Protest 2720-09-100402; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-565; Certain Ink Cartridges and Components Thereof

HQ H025822 November 23, 2009 OT:RR:BSTC:IPR H025822 DAX CATEGORY: 19 U.S.C. § 1337; Unfair Competition Port Director U.S. Customs and Border Protection 11099 South La Cienega Blvd. Los Angeles, CA 90045 RE: Protest 2720-09-100402; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-565; Certain Ink Cartridges and Components Thereof Dear Port Director: This is in response to the application for further review of the above-referenced protest filed by Ninestar Technology Company, Ltd. (“Protestant”) with respect to the exclusion from entry for consumption of certain articles that were determined by the port to fall within the scope of the general exclusion order issued by the U.S. International Trade Commission (“ITC”) in Investigation No. 337-TA-565 (“565 GEO”). FACTS: On July 7, 2009, U.S. Customs and Border Protection (“CBP”) issued a notice to Protestant indicating that a shipment of Ninestar R-Series products was excluded from entry for consumption because the articles in question were covered by the 565 GEO. See Protest at 1-4 (dated August 7, 2009); see also CBP Exclusion Notice (listing the date of denial of entry as May 27, 2009). Pursuant to 19 U.S.C. § 1514(c), as implemented by 19 C.F.R § 174, Protestant timely filed a valid protest challenging the exclusion from entry and determination that the R-Series products fall within the scope of the 565 GEO. Specifically, the Protestant denies that the R-Series products infringe any of the patents at issue during the investigation at, and found to be infringed by, the ITC. ITC Inv. No. 337-TA-565 was instituted based on a complaint filed by Epson Portland, Inc. of Oregon; Epson America, Inc. of California; and Seiko Epson Corp. of Japan (“Epson”), which named a number of parties, including Protestant and its related companies, as respondents to the investigation. See Protest, Exhibit 1 at 3 (dated April 4, 2008); see also Administrative Law Judge’s (“ALJ”) Final Initial and Recommended Determination (“ID”) at 1-7 (dated March 30, 2007). The ALJ found a violation of section 337 of the Tariff Act of 1930, as amended, which was affirmed in part by the Commission on review. See Certain Ink Cartridges and Components Thereof, Inv. No. 337-TA-565, Commission Opinion (“ITC CO”) at 1 (dated November 7, 2007). The Commission decided to provide relief in the form of a general exclusion order that bars the entry for consumption into the United States of ink cartridges that infringe claim 7 of U.S. Patent No. 5,615,957; claims 18, 81, 93, 149, and 164 of U.S. Patent No. 5,622,439; claims 83 and 84 of U.S. Patent No. 5,158,377; claims 19 and 20 of U.S. Patent No. 5,221,148; claim 1 of U.S. Patent No. 5,488,401; claims 1, 2, 3, and 9 of U.S. Patent No. 6,502,917; claims 1, 31, and 34 of U.S. Patent No. 6,550,902; claims 1, 10, and 14 of U.S. Patent No. 6,955,422; claim 1 of U.S. Patent No. 7,008,053; or claim 21 of U.S. Patent No. 7,001,397. Id. at 1-2; 565 General Exclusion Order (dated October 19, 2007). Subsequent to the issuance of the 565 GEO, CBP excluded from entry ink cartridges of Protestant on a number of occasions, for which the ITC, on May 14, 2008, issued a seizure and forfeiture order against Protestant pursuant to 19 U.S.C. § 1337(i). Protestant describes the R-Series product as a two-piece device consisting of a “cartridge” and an “adapter.” See Protest, Exhibit 1 at 6-8. There are two different configurations of the R-Series “cartridge” and “adapter.” Id. at 6, FN 3. Both configurations of the R-Series product, with the corresponding “cartridge” and “adapter,” are depicted below.



 Protestant further indicates that: R-Series cartridges are designed to fit within printers in which an R-Series adapter has been installed. As shown in the accompanying video (Exhibit 9), the R-Series adapted is affixed within the printer before the cartridge is inserted. When the R-Series cartridge runs out of ink and requires replacement, the R-Series adapter remains fixed within the printer and only the cartridge is replaced. The R-Series adapter and R-Series cartridge are supplied as separate products and do not engage each other to form a unitary assembly. Id. at 9. Images of a sample R-Series “cartridge” and “adapter” that were part of the same shipment excluded from entry are included below, along with their retail product packaging.




