Protest 4601-09-101400, 4601-09-101700; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-514; Certain Plastic Food Containers

HQ H106415 July 15, 2010 OT:RR:BSTC:IPR H106415 DAX CATEGORY: 19 U.S.C. § 1337; Unfair Competition Port Director U.S. Customs and Border Protection 1100 Raymond Blvd. Newark, NJ 07102 RE: Protest 4601-09-101400, 4601-09-101700; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-514; Certain Plastic Food Containers Dear Port Director: This is in response to the application for further review of the above-referenced protest filed by D&S New York, Inc. (“Protestant”) challenging the exclusion from entry for consumption of certain plastic food containers determined by the port to fall within the scope of the above-referenced general exclusion order issued by the U.S. International Trade Commission (“ITC”). FACTS: On June 30, 2009, U.S. Customs and Border Protection (“CBP”) issued a notice to Protestant indicating that certain plastic food containers were excluded from entry for consumption because the plastic food containers were covered by the general exclusion order issued by the ITC that resulted from Inv. No. 337-TA-514 (“514 GEO”). See Protest at 1. Pursuant to 19 U.S.C. § 1514(c), as implemented by 19 C.F.R § 174, Protestant timely filed a valid protest on July 28, 2009, challenging the exclusion from entry and determination that the plastic food containers at issue fell within the scope of the 514 GEO. Specifically, Protestant denied that the plastic food containers infringe any of the patents at issue during the investigation at, and found to be infringed by, the ITC. In addition to challenging the exclusion from entry, Protestant also sought further review of the protest, pursuant to 19 C.F.R § 174.23, in lieu of review by the port director. The port denied the protest and the application for further review on August 7, 2009. Protestant then filed, on August 26, 2009, a request that the denial of the application for further review be set aside pursuant to 19 U.S.C. § 1515(c), which was granted by this office on October 23, 2009, resulting in the transfer of the protest to Headquarters for resolution. ITC Inv. No. 337-TA-514 was instituted based on a complaint filed by Newspring Industrial Corp. (“Complainant”), which named two parties as respondents to the investigation. See Administrative Law Judge’s (“ALJ”) Initial Determination (“ID”) at 3-4 (February 10, 2005). The ITC instituted the investigation to determine whether there was a violation of subsection (a)(1)(B) of section 337 in the importation into the United States, the sale for importation into the United States, or the sale within the United States after importation of certain plastic food containers by reason of infringement of one or more of claims 1-5 of utility U.S. Patent No. 6,056,138 (“the ‘138 patent”), claims 1-2 and 4-9 of utility U.S. Patent No. 6,196,404 (“the ‘404 patent”), and the claim of design U.S. Patent No. D 415,420 (“the ‘420 patent”). Id. Protestant was not named as a respondent in the investigation. The ALJ found a violation of section 337 of the Tariff Act of 1930, as amended, and granted Complainant’s motion for a summary determination with respect to most, but not all, issues presented, which was affirmed by the Commission after limited review to examine possible formatting and typographical errors. See Commission Opinion at 1-3 (May 23, 2005). Accordingly, the ITC provided relief in the form of a general exclusion order that bars the entry for consumption into the United States of plastic food containers covered by one or more of claim 1 of the ‘138 patent, claim 1 of the ‘404 patent, or the claimed design of the ‘420 patent. See 514 General Exclusion Order (May 23, 2005). As stated above, Protestant was not named as a respondent to the investigation, nor were the excluded plastic food containers at issue in this protest analyzed during the investigation at the ITC. Protestant’s excluded plastic food containers include a number of different embodiments, some of which are rectangular, while others are round in shape. Protestant has indicated that the excluded plastic food containers are represented by the following product models: the “F” series, the “RE” series, the “R” series, and the “Y” series. The first two models listed above exhibit a rectangular embodiment while the other two are round. Each series also has a size range (e.g., R-16, R-32, R-48). The embodiments of the excluded plastic food containers are depicted in the images below.









