Ruling Request; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-861/867; Certain Cases for Portable Electronic Devices

HQ H260555 February 4, 2015 OT:RR:BSTC:IPR H260555 AMM CATEGORY: 19 U.S.C. §1337; Unfair Competition Mr. Garret A. Leach Kirkland & Ellis, LLP 300 North LaSalle Chicago, IL 60654 RE: Ruling Request; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-861/867; Certain Cases for Portable Electronic Devices Dear Mr. Leach: This is in reply to your letter dated January 12, 2015, on behalf of Otter Products, LLC (“Otterbox”), in which you requested a ruling, pursuant to 19 C.F.R. §177.1(a)(1), as to whether the proposed “Symmetry Gap Design” electronic device cases to be manufactured and imported by Otterbox, not accused and not at issue before the U.S. International Trade Commission (“ITC” or “Commission”) in the above referenced general exclusion order (“GEO”), are subject to exclusion from entry for consumption into the United States. In considering your request, U.S. Customs and Border Protection (“CBP”) has examined two prototype samples of the proposed design. FACTS: The Commission instituted investigation 337-TA-861 on November 16, 2012, based on a complaint filed by Speculative Product Design, LLP (“Speck”). See 77 Fed. Reg. 68828 (Nov. 16, 2012). Speck 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 No. 8,204,561 (“the ‘561 patent”). The Commission instituted investigation 337-TA-867 on January 31, 2013, based on a complaint filed by Speck. See 78 Fed. Reg. 6834 (Jan. 31, 2013). 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 the ‘561 patent. The investigations were consolidated on January 31, 2013. Id. The Commission’s notices 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 terminated due to settlement agreements, or were terminated based on an amendment to the complaint and notice of investigation, or were the subject of withdrawn allegations, or were terminated based on a finding that they had committed no acts in violation of 19 U.S.C. §1337. Eventually, the only parties remaining active in this investigation were Speck and the Investigative Attorney. Otterbox was not a Respondent in the original investigation. On February 21, 2014, the Administrative Law Judge (“ALJ”) issued his final initial determination (“ID”), finding that the asserted patent was infringed by the accused portable electronic device cases. See ID at 35 (February 21, 2014). On April 8, 2014, the Commission determined not to review the ID. See 79 Fed. Reg. 20228-30 (April 11, 2014). On June 20, 2014 the ITC issued the GEO, directing that “cases for portable electronic devices covered by one or more of claims 4, 5, 9, and 11 of the ‘561 patent are excluded from entry into the United States for consumption, for the remaining term of the patent, except under license of the patent owner or as provided by law.” Claims 1, 4, 5, 8, 9, and 11 of the ‘561 patent read as follows: 1. A one-piece case for enclosing a personal electronic device comprising: a flexible inner layer co-molded with an exterior hard layer and permanently affixed together to form a co-molded one-piece assembly; wherein the co-molded one-piece assembly is sufficiently flexible to accept insertion of the personal electronic device and sufficiently rigid to securely retain the inserted personal electronic device, wherein: the flexible inner layer includes a bottom surface, side surfaces joined to the bottom surface and extending upward therefrom, and a fitted cavity configured to accept and retain the inserted personal electronic device such that the bottom surface covers at least a portion of a bottom surface of the inserted personal electronic device and the side surfaces cover at least a portion of a side surface of the inserted personal electronic device; the exterior hard layer includes a bottom surface and side surfaces sized and shaped to substantially cover an exterior of the bottom and side surfaces of the flexible inner layer and a cut away portion that is permanently filled with a portion of the co-molded flexible inner layer. 4. The one-piece case of claim 1, wherein the side surfaces of the exterior hard layer form a corner joint and the co-molded flexible inner layer fills in the cut-away portion located at the corner joint contributing to the overall flexibility of the one-piece case. 5. The one-piece case of claim 1, wherein the flexible inner layer that fills in the cut-away portion creates a stretch-zone that is sufficiently flexible to enable the co-molded one-piece assembly to deform and thereby accept insertion of the personal electronic device. 8. The one-piece case of claim 1, further comprising: an opening parallel to the bottom surface of the flexible inner layer positioned such that a portion of the inserted personal electronic device is not enclosed by the co-molded one-piece assembly. 9. The case of claim 8, wherein an overhang extending from a top portion of one or more of the side surfaces and extends completely around the perimeter of the opening. 11.The one-piece case of claim 1, wherein the side surfaces of at least one of the flexible inner layer and the exterior hard layer extend above a top surface of the inserted personal electronic device. CBP has previously issued a ruling on certain of Otterbox’s “Symmetry” electronic device cases. See HQ H258492, dated November 4, 2014. In this ruling, CBP found that the “Symmetry” products at issue infringed upon claims 5, 9, and 11 of the ‘561 patent, and as such, were subject to the GEO issued in investigation 337-TA-861/867. This position was later affirmed. See HQ H259071, dated December 10, 2014. The “Symmetry Gap Design” products at issue in this ruling are a redesign of the “Symmetry” cases. Two prototypes, designed for the iPhone 6 and Samsung Galaxy Note 4 products, were submitted to CBP for consideration. A prototype “Symmetry Gap Design” case face view and an engineering drawing showing a cross-sectional view are pictured below:

