`UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C. 20436
`
`
`In the Matter of
`
`CERTAIN CHEMICAL MECHANICAL
`PLANARIZATION SLURRIES AND
`COMPONENTS THEREOF
`
`
`
`FINAL INITIAL DETERMINATION
`
`Inv. No. 337-TA-1204
`
`Administrative Law Judge David P. Shaw
`
`Pursuant to the notice of investigation, 85 Fed. Reg. 40685 (July 7, 2020), this is
`
`the Initial Determination in Certain Chemical Mechanical Planarization Slurries and
`
`Components Thereof, United States International Trade Commission Investigation No.
`
`337-TA-1204.
`
`It is held that a violation of section 337 (19 U.S.C. § 1337) has occurred with
`
`respect to U.S. Patent No. 9,499,721.
`
`
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`Background ……………………………………………………………….….
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`
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`A.
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`B.
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`C.
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`D.
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`E.
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`Institution of the Investigation; Procedural History …………..……...
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`The Parties ………………………….……………….….……………..
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`Asserted Patent and Technological Background ……………….…....
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`The Accused Products ……………………………………………….
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`The Domestic Industry Products …………………………………….
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`II.
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`Jurisdiction and Importation ………….………………………………….…..
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`III.
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`General Principles of Applicable Law …..………………………………..….
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`A.
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`B.
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`C.
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`D.
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`Claim Construction ……….………………………………………….
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`Infringement ………………………………………………………….
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`Validity ……………………………………………………………….
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`Domestic Industry .............................. ……………………………….
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`IV. United States Patent No. 9,499,721 …………………………………...……..
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`A.
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`B.
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`C.
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`D.
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`Claim Construction ……….…………………………………………..
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`Infringement …………………………………………………………..
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`Domestic Industry (Technical Prong) ………………………………….
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`Validity ………………………………………………………………..
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`V.
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`Domestic Industry (Economic Prong) ………..……………………….……….
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` 1
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` 1
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` 4
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` 4
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` 5
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` 9
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` 10
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` 31
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` 31
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` 33
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` 37
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` 45
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` 48
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` 49
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` 87
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`144
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`169
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`297
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`VI.
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`Conclusions of Law ………………………………………………….………..
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`314
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`VII.
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`Initial Determination on Violation …………………………………….………
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`315
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`VIII. Recommended Determination on Remedy and Bonding ……………………… 316
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`IX. Order ………………………………………………………………….………..
`
`331
`
`
`
`

`

`The following abbreviations may be used in this Initial Determination:
`
`ALJ
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`-
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`Administrative Law Judge
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`CDX -
`
`Complainant’s Demonstrative Exhibit
`
`CPX
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`CX
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`Dep.
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`-
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`-
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`-
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`Complainant’s Physical Exhibit
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`
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`Complainant’s Exhibit
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`Deposition
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`EDIS -
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`Electronic Document Imaging System
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`JPX
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`JX
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`P.H.
`
`-
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`-
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`-
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`Joint Physical Exhibit
`
`Joint Exhibit
`
`Prehearing
`
`RDX -
`
`Respondents’ Demonstrative Exhibit
`
`RPX
`
`-
`
`Respondents’ Physical Exhibit
`
`RWS -
`
`Rebuttal Witness Statement
`
`
`
`RX
`
`Tr.
`
`WS
`
`-
`
`-
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`-
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`Respondents’ Exhibit
`
`Transcript
`
`Witness Statement
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`
`ii
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`

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`I.
`
`Background
`
`A.
`
`Institution of the Investigation; Procedural History
`
`By publication of a notice in the Federal Register on July 7, 2020, pursuant to
`
`subsection (b) of section 337 of the Tariff Act of 1930, as amended, the Commission
`
`instituted this 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, or the 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,
`3–6, 10, 11, 13, 14, 18–20, 24, 26–29, 31, 35–37, and 39–
`44 of the ’721 patent [U.S. Patent No. 9,499,721]; and
`whether an industry in the United States exists as required
`by subsection (a)(2) of section 337.
`
`85 Fed. Reg. 40685 (July 7, 2020).
`
`Pursuant to section 210.10(b)(1) of the Commission’s Rules of Practice and
`
`Procedure, 19 C.F.R. § 210.10(b)(1):
`
`[T]he plain language description of the accused products or
`category of accused products, which defines the scope of
`the investigation, is “chemical mechanical planarization
`(“CMP”) slurries and components thereof, including
`colloidal silica.”
`
`Id.
`
`The named complainant is Cabot Microelectronics Corporation of Aurora,
`
`Illinois. The named respondents are:
`
`1. DuPont de Nemours, Inc. of Wilmington, Delaware;
`2. Rohm and Haas Electronic Materials CMP Inc. of Newark,
`Delaware;
`3. 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;
`
`
`
`