ISSUE: The issue presented is whether the excluded plastic food containers infringe any of the relevant patents at issue and therefore fall within the scope of the 514 GEO. LAW AND ANALYSIS: The ITC has authority to conduct investigations into imported articles that allegedly infringe United States patents and impose remedies if the accused products are found to be infringing. See 19 U.S.C. § 1337(a)(1)(B), (b)(1), (d), (f). Specifically, 19 U.S.C. § 1337(d) provides the Commission authority to direct the exclusion from entry of articles found to be infringing. Moreover, when the Commission determines that there has been a violation of section 337, as amended, it may issue two types of exclusion orders: a limited exclusion order and/or a general exclusion order. See Fuji Photo Film Co., Ltd. v. U.S. Int’l Trade Comm’n, 474 F.3d 1281, 1286 (Fed. Cir. 2007); see also Certain Ink Cartridges and Components Thereof, Inv. No. 337-TA-565, Commission Opinion (October 19, 2007). Both types of orders direct CBP to bar infringing products from entering the country. See Yingbin-Nature (Guangdong) Wood Indus. Co. v. U.S. Int’l Trade Comm’n, 535 F.3d 1322, 1330 (Fed. Cir. 2008). A limited exclusion order is “limited” in that it only applies to the specific parties before the Commission in the investigation. Id. In contrast, a general exclusion order bars the importation of infringing products by everyone, regardless of whether they were respondents in the Commission’s investigation. Id. A general exclusion order is only appropriate if two exceptional circumstances apply. See Kyocera Wireless Corp. v. U.S. Int’l Trade Comm’n, 545 F.3d 1340, 1356. A general exclusion order may only be issued if (1) “necessary to prevent circumvention of a limited exclusion order,” or (2) “there is a pattern of violation of this section and it is difficult to identify the source of infringing products.” 19 U.S.C. § 1337(d)(2); see Kyocera, 545 F.3d at 1356 (“If a complainant wishes to obtain an exclusion order operative against articles of non-respondents, it must seek a GEO by satisfying the heightened burdens of §§ 1337(d)(2)(A) and (B).”). As stated above, the 514 GEO issued by the ITC provides, in relevant part, that: Plastic food containers covered by one or more of claim 1 of the ‘420 patent, claim 1 of the ‘138 patent, or claim 1 of the ‘404 patent, or [sic] are excluded from entry for consumption, entry for consumption from a foreign-trade zone, and withdrawal from warehouse for consumption for the remaining term of the patents, except under license of the patent owner or as provided by law. The above language is typical of general exclusion orders, speaking in terms of patent claims rather than parties and/or infringing products. See Yingbin-Nature, 535 F.3d at 1331. The 514 GEO directs CBP to exclude plastic food containers, regardless of their manufacturer or importer, that infringe the patents referenced above. Accordingly, since the ITC issued a general exclusion order based on the additional findings required by 19 U.S.C. § 1337(d)(2), the fact that Protestant was not named as a respondent before the ITC is immaterial to the question of whether the accused plastic food containers fall within the scope of the 514 GEO. The only pertinent question is whether the plastic food containers infringe any of the relevant patents. See Sealed Air Corp. v. U.S. Int’l Trade Comm’n, 645 F.2d 976, 985 (C.C.P.A. 1981) (“An exclusion order operates against goods, not parties.“); see also Vastfame Camera, Ltd. v. U.S. Int’l Trade Comm’n, 386 F.3d 1108, 1114 (Fed. Cir. 2004) (“A general exclusion order broadly prohibits entry of articles that infringe the relevant claims of a listed patent without regard to whether the persons importing such articles were parties to, or were related to parties to, the investigation that led to issuance of the general exclusion order.”). Significantly, the Court of Appeals for the Federal Circuit (“CAFC”) has recognized that issuance of a general exclusion order by the ITC binds named parties and non-named parties alike and shifts to would-be importers (such as Protestant), “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 Protestant to establish that the excluded plastic food containers at issue do not infringe any of the relevant patents and therefore are admissible. UTILITY PATENT INFRINGEMENT Patent infringement determinations for utility patents entail two steps. The first step is to interpret the meaning and scope of the patent claims asserted to be infringed. The second step is to compare the properly construed claims to the accused device. See Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). The first step is a question of law; the second step is a question of fact. See Freedman Seating Co. v. American Seating Company, 420 F.3d 1350, 1357 (Fed. Cir. 2005). In patent law, there are two types of infringement: direct and indirect infringement. Direct infringement includes two varieties: literal infringement and infringement under the doctrine of equivalents. Literal infringement is when every limitation recited in a claim is found in the accused device. See Strattec Security Corp. v. General Automotive Specialty Co., 126 F.3d 1411, 1418 (Fed. Cir. 1997); see also Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1349 (Fed. Circ. 1998) (“An accused device cannot infringe, as a matter of law, if even a single limitation is not satisfied.”). Under the doctrine of equivalents, “a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is ‘equivalence’ between the elements of the accused product or process and the claimed elements of the patented invention.” Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 21 (1997) (citing Graver Tank & Manufacturing Co. v. Linde Air Products Co., 339 U.S. 605, 609 (1950)). The CAFC applies two articulations of the test for equivalence. See Voda v. Cordis Corp., 536 F.3d 1311, 1326 (Fed. Cir. 2008) (explaining that different phrasing may be “more suitable to different cases, depending on their particular facts…”). Under the insubstantial differences test, “[a]n element in the accused device is equivalent to a claim limitation if the only differences between the two are insubstantial.” Id. at 1326 (citing Honeywell International Inc. v. Hamilton Sundstrand Corp., 370 F.3d 1131, 1139 (Fed. Cir. 2004)). Alternatively, under the function-way-result test, an element in the accused device is equivalent to a claim limitation if it “performs substantially the same function in substantially the same way to obtain substantially the same result.” Id. (citing Schoell v. Regal Marine Industries, Inc., 247 F.3d 1202, 1209-10 (Fed. Cir. 2001). However, the doctrine of prosecution history estoppel acts as a constraint to limit the application of the doctrine of equivalents. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 733-41 (“Prosecution history estoppel requires that the claims of a patent be interpreted in light of the proceedings in the PTO during the application process….The doctrine of equivalents allows the patentee to claim those insubstantial alterations that were not captured in drafting the original patent claim but which could be created through trivial changes. When, however, the patentee originally claimed the subject matter alleged to infringe but then narrowed the claim in response to a rejection, he may not argue that the surrendered territory comprised unforeseen subject matter that should be deemed equivalent to the literal claims of the issued patent. On the contrary, by the amendment [the patentee] recognized and emphasized the difference between the two phrases[,]…and the difference which [the patentee] thus disclaimed must be regarded as material.…Prosecution history estoppel ensures that the doctrine of equivalents remains tied to its underlying purpose.”) (internal citations omitted). As for the scope of protection provided by the utility patents at issue in the 514 GEO, it is a “bedrock principle” of patent law that “the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“[W]e look to the words of the claims themselves…to define the scope of the patented invention.”). Furthermore, the CAFC has made clear that claim terms are given their ordinary and customary meaning, which refers specifically to the ordinary and customary meaning that the claim term would have to a person of ordinary skill in the art at the time of the invention. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). The inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation. See Innova, 381 F.3d at 1116. That starting point is based on the well-settled understanding that inventors are typically persons skilled in the field of the invention and that patents are addressed to and intended to be read by others of skill in the pertinent art. See Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1119 (Fed. Cir. 2002). The person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification. See Phillips, 415 F.3d at 1313. Often, this requires an examination of terms that have a particular meaning in a field of art. Id. Since the meaning of a claim term, as understood by persons of skill in the art, is often not immediately apparent, and since patentees frequently act as their own lexicographers, a court or administrative body responsible for making patent infringement determinations should look to sources available to the public that show what a person of skill in the art would have understood a disputed claim term to mean. Id. These sources include, for example, the words of the claims themselves, the remainder of the specification and the prosecution history, along with certain extrinsic evidence in appropriate circumstances. Id. Importantly, as stated by the CAFC in Vitronics and reaffirmed in Phillips, claims must be read in light of the specification, of which they are a part, since the specification “is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Philips, 415 F.3d at 1315 (citing Vitronics, 90 F.3d at 1582); see also Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985) (“The specification is, thus, the primary basis for construing the claims.”). CLAIM 1 OF U.S. PATENT NO. 6,056,138 The subject matter of the ‘138 patent involves a triple seal for use in plastic food containers where the seals are designed to provide enhanced protection against spillage and spoilage. See ALJ Initial Determination (“ALJ ID”) at 11. The ‘138 patent has 5 claims. Only claim 1, an independent claim, was included in the 514 GEO. Claim 1 contains the following limitations and reads as follows: 1. A container having three seals, comprising:  a base having a substantially planar bottom, a base perimeter wall extending substantially vertically upward from said bottom, a base rim extending substantially horizontally outward from said base perimeter wall, and a base sealing edge attached to said base rim; and a lid having a substantially planar top, a lid perimeter wall extending substantially vertically downward from said top, a lid rim extending substantially horizontally outward from said lid perimeter wall, a lid sealing edge an ached [sic] to said lid rim, and a locking lip protruding from said sealing edge; wherein said base sealing edge and said lid scaling edge are molded to be correspondingly mateable to each other and upon mating said base scaling edge and said lid sealing edge form a middle seal and an exterior seal and said base rim and said lid rim form an interior seal, wherein said interior seal has a surface area greater than said middle seal and said exterior seal, said base sealing edge further comprising an inner base edge extending generally vertically upward from said base rim; a middle base sealing edge extending substantially horizontally outward from said inner base edge; and an exterior base sealing edge extending substantially vertically downward from said middle base sealing edge; and said lid sealing edge further comprising an inner lid edge extending generally vertically upward from said lid rim; a middle lid sealing edge extending substantially horizontally outward from said inner lid edge; and an exterior lid sealing edge extending substantially vertically downward from said middle lid sealing edge, said locking lip protruding from said downward exterior lid sealing edge; wherein upon mating of said base and said lid, said base rim and said lid rim form said interior seal and said middle base sealing edge and said middle lid sealing edge form said middle seal and said exterior base sealing edge and said exterior lid sealing edge form said exterior seal. The first step in making a utility patent infringement determination, that of interpreting the claims, has been done by the ALJ for the claim limitations underlined above. Therefore, the second step in the infringement analysis, involving a question of fact, requires CBP to examine the ALJ’s claim constructions and read them onto the excluded plastic food containers to determine whether the containers are infringing. The ALJ construed the underlined claim terms above as follows: mateable: “capable of being joined or fitted together” mating: “the act of being joined or fitted together” middle seal: “the structure formed by the mating of the middle base sealing edge and middle lid sealing edge” exterior seal: “the structure formed by the mating of the exterior base sealing edge and said exterior lid sealing edge” interior seal: “the structure formed by the mating of the base rim and the lid rim” surface area: “a shared surface of the respective seals (i.e., the area of mating of one edge with another edge)” Accordingly, claim 1 of the ‘138 patent, as construed by the ALJ, requires three seals: an exterior seal (formed by the mating of the base sealing edge with the lid sealing edge), an middle seal (also formed by the mating of the base sealing edge with the lid sealing edge), and an interior seal (formed by the mating of the base rim with the lid rim). An embodiment of this patented invention is depicted in Figure 5 of the ‘138 patent, as shown below. The various seals have been labeled for illustrative purposes. As is apparent from Figure 5, the three seals are formed when the base sealing edge or base rim come into contact with the lid sealing edge or lid rim.

