Ruling Request; 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 HQ H068958 July 13, 2010 OT:RR:BSTC:IPR H068958 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: Ruling Request; 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 letters dated July 14, 2009, October 28, 2009, and December 2, 2009, on behalf of VastFame Camera Ltd. (“VastFame”) and Xiamen Xiangjiang Plasticity Co. Ltd. (“Xiamen Xiangjiang”), in which you requested a ruling, pursuant to 19 CFR § 177, as to whether certain VastFame single use cameras, models UW23 and UW23V, fall within the scope of the general exclusion order issued by the U.S. International Trade Commission (ITC) in Investigation No. 337-TA-406 (“406 GEO”). Sample cameras were 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, by twenty-seven (27) respondents in the importation and sale of certain lens-fitted film packages (LFFPs) that infringed one or more claims of 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, Fuji filed a “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,” naming several entities as “enforcement respondents,” including the designer of the LFFPs at issue, VastFame, which was not a respondent in the original investigation. Pursuant to the Commission’s order, on May 2, 2002, the ALJ issued an Enforcement Initial Determination establishing whether the named enforcement respondents were in violation of the Commission’s general exclusion order and cease and desist orders. See Certain Lens-Fitted Film Packages, Inv. No. 337-TA-406, Consolidated Enforcement and Advisory Opinion Proceedings, Enforcement Initial and Recommended Determination (May 2, 2002) (“EID”). The Commission adopted the determinations and recommendations of the ALJ on May 15, 2003. During the enforcement proceedings, the ALJ did not consider VastFame’s arguments regarding the invalidity of U.S. Patent No. 4,884,087 (‘087). Consequently, VastFame appealed to the U.S. Court of Appeals for the Federal Circuit (Federal Circuit), which remanded to the Commission VastFame’s invalidity defense. See VastFame Camera, Ltd. v. Int’l Trade Comm’n, 386 F.3d 1108 (Fed. Cir. 2004). The Commission assigned the remanded proceedings to the ALJ who conducted an evidentiary hearing on the invalidity issues. Thereafter, on September 9, 2005, the ALJ issued his Final Initial Determination under Commission rule 210.42 finding that claim 15 of the ‘087 patent was not an invalid claim. See Certain Lens-Fitted Film Packages, Inv. No. 337-TA-406, Consolidated Enforcement and Advisory Opinion Proceedings (Remand), Final Initial Determination (September 9, 2005). Subsequently, on September 23, 2005, VastFame filed a petition for review, arguing that the ALJ improperly concluded that claim 15 of the ’087 patent was valid. The Commission’s investigative attorney and Fuji filed responses asserting that there was no clear error of fact, error of law, or abuse of discretion in the ALJ’s ID that would warrant review by the Commission. The Commission determined to review in part the ALJ’s final ID in these proceedings and affirmed the ALJ’s independent finding that the preamble to claim 15 was a limitation, and that the claim was valid. A number of the patents have expired since this time, thus the remaining patents at issue include: Claims 1 and 11 of U.S. Patent No. 5,235,364; 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; Claims 1 and 28 of U.S. Patent No. 5,436,685; and The claim of U.S. Patent Des. 372,722 In the instant matter, there are two models of single use waterproof cameras at issue. Sample cameras identified as models UW23 and UW23V, which are manufactured and designed by Xiamen Xiangjiang Plasticity Co. Ltd. of China and VastFame Camera Ltd. of Hong Kong, were submitted for our analysis. The sample identified as model UW23 is a 35-mm camera encased in a transparent waterproof container which allows operation of the shutter and film advance mechanisms from outside the waterproof case. The body of the camera is constructed of plastic and consists of a front cover attached to a main body by a hinge, and a rear cover fitted to the main body by a hinge on one side of the camera as well as the bottom. The camera is equipped with a taking lens, front opening 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. However, the camera does not incorporate a flash mechanism. The majority of components normally associated with the operation of a camera, except for a pushbutton and plunger assembly used to activate the shutter-operating mechanism, are assembled to the main body. The only projections from the main body that fit into or through the inner surface of the front cover are the taking lens and front opening viewfinder. 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, which is drawn out from the 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. In addition, the 35-mm sample camera has a cardboard cover or jacket which contains, among other things, branding and instructions regarding use of the camera, and language which indicates that the entire camera should be taken to a lab for processing. It appears, however, that upon disassembling the camera the film canister may be removed and sent to the photo finisher for processing. The sample camera identified as Model UW23V is identical in all respects to model UW23, except it contains a flip-up viewfinder attached the back of the external waterproof container. Photographs of the sample Model UW23 and UW23Vcameras are displayed below.











