Protest 2704-07-100664; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-514; Certain Plastic Food Containers

HQ H004452 September 25, 2009 OT:RR:BSTC:IPR H004452 DAX CATEGORY: 19 U.S.C. § 1337; Unfair Competition Port Director U.S. Customs and Border Protection 301 East Ocean Blvd. Suite 1400 Long Beach, CA 90802 RE: Protest 2704-07-100664; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-514; Certain Plastic Food Containers Dear Port Director: This is in response to the application for further review of the above-referenced protest filed by Next Wave Packaging, Inc. (“Protestant”) challenging the exclusion from entry for consumption of certain plastic food containers determined by the port to fall within the scope of the above-referenced general exclusion order issued by the U.S. International Trade Commission (“ITC”). FACTS: On February 28, 2007, U.S. Customs and Border Protection (“CBP”) issued a notice to Protestant indicating that a shipment of plastic food containers was deemed excluded from entry for consumption because the plastic food containers in question were covered by the general exclusion order issued by the ITC in Inv. No. 337-TA-514 (“514 GEO”). See Protest at 1. Pursuant to 19 U.S.C. § 1514(c), as implemented by 19 C.F.R § 174, on March 8, 2007, Protestant timely filed a valid protest challenging the exclusion from entry and determination that the plastic food containers at issue fell within the scope of the 514 GEO. Specifically, Protestant denies that the plastic food containers infringe any of the patents at issue during the investigation at, and found to be infringed by, the ITC. As Protestant states, ITC Inv. No. 337-TA-514 was instituted based on a complaint filed by Newspring Industrial Corp. (“Complainant”), which named two parties as Respondents to the investigation. See Protest at 2-3. The ITC instituted the investigation to determine whether there was 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, or the sale within the United States after importation of certain plastic food containers by reason of infringement of one or more of claims 1-5 of utility U.S. Patent No. 6,056,138 (“the ‘138 patent”), claims 1-2 and 4-9 of utility U.S. Patent No. 6,196,404 (“the ‘404 patent”), and the claim of design U.S. Patent No. D 415,420 (“the ‘420 patent”). See Administrative Law Judge’s (“ALJ”) Initial Determination at 3 (February 10, 2005). Protestant was not named as a Respondent in the investigation. The ALJ found a violation of section 337 of the Tariff Act of 1930, as amended, and issued an initial determination granting Complainant’s motion for a summary determination with respect to most, but not all, issues presented, which was affirmed by the Commission after limited review to examine possible formatting and typographical errors. See Commission Opinion at 1-3 (May 23, 2005). Accordingly, the ITC provided relief in the form of a general exclusion order that bars the entry for consumption into the United States of plastic food containers covered by one or more of claim 1 of the ‘138 patent, claim 1 of the ‘404 patent, or the claimed design of the ‘420 patent. See 514 General Exclusion Order (May 23, 2005). As stated above, Protestant was not named as a Respondent to the investigation, nor were the excluded plastic food containers at issue in this protest analyzed during the investigation at the ITC. The excluded plastic food containers are depicted in the images below. Notably, the excluded plastic food containers consist of two pieces (a top or “lid” and a bottom or “base”) and exhibit two different embodiments or styles. The first style consists of a generally rectangular shape, while the second style is circular in design. A representative rectangular-shaped plastic food container has been cut in half (as shown below in the image on the right) to reveal the existence of the various seals described later in this determination.
