Protest 2704-12-100695; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-514; Certain Plastic Food Containers

HQ H208797 January 7, 2013 OT:RR:BSTC:IPR H208797 AvH CATEGORY: 19 U.S.C. § 1337; Unfair Competition Port Director U.S. Customs and Border Protection 301 E. Ocean Blvd.Suite 1400 Long Beach, CA 90802 RE: Protest 2704-12-100695; 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 Nowpak 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: U.S. Customs and Border Protection (“CBP”) issued a notice to Protestant on January 31, 2012, which indicated 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 March 02, 2012, 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 their plastic food containers are covered by any of the patents at issue during the investigation at, and found to be infringed by, the ITC. 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, as amended, 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, 19 U.S.C. § 1337, and granted Complainant’s motion for summary determination with respect to most, but not all, issues presented, which was affirmed by the Commission after limited review to examine certain 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 was the excluded plastic food containers at issue in this protest analyzed during the investigation at the ITC. Protestant’s excluded plastic food containers include two different embodiments, a round container marked Y-16 and a rectangular container marked LR-16. 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 are covered by 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, which 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. Lastly, any findings of law or fact established during the investigation at the ITC are binding on CBP and must be applied when CBP refuses entry as directed by the ITC. See 19 U.S.C. § 1337(d)(“The Commission shall notify the Secretary of the Treasury of its action under this subsection directing such exclusion from entry, and upon receipt of such notice, the Secretary shall, through the proper officers, refuse such entry.”); see also HQ H194336 (December 9, 2011). 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). 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 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 Continuation Sheet 5. The round Y-16 container and the rectangular LR-16 container are described and analyzed in greater detail, below. Rectangular container marked LR-16 Protestant states that the excluded rectangular LR-16 plastic food containers do not contain an interior seal formed by the mating of the base and lid rims. Specifically, Protestant argues this claim limitation is not met by the excluded plastic food containers because when the lid and base are mated, the base rim does not come into contact with the lid rim. Protestant claims that there is a gap of about 0.13 mm to 0.1518 mm between the base and lid rim, and therefore the excluded plastic food containers are not capable of forming the required interior seal. Id. Based on visual inspection of the LR-16 container, Image 1, below, confirms Protestant’s allegation that the sealing mechanism does not contain a triple seal. Id. at 6. Even if pressure is placed on the closing mechanism to eliminate the gap between the base rim and the lid rim thereby creating an interior seal, the embodiment of the LR-16 container still fails to satisfy the exterior seal limitation. See Image 2, below.
Image 1: Cross-section of LR-16
Image 2: Cross-section of LR-16 with forced interior seal As the LR-16 container does not exhibit either the interior or exterior seal described by claim 1 of the ‘138 patent, this determination adopts the previous findings of HQ H106415 (July 15, 2010), HQ H118860 (October 25, 2010), HQ H126815 (October 25, 2010), and HQ H126816 (October 25, 2010), that plastic food containers which do not satisfy this claim limitation cannot be found to literally infringe claim 1 of the ‘138 patent. Furthermore, since the interior seal is entirely lacking, and there is no other portion of the LR-16 container that performs this function, the determination here is that LR-16 containers do not infringe claim 1 of the ‘138 patent under the doctrine of equivalents. Accordingly, the LR-16 containers are not subject to the 514 GEO. Round container Y-16 As with the LR-16 containers, Protestant states that the Y-16 containers do not contain a base rim that mates with the lid rim. Protestant has provided Image 5, below, to illustrate the lack of an interior seal formed by the mating of the base and lid rims in the round Y-16 container.
Image 5 Visual inspection of the round Y-16 container confirms Protestants analysis. See Image 8. It is apparent that the round Y-16 container does not exhibit the interior seal described by claim 1 of the ‘138 patent. Accordingly, this determination adopts the previous findings of HQ H106415 (July 15, 2010), HQ H118860 (October 25, 2010), HQ H126815 (October 25, 2010), and HQ H126816 (October 25, 2010), that plastic food containers which do not satisfy this claim limitation cannot be found to literally infringe claim 1 of the ‘138 patent. Furthermore, since the interior seal is entirely lacking, and there is no other portion of the round Y-16 container that performs this function, the determination here is that the Y-16 containers do not infringe claim 1 of the ‘138 patent under the doctrine of equivalents. Accordingly, the Y-16 containers are not subject to the 514 GEO. 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 8. 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 base and lid of the rectangular LR-16 container and the round Y-16 containers are mated, the lid and base rim of the containers do not come into contact and therefore cannot form the required interior seal. This determination adopts the previous finding from HQ H106415 (July 15, 2010), HQ H118860 (October 25, 2010), HQ H126815 (October 25, 2010), and HQ H126816 (October 25, 2010), that plastic food containers which do not satisfy this claim limitation cannot be found to infringe claim 1 of the ‘404 patent either literally or under the doctrine of equivalents. Accordingly, the LR-16 and Y-16 containers are not subject to the 514 GEO. 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 one 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 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 for design patent determinations when it reheard Egyptian Goddess en banc and confirmed this to be the proper legal standard governing such cases.  In the unanimous opinion for the en banc court, the CAFC in Egyptian Goddess 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 could turn on which of the several candidate points of novelty the court or fact-finder focused its analysis. As stated by the CAFC, “[t]he 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.  Instead, 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.    Notwithstanding the above paragraph, 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. Additionally, while the CAFC, prior to Egyptian Goddess, has noted that design patent protection is narrow in scope and covers that which is shown in the drawings, the CAFC has also held that the patented 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.”). The framework laid out above and the findings of both law and fact at the ITC will be applied below to address whether the excluded containers infringe the design patent at issue. 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 on the left side of the page, below, with their corresponding features from Protestant’s Y-16 round plastic container next to them on the right.









