OT:RR:BSTC:EOE H344595 JW
Mr. Lionel Lavenue
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
1875 Explorer Street, Suite 800
Reston, VA 20190-6023
VIA EMAIL: [email protected]; [email protected]
[email protected]
RE: Ruling Request; U.S. International Trade Commission; Limited Exclusion Order;
Investigation No. 337-TA-1366; Certain Semiconductor Devices, and Methods of
Manufacturing Same and Products Containing the Same
Dear Mr. Lavenue:
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 the request from Innoscience (Zhuhai) Technology Company, Ltd. and Innoscience
America, Inc. (collectively, “Innoscience”) for an administrative ruling (dated January 19, 2025),
which included Exhibits 1 to 11 (collectively, “Ruling Request”). We find that the articles at issue,
as described below, are not subject to the limited exclusion order (“LEO”) issued in U.S.
International Trade Commission (“Commission” or “ITC”) Investigation No. 337-TA-1366 (“the
underlying investigation” or “the 1366 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 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, Innoscience, the ruling requester; and (2) Efficient Power Conversion
Corporation of El Segundo, California (“EPC”), the complainant in the 1366 investigation. See
19 C.F.R. § 177.1(c).
The parties were asked to clearly identify confidential information with [[red brackets]] in
their submissions to CBP. See, e.g., EOE Branch Email to Parties, dated January 23, 2025; see
also 19 C.F.R. §§ 177.2 and 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, the parties are directed 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 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).
I. BACKGROUND
A. ITC Investigation No. 337-TA-1366
The Commission instituted the 1366 investigation on July 3, 2023, based upon a complaint
filed on behalf of EPC. Certain Semiconductor Devices, and Methods of Manufacturing Same
and Products Containing the Same, Investigation No. 337-TA-1366, EDIS Doc. No. 838650,
Commission Opinion (Public) at 3 (December 5, 2024) (“Comm’n Op.”), citing 88 Fed. Reg.
42756-77 (July 3, 2023). The complaint alleged violations of Section 337 based on the importation
into the United States, the sale for importation, and the sale within the United States after
importation of certain semiconductor devices, and methods of manufacturing same and products
containing the same by reason of infringement of certain claims of U.S. Patent No. 8,350,294 (“the
‘294 patent”); U.S. Patent No. 8,404,508 (“the ‘508 patent”); U.S. Patent No. 9,748,347 (“the ‘347
patent”); and U.S. Patent No. 10,312,335 (“the ‘335 patent”). Certain Semiconductor Devices,
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and Methods of Manufacturing Same and Products Containing the Same, Investigation No. 337-
TA-1366, EDIS Doc. No. 828317, Final Initial Determination (Public) at 2 (August 5, 2024)
(“FID”). EPC supplemented the complaint on June 14 and 15, 2023. Id. The Commission
instituted the investigation to determine:
[W]hether there is a violation of subsection (a)(1)(B) of section 337 in the
importation into the United States, the sale for importation into the United States,
the sale for importation, or sale within the United States after importation of certain
products identified in paragraph (2) by reason of infringement of one or more of
claims 1-3 of the ‘294 patent; claim 1 of the ‘508 patent; claims 1-3 of the ‘347
patent; and claims 1-7 of the ‘335 patent, and whether an industry in the United
States exists as required by subsection (a)(2) of section 337.
Id. citing 88 Fed. Reg. 42756 (July 3, 2023). Further, pursuant to 19 C.F.R. § 210.10(b)(1):
[T]he plain language description of the accused products, which defines the scope
of the investigation, is “GaN-on-Si semiconductor devices, GaN FETs, GaN high
electron mobility transistors, and products incorporating such transistors, which are
bidirectional transistors, multichip modules, and demo boards.”
Id. The Notice of Investigation named Innoscience as respondent. Id. The Office of Unfair Import
Investigations (“OUII”) was also a party to the investigation. Id.