`

`4. Rohm and Haas Electronic Materials Asia-Pacific Co., Ltd. of
`Miaoli, Taiwan;
`5. Rohm and Haas Electronic Materials K.K. of Tokyo, Japan; and
`6. Rohm and Haas Electronic Materials LLC of Marlborough,
`Massachusetts.
`
`The Office of Unfair Import Investigations is a party to this investigation. Id.
`
`The target date for completion of this investigation was originally set at 15
`
`months, i.e., October 7, 2021, with an evidentiary hearing scheduled to commence on
`
`February 3, 2021. See Order No. 3 (July 16, 2020).
`
`The Commission affirmed the following initial determinations:
`
`• Order No. 7 (Initial Determination Granting Motion for Leave to Amend the
`Complaint and Notice of Investigation) (Oct. 1, 2020), aff’d, Commission
`Determination Not to Review an Initial Determination Granting
`Complainant’s Motion to Amend the Complaint and the Notice of
`Investigation (Oct. 19, 2020).1
`
`• Order No. 8 (Initial Determination Granting Motion for Leave to Amend the
`Complaint and Notice of Investigation) (Nov. 10, 2020), aff’d, Commission
`Determination Not to Review an Initial Determination Granting
`Complainant’s Motion to Amend the Complaint and the Notice of
`Investigation (Nov. 24, 2020).2
`
`• Order No. 12 (Initial Determination Granting Motion to Terminate the
`Investigation As to the Assertion of Infringement of Claim 5 of U.S. Patent
`No. 9,499,721) (Jan. 26, 2021), aff’d, Commission Determination Not to
`Review an Initial Determination Terminating the Investigation in Part Based
`on Withdrawal of Complainant's Allegation of Infringement as to Claim 5 of
`U.S. Patent No. 9,499,721 (Feb. 16, 2021).
`
`• Order No. 13 (Initial Determination Granting Motion for Leave to Amend the
`Complaint and Notice of Investigation) (Jan. 26, 2021), aff’d, Commission
`
`1 The initial determination (Order No. 7) granted the motion to amend the complaint and
`notice of investigation to include an allegation of infringement of claims 17 and 46 of the
`‘721 patent.
`2 The initial determination (Order No. 8) granted the motion to amend the complaint and
`notice of investigation to change the name of the complainant from Cabot
`Microelectronics Corporation to CMC Materials, Inc.
`
`
`
`
`
`
`2
`
`

`

`Determination Not to Review an Initial Determination Granting
`Complainant’s Motion to Amend the Complaint and the Notice of
`Investigation (Feb. 12, 2021).3
`
`A prehearing conference was held on February 3, 2021, with the evidentiary
`
`hearing in this investigation commencing immediately thereafter. The hearing concluded
`
`on February 5, 2021. See Order No. 5 (July 28, 2020); P.H. Tr. 1-17; Tr. 1-809. The
`
`parties were requested to file post-hearing briefs not to exceed 250 pages in length, and to
`
`file reply briefs not to exceed 65 pages in length. See Order No. 11 (Jan. 22, 2021) at 4.
`
`On February 19, 2021, the parties filed a joint outline of the issues to be decided in the
`
`Final Initial Determination. See Joint Outline of Issues to Be Decided in the Final Initial
`
`Determination (Pursuant to G.R. 11(a)) (“Joint Outline”) (EDIS Doc. ID No. 734669).
`
`On March 5, 2021, the parties filed a joint outline for the reply briefs. See Joint Outline
`
`of Issues to Be Decided in the Final Initial Determination (Pursuant to Ground Rule
`
`11(a)) (“Joint Reply Outline”) (EDIS Doc. ID No. 736140).
`
`On June 3, 2021, the undersigned issued an order setting the target date at
`
`approximately 15.6 months, i.e., October 25, 2021, which made the deadline for this
`
`initial determination June 25, 2021. Order No. 16 (June 3, 2021). On June 21, 2021, the
`
`administrative law judge issued an order setting the target date at 16 months, i.e.,
`
`November 8, 2021, which makes the deadline for this initial determination July 8, 2021.
`
`Order No. 17 (June 21, 2021).
`
`
`3 The initial determination (Order No. 13) granted the motion to amend the complaint and
`notice of investigation to change respondent “Rohm and Haas Electronic Materials CMP
`Inc.” to “Rohm and Haas Electronic Materials CMP, LLC.”
`
`
`
`
`
`
`3
`
`