The first 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 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 H004452 (September 25, 2009), 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 the Y-16 series containers to determine whether they infringe upon the design of the ‘420 patent under this claim construction. Upon visual inspection and as shown in the comparative images above, it is the determination here that the patented design and the excluded plastic food containers represented by the Y-16 series containers 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).  Therefore, Protestant’s noninfringement arguments are examined below.   Protestant’s Arguments Protestant argues that the Y-16 containers do not infringe the ‘420 patent “because the overall visual effect of the Nowpak round container is markedly different.” See Protest at 12. Protestant describes the visual effect created by the Y-16 container as a “stepped visual theme that runs throughout the design” as opposed to the “smoother ‘420 Patent design.” Id. (emphasis contained in original). Protestant summarizes the overall visual effect of the Y-16 container as a “more elaborate plastic food container with added dimensions, protrusions, and variations in surface height.” Id. at 14. In support of this assertion Protestant has submitted the declaration of 1) Hongyu Ye, a design engineer at the Taishan Changjiang Plastic Product Co., Ltd., the plastic food container supplier to Protestant; 2) Dr. Susan Selke, a Professor in the School of Packaging of Michigan State University; and 3) Stephen Armstrong, owner of Armstrong Paper Group, a commercial purchaser of plastic food containers for the food service industry. For the ‘420 patent, CBP has previously identified the “ordinary observer” as “not an end user 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, but is not an expert that would be expressly excluded by Gorham from the category of persons who are eligible ordinary observers.” See HQ H004452 at 11. Protestant alleges “Here, the principle purchasers of Nowpak’s plastic food containers are, in fact, distributors of plastic food containers, such as commercial purchasers, restaurant suppliers and purveyors of packaging goods. They are therefore, ordinary observers of the excluded products.” See Protest at 10. However, this statement is too limited because it fails to include commercial purchasers such as restaurant owners and operators in the foodservice industry. As stressed in HQ H004452, that the “ordinary observer” does not rise to the level of an expert in plastic food containers, as such experts are 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.”). Therefore, this determination analyzes the containers from the perspective of the full range of parties that are ordinary observers within this field. With this established, Protestant has provided prior art references for its non-infringement defense, consisting of four utility patents and four design patents, figures of which are depicted below. See U.S. Patent No. 3,957,097 (“the ‘097 patent”); U.S. Patent No. 3,447,714 (“the ‘714 patent”); U.S. Patent No. 4,561,562 (“the ‘562 patent”); U.S. Patent No. 4,809,868 (“the ‘868 patent”); U.S. Patent No. D 241,399 (“the ‘399 patent”); U.S. Patent No. D 309,554 (“the ‘554 patent”); U.S. Patent No. D 291,041 (“the ‘041 patent”); and U.S. Patent No. D 376,960 (“the ‘960 patent”). A utility patent can serve as a prior art reference, even though the determination here involves a question of design patent infringement. See In re Aslanian, 590 F.2d 911, 913 (C.C.P.A. 1981) (“Although there are different statutory bases and standards for utility patents and design patents, no similar distinction exists when determining what constitutes relevant prior art for these two types of patents. Numerous decisions of this court have held that the teachings in utility patents are within the prior art to be considered when determining the patentability of designs even though the patentability of a design may not be predicated on utilitarian or functional considerations.”); see also In re Wilson, 345 F.2d 1018 (C.C.P.A. 1965); In re Glavas, 230 F.2d 447 (C.C.P.A. 1956). Protestant’s Prior Art References

