Ruling Request; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-829; Certain Toner Cartridge Caps and Components Thereof

HQ H245835 March 26, 2014 OT:RR:BSTC:IPR H245835 WMW CATEGORY: 19 U.S.C. § 1337; Unfair Competition Mr. Bryan G. Harrison Morris, Manning & Martin, LLP 1600 Atlanta Financial Center 3343 Peachtree Road, NE Atlanta, Georgia 30326 RE: Ruling Request; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-829; Certain Toner Cartridge Caps and Components Thereof Dear Mr. Harrison: This is in reply to your letter dated August 16, 2013, on behalf of General Plastic Industrial Co., Ltd. (“General Plastic”), in which you requested a ruling, pursuant to 19 C.F.R. Part 177, as to whether certain of General Plastic’s products developed after the issuance by the U.S. International Trade Commission (“ITC” or “Commission”) of the above referenced general exclusion order (“GEO”) are subject to exclusion from entry. Samples of General Plastic’s GPI toner cartridge caps (“GPI caps”) were included with the ruling request. FACTS: The Commission instituted this investigation on February 27, 2012, based on a complaint filed by Canon, Inc. of Tokyo, Japan; Canon U.S.A., Inc. of Lake Success, New York; and Canon Virginia, Inc. of Newport News, Virginia (collectively, “Canon”). See 77 Fed. Reg. 11586 (Feb. 27, 2012). The complaint alleged violations of section 337 of the Tariff Act of 1930 (19 U.S.C. § 1337) by reason of infringement of various claims of U.S. Patent Nos. 5,903,803 (“the ‘803 patent”) and 6,128,454 (“the ‘454 patent”). The Commission’s notice of investigation named numerous respondents, and during the course of the investigation several of the respondents were found to be in default, or were terminated due to consent orders, or were the subject of withdrawn allegations. Eventually, the only parties remaining active in this investigation were Canon and the Investigative Attorney (“IA”). On February 28, 2013, the Administrative Law Judge (“ALJ”) issued his final initial determination (“ID”), finding that the asserted patents were infringed by the accused toner cartridge products. See ID at 128 (February 28, 2013). On March 25, 2013, the Commission determined not to review the ID. On June 28, 2013 the ITC issued the GEO. On August 16, 2013, General Plastic submitted a ruling request to CBP regarding the toner cartridges imported by General Plastic, requesting a determination that said toner cartridges do not fall under the scope of the GEO. General Plastic presented two groups of toner cartridges for determination, GPI Group I Cartridge Caps (“GPI Group I”) and GPI Group II Cartridge Caps (“GPI Group II”). The following cartridge cap products make up the GPI Group I caps: C10HP1010-4CMX, ClOHP1215-1MX, ClOHP1200-3CMX, C10HP1320-4CMX, ClOCA3950-4CMX, ClOCA9600C-6MX, ClOCA3800-5MX, C10CAIR1300-5MX, C10CAIRC3200-6MX, ClOCAIR2020-5MX, ClOHP2100-lAX, C10HP4100-2AX, ClOHP5000-1AX, ClOHP9000-3MX, ClOHP2500-4AX, ClOHP2600-1MX, ClOHP9500-6MX, ClOHP1025-4CMX, ClOHP2300-lAX, C10HP4000-4AX, C10HP1005-4CMX, ClOCAIR1022-4CMX, ClOHP4014-6MX, and ClOHP3520-6MX. The following cartridge cap products make up the GPI Group II caps: C10HP3520-6M, C10HP1025-4CMW, and C10CA9600C-4CM. Both groups are depicted in the following representations. GPI Group I Cartridge Caps

GPI Group II Cartridge Caps


 ISSUE: The issue presented is whether the GPI Group I caps and the GPI Group II caps imported by General Plastic, are covered by the listed claims of the ‘803 patent or the ‘454 patent and therefore fall within the scope of the ITC’s general exclusion order in Investigation No. 337-TA-829, such that they would be excluded from entry for consumption into the United States. 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.”). Additionally, 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 U.S. Court of Appeals for the Federal Circuit (“CAFC”) has made clear that claim terms are given their ordinary and customary meaning, which refers specifically to the ordinary and customary meaning that the claim term would have to a person of ordinary skill in the art at the time of the invention. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). The inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation. See Innova, 381 F.3d at 1116. That starting point is based on the well-settled understanding that inventors are typically persons skilled in the field of the invention and that patents are addressed to and intended to be read by others of skill in the pertinent art. See Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1119 (Fed. Cir. 2002). The person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification. See Phillips, 415 F.3d at 1313. Often, this requires an examination of terms that have a particular meaning in a field of art. Id. Since the meaning of a claim term, as understood by persons of skill in the art, is often not immediately apparent, and since patentees frequently act as their own lexicographers, a court or administrative body responsible for making patent infringement determinations should look to sources available to the public that show what a person of skill in the art would have understood a disputed claim term to mean. Id. These sources include, for example, the words of the claims themselves, the remainder of the specification and the prosecution history, along with certain extrinsic evidence in appropriate circumstances. Id. Importantly, as stated by the CAFC in Vitronics and reaffirmed in Phillips, claims must be read in light of the specification, of which they are a part, since the specification “is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315 (citing Vitronics, 90 F.3d at 1582); see also Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985) (“The specification is, thus, the primary basis for construing the claims.”). While continuing to be mindful of this fine line between interpretation and importation, Phillips explains that: [T]he line between construing terms and importing limitations can be discerned with reasonable certainty and predictability if the court’s focus remains on understanding how a person of ordinary skill in the art would understand the claim terms. For instance, although the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.