On July 5, 2024, the presiding Chief Administrative Law Judge (“CALJ”) issued the FID
finding, inter alia, a violation of Section 337 as to claims 2 and 3 of the ‘294 patent, but no violation
as to claim 1 of the ‘294 patent and claim 1 of the ‘508 patent. Comm’n Op. at 4. The FID
included the CALJ’s recommended determination on remedy and bonding (“RD”). Id. at 5. The
RD recommended that issuance of a limited exclusion order and cease and desist orders against
the Innoscience should the Commission find a violation. Id. (citation omitted). The RD also
recommended imposing a bond in the amount of five percent (5%) of the entered value for
infringing products entered during the Presidential review period. Id.
On September 5, 2024, the Commission determined to review the FID in in its entirety. Id.
at 6. On review, inter alia, the Commission affirmed the finding of violation of Section 337 as to
the ‘294 patent with respect to claims 2 and 3. Id. at 54.
On November 7, 2024, the Commission issued a LEO. Certain Semiconductor Devices,
and Methods of Manufacturing Same and Products Containing the Same, Investigation No. 337-
TA-1366, EDIS Doc. No. 836701, Limited Exclusion Order (November 7, 2024) (“1366 LEO”).
Paragraphs 1 and 2 of the 1366 LEO state:
1. Semiconductor devices and methods of manufacturing same and products
containing the same (as defined in paragraph 2 below) that infringe one or more of
claims 2 and 3 of the ’294 patent that are manufactured abroad by or on behalf of,
or imported by or on behalf of, Respondents, or their affiliated companies, parents,
subsidiaries, or other related business entities, or their successors or assigns, are
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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 term of the patent, except under license from, or with the permission
of, the patent owner or as provided by law.
2. The semiconductor devices and methods of manufacturing same and products
containing the same that are subject to this Order (“covered articles”) are as follows:
GaN-on-Si semiconductor devices, GaN FETs, GaN high electron mobility
transistors, and products incorporating such transistors, which are bidirectional
transistors, multichip modules, and demo boards.
Id. at 2, ¶¶ 1 and 2.
B. The Patent and Claims in the 1366 LEO
The 1366 LEO prohibits the unlicensed importation of semiconductor devices and methods
of manufacturing same and products containing the same that infringe one or more of claims 2 and
3 the ‘294 patent that are manufactured abroad by or on behalf of, or imported by or on behalf of,
Innoscience or any of their affiliated companies, parents, subsidiaries, or other related business
entities, or their successors or assigns, i.e., such articles 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 patents, except under license of, or
with the permission of, the patent owner or as provided by law. Comm’n Op. at 54-5. Claims 2
and 3 both depend from claim 1.
1. The ’294 Patent
The ’294 patent is titled “Compensated Gate MISFET [which stands for, metal-insulator-
semiconductor field-effect transistor] and Method for Fabricating the Same.” Comm’n Op. at 7.
The text of independent claim 1 of the ’294 patent, and claims 2 and 3, are reproduced below:
Claim 1
[1pre] 1 A column III Nitride transistor comprising:
[1a] a substrate,
[1b] a set of III-N transition layers above the substrate,
[1c] a III-N buffer layer above the set of transition layers,
[1d] a III-N barrier layer above the buffer layer,
[1e] a compensated GaN layer above the barrier layer, and
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The bracketed limitation labels were added by the FID and used by the parties in their briefing during the underlying
investigation. Comm’n Op. at 8.
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[1f] a gate contact above the compensated GaN layer.
See, e.g., ’460 patent, col. 30:32-67 (emphasis added).
Claim 2
The transistor of claim 1, wherein the compensated GaN layer contains acceptor type
dopant atoms passivated with hydrogen.
Claim 3
The transistor of claim 2, where the acceptor type atoms are selected from the group
consisting of Mg, Zn, Be and Ca.
Comm’n Op. at 8 citing the ‘294 patent, claims 1-3 (emphasis added).