 For clarification purposes, the R-Series “cartridge” will be referred to from this point as the “ink container” while the R-Series “adapter” will continue to be referred to as the “adapter.” ISSUE: The issue presented is whether the R-Series “ink container,” when used in combination and imported with the R-series “adapter,” infringes any of the patents at issue and falls within the scope of the 565 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), (i). 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 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). 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 also 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).”). Additionally, a seizure and forfeiture order issued under 19 U.S.C. § 1337(i) directs CBP to seize and forfeit articles imported in violation of an exclusion order when the importer previously had articles denied entry and received notice that seizure and forfeiture would result from any future attempt to import infringing articles into the United States. As stated above, the 565 GEO issued by the ITC provides, in relevant part, that: Ink cartridges covered by one or more of claim 7 of the ‘957 patent; claims 18, 81, 93, 149, and 164 of the ‘439 patent; claims 83 and 84 of the ‘377 patent; claims 19 and 20 of the ‘148 patent; claim 1 of the ‘401 patent; claims 1, 2, 3 and 9 of the ‘917 patent; claims 1, 31 and 34 of the ‘902 patent; claims 1, 10 and 14 of the ‘422 patent; claim 1 of the ‘053 patent; or claim 21 of the ‘397 patent are excluded from entry for consumption, entry for consumption from a foreign-trade zone, or withdrawal from a 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 565 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 565 GEO directs CBP to exclude ink cartridges, regardless of their manufacturer or importer, that infringe the patents included above. While Protestant was named as a respondent to the investigation at the ITC, the R-Series product was not analyzed by the ALJ or the Commission on review. However, as indicated above (and as exhibited by the vast majority of the orders issued by the ITC), the 565 GEO is not product specific and applies to any article that infringes the relevant patents and otherwise falls within the order’s scope. See Certain Hardware Logic Emulation Systems and Components Thereof, Inv. No. 337-TA-383, Commission Opinion at 16 (Publication 3089, dated March 1998) (“[T]he Commission’s long-standing practice is to direct its remedial orders to all products covered by the patent claims as to which a violation has been found, rather than limiting its orders to only those specific models selected for the infringement analysis.”). 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 ink cartridges at issue do not infringe any of the relevant patents. Patent infringement determinations 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 patents at issue in the 565 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.”). Indeed, the Supreme Court has established the appropriateness of relying on the patent claims to define the scope of the invention and has declared that the claims are “of primary importance, in the effort to ascertain precisely what it is that is patented.” Merrill v. Yeomans, 94 U.S. 568, 570 (1876). Since the patentee is required to “define precisely what his invention is,” the Supreme Court explained elsewhere, it is “unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms.” White v. Dunbar, 119 U.S. 47, 52 (1886); see also Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405, 419 (1908) (“the claims measure the invention”); McCarty v. Lehigh Valley R.R. Co., 160 U.S. 110, 116 (1895) (“[I]f we once begin to include elements not mentioned in the claim, in order to limit such claim…, we should never know where to stop.”). After establishing that the claims define the scope of the invention, the question becomes how to define the claim terms themselves. The CAFC has frequently stated that the words of a claim “are generally given their ordinary and customary meaning.” Vitronics, 90 F.3d at 1582. Additional cases have clarified that the ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application. See Phillips, 415 F.3d at 1312-1313; see also Innova, 381 F.3d at 1116 (“A court construing a patent claim seeks to accord a claim the meaning it would have to a person of ordinary skill in the art at the time of the invention.”); Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1358 (Fed. Cir. 2004) (“customary meaning” refers to the “customary meaning in [the] art field”); Ferguson Beauregard/Logic Controls v. Mega Sys., LLC, 350 F.3d 1327, 1338 (Fed. Cir. 2003) (claim terms “are examined through the viewing glass of a person skilled in the art”). Accordingly, 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. Moreover, the CAFC has instructed that certain intrinsic and, if necessary, extrinsic evidence can serve as important interpretive tools for claim construction purposes. Such intrinsic evidence includes “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Innova, 381 F.3d 1116; see also Gemstar-TV Guide Int’l, Inc. v. Int’l Trade Comm’n, 383 F.3d 1352, 1364 (Fed. Cir. 2004). For example, the claims themselves provide substantial guidance as to the meaning of particular claim terms. See Vitronics, 90 F.3d at 1582; see also ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003) (“the context of the surrounding words of the claim also must be considered in determining the ordinary and customary meaning of those terms”). Therefore, the CAFC has held that the context in which a term is used in the asserted claim can be highly instructive. See 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. This court’s cases provide numerous similar examples in which the use of a term within the claim provides a firm basis for construing the term.”); see also Mars, Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1374 (Fed. Cir. 2004) (claim term “ingredients” construed in light of the use of the term “mixture” in the same claim phrase); Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1356 (Fed. Cir. 1999) (claim term “discharge rate” construed in light of the use of the same term in another limitation of the same claim). Additionally, 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.”). However, despite the specification’s significance, caution must be taken to avoid impermissibly reading a limitation from the specification into the claims of the patent. See Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186-1187 (Fed. Cir. 1998) (“We recognize that there is sometimes a fine line between reading a claim in light of the specification, and reading a limitation into the claim from the specification.”); see also Specialty Composites v. Cabot Corp., 845 F.2d 981, 987 (Fed. Cir. 1988) (“Where a specification does not require a limitation, that limitation should not be read from the specification into the claims.”) (emphasis in original). While continuing to be mindful of this fine line between interpretation and importation, the CAFC explained in Phillips that: [T]he line between construing terms and importing limitations can be discerned with reasonable certainty and predictability if the court’s focus remains on understanding how a person of ordinary skill in the art would understand the claim terms. For instance, although the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.…In particular, we have expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment….That is not just because section 112 of the Patent Act requires that the claims themselves set forth the limits of the patent grant, but also because persons of ordinary skill in the art