 Protestant argues that the excluded plastic food containers do not meet certain limitations above. Specifically, Protestant states that the ‘138 patent requires an interior seal formed by the mating of the base and lid rims and that this limitation is lacking in the excluded plastic food containers. See Protest at 2-4. The reason asserted for why this claim limitation is not met by the excluded plastic food containers is that when the lid and base are mated, the base rim does not come into contact with the lid rim and therefore the excluded plastic food containers are not capable of forming the required interior seal. As the digital images below of a dissected container reveal, the base rim and the lid rim of the container do not come into contact when the base and lid are mated and, therefore, the container does not form an interior seal. This is apparent in both images where the arrows indicate the section where the base rim and lid rim do not come into contact and therefore are not capable of forming the interior seal.

Moreover, based on visual inspection of the remaining container embodiments, it is apparent that none of the models of excluded plastic food containers exhibit the interior seal described above. Accordingly, none of the excluded plastic food containers satisfy this claim limitation and therefore they cannot be found to literally infringe claim 1 of the ‘138 patent. Furthermore, since the interior seal is entirely lacking, there is nothing that performs this function, which establishes that the excluded plastic food containers cannot infringe under the doctrine of equivalents. Lastly, since claim 1 is the only claim of the ‘138 patent at issue in the 514 GEO, the excluded plastic food containers are not covered by this patent. CLAIM 1 OF U.S. PATENT NO. 6,196,404 The subject matter of the ‘404 patent involves a triple seal with protrusions for use in plastic food containers to provide enhanced protection against spillage and spoilage. See ALJ ID at 16. The ‘404 patent has 9 claims. Only claim 1, an independent claim, was included in the 514 GEO. Claim 1 contains the following limitations and reads as follows: 1. A container having three seals, comprising: a base having a substantially planar bottom, a base perimeter wall extending substantially vertically upward from said bottom, a base rim extending substantially horizontally outward from said base perimeter wall, and a base sealing edge attached to said base rim; and a lid having to a substantially planar top, a lid perimeter wall extending substantially vertically downward from said top, a lid rim extending substantially horizontally outward from said lid perimeter wall, a lid sealing edge attached to said lid rim, a protrusion attached to said lid sealing edge, and a locking lip protruding from said sealing edge; wherein said base sealing edge and said lid sealing edge are molded to be correspondingly mateable to each other and upon mating said base sealing edge and said lid sealing edge form a middle seal and an exterior seal and said base rim and said lid rim form an interior seal and further wherein said protrusion pushes said base sealing edge against said lid sealing edge. Again, as stated above, the first step in making a utility patent infringement determination, that of interpreting the claims, has been done by the ALJ for certain claim limitations. Therefore, the second step requires CBP to examine the relevant claim constructions and read them onto the excluded plastic food containers. The ALJ construed the underlined claim terms above as follows: protrusion: “a projection from a surrounding surface” mateable: *same as the ‘138 patent term construction mating: *same as the ‘138 patent term construction middle seal: *same as the ‘138 patent term construction exterior seal: *same as the ‘138 patent term construction interior seal: *same as the ‘138 patent term construction As with the ‘138 patent, Protestant argues that the excluded plastic food containers do not infringe the ‘404 patent because claim 1 requires the base and lid rim to form an interior seal upon mating. See Protest at 5. While claim 1 of the ‘404 patent and claim 1 of the ‘138 patent are not identical (the former, for example, requires a “protrusion” that pushes the base sealing edge against said lid sealing edge), they both contain limitations requiring an interior seal that is formed by the mating of the container’s base rim with the lid rim. As shown above, when the excluded plastic food container’s base is mated with the lid, the base rim and the lid rim do not come into contact and therefore cannot form the required seal. For this reason, as above, the excluded plastic food containers do not infringe claim 1 of the ‘404 patent either literally or under the doctrine of equivalents. DESIGN PATENT INFRINGEMENT The starting point for any proper examination of design patent law, as made clear by the CAFC, is the Supreme Court’s decision in Gorham Co. v. White, 81 U.S. 511 (1871); see also Egyptian Goddess, Inc. v. Swisa, 543 F.3d 665, 670 (Fed. Cir. 2008) (en banc). The Gorham Court, in reviewing the infringement allegation before it, stated that the test of identity of design “must be sameness of appearance, and mere difference of lines in the drawing or sketch…or slight variances in configuration…will not destroy the substantial identity.” Gorham, 81 U.S. at 526-27. The Supreme Court then established the test for infringement that would be used in future design patent cases: “[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first patented is infringed by the other.” Id. at 528. The Supreme Court concluded, while addressing the merits of the specific case before it, that “whatever differences there may be between the plaintiff’s design and those of the defendant in details of ornament, they are still the same in general appearance and effect, so much alike that in the market and with purchasers they would pass for the same thing—so much alike that even persons in the trade would be in danger of being deceived.” Id. at 531. Since that time, the test provided by the Supreme Court has generally been referred to as the “ordinary observer” test and has been recognized by lower courts, including the CAFC, as the proper standard for making determinations involving design patent infringement. See Egyptian Goddess, 543 F.3d at 670. Moreover, the CAFC reaffirmed the continuing vitality of this approach to design patent determinations when it reheard Egyptian Goddess en banc and produced an opinion addressing the proper legal standard to be used in such cases. In the unanimous opinion before the en banc court, the CAFC provided an overview of design patent decisions that followed the standard articulated in Gorham and commented that these intervening cases are properly read as applying a version of the ordinary observer test in which the ordinary observer is deemed to view the differences between the patented design and the accused product in the context of the prior art. Id. at 676. Additionally, Egyptian Goddess repudiated the “point of novelty” test as the appropriate standard for design patent infringement determinations. This test, which required a trial court to examine the prior art and the claimed design to identify one or more points of novelty that distinguish the claimed design from the prior art, and thereby determine whether these points of novelty were included in the accused design, occasionally resulted in a contentious analysis. See Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372, 1383 (Fed. Cir. 2009).    