`

`B.
`
`The Parties
`
`1.
`
`Complainant
`
`Complainant CMC Materials, Inc. (“CMC” or “complainant”) is a leading global
`
`supplier of CMP slurries. See JX-0019 (CMC 2019 Form 10-K) at 3. CMC is a publicly
`
`traded Delaware corporation and is the owner and assignee of the ’721 Patent. See CX-
`
`0223 (Certified Assignment). CMC has CMP operations in the United States, including
`
`at its global R&D and manufacturing headquarters in Aurora, Illinois.
`
`2.
`
`Respondents
`
`Respondents4 are DuPont de Nemours, Inc., a company organized under the laws
`
`of Delaware, and subsidiaries of DuPont de Nemours, Inc. located in the United States,
`
`Japan, and Taiwan, including Rohm and Haas Electronic Materials CMP Inc., Rohm and
`
`Haas Electronic Materials CMP Asia Inc., Rohm and Haas Electronic Materials Asia-
`
`Pacific Co., Ltd., Rohm and Haas Electronic Materials K.K., and Rohm and Haas
`
`Electronic Materials LLC.
`
`*
`
`*
`
`*
`
`As noted, the Office of Unfair Import Investigations (“Staff”) is also a party to
`
`this investigation. 85 Fed. Reg. 40685 (July 7, 2020).
`
`C.
`
`Asserted Patent and Technological Background
`
`U.S. Patent No. 9,499,721 (“the ‘721 patent”), entitled “Colloidal Silica
`
`Chemical-Mechanical Polishing Composition,” issued on November 22, 2016, to named
`
`
`4 Hereinafter, respondents are collectively referred to as “DuPont” or “respondents.”
`
`
`
`
`
`
`4
`
`

`

`
`
`inventors Steven Gnunbine, Jeffrey Dysard, Ernest Shen, and Mary Cavanaugh. JX-
`
`0001 (‘721 Patent). The application leading to the ’721 patent was filed on J1me 25,
`
`2015, and claims priority to a provisional application filed on J1me 25, 2014. See id; JX-
`
`0027 (Provisional Patent Application 62/017100). In the BRIEF SUIVIMARY OF THE
`
`INVENTION section, the ‘721 patent states, “A chemical-mechanical polishing
`
`composition is disclosed for polishing a semiconductor substrate.” JX-0001 at 2: 15-16.
`
`The ’721 patent has 46 claims, including 2 independent and 44 dependent claims.
`
`See JX-0001 (’721 Patent). For infringement, CMC asserts claims 1, 3—4, 6, 10—11, 13—
`
`14, 17—20, 24, 26—29, 31, 35—37, 39—44, and 46. See Compl. Br. at xix, 45. With respect
`
`to domestic industry, CMC asserts claims 1, 3—11, 13—21, 23, 26—29, 31—36, and 38—44.
`
`See id. at xix, 92-93.
`
`D.
`
`The Accused Products
`
`CMC argues:
`
`Respondents’ products that infringe the ’721 Patent include
`Respondents’ Optiplane 2300 product family, their Optiplane 2600
`product family, and components thereof. The basic components of
`
`
`Res ondents’ 0 ti lane 2300 and 2600 families include:
`
`
`See, e.g., CX-0007C
`
`
`
`
`Optiplane
`(Auger Dep.) at 85: 16—8626; JX—0207C
`2300) at 2: JX-0278C (Optiplane 2600 Formulation); JX-0255C (OP2300
`
`formulation); JX-0260C (OP23OO
`formulation); JX—0197C
`(OP2300A Recipe); JX—0198C (OP2602 Recipe); JX—0391C (2602
`Recipe): JX—0338C (2602 Manufacturing); JX—0253C (OP2602
`formulation); JX-0278C- formulation).
`
`
`articles imported by Respondents
`Of all the com onents, the
`component of the Accused
`from- are the
`Products. Hg. Tr. at 293: 17—2942; CX-0007C (Auger Dep.) at 88:20—25;
`CX-0010C (G110 Dep.) at 169:21—24; see also CX-0018C (Umberger
`
`5
`
`