 ISSUE: The issue presented is whether the excluded plastic food containers infringe any of the relevant patents at issue and therefore fall within the scope of the 514 GEO. LAW AND ANALYSIS: The ITC has authority to conduct investigations into imported articles that allegedly infringe United States patents and impose remedies if the accused products are found to be infringing. See 19 U.S.C. § 1337(a)(1)(B), (b)(1), (d), (f). Specifically, 19 U.S.C. § 1337(d) provides the Commission authority to direct the exclusion from entry of articles found to be infringing. Moreover, when the Commission determines that there has been a violation of section 337, as amended, it may issue two types of exclusion orders: a limited exclusion order and/or a general exclusion order. See Fuji Photo Film Co., Ltd. v. U.S. Int’l Trade Comm’n, 474 F.3d 1281, 1286 (Fed. Cir. 2007); see also Certain Ink Cartridges and Components Thereof, Inv. No. 337-TA-565, Commission Opinion (October 19, 2007). Both types of orders direct CBP to bar infringing products from entering the country. See Yingbin-Nature (Guangdong) Wood Indus. Co. v. U.S. Int’l Trade Comm’n, 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. Id. 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 only appropriate if two exceptional circumstances apply. See Kyocera Wireless Corp. v. U.S. Int’l Trade Comm’n, 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 by satisfying the heightened burdens of §§ 1337(d)(2)(A) and (B).”). As stated above, the 514 GEO issued by the ITC provides, in relevant part, that: Plastic food containers covered by one or more of claim 1 of the ‘420 patent, claim 1 of the ‘138 patent, or claim 1 of the ‘404 patent, or [sic] are excluded from entry for consumption, entry for consumption from a foreign-trade zone, and withdrawal from warehouse for consumption for the remaining term of the patents, except under license of the patent owner or as provided by law. The ITC’s order is typical of general exclusion orders, speaking in terms of patent claims rather than parties and/or infringing products. See Yingbin-Nature, 535 F.3d at 1331. The 514 GEO directs CBP to exclude plastic food containers, regardless of their manufacturer or importer, that infringe the patents included above. Accordingly, since the ITC issued a general exclusion order based on the additional findings required by 19 U.S.C. § 1337(d)(2), the fact that Protestant was not named as a Respondent before the ITC is immaterial to the question of whether the accused plastic food containers fall within the scope of the 514 GEO. The only pertinent question is whether the plastic food containers infringe any of the relevant patents. See Sealed Air Corp. v. U.S. Int’l Trade Comm’n, 645 F.2d 976, 985 (C.C.P.A. 1981) (“An exclusion order operates against goods, not parties.“); see also Vastfame Camera, Ltd. v. U.S. Int’l Trade Comm’n, 386 F.3d 1108, 1114 (Fed. Cir. 2004) (“A general exclusion order broadly prohibits entry of articles that infringe the relevant claims of a listed patent 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.”). Significantly, the Court of Appeals for the Federal Circuit (“CAFC”) has recognized that issuance of a general exclusion order by the ITC binds named parties and non-named parties alike and shifts to would-be importers (such as Protestant), “as a condition of entry, the burden of establishing noninfringement.” Hyundai Electronics Industries Co. v. U.S. Int’l Trade Comm’n, 899 F.2d 1204, 1210 (Fed. Cir. 1990). Accordingly, the burden is on Protestant to establish that the excluded plastic food containers at issue do not infringe any of the relevant patents. UTILITY PATENT INFRINGEMENT Patent infringement determinations for utility patents entail two steps. The first step is to interpret the meaning and scope of the patent claims asserted to be infringed. The second step is to compare the properly construed claims to the accused device. See Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). The first step is a question of law; the second step is a question of fact. See Freedman Seating Co. v. American Seating Company, 420 F.3d 1350, 1357 (Fed. Cir. 2005). In patent law, there are two types of infringement: direct and indirect infringement. Direct infringement includes two varieties: literal infringement and infringement under the doctrine of equivalents. Literal infringement is when every limitation recited in a claim is found in the accused device. See Strattec Security Corp. v. General Automotive Specialty Co., 126 F.3d 1411, 1418 (Fed. Cir. 1997); see also Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1349 (Fed. Circ. 1998) (“An accused device cannot infringe, as a matter of law, if even a single limitation is not satisfied.”). Under the doctrine of equivalents, “a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is ‘equivalence’ between the elements of the accused product or process and the claimed elements of the patented invention.” Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 21 (1997) (citing Graver Tank & Manufacturing Co. v. Linde Air Products Co., 339 U.S. 605, 609 (1950)). The CAFC applies two articulations of the test for equivalence. See Voda v. Cordis Corp., 536 F.3d 1311, 1326 (Fed. Cir. 2008) (explaining that different phrasing may be “more suitable to different cases, depending on their particular facts…”). Under the insubstantial differences test, “[a]n element in the accused device is equivalent to a claim limitation if the only differences between the two are insubstantial.” Id. at 1326 (citing Honeywell International Inc. v. Hamilton Sundstrand Corp., 370 F.3d 1131, 1139 (Fed. Cir. 2004)). Alternatively, under the function-way-result test, an element in the accused device is equivalent to a claim limitation if it “performs substantially the same function in substantially the same way to obtain substantially the same result.” Id. (citing Schoell v. Regal Marine Industries, Inc., 247 F.3d 1202, 1209-10 (Fed. Cir. 2001). However, the doctrine of prosecution history estoppel acts as a constraint to limit the application of the doctrine of equivalents. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 733-41 (“Prosecution history estoppel requires that the claims of a patent be interpreted in light of the proceedings in the PTO during the application process….The doctrine of equivalents allows the patentee to claim those insubstantial alterations that were not captured in drafting the original patent claim but which could be created through trivial changes. When, however, the patentee originally claimed the subject matter alleged to infringe but then narrowed the claim in response to a rejection, he may not argue that the surrendered territory comprised unforeseen subject matter that should be deemed equivalent to the literal claims of the issued patent. On the contrary, by the amendment [the patentee] recognized and emphasized the difference between the two phrases[,]…and the difference which [the patentee] thus disclaimed must be regarded as material.