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

HQ H324074 November 30, 2023 OT:RR:BSTC:EOE H324074 SEH CATEGORY: 19 U.S.C. §1337; Unfair Competition VIA EMAIL: Tommy.Martin@BakerBotts.com; DLCMC177@BakerBotts.com 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 or