Protest 2704-09-102186; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-565; Certain Ink Cartridges and Components Thereof

HQ H034793 September 25, 2009 OT:RR:BSTC:IPR H034793 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 2704-09-102186; 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 [ ] (“Protestant”) with respect to the exclusion from entry of certain ink cartridges compatible with Epson-brand printers that were manufactured by [XXXXXXXX] and 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 May 14, 2008, U.S. Customs and Border Protection (“CBP”) issued a notice to Protestant indicating that a shipment of [ ] ink cartridges was deemed excluded from entry for consumption because the ink cartridges in question were covered by the general exclusion order issued by the ITC in Inv. No. 337-TA-565 (“565 GEO”). See Protest at 1; see also CBP Exclusion Notice, Date of Denial of Entry: April 26, 2008. Pursuant to 19 U.S.C. § 1514(c), as implemented by 19 C.F.R § 174, on July 16, 2008, Protestant timely filed a valid protest challenging the exclusion from entry and determination that the [ ] ink cartridges fell within the scope of the 565 GEO. Specifically, the Protestant denies that the [ ] ink cartridges 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-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 (“Complainant”), which named a number of parties as Respondents to the investigation. See Protest at 2; see also Administrative Law Judge’s (“ALJ”) Final Initial and Recommended Determination at 1-7 (June 1, 2007). Neither Protestant nor [XXXXXXXX] or any of its affiliates were named as Respondents in the investigation. The ALJ found a violation of section 337 of the Tariff Act of 1930, as amended, which was affirmed in part by the full Commission on review. See Commission Opinion at 1 (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 (October 19, 2007). As stated above, neither Protestant nor [XXXXXXXX] or any of its affiliates were named as Respondents to the investigation. Therefore, the [ ] ink cartridges were neither at issue during the investigation nor analyzed by the ITC. Protestant describes the [ ] ink cartridge as “a two-part design, consisting of a permanent, reusable mounting adapter and a separate replaceable ink container.” See Protest at 4. The reusable adapter of an [ ] ink cartridge has a permanent integrated circuit chip mounted on the adapter with a row of electrical contacts. Id. at 5. The chip provides information through an electrical contact to the printer based on certain assumptions programmed into the chip. Id. at 6. The [ ] ink cartridges are depicted in the images below. Notably, the [ ] ink cartridges excluded from entry by the port indicate on their product packaging (and on the individual ink containers) that they are suitable for use with the following models of the Epson Stylus printer: CX5000, CX6000, CX7000F, CX7400, CX8400 and the CX9400. Furthermore, each product package includes ten replacement ink containers, each of which is accompanied by its own mounting adapter that is necessary for the container to function as an ink cartridge. [ ] ISSUE: The issue presented is whether the [ ] ink cartridge infringes any of the relevant patents at issue and therefore 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). 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). 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 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 GEO directs CBP to exclude ink cartridges, 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 and/or [XXXXXXXXXX] were not named as Respondents is immaterial to the question of whether the accused ink cartridges fall within the scope of the 565 GEO. The only pertinent question is whether the [ ] ink cartridges 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.”). 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.”). Furthermore, the Court of Appeal for the Federal Circuit (“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) (emphasis added); 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.”). The first step in making a patent infringement determination, that of interpreting the claims, has been done for certain claim limitations by the ALJ and by the Commission on review. Therefore, the second step in the infringement analysis, involving a question of fact, requires CBP to read onto the [ ] ink cartridges the claims as properly construed by the ITC. See Ninestar Technologies v. Int’l Trade Comm’n, 309 Fed. Appx. 388; 2009 U.S. App. LEXIS 492 (Fed. Cir. 2009) (Per Curiam opinion affirming the ITC’s determination). Significantly, the 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. Lever and Chip Patent The lever and chip patent refers to United States Patent No. 6,955,422 (the ‘422 patent), which issued on October 18, 2005. See ALJ Final Initial and Recommended Determination (“ALJ ID”) at 130. The abstract of the ‘422 patent reads: An ink cartridge having a container for storing ink therein and having an ink supply port formed at a leading end side in an insertion direction of the container, a memory device disposed on a first of two opposite surfaces parallel to the insertion direction of the container, the memory device having an electrode for electrical connection to the recording device; a retaining member disposed on the first surface and located at a trailing end side relative to the memory device in the insertion direction, the retaining member serving to selectively engage with the recording device; and another retaining member disposed on the second surface and which also serves to selectively engage with the recording device. The ‘422 patent has 62 claims. Only claims 1, 10, and 14, all of which are independent claims, were asserted and found to be infringed at the ITC. Infringed claim 14 contains four limitations and reads as follows: 14. An ink cartridge comprising: a container body having a first wall; at least one electrode connected to main circuit components of a memory device, the at least one electrode being fixed relative to the first wall; and a movable engagement portion, which is engageable with the engagement portion of a carriage, the cartridge's engagement portion being movable relative to the first wall and being higher in a Y-axis direction than the at least one electrode, wherein the at least one electrode contacts the at least one electrode of the carriage when the engagement portion of the ink cartridge is engaged with the engagement portion of the carriage. The ALJ construed each of the claim 14 elements underlined above that were put in issue by the parties (i.e., the ITC Complainant, Respondents, and/or the Office of Unfair Import Investigations Staff Attorney). As for the first claim limitation, the ALJ found, based on the language of the claims and the specification, that the claimed “container” stores the ink of the ink cartridge. See ALJ ID at 134. Additionally, as seen above, in the case of claim 14, the container body that stores the ink is also required to have a first wall. As for the second claim limitation, the ALJ provided a construction of the claim element requiring “at least one electrode being fixed relative to” the first wall after analyzing the arguments of the parties. The Respondents at the ITC argued that the claimed phrase “requires that the electrodes [be] mounted on one of the surfaces of the container parallel to the insertion direction.” Id. at 135 (emphasis added). Complainants countered that the actual language of the claims requires only that the electrode be fixed relative to the first wall of the container. Id. The issue was whether the claim required the “at least one electrode” to be affixed directly to the first wall of the container in order to fall within the scope of claim 14. Based on a reading of the specification and the claims, the ALJ found that the plain language of the claim to one skilled in the art did not require the “at least one electrode” to be fixed directly to a surface of the container. Id. at 136. Instead, the ALJ found that the claim language only requires that the electrode be fixed relative to a surface of the container. Based on the above interpretation, the ALJ found that both representative cartridge 7 (“RC-