U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-406; Certain Lens-Fitted Film Packages

U.S. Department of Homeland Security Washington, DC 20229 U.S. Customs and Border Protection U.S. Department of Homeland Security Washington, DC 20229 U.S. Customs and Border Protection HQ H054521 September 9, 2011 OT:RR:BSTC:IPR H054521 JLG CATEGORY: 19 U.S.C. § 1337; Unfair Competition Mr. Urs Stampfli Concord Keystone Trading, LLC 4000 Hollywood Blvd., Ste 555-S Hollywood, FL 33021 RE: U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-406; Certain Lens-Fitted Film Packages Dear Mr. Stampfli: This is in reply to your letter dated March 2, 2009, in which you requested a ruling, pursuant to 19 C.F.R. § 177, as to whether certain single use cameras, models K98FSB, N21F, and K21F would be excluded from entry into the United States pursuant to the general exclusion order issued by the U.S. International Trade Commission in Investigation No. 337-TA-406 (“406 GEO”). Although the record is unclear, it appears that the sample cameras under consideration are manufactured by Xiamen Xiangjiang Plasticity Co. Ltd. (“Xiamen Xiangjiang”), produced for VastFame Camera Ltd. (“VastFame”), and distributed by Concord Keystone Trading, LLC. A sample of each model was included with the ruling request. We regret the delay in responding. FACTS: ITC Investigation No. 337-TA-406 was instituted on March 25, 1998, based on a complaint filed by Fuji Photo Film Co., Ltd. (Fuji) of Tokyo, Japan. Fuji’s complaint alleged unfair acts in violation of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C § 1337, by twenty-seven (27) respondents in the importation and sale of certain lens-fitted film packages (LFFPs) accused of infringing one or more claims of fifteen (15) patents held by Fuji. On February 24, 1999, the presiding administrative law judge (ALJ) issued his final initial determination, finding a violation of section 337 by reason of infringement of certain Fuji patents. See Certain Lens-Fitted Film Packages, Inv. No. 337-TA-406, USITC Pub. 3219, Final Initial and Recommended Determinations (February 24, 1999) (“ID”). On review, the Commission affirmed in part the ALJ’s initial determination and found a violation of 19 U.S.C. § 1337. The Commission determined the appropriate form of relief was a general exclusion order which prohibited entry for consumption into the United States of unlicensed LFFPs that infringe claims 1, 5, 6, 9, and 11 of U.S. Letters Patent No. 4,833,495; claims 14 and 15 of U.S. Letters Patent No. 4,855,774; claims 1, 7, 8, and 15 of U.S. Letters Patent No. 4,884,087; claims 1, 19, and 22 of U.S. Letters Patent No. 4,954,857; claims 1 and 9 of U.S. Letters Patent No. 4,972,649; claims 14 and 16 of U.S. Letters Patent No. 5,063,400; claims 1 and 11 of U.S. Letters Patent No. 5,235,364; claim 1 of U.S. Letters Patent No. 5,361,111; claims 1, 15, 23, and 25 of U.S. Letters Patent No. 5,381,200; claims 1 and 7 of U.S. Letters Patent No. 5,408,288; claims 1 and 28 of U.S. Letters Patent No. 5,436,685; claims 1 and 13 of U.S. Letters Patent No. Re. 34,168; the claim of U.S. Letters Patent No. Des. 345,750; the claim of U.S. Letters Patent No. Des. 356,101; and the claim of U.S. Letters Patent No. Des. 372,722. Certain Lens-Fitted Film Packages, Inv. No. 337-TA-406, USITC Pub. 3219, General Exclusion Order at 1-2 (June 2, 1999). On June 27, 2001, after issuance of the general exclusion order, Fuji filed a complaint with the ITC requesting enforcement and advisory proceedings to determine whether certain entities had violated the 406 GEO. See Certain Lens-Fitted Film Packages, Inv. No. 337-TA-406, Complaint for Enforcement Proceedings under Rule 210.75, a Petition for Modification under Rule 210.76 and/or Request for Advisory Opinion under Rule 210.79. Specifically, the validity of claim 15 of the ‘087 patent was addressed during these proceedings, and on remand, the ITC concluded that the preamble to claim 15 was a limitation. A number of the patents have expired since this time, thus the remaining patents at issue include: Claim 1 of U.S. Patent No. 5,361,111; Claims 1, 15, 23, and 25 of U.S. Patent No. 5,381,200; Claims 1 and 7 of U.S. Patent No. 5,408,288; and Claims 1 and 28 of U.S. Patent No. 5,436,685 As indicated above, three 35mm single-use cameras are at issue in this request: models K98FSB, N21F, and K21F. The sample identified as model K98FSB is a 35-mm preloaded camera with flash. The plastic camera body, which can be pried open with the use of a tool or sharp knife, consists of a main body, to which is assembled all of the components associated with the operation of the camera, and a front and rear cover attached to the main body by hinges. The main body is equipped with a taking lens, front and rear viewfinder, film advance mechanism incorporating a thumb-wheel and counting display, a shutter mechanism, and a cassette and film roll chamber which house the film cassette and photographic roll, respectively. Mounted to the main body is a rectangular shaped circuit board with a flash unit on the front right-hand side and a main capacitor vertically attached at the lower left-hand side. An AA-type battery is located underneath the main body portion between the cassette and film roll chamber, and is covered with a strip of plastic that is unattached to the camera main body and front and rear covers. As such, upon detaching the plastic strip (i.e. battery cover) with a knife, the battery can be removed without disassembling the camera. The front and rear cover both have openings that correspond to certain camera components on the main body. The taking lens, front view finder, and flash components fit into or through the inner surface of the front cover, and the rear viewfinder and thumb-wheel fit into or through the rear cover. The camera is preloaded with “135 type” photographic unexposed film that resides in a film-receiving canister, similar to those in which photographic film is normally sold at retail. The film is drawn out from the film cassette and wound in a roll around a spool contained in a film supply chamber opposite the film-receiving canister. When a photograph is taken, film winds into the canister until all the frames have been exposed. Additionally, the 35-mm sample camera has a cardboard jacket which contains, among other things, branding and instructions regarding use of the camera, and language which cautions against disassembling the camera in order to avoid shock, and states that the entire camera should