`

`
`
`Dep.) at 55:12—13, 55:15—16. 155:16—19; JX-0207C (2017 Optiplane 2300
`
`Presentationi at 2-i;
`
`
`
`-0176C (CMP Sluny Update) at 4
`
`Comp]. Br. at 10.
`
`Respondents argue:
`
`Accused Products — From the host of DuPont CMP slurries with a
`
`pH between about 1.5 and about 7. CMC only accuses DuPont’s
`OptiplaneTM 2300 and 2600 families of CMP shuries of infrin ement
`“Accused Products” , based solely on
`
`i”particles fromW
`
`WS) at QA 142, 159, 165—173: EDIS DOC Id. 719941 (09/17/20
`Respondents’ Res onse to Com lainant’s Proposed Representative Prod.).
`
`Notably, thefl particles, as imported by DuPont, are
`
`not themselves alleged to infringe.
`
`To support its allegations of infringement, CMC seeks improperly
`to rewrite the history of DuPont’s development of its acidic CMP slurries,
`characterizing DuPont’s accused roducts as “co ies” of CMC ’5 alleged
`invention. Not so. DuPont was
`
`before CMC ’s alleged invention. and
`in a maimer not patentable to CMC ue to
`the well-established state of the art. See in '0 X1. DuPont had
`
`
`
`
`
`
`
`
`nd before the alleged invention. RX-
`ov. 7, 2012, Y. Guo email string); JX—0111C
`; RX-1402C
`
`(Raghavan Reb. WS at A 22—47; RX—0441C
`Price Table
`Email); JX-0289C
`Email to Chu): RX—0446C Chu Sam 1e
`Schedule Email .
`
`
`ere not inventions o CMC
`
`RDX-0009C.016
`
`uPont
`
`
`
`.
`told DuPont thata
`
`
`
`
`-
`2015 Presentation at 11. DuPont is
`
`and
`0mg no more t an using the pnor art recognized in
`distinguished in the ’721 atent. Id; JX-0001 (72] Patent) at 53—20
`(distinguishingi in pm 311).
`
`DuPont’s earlier work in developing positively charied acidic
`, well
`CMP sluiries to polish silicon oxide material dates back to
`before the ’721 patent. In_ and others develope DuPont’s
`
`

`

`DuPont had also
`avan Reb. WS) at QA 23-26. By
`RX-l402C Ra
`particles in acidic ILD slum'es, tested
`used
`those sluiries, and continued to develo acidic CMP sluiries using those
`
`
`
`
`palticles, including DuPont’s”.3Id. at QA 27-28,
`38. - had for years been a
`own supp let 0 co 01
`l silica particles.
`designed for CMP sluiries (RDX—0009C.003—05 (DuPont Demo.) (RX—
`0187C_ Developing Slides at 3, 10-11)) and introduced its
`series” silica particles to DuPont in
`JX-0296C
`Presentation) at 12). While DuPont
`, as noted above,
`sent sam es 0
`
`
`
`Reb. WSi at QA 29-38; JX-0298C (03/13/13 Email)
`
`
`
`RX-l402C Raghavan
`
`
`
`
`
`when
`Access to that material, however, was cutoff in
`1101' art
`to swee this
`CMC amended its agreement with
`
`
`article see in m 9 XI.A back under
`
`RX-0110C
`
`
`
`dwere not inventions of CMC but were instea
`
`
`
`
`RDX—0009C .016 DuPont Demo.
`
`JX—Ol 1 1C I
`
`RX—l402C Ra avan Reb. WS at 0A 39—50.
`
`
`
`
`Id. at QA 40 (quotin CX-OOlOC (Guo Depo. Tr.)
`at 170: 19-171 : 10 ; see also JX-0215C
`Presentation at 1 1
`
`. DuPont’s use 0
`
`palticles, such as with the Accused Products, thus uses nothing invented
`by CMC.
`
`CMC also mischaracterizes the- and DuPont supplier-
`customer relationshi and misrepresents DuPont’s involvement in the
`manufacture of
`particles to suggest copying. Id. at QA 51—52.
`DuPont and
`relationship. reflected in their general supply
`agreement and the munerous documents and testimony cited by CMC,
`amomlts to a standard supplier—customer relationship. Id. at QA 53-66.
`70, 87. In fact, the evidence cited by CMC to $11
`est DuPont’s
`involvement in developing- post—dates
`development and-
`offer of- particles to DuPont.
`
`

