Customs Ruling HQ H339732 - Ruling Request; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-1155; Certain Luxury Vinyl Tile and Components Thereof.

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HQ H339732
Jun 11, 2024

Type : 19 U.S.C. § 1337; Unfair Competition • HTSUS :
Related: H334801; H242026; H284032; H328569

OT:RR:BSTC:EOE H339732 JW

Mr. Smith R. Brittingham IV
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
901 New York Avenue, NW
Washington, DC 20001-4413

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

RE: Ruling Request; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-1155; Certain Luxury Vinyl Tile and Components Thereof.

Dear Mr. Brittingham:

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 ruling letter in response to VILOX Sweden AB's ("VILOX") request for an administrative ruling (dated September 25, 2023), which included Exhibits 1 to 13 (collectively, "Ruling Request"). We find that VILOX has met its burden to establish that the floor panels manufactured by [[ ]][1] -- submitted as the physical sample for consideration during this inter partes proceeding, and as described in detail below -- are not subject to the general exclusion order ("GEO") issued in U.S. International Trade Commission ("Commission" or "ITC") Investigation No. 337-TA-1155 ("the underlying investigation" or "the 1155 investigation"), pursuant to Section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337 ("Section 337").[2] However, as explained below, the admissibility determination in this ruling only applies to the embodiment of that physical sample as representative of the articles at issue for which VILOX has requested a ruling and submitted evidence to support such a determination and, specifically, the findings regarding the presence of particular features in the floor panels manufactured by [[ ]] that are the basis for the non-infringement determination.

We further note that determinations of the Commission resulting from the underlying investigation or a related proceeding under 19 C.F.R. Part 210 are binding authority on CBP and, in the case of conflict, will by operation of law modify or revoke any contrary CBP ruling or decision pertaining to Section 337 exclusion orders.

This ruling letter is the result of a request for an administrative ruling from CBP under 19 C.F.R. Part 177 that the EOE Branch conducted on an inter partes basis. The process involved the two parties with a direct and demonstrable interest in the question presented by the ruling request: (1) your client, VILOX, the ruling requester; and (2) Mohawk Industries Inc. of Calhoun, Georgia; Flooring Industries Ltd. Sarl of Bertrange, Luxembourg; and IVC US Inc. of Dalton, Georgia (collectively, "Mohawk"), complainants in the 1155 investigation. See e.g., 19 C.F.R. 177.1(c).

The parties were asked to clearly identify confidential information with [[red brackets]] in all of their submissions to CBP. See, e.g., EOE Branch Email to Parties, dated October 6, 2023; see also 19 C.F.R. 177.2 and 177.8. If there is additional information in this ruling letter not currently bracketed in red [[ ]] that either party believes constitutes confidential information and should be redacted from the published ruling, then the parties are asked to contact CBP within ten (10) working days of the date of this ruling letter. 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 Food Marketing Institute v. Argus Leader Media, 139 S. Ct. 2356, 2366 (2019) (concluding that "[a]t least where commercial or financial information is both customarily and actually treated as private by its owner and provided to the government under an assurance of privacy, the information is 'confidential' within the meaning of exemption 4."); see also U.S. Department of Justice, Office of Information Policy (OIP): 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); and OIP Guidance: Exemption 4 after the Supreme Court's Ruling in Food Marketing Institute v. Argus Leader Media (updated 10/4/2019).

I. BACKGROUND

A. ITC Investigation No. 337-TA-1155

The Commission instituted the 1155 investigation on May 16, 2019, based upon a complaint, as amended, filed on behalf of Mohawk Industries Inc. of Calhoun, Georgia; Flooring Industries Ltd. Sarl of Bertrange, Luxembourg; and IVC US Inc. of Dalton, Georgia. Certain Luxury Vinyl Tile and Components Thereof, Investigation No. 337-TA-1155, EDIS Doc. No. 721148, Commission Opinion (Public) at 2 (October 5, 2020) ("Comm'n Op.") citing 84 Fed. Reg. 22161 (May 16, 2019). The Commission instituted the investigation to determine:

[W]hether there is a violation of subsection (a)(1)(B) of section 337 in the importation into the United States, the sale for importation into the United States, the sale for importation, or sale within the United States after importation of certain products identified in paragraph (2) by reason of infringement of one or more of claims 7,8,13,15-17, 20-23, and 30 of the '460 patent; claims 1-21 of the '490 patent; and claims 1-27 of the '655 patent, and whether an industry in the United States exists as required by subsection (a)(2) of section 337.

Certain Luxury Vinyl Tile and Components Thereof, Investigation No. 337-TA-1155, EDIS Doc. No. 716630, Initial Determination and Recommended Determination (Public) at 1 (August 7, 2020) ("ID/RD") citing 84 Fed. Reg. 22161 (May 16, 2019). Further, pursuant to 19 C.F.R. 210.10(b)(1):

[T]he plain language description of the accused products or category of accused products, which defines the scope of the investigation, is "interlocking luxury vinyl tile floor panels and components thereof."

Id. The notice of investigation named forty-five respondents. Comm'n Op. at 2, citing 84 Fed. Reg. 22161 (May 16, 2019). The Office of Unfair Import Investigations ("OUII") was also a party to the investigation. Id. Thirty-five of the respondents were terminated on the basis of settlement, consent order, or termination by Mohawk. Comm'n Op. at 2 (citations omitted). The other ten respondents were found in default. Id. at 2-3.

On January 15, 2020, Mohawk filed a motion, which was supplemented three times, for summary determination that Complainants demonstrated a domestic industry and the defaulting respondents violated Section 337. Id. at 3 (citations omitted). On May 15, 2020, the presiding Administrative Law Judge ("ALJ") issued an ID/RD (Order No. 36) granting the motion for summary determination. Id. (citation omitted). The ALJ also recommended, inter alia, the issuance of a GEO. Id. (citation omitted).

On June 30, 2020, the Commission determined to review the ID in part. Id. On review, inter alia, the Commission affirmed the finding of violation of Section 337 as to the defaulting respondents. Id. Written submissions on remedy, public interest, and bonding were also requested. Id. at 4.

On July 15, 2020, Complainants and OUII submitted briefs on remedy, public interest, and bonding requesting, inter alia, that the Commission issue a GEO. Id. On July 22, 2020, OUII submitted a reply to Complainants' response, and no other submissions were received. Id.

On September 16, 2020, the Commission issued a GEO. Certain Luxury Vinyl Tile and Components Thereof, Investigation No. 337-TA-1155, EDIS Doc. No. 719813, General Exclusion Order (September 16, 2020). Paragraphs 1 and 2 of the 1155 GEO state:

1. Certain luxury vinyl tile floor and components thereof (as defined in paragraph 2 below) that infringe one or more of claims 7, 8, 13, 15-17, 20-23, and 30 of the '460 patent; claims 1-6, 8, 10, 11, 13-16, and 18 of the '490 Patent; or claims 1-4, 6-16, 18, and 20-26 of the '655 Patent are excluded from entry for consumption into the United State, entry for consumption from a foreign-trade zone, or withdrawal from a warehouse for consumption, for the remaining terms of the Asserted Patents, except under license from, or with the permission or, the patent owner or as provided by law.