These term “compensated GaN layer,” which appears in claim 1 of the ‘294 patent, and in
claims 2 and 3 as they both depend from claim 1, was construed as follows:
______________________________________________________________________________
Claim Term Construction
“compensated GaN layer” “a GaN layer in which one type of impurity
cancels the electric effects of another type of
impurity”
Comm’n Op. at 17.
C. 19 C.F.R. Part 177 Ruling Request
1. Procedural History
On January 19, 2025, Innoscience filed a submission with CBP requesting an
administrative ruling pursuant to 19 C.F.R. Part 177, which included Exhibits 1 to 11. Innoscience
requested a ruling from CBP that “Innoscience’s new gallium nitride (‘GaN’) transistors
(‘redesigned products’) do not infringe either of claims 2 or 3 of the ’294 patent” such that
“prospective imports of these new GaN transistors would not violate the LEO.” See, e.g., Ruling
Request at 1. The EOE Branch was notified on January 23, 2025, that Innoscience provided EPC
a copy of the Ruling Request. See EPC Email to EOE Branch, dated January 23, 2025.
On January 23, 2025, the EOE Branch had an initial conference call with Innoscience and
EPC. See EOE Branch Email to Parties, dated January 23, 2025. Subsequently, on January 28,
2025, the EOE Branch set a schedule for this inter partes proceeding that was generally in line
with the jointly proposed schedule from the parties. See EOE Branch Email to Parties, dated
January 28, 2025.
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When the Commission determines 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 order bars the importation of infringing products by everyone,
regardless of whether they were respondents in the Commission's investigation.” Id. A general
exclusion order is appropriate only if two exceptional circumstances apply. See Kyocera Wireless
Corp. v. ITC, 545 F.3d 1340, 1356. A general exclusion order may only be issued if (1) “necessary
to prevent circumvention of a limited exclusion order,” or (2) “there is a pattern of violation of this
section and it is difficult to identify the source of infringing products.” 19 U.S.C. § 1337(d)(2);
see Kyocera, 545 F.3d at 1356 (“If a complainant wishes to obtain an exclusion order operative
against articles of non-respondents, it must seek a GEO [general exclusion order] by satisfying the
heightened burdens of §§ 1337(d)(2)(A) and (B).”).
In addition to the action taken above, the Commission may issue an order under 19 U.S.C.
§ 1337(i) directing CBP to seize and forfeit articles attempting entry in violation of an exclusion
order if their owner, importer, or consignee previously had articles denied entry on the basis of
that exclusion order and received notice that seizure and forfeiture would result from any future
attempt to enter articles subject to the same. An exclusion order under § 1337(d)—either limited
or general—and a seizure and forfeiture order under § 1337(i) apply at the border only and are
operative against articles presented for customs examination or articles conditionally released from
customs custody but still subject to a timely demand for redelivery. See 19 U.S.C. §§ 1337(d)(1)
(“The Commission shall notify the Secretary of the Treasury of its action under this subsection
directing such exclusion from entry, and upon receipt of such notice, the Secretary shall, through
the proper officers, refuse such entry.”); id., at (i)(3) (“Upon the attempted entry of articles subject
to an order issued under this subsection, the Secretary of the Treasury shall immediately notify all
ports of entry of the attempted importation and shall identify the persons notified under paragraph
(1)(C).”).
Significantly, unlike district court injunctions, the Commission can issue a general
exclusion order that broadly prohibits entry of articles that violate Section 337 of the Tariff Act of
1930 without regard to whether the persons importing such articles were parties to, or were related
to parties to, the investigation that led to issuance of the general exclusion order. See Vastfame
Camera, Ltd. v. ITC, 386 F.3d 1108, 1114 (Fed. Cir. 2004). The Commission also has recognized
that even limited exclusion orders have broader applicability beyond just the parties found to
infringe during an investigation. See Certain GPS Devices and Products Containing Same, Inv.
