AFR of Protest 1901-1310-0002; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-780; Certain Protective Cases and Components Thereof

HQ H237817 March 29, 2013 OT:RR:BSTC:IPR H237817 AAH CATEGORY: 19 U.S.C. § 1337; Unfair Competition David Berry Port Director U.S. Customs and Border Protection 2850 Wall-Triana Highway Huntsville, AL 35824 RE: AFR of Protest 1901-1310-0002; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-780; Certain Protective Cases and Components Thereof Dear Port Director: This is in response to the application for further review of the above-referenced protest filed by Griffin Technology, Inc. (“Protestant”) with respect to the exclusion from entry for consumption of certain protective cases that were determined to be subject to the general exclusion order issued by the U.S. International Trade Commission (“ITC” or “Commission”) in Investigation No. 337-TA-780 (“780 GEO”). FACTS: On January 22, 2013, U.S. Customs and Border Protection (“CBP”) issued notices to Protestant indicating that certain shipments of protective cases were excluded from entry for consumption pursuant to the 780 GEO. See Protest at 2; see also CBP Exclusion Notices (listing the date of the denial as January 22, 2013). Pursuant to 19 U.S.C. § 1514(c) and § 1515(a), as implemented by 19 C.F.R. § 174, Protestant timely filed a protest on January 29, 2013, challenging the exclusion from entry and seeking further review of the CBP decision to exclude. Specifically, Protestant denies that the excluded protective cases are covered by any of the patent claims found to be infringed at the ITC and included in the 780 GEO. The excluded shipments contained, inter alia, protective cases designated by Protestant as the “Survivor Series.” The IPR Branch was provided with samples of the detained merchandise and examined them in light of the patent claims, specification, and prosecution history. The embodiment of these protective cases is a redesign of the articles found to infringe at the ITC.
See Supplement of Griffin Technology, Inc., February 8, 2013. ITC Inv. No. 337-TA-780 was instituted on June 30, 2011 based on a complaint filed by Otter Products LLC of Fort Collins, Colorado, which named a number of parties as respondents to the investigation. See Administrative Law Judge’s (“ALJ”) Initial Determination on Violation of Section 337 and Recommended Determination on Remedy and Bond (“ID”) at 2 (dated Nov. 19, 2012). Protestant was a named respondent to the investigation and, unlike the other respondents, did not default but participated fully in the investigation. The ALJ found a violation of section 337 of the Tariff Act of 1930, as amended, after determining that the Griffin protective cases satisfied all the elements of claim 1 of U.S. Patent No. 7,933,122 (“the `122 Patent”). The Commission reviewed the ALJ’s determination that Griffin infringed the `122 Patent. See Commission Opinion at 33 (dated November 19, 2012). After affirming the ALJ’s finding, 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 protective cases covered by the `122 patent. As stated above, Protestant was named as a respondent to the Investigation. The excluded Griffin Survivor Series cases are a different embodiment from the protective cases accused in the investigation. Griffin has stated that since the investigation it has redesigned the products at issue so they no longer infringe the `122 Patent. ISSUE: The issue presented is whether Griffin’s new Survivor Series cases are covered by claim 1 of the `122 patent and therefore fall within the scope of the GEO. 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. 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.”). 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, the Court of Appeals for the Federal Circuit has made clear that claim terms are given their ordinary and customary meaning, which refers specifically to the ordinary and customary meaning that the claim term would have to a person of ordinary skill in the art at the time of the invention. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). The inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation. See Innova, 381 F.3d at 1116. That starting point is based on the well-settled understanding that inventors are typically persons skilled in the field of the invention and that patents are addressed to and intended to be read by others of skill in the pertinent art. See Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1119 (Fed. Cir. 2002). The person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification. See Phillips, 415 F.3d at 1313. Often, this requires an examination of terms that have a particular meaning in a field of art. Id. Since the meaning of a claim term, as understood by persons of skill in the art, is often not immediately apparent, and since patentees frequently act as their own lexicographers, a court or administrative body responsible for making patent infringement determinations should look to sources available to the public that show what a person of skill in the art would have understood a disputed claim term to mean. Id. These sources include, for example, the words of the claims themselves, the remainder of the specification and the prosecution history, along with certain extrinsic evidence in appropriate circumstances. Id. Importantly, as stated by the Court of Appeals for the Federal Circuit in Vitronics and reaffirmed in Phillips, claims must be read in light of the specification, of which they are a part, since the specification “is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Philips, 415 F.3d at 1315 (citing Vitronics, 90 F.3d at 1582); 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.”). Accordingly, the Court of Appeals for the Federal Circuit has provided the framework above for interpreting patent claims and reading those claims, as properly construed in light of the relevant evidence, onto an accused device. Moreover, CBP is bound by the ITC’s findings as they relate to section 337 and shall refuse entry as directed. See 19 U.S.C. § 1337(d). As a general matter, the ITC directs its exclusion orders to articles “covered by” the infringed claims of the relevant patents. See Certain Hardware Logic Emulation Systems and Components Thereof, Inv. No. 337-TA-383, Commission Opinion at 16 (Publication 3089, dated March 1998) (“[T]he Commission’s long-standing practice is to direct its remedial orders to all products covered by the patent claims as to which a violation has been found, rather than limiting its orders to only those specific models selected for the infringement analysis.”). 