For example, one problem with the analysis under the “point of novelty” test was that it “proved difficult to apply in cases in which there are several different features that can be argued to be points of novelty in the claimed design. In such cases, the outcome of the case can turn on which of the several candidate points of novelty the court or fact-finder focuses on. The attention of the court may therefore be focused on whether the accused design has appropriated a single specified feature of the claimed design, rather than on the proper inquiry, i.e., whether the accused design has appropriated the claimed design as a whole.” Egyptian Goddess, 543 F.3d at 677 (emphasis added). Furthermore, the “point of novelty” test was found to be problematic since “the more novel the design, and the more points of novelty that are identified, the more opportunities there are for a defendant to argue that its design does not infringe because it does not copy all of the points of novelty, even though it may copy most of them and even though it may give the overall appearance of being identical to the claimed design. In such cases, a test that asks how an ordinary observer with knowledge of the prior art designs would view the differences between the claimed and accused designs is likely to produce results more in line with the purposes of design patent protection.” Id. Accordingly, Egyptian Goddess held “that the ‘point of novelty’ test should no longer be used in the analysis of a claim of design patent infringement….Instead, in accordance with Gorham and subsequent decisions, we hold that the ‘ordinary observer’ test should be the sole test for determining whether a design patent has been infringed. Under that test, as this court has sometimes described it, infringement will not be found unless the accused article ‘embod[ies] the patented design or any colorable imitation thereof’.” Id. at 678 (internal citations omitted). Significantly, the CAFC continued that "[i]n some instances, the claimed design and the accused design will be sufficiently distinct that it will be clear without more that the patentee has not met its burden of proving the two designs would appear ‘substantially the same’ to the ordinary observer, as required by Gorham. In other instances, when the claimed and accused designs are not plainly dissimilar, resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art….Where there are many examples of similar prior art designs,…differences between the claimed and accused designs that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer who is conversant with the prior art.” Id. Egyptian Goddess also stressed that “although the approach [adopted] will frequently involve comparisons between the claimed design and the prior art, it is not a test for determining validity, but is designed solely as a test of infringement. Thus, as is always the case, the burden of proof as to infringement remains on the patentee. However, if the accused infringer elects to rely on the comparison prior art as part of its defense against the claim of infringement, the burden of production of that prior art is on the accused infringer….Under the ordinary observer test,…it makes sense to impose the burden of production as to any comparison prior art on the accused infringer. The accused infringer is the party with the motivation to point out close prior art, and in particular to call to the court’s attention the prior art that an ordinary observer is most likely to regard as highlighting the differences between the claimed and accused design. Regardless of whether the accused infringer elects to present prior art that it considers pertinent to the comparison between the claimed and accused design, however, the patentee bears the ultimate burden of proof to demonstrate infringement by a preponderance of the evidence.” Id. at 678-79. However, in this post-issuance exclusion order context, Protestant bears both the burden of proof and the burden of production (should it elect to rely on any comparison prior art) 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. Importantly, the CAFC has also held that the test for infringement is whether the accused product is substantially the same as the patentee's design claimed in the patent, and not the commercial embodiment of the claimed design. See Sun Hill Indus. v. Easter Unlimited, 48 F.3d 1193, 1196 (Fed. Cir. 1995)  (“Such a test [using the commercial embodiment] risks relying on unclaimed and therefore irrelevant features as grounds for similarity or difference. It is legal error to base an infringement finding on features of the commercial embodiment not claimed in the patent.”). Accordingly, it is the design found in the drawings of the ‘420 patent, and not the commercial embodiment of Complainant’s plastic food containers, that must be used for the infringement determination. Lastly, while the CAFC has noted that design patent protection is narrow in scope, covering only what is shown in the drawings, the patent design and accused article do not need to be identical for the accused to be infringing. See In re Mann, 861 F.2d 1581, 1582 (1988), but compare with OddzOn Products v. Just Toys, 122 F.3d 1396, 1405 (Fed. Cir. 1997) (“The patented and accused designs do not have to be identical in order for design patent infringement to be found.”); see also Payless Shoesource, Inc. v. Reebok Int’l Ltd., 998 F.2d 985, 991 (Fed. Cir. 1993) (“[M]inor differences between a patented design and an accused article’s design cannot, and shall not, prevent a finding of infringement.”). U.S. PATENT NO. D 415,420 The ‘420 design patent is entitled “Double Sealed Rim Stackable Container” and includes six drawings of a round, two-piece food container from various angles. See ALJ ID at 8. The ‘420 patent further indicates that what is claimed here consists of “[t]he ornamental design for a double sealed rim stackable container, as shown and described.” The six drawings from the ‘420 patent are included below, with their corresponding figure designations.