2. The certain luxury vinyl tile floor and components thereof subject to this exclusion order (i.e., "covered articles") are as follows: interlocking luxury vinyl tile floor panels and components thereof.

Id. at 1 and 2.

B. The Patents and Claims in the 1155 GEO

The 1155 GEO bars the unlicensed entry for consumption into the United States of luxury vinyl tile floor and components thereof (as defined in 2 of the GEO) that infringe one or more of claims 7, 8, 13, 15-17, 20-23, and 30 of the '460 patent; claims 1-6, 8, 10, 11, 13-16, and 18 of the '490 patent; or claims 1-4, 6-16, 18, and 20-26 of the '655 patent. See Certain Luxury Vinyl Tile and Components Thereof, Investigation No. 337-TA-1155, EDIS Doc. ID 719813, General Exclusion Order (September 16, 2020). Of these claims, the independent claims include claim 7 of the '460 patent; claims 1 and 13 of the '490 patent; and claims 1 and 18 of the '655 patent.

1. The '460 Patent

The '460 patent is titled "Floor Covering, Floor Element and Method for Manufacturing Floor Elements." ID/RD at 43. The text of independent claim 7 of the '460 patent is reproduced below:

7. Floor covering, consisting of floor elements, which, at least at a first pair of two opposite sides, comprise coupling parts, which substantially are performed as a male coupling part and a female coupling part, which are provided with vertically active locking portions, which, when the coupling parts of two of such floor elements cooperate with each other, effect a locking in vertical direction, perpendicular to a plane of the floor covering, and also are provided with horizontally active locking portions, which, when the coupling parts of two of such floor elements cooperate with each other, effect a locking in horizontal direction, perpendicular to the respective sides and in the plane of the floor covering, wherein said coupling parts are of a type allowing that two of such floor elements can be connected to each other at said sides by pushing one of these floor elements with the male coupling part, by means of a downward movement, into the female coupling part of the other floor element;

wherein said floor elements comprise at least a substrate; wherein said substrate substantially consists of a filled synthetic material composite; wherein said substrate forms at least one side of said first pair of opposite sides, such that at least one of said coupling parts, either the male coupling part or the female coupling part, is at least partially made of said filled synthetic material composite;

wherein the floor elements have a second pair of opposite sides, which also are provided with mutually cooperating coupling parts, which substantially are made as a male and a female coupling part, which are provided with vertically active locking portions and horizontally active locking portions; and wherein the coupling parts of the second pair of opposite sides allow that two of such floor elements can be interconnected at this pair of sides by providing one of these floor elements with the male coupling part, by means of a turning movement, in the female coupling part of the other floor element.

See, e.g., '460 patent, col. 30:32-67 (emphasis added). The parties disputed three claim terms for the '460 patent. ID/RD at 49. These terms were ultimately construed as follows:

|Claim Term |Construction | |"by pushing" (claim 7) |"by exerting a force on" (ID/RD at 53) | |"filled synthetic material composite" (claim 7) |"a composite having a matrix formed of a synthetic material and | | |filler contained within that matrix" (ID/RD at 53) | |"said substrate substantially consists of a filled synthetic material|"the substrate is substantially made up of (or composed of) a filled | |composite" (claim 7) |synthetic material composite" (ID/RD at 54) |

2. The '490 Patent

The '490 patent is titled "Floor Panel." ID/RD at 98. The text of independent claims 1 and 13 of the '490 patent are reproduced below:

1. A floor panel comprising:

a substrate; and

a top layer located above the substrate;

wherein the top layer is connected to the substrate by means of glue;

wherein the substrate is single-layered and includes a closed cell foamed PVC board having a density of more than 450 kilograms per cubic meter;

wherein the substrate has a thickness of 2 to 10 millimeters;

wherein the substrate forms at least half of the thickness of the floor panel;

wherein the top layer includes a back layer, a printed synthetic film located above the back layer and a transparent or translucent thermoplastic layer located above the printed synthetic film;

wherein the transparent or translucent thermoplastic layer includes a vinyl-based material;

wherein the back layer includes PVC with plasticizers and fillers;

wherein the floor panel is rectangular and oblong and includes a pair of long edges and a pair of short edges;

wherein the floor panel includes first mechanical coupling parts at the pair of long edges and second mechanical coupling parts at the pair of short edges;

wherein the first mechanical coupling parts are arranged for horizontal and vertical locking of two of such floor panels using a turning movement along the respective long edges;

wherein the first mechanical coupling parts include a tongue and a groove;

wherein the tongue and the groove are substantially responsible for the vertical locking;

wherein the tongue and the groove include locking parts substantially responsible for the horizontal locking;

wherein the first mechanical coupling parts are substantially realized in the substrate;

wherein the second mechanical coupling parts comprise a male coupling part and a female coupling part arranged for horizontal and vertical locking of two of such floor panels using a downward movement along the respective short edges;

wherein the downward movement is automatically created by the turning movement along the respective long edges; and

wherein the second mechanical coupling parts are substantially realized in the substrate.

See, e.g., '490 patent, col. 17:66-18:45 (emphasis added).

13. A floor panel comprising:

a substrate;

a top layer located above the substrate; and

a backing layer located below the substrate;

wherein the top layer is connected to the substrate by means of glue;

wherein the substrate is single-layered and includes a closed cell foamed PVC board having a density of more than 650 kilograms per cubic meter;

wherein the substrate has a thickness of 2 to 10 millimeters;

wherein the substrate forms at least half of the thickness of the floor panel;

wherein the top layer includes a back layer, a printed synthetic film located above the back layer and a transparent or translucent thermoplastic layer located above the printed synthetic film;

wherein the back layer includes PVC with plasticizers and fillers;

wherein the transparent or translucent thermoplastic layer includes a vinyl-based material;

wherein the top layer has a thickness of 0.5 to 3 millimeters;

wherein the floor panel has a thickness of 5 to 15 millimeters;

wherein the floor panel is rectangular and oblong and includes a pair of long edges and a pair of short edges;

wherein the floor panel includes first mechanical coupling parts at the pair of long edges and second mechanical coupling parts at the pair of short edges;

wherein the first mechanical coupling parts are arranged for horizontal and vertical locking of two of such floor panels using a turning movement along the respective long edges;

wherein the first mechanical coupling parts include a tongue and a groove;

wherein the tongue and the groove are substantially responsible for the vertical locking;

wherein the tongue and the groove include locking parts substantially responsible for the horizontal locking;

wherein the first mechanical coupling parts are substantially realized in the substrate;

wherein the second mechanical coupling parts comprise a male coupling part and a female coupling part arranged for horizontal and vertical locking of two of such floor panels using a downward movement along the respective short edges;

wherein the downward movement is automatically created by the turning movement along the respective long edges; and

wherein the second mechanical coupling parts are substantially realized in the substrate.

