OT:RR:BSTC:EOE H340844 FKM
Ms. Deanna T. Okun
Polsinelli PC
1401 Eye Street NW
Washington, D.C. 20005
VIA EMAIL: [email protected]; [email protected]
RE: Ruling Request; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-1355; Certain Compact Wallets and Components Thereof
Dear Ms. Okun:
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 Mountain Voyage Co.’s (“Mountain Voyage”) request for an administrative ruling, dated July 31, 2024 (“Ruling Request”). We find that Mountain Voyage has established, through this inter partes proceeding, that its money clip and cash strap wallets with stock keeping units (“SKUs”) ending in the letters “WD” or “CS” (collectively, “articles at issue”), as described in this ruling, are not subject to exclusion from entry based on the general exclusion order (“GEO”) issued by the U.S. International Trade Commission (“Commission”) in Investigation No. 337-TA-1355 (“the underlying investigation” or “the 1355 investigation”), under Section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337 (“Section 337”), unless and until this ruling letter is revoked or modified pursuant to 19 C.F.R. § 177.12. 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 modify or revoke by operation of law any contrary CBP ruling or decision pertaining to Section 337 exclusion orders.
As noted above, 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 proceeding involved the two parties with a direct and demonstrable interest in the question presented by the ruling request: (1) your client, Mountain Voyage, the ruling requester; and (2) The Ridge Wallet LLC (“Ridge”), complainant and patent owner from the 1355 investigation. See 19 C.F.R. § 177.1(c). As noted below, Mountain Voyage was not a respondent during the underlying investigation.
On July 31, 2024, Mountain Voyage submitted its Ruling Request to the EOE Branch. Mountain Voyage Email to EOE Branch, dated July 31, 2024. In response to the EOE Branch’s reply email, Mountain Voyage: (1) confirmed the counsel for Ridge to whom the ruling request was sent; (2) confirmed that a proposed non-disclosure agreement (“NDA”) to protect any confidential business information to be exchanged during this inter partes proceeding was shared with that counsel for Ridge; and (3) shared a revised version of the ruling request with confidential information properly identified. Mountain Voyage Email to EOE Branch, dated August 2, 2024; see also EOE Branch Email to Mountain Voyage, dated July 31, 2024.
On August 5, 2024, the EOE Branch sent the parties a message to schedule a preliminary conference call to discuss certain procedural aspects of the inter partes proceeding. EOE Branch Email to Parties, dated August 5, 2024. Due to the lack of a response from Ridge, Mountain Voyage requested that the Branch move forward with this adjudication in an ex parte manner. Mountain Voyage Email to EOE Branch, dated August 7, 2024. Subsequently, counsel for Ridge responded, noting that Ridge’s in-house counsel had now been designated as lead counsel. Ridge Email to EOE Branch, dated August 7, 2024. On August 8, 2024, Mountain Voyage responded to Ridge’s message, raising concerns about undue delay and confirming that, “consistent with standard practice,” it had sent the ruling request to the law firm representing Ridge during the underlying investigation and “professional courtesy required” that representatives from the law firm apprise Ridge’s in-house counsel of that request, or apprise Mountain Voyage or the EOE Branch that the law firm would not be representing Ridge in this inter partes proceeding. Mountain Voyage Email to EOE Branch, dated August 8, 2024. In response, the EOE Branch requested, inter alia, that the parties provide times that they would be available to discuss the procedures for this inter partes proceeding. EOE Branch Email to Parties, dated August 8, 2024. Additionally, the Branch established that, in any case, the target date for completing this proceeding would be set as a date no later than sixty (60) days from receipt of the ruling request. Id.