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 limited exclusion order issued in ITC Inv. No. 337-TA-780 specifically applies to articles manufactured or imported by Griffin that are covered by claim 1 of the `122 patent. Significantly, the U.S. Court of Appeals for 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, “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). The Court of Appeals for the Federal Circuit also confirmed that such a rational applies with “increased force” to parties named in an investigation that resulted in the issuance of an exclusion order. Id. Accordingly, the burden is on Griffin to establish that the devices at issue are not covered by claim 1 of the `566 patent. CLAIM 1 OF U.S. PATENT NO. 7,933,122 The `122 patent is entitled Protective Enclosure for a Computer and relates to a three layer protective enclosure that provides resistance to water, dust, dirt, and bump protection for sensitive computers. Otter Products LLC (“Otter”) asserted, among other claims, claim 1 of the `122 patent against Griffin’s devices found to infringe at the ITC. Claim 1 of the `122 patent, the only independent claim asserted by Otter from this patent, reads as follows: A protective enclosure for a computer comprising: A flexible membrane that is molded to fit over at least a front portion of said computer that allows interactive access to controls on said front portion of said computer; A hard shell cover that fits over said flexible membrane and said computer and that is formed to provide openings that allow a user to access said flexible membrane to have interactive access to said controls of said computer, Said hard shell cover comprising A front shell formed to a rigid shape of a front portion of said computer and A back shell formed to a rigid shape of a rear portion of said computer; A stretchable cushion layer that is disposed over said hard shell cover that has sufficient elasticity to substantially confirm to said hard shell cover and provide cushioning to said protective enclosure, said stretchable cushion layer exposing at least a portion of said hard shell cover and having a tab disposed to fit into a corresponding groove in said hard shell cover. U.S. Patent No. 7, 933, 122 (emphasis added). Thus, according to claim 1, although the stretchable cushion layer must be disposed over the hard shell cover that comprises a front shell and a back shell, the stretchable cushion layer would still expose at least a portion of the hard shell, which could be either the front or back piece. Griffin alleges that its redesigned products avoid limitation d. of the claim above. Griffin claims that, because the redesigned cases have a stretchable cushion layer which is only disposed over the back shell of the hard shell cover and no portion of the front shell of the hard shell cover, that the stretchable cushion layer is not disposed over the hard shell cover. In other words, the claim requires the hard shell cover to have both a front shell and the back shell and that the stretchable cushion layer be disposed over at least a portion of both. Furthermore, element d of claim 1 states that the stretchable cushion layer exposes at least a portion of the hard shell cover. One issue is whether the claim limitation requiring an exposed portion of the hard shell cover could be satisfied by the entire front shell since it is a part of the hard shell. There are several statements in the prosecution history and specification which suggest otherwise. First, the specification of the patent does not describe an embodiment where the front shell is not covered by the stretchable cushion layer and every embodiment described has the stretchable cushion layer disposed over the assembled hard shell, not individual pieces. Second, the prosecution history, in which an amendment was made distinguishing the `122 patent from the prior art by the exposed portion, describes the exposed portion as a series of holes, as for the earphone jack or screen. There is no support either in the specification or prosecution history for an embodiment where the entire front hard shell is exposed. However, even if it were true that the uncovered front shell could satisfy the exposed portion claim limitation of the `122 patent, no part of the front shell has the stretchable cushion layer disposed over it. Because the claims require the stretchable cushion layer to be disposed over the hard shell, which is defined by the claims as comprising both the back shell and front shell, element d. of claim 1 remains unsatisfied and the redesign is not covered under the plain and ordinary meaning of the claim terms. Griffin has met its burden to establish that its new devices described above are not covered by the relevant claims of the exclusion order at issue and therefore the protective cases in question should be permitted entry for consumption, entry for consumption from a foreign trade zone, and withdrawal from a warehouse for consumption. HOLDING: You are instructed to grant the protest. 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