See, e.g., '490 patent, col. 19:8-61 (emphasis added). The parties agreed on the claim construction for a claim term for the '490 patent. ID/RD at 102. That term was ultimately construed as follows:

|Claim Term |Construction | |"arranged for horizontal and vertical locking of two of such floor |"allowing for horizontal and vertical locking of two of such floor | |panels using a turning movement along the respective long edges" |panels by turning one coupling part into the other coupling part at | |(claims 1 and 13) |the respective long edges" (ID/RD at 103) |

3. The '655 Patent

The '655 patent is titled "Floor Panel." ID/RD at 140. The text of independent claims 1 and 18 of the '655 patent are reproduced below:

1. A floor panel comprising:

a substrate; and

a top layer located above and glued to the substrate;

wherein the substrate includes a closed cell foamed PVC board with fillers;

wherein the closed cell foamed PVC board has an average density of more than 300 kilograms per cubic meter;

wherein the top layer includes a back layer, a printed synthetic material film located above the back layer and a transparent or translucent synthetic material wear layer located above the printed synthetic material film;

wherein the back layer includes a vinyl compound with fillers;

wherein the back layer has a thickness of at least 45 percent of the thickness of the top layer;

wherein the floor panel includes a first pair of edges and a second pair of edges;

wherein the floor panel includes first mechanical coupling parts at the first pair of edges and second mechanical coupling parts at the second pair of edges;

wherein the first mechanical coupling parts allow a horizontal and vertical locking of two of such floor panels using a turning movement along the respective edges;

wherein the first mechanical coupling parts include a tongue and a groove;

wherein the groove is flanked by an upper lip and a lower lip;

wherein the first mechanical coupling parts include a vertical locking mechanism having a vertically active locking surface at the upper side of the tongue and a vertically active locking surface at the lower side of the upper lip;

wherein the first mechanical coupling parts include a horizontal locking mechanism having a horizontally active locking surface at the lower side of the tongue and a horizontally active locking surface at the upper side of the lower lip; and

wherein both said horizontally active locking surfaces and both said vertically active locking surfaces are formed completely in the material of the closed cell foamed PVC board.

See, e.g., '655 patent, col. 14:59-15:33 (emphasis added).

18. A floor panel comprising:

a substrate;

a top layer located above and glued to the substrate; and

a backing layer located below the substrate;

wherein the substrate includes a closed cell foamed PVC board with fillers;

wherein the closed cell foamed PVC board has an average density of more than 300 kilograms per cubic meter;

wherein the closed cell foamed PVC board has a top flat side and a bottom flat side;

wherein the closed cell foamed PVC board has a local density on the top flat side and the bottom flat side which is higher than in a central layer of the closed cell foamed PVC board;

wherein the top layer includes a back layer, a printed synthetic material film located above the back layer, a transparent or translucent synthetic material wear layer located above the printed synthetic material film and a surface layer located above the transparent or translucent synthetic material wear layer;

wherein the back layer comprises a vinyl compound with fillers;

wherein the back layer has a thickness of at least 45 percent of the thickness of the top layer;

wherein the transparent or translucent synthetic material wear layer includes a vinyl layer;

wherein the surface layer includes a UV hardened substance;

wherein the floor panel includes a first pair of edges and a second pair of edges;

wherein the floor panel includes first mechanical coupling parts at the first pair of edges and second mechanical coupling parts at the second pair of edges;

wherein the first mechanical coupling parts allow a horizontal and vertical locking of two of such floor panels using a turning movement along the respective edges;

wherein the first mechanical coupling parts include a tongue and a groove;

wherein the groove is flanked by an upper lip and a lower lip;

wherein the first mechanical coupling parts include a vertical locking mechanism having a vertically active locking surface at the upper side of the tongue and a vertically active locking surface at the lower side of the upper lip;

wherein the first mechanical coupling parts include a horizontal locking mechanism having a horizontally active locking surface at the lower side of the tongue and a horizontally active locking surface at the upper side of the lower lip; and

wherein both said horizontally active locking surfaces and both said vertically active locking surfaces are formed completely in the material of the closed cell foamed PVC board.

See, e.g., '655 patent, col. 16:26-17:13 (emphasis added). The parties agreed on the claim construction for a claim term for the '655 patent. ID/RD at 144. That term was ultimately construed as follows:

|Claim Term |Construction | |"the first mechanical coupling parts allow a horizontal and vertical |"the first mechanical coupling parts allow for horizontal and | |locking of two of such floor panels using a turning movement along |vertical locking of two of such floor panels by turning one coupling | |the respective edges" (claims 1 and 18) |part into the other coupling part at the respective edges" (ID/RD at | | |145) |

The parties also disputed the construction of a few claim terms in the '655 patent. ID/RD at 145. Those claim terms were ultimately construed as follows:

|Claim Term |Construction | |"the closed cell foamed PVC board has a top flat side and a bottom |"the closed cell foamed PVC board has a top flat side and a bottom | |flat side . . . [and] a central layer of the closed cell foamed PVC |flat side . . . and a central thickness located between the top and | |board" (claim 6) |bottom flat sides" (ID/RD at 149) (alterations in original) | | | | |"the closed cell foamed PVC board has a . . . top flat side and [a] | | |bottom flat side . . . [and] a central layer of the closed cell | | |foamed PVC board" (claim 7) | | | | | |"the closed cell foamed PVC board has a top flat side and a bottom | | |flat side . . . [and] a central layer of the closed cell foamed PVC | | |board" (claim 18) | |

C. 19 C.F.R. Part 177 Ruling Request

1. Procedural History

On September 25, 2023, VILOX submitted a letter to CBP requesting an administrative ruling pursuant to 19 C.F.R. Part 177, which included Exhibits 1 to 13. VILOX requested a ruling from CBP that "1) VILOX-licensed products using an angle-angle interlocking method and made of stone polymer composite do not infringe claims 7, 8, 13, 15-17, 20-23, and 30 of the '460 patent, claims 1-6, 8, 10, 11, 13-16, and 18 of the '490 patent, or claims 1-4, 6-16, 18, and 20-26 of the '655 patent, and therefore, 2) prospective imports of those VILOX-licensed products would not violate the GEO." See e.g., Ruling Request at 2 (emphasis added). VILOX notified the EOE Branch on September 26, 2023, that VILOX provided Mohawk a copy of the Ruling Request. See VILOX Email to EOE Branch, dated September 26, 2023.

