SKIN CARE DEVICES, BRUSHES AND CHARGERS THEREFOR, AND KITS CONTAINING SAME
Inv. No. 337-TA- 959
CONSENT ORDER STIPULATION
WHEREAS, this Consent Order Stipulation is entered by and between Complainant
Pacific Bioscience Laboratories, Inc. ("PBL") and Respondent Nutra-Luxe M.D., LLC
("NutraLuxe");
WHEREAS, PBL filed a Complaint on April 30,2015 and an Amended Complaint on
May 20,2015 (collectively "Complaints"), alleging unfair acts in the importation into, sale for
importation into, and/or sale or offer for sale after importation into, the United States of certain
electric skin care devices, brushes and chargers therefor, and kits containing same, that infringe:
(i) claims 1,4-6,12-16,22, 31, 33,39-41,42,44-46,49, 51-52 of U.S. Patent No. 7,320,691
("the '691 patent")', (ii) claims 1-2,4-5,7-15 of U.S. Patent No. 7,386,906 ("the "906 patent");
(iii) the claim of U.S. Patent No. D523,809 (collectively, "Asserted Patents"), and (iv) the
Clarisonic Trade Dress as defined in the Amended Complaint (see paragraphs 152 to 167,
incorporated herein by reference);
WHEREAS, the Commission instituted this Investigation under Section 337 ofthe Tariff
Act of 1930, as amended, 19 U.S.C. § 1337, as Investigation No. 337-TA-959, based upon the
allegations contained in the Amended Complaint filed by PBL; and
Inv. No. 337-TA-959 - 1 - Consent Order Stipulation as to NutraLuxe
WHEREAS, Nutraluxe, in accordance with a Declaration provided to PBL, agrees to the
entry of a Consent Order by the Commission in the form attached hereto as Exhibit A.
NOW, THEREFORE, pursuant to Commission Rule 210.21(c)(1)(H) and (c)(3)(f),
Nutraluxe stipulates and agrees as follows in connection with the Joint Motion To Terminate
Investigation As To Nutraluxe Based On Entry Of Consent Order:
1. Respondent Nutraluxe is a limited liability company organized and existing under
the laws of Florida, with its principal place of business located at 6835 International Center
Blvd., Suite 5, Fort Myers FL33912 .
2. "Accused Products" as used herein shall mean: (i) the NutraSonic 4-Speed and
NutraSonic travel products identified in the Complaints; (ii) any other product containing an
oscillating brush head that has been previously adjudicated as infringing one or more of U.S.
Patent No. 7,320,691; U.S. Patent No. 7,386,906; U.S. Design Patent No. D523.809, and the
Clarisonic Trade Dress (i.e., the Nutra Sonic Professional, Nutra Sonic Essential, Nutra Sonic
Companion, Nutra Sonic Bella, discontinued 2010-era ProSonic, SkinnSonic Classic and
SkinnSonic Ultra); (iii) any other product with an oscillating brush head with a feature or
features not more than colorably different from the infringing feature or features in the Nutra
Sonic Professional, Nutra Sonic Essential, Nutra Sonic Companion, Nutra Sonic Bella,
discontinued 2010-era ProSonic, SkinnSonic Classic and SkinnSonic Ultra; and (iv) any other
product that is substantially similar in visual appearance to the Nutra Sonic Professional, Nutra
Sonic Essential, Nutra Sonic Companion, Nutra Sonic Bella.
3. Nutraluxe stipulates to entry of a Consent Order in the form attached hereto as
Exhibit A.
Inv. No. 337-TA-959 -2- Consent Order Stipulation as to NutraLuxe
4. The Commission has in rem jurisdiction over Nutraluxe's Accused Products, the
Commission has in personam jurisdiction over Nutraluxe for purposes of the Consent Order, and
the Commission has subject matter jurisdiction over this Investigation.
5. By its execution of this Consent Order Stipulation, Nutraluxe admits and
acknowledges that, for the purposes of this Investigation and enforcement of the Consent Order,
each of: (i) claims 1,4-6,12-16,22,31,33,39-41,42,44-46,49, 51-52 of U.S. Patent No.
7,320,691 ("the '691 patent"); (ii) claims 1-2,4-5,7-15 of U.S. Patent No. 7,386,906 ("the '906
patent"); (iii) the claim of U.S. Patent No. D523,809 ("the D'809 patent"); and (iv) the
Clarisonic Trade Dress, is valid and enforceable.