ISSUE: The issue presented is whether the single-use cameras manufactured and designed by VastFame and Xiamen Xiangjiang, Models UW23 and UW23V, 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. 372,722are 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 VastFame and/or Xiamen Xiangjiang 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). 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, 733-34 (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 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 Federal Circuit 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.”). Despite the specification’s significance, however, 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 Federal Circuit 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 rarely would confine their definitions of terms to the exact representations depicted in the embodiments. Phillips, 415 F.3d at 1323 (internal citations omitted). DESIGN PATENT INFRINGEMENT Determining design patent infringement, as with utility patents, is a two-step process. It requires (1) construction of the patent claim to determine its meaning and scope, and (2) comparison of the construed claim to the accused product. See Door-Master Corp. v. Yorktowne, Inc., 256 F.3d 1308 (Fed. Cir. 2001) (citing OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1404 (Fed. Cir. 1997)). The starting point for an examination of design patent law, as made clear by the Federal Circuit, is the Supreme Court’s decision in Gorham Co. v. White, 81 U.S. 511 (1871). See Egyptian Goddess Inc. v. Swisa Inc., 543 F.3d 665, 670 (Fed. Cir. 2008) (en banc). In reviewing the infringement allegation before it, the Gorham Court stated that the test of identity of design “must be sameness of appearance, and mere difference of lines in the drawing or sketch . . . [and that] slight variances in configuration . . . will not destroy the substantial identity.” Gorham Co. v. White, 81 U.S. 51, 526-27 (1871). The Supreme Court established the test for infringement that would be used in future design patent cases holding that: “[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. Thus, the Court determined that the test for design patent infringement was “substantial identity” from the viewpoint of the ordinary observer rather than that of the expert. Since the Gorham decision, 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 Federal Circuit and its predecessors, as the proper standard for making determinations involving design patent infringement. See Egyptian Goddess, 543 F.3d at 670. However, in subsequent cases the Federal Circuit found that the “ordinary observer” test was not enough to establish design patent infringement, and required a design patent holder to show not only proof of similarity, but that the accused device "appropriate[d] the novelty of the claimed design in order to be deemed infringing,” i.e., the “point of novelty test.” Id. (noting that the seminal case in which the Federal Circuit precedents trace their origin is Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed Cir. 1984), which stated that “after comparing two items through the eyes of the ordinary observer, the court must, to find infringement, ‘attribute their similarity to the novelty which distinguishes the patented device from the prior art.’” Id.). Specifically, the “point of novelty” test “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.” See Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1383 (Fed. Cir. 2009). The “‘point of novelty’ test 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, the Federal Circuit repudiated the “point of novelty” test as the appropriate standard for design patent infringement determinations, and reaffirmed the approach initially articulated by the Gorham court 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 Federal Circuit provided an overview of design patent decisions that followed the standard articulated in Gorham and noted 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 (emphasis added). Egyptian Goddess held: [T]hat 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. Significantly, the Federal Circuit continued: In 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: [A]lthough 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. To be clear, in this context, VastFame and Xiamen Xiangjiang bear the burden of proof 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. Accordingly, the Federal Circuit has provided the framework outlined above for construing utility and design patent claims. With this framework established, the analysis turns to the matter at hand. As stated previously, the remaining patents at issue include: Claims 1 and 11 of U.S. Patent No. 5,235,364; 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; Claims 1 and 28 of U.S. Patent No. 5,436,685; and The claim of U.S. Patent Des. 372,722 Apart from design patent Des. 372,722, which claims an ornamental design of a single use camera and is represented by its application drawings, all of the claims of the utility patents at issue protect “a lens-fitted photographic film package” or “a lens-fitted photographic film unit.” The first step in making a utility patent infringement determination, that of interpreting the claims, has been completed for certain claim limitations by the ALJ and by the Commission on review. Thus, the second step in the infringement analysis, which involves a question of fact, requires CBP to compare the properly construed claims to the allegedly infringing device. As previously noted, for infringement to be found, the court must determine that every claim limitation is found in the accused device. See Playtex Prods., Inc. v. Procter & Gamble Co., 400 F.3d 901 (Fed. Cir. 2005) (citing Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc). Claim Construction and Infringement of Utility Patents The starting point in the analysis is the preamble to the claims. In general, a preamble to a claim is construed as a limitation if it gives life, meaning, and vitality to the claim. See Symantec Corp. v. Computer Associates International, Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008) (quoting Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)); Schram Glass Manufacturing Co. v. Homer Brooke Co., 249 F. 228, 232-33, cert denied, 247 U.S. 520 (1918). “[P]remable language limits a claim if it recites not merely a context in which the invention may be used, but the essence of the invention without which performance of the recited steps is nothing but an academic exercise.” Boehringer Ingelheim Vetmedica v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed Cir. 2003). A claim preamble is not a limitation, however, if it merely states the intended use or purpose of an invention. Symantec Corp., 522 F.3d at 1288. The Federal Circuit has long eschewed the use of an absolute rule in determining whether a preamble is a limitation. Bell Communications Research Inc. v. Vitalink Communications Corp., 55 F.3d 615, 621 (Fed. Cir. 1995). Rather, the effect preamble language should be given can be resolved only on review of the entirety of the patent as described in the specification and illuminated in the prosecution history to gain an understanding of what the inventors actually invented and intended to encompass by the claim. Corning Glass Works v. Sumitomo Electric U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989); Allen Engineering Corp. v. Bartell Industries, Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). The term “lens-fitted film package,” which is found in the preamble of every claim in issue, was not in dispute in the original investigation nor was it construed in the Commission Opinion or the ALJ's ID. In its Opinion, the Commission stated the following: The products at issue in this investigation are inexpensive, disposable, single use cameras, technically referred to as “lens-fitted film packages” or “LFFPs.” LFFPs are generally constructed of a shell made of a plastic material such as polystyrene. They are equipped with a button-activated shutter, a lens, a viewfinder, a film advance mechanism, and optional flash units and buttons. An outer cardboard cover, containing printed information such as branding and instructions, encases the shell. LFFPs are preloaded with film and a film cartridge. When pictures are taken, the exposed film winds into the film cartridge. After taking pictures, a typical consumer brings the entire LFFP to a film processor to have the film developed and receives back only negatives and prints, not the LFFP shell and its contents. Certain Lens-Fitted Film Packages, Inv. No. 337-TA-406, USITC Pub. 3219, Commission Opinion at 2 (June 2, 1999); see also Certain Lens-Fitted Film Packages, Inv. No. 337-TA-406, USITC Pub. 3219, Final Initial and Recommended Determinations, Additional Findings, 214 (February 24, 1999). However, the parties in the Consolidated Enforcement and Advisory Opinion Proceedings in Investigation 337-TA-406 disputed the meaning of the term “lens-fitted film package” arguing that an LFFP was limited to preloaded cameras that cannot be reloaded with film after their initial use. Relying upon his findings in the ID, and intrinsic evidence, the ALJ found that “having the capability of being reloaded with film does not mean that a camera is not an LFFP.” Certain Lens-Fitted Film Packages, Inv. No. 337-TA-406, Consolidated Enforcement and Advisory Opinion Proceedings, Enforcement Initial and Recommended Determination at 20-21 (May 2, 2002). Accordingly, in the initial enforcement proceedings, the ALJ determined that an LFFP is “a relatively inexpensive, disposable camera which is preloaded with film and a film cartridge so that after use, all of the film has been advanced into the film cartridge.” Enforcement Initial Determination at 19, 42. As indicated above, during the remanded consolidated proceedings, the ITC affirmed the ALJ’s claim construction and found that the preamble to claim 15 of the ‘087 patent was a limitation. In its post hearing brief, the ITC’s investigative staff maintained that it is only by the preamble that one knows that the subject matter defined by the ‘087 claims is a camera. See Certain Lens-Fitted Film Packages, Inv. No. 337-TA-406, Consolidated Enforcement and Advisory Opinion Proceedings (Remand), Posthearing Brief of the Commission Investigative Staff, 7 (July 19, 2005) (noting that the expert proffered by Fuji, Alfred H. Bellows, testified that the term “LFFP” in the preamble provides structural limitations to the claim such as a lens, shutter, and advance mechanism necessary for the invention to work, and that without the preamble, claim 15 of the ‘087 patent could describe a camera, a film cartridge, a film cassette, a film spooling device, or film testing machinery). Following Federal Circuit precedent, the investigative staff considered the specification of the ‘087 patent, the language of various priority applications of the ‘087 patent, and the divisional patent application that led to U.S. Patent No. 4,954,857, which shares the same specification as the ‘087 patent, and determined that the preamble of claim 15 of the ‘087 patent provides the essence of the invention and hence should be given meaning in claim 15. Accordingly, the specification, the entire prosecution history (including the priority applications and follow-on applications), and the prior art cited therein demonstrate that the patent applicants invented and intended to claim a lens-fitted photographic film package, such that the term serves as a separate claim limitation. Id. at 8. As previously noted, the term “lens-fitted film package” is found in all of the claims at issue in this request, and in the initial EID, the ALJ determined that a “lens-fitted film package” is not limited to a single-use non-reloadable camera. The sample cameras herein consist of a 35-mm preloaded camera housed in a transparent plastic waterproof container. The camera bodies of both models are made of plastic and consist of a main body to which is assembled all of the components associated with the operation of the camera (except for a pushbutton and plunger used to activate the shutter), a front cover is fitted to the main body by a hinge, and a rear cover is fitted to the main body by a hinge on one side and the bottom. An examination of the samples further establishes that the camera is not equipped with a flash unit; the main body of the camera contains a lens, viewfinder, film advance mechanism incorporating a thumb-wheel and film frame counting display, shutter operating mechanism, and a canister and film roll chamber which house the film cassette and photographic roll, respectively. A “135 type” photographic cassette of (unexposed) film is loaded into a film-receiving canister which is drawn out from the cassette and wound in a roll around a spool contained in a film supply chamber opposite the canister. When a photograph is taken, the film winds from the chamber into the canister, and when all of the film is exposed the entire camera is sent to the photo lab for processing, or upon disassembling the camera, it appears the film canister may be removed and its contents processed. Sample cameras UW23 and UW23V have a construction similar to the patents at issue. Consequently, we determine the sample cameras are properly considered to be LFFPs, the type of article identified by the ITC as being at issue in Inv. No. 337-TA-406. It is now necessary to consider whether the sample cameras under consideration infringe any of the claims of the above-referenced patents. United States Patent No. 5,235,364 United States Patent No. 5,235,364 (“‘364 patent”) entitled “Lens-Fitted Photographic Film Package with Flash Unit,” issued on August 10, 1993. The abstract of the ‘364 patent reads: A lens-fitted photographic film package with a flash unit, wherein a main capacitor of the flash unit is disposed above a film roll chamber and lies parallel to the film transporting direction. A battery is disposed between the film roll chamber and a cassette chamber, below a taking lens, and also lies parallel to the film transporting direction. The battery is entirely masked when the film package has been assembled. A printed circuit board of the flash unit is substantially rectangular and has a cut-out at the upper right corner thereof in which is mounted a light projector of the flash unit. The ‘364 patent has 13 claims; however, only claims 1 and 11 were found to be infringed and identified in the 406 GEO. Infringed claim 1, an independent claim, contains five limitations and reads as follows: 1. A lens-fitted photographic film package which is pre-loaded with film and has a shutter mechanism and a taking lens, said lens-fitted photographic film package comprising: a main body section having said shutter mechanisms, said taking lens, a cassette chamber disposed on one horizontal side of said taking lens, and a film roll chamber disposed on the opposite side of said taking lens from said cassette chamber, said film roll chamber being adapted to contain a roll of said film which is pulled out from a film cassette and wound in a roll, and said cassette chamber containing said film cassette; a flash unit including a circuit board mounted in front of said film roll chamber, a main capacitor and a discharge tube for emitting a flash of light, said main capacitor being disposed above said film roll chamber and extending in a horizontal direction; a battery for charging said main capacitor, said battery being disposed between said cassette chamber and said film roll chamber and extending in a horizontal direction below said taking lens; a front cover section attached to a front of said main body section; and a rear cover section attached to a rear of said main body section. Infringed claim 11, an independent claim, contains four limitations and reads as follows: 11. A lens-fitted photographic film package which is pre-loaded with film and has a shutter mechanism and a taking lens, said lens-fitted photographic film package comprising: a cassette chamber for containing a film cassette and disposed on one horizontal side of said taking lens; a film roll chamber for containing a roll of said film pulled out from said film cassette and wound in a roll, said film roll chamber being disposed on the opposite side of said taking lens from said 139 cassette chamber; a flash unit including a main capacitor and a discharge tube for emitting a flash of light, said main capacitor being disposed above said film roll chamber and extending in a horizontal direction; and a battery for charging said main capacitor, said battery being disposed between said cassette chamber and said film roll chamber and extending in a horizontal direction below said taking lens. “The objects of the invention of the ‘364 patent are to provide a compact film package with flash unit, to provide a film package with a flash circuit board of which is simple to shape and to provide a film package with flash unit, from which the battery is not easily removable.” U.S. Patent No. 5,235,364 col.1 l.65, col.2 l.1-6 (filed Apr. 15, 1992). The second limitation of Claim 1 requires a flash unit with a circuit board mounted in front of the film roll chamber, a main capacitor located above the film roll chamber in a horizontal direction, and a discharge tube for emitting a flash of light. The third limitation of claim 1 requires a battery, which is horizontally placed below the taking lens between the cassette chamber and said film roll chamber, for charging the main capacitor. Claim 11 is virtually identical to claim 1 except it does not recite body components or the flash circuit board. Several elements of claims 1 and 11 are present in the sample cameras at issue in this request. However, the cameras do not feature a flash circuit board, a capacitor, or battery (as shown in images below). As such, camera models UW23 and UW23V do not include each limitation of the recited claims, and thus do not infringe claims 1 and 11 of the ‘364 patent. Accordingly, the sample cameras do not fall within the scope of the claims 1 and 11 of the ‘364 patent. Battery
 Circuit Board
United States Patent No. 5,361,111 United States Patent No. 5,361,111 (“‘111 patent”) entitled “Lens-Fitted Photographic Film Unit Means Preventing Unintended Actuation of Pushbuttons,” issued on November 1, 1994. The abstract of the ‘111 patent reads: A lens-fitted photographic film unit has a pushbutton such as a flash button or a shutter release button. The pushbutton is formed integrally with a front wall of the film unit but partially separated therefrom by a slit. The pushbutton is surrounded by a ridge-shaped barrier which prevents it from being accidentally depressed by neighboring articles. The barrier projects outwardly from the front wall. The ‘111 patent has 11 claims, but only claim 1 was found to be infringed and identified in the 406 GEO. Infringed claim 1, an independent claim, contains two limitations and reads as follows: 1. A lens-fitted photographic film unit containing a photographic film and being adapted to take photographs, comprising: at least one plastic pushbutton formed integrally with a wall of said film unit, only a portion of said pushbutton, said pushbutton being separated from said wall by a slit which surrounds most but not all of said pushbutton, said pushbutton being connected to said film unit by an integral bridge, said pushbutton being adapted to be depressed inwardly of the wall from an initial position and to move back outwardly to said initial position when released; and a barrier formed on an outer surface of said wall surrounding said pushbutton only partially, said barrier projecting outwardly relative to an actuating surface of said pushbutton is in said initial position, said barrier terminating in two ends disposed on opposite sides of said bridge. The ‘111 patent covers features that prevent inadvertent actuation of the shutter trip button or the flash charging button.” ID at 69. Claim 1 requires the pushbutton to be an indivisible part of the film unit wall, separated only by a slit, and the second limitation requires a raised barrier that partially surrounds the shutter operating button of the front cover wall. Specifically, the elements in this claim include a shutter pushbutton or flash charging button, either of which is formed as a portion of the camera’s outside wall by a slit, in which the slit surrounds most of the button, leaving the button attached, and in which the button is protected from unintended pressing by an elevated barrier that partially surrounds the pushbutton. As evidenced in the images below, the shutter operating button of the sample cameras is not an integral portion of the front cover wall as it is inserted into the cover.


In view of the above, we determine the sample cameras do not satisfy the elements of the claim. As such, camera models UW23 and UW23V do not fall within the scope of claim 1 of the ‘111 patent. United States Patent No. 5,381,200 United States Patent No. 5,381,200 (“‘200 patent”) entitled “Lens-Fitted Photographic Film Unit” issued on January 10, 1995. The abstract of the ‘200 patent reads: A lens-fitted photographic film unit is provided with a shutter blade having a claw portion and a masking portion for opening and closing a shutter opening formed in the front surface of the base section of the film unit. The shutter blade is bent between the claw portion and the masking portion in a crank-shape such that the claw portion is swung in a rearward plane different from that of the masking portion, making it possible to form the film unit thinner. In a preferred embodiment, the masking portion is provided on its rear with a recess having a tapered surface. During swinging, the tapered surface will not be in contact with the projection surrounding the shutter opening, enabling smooth swinging of the shutter blade, when the shutter blade is in the closed position, the projection fits in the recess. The shutter blade is formed on an edge portion with a protrusion for opening and closing a stop aperture. In the closed position, half of the masking portion is surrounded by a semicircular light-shielding member. The ‘200 patent has 25 claims. Claims, 1, 15, 23, and 25, all of which are independent claims, were found to be infringed and identified in the 406 GEO. The claims read as follows: 1. A lens-fitted photographic film unit having a preloaded photographic film on which an image is formed through a taking lens system upon depression of a shutter release button, said film unit comprising: a shutter mount and a projecting portion projecting forward of said shutter mount along an optical axis of the taking lens system, said projecting portion having a flat surface on a front side thereof; a shutter opening on said optical axis formed in said flat surface of said projecting portion; and a shutter blade attached to said shutter mount, said shutter blade having a claw portion, an arm portion and a masking portion for opening and closing said shutter opening, said shutter blade being bent in a crank shape in the middle of said arm portion in a direction along said optical axis such that said masking portion is disposed farther forward than said claw portion so as to correspond in shape to said shutter mount and said projecting portion. 15. A lens-fitted photographic film unit having a preloaded photographic film on which an image is formed through a taking lens system upon depression of a shutter release button, said film unit comprising: a shutter mount having a flat projection projecting forward along an optical axis of said taking lens system; a shutter opening formed in said projection on said optical axis of said taking lens system; and a shutter blade having a claw portion and a masking portion for opening and closing said shutter opening and being swingable between a closed position and an open position, said masking portion having on a surface facing said shutter opening a recess and a semicircular rim, said rim being disposed on the side of a leading edge portion of said masking portion when said shutter blade swings from said closed position to said open position, said recess having a tapered surface formed approximately in a half portion of said recess on the side of a trailing edge portion opposite to said leading edge portion of said masking portion such that the thickness of said masking portion decreases in a direction toward said trailing edge portion so as to prevent said tapered surface from being brought into contact with said projection formed around said shutter opening during swinging of said shutter blade, said projection fitting in said recess when said shutter blade is in said closed position. 23. A lens-fitted photographic film unit having a preloaded photographic film on which an image is formed through a taking lens system upon depression of a shutter release button, said film unit comprising: a shutter mount; a shutter opening formed in said shutter mount; a shutter blade having a claw portion and a masking portion for opening and closing said shutter opening and being swingable between a closed position and an open position; a stop aperture disposed in front of said shutter blade; and a protrusion in said masking portion on a side of a trailing edge portion when said shutter blade swings from said closed position to said open position, said protrusion protruding toward said stop aperture and swinging so as to traverse said stop aperture during swinging of said shutter blade. 25. A lens-fitted photographic film unit having a preloaded photographic film on which an image is formed through a taking lens system upon depression of a shutter release button, said film unit comprising: a shutter mount having a flat projection projecting forward along an optical axis of said taking lens system; a shutter opening formed in said projection on said optical axis of said taking lens system; and a shutter blade having a claw portion and a masking portion for opening and closing said shutter opening and being swingable between a closed position and an open position, said masking portion having on a surface facing said shutter opening a recess and a semicircular rim, said rim being disposed on the side of a leading edge portion of said masking portion when said shutter blade swings from said closed position to said open position, said projection fitting in said recess when said shutter blade is in said closed position. The objects of the ’200 patent “are to provide a lens-fitted photographic film unit having a single kick-type shutter blade appropriate for its miniaturization, to provide a lens-fitted photographic film unit in which light is prevented from entering through the gap between the shutter blade and the shutter opening, and to provide a lens-fitted photographic film unit in which the shutter blade can be driven smoothly.” ID at 70; U.S. Patent No. 5,381,200 col2. l.25-36 (filed May 17, 1993). The third limitation of claim 1 requires a shutter blade having a claw portion, arm portion, and a masking portion, wherein the arm portion is bent in the direction of the optical axis to provide a crank-shaped shutter blade. The sample cameras feature a shutter blade which is relatively straight without a claw portion (see images below). Accordingly, we determine the sample cameras do not meet all of the limitations of the claim, and therefore do not fall within the scope of claim 1 of the ‘200 patent. The third limitation of claim 15 requires, among other elements, that the masking portion of the shutter blade have a recess and a semicircular rim, and that said recess have a tapered surface. The specification further shows that the shutter blade has a given thickness throughout its length with a recess formed in the thickness of the masking portion, which is surrounded by a round semicircular rim. See U.S. Patent No. 5,381,200 col.8 l.21-36. As mentioned above, the specification is “highly relevant to the claim construction analysis. . . . [as] 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.”). The sample cameras contain a shutter blade with a masking region that has a flat surface and no semicircular rim. As such, the UW23 and UW23V camera models do not meet the limitations of claim 15, and thus do not fall within the scope of claim 15 of the '200 patent. Claim 23 of the ‘200 patent recites as one element of the fifth limitation, a protrusion on the masking portion of the shutter blade on the side of trailing edge portion when the shutter blade swings from the closed position to the open position. The cameras at issue feature a shutter blade that has no protrusion from its masking portion. Accordingly, the cameras do not satisfy the fifth limitation of claim 23, and therefore do not fall within the scope of claim 23 of the '200 patent. The third limitation of claim 25 includes a shutter blade having a claw portion and a masking portion wherein the masking portion has on its surface a recess and a semicircular rim, the rim being disposed on the side of a leading edge segment of the masking portion. The shutter blade found in the UW23 and UW23V cameras have no such semicircular rim on the masking portion region As such, the cameras do not fall within the scope of claim 25 of the '200 patent. A digital image of the shutter blade contained in the UW 23 and UW23V cameras is depicted below.
United States Patent No. 5,408,288 United States Patent No. 5,408,288 (“‘288 patent”) entitled “Photographic Film Cassette and Lens-Fitted Photographic Film Unit Using the Same” issued on April 18, 1995. The abstract of the ‘288 patent reads: A lens-fitted photographic film unit has a film supply chamber preloaded with unexposed photographic film. A cassette-containing chamber contains a film cassette. The film after exposure is wound on a spool of the cassette. The film unit is provided with a mechanism for exposing the film in a succession of frames. An axial hole is formed in an upper end of the spool. Knurled inner teeth are formed inside the axial hole. A wind-up wheel is mounted on the film unit over the cassette-containing chamber to be externally operable for rotation. A drive shaft on the wind-up wheel protrudes into the cassette-containing chamber, and is received in the axial hole. Knurled outer teeth about the drive shaft mesh with the inner teeth on the spool. The drive shaft and spool will thus mesh with each other in any relatively rotated position thereof, which avoids loss of usable film. The ‘288 patent has 8 claims. Only claims 1 and 7, both of which are independent, were found to be infringed and identified in the 406 GEO. Infringed claims 1 and 7 each have five limitations which read as follows: 1. A lens-fitted photographic film unit, in which a body contains photographic film drawn out of a cassette in a form of a roll, a film winding wheel is rotated after each exposure to rotate a spool in said cassette, and thereby said film is wound back into said cassette, said film unit comprising: an axial hole formed in one distal end of said spool; a pair of engaging plates, projected from said axial hole in a position axially downward inside said axial hole, and shaped in a rotationally symmetrical fashion at a straight angle with respect to an axis of said axial hole; and a key way defined by a plurality of inner teeth formed on an inside of said axial hole and axially upward from said engaging plates; wherein said winding wheel includes a drive shaft integrally formed therewith and fitted in said axial hole; and said drive shaft includes a plurality of engaging teeth formed thereabout, arranged at a regular pitch, extended axially, and respectively engaged with said inner teeth. 7. A lens-fitted photographic film unit, in which a body contains photographic film drawn out of a cassette in a form of a roll, a film winding wheel is rotated after each exposure to rotate a spool in said cassette, and thereby said film is wound back into said cassette, said film unit comprising: an axial hole formed in one distal end of said spool; a pair of engaging plates, formed on an inside defined by said axial hole in said spool, and shaped in a rotationally symmetrical fashion at a straight angle in a position axially outward inside said axial hole; a plurality of inner teeth formed inside said axial hole, arranged circularly at a regular pitch, shaped to have a substantially triangular section, and extended axially and upward over said engaging plates; a drive shaft integrally formed with said winding wheel and fitted in said axial hole while said cassette is contained in said body; and a plurality of outer teeth formed about said drive shaft, shaped to have a substantially triangular section engaged with said inner teeth, and extended axially, said drive shaft fitted in said axial hole to engage said inner teeth with said outer teeth for transmission of rotation of said winding wheel to said spool. Claims 1 and 7 of the ‘288 patent require, among other elements, an “axial hole” formed in one distal end of the cassette spool, with a plurality of inner teeth formed inside the axial hole, and a corresponding plurality of peripheral teeth on the drive shaft of the wind-up wheel. Sample camera models UW23 and UW23V do not contain any teeth on the inside distal end of the film cassette or on the drive shaft of the winding wheel. Accordingly, the cameras do not meet the third and fifth limitations of claim 1 or 7 and thus do not fall within the scope of claim 1 or 7 of the ‘288 patent. United States Patent No. 5,436,685 United States Patent No. 5,436,685 (“‘685 patent”) entitled “Lens-Fitted Photographic Film Unit Whose Parts Can Be Recycled Easily” issued on July 25, 1995. The abstract of the ‘685 patent reads: A lens-fitted photographic film unit is constituted of a film containing unit, a photo-taking unit, and a front cover. The film containing unit is formed from plastic and has an exposure aperture, a film supplying chamber and a film take-up chamber. A shutter mechanism and a wind-up stopping mechanism have metallic parts and are assembled together into the photo-taking unit, so as to facilitate classification of plastic units and metal-containing units at the time of recycling. The photo-taking unit is removably secured to the front of the plastic film containing unit. In a preferred embodiment, a flash device is removably mounted on the film containing unit. The ‘685 patent has 28 claims; however, claims 1 and 28, both of which are independent, were the only claims found to be infringed and identified in the 406 GEO. Infringed claims 1 and 28 each have three limitations which read as follows: 1. A lens-fitted photographic film unit which has resinous and metal parts and which has an exposure aperture, a film supplying chamber for containing unexposed photographic film, and a film take-up chamber for taking up said film after exposure, in which said film supplying chamber and said film take-up chamber are disposed horizontally on opposite sides of said exposure aperture, and which has a taking lens, a shutter mechanism, a film wind-up wheel for winding up said film as exposed, and a wind-up stopping mechanism for preventing said wind-up wheel from rotating after film is fed by one frame after each exposure by rotation of said wind-up wheel, said film unit comprising: a resinous film containing unit in which said exposure aperture, said film supplying chamber and said film take-up chamber are formed; a single photo-forming unit including said shutter mechanism and said wind-up stopping mechanism, said single photo-forming unit having metal parts and being secured to said film containing unit but being removable as a single unit from said film containing unit so as to facilitate removal of metal parts from resinous parts; and a front cover secured to said film containing unit in front of said photo-taking unit. 28. A lens-fitted photographic film unit which has resinous and metal parts and which has an exposure aperture, a film supplying chamber for containing unexposed photographic film, and a film take-up chamber for taking up said film after exposure, in which said film supplying chamber and said film take-up chamber are disposed horizontally on opposite sides of said exposure aperture, and which has a taking lens, a shutter blade, a driven sprocket wheel driven in rotation by movement of said film, shutter cocking means for cocking said shutter blade in response to rotation of said sprocket wheel, shutter driving means for driving said shutter blade upon release of said shutter cocking means, a film wind-up wheel for winding up exposed film into said take-up chamber, and a wind-up stopping mechanism for preventing said wind-up wheel from rotating after said film is wound up by one frame after each exposure by rotation of said wind-up wheel, said film unit comprising: a resinous film containing unit in which said exposure aperture, said film supplying chamber and said film take-up chamber are formed; a single photo-forming unit including said shutter blade, said sprocket wheel, said shutter cocking means, said shutter driving means, and said wind-up stopping mechanism, said single photo-forming unit having metal parts and being secured to said film containing unit but being removable as a single unit from said film containing unit so as to facilitate removal of metal parts from resinous parts; and a front cover secured to said film containing unit in front of said photo-forming unit. The ‘685 patent “discloses that the objects of the patent are to provide a lens- fitted photographic film unit of which the part can be recycled easily; to provide a lens-fitted photographic film of which the parts can be classified into those to be remodeled and those to be reused; and to provide a lens-fitted photographic film of which the performance is not worsened even when the parts as reused are reassembled into it.” ID at 74; U.S. Patent No. 5,436,685 col.2 l. 32- 43. Claims 1 and 28 of the ‘685 patent require, among other things, a shutter and rewinding mechanism which is removable as a single unit. Specifically, the claims require a single photo-forming unit having a shutter mechanism and a wind-up stopping mechanism, where the single photo-forming unit has metal parts and is secured to a film containing unit, but is removable as a single unit so as to facilitate removal of the metal parts from resinous parts. The UW23 and UW23V cameras contain a middle body which houses many of the components normally associated with the operation of a camera including the components noted in the above-noted claims such as a shutter mechanism and a wind-up stopping mechanism (i.e., wind-up wheel or thumb wheel) which are integral with the film-containing unit; however, these parts may not be removed as a single unit. Consequently, we conclude that the sample cameras do not meet the second limitations of claims 1 and 28. Therefore the cameras do not fall within the scope of claims 1 and 28 of the ‘685 patent. Infringement of Design Patent U.S. Patent No. D 372,722 U.S. Patent No. D372,722 (‘722 patent) is a design patent that issued on August 13, 1996. The formal claim of the ‘722 patent is as follows: The ornamental design for a camera, as shown and described. The drawing of the patent is depicted in seven figures, which show perspective, elevational, and “top and bottom” plan views of the camera design. As stated above, the Federal Circuit 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. Furthermore, the Federal Circuit confirmed that the appropriate standard for design patent infringement determinations is whether, from the perspective of an ordinary observer who is familiar with the prior art, the patented design and the design of the accused article are substantially the same. See Egyptian Goddess. Before analyzing the design patent at issue, it warrants mentioning that it is not entirely clear whether (and if so, to what extent) the analysis pertaining to the identification of the appropriate ordinary observer, as developed in cases such as Arminak (i.e., involving the question whether the proper ordinary observer is a commercial or industrial buyer of component parts that will be assembled into a retail product or a retail purchaser of the retail product incorporating the component parts), survived the Egyptian Goddess pronouncement that the proper standard is from the perspective of an ordinary observer who is familiar with the prior art. See Arminak & Assocs. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314, 1321-25 (Fed. Cir. 2007). However, in this investigation and on review, the full Commission stated that the ALJ had misinterpreted Gorham in determining that the complainant had not established design patent infringement due to its reliance on expert testimony. The ITC maintained that the Gorham decision stood for the proposition that expert testimony was not required to prove design patent infringement, not that expert testimony could not be used to prove infringement. Accordingly, the ITC determined that “expert testimony is not required to prove design patent infringement . . . [thus] the burden of proof on design patent infringement can be carried by expert testimony.” Certain Lens-Fitted Film Packages, Inv. No. 337-TA-406, USITC Pub. 3219, Commission Opinion at 7 (June 2, 1999). Thus, in view of the Commission Opinion and the jurisprudence on design patent infringement, the determination here finds that the appropriate ordinary observer can be the end-user consumer, or a commercial purchaser of single-use cameras who works in the camera/photography industry and has, therefore, some familiarity with single-use cameras and the relevant prior art. The next step is to consider the claim construction for the ‘722 patent. There is no prescribed form that a design patent claim construction must take. See Egyptian Goddess, 543 F.3d at 679. Moreover, the Federal Circuit has recognized that design patents are typically claimed as shown in their drawings and, therefore, a court or administrative body tasked with making an infringement determination is not required to provide a detailed verbal description of the claimed design. Id. (citing Contessa Food Products v. Conagra, Inc., 282 F.3d 1370, 1377 (Fed. Cir. 2002) for the proposition that the trial court did not err in construing the asserted design claim as “a tray of a certain design as shown in Figures 1-3”). In fact, the Supreme Court has recognized that a design is better represented by an illustration “than it could be by any description and a description would probably not be intelligible without the illustration.” Dobson v. Dornan, 118 U.S. 10, 14 (1886). Thus, “as a rule, the illustration in the drawing views is its own best description.” Manual of Patent Examining Procedure § 1503.01 (8th ed.2006). While the ITC did not provide a precise claim construction for the design of the ‘722 patent, it noted that the “claimed design[] consist[s] of a rectangular body with certain camera features (e.g. lens, viewfinder) in particular locations.” Certain Lens-Fitted Film Packages, Inv. No. 337-TA-406, USITC Pub. 3219, Commission Opinion 7 (June 2, 1999). Additionally, the ITC maintained that infringement could not be avoided by affixing a different design or logo to the cardboard cover of the LFFP or by packaging [an] LFFP in an outer carton” Id. (citing L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1126 (Fed. Cir. 1993) which stated that design patent infringement relates solely to a patented design and does not require proof if unfair competition in the marketplace [citation omitted], or allow avoidance of infringement by labeling.”). Upon visual inspection and as shown in the images below, it is apparent that there is not a substantial difference between the patented design and sample cameras at issue. The differences consist only of the existence and location of certain camera features. The figures of the ‘722 patent depict a rectangular shape camera with one or more openings in the front and back covers to permit extending components mounted on the main body of the camera to extend into or beyond the front and back cover. One side of the front cover has a rounded projection which corresponds with the shape of a film cassette cartridge, and the top panel of the camera contains an arch shaped shutter button on one side, and an adjacent film frame counter window. The front cover contains a flash window in one corner of the camera, and a viewfinder window in the center of the camera, which both fit into the front and top panels of the camera body. The front cover also consists of a circular flash button, which is directly below the flash window, and a taking lens, enclosed by a mounting rim with a smaller circle surrounding the lens that consists of a pattern of evenly spaced concentric circles. The back cover has a film advance wheel in one corner and a rear finder window in the center. Additionally, the side perspective view (See Figure 1), and the plan views as seen from a top and bottom perspective (See figures 4 and 5), illustrate that the taking lens and its mounting rim extend significantly beyond the front cover plane. The sample cameras at issue, models UW23 and UW23V, are also rectangular-shaped with two openings in the front and back covers to permit extending components mounted on the main body to extend into or beyond the cover walls. The front cover of the cameras contains a rounded projection which corresponds with the shape of a film cassette cartridge, and a viewfinder window that fits only the front panel. Additionally, the taking lens is encircled by a mounting rim with a smaller cover, which consists of evenly spaced concentric circles surrounding the lens. The top panel of the camera contains a rectangular shaped shutter button, an opening for the knob used to advance film (the only means to advance film when the camera is enclosed in the plastic waterproof container), and a film frame counter window. Extending into the back cover is the film advance wheel in one corner, and the rear finder window in the center. The taking lens protrudes only slightly from the front cover wall, and the cameras have no flash components. Images of the figures found in the ‘722 patent, and the sample cameras are shown below.











As evident from the pictures above, the two designs are not plainly dissimilar. Therefore this is a case where “resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art, . . . [and] [w]here 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.” Egyptian Goddess, 543 .3d at 678. In addition, this examination of the prior art can also serve to highlight certain similarities between the claimed and accused designs that may not be noticeable in the abstract, but that become significant during the comparative analysis. In this instance, the would-be importer has not relied on the comparison of prior art as part of its defense against the alleged infringement. In fact, VastFame and Xiangjiang have not offered any argument regarding infringement of the ‘722 design patent. Nonetheless, we shall consider prior art cited during the’722 patent prosecution. Among the six patents cited as prior art, it appears that the two closest prior art cameras are U.S. Design Patent No. D 345,569 (the ‘569 patent), and U.S. Design Patent No. D 353,607 (the ‘607 patent). The figures of both patents are depicted below.











The ‘569 patent exhibits a rectangular shape camera with three openings in the front cover and two openings in the back cover. The front cover has a projection that corresponds to the shape of a film cassette cartridge. The front cover also has a flash window in one corner of the camera, a viewfinder in the center of the camera, and a square-shaped flash button located directly below the flash window. The taking lens is in the center of the camera, and while it doesn’t have a mounting rim, it appears to be surrounded by a “covered bulge” consisting of approximately four evenly spaced concentric circles. The top panel contains a rectangular-shaped shutter button, which is slightly skewed, and a film frame counter window. A film advance wheel is in one corner of the back cover, and a rear finder window is in the center. In addition, the figures in the ‘569 patent demonstrate that the taking lens extends slightly beyond the front cover plane. An examination of the figures in the ‘607 patent reveal that the camera design is a rectangular shape with two openings in the front and back covers. The front cover contains a viewfinder, and a taking lens which is encircled by a mounting rim and a smaller covering surrounding the lens, which consists of approximately six concentric circles that are not evenly spaced. The top panel of the camera contains an arc shaped shutter button that is slightly skewed, and an adjacent film frame counter window. Extending into the back cover is the film advance wheel in one corner, and the rear finder window in the center. The ‘607 patent does not contain any flash components, and the side view of the ‘607 patent figures show that the taking lens extends well beyond the front cover plane. The patents in the prior art, the ‘569 and the ‘607 patents, do not depart significantly from the claimed design. In fact, all of the prior art designs cited during the patent prosecution are similar. The ‘569 patent differs from the claimed design in four main respects. The ‘569 patent has a rectangular shaped flash button that is a slanted, a taking lens that is not encompassed in a mounting ring, and which protrudes only slightly from the camera front cover, and a front finder and flash window that fit only in the front cover. The ‘607 patent differs from the claimed design in that its arc shaped shutter button is slanted, and it lacks any flash components. Accordingly, the consistent difference between the claimed design and the prior art in both patents is that the shutter button on the claimed design is not slanted and the front finder and/or flash window fit in both the front and top covers. Though the sample cameras have negligible differences from the claimed design, there is a greater similarity between the cameras at issue and the prior art found in the ‘607 patent. The sample cameras and the ‘607 patent both lack flash components, contain a viewfinder window that fits only into the front cover of the camera, and have a taking lens and mounting rim with similar designs. While it is the general appearance and effect of the whole design, and not minor differences, that must be weighed in deciding whether two designs are substantially the same, under the ordinary observer test a comparison of similar prior art must also be considered. See Egyptian Goddess. As such, it is determined that an ordinary observer and/or purchaser familiar with the prior art, would not mistake the VastfFame cameras under consideration with the ’722 Fuji patent design. Therefore, upon comparing all of the figures of the ‘722 patent with the sample cameras, and in light of the analysis above, it is determined that the sample cameras have not appropriated the claimed design of the ‘722 patent. HOLDING: The sample model UW23 and UW23Vcameras do not meet all the limitations of any of the claims of the utility patents at issue, and the sample cameras do not infringe the ‘722 design patent. Therefore, the cameras are not within the scope of the ITC’s general exclusion order in Investigation. No. 337-TA-406.  Accordingly, sample camera models UW23 and UW23V may be entered for consumption into the United States. Sincerely, Charles R. Steuart, Chief Intellectual Property Rights and Restricted Merchandise Branch