On October 6, 2023, the EOE Branch had an initial conference call with VILOX and Mohawk. See EOE Branch Email to Parties, dated October 6, 2023. Subsequently, on November 17, 2023, the EOE Branch set a schedule for this inter partes proceeding as "the parties have not reached an agreement on the procedural schedule, and it has been more than 50 days since the ruling request was submitted[.]" See EOE Branch Email to Parties, dated November 17, 2023.

On December 21, 2023, Mohawk provided its response to the Ruling Request, which included Exhibits 1 to 2 (collectively, "Mohawk Response"). On January 5, 2024, VILOX provided its reply, which included Exhibits 14-18 (collectively, "VILOX Reply").

On January 11, 2024, the parties both provided emails to the EOE Branch on the topic of whether an additional submission was necessary. See Emails from Mohawk and VILOX, dated January 11, 2024. On January 17, 2024, the EOE Branch invited the parties to each provide a final submission and set the target date to issue a ruling in this inter partes proceeding for January 29, 2024. See EOE Branch Email to Parties, dated January 17, 2024.

On January 22, 2024, VILOX and Mohawk each provided a final submission (respectively, "VILOX Sur-Reply" and "Mohawk Sur-Reply").

The Articles at Issue

VILOX requested a ruling from CBP that "1) VILOX-licensed products using an angle-angle interlocking method and made of stone polymer composite [('SPC')] do not infringe claims 7, 8, 13, 15-17, 20-23, and 30 of the '460 patent, claims 1-6, 8, 10, 11, 13-16, and 18 of the '490 patent, or claims 1-4, 6-16, 18, and 20-26 of the '655 patent, and therefore, 2) prospective imports of those VILOX-licensed products would not violate the GEO." See e.g., Ruling Request at 2 (emphasis added). As noted above, CBP understands that, by "those" products, VILOX is referring to luxury vinyl tile that embodies the physical sample of the floor panels manufactured by [[ ]] that is under consideration in this inter partes proceeding.[3] VILOX states that "[f]or luxury vinyl products that VILOX licenses for sale in the U.S., both the long and the short edges of each plank are designed so that they can only be connected to a neighboring plank by angling the board upwards, fitting a protrusion into a slot, and then angling the board down." Id. VILOX explains that "[s]ince both the long and the short ends of the plank must be connected, this requires the installer to use the angling technique twice - once on the short end to connect the plank to its neighbor, and then again, angling both connected boards on the long end to the existing adjacent row. Hence, the industry term 'angle-angle.'" Id.

Images from the Ruling Request depicting a VILOX-licensed luxury vinyl product that only uses "angle-angle locking mechanisms" are reproduced below:

Ruling Request at 10-11.

VILOX further notes that "the stone polymer composite (SPC) substrate used in the VILOX-licensed products does not include a 'closed cell foamed PVC board[.]'" Ruling Request at 2. VILOX explains that "[t]he VILOX-licensed SPC products do not use a foaming agent during manufacturing and do not evidence the voids associated with a foamed material." Id. at 16. VILOX also states, and provides as support the images below, that "a visual observation will show that the VILOX-licensed SPC products are thinner and more dense as compared to a WPC product." Id.

Id.

VILOX adds that "[f]or luxury vinyl tile products destined for the U.S., VILOX only licenses manufacturers to use its proprietary design on floor panels made of stone polymer composite (SPC) and that have the proprietary locking technology on both the short and long sides of the panels, meaning those panels can only be installed using the angle-angle approach. In connection with that license, VILOX provides manufacturers with VILOX labels and requires the manufacturer to place the labels on all boxes. VILOX insists that the label indicate the country of origin, that the flooring is made from SPC material, and is installed using an angle-angle approach." Ruling Request at 4 (emphasis in the original) (footnote omitted).

Physical samples from a single VILOX licensee, [[ ]], were provided to Mohawk as part of this inter partes proceeding (hereinafter, "the articles at issue"). VILOX Emails to EOE Branch (dated February 1, 2024 and February 13, 2024).

D. Revocation of CBP HQ Ruling H334801

On March 29, 2024, the EOE Branch revoked H334801 under the framework described in Section III.C. of this ruling. The now-revoked ruling found that "VILOX has met its burden to establish that the [[ ]] submitted as a physical sample for consideration during this inter partes proceeding ... are not subject to the general exclusion order ('GEO') issued in U.S. International Trade Commission ('Commission' or 'ITC') Investigation No. 337-TA-1155 ('the underlying investigation' or 'the 1155 investigation'), pursuant to section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337 ('Section 337')." HQ H334801 at 1.

However, following the issuance of that ruling, VILOX clarified on February 1, 2024, that the "VILOX licensee that provided the physical sample Mohawk received and evaluated" was not from [[ ]] VILOX Email to the EOE Branch (dated February 1, 2024). Rather, VILOX stated that "[t]he licensee was never identified in the materials provided to CBP, and VILOX consistently referred to that sample only as a 'VILOX-licensed product.'" Id. In response, the EOE Branch noted, "[i]n light of this misunderstanding [that VILOX] identified concerning the administrative record, the EOE Branch is considering whether to modify this ruling (HQ H334801)" pursuant to, inter alia, 19 C.F.R. 177.12. EOE Branch Email to VILOX (dated February 2, 2024). The EOE Branch also requested that VILOX "(1) identify the entity that manufactured the physical sample that was provided to Mohawk for its review during this inter partes proceeding; and (2) confirm whether that entity is a licensee of VILOX." Id.

As appropriate, outside counsel for Mohawk participating in this inter partes proceeding was copied on these communications. In view of this development regarding the factual record, a dispute arose between the parties concerning the exchange of the information above that the EOE Branch requested. VILOX proposed disclosing the name of the relevant licensee only to CBP, and not Mohawk, arguing that the licensee's identity was "highly confidential and very sensitive." VILOX Email to the EOE Branch (dated February 8, 20204). In response, Mohawk argued that the regulations provide that "'[e]ach request for a ruling must contain a complete statement of all relevant facts relating to the transaction. Such facts include the names, addresses, and other identifying information of all interested parties.' 19 CFR 177.2(b). The manufacturer (and presumed importer) of the goods in question is indisputably an 'interested party' and therefore must be identified pursuant to federal regulation. VILOX cannot shield this information by bringing this ruling request on behalf of its licensees." Mohawk Email to the EOE Branch (dated February 9, 2024). Taking the parties' respective positions into consideration, the EOE Branch confirmed that "licensee information would be provided as part of the inter partes proceeding, and as such, should be provided to all parties" and that "as we previously stated in our email to the parties dated November 20, 2023 'access to CBI in this proceeding will be limited to outside counsel and experts and exclude internal Mohawk personnel.'"[4] EOE Branch Email to Parties (dated February 13, 2024).

Accordingly, VILOX provided the EOE Branch and Mohawk's outside counsel the requested information on February 13, 2024, stating that "VILOX confirms that the floor panels provided to Mohawk's counsel and expert during the inter partes Section 177 proceeding were manufactured by [[ ]], a VILOX licensee." VILOX Email to EOE Branch (dated February 13, 2024).

