H324813

HQ H324813 June 3, 2022 OT:RR:BSTC:EOE H324813 ACC CATEGORY: 19 U.S.C. § 1337; Unfair Competition Mr. Bas de Blank ORRICK, HERRINGTON & SUTCLIFFE LLP The Orrick Building 405 Howard Street San Francisco, CA 94105-2669 VIA EMAIL: bdeblank@orrick.com RE: Ruling Request; U.S. International Trade Commission; Limited Exclusion Order; Investigation No. 337-TA-1191; Certain Audio Players and Controllers, Components Thereof, And Products Containing the Same Dear Mr. de Blank: 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 your request, dated March 24, 2022, on behalf of Sonos Inc. (“Sonos”) for an inter partes proceeding regarding the above-referenced matter. Specifically, Sonos requested a ruling whether certain audio players and controllers manufactured or imported by Google LLC (“Google”) are subject to the limited exclusion order (“LEO”), dated January 6, 2022, that the U.S. International Trade Commission (“Commission” or “ITC”) issued in Investigation No. 337-TA-1191 (“the underlying investigation” or “the 1191 investigation”) pursuant to section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337 (“Section 337”). See Ruling Request at 1. Based on Sonos’ Reply indicating that it does not contest that the “Google imported players” incorporate the features or functionalities of a redesigned product adjudicated by the Commission not to infringe U.S. Patent Nos. 9,195,258 (“the ’258 patent”); 10,209,953 (“the ’953 patent”); 9,219,959 (“the ’959 patent”), we find that Google audio players, such as the Home Mini, Nest Mini, Home, Nest Audio, Home Max , Home Hub, Nest Hub, Nest Hub Max, Nest Wifi Point, Chromecast, Chromecast Audio, Chromecast Ultra, and Chromecast with Google TV the Chromecast, Chromecast Ultra, Chromecast Audio, Home Mini, Nest Mini, Home, Home Max, Home Hub, Nest Hub, Nest Hub Max, and Nest Wifi Point, are not subject to exclusion from entry and, for purposes of Section 337, may be entered for consumption. See Sonos Reply at 1. Furthermore, we find that Google has met its burden to show that the updated Google controllers, such as (1) Pixel smartphones (i.e., Pixel 3, Pixel 3 XL, Pixel 3a, Pixel 3a XL, Pixel 4, Pixel 4 XL, Pixel 4a phones, Pixel 6a, Pixel 7, and Pixel 7 Pro); (2) the Pixel Slate tablet; and (3) Pixel computers (i.e., the Pixelbook and Pixelbook Go laptops) (collectively “articles at issue”), incorporate the features or functionalities from the redesigned products the Commission adjudicated not to infringe U.S. Patent No. 8,588,949 (“the ’949 patent”). However, we find that Google has not met its burden to show that the articles at issue incorporate only the features or functionalities of the redesigned product that the Commission adjudicated not to infringe U.S. Patent No. 10,439,896 (“the ’896 patent”). Thus, CBP’s position is that the relevant articles at issue are subject to exclusion from entry for consumption on the basis of the 1191 LEO until Google either: (1) disables or renders inoperable the Device Utility app addressed in this ruling such that it can no longer be used with the relevant articles at issue and provides notice as to that disabling or inoperability; or (2) receives a non-infringement determination pursuant to an ancillary proceeding at the Commission or a ruling in an inter partes proceeding from CBP under 19 C.F.R. Part 177 that addresses operation of the Device Utility app on the articles at issue. Google may concurrently pursue options (1) and (2) above. 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, Sonos, the ruling requester and complainant in the 1191 investigation; and (2) Google, respondent in the 1191 investigation. See, e.g., 19 C.F.R. § 177.1(c). Parties to an inter partes proceeding must clearly identify confidential information in their submissions, including information subject to the administrative protective order in the underlying investigation in their submissions to CBP. See 19 C.F.R. §§ 177.2 and 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, then the parties are asked to contact CBP within ten (10) working days of the date of this ruling letter to indicate this. 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). BACKGROUND ITC Investigation No. 337-TA-1191 Procedural History at the ITC The Commission instituted Investigation No. 337-TA-1191 on February 11, 2020, based on a complaint filed by Sonos, Inc. Certain Audio Players and Controllers, Components Thereof, and Products Containing Same, Inv. No. 337-TA-1191, EDIS Doc. ID 762093, Public Commission Opinion (Feb. 1, 2022) (“Comm’n Op.”) at 3 (citing 85 Fed. Reg. 7783 (Feb. 11, 2020)). The complaint alleged a violation of Section 337 by reason of infringement of certain claims of U.S. Patent Nos. 9,195,258 ; 10,209,953 ; 8,588,949 9,219,959 ; and 10,439,896 . Comm’n Op. at 3. The notice of investigation named Google LLC of Mountain View, California and Alphabet Inc. of Mountain View, California as respondents. Id. at 3. The Commission’s Office of Unfair Import Investigations (“OUII”) was also named as a party. Id. at 3. On August 13, 2021, the presiding Chief Administrative Law Judge (“CALJ”) issued his final initial determination (“FID

of whether the products accused of infringing the ’258 patent and ’953 patent are articles that infringe at the time of importation. Id. at 8. The Commission also determined to correct two typographical errors on pages 24 and 84 of the FID. Id. at 8-9. The Commission notice also requested written submissions on remedy, the public interest, and bonding. Id. at 9. The Commission affirmed the FID’s finding that the accused products infringed the ’258 patent and the ’953 patent at the time of importation. Id. at 21. Thus, the Commission found a violation of Section 337 as to claims 17, 21, 24, and 26 of the ’258 patent; claims 7, 14, and 22-24 of the ’953 patent; claim 10 of the ’959 patent; claims 1, 2, and 5 of the ’949 patent; and claims 1, 5, 6, and 12 of the ’896 patent. Id. at 21-22.On January 6, 2022, the Commission issued a LEO and a cease and desist order in the 1191 investigation. Certain Audio Players and Controllers, Components Thereof, and Products Containing Same, Inv. No. 337-TA-1191, EDIS Doc. 759897, Limited Exclusion Order (Jan. 6, 2022) (“1191 LEO”); Certain Audio Players and Controllers, Components Thereof, and Products Containing Same, Inv. No. 337-TA-1191, EDIS Doc. 759899, Cease and Desist Order for Google LLC (Jan. 6, 2022). The 1191 LEO expressly carved out from the scope of the exclusion order Google’s redesign products that the Commission found not to infringe the asserted patent claims. 1191 LEO at 2-3 (“Covered articles shall not include the Google redesign products that were adjudicated in this investigation and found to be non-infringing (i.e., (i) as to the ’258 patent, the redesign ’258 NIA No. 1; (ii) as to the ’953 patent, the redesign ’953 NIA No. 1; (iii) as to the ’959 patent, the redesign ’959 NIA No. 4; (iv) as to the ’949 patent, the redesigns submitted for adjudication by Google with respect to the ’949 patent; and (v) as to the ’896 patent, the redesign ’896 NIA No. 2”).The Legacy and Redesigned Products in the Underlying Inves