U.S. Patent No. 3,957,097

U.S. Patent No. 3,447,714 U.S. Patent No. 4,809,868


U.S. Patent No. 4,561,562
U.S. Patent No. D241,399

U.S. Patent No. D 309,554

U.S. Patent No. D291,041

U.S. Patent No. D376,960 From the prior art cited above, the most notable design elements to emerge from an examination of these patents are the following: 1) the proportion of the height of the lid of the container to the height of the base; 2) the proportion of the length of the lip of the lid that extends over the base to the overall height of the lid; 3) the angle of the slope on the lid compared to the angle of the slope of the base; and 4) the overall shape created by connecting the lid to the base. Figure 2 of the ‘420 patent, as shown below, displays the following characteristics: 1) a lid that comprises approximately one-third of the height of the entire container; 2) a lip that extends over the base of the container that is approximately equal to the height of the lid; 3) a lid that slopes inward at an angle slightly greater than that of the base; and 4) the overall appearance of a shallow saucer placed on top of a deeper saucer, facing inward, creating a flying saucer-like design.

A horizontal view of the Nowpak, Inc. round Y-16 container, as shown below, has these design characteristics in common with the drawings of the ‘420 patent. Specifically, a horizontal view of the Y-16 depicts the following features: 1) a lid that comprises approximately one-third of the height of the entire container; 2) a lip that extends over the base of the container that is approximately equal to the height of the lid; 3) a lid that slopes inward at an angle slightly greater than that of the base; and 4) the overall appearance of a shallow saucer placed on top of a deeper saucer, facing inward, creating a flying saucer-like design.
Of all the prior art references Protestant cites, above, only U.S. Patent No. D241,399 and No. 3,957,097, pictured below, are characterized by the overall appearance of a shallow saucer placed on top of a deeper saucer, facing inward towards each other and creating a flying saucer-like design. Flying saucer-like shapes:


The ‘399 Patent The ‘420 Patent The ‘097 Patent
Newpak, Inc. Y-16 Absence of flying saucer-like shape:


The ‘714 Patent The ‘868 Patent The ‘562 Patent


The ’554 Patent The ‘041 Patent The ‘960 Patent Although the ‘399 patent is characterized overall by a flying saucer-like design, the proportion of the height of the lid to the base is clearly dissimilar to that in the ‘420 patent and the Y-16 container. The ‘399 patent depicts an extremely shallow saucer that serves as the lid of the container and a very deep saucer for the base. When these parts and mated together they do not create the overall appearance of a 30/70 proportioned lid to base, but a very deep base that is at least four to five times as deep as the height of the lid.
In contrast to Figure 2 of the ‘399 patent, above, the ‘097 patent, depicted below, appears to have a lid to base ratio similar to that in the ‘420 patent and the Y-16 container. However, the visual impression created by the ‘097 patent, labeled Fig. 1, below, is wholly different from the ‘420 patent and the Y-16 container because the slope and angle of the container walls of the former approach 90 degrees. These angles create a side-view that appears significantly more rectangular than saucer-like. There is an angle of tapering on the lid of the design, however, the most notable feature of the ‘399 patent is the thickness of the slighting protruding lip. In contrast to the joining of the lid and base in the ‘420 patent and the Y-16 container, the lip of the ‘399 patent comprises almost half of the height of the entire container. Based on these factors the determination here is that the visual impression created by the ‘097 patent is dissimilar to that in of the ‘420 patent due to this large disparity in the proportions of the width of the lip to the height of the entire container as well as the absence of any angle of slope in the base.
Protestant’s Additional Arguments The Protestant draws attention to three specific design features of the Y-16 container in support of their claim that it has a “markedly different” overall visual effect from the ‘420 patent design. As a general matter, it is noted that these alleged differences are minor, and that Protestant’s entire analysis places too much emphasis on a few 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.”). This general finding withstanding, the analysis below addresses the alleged differences raised by Protestant. Protestant first draws attention to the “added dimensions, protrusions, and variations in surface heights” in the Y-16 container as allegedly creating a “wholly different” overall visual impression from the design in of the ‘420 patent. See Protest at 14. Protestant highlights that the Y-16 container has three distinct steps on the bowl and lid and that it stands on a “pedestal.” Id. at 12. Protestant also makes reference to the pronounced circular depression created by the second ring on the lid, that the drawing of the ‘420 patent lack. These alleged differences, however, are found to be unpersuasive in proving non-infringement, as a container found to infringe the ‘420 parent at the ITC exhibited steps on the outer base wall similar to those cited by Protestant as differentiating the Y-16 container from the ‘420 patent design. 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). The ALJ, in his infringement analysis, confirmed the conclusions reached by Complainant’s expert, who opined on features of the ‘420 patent’s design, compared them to the containers accused of infringement, and found a product that had what Protestant refers to as a “stepped visual theme” to be infringing. 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); see also Motion No. 514-2, Supplemental Declaration of Dr. Melvin L. Druin, dated September 1, 2004, Table 3. As CBP is bound by the ALJ’s infringement findings and uses them when analyzing the scope of a relevant patent claim, Protestant’s argument that the “stepped visual theme” of the Y-16 container creates a “wholly different” overall visual impression from the design of the ‘420 patent is rejected. 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-16 container has a more pronounced circular depression in the lid than that in the ‘420 patent is not dispositive as to whether there is infringement. As a comparison of images shows, below, the design on the lid of the excluded Y-16 plastic food container is substantially the same as the design depicted in Figure 3 of the ‘420 patent. This becomes especially evident when the Y-16 lid is examined next to the lid of the Jiangsu Model No. 723 container found by the ITC to be infringing. Protestant’s argument that the pronounced circular depression in the lid of the Y-16 container creates a “wholly different” overall visual impression from the design of the ‘420 patent is rejected in light of the container found to infringe at the ITC.