…Prosecution history estoppel ensures that the doctrine of equivalents remains tied to its underlying purpose.”) (internal citations omitted). As for the scope of protection provided by the utility patents at issue in the 514 GEO, it is a “bedrock principle” of patent law that “the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“[W]e look to the words of the claims themselves…to define the scope of the patented invention.”). Furthermore, the CAFC has made clear that claim terms are given their ordinary and customary meaning, which refers specifically to the ordinary and customary meaning that the claim term would have to a person of ordinary skill in the art at the time of the invention. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). The inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation. See Innova, 381 F.3d at 1116. That starting point is based on the well-settled understanding that inventors are typically persons skilled in the field of the invention and that patents are addressed to and intended to be read by others of skill in the pertinent art. See Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1119 (Fed. Cir. 2002). 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. See Phillips, 415 F.3d at 1313. Often, this requires an examination of terms that have a particular meaning in a field of art. Id. Since the meaning of a claim term, as understood by persons of skill in the art, is often not immediately apparent, and since patentees frequently act as their own lexicographers, a court or administrative body responsible for making patent infringement determinations should look to sources available to the public that show what a person of skill in the art would have understood a disputed claim term to mean. Id. These sources include, for example, the words of the claims themselves, the remainder of the specification and the prosecution history, along with certain extrinsic evidence in appropriate circumstances. Id. Importantly, as stated by the CAFC in Vitronics and reaffirmed in Phillips, claims must be read in light of the specification, of which they are a part, since the specification “is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Philips, 415 F.3d at 1315 (citing Vitronics, 90 F.3d at 1582); see also Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985) (“The specification is, thus, the primary basis for construing the claims.”). DESIGN PATENT INFRINGEMENT The starting point for any proper examination of design patent law, as made clear by the CAFC, is the Supreme Court’s decision in Gorham Co. v. White, 81 U.S. 511 (1871). See Egyptian Goddess, Inc. v. Swisa, 543 F.3d 665, 670 (Fed. Cir. 2008) (en banc). The Gorham Court, in reviewing the infringement allegation before it, stated that the test of identity of design “must be sameness of appearance, and mere difference of lines in the drawing or sketch…or slight variances in configuration…will not destroy the substantial identity.” Gorham, 81 U.S. at 526-27. The Supreme Court then established the test for infringement that would be used in future design patent cases: “[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first patented is infringed by the other.” Id. at 528. The Supreme Court concluded, while addressing the merits of the specific case before it, that “whatever differences there may be between the plaintiff’s design and those of the defendant in details of ornament, they are still the same in general appearance and effect, so much alike that in the market and with purchasers they would pass for the same thing—so much alike that even persons in the trade would be in danger of being deceived.” Id. at 531. Since that time, the test provided by the Supreme Court has generally been referred to as the “ordinary observer” test and has been recognized by lower courts, including the CAFC and its predecessors, as the proper standard for making determinations involving design patent infringement. See Egyptian Goddess, 543 F.3d at 670. Moreover, the CAFC recently reaffirmed the continuing vitality of this approach to design patent determinations by rehearing Egyptian Goddess en banc and producing an opinion addressing the proper legal standard to be used in such cases. In the unanimous opinion before the en banc court, the CAFC provided an overview of design patent decisions that followed the standard articulated in Gorham and commented that these intervening cases are properly read as applying a version of the ordinary observer test in which the ordinary observer is deemed to view the differences between the patented design and the accused product in the context of the prior art. Id. at 676. Additionally, Egyptian Goddess repudiated the “point of novelty” test as the appropriate standard for design patent infringement determinations. This test, which required a trial court to examine the prior art and the claimed design to identify one or more points of novelty that distinguish the claimed design from the prior art, and thereby determine whether these points of novelty were included in the accused design, occasionally resulted in a contentious analysis. See Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1383 (Fed. Cir. 2009).    For example, one problem with the analysis under the “point of novelty” test was that it “proved difficult to apply in cases in which there are several different features that can be argued to be points of novelty in the claimed design. In such cases, the outcome of the case can turn on which of the several candidate points of novelty the court or fact-finder focuses on. The attention of the court may therefore be focused on whether the accused design has appropriated a single specified feature of the claimed design, rather than on the proper inquiry, i.e., whether the accused design has appropriated the claimed design as a whole.” Egyptian Goddess, 543 F.3d at 677 (emphasis added). Furthermore, the “point of novelty” test was found to be problematic since “the more novel the design, and the more points of novelty that are identified, the more opportunities there are for a defendant to argue that its design does not infringe because it does not copy all of the points of novelty, even though it may copy most of them and even though it may give the overall appearance of being identical to the claimed design. In such cases, a test that asks how an ordinary observer with knowledge of the prior art designs would view the differences between the claimed and accused designs is likely to produce results more in line with the purposes of design patent protection.” Id. Accordingly, Egyptian Goddess held “that the ‘point of novelty’ test should no longer be