• HQ H324074
• Nov 30, 2023

• Type : 19 U.S.C. §1337; Unfair Competition • HTSUS :
•  Related:   H324813; H242025; H323308; H282234; H311351   

OT:RR:BSTC:EOE H324074 SEH

VIA EMAIL: [email protected]; [email protected]

Tommy Martin, Esq.
Katharine Burke, Esq.
Baker Botts L.L.P.
700 K Street, NW
Washington, DC 20001

RE: Ruling Request; U.S. International Trade Commission; Limited Exclusion Order; Investigation No. 337-TA-1204; Certain Chemical Mechanical Planarization Slurries and Components Thereof

Dear Mr. Martin:

Pursuant to 19 C.F.R. Part 177, the Exclusion Order Enforcement Branch (“EOE Branch”), Regulations and Rulings, U.S. Customs and Border Protection (“CBP”) issues this administrative ruling in response to the ruling request and accompanying Exhibits A-Y (collectively, “ruling request”) submitted on behalf of CMC Materials, Inc. (“CMC”), the complainant from Investigation No. 337-TA-1204 (“the 1204 investigation” or “underlying investigation”) at the U.S. International Trade Commission (“Commission” or “ITC”). Specifically, CMC requested a ruling whether the limited exclusion order (“LEO”) that the Commission issued under section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337 (“section 337”), covers [[ ]], namely [[ ]], when imported to make certain chemical mechanical planarization (“CMP”) slurries, such as the Optiplane 2300 and Optiplane 2600 families, that were at issue in the underlying investigation. See, e.g., Ruling Request at 1-2.

This request for an administrative ruling under 19 C.F.R. § 177 has been conducted on an inter partes basis, with consent of the relevant parties: (1) your client CMC, the ruling requester and complainant from the 1204 investigation and (2) the following respondents from the 1204 investigation (collectively “DuPont”):

DuPont de Nemours, Inc., of Wilmington, Delaware; Rohm and Haas Electronic Materials CMP LLC of Newark, Delaware; Rohm and Haas Electronic Materials CMP Asia Inc. (d/b/a Rohm and Haas Electronic Materials CMP Asia Inc., Taiwan Branch (U.S.A.)) of Taoyuan City, Taiwan; Rohm and Haas Electronic Materials Asia-Pacific Co., Ltd. of Miaoli, Taiwan; Rohm and Haas Electronic Materials K.K. of Tokyo, Japan; and Rohm and Haas Electronic Materials LLC of Marlborough, Massachusetts.

See Email from the EOE Branch to CMC and DuPont, dated January 28, 2022; see also DuPont’s Response in Opposition to the 19 C.F.R. § 177 Request for Ruling (Feb. 22, 2022) (“Response”) at 1.

If there is information in this ruling letter not currently bracketed in red [[ ]] that CMC or the DuPont believe constitutes confidential information, and should be redacted from the published ruling, the relevant party is asked to contact CBP within ten (10) working days of the date of this administrative ruling and identifying such confidential information with [[red brackets]]. See, e.g., 19 C.F.R. § 177.8(a)(3).

Please note that disclosure of information related to administrative rulings under 19 C.F.R. Part 177 is governed by, for example, 6 C.F.R. Part 5, 31 C.F.R. Part 1, 19 C.F.R. Part 103, and 19 C.F.R. § 177.8(a)(3). See, e.g., 19 C.F.R. § 177.10(a). In addition, CBP is guided by the laws relating to confidentiality and disclosure, such as the Freedom of Information Act (“FOIA”), as amended (5 U.S.C. § 552), the Trade Secrets Act (18 U.S.C. § 1905), and the Privacy Act of 1974, as amended (5 U.S.C. § 552a). A request for confidential treatment of information submitted in connection with a ruling requested under 19 C.F.R. Part 177 faces a strong presumption in favor of disclosure. See, e.g., 19 C.F.R. § 177.8(a)(3). The person seeking this treatment must overcome that presumption with a request that is appropriately tailored and supported by evidence establishing that: the information in question is customarily kept private or closely-held and either that the government provided an express or implied assurance of confidentiality when the information was shared with the government or there were no express or implied indications at the time the information was submitted that the government would publicly disclose the information. See, e.g., U.S. Department of Justice, Office of Information Policy: Step-by-Step Guide for Determining if Commercial or Financial Information Obtained from a Person is Confidential Under Exemption 4 of the FOIA (updated 10/7/2019).

BACKGROUND

Investigation No. 337-TA-1204

As set forth in the Commission Opinion, the procedural history from the underlying investigation included the following:

On July 7, 2020, the Commission instituted this investigation based on a complaint filed by Cabot Microelectronics Corporation (“CMC”) of Aurora, Illinois. 85 Fed. Reg. 40685-86 (July 7, 2020). The complaint, as supplemented, alleged violations of section 337 in the importation into the United States, the sale for importation, or the sale within the United States after importation of certain chemical mechanical planarization (“CMP”) slurries and components thereof, including colloidal silica abrasive particles, by reason of infringement of one or more of claims 1, 3-6, 10, 11, 13, 14, 18-20, 24, 26-29, 31, 35-37, and 39-44 of U.S. Patent No. 9,499,721 (“the ’721 patent”). Id. at 40685. The Commission’s notice of investigation named as respondents DuPont de Nemours, Inc. of Wilmington, Delaware; Rohm and Haas Electronic Materials CMP, LLC of Newark, Delaware; Rohm and Haas Electronic Materials CMP Asia Inc. (d/b/a Rohm and Haas Electronic Materials CMP Asia Inc., Taiwan Branch (U.S.A.)) of Taoyuan City, Taiwan; Rohm and Haas Electronic Materials Asia-Pacific Co., Ltd. of Miaoli, Taiwan; Rohm and Haas Electronic Materials K.K. of Tokyo, Japan; and Rohm and Haas Electronic Materials LLC of Marlborough, Massachusetts (collectively, “Respondents” or “DuPont”). Id. at 40686. The Office of Unfair Import Investigations (“OUII”) is participating in this investigation. Id. ***

