United States: Commission Continues Use Of Standard Certification Provision Even When Finding That All Accused Products Infringe

In a recent Opinion, the Commission continued the practice of including its usual certification provision in the Limited Exclusion Order despite the complainant's request for a more restrictive certification provision. In re Certain Composite Aerogel Insulation Materials and Methods for Manufacturing the Same, Inv. 337-TA-1003 (Feb. 22, 2018).

The Commission Opinion affirmed the ALJ's finding that Aspen Aerogels, Inc. ("Aspen") had proven a violation of section 337 by Nano Tech Co., Ltd. and Guangdong Alison Hi-Tech Co., Ltd. (collectively, "Respondents") based on infringement of various claims of three different patents. Respondents' products were found to infringe one or more of Aspen's claims from U.S. Patent No. 7,078,359 (the "'359 patent") and, in some cases, certain claims from other Aspen patents that expire after the '359 patent.

Although the ITC issues exclusion orders, U.S. Customs and Border Protection ("CBP") is tasked with enforcement responsibility. Sometimes, it is not immediately clear whether a product violates the exclusion order, so CBP may itself need to test whether the incoming product violates the exclusion order. However, in some cases, particularly for method claims, such testing may be impractical or even impossible. As a result, the ITC typically relies on "certification provisions," where the enjoined party certifies "that they are familiar with the terms of the [exclusion] order, that they have made appropriate inquiry, and thereupon state that, to the best of their knowledge and belief, the products being imported are not excluded from entry under the order." In re Certain Semiconductor Chips with Minimized Chip Package Size & Prod. Containing Same, USITC Inv. No. 337-TA-660 (June 3, 2009). False certifications can lead to sanctions.

Aspen argued that the Commission should issue a more restrictive certification provision in this case, which would allow importation "only [for] products that have been adjudicated as non-infringing by a court, the Commission, or CBP." Aspen reasoned that, because the "Commission and CBP have repeatedly stated that the certification provision is not to be used with respect to newly designed products or processes that a respondent may believe to be noninfringing" and, in this case, all of Respondents' challenged products had been found to infringe, Respondents could not possibly have any certifiable products.

The Commission refused to depart from its standard certification provision. The Commission noted that "[t]he standard certification provision does not allow an importer to simply certify that it is not violating the exclusion order."   CBP only accepts a certification that the goods have been previously determined by CBP or the Commission not to violate the exclusion order. Here, the Commission found that importation of some of Respondents' products would infringe only Aspen's earlier-expiring '359 patent. Thus, once that patent expired, Respondents would be able to properly certify as to those products, even without a separate adjudication.

Takeaway

The Commission continues to rely on certification provisions to assist CBP with enforcement of exclusion Orders. Respondents and Complainants alike should be familiar with this somewhat complex process to ensure any certifications comply with the Commission rules. This case demonstrates that the Commission favors using its tried-and-true certification requirements.

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