6. Nutraluxe agrees that upon entry of the Consent Order, it will not import into the
United States, sell for importation into the United States, and/or sell or offer for sale in the
United States after importation, or knowingly aid, abet, encourage, participate in or induce the
importation into the United States, the sale for importation into the United States, or the sale,
offer for sale or use in the United States after importation, any Accused Products, except under
prior written consent or license from PBL, or its successors or assignee.
7. Nutraluxe expressly waives all rights to seek judicial review or otherwise appeal
from, challenge or contest the validity of the Consent Order,
8. Nutraluxe will cooperate with and will not seek to impede by litigation or other
means the Commission's efforts to gather infonnation under Subpart I ofthe Commission's
Rules of Practice and Procedure, 19 C.F.R. § 210.
9. The enforcement, modification, and revocation of the Consent Order will be
carried out pursuant to Subpart I of the Commission's Rules of Practice and Procedure, 19
C.F.R. § 210, which is incorporated herein by reference.
Inv. No. 337-TA-959 -3- Consent Order Stipulation as to NutraLuxe
10. The consent order shall have the same force and effect and may be enforced,
modified, or revoked in the same manner as is provided in section 337 of the Tariff Act of 1930
and this part for other Commission actions, and the Commission may require periodic
compliance reports pursuant to subpart I of this part to be submitted by the person entering into
the consent order stipulation.
11. The Consent Order shall not apply with respect to any claim of any Asserted
Patent that has expired or been found or adjudicated invalid or unenforceable by the Commission
or a court or agency of competent jurisdiction, provided that such finding or judgment has
become final and nonreviewable.
12. Nutraluxe will not seek to challenge or assert any defense regarding the validity
or enforceability ofthe Asserted Patents or tlie Clarisonic Trade Dress in any administrative or
judicial proceeding to enforce the Consent Order.
13. The undersigned is a representative of Nutraluxe and is authorized to sign this
Consent Order Stipulation on behalf of Nutraluxe.
IN WITNESS WHEREOF, a duly authorized representative of Nutraluxe has caused this
Consent Order Stipulation to be executed as of the date indicated below.
Dated: August 2015
Inv. No. 337-TA-959 -4- Consent Order Stipulation as to NutraLuxe
Exhibit B
UNITED STATES INTERNATIONAL T R A D E COMMISSION
Washington, D.C.
In the Matter of
C E R T A I N E L E C T R I C SKIN C A R E D E V I C E S , BRUSHES AND CHARGERS T H E R E F O R , AND K I T S CONTAINING SAME
Inv. No. 337-TA-959
[PROPOSED] CONSENT ORDER
The United States International Trade Commission (the "Commission") instituted this
Investigation under Section 337 ofthe Tariff Act of 1930, as amended, 19 U.S.C. § 1337, based
upon the allegations contained in the Complaint filed on April 30, 2015 and the Amended
Complaint filed on May 20, 2015 (collectively "Complaints") by Pacific Bioscience
Laboratories, Inc. ("PBL"), which allege unfair acts in the importation into, sale for importation
into, and/or sale or offer for sale after importation into the United States of certain electric skin
care devices, brushes and chargers therefor, and kits containing same, that infringe: (i) claims 1,
4-6, 12-16, 22, 31, 33, 39-41, 42, 44-46, 49, 51-52 of U.S. Patent No. 7,320,691 ("the '691
patent"); (ii) claims 1-2, 4-5, 7-15 of U.S. Patent No. 7,386,906 ("the '906 patent"); (iii) the
claim of U.S. Patent No. D523,809; and (iv) the Clarisonic Trade Dress (as that term is defined
in the Amended Complaint at paragraphs 152-167).
Respondent Nutra-Luxe M.D., LLC ("NutraLuxe") has executed a Consent Order
Stipulation in which it agrees to entry of this Consent Order and to all waivers and other
provisions required by the Commission's Rules of Practice and Procedure. PBL and NutraLuxe
have filed a Joint Motion For Termination Of The Investigation As To NutraLuxe Based On A
Consent Order.
IT IS HEREBY ORDERED THAT:
1. "Accused Products" as used herein shall mean: (i) the NutraSonic 4-Speed and
NutraSonic travel products identified in the Complaints; and (ii) any other product containing an
oscillating brush head that has been previously adjudicated as infringing one or more of U.S.
Patent No. 7,320,691; U.S. Patent No. 7,386,906; U.S. Design Patent No. D523,809, and the
Clarisonic Trade Dress (i.e., the Nutra Sonic Professional, Nutra Sonic Essential, Nutra Sonic
Companion, Nutra Sonic Bella, discontinued 2010-era ProSonic, SkinnSonic Classic and
SkinnSonic Ultra); (iii) any other product with an oscillating brush head with a feature or
features not more than colorably different from the infringing feature or features in the Nutra
Sonic Professional, Nutra Sonic Essential, Nutra Sonic Companion, Nutra Sonic Bella,
discontinued 2010-era ProSonic, SkinnSonic Classic and SkinnSonic Ultra; and (iv) any other
product that is substantially similar in visual appearance to the Nutra Sonic Professional, Nutra
Sonic Essential, Nutra Sonic Companion, Nutra Sonic Bella.