This ruling is thus issued in light of VILOX's clarification above.

II. ISSUE

Whether VILOX has met its burden to show that the articles at issue do not infringe the relevant claims of the '460 patent; the '490 patent; and the '655 patent, and thus are not subject to the 1155 GEO. See, e.g., Ruling Request at 2.

III. LAW AND ANALYSIS

A. 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 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. 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)(C).").

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).

B. 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(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).

C. Revocation or Modification Under the Customs Law and Regarding Section 337-Based Rulings

A Customs ruling represents the official position of the agency with respect to the particular transaction or issue described therein and is binding on all CBP officials until modified or revoked. See 19 C.F.R. 177.9; see also CBP HQ Ruling H242026 (dated June 24, 2013). The authority for CBP to modify or revoke a ruling is derived from 19 U.S.C. 1625(c), as promulgated in 19 C.F.R. 177.12, which establishes the procedures CBP must apply to take such an action. See Precision Specialty Metals v. United States, 182 F. Supp. 2d 1314, 1328 (Ct. Int'l Trade, 2001) ("Precision II") (reviewing the legislative history underlying the Customs Modernization Act ("Mod Act"), passed as part of the North American Free Trade Agreement Act, Pub. L. 103-182 (1993), which substantially amended 19 U.S.C. 1625).

The EOE Branch has previously held:

As noted in CBP HQ Ruling H242026[], "CBP does not require a compelling reason to revoke a prior ruling, even if there has been reliance on the ruling in question. Instead, the standard for CBP modification or revocation requires establishment that the prior ruling was issued in error or that it is not in accord with the current views of the agency." Id. at 6 (citing International Custom Products v. United States, 549 F. Supp. 2d 1384, 1394-95 (Ct. Int'l Trade, 2008)).

Moreover, under CBP HQ Ruling H284032 (dated April 7, 2017), "[w]hen CBP undertakes review to determine if an issued ruling letter is in error based on a request from a person outside of CBP, the burden to establish that the ruling letter is incorrect, either legally or factually, falls on the person seeking to have that ruling letter modified or revoked." Id. at 39.

***

[Furthermore, the governing regulations provide that] "Customs may modify or revoke an interpretive ruling ... that has been in effect for less than 60 calendar days by simply giving written notice of the modification or revocation to the person to whom the original ruling was issued[.]" 19 C.F.R. 177.12(b). Accordingly, under the Customs regulations, during the 60-day period referenced above, CBP is invested with broad discretion to take action it considers appropriate in the sound administration of the Customs laws, including 19 U.S.C. 1337.

CBP HQ Ruling H328569 (dated November 28, 2022) (emphasis added).

Lastly, the EOE Branch considers that, as a general matter, the sound administration of the Customs laws for rulings regarding the enforcement or administration of Section 337 exclusion orders warrants an inter partes proceeding to adjudicate the admissibility question presented. However, to the extent the EOE Branch, due to exceptional circumstances, is required or finds it appropriate to issue a ruling on an ex parte basis, revocation or modification in such cases "based on a request from a person outside of CBP," whether before or after the 60-day period provided in 19 C.F.R. 177.12(b), would only need to raise a fair ground of doubt as to the correctness of the issued ruling for that person to carry the relevant burden regarding revocation or modification such that the EOE Branch would no longer consider the ruling to be in accord with the current views of CBP.

D. Infringement Analysis

The infringement question related to the articles at issue is primarily focused on the following claim limitations in the respective patents:

|Patent |Claim Limitation | |'460 patent |"wherein said coupling parts are of a type allowing that two of such floor elements can be connected to each other at| | |said sides by pushing one of these floor elements with the male coupling part, by means of a downward movement, into | | |the female coupling part of the other floor element" (claim 7) | | | | | |(hereinafter, this limitation will generally be referred to as the "downward movement limitation") | |'655 patent |"wherein the substrate includes a closed cell foamed PVC board with fillers" (claims 1 and 18) | |'490 patent |"wherein the substrate is single-layered and includes a closed cell foamed PVC board having a density of more than | | |450 kilograms per cubic meter" (claim 1) | | | | | |"wherein the substrate is single-layered and includes a closed cell foamed PVC board having a density of more than | | |650 kilograms per cubic meter" (claim 13) |

VILOX argues that "VILOX-licensed products cannot infringe any of the claims of the '460 patent, all of which require a 'fold-down' locking mechanism, where the short side of the plank is engaged through a 'downward movement.'" Ruling Request at 12. VILOX further noted that "VILOX-licensed SPC products do not use a foaming agent during manufacturing and do not evidence the voids associated with a foamed material. As a result, VILOX-licensed SPC products cannot and do not infringe any claims of the '655 patent, which all call for use of a 'closed cell foam PVC board.'" Id. at 16-17. Finally, VILOX states that "[f]or all the reasons discussed above with respect to the '460 and '655 patents, the VILOX-licensed SPC products do not infringe any claims of the '490 patent because VILOX-licensed products use an angle-angle locking mechanism and SPC is not a closed cell foamed PVC product." Id. at 17.

Mohawk argues that while the physical sample of VILOX-licensed product it tested did not "contain 'closed cell foamed PVC' in its substrate[,]" see Mohawk Response at 6, it did meet the "downward movement" limitation in at least claim 7 of the '460 patent. Mohawk Response at 4. In support, Mohawk provided a video of "the assembly of two VILOX-licensed floor panels from the samples provided" and also screenshots from that video (reproduced below). Id. at 4-5, Exhibit 2.

Mohawk explains that "[a]s shown in the screenshots, exerting a force on the right most panel (with the male coupling part) results in a downward movement as part of the coupling process. This is depicted by the addition of the red dashed line, which emphasizes the downward movement of the right-most floor panel between the first screenshot ([ ] left) and the second screenshot ([ ] right)." Mohawk Response at 4-5. Mohawk states that "the locking profile of the VILOX sample product is configured such that it not only allows for the downward movement, it actually requires downward movement of the male coupling part (e.g., the right floor panel) into the female coupling part (e.g., the left floor panel)." Id. at 5. As such, Mohawk concludes that there is infringement of at least claim 7 of the '460 patent and this article is covered by the 1155 GEO. Id.

Mohawk further asserts that "although VILOX claims to have roughly 20 licensees, Mohawk only received sample products from a single licensee (Ex. 1 ([[ ]]) at 20). To that end, Mohawk asserts that VILOX has failed to establish that the provided sample does not 'materially differ' from the remaining VILOX-licensed products. As such, any relief awarded as a result of VILOX's request should be limited to the specific product provided by the single licensee for which a sample was made available." Id. at 2. Thus, below we will address the infringement question as it relates to the articles at issue.