used in the analysis of a claim of design patent infringement….Instead, in accordance with Gorham and subsequent decisions, we hold that the ‘ordinary observer’ test should be the sole test for determining whether a design patent has been infringed. Under that test, as this court has sometimes described it, infringement will not be found unless the accused article ‘embod[ies] the patented design or any colorable imitation thereof’.” Id. at 678 (internal citations omitted). Significantly, the CAFC continued that "[i]n some instances, the claimed design and the accused design will be sufficiently distinct that it will be clear without more that the patentee has not met its burden of proving the two designs would appear ‘substantially the same’ to the ordinary observer, as required by Gorham. In other instances, when the claimed and accused designs are not plainly dissimilar, resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art….Where there are many examples of similar prior art designs,…differences between the claimed and accused designs that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer who is conversant with the prior art.” Id. Egyptian Goddess also stressed that “although the approach [adopted] will frequently involve comparisons between the claimed design and the prior art, it is not a test for determining validity, but is designed solely as a test of infringement. Thus, as is always the case, the burden of proof as to infringement remains on the patentee. However, if the accused infringer elects to rely on the comparison prior art as part of its defense against the claim of infringement, the burden of production of that prior art is on the accused infringer….Under the ordinary observer test,…it makes sense to impose the burden of production as to any comparison prior art on the accused infringer. The accused infringer is the party with the motivation to point out close prior art, and in particular to call to the court’s attention the prior art that an ordinary observer is most likely to regard as highlighting the differences between the claimed and accused design. Regardless of whether the accused infringer elects to present prior art that it considers pertinent to the comparison between the claimed and accused design, however, the patentee bears the ultimate burden of proof to demonstrate infringement by a preponderance of the evidence.” Id. at 678-79. However, in this context, Protestant bears both the burden of proof and the burden of production as it has already been established above that the issuance of a general exclusion order by the ITC shifts the burden of establishing non-infringement to the would-be importer. See Hyundai Electronics Industries Co., 899 F.2d at 1210. CLAIM 1 OF U.S. PATENT NO. 6,056,138 The subject matter of the ‘138 patent involves a triple seal for use in plastic food containers where the seals are designed to provide enhanced protection against spillage and spoilage. See ALJ Initial Determination (“ALJ ID”) at 11. The ‘138 patent has 5 claims. Only claim 1, an independent claim, was included in the 514 GEO. Claim 1 contains the following limitations and reads as follows: 1. A container having three seals, comprising:  a base having a substantially planar bottom, a base perimeter wall extending substantially vertically upward from said bottom, a base rim extending substantially horizontally outward from said base perimeter wall, and a base sealing edge attached to said base rim; and a lid having a substantially planar top, a lid perimeter wall extending substantially vertically downward from said top, a lid rim extending substantially horizontally outward from said lid perimeter wall, a lid sealing edge an ached [sic] to said lid rim, and a locking lip protruding from said sealing edge; wherein said base sealing edge and said lid scaling edge are molded to be correspondingly mateable to each other and upon mating said base scaling edge and said lid sealing edge form a middle seal and an exterior seal and said base rim and said lid rim form an interior seal, wherein said interior seal has a surface area greater than said middle seal and said exterior seal, said base sealing edge further comprising an inner base edge extending generally vertically upward from said base rim; a middle base sealing edge extending substantially horizontally outward from said inner base edge; and an exterior base sealing edge extending substantially vertically downward from said middle base sealing edge; and said lid sealing edge further comprising an inner lid edge extending generally vertically upward from said lid rim; a middle lid sealing edge extending substantially horizontally outward from said inner lid edge; and an exterior lid sealing edge extending substantially vertically downward from said middle lid sealing edge, said locking lip protruding from said downward exterior lid sealing edge; wherein upon mating of said base and said lid, said base rim and said lid rim form said interior seal and said middle base sealing edge and said middle lid sealing edge form said middle seal and said exterior base sealing edge and said exterior lid sealing edge form said exterior seal. The first step in making a utility patent infringement determination, that of interpreting the claims, has been done by the ALJ for the claim limitations underlined above. Therefore, the second step in the infringement analysis, involving a question of fact, requires CBP to examine the ALJ’s claim constructions and read them onto the excluded plastic food containers to determine whether the containers are infringing. The ALJ construed the underlined claim terms above as follows: mateable: “capable of being joined or fitted together” mating: “the act of being joined or fitted together” middle seal: “the structure formed by the mating of the middle base sealing edge and middle lid sealing edge” exterior seal: “the structure formed by the mating of the exterior base sealing edge and said exterior lid sealing edge” interior seal: “the structure formed by the mating of the base rim and the lid rim” surface area: “a shared surface of the respective seals (i.e., the area of mating of one edge with another edge)” Accordingly, claim 1 of the ‘138 patent, as construed by the ALJ, requires three seals: an exterior seal (formed by the mating of the base sealing edge with the lid sealing edge), an middle seal (also formed by the mating of the base sealing edge with the lid sealing edge), and an interior seal (formed by the mating of the base rim with the lid rim). An embodiment of this patented invention is depicted in Figure 5 of the ‘138 patent, as shown below. The various seals have been labeled for illustrative purposes. As is apparent from Figure 5, the three seals are formed where the base sealing edge or base rim comes into contact with the lid sealing edge or lid rim.