 Before moving further, it warrants mentioning that it is not entirely clear whether (and if so, to what extent) the analysis pertaining to the identification of a specifically designated ordinary observer, as developed in cases such as Arminak (i.e., involving the question whether the proper ordinary observer is a commercial or industrial buyer of component parts that will be assembled into a retail product or a retail purchaser of the retail product incorporating the component parts), survived the Egyptian Goddess pronouncement that the proper standard for design patent cases is from the perspective of an ordinary observer who is familiar with the prior art. See Arminak & Assocs. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314, 1321-25 (Fed. Cir. 2007). Furthermore, the ITC did not identify who the appropriate ordinary observer should be in this specific context, although Protestant argues that the ordinary observer would be a restaurant owner who purchases such containers. See Protest at 6. To the extent that determining the identification of the ordinary observer (other than one familiar with the prior art) survived Egyptian Goddess, this determination adopts the previous finding from HQ H004451 (September 25, 2009) that the ordinary observer is not an end-using consumer, but a commercial purchaser of plastic food containers who works in the foodservice industry and has, therefore, some familiarity with plastic food containers and the relevant prior art. Regardless, as stressed in HQ H004451, this hypothetical individual does not rise to the level of an expert in plastic food containers that would be expressly excluded from the category of persons eligible to be ordinary observers. See Gorham, 81 U.S. at 527-28 (“[T]he only remaining question upon this part of the case is, whether it is essential that the appearance should be the same to the eye of an expert. The court below was of opinion that the test of a patent for a design is not the eye of an ordinary observer. The learned judge thought there could be no infringement unless there was ‘substantial identity’ in view of the observation of a person versed in designs in the particular trade in question….With this we cannot concur. Such a test would destroy all the protection which the act of Congress intended to give. There never could be piracy of a patented design, for human ingenuity has never yet produced a design, in all its details, exactly like another, so like that an expert could not distinguish them….Experts, therefore, are not the persons to be deceived.”). The next step is to consider the claim construction for the ‘420 patent. The ITC did not provide a claim construction in words for the design of the ‘420 patent. However, as the CAFC has noted, there is no prescribed form that a design patent claim construction must take. See Egyptian Goddess, 543 F.3d at 679. In fact, the CAFC has recently re-emphasized, while reviewing a case in the exclusion order context, that “[d]epictions of the claimed design in words can easily distract from the proper infringement analysis of the ornamental patterns and drawings” and further admonished the “misplaced reliance on a detailed verbal description of the claimed design [which] risks undue emphasis on particular features of the design rather than examination of the design as a whole.” Crocs Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1302 (Fed. Cir. 2010) (emphasis added). As indicated by the CAFC, design patents are claimed as shown in their drawings and, therefore, a court or administrative body tasked with making an infringement determination is not required to provide a detailed verbal description of the claimed design. See Egyptian Goddess, 543 F.3d at 679 (citing Contessa Food Products v. Conagra, Inc., 282 F.3d 1370, 1377 (Fed. Cir. 2002) for the proposition that the trial court did not err in construing the asserted design claim as “a tray of a certain design as shown in Figures 1-3”); see also Crocs Inc. v. Int’l Trade Comm’n, 598 F.3d at 1302-03. In fact, the Supreme Court has recognized that a design is better represented by an illustration “than it could be by any description and a description would probably not be intelligible without the illustration.” Dobson v. Dornan, 118 U.S. 10, 14 (1886). Taking the above into consideration, as well as the construction provided in HQ H004451, the design claim is construed as a two-piece, round container of a certain design as shown in Figures 1-6. Accordingly, the analysis below will examine each of the product models to determine infringement while employing this claim construction. R Series Upon visual inspection and as shown in the comparative images below, it is the determination here that the patented design and the excluded plastic food containers represented by the R series are not plainly dissimilar, particularly when taking into consideration the CAFC’s repeated pronouncement that the proper inquiry for design patent determinations is “whether the accused design has appropriated the claimed design as a whole.” Egyptian Goddess, 543 F.3d at 677; see also Crocs Inc. v. Int’l Trade Comm’n, 598 F.3d at 1303 (“[T]he deception that arises is a result of the similarities in the overall design, not of similarities in ornamental features in isolation.”) (citing Amini Innovation Corp. v. Anthony California, Inc., 439 F.3d 1365 (Fed. Cir. 2006)) (emphasis added).