`

`
`— particles supplied to DuPont are standard colloidal
`
`silica partrc es, not custom products made especially for the Accused
`Products. See infi‘a § IV. DuPont’s particle specifications simply control
`variability and ensure that. supplies a consistent product to DuPont
`and its customers. RX-1402C (Raghavan Reb. WS) at QA 67-72; id. at
`QA 71 (citin CX-0018C mberger Depo. Tr.) at 92:16—22 . When Fuso
`and DuPont
`particle specification in
`, they
`proposed ranges for pH, particle size, and other parameters irrelevant to
`the claimed ro erties of the ’721 patent compositions. Id. Moreover, the
`
`d particle specification aligned closely with-
`proposal based on its. particle offerings to all of its customers. Id. at
`A 73-75, 83-84 discussmg importation b third arties). Additionally,
`
`advertisesi particles as a ‘H’ (id. at QA 85-86), and
`
`has even marketed. to CMC. Id. at QA 86 (discussing RX-
`0341C (2017 - Presentation) at 19). Taken together, the evidence
`shows that DuPont has not been substantively involved in the design,
`research and development, or manufacture of- particles—particles
`imiorted by and advertised to others, including CMC. Id. at QA 75-87.
`
`
`
`is a staple commodity.
`
`Resps. Br. at 15-18.
`
`The Staff argues:
`
`DuPont’s accused products are the Optiplane 2300 product family,
`the Optiplane 2600 product family, and components thereof. The
`Optiplane 2300 family includes at least Optiplane 2300
`and
`Optiplane 2300A (a.k.a., OP2300-. See JX—403C Jonrt Stipulation
`Regarding Representative Accused Products). The Optiplane 2600 family
`includes at least
`ti
`lane 2600, Optiplane 2601, Opti lane 2602,
`
`, and products with identifiers!)—
`
`0 ti lane 2300
`fl. See id.
`
`
`
`DuPont’s Optiplane 2300 and 2600 roduct families include the
`
`followirr basic com onents:
`
`. See, e.g., CX—0007C Auger De .
`86:6; CX—0128C (Optiplane 2300 Formulation): JX- 0207C
`
`- Optiplane 2300 - Advanced Acidic ILD Slurry, dated March 1,
`2017) at 2; JX-0278C (Optiplane 2600 Formulation). CMC contends that
`DuPont, its customers, and certain third-party laboratories make, use, and
`sell the Accused Products and components thereof in a manner that
`
`

`

`
`
`violates Section 337 and directly infringes the asserted claims of the ’721
`patent. CMC Br. at 66.
`
`Staff Br. at 15.
`
`As can be seen from the parties’ arguments, there is no dispute that DuPont’s
`
`accused products are the Optiplane 2300 product family, the Optiplane 2600 product
`
`family, and components thereof. The Optiplane 2300 family includes at least Optiplane
`
`2300 -) and Optiplane 2300A (a.k.a., 0132300.). See JX-403C (Joint
`
`Stipulation Regarding Representative Accused Products) (“Joint Stipulation”) (EDIS
`
`Doc. ID No. 720141). The Optiplane 2600 family includes at least Optiplane 2600,
`
`Optiplane 2601, Optiplane 2602, Optiplane 2300 I), and products with identifiers
`
`E.
`
`The Domestic Industry Products
`
`CMC argues, inter alia:
`
`CMC ’3 DI Products include the D922x famil
`D9228, D9222, D9225, D9228 7.5 X,
`
`roducts, including
`and
`
`developments and improvements thereo . CX—0001C Woodland DWS) at
`Q/A 8. All of these products include- colloidal silica abrasive
`particles. CX—0002C (Grumbine DWS) at Q/A 30. Since being disclosed
`in 2014, and then first sold in 2015, the DI Products have been and
`
`continue to be adopted by nmnerous US. customers and have had
`lmdisputed commercial success. See CX—0001C (Woodland DWS) at Q/A
`21, 38—39, 46; JX-0036C (2014 Industry Presentation ; CX—0019C Van
`
`. at 18523—9; id. at 186:10—13
` ): id. at 166:12—15.
`
`Comp]. Br. at 9.
`
`Respondents argue, inter alia:
`
`DI Products - CMC'3 alleged Domestic Industry Products are the
`D922X famil of CMP slurries, includin D9222, D9225, D9228, D9228
`
`7.5x,
`
`each using its
`
`silica paiticles (“DI
`
`9
`
`

`

`Products”). See EDIS DOC Id. 716138 (07/31/20 Complainant’s
`Identification of DI Prod.).
`
`Resps. Br. at 14-15.
`
`The Staff argues, inter alia:
`
`CMC’s Domestic Industry Products include the D922X family
`products, including D9228, D9222, D9225, D9228 7.5 X,
`
` and developments and improvements thereof. See CMC Br. at
`11-12. They are part of CMC’s “dielectrics” product line, largely intended
`for polishing dielectric materials. Id. All of these products include
` colloidal silica particles; CMC continues to manufacture and sell in
`the United States its D922X family products. Id.
`
`Staff Br. at 15.
`
`As can be seen from the parties’ arguments, there is no dispute that CMC’s DI
`
`Products include the D922x family products, including D9228, D9222, D9225, D9228
`
`7.5 X,
`
` and developments and improvements thereof. See CX-0001C
`
`(Woodland DWS) at Q/A 8. All of these products include
`
` colloidal silica
`
`abrasive particles. See CX-0002C (Grumbine DWS) at Q/A 30.
`
`II.
`
`Jurisdiction and Importation
`
`A.
`
`Jurisdiction
`
`Section 337(a)(1)(B) declares unlawful, inter alia, “[t]he importation into the
`
`United States, the sale for importation, or the sale within the United States after
`
`importation by the owner, importer, or consignee, of articles that . . . infringe a valid and
`
`enforceable United States patent.” 19 U.S.C. § 1337(a)(1)(B). Complainant has filed a
`
`complaint alleging a violation of this subsection, and the Commission therefore has
`
`subject matter jurisdiction. See Amgen, Inc. v. United States Int’l Trade Comm’n, 902
`
`
`
`
`
`
`10
`
`