2. Nutraluxe agrees that upon entry of the Consent Order by the Commission, it will
not import into the United States, sell for importation into the United States, and/or sell or offer
for sale in the United States after importation, or knowingly aid, abet, encourage, participate in
or induce the importation into the United States, the sale for importation into the United States,
or the sale, offer for sale or use in the United States after importation, any Accused Products,
except under consent or license from PBL, its successors or assignees.
3. This Consent Order shall be applicable to and binding upon Nutraluxe, and its
officers, directors, agents, servants, employees and all persons, firms, corporations, successors,
assigns or other entities acting in concert or participation with Nutraluxe or under the direction
or authority of Nutraluxe.
4. Nutraluxe shall be precluded from seeking judicial review or otherwise
challenging or contesting the validity or any aspect of this Consent Order.
5. Nutraluxe shall cooperate with, and shall not seek to impede by litigation or any
other means, the Commission's efforts to gather information under Subpart I of the
Commission's Rules of Practice and Procedure, 19 C.F.R. § 210.
6. Nutraluxe shall not seek to challenge the validity or enforceability of: (i) claims 1,
4-6, 12-16, 22, 31, 33, 39-41, 42, 44-46, 49, 51-52 of U.S. Patent No. 7,320,691; (ii) claims 1-2,
4-5, 7-15 of U.S. Patent No. 7,386,906; (iii) the claim of U.S. Patent No. D523,809; and (iv) the
Clarisonic Trade Dress and to assert any related validity or enforceability defense, in any
administrative or judicial proceeding to enforce this Consent Order.
7. Upon the expiration of an Asserted Patent or abandonment of the Clarisonic Trade
Dress, this Consent Order shall become null and void as to that Asserted Patent or to the
Clarisonic Trade Dress, as the case may be.
8. I f any claim of an Asserted Patent or the Clarisonic Trade Dress is found or
adjudicated to be invalid or unenforceable by the Commission or a court or agency of competent
jurisdiction in a final decision not subject to appeal, this Consent Order shall become null and
void as to any such invalid or unenforceable claim or trade dress.
9. This Investigation is hereby terminated as to Nutraluxe; provided, however, that
enforcement, modification or revocation of this Consent Order shall be carried out pursuant to
Subpart I of the Commission's Rules of Practice and Procedure, 19 C.F.R. § 210.
BY ORDER OF THE COMMISSION:
Issued: September ,2015
Lisa Barton Secretary to the Commission
CERTAIN E L E C T R I C SKIN C A R E D E V I C E S , BRUSHES AND C H A R G E R S T H E R E F O R , AND K I T S CONTAINING SAME
Inv. No. 337-TA-959
PUBLIC C E R T I F I C A T E O F S E R V I C E
I , Lisa R. Barton, hereby certify that the attached O R D E R has been served by hand upon the Commission Investigative Attorney, Sarah J . Sladic, Esq., and the following parties as indicated, on
~"T ,.<-icjf^^
Lisa R. Barton, Secretary U.S. International Trade Commission 500 E Street, SW, Room 112 Washington, DC 20436
On Behalf of Complainant Pacific Bioscience Laboratories, Inc.:
Robert M . Masters, Esq. PAUL HASTINGS, L L P 875 15 t h St.NW Washington, DC 20005
• Via Hand Delivery
J>f Via Express Delivery
• Via First Class Mail
• Other:
On Behalf of Respondents Home Skinovations Inc. and Home Skinovations Ltd.:
G. Brian Busey, Esq. • Via Hand Delivery MORRISON & F O E R S T E R L L P K Via Express Delivery 2000 Pennsylvania Ave., NW, Suite 6000 Q Y F i r g t Q a s s M a i l
Washington, DC 20006 Q ^
On Behalf of Respondent RN Ventures Ltd.:
Michael G. McManus, Esq. • Via Hand Delivery
