Protest 3001-11-100146; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-691; Certain Inkjet Supplies and Components Thereof; General Exclusion Order in Investigation No. 337-TA-565; Certain Ink Cartridges and Components Thereof

HQ H164838 December 6, 2013 OT:RR:BSTC:IPR H164838 WMW CATEGORY: 19 U.S.C. § 1337; Unfair Competition Port Director U.S. Customs and Border Protection 1000 Second Ave, Suite 2100 Seattle, WA 98104s RE: Protest 3001-11-100146; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-691; Certain Inkjet Supplies and Components Thereof; General Exclusion Order in Investigation No. 337-TA-565; Certain Ink Cartridges and Components Thereof Dear Port Director: This is in response to the application for further review of the above-referenced protest filed by Nano Business & Technology, Inc. (“Protestant”) challenging the exclusion from entry for consumption of certain ink cartridges, ink jet supplies and inkjet cartridges determined by the port to fall within the scope of the above-referenced general exclusion orders issued by the U.S. International Trade Commission (“ITC” or “Commission”). Investigation 337-TA-565 ITC Inv. No. 337-TA-565 (“565 GEO”) was instituted based on a complaint filed by Epson Portland, Inc. of Oregon; Epson America, Inc. of California; and Seiko Epson Copr. Of Japan (“Epson”), which named 24 companies located in China, Germany, Hong Kong, Korea, and the United States, as respondents to the investigation. See Protest, Exhibit 1 at 3 (dated April 4, 2008); see also Administrative Law Judge’s (“ALJ”) Final Initial and Recommended Determination (“ID”) at 1-7 (dated March 30, 2007). The ALJ found a violation of section 337 of the Tariff Act of 1930, as amended, which was affirmed in part by the Commission on review. See Certain Ink Cartridges and Components Thereof, Inv. No. 337-TA-565, Commission Opinion (“ITC CO”) at 1 (dated November 7, 2007). The Commission decided to provide relief in the form of a general exclusion order that bars the entry for consumption into the United States of ink cartridges that infringe claim 7 of U.S. Patent No. 5,616,957; claims 18, 81, 93, 149, and 164 of U.S. Patent No. 5,622,439; claims 83 and 84 of U.S. Patent No. 5,158,377; claims 19 and 20 of U.S. Patent No. 5,221,148; claim 1 of U.S. Patent no. 5,488,401; claims 1, 2, 3, and 9 of U.S. Patent No. 6,502,917; claims 1, 31, and 34 of U.S. Patent no. 6,550,902; claims 1, 10, and 14 of U.S. Patent no. 6,955,422; claim 1 of U.S. Patent No. 7,008,053; or claim 21 of U.S. Patent No. 7,001,397. Id. at 1-2; 565 General Exclusion Order (dated October 19, 2007). Subsequent to the issuance of the 565 GEO, U.S. Customs and Border Protection (“CBP”) excluded from entry ink cartridges of Protestant, for which the ITC, on March 30, 2011, issued a seizure and forfeiture order against Protestant pursuant to 19 U.S.C. § 1337(i). Investigation 337-TA-691 ITC Inv. No 337-TA-691 (“691 GEO”) was instituted based on a complaint filed by Hewlett-Packard of Palo Alto, California (“HP”), which named 11 companies located in China and the United States, as respondents to the investigation. See Protest, page 1 (dated September 23, 2009). The ALJ found a violation of section 337 of the Tariff Act of 1930, as amended, which was affirmed in part by the Commission on review. See Certain Ink Cartridges and Components Thereof, Inv. No. 337-TA-691, Commission Opinion (“ITC CO”) at 1 (dated January 28, 2011). The Commission decided to provide relief in the form of a general exclusion order that bars the entry for consumption into the United States of ink cartridges that infringe claim 6 and 9 of U.S. Patent No. 6,089,687 and claims 1, 5, and 6 of U.S. Patent No. 6,264,301. Id. at 1; 691 General Exclusion Order (dated January 28, 2011). Subsequent to the issuance of the 691 GEO, CBP excluded from entry ink jet cartridges of Protestant, for which the ITC, on March 30, 2011, issued a seizure and forfeiture order against Protestant pursuant to 19 U.S.C. § 1337(i). FACTS: On March 14, 2011, CBP officials at the port of Seattle issued a notice to Protestant indicating that a shipment of ink cartridges and inkjet cartridges was excluded from entry for consumption because the articles in question were covered by the 565 GEO and 691 GEO. See CBP Exclusion Notice (listing the date of denial of entry as March 11, 2011). On April 4, 2011, pursuant to 19 U.S.C. § 1514(c), as implemented by 19 C.F.R. Part 174, acting pro se, Protestant timely filed a protest challenging the exclusion and the determination that the excluded articles fell within the scope of the 565 GEO and 691 GEO. Specifically, Protestant argues that the excluded products are not violative because they are covered by patents owned by Protestant and therefore do not infringe the claims of the patents listed in the respective GEOs. See Protest, at 2. (April 4, 2011). This protest was given the reference number 3001-11-100146 by CBP. On May 5, 2011, CBP personnel from the Seattle Area Port submitted a request for internal advice to the Intellectual Property Rights Branch regarding this protest filed on April 4, 2011. On May 5, 2011, Allports Inc. (“Allports”), customs broker for Protestant and under 19 C.F.R. Part 174.3, acting as attorney in fact on its behalf, submitted a protest relating