As Mohawk concedes that the "sample product" did not "contain 'closed cell foamed PVC' in its substrate[,]" see Mohawk Response at 6, we find that the articles at issue do not infringe claims 1 and 18 of the '655 patent or claims 1 and 13 of the '490 patent, both of which require that the substrate include "a closed cell foamed PVC board." See, e.g., Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991) ("[T]he failure to meet a single limitation is sufficient to negate infringement of the claim[.]"). The remaining asserted claims of the '490 patent and the '655 patent in the 1155 GEO all depend from those claims, therefore, the articles at issue cannot infringe the remaining asserted claims of the '655 patent and the '490 patent. See Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1552 n.9 (Fed. Cir. 1989) ("One who does not infringe an independent claim cannot infringe a claim dependent on (and thus containing all the limitations of) that claim.") (internal citation omitted).

In light of the finding above, the only question remaining is whether the articles at issue infringe claim 7 of the '460 patent. This question turns, in particular, on whether the "downward movement" limitation is met. We find that it is not. Mohawk argues that "Mohawk assembled through its consultant the exemplary product, and in doing so, was able to exert a force on one floor element with the male coupling part by means of a downward movement into the female coupling part of the other floor element in order to connect the two floor elements." Mohawk Response at 4. In support, Mohawk provided, inter alia, a video depicting the assembly of the VILOX sample product and screenshots from that video showing that "exerting a force on the right-most panel (with the male coupling part) results in a downward movement as part of the coupling process." Id. One set of screenshots are reproduced below:

Id. at 5. Mohawk further notes that the "downward movement as part of the coupling process . . . is depicted by the addition of the red-dashed line, which emphasizes the downward movement of the right-most floor panel between" the first screenshot on the left and the second screenshot on the right. Id. at 4-5.

VILOX disagrees and argues that "the video shows a horizontal 'snap' movement, not a downward movement." VILOX Reply at 2. According to VILOX, "Mohawk's effort to recharacterize that horizontal movement as 'downward movement' contradicts its own briefs, the patent, the prosecution history, the Initial Determination, and Mohawk's own experts." Id. VILOX's arguments and Mohawk's responses are summarized in the table below.

|VILOX |Mohawk | |VILOX notes that in Mohawk's opening claim construction brief during |Mohawk counters that the '460 patent "does not claim coupling parts | |the underlying investigation, "Mohawk explained the difference |which can be connected by pushing 'downward from above,' but merely | |between 'fold-down' installation using downward movement and 'snap' |coupling parts which can be connected 'by means of a downward | |installation using horizontal movement." VILOX Reply at 4. |movement'" and "Figure 25 is not 'the same' as the movement depicted | | |in Mohawk's video - at least insofar as Figure 25 depicts a purely | |VILOX asserts that the Figure 25 in Published International |horizontal movement and does not depict any downward movement - and | |Application WO 97/47834 ("the 834 Application") "that Mohawk |is distinguishable on that basis alone." Mohawk Sur-Reply at 3. | |describes as 'using a horizontal movement' rather than a 'downward | | |movement' shows the same movement depicted in Mohawk's video, where | | |the male flooring element is pushed sideways towards the female | | |coupling rather than downward from above." Id. at 5-6; see also id. | | |at 4-5 (citing Exhibit 14 of VILOX Reply, Complainants' Opening Claim| | |Construction Brief at 5-6). | | | | | |VILOX states that the specification of the '460 patent, in discussing|Mohawk responds that the portion of the specification that VILOX | |Figure 4 "clearly differentiates couplings using horizontal movement |references describes movement "in a downward, substantially vertical | |to bring the floor elements together from couplings using 'downward |direction", but the term "substantially vertical" is not present in | |movement[.]'" VILOX Reply at 6 (citing Exhibit 2 of Ruling Request, |the asserted claims. Mohawk Sur-Reply at 3 (emphasis in the | |'460 patent at 19:13-21 and Fig. 4). |original). | |VILOX also argues that "Mohawk distinguished the downward movement |Mohawk replies that "much like the specification language described | |'push-lock' connection from a horizontal 'snap' connection during the|above, the claims of the '044 Application recite that 'the downward | |prosecution history of the '460 patent." VILOX Reply at 6. In |movement used to couple the floor elements ... is generally in a | |particular, VILOX explains that "[d]uring examination of Application |linear direction having a substantially greater vertical component | |No. 12/303,044, the parent application in the short sequence of |than a horizontal component[.]'" Mohawk Sur-Reply at 4. Mohawk | |continuation applications leading to the '460 patent, Mohawk faced |notes that "[i]n the '460 Patent, the relevant claim has no | |several prior art rejections." Id. In responding to one of the |requirement that movement be 'generally linear' nor that the vertical| |examiner's rejections that the claims are unpatentable over a |component of the movement be 'substantially greater' than the | |combination of three references, including two European patents, EP |horizontal component. All that is claimed is coupling 'by means of a | |1,350,904 to Kiefel and EP 1 493 879 A1 to Kronotec AG, Mohawk |downward movement.'" Id. | |characterized Kronotec as "describe[ing] floor elements that are | | |joined by horizontal movement[.]" See Exhibit 15 of VILOX Reply, | | |Application No. 12/303,044 Remarks Oct. 8, 2014 at 13. | | | | | |VILOX further notes that "the "horizontal joining movement" in | | |Kronotec would involve the same sort of brief inclined lateral | | |displacement of the male and female coupling parts, as they engage | | |and snap together, that Mohawk points to in its video of the | | |VILOX-licensed sample. But Mohawk still described the coupling in | | |Kronotec as using 'horizontal movement' rather than 'downward | | |movement' in its argument to the examiner." VILOX Reply at 7. | | |VILOX states that "Mohawk's new position, that parts connected by |Mohawk argues that "VILOX has already conceded that the | |horizontal movement actually involve 'downward movement,' also |VILOX-licensed products include coupling parts configured for both a | |contradicts the Initial Determination, which recognized the |"snap" connection and an "angle-angle" connection. VILOX has | |distinction between 'push-lock,' 'fold-down,' or 'drop-lock' coupling|implemented a coupling profile which can be connected in a variety of| |parts engaged 'by means of a downward movement with other types of |ways, thus showing that artificial industry language is not | |coupling parts including 'snap' couplings." VILOX Reply at 10. |determinative for a patent infringement inquiry." Mohawk Sur-Reply | |VILOX asserts that "Mohawk ignores the ID's express finding that the |at 4. | |"downward movement" claim language was intended to exclude "snap-type| | |coupling parts [that] allow coupling using a horizontal movement | | |where one element is moved horizontally into the other," which is | | |exactly what Mohawk's video of the VILOX-licensed product depicts." | | |Id. (emphasis in the original). | | |VILOX also notes that "both of Mohawk's experts from the ITC |Mohawk replies that "[t]he specific locking profile on the | |investigation highlighted the distinctions between the downward |VILOX-licensed products was not specifically addressed during the ITC| |movement action required by the '460 patent claims and the other |investigation, and therefore was not analyzed by Mohawk's experts." | |types of known connection techniques, such as angle-angle and, most |Mohawk Sur-Reply at 4. | |relevant for Mohawk's current argument, angle-snap using horizontal | | |movement, rather than downward movement." VILOX Reply at 11. | | |VILOX summarizes that there is "no pushing of floor elements by means|Mohawk responds that "Mohawk distinguished horizontal snap | |of a downward movement. Instead, in the video the floor elements are |connections from claim language requiring a downward movement having | |pushed in a horizontal direction" and "Mohawk's position would |'a substantially greater vertical component.' That critical | |stretch the claim language so far that it would cover a connection |limitation is not present in the relevant claim of the '460 Patent. | |technique-using a horizontal 'snap' structure-that Mohawk has in fact|All that is required is a 'downward movement.'" Mohawk Sur-Reply at | |distinguished from its own invention at every opportunity." VILOX |4. | |Reply at 14 (emphasis in the original). | |