The ALJ held an evidentiary hearing from February 3-5, 2021, and received post-hearing briefs thereafter. On July 8, 2021, the ALJ issued the final ID finding a violation of section 337. The ID found that the parties do not contest personal jurisdiction and that the Commission has in rem jurisdiction over the accused products. ID at 11. The ID further found that the importation requirement under 19 U.S.C. § 1337(a)(1)(B) is satisfied. ID at 11-30. The ID also found that CMC established the existence of a domestic industry that practices the ’721 patent. ID at 144-169, 297-314. The ID concluded that CMC proved that Respondent’s accused products infringe the asserted claims of the ’721 patent and that Respondents failed to show that the asserted claims are invalid. ID at 87-144. The ALJ’s recommended determination on remedy and bonding (“RD”) recommended that, should the Commission find a violation, issuance of a limited exclusion order and cease and desist orders would be appropriate. ID/RD at 316-331. The RD also recommended imposing a bond in the amount of one hundred percent (100%) of entered value for covered products imported during the period of Presidential review. RD at 331.

On July 29, 2021, DuPont and OUII filed separate petitions for review of the ID. On August 12, 2021, CMC submitted responses to the petitions filed by DuPont and OUII, and OUII submitted a response to DuPont’s petition. On September 22, 2021, the Commission determined to review the ID in part. 86 Fed. Reg. 53674-76 (Sept. 28, 2021) (“Notice of Review”). Specifically, the Commission determined to review the ID’s findings on importation, infringement, and domestic industry. Id. at 53675. The Commission determined not to review the remainder of the ID. In connection with its review, the Commission requested briefing from the parties. Id. The Commission also requested briefing from the parties, interested government agencies, and other interested persons on remedy, the public interest, and bonding. Id. On October 6, 2021, the parties submitted their opening briefs. On October 13, 2021, the parties filed their reply briefs.

On October 6, 2021, non-Party, Intel Corporation (“Intel”) filed a statement on the public interest in response to the Commission’s notice. On October 8, 2021, Intel sent a letter to the Chair stating that it is in possession of a document that bears directly on the public interest impact of CMC’s requested remedy (“PI Document”) and that it would be in a position to provide the document if ordered to do so. On October 20, 2021, DuPont filed a response requesting that the Commission order Intel to produce the PI Document. On October 21, 2021, CMC filed a response in opposition. On November 2, 2021, the Commission issued a notice requesting additional public interest information from Intel and directing Intel to produce the PI Document. On November 9, 2021, Intel submitted a response to the Commission notice that included the PI Document. On November 15, 2021, the parties filed replies to Intel’s Submission.

Comm’n Op. at 3-7 (footnotes omitted).

In the underlying investigation, the Commission defined the accused products, consistent with the notice of institution and the parties’ joint stipulation regarding representative accused products, as follows:

DuPont’s accused products are the Optiplane™ 2300 product family, the Optiplane™ 2600 product family, and components thereof. ID at 9. “The Optiplane™ 2300 family includes at least Optiplane™ 2300 [[ ]] and Optiplane™ 23300A (a.k.a, OP2300 [[ ]]).” Id. (citing JX-0403C (Joint Stipulation Regarding Representative Accused Products)). “The Optiplane™ 2600 family includes at least Optiplane™ 2600, Optiplane™ 2601, Optiplane™2602/Optiplane™ 2300 [[ ]], and products with identifiers [[ ]].”9 Id.

9 DuPont indicates Optiplane™ 2602 and Optiplane™ 2300 [[ ]] are the same product. DuPont Sub. at 4.

Comm’n Op. at 8. The Commission further specified with respect to the accused products that “[t]he only components accused of infringement in this investigation are the BS-3 particles, which are colloidal silica abrasive particles. No other components in this investigation have been accused of infringement and no other components have been adjudicated in this investigation.” Id. With respect to infringement, the Commission additionally noted:

The ID referred to the Optiplane™ 2300 and 2600 slurries and components thereof (specifically the BS-3 particles) as “Accused Products;” however, certain parts of the ID used the term “Accused Products” to refer either to the Optiplane™ 2300 and 2600 slurries (“completed slurries”) (see, e.g., ID at 87-124) or the BS-3 particles (see, e.g., ID at 124).

The Commission determined to review infringement, including to clarify which theories of infringement (direct, induced, and/or contributory) apply to the completed slurries and which apply to the BS-3 particles.

Comm’n Op. at 13.