…In particular, we have expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment….That is not just because section 112 of the Patent Act requires that the claims themselves set forth the limits of the patent grant, but also because persons of ordinary skill in the art rarely would confine their definitions of terms to the exact representations depicted in the embodiments. Phillips, 415 F.3d at 1323 (internal citations omitted). Accordingly, the CAFC 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. Pursuant to the Tariff Act of 1930, the ITC has authority to conduct investigations into imported articles that allegedly infringe United States patents and impose remedies if the accused products are found to be infringing. See 19 U.S.C. § 1337(a)(1)(B), (b)(1), (d), (f). Specifically, 19 U.S.C. § 1337(d) provides the Commission authority to direct the exclusion from entry of articles found to be infringing. Moreover, when the Commission determines that there has been a violation of section 337, it may issue two types of exclusion orders: a limited exclusion order and/or a general exclusion order. See Fuji Photo Film Co., Ltd. v. U.S. Int’l Trade Comm’n, 474 F.3d 1281, 1286 (Fed. Cir. 2007); see also Certain Ink Cartridges and Components Thereof, Inv. No. 337-TA-565, Commission Opinion (October 19, 2007). Both types of orders direct CBP to bar the infringing products from entering the country. See Yingbin-Nature (Guangdong) Wood Indus. Co. v. U.S. Int’l Trade Comm’n, 535 F.3d 1322, 1330 (Fed Cir. 2008). A limited exclusion order is “limited in that it only applies to the specific parties before the Commission in the investigation”. Id. In contrast, a general exclusion order bars importation of the infringing products by everyone, regardless of whether they were respondents in the Commission’s investigation. Id. A general exclusion order is appropriate if two exceptional circumstances apply. See Kyocera Wireless Corp. v. U.S. Int’l Trade Comm’n, 545 F.3d 1340, 1356. A general exclusion order may only be issued if (1) “necessary to prevent circumvention of a limited exclusion order,” or (2) “there is a pattern of violation of this section and it is difficult to identify the source of infringing products.” 19 U.S.C. § 1337(d)(2); see also Kyocera, 545 F.3d at 1356 (“If a complainant wishes to obtain an exclusion order operative against articles of non-respondents, it must seek a GEO by satisfying the heightened burdens of §§ 1337(d)(2)(A) and (B).”). Additionally, a seizure and forfeiture order issued under 19 U.S.C. § 1337(i) directs CBP to seize and forfeit articles imported in violation of an exclusion order when the importer previously had articles denied entry and received notice that seizure and forfeiture would result from any future attempt to import covered articles. The issuance of a general exclusion order by the ITC binds named parties and non-named parties alike and shifts to would-be importers, “as a condition of entry, the burden of establishing noninfringement.” Hyundai Electronics Industries Co. v. U.S. Int’l Trade Comm’n, 899 F.2d 1204, 1210 (Fed. Cir. 1990). Accordingly, the burden is on General Plastic to establish that the products at issue are not covered by one or more of claims 128-130, 132-133 and 139-143 of the ‘803 patent or one or more of claims 24-30 of the ‘454 patent. Claims 128 and 139 of U.S. Patent No. 8,903,803 The subject matter of the ‘803 patent, as indicated in the abstract, pertains to an electrophotographic image forming apparatus for forming an image on a recording material. Claims 128 and 139 are the independent claims referred to in the GEO. Claims 128 and 139 are reproduced below. Claim 128. A process cartridge detachably mountable to a main assembly of an image forming apparatus, wherein said main assembly includes a motor, a driving rotatable member for receiving a driving force from said motor and a hole defined by twisted surfaces, said hole being substantially coaxial with said driving rotatable member, said process cartridge comprising: an electrophotographic photosensitive drum; process means actable on said photosensitive drum; and a twisted projection engageable with said twisted surfaces, said projection being provided at a longitudinal end of said photosensitive drum, wherein, when said driving rotatable member rotates with said hole and projection engaged with each other, a rotational driving force is transmitted from said driving rotatable member to said photosensitive drum through engagement between said hole and said projection. (emphasis added) Claim 139. A photosensitive drum, usable with an electrophotographic image forming apparatus for forming an image on a recording material, said apparatus including a motor, a driving rotatable member for receiving a driving force from said motor, and a hole defined by twisted surfaces, said hole being substantially coaxial with said driving, said photosensitive drum comprising: a cylinder having a photosensitive layer thereon; and a drive transmission member mounted to an end of said cylinder, said transmission member including: a transmission member gear for transmitting a driving force from said driving rotatable member to a developing roller; a shaft substantially coaxial with said transmission member gear; and a twisted projection engageable with said twisted surfaces, said projection being provided at an end of said shaft, wherein said projection receives a driving force from said driving rotatable member through engagement between said hole and said projection, and wherein the driving force is transmitted to said photosensitive drum through the shaft, and is transmitted to said developing roller through said transmission member gear. (emphasis added) Claims 24 and 26 of U.S. Patent No. 6,128,454 The subject matter of the ‘454 patent, as indicated in the abstract, pertains