`

`
`
`F.2d 1532, 1535-37 (Fed. Cir. 1990). The parties’ arguments conceming importation are
`
`discussed below.
`
`No respondent contested the Commission’s personal jurisdiction. See Resps. Br.
`
`at 23. Indeed, all respondents have appeared and participated in the investigation. The
`
`Commission therefore has personal jurisdiction over those respondents. See e.g., Certain
`
`Liquid Crystal Display Modules, Products Containing Same, and Methodsfor Using the
`
`Same, Inv. No. 337—TA-634, Final Initial and Recommended Determinations at 3 (June
`
`12, 2009) (unreviewed).
`
`The Commission has in rem jurisdiction over the accused products. See e.g.,
`
`Sealed Air Corp. v. United States Int’l Trade Comm ’1), 645 F.2d 976, 985-86 (C .C PA.
`
`1981). The parties’ arguments conceming importation are discussed below.
`
`B.
`
`Importation
`
`CMC argues:
`
`Respondents do not dispute that it has imported both the accused
`Optiplane 2600 slurry and the BS-3 colloidal silica particles that are used
`to manufacture the accused CMP slurries. Hg. Tr. at 28916—2991290;
`293:15—294:5. Instead, Respondents claim that the importation of over
`- of Optiplane 2600 does not uali
`as an “im ortation” under
`
`
`Sectron 337 because that product was
`further argue that the importation of over
`of BS—3 colloidal
`
`silica particles does not qualify as an “importation” under Section 337
`because those particles are not mixed into infringing CMP slurries until
`after they arrive in the United States. RPreHBr at 36, 39—40. Both
`arguments fail as a matter of law.
`
`1. Respondents’ Imported Accused CMP Slurries
`
`Respondents do not dispute that they imported- kg of
`Optiplane 2600 slurry into the United States in late 2019. See CX-0055C
`(Invoices, Packing Lists, and Merchant Bill of Lading) at 5; JX—0005
`(Shipment Results/Details—_); JX—0192C (OP2300
`Manufactured and Retluned); JX—O322C (CBP Form 7501 Entry
`
`11
`
`

`

`
`
`Summary); JX-0348C (Email from Ronald Hsin to Karen Chiang); RX-
`0483C (Invoices and Packing List); RX—0810C (Purchase Order); RX—
`0811C (Purchase Order); Hg. Tr. at 289: 14—290: 18; CX-0011C
`(Hutchinson Dep.) at 1923—] 1, 197: 10—19. This shipment is enough to
`satisfy the importation requirement. See Certain Purple Protective Gloves,
`Inv. No. 337-TA—500, Order No. 17 at 5 (Sept. 23, 2004) (“A complainant
`need only prove importation of a single accused product”); see also
`Certain Electronic Nicotine Delivery Systems & Components Thereof, Inv.
`No. 337-TA-1139, Order No. 35 at 3 (Aug. 5, 2019).
`
`Yet, Respondents incorrectly claim that their importation of-
`. of Optiplane 2600 does not uali
`as an “im ortation” under Section
`
`337 because the sllnry was ‘
`.” RPreHBr at 36,
`
`39—40. But Section 337 does not distinguish
`” goods from other
`imported goods. RPreHBr at 36. Indeed, “Congress intended
`‘ [importation into the United States] to include impmtation by a
`respondent without regard to p1upose.”’ Certain Activity Tracking
`Devices, Systems, & Components Thereof Inv. No. 337-TA-963, Order
`No. 27 at 3 n.4 (Feb. 1, 2016) (quoting Certain Novelty Teleidoscopes,
`Inv. No. 337-TA-295, Order No. 5 at 1 (May 19, 1989)); see also Certain
`Sputtered Carbon Computer Disks & Products Containing the Same,
`Including Disk Drives, Inv. No. 337-TA-3 50, USlTC Pub. 2701 (“Carbon
`Coated Disks”), Comm’n Op. at 5 (Nov. 1993) (concluding that Section
`337 “covers all ‘importations’ of infringing articles into the United
`States”). The Commission has formd the importation requirement satisfied
`when the accused articles were manufactured in the United States,
`
`exported, and subsequently imported back into the United States. See
`Carbon Coated Disks, Comm’n Op. at 4—9; Certain Digital Set-Top Boxes
`& Components Thereof, 337-TA-712, ID at 14 (May 20, 2011) (“The
`Commission does not distinguish between importation and re-importation
`for p1uposes of establishing the jlu'isdictional requirement”).
`
`It also is irrelevant that the imported slimy was subsequently
`by Respondents. “So long as there has been an importation,”
`“the fact that [a product] was not sold. . .or without commercial value is
`irrelevant.” Certain Trolley Wheel Assemblies, 33 7-TA-161, USITC Pub.
`1605, Comm’n Op. at 8 (Nov. 1984). Even so, DuPont’s importation of
`Optiplane sllury into the United States did have commercial value. First,
`the docrunentation included with the shipment shows that it was valued at
`over-. See Hg. Tr. at 29112—22; CX-0055C
`voices, Packin
`Lists, and Merchant Bill of Ladin
`
`
`
`at l, 2. Second,
`
`. See JX-0287C
`s Assessment 0
`OP2300); RX—1389C (Jacobs RWS) at Q/A 30—34.; Hg. Tr. at 289:14—23.
`
`12
`
`