Ultimately, the Commission found a violation of section 337 as CMC “established that Respondents have violated section 337 in the importation of completed slurry that directly infringes the asserted composition claims of the ’721 patent [and that] Respondents have also violated section 337 in the importation of the BS-3 particles that Respondents use to both induce and contribute to other Respondents’ direct infringement of the composition and method claims.” Comm’n Op. at 21. And while the Commission specified that “[t]he order covers the infringing BS-3 particles[,]” the Commission further “determined not to include the ‘components thereof’ language in the LEO,” explaining:

The Commission finds that the components here that would be captured and excluded under the “components thereof” provision are mainly the [[ ]] See DuPont Sub. at 34-35. Yet, while [[ ]] were disclosed in discovery and discussed by the parties during the investigation, CMC did not accuse them of infringement, and no infringement or noninfringement determination has been made as to [[ ]]. Significantly, the evidence shows (and no one disputes) that these products are used in non-infringing slurries. Thus, declining to include the “components thereof” language means that the other imported components, i.e., [[ ]] will not be automatically excluded under that language, but will be analyzed upon importation and will only be excluded if CBP (or the Commission) determines that they infringe the asserted claims. In other words, they will be treated like any other articles that have not yet been adjudicated by the Commission.

Comm’n Op. at 26.

Lastly, the Commission determined that the public interest factors warranted a limited delay of application up to one year for certain entities that, at the time of the underlying investigation, were using the infringing Optiplane™ slurries “in an ongoing and documented project to develop fabrication processes for the production of semiconductors in the United States.” Comm’n Op. at 42. According to the Commission, “[t]his delay is solely for the purpose of enabling these projects to transition to non-infringing slurries.” Id. at 42-43.

19 C.F.R. Part 177 Request

Procedural History

On January 19, 2022, CMC submitted its Ruling Request seeking an administrative ruling pursuant to 19 C.F.R. § 177 whether the articles at issue are subject to the 1204 LEO. On January 25, 2022, after the parties executed a non-disclosure agreement for this inter partes proceeding, CMC provided DuPont with access to the confidential version of CMC’s ruling request and all exhibits. See Emails from DuPont to Counsel for CMC (January 25, 2022). On February 18, 2022, in light of the parties’ proposals, the EOE Branch established a procedural schedule for submissions to conduct this inter partes proceeding. See Email from the EOE Branch to Counsel for CMC and DuPont (February 18, 2022). On February 22, 2022, DuPont submitted a Response to the Ruling Request (accompanied by Exhibits 1-22) (“Response”). On March 1, 2022, CMC submitted a Reply in Support of its Ruling Request (“Reply”). On March 8, 2022, DuPont submitted a Sur-Reply (“Sur-Reply”). On March 25, 2022, following the Oral Discussion, DuPont requested an extension of time for all parties to file their post-oral discussion submissions. Based on the parties’ written views provided on March 28, 2022, the EOE Branch extended the due date until April 6, 2022, for them to file their post-oral discussion submissions.

In its Ruling Request, CMC set out the following position:

In its Final Determination, the Commission expressly found infringement of [U.S. Patent No. 9,499,721 (“the ’721 Patent”)] by both (a) the Optiplane 2300 family of chemical mechanical planarization (“CMP”) slurries2 and Optiplane 2600 family of CMP slurries3 (collectively, “the Infringing Optiplane Slurries”); and (b) certain “BS-3” colloidal silica particles, which are [[ ]] ingredients of the Infringing Optiplane Slurries. The narrow question presented by this Ruling Request is whether the LEO issued in the 1204 Investigation also covers [[ ]] when those [[ ]] are imported to make the Infringing Optiplane Slurries—[[ ]] (collectively, the “[[ ]]”). During the Investigation, DuPont never requested a finding that these [[ ]] are non-infringing. CMC maintains that the [[ ]] should also be excluded from entry into the United States when they are imported to make the Infringing Optiplane Slurries4 because, under the Commission’s reasoning relating to the infringing BS-3 particles, such importation would induce infringement of the ’721 Patent.

2The Optiplane 2300 family includes at least Optiplane 2300 [[ ]] and Optiplane 2300A (a.k.a., OP2300 [[ ]]). See JX-403C (Joint Stipulation Regarding Representative Accused Products).

3The Optiplane 2600 family includes at least Optiplane 2600, Optiplane 2601, Optiplane 2602, Optiplane 2300 [[ ]] and products with identifiers [[ ]]. See JX-403C (Joint Stipulation Regarding Representative Accused Products).

4CMC does not seek to exclude the [[ ]] from entry for any other uses.

Ruling Request at 1-2; see Reply to the DuPont Response to the 19 C.F.R. § 177 Request for Ruling (Mar. 1, 2022) at 2 (“To be clear, CMC does not seek to exclude the [[ ]] in every instance, as the DuPont Entities suggest”); see also CMC’s Post Oral Discussion Submission (Apr. 6, 2022) at 2. DuPont responded, inter alia, that “DuPont uses the [articles at issue] in numerous CMP slurry products besides the Optiplane™ 2300 and 2600 slurries involved in the ITC investigation” and noted, as an example in its Response, that “[n]one of these slurries contain Fuso BS-3.” Response at 3-4. Among these examples, DuPont identified [[ ]]. Response at 3. The parties’ respective positions are described in further detail and addressed below.

Stipulation

As this inter partes proceeding progressed, the parties executed a stipulation on January 26, 2023, which counsel for DuPont provided to the EOE Branch on February 8, 2023. The email from counsel transmitting the stipulation stated:

In connection with this proceeding, the parties have agreed to the attached stipulation regarding one of DuPont’s slurry products, [[ ]]. DuPont would like to avoid any importation issues

regarding [[ ]]. Please let us know about next steps.