to the exclusion notice issued on March 14, 2011. This protest referred to the previous protest filed on April 4, 2011 for reasons for challenging the exclusion. See Protest, (May 5, 2011). On May 10, 2011, CBP officials at the port of Portland issued a notice to Protestant indicating that a separate shipment of ink tanks was excluded from entry for consumption because the articles in question are covered by the 565 GEO and 691 GEO. See CBP Exclusion Notice (listing the date of denial on entry as May 9, 2011). Also on May 10, 2011, Protestant submitted a protest reiterating that the products excluded from entry at Portland practice patents owned by Protestant, and as such are not subject to the 565 GEO and 691 GEO. On August 7, 2011, CBP officials at the port of Portland issued a notice to Protestant indicating that another shipment of ink tanks was excluded from entry for consumption because the articles in question are covered by the 691 GEO. See CBP Exclusion Notice (August 7, 2011). Below are images of the Protestant’s products at issue: HP – Compatible Cartridges
The Nano Business & Technology 02 Cartridge or NDH 02 Tank with an Auto-Reset-Chip (ARC).
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The Nano Business & Technology 02 Cartridge or NDH 02 Tank (top view).
The Nano Business & Technology Refillable HP 940 Cartridge or NDE Tank.
The Nano Business & Technology Refillable HP 940 Cartridge or NDE Tank (top view) Na NNN
The Nano Business & Technology Refillable HP 940 Cartridge or NDE Tank (bottom view) Epson – Compatible Cartridges

The subject Protestant Epson compatible NBT ink cartridge models R280/IC50 and R320/IC32
The Protestant Epson compatible NBT ink cartridge ISSUE: The issue presented is whether the excluded ink cartridges and inkjet cartridges imported by Protestant infringe any of the relevant patents at issue and thereby fall within the scope of the ITC’s general exclusion order in Investigation No. 337-TA-691 or the ITC’s general exclusion order in Investigation No. 337-TA-565. LAW AND ANALYSIS: 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. One variety of direct infringement is literal infringement. 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.”). However, a dependent claim cannot be found to infringe if the independent claim from which it depends is not found to infringe. See Becton Dickinson & Co. v. C.R. Bard Inc., 922 F.2d 792 (Fed. Cir. 1990) (“The holding of noninfringement of claim 1 applies as well to all claims dependent on claim 1.”). As for the scope of protection provided, 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, 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.” Phillips, 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.”). While continuing to be mindful of this fine line between interpretation and importation, Phillips explains that: [T]he line between construing terms and importing limitations can be discerned with reasonable certainty and predictability if the court’s focus remains on understanding how a person of ordinary skill in the art would understand the claim terms. For instance, although the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.…In particular, we have expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment….That is not just because section 112 of the Patent Act requires that the claims themselves set forth the limits of the patent grant, but also because persons of ordinary skill in the art rarely would confine their definitions of terms to the exact representations depicted in the embodiments. Phillips, 415 F.3d at 1323 (internal citations omitted). Accordingly, the framework above is provided for interpreting patent claims and reading those claims, as properly construed, onto an accused device. Pursuant to the Tariff Act of 1930, 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, 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 the 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 importation of the infringing products by everyone, regardless of whether they were respondents in the Commission’s investigation. Id. A general exclusion order is 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 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).”). Additionally, a seizure and forfeiture order issued under 19 U.S.C. § 1337(i) directs CBP to seize and forfeit articles imported in violation of an exclusion order when the importer previously had articles denied entry and received notice that seizure and forfeiture would result from any future attempt to import covered articles. The 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 Protestant to establish that the devices at issue are not covered by one or more of the claims from the patents listed in the 565 GEO and the 691 GEO. ITC Inv. No. 337-TA-691 Claims 6 and 9 of the ‘687 Patent The ‘687 patent, owned by HP, is entitled “Method and Apparatus for Specifying Ink Volume in an Ink Container” and includes several drawings, Figures 2A & 2B of which depict a removable ink container (18), a ink reservoir (28) for storing ink therein, an electrical storage device (38) and a plurality of electrical contacts (40) which are connected to the electrical storage device. The figure is provided below along with its corresponding figure designations.