 Protestant argues that the excluded plastic food containers do not meet certain limitations above. Specifically, Protestant states that the ‘138 patent requires an interior seal formed by the mating of the base and lid rims and that this limitation is lacking from the excluded plastic food containers. See Protest at 5-7, 11-13. The reason asserted for why this claim limitation is not met by the excluded plastic food containers is that when the lid and base are mated, the base rim does not come into contact with the lid rim and therefore the excluded plastic food containers are not capable of forming the required interior seal. As the digital images below reveal, the base rim and the lid rim do not come into contact when the base and lid are mated and therefore the container does not form the interior seal. This is apparent in the two bottom images where the arrows indicate the section where the base rim and lid rim do not come into contact and therefore are not capable of forming the interior seal. Furthermore, upon visual inspection, it has been determined that the excluded round plastic food containers also have the same slanted base rim as the rectangular containers and therefore are not capable of forming the required interior seal.
 Accordingly, the excluded plastic food containers do not satisfy this claim limitation and therefore do not literally infringe claim 1 of the ‘138 patent. Furthermore, since the interior seal is entirely lacking, there is nothing that performs this function and therefore the excluded plastic food containers do not infringe under the doctrine of equivalents. Lastly, since claim 1 is the only claim of the ‘138 patent at issue in the 514 GEO, the excluded plastic food containers do not infringe this patent. CLAIM 1 OF U.S. PATENT NO. 6,196,404 The subject matter of the ‘404 patent involves a triple seal with protrusions for use in plastic food containers to provide enhanced protection against spillage and spoilage. See ALJ ID at 16. The ‘404 patent has 9 claims. Only claim 1, an independent claim, was included in the 514 GEO. Claim 1 contains the following limitations and reads as follows: 1. A container having three seals, comprising: a base having a substantially planar bottom, a base perimeter wall extending substantially vertically upward from said bottom, a base rim extending substantially horizontally outward from said base perimeter wall, and a base sealing edge attached to said base rim; and a lid having to a substantially planar top, a lid perimeter wall extending substantially vertically downward from said top, a lid rim extending substantially horizontally outward from said lid perimeter wall,  a lid sealing edge attached to said lid rim, a protrusion attached to said lid sealing edge, and a locking lip protruding from said sealing edge; wherein said base sealing edge and said lid sealing edge are molded to be correspondingly mateable to each other and upon mating said base sealing edge and said lid sealing edge form a middle seal and an exterior seal and said base rim and said lid rim form an interior seal and further wherein said protrusion pushes said base sealing edge against said lid sealing edge. Again, as stated above, the first step in making a utility patent infringement determination, that of interpreting the claims, has been done by the ALJ for certain claim limitations. Therefore, the second step requires CBP to examine the relevant claim constructions and read them onto the excluded plastic food containers. The ALJ construed the underlined claim terms above as follows: protrusion: “a projection from a surrounding surface” mateable: *same as the ‘138 patent term construction mating: *same as the ‘138 patent term construction middle seal: *same as the ‘138 patent term construction exterior seal: *same as the ‘138 patent term construction interior seal: *same as the ‘138 patent term construction As with the ‘138 patent, Protestant argues that the excluded plastic food containers do not infringe the ‘404 patent because claim 1 requires the base and lid rim to form an interior seal upon mating. While claim 1 of the ‘404 patent and claim 1 of the ‘138 patent are not identical (the former, for example, requires a “protrusion” that pushes the base sealing edge against said lid sealing edge), they both contain limitations requiring an interior seal that is formed by the mating of the container’s base rim with the lid rim. As shown above, when the excluded plastic food container’s base is mated with the lid, the base rim and the lid rim do not come into contact and therefore cannot form the required seal. For this reason, as above, the excluded plastic food containers do not infringe claim 1 of the ‘404 patent either literally or under the doctrine of equivalents. U.S. PATENT NO. D 415,420 The ‘420 design patent is entitled “Double Sealed Rim Stackable Container” and includes six drawings of a round, two-piece food container from various angles. See ALJ ID at 8. The ‘420 patent further indicates that what is claimed here consists of “[t]he ornamental design for a double sealed rim stackable container, as shown and described.” The six drawings from the ‘420 patent are included below, with their corresponding figure designations.