Email from DuPont to the EOE Branch, dated February 8, 2023. The Stipulation specified the agreement the parties reached regarding importation of [[ ]], specifically that:

[[

]]

Stipulation (dated Jan. 26, 2023).

ISSUE

Whether the articles at issue are subject to the 1204 LEO under a theory of indirect infringement based on active inducement.

LEGAL FRAMEWORK

Section 337 Exclusion Order Administration

The Commission shall investigate any alleged violation of section 337 to determine, with respect to each investigation conducted by it under this section, whether there is a violation of this section. See 19 U.S.C. § 1337(b)(1) and (c). If the Commission determines, as a result of an investigation under this section, that there is a violation of this section, it shall direct that the articles concerned, imported by any person violating the provision of this section, be excluded from entry into the United States unless the Commission finds based on consideration of the public interest that such articles should not be excluded from entry. See 19 U.S.C. § 1337(d)(1).

When the Commission determines that there is a violation of section 337, it generally issues one of two types of exclusion orders: (1) a limited exclusion order or (2) a general exclusion order. See Fuji Photo Film Co., Ltd. V. ITC, 474 F.3d 1281, 1286 (Fed. Cir. 2007). Both types of orders direct CBP to bar infringing products from entering the country. See Yingbin-Nature (Guangdong) Wood Indus. Co. v. ITC, 535 F.3d 1322, 1330 (Fed Cir. 2008). “A limited exclusion order is ‘limited’ in that it only applies to the specific parties before the Commission in the investigation. In contrast, a general exclusion order bars the importation of infringing products by everyone, regardless of whether they were respondents in the Commission’s investigation.” Id. A general exclusion order is appropriate only if two exceptional circumstances apply. See Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1356 (Fed. Cir. 2008). A general exclusion order may only be issued if (1) “necessary to prevent circumvention of a limited exclusion order,” or (2) “there is a pattern of violation of this section and it is difficult to identify the source of infringing products.” 19 U.S.C. § 1337(d)(2); see Kyocera, 545 F.3d at 1356 (“If a complainant wishes to obtain an exclusion order operative against articles of non-respondents, it must seek a GEO [general exclusion order] by satisfying the heightened burdens of §§ 1337(d)(2)(A) and (B).”).

In addition to the action taken above, the Commission may issue an order under 19 U.S.C. § 1337(i) directing CBP to seize and forfeit articles attempting entry in violation of an exclusion order if their owner, importer, or consignee previously had articles denied entry on the basis of that exclusion order and received notice that seizure and forfeiture would result from any future attempt to enter articles subject to the same. An exclusion order under § 1337(d)—either limited or general—and a seizure and forfeiture order under § 1337(i) apply at the border only and are operative against articles presented for customs examination or articles conditionally released from customs custody but still subject to a timely demand for redelivery. See 19 U.S.C. §§ 1337(d)(1) (“The Commission shall notify the Secretary of the Treasury of its action under this subsection directing such exclusion from entry, and upon receipt of such notice, the Secretary shall, through the proper officers, refuse such entry.”); id., at (i)(3) (“Upon the attempted entry of articles subject to an order issued under this subsection, the Secretary of the Treasury shall immediately notify all ports of entry of the attempted importation and shall identify the persons notified under paragraph (1)I.”) (emphasis added).

Significantly, unlike district court injunctions, the Commission can issue a general exclusion order that broadly prohibits entry of articles that violate section 337 of the Tariff Act of 1930 without regard to whether the persons importing such articles were parties to, or were related to parties to, the investigation that led to issuance of the general exclusion order. See Vastfame Camera, Ltd. V. ITC, 386 F.3d 1108, 1114 (Fed. Cir. 2004). The Commission also has recognized that even limited exclusion orders have broader applicability beyond just the parties found to infringe during an investigation. See Certain GPS Devices and Products Containing Same, Inv. No. 337-TA-602, Comm’n Op. at 17, n.6, Doc ID 317981 (Jan. 2009) (“We do not view the Court’s opinion in Kyocera as affecting the issuance of LEOs [limited exclusion orders] that exclude infringing products made by respondents found to be violating Section 337, but imported by another entity. The exclusionary language in this regard that is traditionally included in LEOs is consistent with 19 U.S.C. § 1337(a)(1)(B)-(D) and 19 U.S.C. § 1337(d)(1).”).

Moreover, “[t]he Commission has consistently issued exclusion orders coextensive with the violation of section 337 found to exist.” See Certain Erasable Programmable Read Only Memories, Inv. No. 337-TA-276, Enforcement Proceeding, Comm’n Op. at 11, Doc ID 43536 (Aug. 1991) (emphasis added). “[W]hile individual models may be evaluated to determine importation and [violation], the Commission’s jurisdiction extends to all models of [violative] products that are imported at the time of the Commission’s determination and to all such products that will be imported during the life of the remedial orders.” See Certain Optical Disk Controller Chips and Chipsets, Inv. No. 337-TA-506, Comm’n Op. at 56-57, USITC Pub. 3935, Doc ID 287263 (July 2007).