Y-16 Container Jiangsu Model No. 723

Y-16 Container Jiangsu Model No. 723

Y-16 Container Jiangsu Model No. 723


Y-16 The ’420 patent Model No. 7 The second design characteristic noted by the Protestant that allegedly creates a “markedly different” overall visual effect from the ‘420 patent is the sharper angle of taper in the bowl of the Y-16 compared to the “smoother” appearance of the bowl in the ‘420 patent design. As shown in the images below, and discussed in the section examining the prior art cited by Protestant, above, there is no noticeable difference between the angles of taper in the bowl depicted in Figure 2 of the ‘420 patent design and the bowl of the Y-16 container. Accordingly, Protestant’s argument that the greater angle of taper in the bowl of the Y-16 container contributes to a different overall visual impression than that created by the ‘420 patent also fails to be persuasive.

Finally, Protestant notes that when the base and lid of the Y-16 container are assembled, the base rim is not visible below the bottom of the lid lip, as it is in the ‘420 patent design. See Protest at pg. 14 ¶2. As shown in the images below, it is confirmed that the base rim is not visible from a side view of the Y-16 container whereas the rim is visible in Figure 2 of the ‘420 patent. The question remains, however, whether this difference is enough to counter the overall similarity between the Y-16 series and the patented design.

The finding here is that the difference noted above is not enough to counter the overall similarity of the designs of the Y-16 container and the ‘420 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. We find that the alleged difference in the visibility of the base rim in the Y-16 series container is by definition a minor difference. The fact that the base rim is not visible in the Y-16 container does nothing to challenge the overall visual impression created by observing the container as a whole. As shown in the images and as detailed in the analysis above, the design of the Y-16 series container is substantially the same as the design shown in the drawings of the ‘420 patent, in that it contains: 1) a lid that comprises approximately one-third of the height of the entire container; 2) a lip that extends over the base of the container that is approximately equal to the height of the lid; 3) a lid that slopes inward at an angle slightly greater than that of the base; and 4) the overall appearance of a shallow saucer placed on top of a deeper saucer, facing inward, creating a flying saucer-like design. Accordingly, the differences offered by the Protestant represent minor changes that do not refute the overall similarity established by the side-by-side comparison of the images above. Based on the foregoing, the conclusion here is that while there may be certain minor differences between the design of the ‘420 patent and the excluded Y-16 series plastic food containers such that the two are not identical, Protestant has not met its burden of proving that the patented design and the design of the excluded Y-16 plastic food containers are not plainly dissimilar. This becomes particularly evident 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). Perhaps even more important, as discussed above, CBP is bound by the ITC’s infringement findings and applies them when analyzing the scope of a relevant patent claim. As discussed and shown in the comparison of Model No. 723 container and the Y-16 container, above, Protestant has not met its burden of proving non-infringement in light of the containers found to infringe at the ITC. Accordingly, the Y-16 series plastic food containers are determined to be covered by the ‘420 patent and therefore fall within the scope of the 514 GEO. LR-16 Series Container Upon visual inspection, as shown in the images below, it is clear that the round patented ‘420 design is plainly dissimilar to the excluded plastic food containers represented by the rectangular LR-16 plastic food containers. Further, it is clear from the images below that the rectangular LR-16 plastic food container 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. See HQ H118860. 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 making it clear, without more, that the two designs would not appear substantially the same to the ordinary observer, as required by Gorham. For these reasons, the determination here is that the rectangular LR-16 containers do not infringe the ‘420 patent.

 LR-16 The ‘420 patent HOLDING: The LR-16 and Y-16 plastic food containers at issue in this protest do not infringe claim 1 of the ‘138 patent nor claim 1 of the ‘404 patent. However, the Y-16 plastic food containers at issue in this protest infringe the design patent referred to above. Therefore, these containers fall within the scope of the 514 GEO. Accordingly, you are instructed to deny the protest in part and grant the protest in part. 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 Chief, Intellectual Property Rights Branch