 As stated above, the CAFC has clarified that the “ordinary observer” test should be the “sole test for determining whether a design patent has been infringed and that, under this test, infringement will not be found unless the accused article ‘embod[ies] the patented design or any colorable imitation thereof’.” Egyptian Goddess, 543 F.3d at 678 (internal citations omitted). Furthermore, the CAFC has also confirmed that the appropriate standard for design patent infringement determinations is whether, from the perspective of an ordinary observer who is conversant with the prior art, the patented design and the design of the accused article are substantially the same. However, before moving further, it warrants mentioning that it is not entirely clear whether (and if so, to what extent) the analysis pertaining to the identification of the appropriate ordinary observer, as developed in cases such as Arminak (i.e., involving the question whether the proper ordinary observer is a commercial or industrial buyer of component parts that will be assembled into a retail product or a retail purchaser of the retail product incorporating the component parts), survived the Egyptian Goddess pronouncement that the proper standard is from the perspective of an ordinary observer who is familiar with the prior art. See Arminak & Assocs. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314, 1321-25 (Fed. Cir. 2007). Furthermore, neither the ITC, nor the Protestant, identified who the appropriate ordinary observer should be in this context. Regardless, to the extent that determining the identification of the ordinary observer (other than one familiar with the prior art) survived Egyptian Goddess, the determination here finds that the appropriate ordinary observer is not an end-user consumer, but a commercial purchaser of plastic food containers who works in the foodservice industry and has, therefore, some familiarity with plastic food containers and the relevant prior art, but is not an expert that would be expressly excluded by Gorham from the category of persons who are eligible ordinary observers. The next step is to consider the claim construction for the ‘420 patent. The ITC did not provide a precise claim construction for the design of the ‘420 patent. However, as the CAFC has noted, there is no prescribed form that a design patent claim construction must take. See Egyptian Goddess, 543 F.3d at 679. Instead, the CAFC has recognized that design patents are typically claimed as shown in their drawings and, therefore, a court or administrative body tasked with making an infringement determination is not required to provide a detailed verbal description of the claimed design. Id. (citing Contessa Food Products v. Conagra, Inc., 282 F.3d 1370, 1377 (Fed. Cir. 2002) for the proposition that the trial court did not err in construing the asserted design claim as “a tray of a certain design as shown in Figures 1-3”). In fact, the Supreme Court has recognized that a design is better represented by an illustration “than it could be by any description and a description would probably not be intelligible without the illustration.” Dobson v. Dornan, 118 U.S. 10, 14 (1886). Taking the above into consideration, the design claim is construed as a two-piece, round container of a certain design as shown in Figures 1-6. Upon visual inspection and as shown in the images below, it is clear that the patented design and the excluded round plastic food containers are not plainly dissimilar. The only difference between the two is that the central circular design element on the lid and base of the excluded round plastic food containers is larger than the one in the patented design and also that the lid of the excluded round plastic food containers, when viewed from directly above, has five concentric circular elements, moving out from the center, whereas the lid shown in the figures of the ‘420 patent has six concentric circular elements. See Figure 3 of the ‘420 patent; see also Motion No. 514-2, Supplemental Declaration of Dr. Melvin L. Druin dated September 1, 2004, Table 3. Accordingly, this is a case where “resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art” while taking into account that in such cases “differences between the claimed and accused designs that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer who is conversant with the prior art.” Egyptian Goddess, 543 F.3d at 678. Additionally, this examination of the prior art can also serve to highlight certain similarities between the claimed and accused designs that may not be noticeable in the abstract, but that become significant during the comparative analysis. As stated above, in such a context as this where the accused infringer has chosen to rely on the comparison of prior art as part of its defense against the alleged infringement, both the burden of proof (which is shifted to the would-be importer with the issuance of the ITC’s general exclusion order) and the burden of production rest with Protestant in this case. Protestant has provided a number of prior art references for its non-infringement defense, including two references cited during the ‘420 patent’s prosecution. These two are U.S. Design Patent No. D 372,862 (“the ‘862 patent”), figures of which are depicted below on the left, and U.S. Design Patent No. D 375,261 (“the ‘261 patent”), figures of which are depicted below on the right.