 Prototype “Symmetry Gap Design” case for iPhone 6 phone Engineering Drawing showing cross sectional view of “Symmetry Gap Design” design   ISSUE: Whether the Otterbox “Symmetry Gap Design” electronic device cases (specifically designed for the iPhone 6 and Samsung Galaxy Note 4 phones), are covered by the asserted claims of the ‘561 patent and therefore falls within the scope of the ITC’s General Exclusion Order in Investigation No. 337-TA-861/867, such that it 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, 798 (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 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 Otterbox to establish that the products at issue are not covered by one or more of claims 4, 5, 9, or 11 of the ‘561 patent. Otterbox’s “Symmetry Gap Design” Electronic Device Case “It is axiomatic that dependent claims cannot be found infringed unless the claims from which they depend have been found to have been infringed[.]” Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed. Cir. 1989); See also Becton, 922 F.2d, at 798. All of the claims at issue in the GEO depend from claim 1. Therefore, if claim 1 is not infringed, none of its dependent claims are infringed. In your filing, you present a claim construction argument as to why the instant product does not infringe upon claim 1 of the ‘561 patent. Specifically, you argued that the “Symmetry Gap Design” could not infringe claim 1 (or any dependent claim) of the ‘561 patent, because the design’s “side surfaces” of the “flexible inner layer” are not “joined to the bottom surface” of the “flexible inner layer” as required in claim 1. See Otterbox’s Ruling Request, dated January 12, 2015, at p. 2. Instead, you argued that the design inserts a gap in the flexible inner layer which prevents any side surfaces of the flexible inner layer from joining any bottom surfaces of the flexible inner layer. Id. You supported this position by further arguing that the “joined” limitation could not be met through a union via the “exterior hard layer” as such a construction would impermissibly expand the scope of the claim. Id. Your support for this assertion rested in (1) the claim 1 requirement that the “flexible inner layer” itself include the bottom and side layers to be joined, (2) the ‘561 specification’s teaching the “flexible inner layer” and “exterior hard layer” are two separate layers, and (3) the need for the “exterior hard layer” to contain the “flexible inner layer” (not the other way around). Claim 1 reads, in pertinent part: 1. A one-piece case for enclosing a personal electronic device comprising: * * * the flexible inner layer includes a bottom surface, side surfaces joined to the bottom surface and extending upward therefrom, and a fitted cavity configured to accept and retain the inserted personal electronic device such that the bottom surface covers at least a portion of a bottom surface of the inserted personal electronic device and the side surfaces cover at least a portion of a side surface of the inserted personal electronic device; * * * [emphasis added.] In HQ H258492, CBP determined that the term “bottom surface” contained in claim 1 of the ‘561 patent refers to the surface parallel to the elastomeric overhang 21 as depicted in Figs. 2b and 5 of the ‘561 patent. See HQ H258492, at 7-14. Each surface is labeled in the diagram below:
 Figures 2b, 3, and 5 from the ‘561 patent With each surface identified under CBP’s construction of the term “bottom surface”   Also, in HQ H258492, CBP determined that the term “flexible inner layer co-molded with an exterior hard layer and permanently affixed together to form a co-molded one-piece assembly” also in claim 1 refers to a device that must be co-molded, and the layers must be permanently affixed. Id. at 15 - 17. Applying this construction, CBP finds that the “Symmetry Gap Design” at issue does include a flexible inner layer co-molded to an exterior hard lard layer, permanently affixed together to form a one-piece assembly. However, the term “joined” in the claim 1 limitation “bottom surface, side surfaces joined to the bottom surface and extending upward therefrom” was not construed during Investigation 337-TA-861/867. As such, CBP will undertake an independent analysis to construe the term, “joined.” While the specification does, as you noted, distinctly describe two separate layers in the “flexible inner layer” and “exterior hard layer,” we find no clear definition in the ‘561 specification for how “joined” is meant to relate the flexible inner layer’s bottom and side surfaces. Thus, the specification does not rebut the presumption that the term “joined” was intended to have its plain and ordinary meaning. As such, CBP will construe “joined” to have its plain and ordinary meaning. The Oxford English Dictionary defines “joined” as “1. Put together, connected, combined, united, etc.” See oed.com (last checked January 29, 2015). As shown in the pictures below, the co-molded flexible inner layer which covers the side surfaces is not connected, combined, or united to the flexible inner layer which covers that bottom surface, as “bottom surface” was construed in HQ H258492. Instead, a gap between these sections runs all the way around the interface of the bottom and side surfaces. And while the exterior hard layer contacts both the sides and bottom of the flexible inner layer, we find that contact too attenuated to qualify as “joined” under our construction.

 Engineering Drawing showing cross section of “Symmetry Gap Design” design, with labels Top Down view of prototype “Symmetry Gap Design” case for iPhone 6 phone, with labels   As such, CBP finds that the instant “Symmetry Gap Design” products cannot be said to practice the limitation “the flexible inner layer includes a bottom surface, side surfaces joined to the bottom surface and extending upward therefrom …”, as recited in claim 1 of the ‘561 patent. Therefore, the instant products cannot be found to practice all of the limitations of claims 4, 5, 9, and 11 of the ‘561 patent. See Becton, 922 F.2d, at 798. As such, the instant products cannot infringe any of claims 4, 5, 9, and 11 of the ‘561 patent. HOLDING: The Otterbox “Symmetry Gap Design” cases at issue (specifically designed for the iPhone 6 and Samsung Galaxy Note 4 phones) are not covered by claims 4, 5, 9, and 11 of the ‘561 patent. Therefore, these products are not within the scope of the ITC’s general exclusion order in Investigation No. 337-TA-861/867. Accordingly, the instant products may be entered for consumption into the United States. This decision is limited to the specific facts set forth herein. If Otterbox manufactures or imports cases for portable electronic devices 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