Lastly, despite the well-established principle that “the burden of proving infringement generally rests upon the patentee [or plaintiff],” Medtronic, Inc. v. Mirowski Family Ventures, LLC, 571 U.S. 191 (2014), the Commission has held that Medtronic is not controlling precedent and does not overturn its longstanding practice of placing the burden of proof on the party who, in light of the issued exclusion order, is seeking to have an article entered for consumption. See Certain Sleep-Disordered Breathing Treatment Systems and Components Thereof, Inv. No. 337-TA-879, Advisory Opinion at 6-11. In particular, the Commission has noted that “[t]he Federal Circuit has upheld a Commission remedy which effectively shifted the burden of proof on infringement issues to require a company seeking to import goods to prove that its product does not infringe, despite the fact that, in general, the burden of proof is on the patentee to prove, by a preponderance of the evidence, that a given article does infringe[. ]” Certain Integrated Circuit Telecommunication Chips, Inv. No. 337-TA-337, Comm’n Op. at 21, n.14, USITC Pub. 2670, Doc ID 217024 (Aug. 1993), (emphasis in original) (citing Sealed Air Corp. v. ITC, 645 F.2d 976, 988-89 (C.C.P.A. 1981)).

This approach is supported by Federal Circuit precedent. See Hyundai Elecs. Indus. Co. v. ITC, 899 F.2d 1204, 1210 (Fed. Cir. 1990) (“Indeed, we have recognized, and Hyundai does not dispute, that in an appropriate case the Commission can impose a general exclusion order that binds parties and non-parties alike and effectively shifts to would-be importers of potentially infringing articles, as a condition of entry, the burden of establishing noninfringement. The rationale underlying the issuance of general exclusion orders—placing the risk of unfairness associated with a prophylactic order upon potential importers rather than American manufacturers that, I at least some foreign manufacturers and importers, have demonstrated their entitlement to protection from unfair trade practices—applies here [in regard to a limited exclusion order] with increased force.”) (emphasis added) (internal citation omitted).

Patent Infringement

Determining patent infringement requires two steps. Advanced Steel Recovery, LLC v. X-Body Equip., Inc., 808 F.3d 1313, 1316 (2015). The first is to construe the limitations of the asserted claims and the second is to compare the properly construed claims to the accused product. Id. To establish literal infringement, every limitation recited in a claim must be found in the accused product whereas, under the doctrine of equivalents, infringement occurs when there is equivalence between the elements of the accused product and the claimed elements of the patented invention. Microsoft Corp. v. GeoTag, Inc., 817 F.3d 1305, 1313 (Fed. Cir. 2016). One way to establish equivalence is by showing, on an element-by-element basis, that the accused product performs substantially the same function in substantially the same way with substantially the same result as each claim limitation of the patented invention, which is often referred to as the function-way-result test. See Intendis GmbH v. Glenmark Pharms., Inc., 822 F.3d 1355, 1361 (Fed. Cir. 2016).

As for the first step above, “claim construction is a matter of law.” SIMO Holdings, Inc. v. H.K. uCloudlink Network Tech., Ltd., 983 F.3d 1367, 1374 (Fed. Cir. 2021). Moreover, the ultimate construction of a claim limitation is a legal conclusion, as are interpretations of the patent’s intrinsic evidence (the patent claims, specifications, and prosecution history). UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 822 (Fed. Cir. 2016) (citing Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841, 190 L. Ed. 2d 719 (2015).

“Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges.” Id. at 1314. In others, courts look to public sources such as “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Id.

“To begin with, the context in which a term is used in the asserted claim can be highly instructive.” Phillips, 415 F.3d at 1314 (“To take a simple example, the claim in this case refers to ‘steel baffles,’ which strongly implies that the term ‘baffles’ does not inherently mean objects made of steel.”). The context in which a claim term is used also includes the full chain of dependence as well as the remaining suite of claims and the written description. See Inline Plastics Corp. v. EasyPak, LLC, 799 F.3d 1364, 1371 (Fed. Cir. 2015) (“Since the specification explicitly mentions the ‘alternative’ . . . there can be no debate concerning the application of the doctrine of claim differentiation.”).

The second step to establish infringement involves a comparison of the claims, as properly construed, to the accused product, which is a question of fact. Apple Inc. v. Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1040 (Fed. Cir. 2016) (en banc).

In addition to direct infringement, a party can indirectly infringe a patent through active inducement, which occurs if the party knew of the patent and that the induced acts constitute patent infringement. See Commil USA, LLC v. Cisco Sys., Inc., 575 U.S. 632 135 S. Ct. 1920, 1926 (2015); see also 35 U.S.C. § 271(b) (“Whoever actively induces infringement of a patent shall be liable as an infringer.”). For a finding of induced infringement, the infringer must possess a specific intent to encourage another’s infringement. See i4i Ltd. Partnership v. Microsoft Corp., 598 F.3d 831, 851 (Fed. Cir. 2010), aff’d, 564 U.S. 91 (2011). Furthermore, induced infringement requires a showing that the accused inducer took an affirmative act to encourage infringement. See Microsoft Crop. V. Datatern, Inc., 755 F.3d 899, 904 (Fed. Cir. 2013).

LAW AND ANALYSIS

Importation Pursuant to the Stipulation

CMC and DuPont agree that “[[

]].” Stipulation (dated Jan. 26, 2023). Based on the parties’ agreement, and subject to its provisions, the articles in question from the Stipulation are not subject to the exclusion order and may be entered accordingly.

Importation of [[ ]]

As noted above, the articles at issue in this ruling request did not form the basis for the Commission’s final determination regarding the violation of section 337 and the Commission removed the “components thereof” language from the LEO, which may have otherwise captured them within the scope of the exclusion order without further consideration. Accordingly, CMC has submitted this ruling request to address the articles at issue with a view to the Commission Opinion, as referenced in the points below.