On August 9, 2024, the EOE Branch sent the partes a preliminary message in advance of the forthcoming conference call on August 12, 2024, in which the EOE Branch provided a sample procedural schedule and confirmed its understand that both parties agreed to conduct this proceeding on an inter partes basis, as administered by the EOE Branch. See EOE Email to Parties, dated August 9, 2024. In advance of the conference call, the parties proposed a joint procedural schedule, which the parties and the EOE Branch discussed during the conference call, and which the EOE Branch approved on August 12, 2024. See Mountain Voyage Email to EOE Branch, dated August 12, 2024; EOE Branch Email to Parties, dated August 12, 2024. Additionally, during this exchange, the EOE Branch noted its position that Mountain Voyage, as a non-respondent during the 1355 investigation and a party whose counsel was not signed onto the administrative protective order (“APO”) from that investigation, execute a Waiver for Continued Participation (“Waiver”), which Mountain Voyage executed and submitted on August 13, 2024. EOE Branch Email to Parties, dated August 12, 2024; Mountain Voyage Email to EOE Branch, dated August 13, 2024. And on August 13, 2024, the parties provided the EOE Branch with a copy of the fully executed NDA. Ridge Email to EOE Branch, dated August 13, 2024.
On August 28, 2024, Ridge provided its response to the Ruling Request (“Ridge Response”). On September 4, 2024, Mountain Voyage submitted its reply to Ridge’s Response (“Mountain Voyage Reply”). And on September 11, 2024, Ridge provided its sur-reply (“Ridge Sur-Reply”) to Mountain Voyage’s Reply. Under the established procedural schedule, the target date that the EOE Branch set for issuance of its ruling in this inter partes proceeding is September 25, 2024. EOE Branch Email to Parties, dated August 12, 2024.
Parties’ Arguments and EOE Branch Position
Mountain Voyage requested a ruling “that its current wallet offerings, of both styles, are not subject to the GEO[.]” Ruling Request at 3. The styles of wallet offerings at issue consist of the money clip style and the cash strap style of wallet. Id. at 2. Mountain Voyage argued, inter alia, that:
[w]hile the Asserted Claims recite a distinct recess having an undercut, in addition to the claimed longitudinal groove/channeling means, Mountain Voyage’s wallets have no such additional recess, let alone the claimed undercut. Further, the Asserted Claims recite a “hook” extending from the tang of the auxiliary feature to engage the undercut and prevent inadvertent dislodgement. However, Mountain Voyage’s wallets don’t have a hook; its clip is held in position by a friction-fit, and its cash strap is held in place by elasticity between its distal ends.
Id. at 10.
The articles at issue are depicted below:
Ruling Request at 20.
Id. at 22.
Id. at 27.
Id. at 30.
Mountain Voyage further clarified that:
. . . Mountain Voyage’s current money clip and cash strap models have different SKUs than the past models []. Specifically, each Mountain Voyage money clip wallet represented in the Request is associated with a SKU that ends in the letters “WD.” Further, Mountain Voyage has not sold any previous design of its cash strap wallets, and the cash strap wallets have not been accused of infringing the ’808 Patent in any legal proceeding. All of Mountain Voyage’s cash strap wallets are associated with a SKU that ends in the letters “CS.”
Mountain Voyage Reply at 3.
In response, Ridge has not raised any arguments regarding the articles at issue infringing the asserted claims of the ’808 patent. To the contrary, “Ridge agrees that Mountain Voyage wallets that lack the ‘dimples’ shown [in] Table 1a … and the plate structure shown in Table 1b … are not within the scope of the GEO” and that “[t]his is true whether the product is a cash strap product or a money clip product.” Ridge Response at 17 (emphasis in original). Due to the lack of a contention from Ridge that the articles at issue infringe the asserted claims of the ’808 patent, and as further cemented with its non-infringement concession, the EOE Branch finds that Mountain Voyage has established that the articles at issue are not subject to exclusion from entry pursuant to the 1355 GEO. See Greenlaw v. United States, 554 U.S. 237, 243 (2008) (“In our adversary system, in both civil and criminal cases, in the first instance and on appeal, we follow the principle of party presentation. That is, we rely on the parties to frame the issues for decision and assign to courts the role of neutral arbiter of matters the parties present.”) (emphasis added); see also Astellas Pharma, Inc. v. Sandoz Inc., 2024 U.S. App. LEXIS 23669, at *12 (Fed. Cir. 2024) (“It is for the parties—not the court—to chart the course of the litigation.”); see also Certain Robotic Floor Cleaning Devices and Components Thereof, Inv. No. 337-TA-1252, Initial Determination on Violation of Section 337 and Recommended Determination on Remedy and Bonding, EDIS Doc. ID 783814 (Public) (October 7, 2022) at 10, FN 16 (“Given that [complainant] did not dispute that the [relevant] products in this category are non-infringing, this Initial Determination finds no reason to conclude otherwise.”) (emphasis added), aff’d, Notice of Commission Final Determination Finding a Violation of Section 337, EDIS Doc. ID 792838 (Public) (March 21, 2023) (“All findings in the FID that are not inconsistent with the Commission’s determination are affirmed.”).
