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

U.S. Department of Homeland Security Washington, DC 20229 U.S. Customs and Border Protection U.S. Department of Homeland Security Washington, DC 20229 U.S. Customs and Border Protection HQ H084518 June 21, 2011 OT:RR:BSTC:IPR H084518 JLG CATEGORY: 19 U.S.C. § 1337; Unfair Competition Mr. Urs Stampfli Concord Keystone Trading, LLC 4000 Hollywood Blvd., Ste 555-S Hollywood, FL 33021 RE: U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-406; Certain Lens-Fitted Film Packages Dear Mr. Stampfli: This concerns your submissions of March 2 and July 14, 2009, as supplemented by your email of Tuesday, November 23, 2010, in which you requested a ruling, pursuant to 19 C.F.R. § 177, as to whether the Polaroid “Fun Shooter” single-use camera falls 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”). In the aforementioned email, you maintain that Concord Keystone Trading, LLC (Concord Keystone) is a Polaroid licensee and distributes the Polaroid “Fun Shooter” single-use camera to retailers and distributors. Furthermore, it appears that the sample camera under consideration is manufactured by Xiamen Xiangjiang Plasticity Co. Ltd. (“Xiamen Xiangjiang”), produced for VastFame Camera Ltd. (“VastFame”), and distributed by Concord Keystone Trading, LLC. A sample camera was included with the ruling request. We regret the delay in responding. FACTS: ITC Investigation No. 337-TA-406 was instituted on March 25, 1998, based on a complaint filed by Fuji Photo Film Co., Ltd. (Fuji) of Tokyo, Japan. Fuji’s complaint alleged unfair acts in violation of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337, by twenty-seven (27) respondents in the importation and sale of certain lens-fitted film packages (LFFPs) that infringed one or more claims of fifteen (15) patents held by Fuji. On February 24, 1999, the presiding administrative law judge (ALJ) issued his final initial determination, finding a violation of section 337 by reason of infringement of certain Fuji patents. See Certain Lens-Fitted Film Packages, Inv. No. 337-TA-406, USITC Pub. 3219, Final Initial and Recommended Determinations (February 24, 1999) (“ID”). On review, the Commission affirmed in part the ALJ’s initial determination and found a violation of 19 U.S.C. § 1337. The Commission determined the appropriate form of relief was a general exclusion order which prohibited entry for consumption into the United States of unlicensed LFFPs that infringe claims 1, 5, 6, 9, and 11 of U.S. Letters Patent No. 4,833,495; claims 14 and 15 of U.S. Letters Patent No. 4,855,774; claims 1, 7, 8, and 15 of U.S. Letters Patent No. 4,884,087; claims 1, 19, and 22 of U.S. Letters Patent No. 4,954,857; claims 1 and 9 of U.S. Letters Patent No. 4,972,649; claims 14 and 16 of U.S. Letters Patent No. 5,063,400; claims 1 and 11 of U.S. Letters Patent No. 5,235,364; claim 1 of U.S. Letters Patent No. 5,361,111; claims 1, 15, 23, and 25 of U.S. Letters Patent No. 5,381,200; claims 1 and 7 of U.S. Letters Patent No. 5,408,288; claims 1 and 28 of U.S. Letters Patent No. 5,436,685; claims 1 and 13 of U.S. Letters Patent No. Re. 34,168; the claim of U.S. Letters Patent No. Des. 345,750; the claim of U.S. Letters Patent No. Des. 356,101; and the claim of U.S. Letters Patent No. Des. 372,722. Certain Lens-Fitted Film Packages, Inv. No. 337-TA-406, USITC Pub. 3219, General Exclusion Order at 1-2 (June 2, 1999). On June 27, 2001, after issuance of the general exclusion order, Fuji filed a complaint with the ITC requesting enforcement and advisory proceedings to determine whether certain entities had violated the 406 GEO. See Certain Lens-Fitted Film Packages, Inv. No. 337-TA-406, Complaint for Enforcement Proceedings under Rule 210.75, a Petition for Modification under Rule 210.76 and/or Request for Advisory Opinion under Rule 210.79. Specifically, the validity of claim 15 of the ‘087 patent was addressed during these proceedings, and on remand, the ITC concluded that the preamble to claim 15 was a limitation. A number of the patents have expired since this time, thus the remaining patents at issue include: Claim 1 of U.S. Patent No. 5,361,111; Claims 1, 15, 23, and 25 of U.S. Patent No. 5,381,200; Claims 1 and 7 of U.S. Patent No. 5,408,288; and Claims 1 and 28 of U.S. Patent No. 5,436,685 As indicated above, the single-use camera at issue is the Polaroid “Fun Shooter” flash, model FS73. The “Fun Shooter” camera is a plastic 35-mm preloaded camera, which can be opened with the use of a tool or sharp knife, and consists of three main parts: a main body portion, a front cover, and a rear cover. The front and rear cover are attached to the main body by hinges, and the main body has all the components typically associated with the operation of a camera. Specifically, the main body is equipped with