be taken to a photo dealer for processing. It appears, however, that upon disassembling the camera the film canister may be removed and sent to the photo finisher. The sample identified as model N21F is similar to the model described above. It is a 35-mm indoor/outdoor preloaded flash camera made of plastic. The camera, which can be pried open with the use of a tool or sharp knife, consists of three main components: a main body, to which is assembled all of the conventional parts associated with the operation of a camera, a front cover, and a rear cover attached to the main body by hinges. Specifically, the main body has a taking lens, front and rear viewfinder, film advance mechanism incorporating a thumb-wheel and counting display, a shutter mechanism, and a cassette and film roll chamber which house the film cassette and photographic roll, respectively. Mounted to the main body is a rectangular shaped circuit board with a flash unit on the front right-hand side and a main capacitor vertically attached at the lower left-hand side. An AA-type battery is located underneath the main body portion between the cassette and film roll chamber, and is covered with a strip of plastic that is unattached to the front and rear covers or the main body of the camera. As such, the battery cover can be easily removed with the use of a knife, enabling removal of the battery without disassembling the camera. The taking lens, front view finder, and flash components fit into or through the inner surface of the front cover, and the rear viewfinder and thumb-wheel fit into or through the surface of the rear cover. The camera is preloaded with unexposed film that resides in a film-receiving canister, similar to those in which photographic film is normally sold at retail. The film is drawn out from the film cassette and wound in a roll around a spool contained in a film supply chamber opposite the film-receiving canister. When a photograph is taken, film winds into the canister until all the frames have been exposed. Additionally, the 35-mm sample camera has a cardboard jacket which contains, among other things, branding and instructions regarding use of the camera, and language which cautions against opening the “camera carton at any time,” and states that the entire camera should be taken to a photo dealer for processing. As with the previous model, however, it appears that upon disassembling the camera the film canister may be removed and sent for processing. The sample camera described above and identified as model N21F is identical in all respects to the third model at issue, K21F, except the design of the latter’s front cover (i.e. the plastic outer shell). Photographs of the sample cameras are displayed below.














ISSUE: The issue presented is whether the single-use cameras manufactured and designed by Xiamen Xiangjiang, models K98FSB, N21F, and K21F infringe any of the relevant patents at issue and therefore fall within the scope of the ITC’s general exclusion order in Investigation No. 337-TA-406, such that they would be excluded from entry for consumption into the United States. 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 ITC 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 ITC 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 (Fed Cir. 2008). A general exclusion order may be issued only 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).”). As stated above, the 406 GEO issued by the ITC provides, in part, that: Lens-fitted film packages (“LFFPs”), also known as one-time use cameras, single-use cameras and disposable cameras, covered by one or more of claims 1, 5, 6, 9, and 11 of U.S. Letters Patent No. 4,833,495; claims 14 and 15 of U.S. Letters Patent No. 4,855,774; claims 1, 7, 8, and 15 of U.S. Letters Patent No. 4,884,087; claims 1, 19, and 22 of U.S. Letters Patent No. 4,954,857; claims 1 and 9 of U.S. Letters Patent No. 4,972,649; claims 14 and 16 of U.S. Letters Patent No. 5,063,400; claims 1 and 11 of U.S. Letters Patent No. 5,235,364; claim 1 of U.S. Letters Patent No. 5,361,111; claims 1, 15, 23, and 25 of U.S. Letters Patent No. 5,381,200; claims 1 and 7 of U.S. Letters Patent No. 5,408,288; claims 1 and 28 of U.S. Letters Patent No. 5,436,685; claims 1 and 13 of U.S. Letters Patent No. Re. 34,168; the claim of U.S. Letters Patent No. Des. 345,750; the claim of U.S. Letters Patent No. Des. 356,101; and the claim of U.S. Letters Patent No. Des. 372,722 are excluded from entry for consumption, into the United States for the remaining term of the patents, except under license of the patent owner or as provided by law. See Certain Lens-Fitted Film Packages, Inv. No. 337-TA-406, USITC Pub. 3219, General Exclusion Order at 1-2 (June 2, 1999). The ITC’s 406 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 406 GEO directs CBP to exclude LFFPs, regardless of the manufacturers or importers, which 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), whether or not Xiamen Xiangjiang or any other parties to the import transaction were named as respondents to the original investigation is immaterial to the question of whether the sample cameras fall within the scope of the 406 GEO. The only pertinent question is whether the cameras at issue 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 Federal Circuit 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, “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 importer to establish that the single-use cameras 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). 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 Federal Circuit applies two articulations of the test for equivalence – the insubstantial differences test and the function-way-result test. 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…”) (quoting Warner-Jenkinson, 520 U.S. at 40). 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). The doctrine of prosecution history estoppel, however, 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, 733-34 (2002) (“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. . . . [Thus,] 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 406 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) (“It is well-settled that, in interpreting an asserted claim, the court should look first to the intrinsic evidence of the record . . . first, we look to the words of the claims themselves . . . to define the scope of the patented invention.”). Furthermore, the Federal Circuit 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 tha