As shown above, both the patented design and the excluded R series embodiment are two-piece, round containers consisting of a similarly configured base and lid. Furthermore, the base and lid of both, when mated to one another, create the impression of a flying saucer-like design (through the elevated portion of the lid’s top, shown particularly in Figures 2, 5, and 6). The R series container also exhibits the proportionality of the patented design, where the base is disproportionately larger and represents roughly two-thirds of the mated container, while the uppermost portion of the container’s lid roughly represents the remaining third (as shown in Figure 2). Moreover, as shown in the comparative images, the excluded R series plastic food container exhibits a lid design that, when viewed from above, is similar to the design depicted in Figure 3 of the ‘420 patent. The lid of the R series plastic food container has a number of equally spaced circular elements near the outer edge of the container and also has an elevated, central circular design element, all of which, despite minor alterations, are similar to the design in the ‘420 patent. Specifically, the lid of the R series plastic food container, when viewed from directly above, has six concentric circular elements, moving out from the center, which, although spaced somewhat differently, is the same number of concentric circles found at the ITC for the lid depicted in the figures of the ‘420 patent. See Figure 3 of the ‘420 patent; see also Motion No. 514-2, Supplemental Declaration of Dr. Melvin L. Druin, dated September 1, 2004, Table 3. The ALJ at the ITC, in his infringement analysis, confirmed the conclusions reached by Complainant’s expert, who opined on features of the ‘420 patent’s design and compared them to the containers accused of infringement. See ALJ ID at 8-9 (“Newspring has also provided pictures of an exemplary Jiangsu product depicted side-by-side with the patent drawings. Druin, in his supplemental declaration, and who has considerable experience with consumer reaction to plastic container design, opines that an ordinary observer would believe that the round Jiangsu products (Model Nos. 729, 723, 718) are of substantially the same design as the one embodied in the ‘420 patent….The administrative law judge gives those conclusions some weight in view of Druin’s experience. Moreover, the conclusions are confirmed on a review of the Jiangsu products and comparison to the patent drawings.”) (emphasis added) (internal citations omitted). Certainly, as noted above, there are some differences between the design of the ‘420 patent and the excluded R series plastic food containers (i.e. the larger size of the central circular design element of the excluded container and its smaller space between the first and second circular element), such that the two are not identical. However, as indicated above, the patented design and accused article do not need to be identical for the accused to be infringing. See OddzOn Products, 122 F.3d at 1405. Instead, the accused article need only appropriate the claimed design as a whole such that an ordinary observer, with knowledge of the prior art, would consider the patented and accused designs to be substantially the same and thereby be deceived into purchasing the one while thinking it is the other. See Egyptian Goddess, 543 F.3d at 678. The determination here is that this test has been met, thereby establishing infringement. Instead of citing prior art references to highlight features of the design exhibited by the patented drawings or the excluded R series container that may appear in the prior art, Protestant attempts to counter the overall similarities noted above by pointing out specific instances where the patented design of the ‘420 patent and the R series container differ, albeit through fairly minor distinctions. Despite recognizing that “[t]he touchstone of infringement is similarity in overall appearance,” Protestant seeks to establish through these minor distinctions that it is “manifest that there are multiple significant differences in appearance between the patented design and the configurations of the subject products.” Protest at 7 (emphasis in original). Protestant provides a table with its submission in order to compare, in words, the patented design with the design of its containers in order to establish the alleged differences. However, at no point does Protestant compare the patented drawings with pictures of the excluded plastic food containers. Furthermore, as previously noted, the differences offered, at best, represent minor changes that do not refute the overall similarity established by the side-by-side images above. Specifically, Protestant places emphasis on the fact that the container wall in the patented design is smooth and does not have a step, while the R series has an inward step. See Protest at 8, Table 1. Differences such as this are determined to be a minor alteration and this particular difference was present in one of the plastic food containers found to infringe at the ITC. Protestant also alleges that the lid design of the ‘420 patent, when looking down from above, has eight concentric circle elements and that the R series lid has seven concentric circles. Regardless of whether this would be considered a significant difference affecting the overall similarity between the two, as referenced above, it has been established that both the lid design of the ‘420 patent and the lid of the R series container, in fact, have six concentric circles and therefore this does not represent a difference between the two. The remaining alleged differences cited by Protestant are found to be minor, at best. Additionally, not only are these alleged differences found to be minor, but Protestant’s entire analysis places too much emphasis on individual features in isolation instead of focusing on the design as a whole, as directed by the CAFC. See Crocs, 598 F.3d at 1303-04 (“Without a view to the design as a whole, the Commission used minor differences between the patented design and the accused products to prevent a finding of infringement. In other words, the concentration on small differences in isolation distracted from the overall impression of the claimed ornamental features.”). In order to avoid concentrating on small differences in isolation that might distract from the overall impression of the claimed ornamental features, the analysis above focuses on the side-by-side pictorial comparison of the drawings from the ‘420 patent and images of the R series container, and through this approach, establishes infringement. Lastly, if this is a case that cannot simply be resolved by examining the differences between the patented design and the excluded R series containers, then it is a case where resolution of the question whether the ordinary observer would consider the two designs to be substantially the same would benefit from a comparison of the claimed and accused designs with the prior art. See Egyptian Goddess, 543 F.3d at 678. However, Protestant has elected not to provide any prior art references and therefore has not met its burden of production regarding this non-infringement defense. Accordingly, the determination here is that the R series containers infringe the ‘420 patent. Y Series Turning to the design of the Y series container, as before, upon visual inspection and as established in the comparative images below, it is the determination here that the patented design and the excluded plastic food containers represented by the Y series are not plainly dissimilar.