“[W]ith regard to the composition claims,” the Commission affirmed the finding in “the ID [] that the ‘Accused Products’ – in that context, the Optiplane™ 2300 and 2600 slurries – directly infringe the asserted claims of the ‘721 patent, which the Commission understands to mean that the completed slurries practice each and every limitation of the asserted composition claims and carry out all of the steps of the method claims when used” and, as such, in that context, found “that importation of the Optiplane™ slurry is a violation of section 337[.]” (Comm’n Op. at 14) The Commission affirmed, “[w]ith respect to the completed slurries, [where] the ID found direct infringement based on Respondents’ use of the completed slurries as well as Respondents’ sale of the completed slurries in the United States. (Comm’n Op. at 15-16) The Commission “determined to affirm a violation of section 337 with respect to the importation of BS-3 particles based on the ID’s indirect infringement findings[.]” (Comm’n Op. at 15) The Commission affirmed the finding that, “[w]ith regard to the BS-3 particles, the ID found direct infringement of the composition and method claims based on Respondents’ use of the particles to make Optiplane™ 2300 and 2600 slurries.” (Comm’n Op. at 15) The Commission “determined to affirm the ID’s induced infringement finding with respect to the imported BS-3 particles for the reasons provided in the ID,” specifically – “As discussed above in section B.2., the ID properly found that there was direct infringement by another as required by section 271(b).” “[C]ertain respondents, including DuPont de Nemours, Inc. and Rohm and Haas Electronic Materials K.K., actively induce other respondent subsidiaries, including at least Rohm and Haas Electronic Materials CMP in Delaware to infringe the ’721 patent.” “[E]mployees of DuPont de Nemours, Inc. and subsidiary Rohm and Haas Electronic Materials K.K. of Japan purchase BS-3 colloidal silica particles in Japan and cause them to be imported into the United States with the intention that they will be used in the United States by Rohm and Haas Electronic Materials CMP LLC to make infringing CMP slurries, which are then used in an infringing manner in the United States by Rohm and Haas Electronic Materials CMP LLC, its customers, and a third-party labs.” “Accordingly, the Commission affirm[ed] the finding that certain Respondents induced infringement in the United States by importing and supplying BS-3 particles. The Commission concludes that the importation of the BS-3 particles by certain Respondents induces infringement of the method and composition claims by other respondents and constitutes the importation of ‘articles that – infringe’ within the meaning of 337(a)(1)(B)(i).”

Comm’n Op. at 17-18.

CMC’s Arguments That The Articles at Issue Are Covered

As mentioned, CMC’s position is that the “narrow question presented by this Ruling Request is whether the LEO issued in the 1204 Investigation also covers [[ ]] [[ ]] when those [[ ]] are imported to make the Infringing Optiplane Slurries—[[ ]][.] During the Investigation, DuPont never requested a finding that these [articles at issue] are non-infringing. CMC maintains that the [articles at issue] should also be excluded from entry into the United States when they are imported to make the Infringing Optiplane Slurries because, under the Commission’s reasoning relating to the infringing BS-3 particles, such importation would induce infringement of the ’721 Patent.” Ruling Request at 1 (emphasis added).

CMC notes that “[i]t undisputed that each of the Infringing Optiplane Slurries includes Fuso BS-3 colloidal silica abrasive particles as well as [[ ]] for the majority of products and [[ ]] for the original Optiplane of products, as set forth below:

[[ ]]”

Ruling Request at 6-7, citing Exhibit O to the Ruling Request (Dauskardt Demonstratives) at 0011 (ITC Inv. No. 337-TA-1174: CDX-0006C, Dr. Reinhold H. Dauskardt, Opening Witness Statement Demonstratives, dated December 22, 2020).

As for its theory of indirect infringement, CMC offers that the “rationale articulated in the ID and affirmed by the Commission with respect to induced infringement in the importation of the Fuso BS-3 colloidal silica abrasive particles leads to the same conclusion as to the [articles at issue]—namely, if the [articles at issue] are being imported for use in the Infringing Optiplane Slurries, then they induce infringement of the ’721 Patent. In this regard, the record establishes that the [articles at issue] are used in the same predicate act of direct infringement in the United States as the Fuso BS-3 particles, at least because the DuPont Entities use the [articles at issue] to make the Infringing Optiplane Slurries in the United States.” Ruling Request at 8.

Furthermore, in response to DuPont’s non-infringement arguments, CMC emphasized that it “does not seek to exclude the [articles at issue] in every instance, as the DuPont Entities suggest. CMC only seeks a determination that the [articles at issue] infringe the ’721 Patent when used in the Infringing Optiplane Slurries.” Reply at 2 (emphasis in original) (internal citation omitted). On this point, CMC notes that “the ID found that the DuPont Entities ‘induced the direct infringement of the ‘721 patent by multiple third parties including respondents’ own subsidiaries [and] respondents’ customers.’” Id. at 3 (citing ID at 135 (emphasis added)). “In this regard,” according to CMC, “there is no dispute that the DuPont Entities have the same knowledge about the existence of the ’721 Patent, and of the infringement of the ’721 Patent resulting from their making, using, and selling the Infringing Optiplane Slurries.” Id. That the articles at issue also have non-infringing uses is irrelevant to CMC, as its “Request is not directed to such uses.” Id. (citing Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1364 (Fed. Cir. 2012) for the proposition that the existence of non-infringing alternatives is not a defense to induced infringement).