FIGS. 2A and 2B (sectional) depict a schematic representation of the Hewlett Packard inkjet printing system described in the ‘687 patent, illustrating a removable ink container and printhead each of which contain an electrical storage device. Independent claims 6 and 9 of the ‘687 patent were the only claims of the ‘687 patent included in the ‘691 GEO. Claim 6 contains a preamble and four limitations; it is directed toward an ink container comprising an electrical storage device. Claim 9 contains a preamble and three limitations; it is directed toward an electrical storage device for use with an ink container. These claims read as follows: 6). An ink container for providing ink to an ink-jet printer, the ink container comprising: a reservoir containing a supply of ink; and an electrical storage device for providing ink container parameters to the inkjet printer, the electrical storage device containing: an ink scale parameter for selecting an ink volume range from a plurality of ink volume ranges; and a fill proportion parameter for specifying a fill proportion for the selected ink volume range associated with the supply of ink in the reservoir; wherein an ink volume associated with the supply of ink within the reservoir is determined based on the fill proportion parameter and the ink scale parameter. 9). An electrical storage device for use with an ink container for providing information to an ink-jet printer related to an ink volume associated with the ink container, the electrical storage device comprising: an ink scale parameter for selecting an ink volume range from a plurality of ink volume ranges; and a fill proportion parameter for specifying a fill proportion for the selected ink volume range; wherein the ink volume associated with the ink container is determined based on the fill proportion parameter and the ink scale parameter. PROTESTANT’S ARGUMENT The ink tank models excluded in relation to the 691 GEO are the “02” model and “NDE” model. Protestant argues that its “inkjet cartridges” are not covered by the patent claims under the 691 GEO and were improperly excluded from entry. The reason asserted by the Protestant is that the “[genuine HP products] are for one-time use only and have to be replaced or discarded.” Specifically, Protestant contends that unlike original HP cartridges, its inkjet cartridges are both reusable and refillable and that its products feature resettable or automatically refreshing chips. However, the ‘687 patent contains no claim limitations related to either multiple or single use. Protestant further states, of its inkjet cartridges, that “the major feature is [that] ink level monitor[ing] of the ink cartridge can be automatically refreshed by a chip resetter; so that the cartridge can be refilled and reused.” Protestant asserts that the technology used in its HP compatible inkjet cartridges stems from its patent, U.S. Patent 7,192,109. Protestant thus concludes that the technology used in its products do not infringe the claims of the ‘687 patent (or the ‘301 patent). As an initial matter, a patentable improvement to a previously patented invention does not authorize the holder of the patented improvement to practice the original patented technology. See Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 43, 74 L. Ed. 147, 50 S. Ct. 9 (1929) (“Nor is the infringement avoided, under the controlling weight of the undisputed facts, by any presumptive validity that may attach to the [subsequently granted] patent by reason of its issuance after the [previously granted] patent.”); see also Hoechst Celanese Corp. v. BP Chemicals, Ltd., 78 F.3d 1575, 1582 (Fed. Cir. 1996)(“The fact of separable patentability presents no legal or evidentiary presumption of noninfringement.”); General Electric v. U.S. Int’l Trace Comm’n, 685 F.3d 10