As established above, both the patented design and the excluded Y series embodiment are two-piece, round containers consisting of a similarly configured base and lid. The base and lid, when mated, create the impression of the flying saucer-like design referred to above. The Y series container also exhibits the proportionality of the patented design (i.e., a base that is larger and represents roughly two-thirds of the mated container, while the uppermost portion of the container’s lid roughly represents the remaining third). Likewise, as shown in the comparative images, the excluded Y series plastic food container exhibits a lid design that, when viewed from above, is similar to the design depicted in Figure 3 of the ‘420 patent. The lid of the Y series plastic food container consists of a number of concentric circles that are equally spaced near the outer edge of the container and have greater space in between the circles that are closer to the lid’s center. However, unlike the patented design, the Y series only has 5 concentric circle elements and creates a slightly different impression with its central circular design element. The question is whether these differences are enough to counter the overall similarity between the Y series and the patented design. Despite the differences noted above, the Y series is determined not to avoid infringement when compared with the drawings of the ‘420 design patent. As stressed throughout this determination, the appropriate standard is whether the accused article has appropriated the claimed design as a whole, while noting that minor differences in line or configuration will not destroy a finding of substantial similarity. As shown in the images and as detailed in the description above, the design of the Y series container is substantially the same as the design shown in the drawings of the ‘420 patent. Moreover, it is significant to point out that the ALJ at the ITC found infringement of a round, two-piece plastic food container that entirely lacked an elevated central circular design element. Accordingly, the fact that the Y series container does not have an elevated central circular design element does not support a finding of non-infringement. Also, the container found to infringe at the ITC exhibited steps on the outer base wall, similar to the Y series container. See ALJ ID at 9 (citing to Druin Supplemental Declaration Paragraphs 11-12, Figure 1 and Table 3; Staff’s Response, Attachment A; and Comparison of CP-4-6 to Complaint with Exhibit 1 to Motion No. 514-2). As this agency is bound by the ALJ’s infringement findings and uses them when analyzing the scope of a relevant patent claim, it is the determination here that the excluded Y series container, which exhibits a central circular design element, is covered by the ‘420 patent and therefore falls within the scope of the 514 GEO. Accordingly, Protestant has not met its burden and the Y series plastic food containers were properly excluded from entry. Lastly, in its verbal description in Table 1, Protestant appears to impermissibly use the commercial embodiment of Complainant’s plastic food container when making its comparison to point out alleged differences between the Y series container and the patented design. For example, when describing the lid’s patented design, Protestant refers to a small radius shoulder between what it considers to be the fourth and fifth concentric circles. See Protest at 13, Table 1. However, while the commercial embodiment of Complainant’s plastic food container does contain such a radius shoulder, none of the drawings in the ‘420 patent depict such an incline. Moreover, Complainant’s expert at the ITC did not make any reference to a radius shoulder during his testimony before the ITC and, as noted above, this testimony regarding the ornamental features of the ‘420 patent was confirmed by the ALJ in his infringement determination. See ALJ ID at 9. As indicated above, “[i]t is legal error to base an infringement finding on features of the commercial embodiment not claimed in the patent.” Accordingly, Protestant’s analysis is rejected to the extent it relies on differences found in the commercial embodiment that are not present in the drawings of the ‘420 patent and focuses, incorrectly, on aspects of the containers in isolation instead of their overall ornamental design. Accordingly, Protestant has not meet its burden to establish non-infringement and therefore the Y series container is determined to infringe the ‘420 patent and therefore fall within the scope of the 514 GEO. F Series Upon visual inspection, it is the determination here that the patented design and the excluded plastic food containers represented by the rectangular F series are plainly dissimilar and that the latter has not appropriated the claimed design as a whole, such that no ordinary observer would find the excluded containers to be substantially the same as the patented design. Accordingly, no reference to prior art containers is necessary here since this is a case, as discussed in Egyptian Goddess, where the claimed design and the accused design are sufficiently distinct that it is clear, without more, that the two designs would not appear substantially the same to the ordinary observer, as required by Gorham. RE Series For the reasons provided above, the rectangular containers represented by the RE series container are also found not to infringe the ‘420 patent. HOLDING: The following round plastic food containers were properly excluded from entry because they embody the ‘420 patented design or a colorable imitation thereof and therefore fall within the scope of the 514 GEO: the R series and the Y series. The other models of plastic food containers do not infringe any of the patents contained in the 514 GEO and therefore should be released. Accordingly, you are instructed to grant the protest in part and to deny the protest in part with regard to the infringing models of round plastic food containers referred to above. In accordance with the Protest/Petition Processing Handbook (CIS HB, December 2007), you are to mail this decision, together with the Customs Form 19, to the Protestant no later than 60 days from the date of this letter. Any reliquidation of the entry in accordance with the decision must be accomplished prior to mailing of the decision. Sixty days from the date of the decision, Regulations and Rulings of the Office of International Trade will make the decision available to CBP personnel, and to the public on the CBP Home Page on the World Wide Web at www.cbp.gov, by means of the Freedom of Information Act, and other methods of public distribution. Sincerely, Charles R. Steuart Branch Chief Intellectual Property Rights Branch