We agree with VILOX that the physical sample provided in this inter partes proceeding does not meet the "downward movement" limitation. In Mohawk's opening claim construction brief during the underlying investigation, Mohawk explained that:

Complainants have developed industry-preferred locking systems for each of the traditional types of locking systems: "angle-lock" systems, where the male coupling part is turned into the female coupling part; "snap-lock" systems where the male coupling part is pushed into the female coupling part using a horizontal movement in the plane of the floor panel; and "push-lock" systems, where the male coupling part is pushed into the female coupling part using a downward movement.

See VILOX Reply, Exhibit 14 at 4 (emphasis added). As VILOX points out, this distinction was also recognized in the ID/RD. See ID/RD at 51-52. In particular, in the context of construing the term "by pushing" in claim 7 of the '460 patent, the ID/RD explains that:

The term "by pushing" is part of the larger phrase "floor elements can be connected to each other at said sides by pushing one of these floor elements with the male coupling part, by means of a downward movement, into the female coupling part of the other floor element." Ex. A-1 ('460 Patent) cl. 7. As is seen by this phrase, the "by pushing . . . by means of a downward movement" language describes a coupling method that can be used to connect the male and female coupling parts of two floor elements. In particular, the male coupling part of one floor element is pushed down into the female coupling part of another floor element. Id.; id. at Abstract; 1:58-64; 11:65-12:13; 12:24-36; 14:4-29; 14:53-15:9; 16:31-41; 17:62-18:14; 18:66-19:13; 19:19-47; 27:44-50; 28:14-33; claims 1, 7; and Figs. 3-6.

This type of coupling part is well known as "push-lock," "fold-down," or "drop-lock" inasmuch as the coupling parts are designed to allow for connection using a downward movement. Ex. A (Scott Decl.), 153. "Push-lock" type coupling parts are distinguished from other types of coupling parts known as "angle" or "snap." See id.; Ex. K (Gould Decl.), 38-41. Angle-type coupling parts are designed to allow coupling using a "turning" or "pivoting" movement, and snap-type coupling parts allow coupling using a horizontal movement where one element is moved horizontally into the other. Ex. K (Gould Decl.), 36-37. The claim language at issue therefore describes the type of coupling part by explaining that the parts allow for installation by pushing the male part into a female part using a downward movement. Nothing in the claims recite how that movement must be accomplished, or how much force is required. Ex. A (Scott Decl.), 153.

Id. (emphasis added). Additionally, in looking at whether the accused products in the underlying investigation met the "downward movement" limitation, the ALJ noted:

[C]laim 7 requires "floor elements can be connected to each other at said sides [by exerting a force on] one of these floor elements with the male coupling part, by means of a downward movement, into the female coupling part of the other floor element." Ex. A-1 ('460 Patent) at claim 7 (construction included).

Id. at 63 (second alteration in the original).

Thus, as explained in Mohawk's opening claim construction brief in the underlying investigation and as identified in the ID/RD, a "snap-lock" system is one "where the male coupling part is pushed into the female coupling part using a horizontal movement in the plane of the floor panel" and "snap-type coupling parts allow coupling using a horizontal movement where one element is moved horizontally into the other." VILOX Reply, Exhibit 14 at 4; ID/RD at 51-52. In contrast, a "push-lock" system is one "where the male coupling part is pushed into the female coupling part using a downward movement" or, as stated in the ID/RD, "the male coupling part of one floor element is pushed down into the female coupling part of another floor element." Id.

While Mohawk is correct that "artificial industry language is not determinative for a patent infringement inquiry," VILOX did not merely rely on artificial industry language to argue non-infringement but rather it showed that the male coupling part of the VILOX sample product was pushed into the female coupling part using a horizontal movement in the plane of the floor panel. As VILOX notes, "Mohawk's video clearly shows that the board with the male coupling part is pushed sideways or horizontally, and in the same plane, from right to left with respect to the board with the female coupling part, as shown in these snapshots (with yellow arrow added) from the video[.]" VILOX Reply at 3. These "snapshots" are reproduced below.

Id. at 4.

As VILOX states, "[t]he board with the laterally protruding male coupling can be angled into the slot and rotated into place, as VILOX intends, or alternatively an installer may be able to push it horizontally hard enough to deform part of the female coupling and snap the male coupling into place." VILOX Sur-Reply at 4. Moreover, as VILOX points out, the ID/RD and the language of claim 7 "focus on the direction the floor element with the male coupling is pushed-downward-not on minor displacements the couplings experience while the floor element is being pushed." Id. (emphasis in the original). Indeed, the ID/RD states, "the 'by pushing . . . by means of a downward movement' language describes a coupling method that can be used to connect the male and female coupling parts of two floor elements. In particular, the male coupling part of one floor element is pushed down into the female coupling part of another floor element." ID/RD at 51 (emphasis added). As the male coupling part of the VILOX sample product is not pushed down into the female coupling part, but rather horizontally into the female coupling part, we find that the "downward movement" limitation in claim 7 of the '460 patent is not met and the VILOX sample product does not infringe claim 7 of the '460 patent. See Laitram Corp., 939 F.2d at 1535. The remaining asserted claims of the '460 patent in the 1155 GEO all depend from this claim, consequently the articles at issuedo not infringe the remaining asserted claims of the '460 patent. See Wahpeton Canvas Co., 870 F.2d at 1552 n.9 (Fed. Cir. 1989).

IV. HOLDING

We find that VILOX has met its burden to show that the articles at issue are not subject to the 1155 GEO, as explained above.

