ITC Monthly Wrap-Up: December 2021

Unlocking A Public Interest Exemption Based On A Questionnaire

Synopsis: Upon consideration of the public interest factors, the Commission recently allowed the use of a questionnaire to demonstrate a "documented need" for continued importation and sale of an infringing article for a period of one year following entry of its remedial orders. See Certain Chemical Mechanical Planarization Slurries & Components Thereof, Inv. No. 337-TA-1204, Commission Opinion at 53, EDIS Id. 759875 (U.S.I.T.C. Jan. 6, 2022) (Public Version). The Commission imposed a similar requirement in Certain Microfluidic Devices, Inv. No. 337-TA-1068 and Certain Microfluidic Systems, Inv. No. 337-TA-1100, but the tailored remedy in those investigations was only available for continued medical research. By contrast, in the 1204 Investigation, the tailored remedy is available to any of respondent's customers upon completion of a questionnaire. To qualify for the exemption, the customer must attest in a questionnaire that the use of the accused Optiplane™ slurry is in an actual ongoing development project that began prior to the date of issuance of the remedial order.

Full Story: In the 1204 Investigation, the ALJ issued a final initial determination ("FID") in July 2021 finding a violation of Section 337. The FID concluded inter alia that complainant 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. See FID at 87-144. The ID also included the ALJ's recommended determination ("RD") for entry of a limited exclusion order and cease and desist order. See FID/RD at 316-31.

Respondents and OUII filed petitions for review of the FID, and complainant and OUII submitted responses. The Commission determined to review the FID's findings on importation, infringement, and domestic industry, and requested briefing on the latter issue. See 86 FR 53674-76 (Sept. 28, 2021). The Commission also requested briefing from the parties, interested government agencies, and interested persons on the issues of remedy, the public interest, and bonding.

On October 6, 2021, the parties submitted their opening briefs, and non-party Intel Corporation filed a statement on the public interest. Two days later, 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 complainant's requested remedy and that it would be in a position to provide the document if ordered to do so. Respondent then filed a response requesting that the Commission order Intel to produce the Public Interest Document, and complainant filed an opposition.

On November 2, 2021, the Commission issued a notice requesting additional public interest information from Intel and directing Intel to produce the Public Interest Document. The following week Intel submitted a response to the Commission notice, and the parties thereafter filed replies to Intel's submission.

Upon review of the full record, the Commission determined that respondents violated Section 337, and issued a limited exclusion order and cease and desist order against the domestic respondent. However, the Commission also determined that the public interest factors warrant an exemption from the remedial orders for up to one year for entities currently using the infringing products in an ongoing semiconductor chip fabrication development project.

The Commission Opinion specifically found that an exclusion order would exacerbate semiconductor shortages in the United States, which in turn could impact wide ranging industries such as medical devices, advanced research, healthcare, clean energy, and military systems. See Commission Opinion at 33. In view of widely publicized semiconductor shortages, coupled with three to six month development cycles for semiconductor devices, the Commission crafted a certification process to allow for continued importation of the infringing product. Specifically, respondents are permitted to import the infringing product and its ingredients for one year if respondent's customers provide a "certified, documented need to continue receiving the infringing" product. To document this need, respondent's customers need only complete a questionnaire, which is attached to the Commission Opinion and requests customer to:

1. Identify the commencement date of the project and provide a description of the specific project;
2. Attest that the use of the infringing product began prior to the date of issuance of the remedial order;
3. Certify the veracity of their statements and acknowledge their understanding of the legal consequences of being untruthful; and
4. Maintain records to support their declarations in case of audit.

The Commission also allowed Customs to require advance submission of the questionnaire. See Commission Opinion at 54.

Although use of a questionnaire as part of a certification process is rare, there is some precedent for this approach. For example, in the 1068 Investigation, the Commission held that researchers could import an infringing device upon a showing of a documented need for receiving the specific product for ongoing projects. See Certain Microfluidic Devices, Inv. No. 337-TA-1068, Cease and Desist Order for 10X Genomics, Inc., EDIS Id. 697624 (U.S.I.T.C. Dec. 18, 2019). In the 1068 Investigation, to demonstrate the required need, researchers were instructed to complete a questionnaire detailing, inter alia, (1) the subject matter of the research; (2) the date the research began; (3) the expected completion date of the research; (4) identification of the specific infringing product; (5) reasons for rejecting competitive products; (6) why other specific products were unsuitable; and (7) certification of the veracity and understanding of the consequences of being untruthful. Id. at Attachment A. Similarly, in the 1000 Investigation, the Commission also allowed for continued importation of infringing products upon a showing of a documented need for research. See Certain Microfluidic Systems & Components Thereof & Prods. Containing Same, Inv. No. 1000, Cease and Desist Order for Bio-Rad Laboratories, Inc., (EDIS Id. 702337) at 4 (U.S.I.T.C. Feb. 12, 2020). Again, a questionnaire—similar to the one used in the 1068 Investigation—was the vehicle by which researchers were able to document the required need for relief from the Commission's remedial orders. Id. at Attachment A.