Protestant also cites as part of its prior art defense U.S. Patent No. 4,471,880 (“the ‘880 patent”), which, unlike the prior art references above, is a utility patent. Figures 1 and 2 from the ‘880 patent are shown below.

 From these images, one of the notable design elements to emerge is the difference in proportion between the designs in the prior art and the design depicted in Figure 2 of the ‘420 patent, as shown below.




In Figure 3 from both the ‘862 patent and the ‘261 patent, as shown above, the prior art containers are almost completely balanced in that both are dissected in the middle by a line that produces an equally proportioned upper and lower section, while the design of the ‘420 patent has a disproportionately large base that is about twice as large as the uppermost portion of the container’s lid. The horizontal view of the lid shown in Figure 2 of the ‘420 patent is also distinguishable from the prior art designs since the former has an indentation before raising on a slope to the lid’s highest point, whereas the prior art designs rise in a symmetrical fashion, creating more of a mirror-image impression. Conversely, Figure 1 of the ‘880 patent has a very different design from all of the other containers because the base of the container in the ‘880 patent has a greater depth, thereby creating the impression of a container where the internal space is created in a significantly larger degree by the base, particularly in comparison with the internal space that is created by the lid. As shown in the images below, the excluded plastic food containers (shown on the right) exhibit substantially the same design as the patented design that is depicted in Figures 1, 2, 5, and 6 of the ‘420 patent.

 Furthermore, the design on the lid of the excluded plastic food containers is substantially the same as the design depicted in Figure 3 of the ‘420 patent. As above, an appropriate place to start the analysis is with an examination of the prior art cited by Protestant and then, with that examination in mind, compare the patented design with the design of the accused product.





 Two of the patents in the prior art, the ‘862 patent and the ‘880 patent, exhibit a circular design on their lids that consists of a pattern of concentric circles that are evenly spaced apart and therefore do not give the impression of having one central circular design element. Additionally, the lid design for the ‘880 includes a concave embodiment where each concentric circle, moving from the outer edge to the center, is recessed below the previous one (as shown in Figure 1 of the ‘880 patent). To the contrary, the design depicted in Figure 3 of the ‘420 consists of a circular design with a number of circles near the lid’s outer ridge and then a distinctive, central circular design element that is elevated in its position (as shown in Figure 1 of the ‘420 patent). Neither of the prior art references above have such a design. Furthermore, the ‘261 patent, while having a lid design that depicts a central circular element, does not have the multiple rings near the container’s outer edge and also, like the ‘880 patent above, does not have a central circular element that is elevated, as shown in the ‘420 patent, but instead is bowed in a concave manner (as shown in Figure 1 from the ‘261 patent). As shown in the images above, the excluded round plastic food containers have a lid design that is substantially the same as the design depicted in Figures 1 and 3 of the ‘420 patent since the accused containers exhibit elements found in the patented design that are not found in the prior art references. The lid of the accused plastic food containers has a number of circular elements near the outer edge of the container and also has an elevated, central circular design element, all of which are similar to the design in the ‘420 patent. As noted earlier, there are some differences between the lid design of the ‘420 patent and the lid of the accused round plastic food containers, so that the two are not identical to one another. However, the two do not need to be identical for the accused to be infringing. See OddzOn Products v. Just Toys, 122 F.3d 1396, 1405 (Fed. Cir. 1997) (“The patented and accused designs do not have to be identical in order for design patent infringement to be found.”). Instead, the accused article need only embody the patented design or any colorable imitation thereof such that an ordinary observer with knowledge of the prior art would consider the patented and accused designs to substantially the same. See Egyptian Goddess, 543 F.3d at 678. Protestant argues that the excluded round plastic food containers do not infringe the ‘420 patent because the central circular design element depicted by the figures of the patent is functional in nature since it facilitates the stacking of the containers. See Protest at 17 (“Functionally, there is some overlap between the ‘420 design patent and Next Wave’s containers. Both contain concentric circles creating indentations that allow containers to be stacked securely on top of each other. Functional similarity, however, has no place in a design patent infringement analysis. Only the ornamental aspects of the design may be considered.”) (internal citation omitted). Protestant then claims that since these circles are functional, the only ornamental design choices warranting protection are those arising solely from the exact location of the ridges and concentric circles. Id. However, a review of CAFC precedent regarding the principle of functionality in design patent cases contradicts Protestant’s assertions and results in a finding that the central circular design element on the lid in the ‘420 patent is not primarily functional. As made clear by the CAFC, an aspect of an article is functional if it is essential to the use or purpose of the article. See Amini Innovation Corp. v. Anthony California, Inc., 439 F.3d 1365, 1371-72, (Fed. Cir. 