No. 337-TA-602, Comm’n Op. at 17, n. 6, Doc ID 317981 (Jan. 2009) (“We do not view the
Court’s opinion in Kyocera as affecting the issuance of LEOs [limited exclusion orders] that
exclude infringing products made by respondents found to be violating Section 337, but imported
by another entity. The exclusionary language in this regard that is traditionally included in LEOs
is consistent with 19 U.S.C. § 1337(a)(1)(B)–(D) and 19 U.S.C. § 1337(d)(1).”).
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Moreover, “[t]he Commission has consistently issued exclusion orders coextensive with
the violation of Section 337 found to exist.” See Certain Erasable Programmable Read Only
Memories, Inv. No. 337-TA-276, Enforcement Proceeding, Comm’n Op. at 11, Doc ID 43536
(Aug. 1991) (emphasis added). “[W]hile individual models may be evaluated to determine
importation and [violation], the Commission’s jurisdiction extends to all models of [violative]
products that are imported at the time of the Commission’s determination and to all such products
that will be imported during the life of the remedial orders.” See Certain Optical Disk Controller
Chips and Chipsets, Inv. No. 337-TA-506, Comm’n Op. at 56–57, USITC Pub. 3935, Doc ID
287263 (July 2007).
B. Patent Infringement
Determining patent infringement requires two steps. Advanced Steel Recovery, LLC v.
X-Body Equip., Inc., 808 F.3d 1313, 1316 (2015). The first is to construe the limitations of the
asserted claims and the second is to compare the properly construed claims to the accused product.
Id. To establish literal infringement, every limitation recited in a claim must be found in the
accused product whereas, under the doctrine of equivalents, infringement occurs when there is
equivalence between the elements of the accused product and the claimed elements of the patented
invention. Microsoft Corp. v. GeoTag, Inc., 817 F.3d 1305, 1313 (Fed. Cir. 2016). One way to
establish equivalence is by showing, on an element-by-element basis, that the accused product
performs substantially the same function in substantially the same way with substantially the same
result as each claim limitation of the patented invention, which is often referred to as the function-
way-result test. See Intendis GmbH v. Glenmark Pharms., Inc., 822 F.3d 1355, 1361 (Fed. Cir.
2016).
As for the first step above, “claim construction is a matter of law.” SIMO Holdings, Inc.
v. H.K. uCloudlink Network Tech., Ltd., 983 F.3d 1367, 1374 (Fed. Cir. 2021). Moreover, the
ultimate construction of a claim limitation is a legal conclusion, as are interpretations of the
patent’s intrinsic evidence (the patent claims, specifications, and prosecution history).
UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 822 (Fed. Cir. 2016) (citing Teva Pharms.
USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841(2015)).
“Importantly, the person of ordinary skill in the art is deemed to read the claim term not
only in the context of the particular claim in which the disputed term appears, but in the context of
the entire patent, including the specification.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.
Cir. 2005) (en banc). “In some cases, the ordinary meaning of claim language as understood by
aperson of skill in the art may be readily apparent even to lay judges.” Id. at 1314. In others,
courtslook to public sources such as “the words of the claims themselves, the remainder
of thespecification, the prosecution history, and extrinsic evidence concerning relevant scientific
principles, the meaning of technical terms, and the state of the art.” Id.
“To begin with, the context in which a term is used in the asserted claim can be highly
instructive.” Phillips, 415 F.3d at 1314 (“To take a simple example, the claim in this case refers
to ‘steel baffles,’ which strongly implies that the term ‘baffles’ does not inherently mean objects
made of steel.”). The context in which a claim term is used also includes the full chain of
dependence as well as the remaining suite of claims and the written description. See Inline Plastics
Corp. v. EasyPak, LLC, 799 F.3d 1364, 1371 (Fed. Cir. 2015) (“Since the specification explicitly
mentions the ‘alternative’ . . . there can be no debate concerning the application of the doctrine of
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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. Andrew Kopsidas
Blank Rome
1825 Eye Street NW
Washington, DC 20006
[email protected]; [email protected]
[email protected]
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