`

`Third, DuPont continued to sell this same product to U.S. customers even
`after the subject importation. See Hg. Tr. at 293:2–14; RX-1389C (Jacobs
`RWS) at Q/A 36.
`
`2. DuPont Imports Components of the Accused CMP Slurries
`
`Respondents do not dispute that they imported and continue to
`import BS-3 silica particles in the United States. Rather, Respondents
`argue that these importations should be exempted from Section 337 based
`on four flawed reasons: (1) Respondents’ manufacturing activities are
`“purely domestic,” (2) “
` is one of a number of components in the
`Accused Slurry Products,” (3) “the BS-3 particle is not even used as
`imported,” and (4) Respondents have not “been involved in the design or
`development of any [
`] particles contained in the Accused Products.”
`RPreHBr at 39, 40, 42. None of these reasons are grounded in law or fact.
`
`First, Respondents’ manufacturing activities are not “purely
`domestic,” as Respondents do not dispute that they import
` colloidal
`silica particles into the United States5 to be combined with other imported
`components in the manufacturing of the Accused Products. RPreHBr at
`39; Hg. Tr. at 294:3–5; RX-1389C (Jacobs RWS) at CX-0018C
`(Umberger Dep.) at 55:12–21; Q/A 12; JX-0243C (Development Gate
`Presentation: Optiplane 2602) at 6; JX-0342C (
` Importations); JX-
`0349C (
` Importations); JX-0406C (Respondents’ Discovery
`Responses) at 25, 30, 32. Further, Respondents concede that they do not
`use the imported
` particles to make any other products. See CX-
`0007C (Auger Dep.) at 218:21–219:3.
`
`Second, the BS-3 particles are no less “imported” simply because
`they are combined with other components in the United States after
`importation. Preventing the combination of imported components into
`infringing products in the United States is squarely within the jurisdiction
`of the Commission. See Certain Network Devices, Related Software &
`Components Thereof (II), Inv. 337-TA-945 (“Network Devices II”),
`Comm’n Op. at 123 (Jun. 1, 2017) (“[Respondent] is barred from
`importing components of its devices and then assembling those devices
`
`
`5 Respondents imported over
` of BS-3 particles from
`. See JX-0349C (Fuso Importations); see also CX-0011C (Hutchinson Dep.) at
`171:25–172:5, 175:21–176:8, 181:16–22, 182:10–19, 183:13–25; JX-0054 (Shipment
`Results/Details from Rohm/US Imports - Panjiva, April 28, 2020); JX-0055 (Shipment
`Results/Details – Dec. 6, 2018); JX-0056 (Shipment Results/Details – Feb. 27, 2019); JX-
`0057 (Shipment Results/Details–Mar. 6, 2019); JX-0193C (US Imports Shipments); JX-
`0343C (Invoice); JX-0358C (Bill of Lading); JX-0363C (CBP Form 7501 Entry
`Summary); JX-0382C (CBP Form 7501 Entry Summary).
`
`
`
`
`
`
`
`
`13
`
`

