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

HQ H048312 May 27, 2010 OT:RR:BSTC:IPR H048312 DAX CATEGORY: 19 U.S.C. § 1337; Unfair Competition James P. Muraff Neal, Gerber & Eisenberg, LLP Two North LaSalle Street Chicago, Illinois 60602-3801 RE: U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-514; Certain Plastic Food Containers Dear Mr. Muraff: This is in response to your letter, dated December 22, 2008, on behalf of your client, Yong Sheng Trading Company (“Yong Sheng”), seeking a determination whether Yong Sheng’s redesigned plastic food containers fall within the scope of the above-referenced general exclusion order issued by the U.S. International Trade Commission (“ITC”). We regret the delay in responding. FACTS: Yong Sheng is an international trading company based in China that exports articles to the United States. See Ruling Request at 1. As indicated above, Yong Sheng is seeking a determination whether its redesigned plastic food containers are covered by any of the relevant patents at issue during the investigation at, and found to be infringed by, the ITC. 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 Administrative Law Judge’s (“ALJ”) Initial Determination (“ID”) at 3-4 (February 10, 2005). 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”). Id. Yong Sheng was not named as a respondent to 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, Yong Sheng was not named as a respondent to the investigation, nor have any of its containers been examined at the ITC. The plastic food containers included with Yong Sheng’s ruling request are depicted in the images below. Notably, the containers are rectangular in shape and exhibit a two-piece embodiment with a lid and a base.


ISSUE: The issue presented is whether Yong Sheng’s redesigned 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 at issue here 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 Yong Sheng was not named as a respondent before the ITC is immaterial to the question of whether the redesigned 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 Yong Sheng), “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 the party seeking admissibility to establish that the articles 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.”). 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 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 when the base sealing edge or base rim come into contact with the lid sealing edge or lid rim.

 Yong Sheng argues that its redesigned plastic food containers do not meet certain limitations above. Specifically, Yong Sheng states that the ‘138 patent requires a locking lip protruding from the lid sealing edge, as well as an exterior seal formed upon the mating of the base and lid sealing edges, and that both of these features is missing in its redesigned plastic food containers. See Ruling Request at 2-4. Yong Sheng claims that neither of these claim limitation is not met by the redesigned plastic food containers because there is no locking lip and because the lid sealing edge does not extend over the outer base sealing edge to form the exterior seal. As the digital images below reveal, there is no locking lip and the lid sealing edge, in fact, does not extend over the outer base sealing edge. Therefore, the redesigned plastic food containers are not capable of forming the required exterior seal. As such, this claim limitation is not met by the redesigned plastic food containers and they are therefore found not to infringe claim 1 of the ‘138 patent, either literally or under the doctrine of equivalents.

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 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, Yong Sheng argues that the redesigned plastic food containers do not infringe the ‘404 patent because claim 1 requires a locking lip and for the lid sealing edge to form an exterior seal with the base sealing edge. See Ruling Request at 2-4. 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 exterior seal that is formed by the mating of the container’s lid and base sealing edge base. As shown above, when the redesigned plastic food container’s lid is mated with the base, there is nothing that forms the required exterior seal. For this reason, as above, the redesigned plastic food containers do not infringe claim 1 of the ‘404 patent either literally or under the doctrine of equivalents. 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 also 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, the party seeking admissibility 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. 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 a specifically designated 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, the ITC did not identify who the appropriate ordinary observer should be in this specific context. To the extent that determining the identification of the ordinary observer (other than one familiar with the prior art) survived Egyptian Goddess, this determination adopts the previous finding from HQ H004451 (September 25, 2009) that the ordinary observer is not an end-using 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. Regardless, as stressed in HQ H004451, this hypothetical individual does not rise to the level of an expert in plastic food containers that would be expressly excluded from the category of persons eligible to be ordinary observers. See Gorham, 81 U.S. at 527-28 (“[T]he only remaining question upon this part of the case is, whether it is essential that the appearance should be the same to the eye of an expert. The court below was of opinion that the test of a patent for a design is not the eye of an ordinary observer. The learned judge thought there could be no infringement unless there was ‘substantial identity’ ‘in view of the observation of a person versed in designs in the particular trade in question….With this we cannot concur. Such a test would destroy all the protection which the act of Congress intended to give. There never could be piracy of a patented design, for human ingenuity has never yet produced a design, in all its details, exactly like another, so like that an expert could not distinguish them….Experts, therefore, are not the persons to be deceived.”). The next step is to consider the claim construction for the ‘420 patent. The ITC did not provide a claim construction in words 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. In fact, the CAFC has recently re-emphasized, while reviewing a case in the exclusion order context, that “[d]epictions of the claimed design in words can easily distract from the proper infringement analysis of the ornamental patterns and drawings” and further admonished the “misplaced reliance on a detailed verbal description of the claimed design [which] risks undue emphasis on particular features of the design rather than examination of the design as a whole.” Crocs Inc. v. Int’l Trade Comm’n, 2010 U.S. App. LEXIS 3793, 13 (Fed. Cir. 2010) (emphasis added). As indicated by the CAFC, 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. See Egyptian Goddess, 543 F.3d at 679 (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”); see also Crocs Inc. v. Int’l Trade Comm’n, 2010 U.S. App. LEXIS 3793, 14. 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, as well as the construction provided in HQ H004451, 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 comparative images below, it is the determination here that the patented design and the redesigned plastic food containers are plainly dissimilar, such that the redesign plastic food containers are not substantially the same as the patented design. First and foremost, the patented design consists of a circular depiction, while the redesigned container of Yong Sheng is rectangular. Moreover, the flying saucer-like appearance of the patented design is wholly absent from the Yong Sheng container. For these reasons, it is determined that under the test articulated by the CAFC in Egyptian Goddess, there is no infringement of the ‘420 design patent.



HOLDING: Yong Sheng’s redesigned plastic food containers depicted above do not fall within the scope of the 514 GEO because they do not infringe any of the patents listed in the exclusion order issued by the ITC. Accordingly, the redesigned plastic food containers are admissible into the United States and may make entry for consumption, entry for consumption from a foreign-trade zone, and withdrawal from a warehouse for consumption. This decision is limited to the specific facts set forth herein. If the plastic food containers differ from the embodiment described above, or if future importations vary from the facts stipulated to herein, this decision shall not be binding on CBP as provided for in 19 C.F.R. § 177.2(b)(1), (2) and (4), and § 177.9(b)(1) and (2). Sincerely, Charles R. Steuart Branch Chief Intellectual Property Rights Branch