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

CC: Mr. John Haynes
Alston & Bird
One Atlantic Center
1201 West Peachtree Street
Atlanta, GA 30309-3424
[email protected]; [email protected]
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[1] As explained infra, after the EOE Branch issued CBP HQ Ruling H334801 as a result of this inter partes proceeding, VILOX submitted communications (dated February 1, 2024 and February 13, 2024) that clarified a material aspect of the administrative record upon which the EOE Branch relied for its ruling. Accordingly, taking that factual clarification into account, the EOE Branch revoked its earlier ruling with written notice to VILOX on March 29, 2024, pursuant to 19 C.F.R. 177.12(b) ("Customs may modify or revoke an interpretive ruling ... that has been in effect for less than 60 calendar days by simply giving written notice of the modification or revocation to the person to whom the original ruling was issued[.]"). Revocation under this authority means the previously issued ruling is null and void. Instead, the current ruling (H339732), issued as a result of the same inter partes proceeding, is based on the factual clarification VILOX provided that confirms the physical samples at issue were manufactured by [[
]] rather than [[ ]], as indicated in the now-revoked ruling.

[2] The GEO issued in the 1155 investigation, inter alia, bars the unlicensed entry for consumption into the United States of luxury vinyl tile floor and components thereof (as defined in 2 of the GEO) that infringe one or more of claims 7, 8, 13, 15-17, 20-23, and 30 of U.S. Patent No. 9,200,460 ("the '460 patent"); claims 1-6, 8, 10, 11, 13-16, and 18 of U.S. Patent No. 10,208,490 ("the '490 patent"); or claims 1-4, 6-16, 18, and 20-26 of U.S. Patent No. 10,233,655 ("the '655 patent"). See Certain Luxury Vinyl Tile and Components Thereof, Investigation No. 337-TA-1155, EDIS Doc. ID 719813, General Exclusion Order (September 16, 2020) ("1155 GEO").

[3] At times in its ruling request, VILOX broadly seeks "a ruling that VILOX-licensed products bearing a VILOX label are not covered by the GEO and that importing VILOX-licensed products is permitted notwithstanding the GEO." Ruling Request at 4. Absent an agreement on representativeness between the parties, a ruling under 19 C.F.R. Part 177 is generally applicable to the product embodiment under consideration, such that if an imported article differs materially from the articles adjudicated in the ruling, any admissibility determination will not apply to the former. See 19 C.F.R. 177.2(b)(1), (2), (4) and 177.9(b)(1) and (2). This approach applies with greater force in this case, where the ruling requester is a licensor and does not manufacture the luxury vinyl tile that ultimately may be entered for consumption into the United States (and even more so given that, barring an express provision to the contrary, a company's status as a licensee is not tantamount to a requirement or guarantee that it will only produce products covered by the license). Accordingly, this ruling does not hold that admissibility turns on an imported article being a VILOX-licensed product or bearing a VILOX label.

[4] The EOE Branch's email to the parties dated November 20, 2023, stated in part:

Sample of the Article at Issue. As set forth in 19 C.F.R. 177.2(b)(3), "[e]ach request for a ruling regarding the status of an article under any Customs or related law affecting the importation or arrival of that article should be accompanied by photographs, drawings, or other pictorial representations of the article and, whenever possible, by a sample article[.]" (emphasis added). In other words, it is the ruling requester who identifies the "article at issue" that forms the basis of the ruling request and provides information and evidence regarding the embodiment of that article by means of, inter alia, pictorial representations and a physical sample. Moreover, an admissibility determination in a ruling under 19 C.F.R. Part 177, including for purposes of a Section 337 exclusion order, is limited to the embodiment described and depicted therein. As such, a "determination in [an] administrative ruling does not apply to future products if the articles in question differ in any material way from those described [in the ruling]." CBP HQ Ruling H323308 at 23 (dated February 8, 2022). Instead, to the extent any articles attempting to make entry for consumption differ in a material respect from those described in the ruling, the admissibility determination in the ruling is not binding on CBP, as provided for in 19 C.F.R. 177.2(b)(1), (2), (4), and 177.9(b)(1) and (2), and the burden to establish admissibility remains. See CBP HQ Ruling H324813 at 37-40 (dated June 3, 2022). For this reason, VILOX does not need to provide "samples of all products [that it] believes should be exempt from the GEO," as Mohawk would have it (see Email to EOE Branch, dated November 20, 2023), but at the same time any ruling from the EOE Branch will not extend to imported articles that materially differ from the article at issue that is described in the ruling request and presented in the sample's embodiment.

Access to Confidential Business Information. Regarding the inspection of or access to samples and other confidential business information ("CBI") by internal Mohawk personnel, it is noted that Mohawk has not provided any authority in support of its request and, specifically, anything related to Section 337 exclusion orders or their administration. The EOE Branch emphasized that a relevant consideration for Mohawk's request is whether internal personnel would have access to any CBI subject to an administrative protective order ("APO") from the underlying investigation. See EOE Branch Email to Parties, dated November 17, 2023. Mohawk has not addressed this consideration. Nevertheless, the EOE Branch's understanding is that, with respect to Commission investigations, internal personnel cannot gain access to CBI subject to an APO. Significantly, the U.S. Court of Appeals for the Federal Circuit has recognized the "ITC's rule establishing a per se ban on disclosure to in-house counsel in its administrative proceedings." U.S. Steel Corp. v. United States, 730 F.2d 1465, 1468 (Fed. Cir. 1984). This rule is reflected in APOs at the Commission for Section 337 investigations that generally include the following:

3. In the absence of written permission from the supplier or an order by the Commission or the administrative law judge, any confidential documents or business information submitted in accordance with the provisions of paragraph 2 above shall not be disclosed to any person other than: (i) outside counsel for parties to this investigation, including necessary secretarial and support personnel assisting such counsel; (ii) qualified persons taking testimony involving such documents or information and necessary stenographic and clerical personnel thereof; (iii) technical experts and their staff who are employed for the purposes of this litigation (unless they are otherwise employed by, consultants to, or otherwise affiliated with a non-governmental party, or are employees of any domestic or foreign manufacturer, wholesaler, retailer, or distributor of certain luxury vinyl tile and components thereof, which are the subject of this investigation); (iv) the Commission, the administrative law judge, the Commission staff, and personnel of any governmental agency as authorized by the Commission; (v) the Commission, its employees and Offices, and contract personnel (a) for developing or maintaining the records of this investigation or related proceedings, or (b) in internal investigations, audits, reviews, evaluations relating to the programs, personnel, and operations of the Commission including under to 5 U.S.C. Appendix 3; and (vi) U.S. government employees and contract personnel, solely for cybersecurity purposes.

Certain Luxury Vinyl Tile and Components Thereof, Inv. No. 337-TA-1155, EDIS Doc. ID 676150, Protective Order (May 16, 2019) at 2-3 (emphasis added).

When administering an exclusion order pursuant to Section 337, CBP models the Commission's practices to the extent possible for purposes of uniformity under the Tariff Act. The Commission's approach to the handling of CBI, therefore, is highly instructive for CBP and the EOE Branch's inter partes proceedings under 19 C.F.R. Part 177, and the EOE Branch sees no reason to depart from that approach in this case. Consequently, access to CBI in this proceeding will be limited to outside counsel and experts and exclude internal Mohawk personnel.