Replying to other non-infringement arguments from DuPont, CMC states that it is “of no import if the [articles at issue] are ‘unclaimed components’” because inducement as a term in patent law “is as broad as the range of actions by which one in fact causes, or urges, or encourages, or aids another to infringe a patent.” Reply at 4 (citing Tegal Corp. v. Tokyo Electron Co., Ltd., 248 F.3d 1376, 1378-79 (Fed. Cir. 2001)). In CMC’s view, the DuPont Entities’ importation of the [articles at issue] “causes, urges, or encourages infringement of the ’721 Patent” such that “the DuPont Entities are incorrect that there can be no inducement as to the [[ ]] simply because those [[ ]] are only imported by a single DuPont Entity. Id.

Lastly, CMC disputes DuPont’s judicial estoppel argument “for the simple reason that CMC is not taking any contrary positions between its Request and the underlying Investigation.” Reply at 4. “CMC is seeking to stop the DuPont Entities’ continued infringement through importation of [[ ]] used specifically by the DuPont Entities to make the Infringing Optiplane Slurries in the United States” whereas in the underlying investigation, “CMC simply opposed the DuPont Entities’ unpersuasive invalidity argument that a POSITA would have combined [[ ]] with a slurry that failed to satisfy numerous claim limitations. Id.

DuPont’s Arguments That The Articles at Issue Are Not Covered

DuPont raises several arguments for the admissibility of the articles at issue. As an initial point, DuPont notes that it “uses the [articles at issue] in numerous CMP slurry products besides the Optiplane™ 2300 and 2600 slurries involved in the ITC investigation” as indicated below.

DuPont Slurries Using [[ ]] DuPont Slurries Using [[ ]]  Acuplane™ 2010 Optiplane™ 2118 Acuplane™ 9001  Acuplane™ 4100 Optiplane™ 3000   Acuplane™ 4100-009 RDB-1001   Acuplane™ 6002-182NB RDB-1002   Acuplane™ SSA-718-P YSW-101    Response at 3-4.

Additionally, DuPont concedes that, while the articles at issue “are also used to manufacture the two slurry families found by the ITC to be infringing—Optiplane™ 2300 and Optiplane™ 2600—CMC’s infringement allegations before the ITC involved [[ ]] Fuso BS-3.” Response at 1. Beyond that, on the question of direct infringement, DuPont argues that CMC has not cited “expert testimony or documentary evidence supporting its new infringement allegations, nor provide[d] a claim-by-claim analysis” to establish how the articles at issue meet any of the limitations from the relevant claims of the ‘721 patent. Id. at 3. On the question of indirect infringement, DuPont’s view is that CMC has failed “to show an intent to induce infringement involving the [articles at issue]” because the Commission recognized that “the evidence shows (and no one disputes) that these products are used in non-infringing slurries[,]” and because “where a product has substantial noninfringing uses, intent to induce infringement cannot be inferred even when the defendant has actual knowledge that some users of its product may be infringing the patent.” Id. at 7 (quoting Warner-Lambert Co. v. Apotex Corp., 316 F.3d 1348, 1365 (Fed. Cir. 2003) (emphasis added)). Lastly, DuPont considers that CMC’s infringement allegations are estopped in light of certain invalidity arguments presented in the underlying investigation where CMC prevailed. Id. at 8-10.

Application of CBP Section 337-Based Rulings to the Question Presented

The EOE Branch has consistently recognized that the Commission issues exclusion orders that are “coextensive with the violation of Section 337 found to exist” and that, customarily, the Commission “does not limit [an exclusion order only] to covered products that were actually adjudicated to infringe the Asserted Patents[.]” CBP HQ Ruling H324813 (dated June 3, 2022) at 36, 38. However, in CBP HQ Ruling H242025 (dated June 24, 2013), CBP addressed administration of an exclusion order and the issue of features present on legacy products that were not specifically accused or found to infringe during the underlying investigation at Commission. In that investigation, which gave rise to that ruling, the complainant accused a specific application program running on the legacy mobile devices of infringing the asserted patent claims. The Commission found infringement solely on this basis.

After the Commission issued the exclusion order and the respondent removed the program in question, the complainant from the underlying investigation argued that a different program that was present on the same legacy devices, but not accused or found to infringe, nonetheless subjected any imported articles with the non-accused program to the exclusion order. CBP established its position that, when an infringing feature is removed and a new feature or other modification is not added to the article, CBP will not “refuse entry on the basis of features that were present on the accused devices at the time of the ITC investigation but were not specifically accused and found to satisfy the limitations in the asserted patent claims identified in the exclusion order.” HQ H242025 at 9 (June 24, 2013) (emphasis added). In other words, where an infringing feature has been removed and will not be combined subsequently with the imported article, and there are no changes to the legacy article other than the removal of the infringing feature, CBP will not refuse the article’s entry on a theory of infringement that is focused on legacy features that were present but not accused and, therefore, not found to infringe during the underlying investigation. As shown above, Exhibit O confirms that the Optiplane 2300 and Optiplane 2600 families of legacy slurries at issue in the Commission investigation included not only the Fuso BS-3 colloidal silica abrasive particles found to infringe and that are subject to the exclusion order but also the articles at issue in this inter partes proceeding. See Ruling Request at 6-7, Exhibit O (CDX-0006C) at 0011; see also CMC Reply at 1 (“CMC is seeking exactly what the Commission instructed it to seek—specifically, an infringement determination as to [[ ]] that existed but were not adjudicated during the underlying investigation.”) (emphasis added). Moreover, neither party has identified any change or alteration, such as an addition or other modification, to the legacy slurries other than the removal of the Fuso BS-3 particles that are subject to the exclusion order based on the Commission’s infringement finding and, as such, cannot be combined post-importation with the slurries in question.