2006) (citing Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851 (1982)); see also L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993) (“When there are several ways to achieve the function of an article of manufacture, the design of an article is more likely to serve a primarily ornamental function.”) (emphasis added). Accordingly, the CAFC has held that “a design is not dictated solely by its function when alternative designs for the article of manufacture are available.” Best Lock Corp. v. Ilco Unican Corp., 94 F.3d 1562, 1566 (Fed. Cir. 1996). As an initial matter, the central circular design element depicted by the figures of the ‘420 patent is not purely functional because it is not essential to the primary use or purpose of the container, which is to store food. The ornamental central circular design choice on the top of the lid, as shown in the ‘420 patent, is in no way dictated by this primary function. This is not to say that the central circular design element does not serve any utility. The patent itself states that the design is for a stackable container. However, the primary use of this article of manufacture, as stated above, is to store food. Additionally, it is significant to note here that the container depicted in the ‘420 patent is stackable without the central circular design element, so not only is this element not essential to the primary function of the container referred to above, it also cannot be said that this element is essential to the stacking of the containers. This analysis is consistent with the design patent infringement determination made by the ALJ at the ITC, who found that the accused plastic food containers before him infringed the ‘420 patent, even though they were entirely missing an elevated, central circular design element. See ALJ ID at 7-10; see also Motion No. 514-2, Supplemental Declaration of Dr. Melvin L. Druin dated September 1, 2004, Figure 1. Furthermore, there are many different configuration possibilities for this central design element (such as diamond, triangle, or square shapes) that could perform the same ancillary function of facilitating one’s ability to stack the containers. See Door-Master Corp. v. Yorktowne, Inc., 256 F.3d 1308, 1313 (Fed. Cir. 2001). Therefore, as stated in the case law above, the aesthetic choice in the ‘420 patent of the central circular design element is not functional, but instead serves a primarily ornamental purpose. Moreover, even assuming Protestant is correct that this aspect of the design is purely functional, it is not clear why the analysis would focus on the exact locations of the circles and ridges as the ornamental feature of the ‘420 patent. Instead, the appropriate thing to do would be to remove the central circular design aspect completely from consideration in the infringement determination because functional aspects are not protected under design patent law and therefore should not form any part of the calculus. See Lee v. Dayton-Hudson Corp., 838 F.2d 1186, 1188 (Fed. Cir. 1988) (“It is the non-functional, design aspects…that are pertinent to determinations of infringement.”); see also Door-Master, 256 F.3d at 1312 (“[O]nly the non-functional aspects of an ornamental design as shown in the patent are proper bases for design patent protection.”). Accordingly, if Protestant’s argument is correct regarding the functional aspects of the central circular design element in the ‘420 patent, then these features would not warrant protection and should be completely removed from the infringement determination instead of, as Protestant would urge, limited to the exact locations as depicted in the Figures of the ‘420 patent. In such a case, the analysis would focus solely on a comparison of the accused plastic food containers with the other drawings in Figures 1, 2, 5, and 6. If that were the case, as indicated above, the design of the excluded round plastic food containers would still be found substantially the same as the design of the ‘420 patent. In light of the entire analysis above addressing all of the figures in the ‘420 patent and comparing them with the excluded round plastic food containers, it is determined that the accused design of the excluded round plastic food containers has appropriated the claimed design of the ‘420 patent as a whole and is infringing for that reason. Therefore, Protestant has not meet its burden, as a condition of entry, to establish non-infringement of the round containers because an ordinary observer conversant with the prior art would consider the patented design and the design of the excluded round containers to be substantially the same. Accordingly, the round plastic food containers were properly excluded from entry. HOLDING: The accused round plastic food containers were properly excluded from entry because they infringe the ‘420 patent and therefore fall within the scope of the 514 GEO issued by the ITC. However, all non-circular plastic food containers do not infringe any of the relevant patents and therefore should be released. Accordingly, you are instructed to grant the protest in part with regard to the rectangular plastic food containers and to deny the protest in part with regard to the round plastic food containers. In accordance with the Protest/Petition Processing Handbook (CIS HB, December 2007), you are to mail this decision, together with the Customs Form 19, to the Protestant no later than 60 days from the date of this letter. Any reliquidation of the entry in accordance with the decision must be accomplished prior to mailing of the decision. Sixty days from the date of the decision, Regulations and Rulings of the Office of International Trade will make the decision available to CBP personnel, and to the public on the CBP Home Page on the World Wide Web at www.cbp.gov, by means of the Freedom of Information Act, and other methods of public distribution. Sincerely, Charles D. Ressin Acting Director Border Security and Trade Compliance Division