DUANE MORRIS, L L P & V i a Express Delivery 505 9 t h Street, NW, Suite 1000 n y k F i r g t c k s s ^ Washington, DC 20004-2166 n Q t h e r
C E R T A I N E L E C T R I C SKIN C A R E D E V I C E S , BRUSHES Inv. No. 337-TA-959 AND C H A R G E R S T H E R E F O R , AND K I T S CONTAINING SAME
Certificate of Service - Page 2
On Behalf of Respondents Michael Todd True Organics L P and MTTO L L P :
Paul M . Schoenhard, Esq. ROPES & G R A Y L L P One Metro Center 700 12 t h Street NW, Suite 900 Washington, DC 20005
• Via Hand Delivery
'M, Via Express Delivery
• Via First Class Mail
• Other:
On Behalf of Respondent Nutra-Luxe M.D., L L C : • Via Hand Delivery
jM. Via Express Delivery Larry D. Johnson n v i a F i r s t c l a s s M a i l
P.O. Box 470277 n ^ Celebration, FL 34747 '
On Behalf of Beauty Tech, Inc.:
Leo V. Goldstein-Gureff • Via Hand Delivery INTERNATIONAL L E G A L COUNSELS PC ^ via Express Delivery 901 N. Pitt Street, Suite 325 n v i a F i r s t c l a s s M a i l
Alexandria, V A 22314 • Other:
Respondents: Accord Media, LLC d/b/a Truth in Aging
ST 241 West36 l
Rm/Suite 19 New York, NY 10018
Xnovi Electronic Co., Ltd. Room 915, GuanLiDa Mansion QianJin 1 s t Road Zone 30 Bao'An; Shenzhen, China
• Via Hand Delivery
IS Via Express Delivery
• Via First Class Mail
• Other:
• Via Hand Delivery
£3' Via Express Delivery
• Via First Class Mail
• Other:
Shanghai Anzikang Electric Co., Ltd. 168/3 JiXinRoad Rm/Suite 401 Shanghai 201108
• Via Hand Delivery
^ Via Express Delivery
• Via First Class Mail
• Other:
C E R T A I N E L E C T R I C SKIN C A R E D E V I C E S , BRUSHES Inv. No. 337-TA-959 AND C H A R G E R S T H E R E F O R , AND K I T S CONTAINING SAME
Certificate of Service - Page 3
China
Our Family Jewels, Inc. d/b/a Epipiir Skincare • Via Hand Delivery 7770 E. I l i f f Ave., Rm./Suite E T^.via Express Delivery Denver, CO 80231 n v i a F i r s t c l a s s M a i l
• Other:
Anex Corporation • Via Hand Delivery C-304 Seoul Hightech Venture Center, 647-26 ^ Via Express Delivery Deungchon-dong, Gangseo-ku n v i a F i r s t c l a s s M a i l
Seoul, 157-030, Korea • Other-
Korean Beauty Co., Ltd. 10 F, Pluszone bldg. 700 Deungchon-Dong, Gangseo-Gu Seoul, Korea
• Via Hand Delivery
IS" Via Express Delivery
• Via First Class Mail
• Other:
H2pro Beautylife, Inc. 1043 Segovia Cir. Placentia, CA 92870-7137
• Via Hand Delivery
S} Via Express Delivery
• Via First Class Mail
• Other:
Serious Skin Care, Inc. 112N. Curry St. Carson City, NV 89703-4934
• Via Hand Delivery
C3 Via Express Delivery
• Via First Class Mail
• Other:
Wenzhou A i Er Electrical Technology Co., Ltd. d/b/a CNAIER 1#, XiaSong Road, WanQuan Town PI WNZ 325800 China
• Via Hand Delivery
El Via Express Delivery
• Via First Class Mail
• Other:
Coreana Cosmetics Co., Ltd. • Via Hand Delivery 204-1 Jeongchon-ri, eup, Seobuk-gu y i a Express Delivery Cheonan-si, Chungcheongnam-do • y i a F i r s t Q a s s M a i l
K o r e a • Other:
C E R T A I N E L E C T R I C SKIN C A R E D E V I C E S , BRUSHES Inv. No. 337-TA-959 AND C H A R G E R S T H E R E F O R , AND KITS CONTAINING SAME
Certificate of Service - Page 4
Flageoli Classic Limited 7310 Smoke Ranch Road Las Vegas, NV 89128
• Via Hand Delivery
M Via Express Delivery
• Via First Class Mail
• Other:
Jewlzie 2008 West 9 t h Street Brooklyn, NY 11223
• Via Hand Delivery
jSj Via Express Delivery
• Via First Class Mail
• Other:
Unicos USA, Inc. 610 South Palm Street, #E LaHabra, CA 90630
• Via Hand Delivery
JS? Via Express Delivery
• Via First Class Mail
• Other:
Skincarebyalana • Via Hand Delivery 34179 Golden Lantern Street, #101 ^ Via Express Delivery Dana Point, CA 92629 n v k F i r g t c l a g s M a i l
• Other: