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 ev