Therefore, because the articles at issue were present in the legacy slurries but not accused or found to infringe during the underlying investigation, and because the administrative record reflects the removal of the infringing Fuso BS-3 but does not contain any evidence of additions or other modifications to those legacy slurries except that removal, CBP will not refuse entry to the articles at issue based on the position set forth in CBP HQ Ruling H242025 and as required by 19 U.S.C. § 1625. See Int’l Custom Prods. v. United States, 748 F.3d 1182, 1185-86, 1187 (“Section 1625(c) requires Customs to undergo notice and comment procedures before it may issue ‘a proposed interpretive ruling or decision which would — (1) modify . . . or revoke a prior interpretive ruling or decision which has been in effect for at least 60 days.’” (emphasis in original) . . . “Once Customs issued the Ruling Letter, [plaintiff] and other importers were entitled ‘to expect certainty’ that Customs ‘w[ould] not unilaterally change’ [its position] ‘without providing proper notice and an opportunity for comment.’” (emphasis added) (internal citations omitted)); see also 19 C.F.R. § 177.9(a) (“A ruling letter issued by the Customs Service under the provisions of this part represents the official position of the Customs Service with respect to the particular transaction or issue described therein and is binding on all Customs Service personnel in accordance with the provisions of this section until modified or revoked.”).

Finally, in the 1204 LEO, the Commission directed that “[a]t the discretion of CBP and pursuant to procedures that it establishes, persons seeking to import articles that are potentially subject to this Order may be required to certify that they are familiar with the terms of this Order, that they have made appropriate inquiry, and thereupon state that, to the best of their knowledge and belief, the products being imported are not excluded from entry under paragraph 1 of this Order. At its discretion, CBP may require persons who have provided the certification described in this paragraph to furnish such records or analyses to substantiate the certification.” 1204 LEO at 3-4, ¶ 5; see also CBP HQ Ruling H323308 (dated February 8, 2022) at 15 n.6 (“A favorable ruling under 19 C.F.R. Part 177 may provide a basis for using a certification[.] . . . [T]he use of certifications is primarily when the articles in question ‘have been previously determined by CBP or the Commission not to violate the exclusion order.’”) (quoting Certain Network Devices, Related Software and Components Thereof (I), Inv. No. 337-TA-944, EDIS Doc. ID 586600, Commission Opinion (Public) (June 26, 2016) at 53 n.19).

In appropriate circumstances, the EOE Branch has conditioned an importer’s ability to enter for consumption into the United States the article at issue according to a ruling under 19 C.F.R. Part 177 that resulted from an inter partes proceeding. See CBP HQ Ruling H324813 (dated June 3, 2022). Additionally, in certain cases, the Intellectual Property Rights Branch (the predecessor to the EOE Branch) treated the filing of a certification as a condition for entry following a favorable ruling under 19 C.F.R. Part 177. See CBP Headquarters Ruling H282234 (dated May 16, 2017) at 9 (“Because there is currently no simple method to test whether a particular GFCI utilizes three electrically isolated conductors without disassembling the GFCI, we are requiring that Royal Pacific Corporation file a certification upon ENTRY (along with any other required entry documents) for any imported GFCIs certifying that said merchandize does not utilize three electrically isolated conductors and thus does not satisfy the independent claim limitations of the ’809 patent.”); see also CBP Headquarters Ruling H311351 (dated August 19, 2020) at 29 (“In addition, with each entry of the articles at issue, CBP will require from persons importing the articles at issue (1) a certification, as approved by CBP; and (2) upon request by CBP, to furnish such records or analyses necessary to substantiate the certification.”) (internal citation omitted). Based on the issues presented, the EOE Branch considers it appropriate to condition entry on the use of a certification, as prescribed by the EOE Branch, with representations consistent with this ruling.

HOLDING:

We find that the articles in question from the Stipulation, in conformity with its provisions, are not subject to the exclusion order and that the article at issue are not subject to exclusion from entry based on application of CBP HQ Ruling H242025, as detailed above. Entry for consumption into the United States, entry for consumption from a foreign trade zone, or withdrawal from a warehouse for consumption of the articles, however, is conditioned on the submission of a certification, as provided for in this ruling.

The decision is limited to the specific facts set forth herein. If articles differ in any material way from the articles at issue described above, or if future importations vary from the facts stipulated to herein, this decision shall not be binding on CBP as provided for in 19 C.F.R. §§ 177.2(b)(1), (2), (4), and 177.9(b)(1) and (2).


Sincerely,

Dax Terrill
Chief, Exclusion Order Enforcement Branch
Regulations and Rulings, Office of Trade
U.S. Customs and Border Protection


cc: Eric Fues, Esq.
Mareesa Frederick, Esq.
Finnegan, Henderson, Farabow,
Garrett & Dunner, L.L.P.
901 New York Avenue, N.W.
Washington, D.C. 20001
[email protected]
[email protected]