H323308

HQ H323308 February 8, 2022 OT:RR:BSTC:EOE H323308 FKM CATEGORY: 19 U.S.C. § 1337; Unfair Competition Mr. Johnathan D. Baker Dickinson Wright PLLC 800 W. California Avenue Suite 110 Sunnyvale, California 94086 VIA EMAIL: roku-uei-itc@dickinson-wright.com RE: Ruling Request; U.S. International Trade Commission; Limited Exclusion Order; Investigation No. 337-TA-1200; Certain Electronic Devices, Including Streaming Players, Televisions, Set Top Boxes, Remotes Controllers, and Components Thereof Dear Mr. Baker: 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. We find that Roku, Inc. (“Roku”) has met its burden to show that certain Roku “Box” and “Stick” streaming players (“articles at issue”) do not infringe claim 1 of U.S. Patent No. 10,593,196 (“the ’196 patent”). Thus, CBP’s position is that the articles at issue are not subject to the limited exclusion order issued by the U.S. International Trade Commission (“Commission” or “ITC”) in Investigation No. 337-TA-1200 (“the underlying investigation” or “the 1200 investigation”), pursuant to section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337 (“section 337”). 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, which was 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, Roku, the ruling requester and respondent in the 1200 investigation; and (2) Universal Electronics, Inc. (“UEI”), complainant in the 1200 investigation. See, e.g., 19 C.F.R. § 177.1(c). 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 all of their submissions to CBP. See 19 C.F.R. §§ 177.2, 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, 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 ITC Investigation No. 337-TA-1200 Procedural History at the ITC The Commission instituted Investigation No. 337-TA-1200 on May 22, 2020, based on a complaint filed by Universal Electronics, Inc. of Scottsdale, Arizona. Certain Electronic Devices, Including Streaming Players, Televisions, Set Top Boxes, Remote Controllers, and Components Thereof, Inv. No. 337-TA-1200, EDIS Doc. ID 757848, Public Commission Opinion (Dec. 3, 2021) (“Comm’n Op.”) at 1 (citing 85 Fed. Reg. 31211-212 (May. 22, 2020)). The complaint, as supplemented, alleged a violation of section 337 by reason of infringement of certain claims of U.S. Patent Nos. 10,593,196 (“the ’196 patent”); 10,600,317 (“the ’317 patent”); 7,589,642 (“the ’642 patent”); and other patents that were originally asserted but later withdrawn and terminated from the 1200 investigation. Comm’n Op. at 1-2. The notice of investigation named Roku, Inc. of Los Gatos, California, among other parties that were later terminated from the investigation, as a respondent. Id. at 2. The Commission’s Office of Unfair Import Investigations (“OUII”) was not named as a party in the investigation. Id. On July 9, 2021, the Administrative Law Judge (“ALJ”) issued his final initial determination (“FID”) finding a violation of section 337. Id. at 3. Specifically, the ALJ determined that a violation of section 337 occurred in the importation into the United States, the sale for importation, or the sale within the United States after importation, of the accused Roku Ultra and Soundbar products that infringed the ’196 patent, though Roku’s redesigned Ultra and Soundbar products were found not to infringe. Id. The ALJ also found no violation with respect to the ’642 and ’317 patents because, although infringed, their asserted claims were found to be invalid. Id. On September 9, 2021, the Commission issued a notice in which it determined to review in part the FID and requested submissions responding to the Commission’s questions on review and remedy, the public interest, and bonding. Id. at 3 (citing 86 Fed. Reg. 51381, 51382-82 (Sept. 15, 2021). The Commission, in its review of the FID, found a violation of section 337 as to the ’196 patent and determined that the appropriate remedy was a limited exclusion order and cease and desist order. Id. at 43. In the limited exclusion order, the Commission ordered that “electronic devices, including streaming players televisions, set top boxes, remote controllers, and components thereof that infringe one or more of claims 1, 3, 11, and 13-15 of the Asserted Patent and are manufactured abroad by, or on behalf of, or imported by or on behalf of Respondent or any of its affiliated companies, parents, subsidiaries, agents, or other related business entities, or its successors or assigns, are excluded from entry for consumption into the United States, entry for consumption from a foreign-trade zone, or withdrawal from a warehouse for consumption, for the remaining terms of the Asserted Patent, except under license from, or with the permission of, the patent owner or as provided by law.” Certain Electronic Devices, Including Streaming Players, Televisions, Set Top Boxes, Remote Controllers, and Components Thereof, Inv. No. 337-TA-1200, EDIS Doc. ID 756327, Limited Exclusion Order (Dec. 3, 2021) at 2 (“1200 LEO”). The Commission further defined the articles covered by the limited exclusion order as “televisions, set-top boxes, remote control devices, streaming devices, and sound bars that incorporate the infringing technology. Covered articles shall not include the Roku products that were adjudicated in this investigation and found to be non-infringing (i.e., Roku Ultra (Bryan 2) and Roku Soundbar (Fruitland)).” Id. (emphasis added). The Products from the Underlying Investigation The legacy product