Protest 4601-12-100965; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-514; Certain Plastic Food Containers

HQ H226616 September 30, 2013 OT:RR:BSTC:IPR H226616 AvH CATEGORY: 19 U.S.C. § 1337; Unfair Competition U.S. Customs and Border Protection Protest & Control 1100 Raymond Blvd. Suite 402Newark, NJ 07102 RE: Protest 4601-12-100965; 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 Shine Enterprises USA 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 March 01, 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 April 09, 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: round containers marked with model numbers R32W, R24W, R24B, R16W and R16B (hereinafter “round container”) and rectangular containers marked with model numbers L38W, L38B, L32W, L32B, L28W, LC28W, LC24B and L16B (hereinafter “rectangular container”). Each of the described models is only differentiated by their size, and the designation “B” and “W” indicates the colors black or white. The manufacturer of the merchandise is Taishan Changjiang Plastic Products Co., Ltd. of Guangdong, China. It is noted that Taishan Changjiang Plastic Products Co. Ltd. was also the manufacturer of identical plastic food containers excluded from entry and at issue in HQ H208797 (January 7, 2013), which denied the protest challenging their exclusion. The embodiments of the plastic food containers from the shipment refused entry on March 1, 2012, are depicted in the images below.

Round container Round container

Rectangular container Rectangular container 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. 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. One variety of direct infringement in patent law 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.”). 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 container and the rectangular embodiments of the excluded container are described and analyzed in greater detail, below. Rectangular containers Protestant states that the excluded rectangular 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 between the base and lid rim that is specifically built in to the design so that the excluded plastic food containers are not capable of forming the required interior seal. Id. Based on visual inspection of the embodiment of the rectangular container, Image 1, below, confirms Protestant’s allegation that the sealing mechanism does not contain an interior seal. Id. at 5-6. Moreover, even if additional pressure, greater than that which is necessary to mate the lid with the base, is applied to the closing mechanism (thereby eliminating the gap between the lid and base rim), the embodiment of the rectangular container still fails to satisfy the exterior seal limitation. See Image 2, below.
Image 1: Cross-section of rectangular container
Image 2: Cross-section of rectangular container with forced interior seal As the rectangular container does not exhibit a triple seal embodiment as required 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), HQ H126816 (October 25, 2010), and HQ H208797 (January 7, 2013) that plastic food containers which do not satisfy one or more of the limitations requiring an interior, middle, or exterior seal cannot be found to literally infringe claim 1 of the ‘138 patent. Round containers As with the embodiment of the round containers, Protestant states that they do not contain a base rim that mates with the lid rim. Image 3, below, depicts a view of the cross-section of the round container and illustrates the lack of an interior seal formed by the mating of the base and lid rims in the round container.
Image 3 Visual inspection of the round container confirms Protestants analysis. See Image 3. It is apparent that the round 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), HQ H126816 (October 25, 2010) and HQ H208797 (January 7, 2013), that plastic food containers which do not satisfy the limitation requiring three seals cannot be found to literally infringe claim 1 of the ‘138 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 s