to an electrophotographic image forming apparatus for forming an image on a recording material. Claims 24 and 26 are the independent claims referred to in the GEO. Claims 24 and 26 are reproduced below. Claim 24. An electrophotographic photosensitive drum for an electrophotographic image forming apparatus for forming an image on a recording material, the apparatus including a motor, a driving rotatable member for transmitting a driving force from the motor, and a twisted hole formed in the driving rotatable member at a central portion thereof and having a non-circular cross-section with a plurality of corner portions, said electrophotographic photosensitive drum comprising: a. a cylindrical member having a photosensitive layer on a circumferential surface thereof; and b. a twisted projection provided at an end of said cylindrical member, said twisted projection being engageable with the twisted hole and having a non-circular cross-section with a plurality of corner portions for receiving the driving force from said driving rotatable member, wherein when said electrophotographic photosensitive drum is mounted to a main assembly of the image forming apparatus, said twisted projection is engaged with the twisted hole to receive the driving force for rotating said electrophotographic photosensitive drum. (emphasis added) Claim 26. An electrophotographic photosensitive drum for a process cartridge detachably mountable to a main assembly of an electrophotographic image forming apparatus for forming an image on a recording material, the main assembly including a motor, a main assembly gear for transmitting a driving force from said motor, and a twisted hole formed in the main assembly gear at a central portion thereof and having a substantially triangular cross-section, said electrophotographic photosensitive drum comprising: a cylindrical member having a photosensitive layer on a circumferential surface thereof; and a driving force transmitting part mounted to an end of said cylindrical member, said transmitting part including: a drum gear for transmitting the driving force from the main assembly to a developing roller when said process cartridge is mounted to the main assembly; a shaft provided at a center of said drum gear; and a twisted projection in the form of a substantially triangular prism provided at an end of said shaft, for engaging with the twisted hole to receive the driving force from the main assembly when said process cartridge is mounted to the main assembly. Wherein said driving force transmitting part receives the driving force from the main assembly through engagement between the twisted hole and twisted projection and transmits the driving force to said electrophotographic drum through said shaft and to the developing roller through said drum gear. (emphasis added) General Plastic points to the common claim limitation found in both the claims of the ‘803 patent and the ‘454 patent, that of a twisted projection. The ALJ found that twisting about the rotational axis along its axial length was a common trait found in the twisted projections of the products at issue before the ITC. See ID at 62, 72, 85, 96, 112 and 115. General Plastic further states that to be covered by these claims and therefore subject to the GEO a twisted projection must be present on the imported cap in order for entry into the United States to be prohibited. GPI Group I With its submission, General Plastic provided CBP with various samples of products from the GPI Group I. The products in this group all possess a projection which is substantially triangular in shape. According to General Plastic, although the size and geometry of the projections of the GPI Group I products may differ slightly, depending upon the requirements of the particular machine for which they are designed, they roughly appear the same. Upon visual inspection of the samples and diagrams provided by General Plastic, the substantially triangular shaped projection appear to be level without any twisting about the rotational axis along its axial length. Due to the fact that the GPI Group I cartridge caps do not appear to have any type of projection that could be considered to be twisted, they cannot be found to practice all of the limitations of the claims of the patents at issue in the GEO. GPI Group II With its submission, General Plastic provided CBP with various samples of products from the GPI Group II. The products in this group type possess a projection which is flower shaped. According to General Plastic, although the size and geometry of the projections of the GPI Group I products may differ slightly, depending upon the requirements of the particular machine for which they are designed, they roughly appear the same. Upon visual inspection of the samples and diagrams provided by General Plastic, the flower shaped projection appears to be level without any twisting about the rotational axis along its axial length. Due to the fact that the GPI Group II toner cartridge caps do not appear to have any type of projection that could be considered to be twisted, they cannot be found to practice all of the limitations of the claims of the patents at issue in the GEO. HOLDING: The GPI Group I and GPI Group II toner cartridge caps are not covered by the claims at issue in the ‘803 patent and ‘454 patent. Therefore, the GPI Group I and GPI Group II toner cartridge caps are not within the scope of the ITC’s general exclusion order in Investigation No. 337-TA-829.  Accordingly, the GPI Group I and GPI Group II toner cartridge caps may be entered for consumption into the United States. This decision is limited to the specific facts set forth herein. If General Plastic manufactures or imports toner cartridge caps that differ from the embodiment described above, or if future importations vary from the facts stipulated to herein, this decision shall not be binding on CBP as provided for in 19 C.F.R. Part 177.2(b)(1), (2), and (4), and Part 177.9(b)(1) and (2). Sincerely, Charles R. Steuart, Chief Intellectual Property Rights Branch