a taking lens, front and rear viewfinder, film advance mechanism incorporating a thumb-wheel and counting display, a shutter mechanism, and a cassette and film roll chamber which house the film cassette and photographic roll, respectively. Mounted to the main body is a rectangular shaped circuit board with a flash unit on the front right-hand side and a main capacitor vertically attached at the lower left-hand side. An AA-type battery is located under the main body portion between the cassette and film roll chamber, and is covered with a strip of plastic that is not attached to the camera’s main body or front and rear covers. As such, upon detaching the plastic strip (i.e. battery cover), the battery can be removed without disassembling the camera. The front and rear cover both have openings that correspond to certain camera components on the main body. The taking lens, front view finder, and flash components fit into or through the inner surface of the front cover, and the rear viewfinder and thumb-wheel fit into or through the rear cover. The camera is preloaded with “135 type” photographic unexposed film that resides in a film-receiving canister, similar to those in which photographic film is normally sold at retail. The film is drawn out from the film cassette and wound in a roll around a spool contained in a film supply chamber opposite the film-receiving canister. When a photograph is taken, film winds back into the film cassette until all the frames have been exposed. A label is affixed to the front and back of the camera containing, among other things, branding and instructions regarding use of the camera, as well as language cautioning against opening the camera and requiring the user to send the entire camera to a photo dealer for processing. Upon disassembling the camera, however, it appears that the film canister can be removed and sent to the photo finisher. Photographs of the sample submitted for our analysis are displayed below.



ISSUE: The issue presented is whether the Polaroid “Fun Shooter” single-use camera, model FS73, infringes any of the relevant patents at issue and therefore falls within the scope of the ITC’s general exclusion order in Investigation No. 337-TA-406, such that they would be excluded from entry for consumption into the United States. LAW AND ANALYSIS: The ITC has authority to conduct investigations into imported articles that allegedly infringe United States patents and impose remedies if the accused products are found to be infringing. See 19 U.S.C. § 1337(a)(1)(B), (b)(1), (d), (f). Specifically, 19 U.S.C. § 1337(d) provides the Commission authority to direct the exclusion from entry of articles found to be infringing. Moreover, when the ITC determines that there has been a violation of section 337, as amended, it may issue two types of exclusion orders: a limited exclusion order and/or a general exclusion order. See Fuji Photo Film Co., Ltd. v. U.S. Int’l Trade Comm’n, 474 F.3d 1281, 1286 (Fed. Cir. 2007). Both types of orders direct CBP to bar infringing products from entering the country. See Yingbin-Nature (Guangdong) Wood Indus. Co. v. U.S. Int’l Trade Comm’n, 535 F.3d 1322, 1330 (Fed. Cir. 2008). A limited exclusion order is “limited” in that it only applies to the specific parties before the ITC in the investigation. Id. In contrast, a general exclusion order bars the importation of infringing products by everyone, regardless of whether they were respondents in the Commission’s investigation. Id. A general exclusion order is only appropriate if two exceptional circumstances apply. See Kyocera Wireless Corp. v. U.S. Int’l Trade Comm’n, 545 F.3d 1340, 1356 (Fed Cir. 2008). A general exclusion order may be issued only if (1) “necessary to prevent circumvention of a limited exclusion order,” or (2) “there is a pattern of violation of this section and it is difficult to identify the source of infringing products.” 19 U.S.C. § 1337(d)(2); see also Kyocera, 545 F.3d at 1356 (“If a complainant wishes to obtain an exclusion order operative against articles of non-respondents, it must seek a GEO by satisfying the heightened burdens of §§ 1337(d)(2)(A) and (B).”). As stated above, the 406 GEO issued by the ITC provides, in part, that: Lens-fitted film packages (“LFFPs”), also known as one-time use cameras, single-use cameras and disposable cameras, covered by one or more of claims 1, 5, 6, 9, and 11 of U.S. Letters Patent No. 4,833,495; claims 14 and 15 of U.S. Letters Patent No. 4,855,774; claims 1, 7, 8, and 15 of U.S. Letters Patent No. 4,884,087; claims 1, 19, and 22 of U.S. Letters Patent No. 4,954,857; claims 1 and 9 of U.S. Letters Patent No. 4,972,649; claims 14 and 16 of U.S. Letters Patent No. 5,063,400; claims 1 and 11 of U.S. Letters Patent No. 5,235,364; claim 1 of U.S. Letters Patent No. 5,361,111; claims 1, 15, 