`

`
`
`into infringing products”); Certain Marine Sonar Imaging Devices,
`Including Downscan & Sidescan Devices, Products Containing the Same,
`& Components Thereof, Inv. No. 337—TA—921 (Enforcement) (“Marine
`Sonar”), Comm’n Op. at 8 (Aug. 29, 2016) (clarifying that an LEO
`covered imported components that did not individually infringe but were
`used “for the pmposes of assembling or ‘kitting’ the infringing devices”);
`Certain Network Devices, Related Software & Components Thereof (I),
`Inv. No. 337—TA-944 (“Network Devices 1”), Comm’n Op. at 23 (Apr. 19,
`2017) (finding that respondent would “circumvent a Commission remedy
`by importing only the components of the accused products for reassembly
`into complete flmctional [products]”).
`
`Third, Respondents also are incorrect that “the BS—3 particle is not
`even used as imported.” RPreHBr at 40. As ex lained by Kevin Jacobs,
`DuPont’s global product scale up manager, the
`particles are pumped
`“directly” from the barrel in which it is imported into the tank where the
`mfnngmg shuries are manufactured, Without an
`retreatment. H . . Tr. at
`
`294:22—295:23. And to the extent
`
`the BS-3
`
`
`
`
`E.g., CX-0007C Auger Dep. at 89:2—4; JX-0231C Update
`Particle) at 2; JX—0212C (Optiplane 2300 Poster
`Presentation); JX-0176C (CMP Slurry Update) at 4.
`
`Fourth, as explained in the context of indirect infrin ement below,
`Respondents are “involved in the design or development of
`]
`particles contained in the Accused Products.” RPreHBr at 42. And these
`particles are material and necessary components of the Accused Products,
`without which the intended purpose of the claimed invention could not be
`achieved. Thus, the Commission has jluisdiction over and can issue
`remedies as to Respondents’ colloidal silica abrasive particles. See
`Certain Fluidized Supporting Apparatus & Components Thereof, Inv.
`Nos. 337-TA—182/ 188 (“Fhlidized Supporting Apparatus, 1D, 1984 WL
`273788 at *55 (June 16, 1984) (finding jurisdiction where the “imported
`components are essential and even indispensable to the production of the
`[infringing article].”).
`
`Compl. Br. at 11-16.6
`
`6 In this Initial Determination, rmless noted otherwise, when quoting, emphases are from
`the original source, and footnotes from the original source are omitted.
`
`14
`
`

`

`
`
`Respondents argue:
`
`DuPont does not import, sell for importation, or sell after
`importation any product alleged to infringe the ’721 patent. As such, the
`evidence shows that CMC has not demonstrated that the ITC has
`
`jruisdiction over the instant investigation.
`
`A.
`
`Legal Standard
`
`To show a violation of Section 337, a complainant must satisfy the
`importation requirement set forth in 19 U.S.C. § 1337(a)(1)03)(i) —
`“importation into the United States, the sale for importation, or the sale
`within the United States after importation by the owner, importer, or
`consignee, of articles that .
`.
`. infringe a valid and enforceable United
`States patent.” 19 U.S.C. § 1337(a)(1)(B)(i). A complainant bears the
`burden of showing the importation requirement of Section 337 is satisfied.
`Certain Flash Memmjv Circuits and Prods. Containing Same, 111v. No.
`337-TA-382, Comm’n Op. at 5 (June 26, 1997). CMC cannot satisfy the
`importation requirement in this investigation, and thus cannot establish
`that the Commission has jluisdiction over the instant investigation.
`
`B.
`
`CMC Cannot Show the ITC Has Jurisdiction Over the
`
`Instant Investigation
`
`CMC ’3 importation allegations rest on the followin shipments: (1)
`DuPont’s retmn of a shipment of seventy—two drums o
`OptiplaneTM
`2300 slurry into the US. from Taiwan, CMC PreHB at 14—17, and (2)
`Respondents’ purported importation into the US. of colloidal-silica BS-3
`particles, sold by Fuso Chemical C0., Ltd. (“Fuso”) from Japan. Id. at 17—
`19. Neither one of these two purported instances of importation satisfy 19
`U.S.C. § 1337(a)(1)(B)(i).
`
`As an initial matter, Cabot does not dispute that DuPont desi
`
`and developed the Accused Slurry Products at its—E11
`
`ed
`
`research and development facility in the US. RX—1398C (Jacobs Reb.
`WS) at QA 8. DuPont continues to further develop other non-accused
`slurry products in its
`research and develo ment
`facili
`. Id. at A 8-9. DuPont has
`
`
`
`
`who work at its
`research and
`
`
`square feet with a
`development facili
`occu
`in a
`roximately
`
`budget of over
`for labor, supplies and capital
`expenses. Id. at QA 8—10. DuPont’s research and develo ment laboratory
`
`
`
`used in the develo ment of the Accused Slurry Products at a cost in excess
`
`0‘. Id. atoms—
`
`15
`
`

`

`
`
`Not only were the Accused Shury Products developed in the U.S.,
`the are also manufactured entirely at DuPont’s manufacturing facility in
`
`h. Id. at QA 9-10. This over_ square foot
`facility is equipped with over- dollars in fixed assets to
`manufacture the Accused Slurry Products. Id. at QA 10. DuPont also has
`
`over_ employees involved in the manufacturing and quality
`
`contro testing of the Accused Sllury Products. Id. DuPont has invested
`and continues to invest in labo