Though Ridge does not argue that the articles at issue infringe the relevant claims of the ’808 patent, it does argue that “Mountain Voyage has provided no sworn testimony, or other actionable-if-false evidence that (1) it is not presently importing products that infringe the [’]808 [p]atent or (2) the ‘WD’ SKU [] is visible on any or all of the products Mountain Voyage imports that have the alleged design reflected by that SKU.” Ridge Sur-Reply at 2. Ridge’s primary concern is with CBP’s ability to determine whether specific articles making entry for consumption are subject to the 1355 GEO without further “sworn testimony or other actionable-if-false evidence.” Id. at 3. Additionally, Ridge argues that Mountain Voyage has not sufficiently described its labeling process or how SKUs are affixed to its products or product packaging. Id. at 4.
The EOE Branch has maintained that:
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).
CBP HQ Ruling H339732 (dated June 11, 2024) at 16, n.4 (emphasis added).
Therefore, to the extent that Mountain Voyage attempts to enter articles for consumption that differ materially from the articles at issue, this ruling would not be applicable. Additionally, if either party is interested in CBP’s binding position as to the admissibility of articles other than those at issue in this inter partes proceeding, the EOE Branch remains available to receive additional ruling requests under 19 C.F.R. Part 177 when in the sound administration of the Customs laws.
Notwithstanding the above, in recognizing Ridge’s points concerning the operational aspects of CBP’s administration of this exclusion order, we note that, among other enforcement mechanisms at the agency’s disposal, the Commission has provided that:
[a]t the discretion of CBP and pursuant to the procedures it establishes, persons seeking to import articles may be required to certify that they are familiar with the terms of this [GEO], 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 [GEO]. At its discretion, CBP may require persons who have provided the certification described in this paragraph to furnish such records or analyses as are necessary to substantiate the certification.
1355 GEO at ¶ 4 (emphasis added).
Moreover, with regard to such certifications and the appropriateness of their use, the Commission has noted that a certification is primarily for use after the Commission or CBP has determined that certain articles do not infringe. See Automated Teller Machines, ATM Modules, Components Thereof, & Prods. Containing the Same, Inv. No. 337-TA-972, EDIS Doc. ID 613988, Commission Opinion (Public) (June 12, 2017) at 27 (“The standard certification language does not apply to redesigns that have not been adjudicated as non-infringing.”); 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).
Thus, when CBP deems it appropriate, parties may be required to certify that the articles they import into the United States are those that have been previously adjudicated as non-infringing. See CBP HQ Ruling H324074 (dated November 30, 2023) at 17-18 (“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. . . . 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.”). CBP will exercise this authority, in carrying out its responsibility to ensure proper administration of the exclusion order, and require that the importer submit the necessary certification in this case.
Lastly, the parties were asked to clearly identify confidential information, including information subject to the administrative protective order in the underlying investigation, with [[red brackets]] in their submissions to CBP. See 19 C.F.R. §§ 177.2, 177.8. If there is 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, the parties are to contact CBP within ten (10) working days of the date of this ruling letter to indicate the same. See, e.g., 19 C.F.R. § 177.8(a)(3).
The decision above 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. Benjamin E. Weed
The Ridge Wallet LLC
104 Main Street, Suite 2C
Park Ridge, Illinois 60068
[email protected]