23, and 25 of U.S. Letters Patent No. 5,381,200; claims 1 and 7 of U.S. Letters Patent No. 5,408,288; claims 1 and 28 of U.S. Letters Patent No. 5,436,685; claims 1 and 13 of U.S. Letters Patent No. Re. 34,168; the claim of U.S. Letters Patent No. Des. 345,750; the claim of U.S. Letters Patent No. Des. 356,101; and the claim of U.S. Letters Patent No. Des. 372,722 are excluded from entry for consumption, into the United States for the remaining term of the patents, except under license of the patent owner or as provided by law. See Certain Lens-Fitted Film Packages, Inv. No. 337-TA-406, USITC Pub. 3219, General Exclusion Order at 1-2 (June 2, 1999). The ITC’s 406 order is typical of general exclusion orders, speaking in terms of patent claims rather than parties and/or infringing products. See Yingbin-Nature, 535 F.3d at 1331. The 406 GEO directs CBP to exclude LFFPs, regardless of the manufacturers or importers, which infringe the patents included above. Accordingly, since the ITC issued a general exclusion order based on the additional findings required by 19 U.S.C. § 1337(d)(2), whether or not VastFame any other parties to the import transaction were named as respondents to the original investigation is immaterial to the question of whether the sample cameras fall within the scope of the 406 GEO. The only pertinent question is whether the cameras at issue infringe any of the relevant patents. See Sealed Air Corp. v. U.S. Int’l Trade Comm’n, 645 F.2d 976, 985 (C.C.P.A. 1981) (“An exclusion order operates against goods, not parties.”); see also VastFame Camera, Ltd. v. U.S. Int’l Trade Comm’n, 386 F.3d 1108, 1114 (Fed. Cir. 2004) (“A general exclusion order broadly prohibits entry of articles that infringe the relevant claims of a listed patent without regard to whether the persons importing such articles were parties to, or were related to parties to, the investigation that led to issuance of the general exclusion order.”). Significantly, the Federal Circuit has recognized that issuance of a general exclusion order by the ITC binds named parties and non-named parties alike and shifts to would-be importers, “as a condition of entry, the burden of establishing noninfringement.” Hyundai Electronics Industries Co. v. U.S. Int’l Trade Comm’n, 899 F.2d 1204, 1210 (Fed. Cir. 1990). Accordingly, the burden is on the importer to establish that the single-use cameras at issue do not infringe any of the relevant patents. UTILITY PATENT INFRINGEMENT Patent infringement determinations for utility patents entail two-steps. The first step is to interpret the meaning and scope of the patent claims asserted to be infringed. The second step is to compare the properly construed claims to the accused device. See Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). The first step is a question of law; the second step is a question of fact. See Freedman Seating Co. v. American Seating Company, 420 F.3d 1350, 1357 (Fed. Cir. 2005). In patent law, there are two types of infringement: direct and indirect infringement. Direct infringement includes two varieties: literal infringement and infringement under the doctrine of equivalents. Literal infringement is when every limitation recited in a claim is found in the accused device. See Strattec Security Corp. v. General Automotive Specialty Co., 126 F.3d 1411, 1418 (Fed. Cir. 1997). Under the doctrine of equivalents, “a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is ‘equivalence’ between the elements of the accused product or process and the claimed elements of the patented invention.” Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 21 (1997) (citing Graver Tank & Manufacturing Co. v. Linde Air Products Co., 339 U.S. 605, 609 (1950)). The Federal Circuit applies two articulations of the test for equivalence – the insubstantial differences test and the function-way-result test. See Voda v. Cordis Corp., 536 F.3d 1311, 1326 (Fed. Cir. 2008) (explaining that different phrasing may be “more suitable to different cases, depending on their particular facts…”) (quoting Warner-Jenkinson, 520 U.S. at 40). Under the insubstantial differences test, “[a]n element in the accused device is equivalent to a claim limitation if the only differences between the two are insubstantial.” Id. At 1326 (citing Honeywell International Inc. v. Hamilton Sundstrand Corp., 370 F.3d 1131, 1139 (Fed. Cir. 2004)). Alternatively, under the function-way-result test, an element in the accused device is equivalent to a claim limitation if it “performs substantially the same function in substantially the same way to obtain substantially the same result.” Id. (citing Schoell v. Regal Marine Industries, Inc., 247 F.3d 1202, 1209-10 (Fed. Cir. 2001). 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, 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 inte