Protest 2720-16-100168; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-918; Certain Toner Cartridges and Components Thereof

U.S. Department of Homeland Security Washington, DC 20229 U.S. Customs and Border Protection HQ H273217 November, 3, 2016 OT:RR:BSTC:IPR H273217 WMW CATEGORY: 19 U.S.C. § 1337; Unfair Competition Ms. Elva Muneton Director of Electronics Center of Excellence & Expertise U.S. Customs and Border Protection One World Trade Center, Suite 705 Long Beach, CA 90831 RE: Protest 2720-16-100168; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-918; Certain Toner Cartridges and Components Thereof Dear Ms. Muneton: This is in response to the application for further review of the above-referenced protest filed by Ninestar Technology Company, Ltd. (“Protestant”) challenging the exclusion of a redesigned toner cartridge, the NT-PH255 (“the 255 cartridge”) refused entry for consumption at the port of Los Angeles based on the above-referenced general exclusion orders issued by the U.S. International Trade Commission (“ITC” or “Commission”). Investigation 337-TA-918 The Commission instituted Investigation No. 337-TA-918 (‘918 GEO) on June 12, 2014, based on a complaint filed by Canon Inc. of Tokyo; Canon U.S.A., Inc. of Melville, New York; and Canon Virginia, Inc. of Newport News , Virginia (“Canon”). See 79 Fed. Reg. 33777 (June 12, 2014). Canon alleged violations against several respondents of section 337 of the Tariff Act of 1930 (19 U.S.C. §1337) by reason of patent infringement of one or more claims of U.S. Patent Nos. 8,280,278 (“the ’278 patent”), 8,630,564 (“the ’564 patent”), 8,682,215 (“the ’215 patent”), 8,676,090 (“the ’090 patent”), and 8,688,008 (“the ’008 Patent”) (collectively referred to as the “Canon patents”). See Commission Opinion (“CO”) at 1 - 4 (August 31, 2015). On May 12, 2015, the Administrative Law Judge (“ALJ”) issued his Initial Determination and Recommended Determination on Remedy and Bonding (“IDRD”), finding a violation of Section 337, based upon his determinations that certain accused products infringed at least one independent claim of the ‘278, ‘564, ‘215, ‘090, or ‘008 patents. See IDRD at 80 – 249. Next, the Commission determined to review the IDRD. See 80 Fed. Reg. 37299 (June 30, 2015). In the Commission Notice (“CN”), issued on June 24, 2015, the Commission affirmed the ALJ’s findings of a violation of section 337 in connection with the above referenced patents. See CN at 1. The Commission issued an opinion on August 31, 2015, determining that the appropriate form of relief was a general exclusion Order (“GEO”) prohibiting the unlicensed entry of toner cartridges and drum units and parts thereof covered by the listed claims of the ‘278, ‘564, ‘215, ‘090 and ‘008 patents. See Commission Opinion (“CO”) at 5. The ITC issued the GEO, directing that all toner cartridges and components thereof infringing on any of the claims of the asserted patents, imported by unlicensed entities are excluded from entry for consumption into the United States, entry for consumption from a foreign-trade zone, or withdrawal from a warehouse for consumption, except under license of the owner of the ‘278, ‘564, ‘215, ‘090 and ‘008 patents as provided by law. See 80 Fed. Reg. 53567 (Sept. 4, 2015). FACTS: On December 11, 2015, CBP officials at the port of Long Beach issued a notice to Protestant indicating that a shipment of toner cartridges, model NT-PH255 (“the 255 cartridge”), was excluded from entry for consumption because the articles in question were subject to the 918 GEO. See CBP Exclusion Notice (December 11, 1015). On January 8, 2016, pursuant to 19 U.S.C. § 1514, as implemented by 19 C.F.R. Part 174, through counsel, Protestant timely filed a protest challenging the exclusion and claiming the excluded articles were not subject to the 918 GEO. Specifically, Protestant argues that the 255 cartridge is of a new design that does not practice the underlying patents at issue in the 918 GEO. See Protest at 6. (January 8, 2016). This protest was given the reference number 2720-16-100168 by CBP. The 255 cartridge is described by the Protestant as not having a coupling member with a single axis that is inclined with respect to the axis of a rotary member, but rather that the 255 cartridge has a multi-piece coupling with two distinct axes. While some parts of the coupling incline, others never do. Protestant states that the portion of the toner cartridge that couples with the printer does not incline with respect to the axis of the drum. The patents at issue in the 918 GEO can divided into two groups. The first group, the ‘278 patent, the ‘564 patent, the ‘215 patent, and the ‘008 patent belong the first group which include a variation of the coupling member as is mentioned in claim 160 of the ‘278 patent. The specific parts relevant to this protest are highlighted in bold. The independent claim 160 of the ‘278 patent reads as follows: A process cartridge comprising: a casing; a rotary member having an axis L1, the rotary member being rotatably supported in the casing to permit rotation about the axis L1; and a coupling member having an axis L2, the coupling member having (i) a first end portion connected to the rotary member, (ii) a second end portion, and (iii) a connecting portion connecting the first end portion and the second end portion, wherein the coupling member is movable between a first position in which the axis L2 of the coupling member is coaxial with the axis L1 of the rotary member, and a second position in which the axis L2 of the coupling member is inclined with respect to the axis L1 of the rotary member, and wherein a maximum angle of inclination of the axis L2 with respect to the axis L1 is about 20 degrees to about 60 degrees The independent claims 171, 179, 189, and 200 of the ‘564 patent read as follows: A drum unit usable in a process cartridge, the drum unit comprising: a photosensitive drum having an axis L1; a flange provided at one end of the photosensitive drum that is coaxial with the axis L1; and a coupling member having an axis L2, the coupling member having (i) a first end portion connected to the flange, (ii) a second end portion, and (iii) a connecting portion connecting the first end portion and the second end portion, wherein the coupling member is movable between a first position in which the axis L2 of the coupling member is coaxial with the axis L1 of the photosensitive drum, and a second position in which the axis L2 of the coupling member is inclined with respect to the axis L1 of the photosensitive drum, and wherein a maximum angle of inclination of the axis L2 with respect to the axis L1 is about 20 degrees to about 60 degrees. * * * * * A drum unit usable in a process cartridge, the drum unit comprising: a photosensitive drum having an axis L1; a flange provided at one end of the photosensitive drum that is coaxial with the axis L1; and a coupling member having an axis L2, the coupling member having (i) a first end portion connected to the flange, (ii) a second end portion, and (iii) a connecting portion between the first end portion and the second end portion, wherein the coupling member is movable between a first position in which the axis L2 of the coupling member is coaxial with the axis L1 of the photosensitive drum, and a second position in which the axis L2 of the coupling member is inclined with respect to the axis L1 of the photosensitive drum, and wherein, for at least part of the second end portion, a maximum distance from the axis L2 to the outermost surface along a line perpendicular to the axis L2 increases as the distance along the axis L2 from the connecting portion increases. * * * * * A drum unit usable in a process cartridge, the drum unit comprising: a photosensitive drum having an axis L1; a flange provided at one end of the photosensitive drum that is coaxial with the axis L1; and a coupling member having an axis L2, the coupling member having (i) a first end portion connected to the flange, (ii) a second end portion, and (iii) a connecting portion connecting the first end portion and the second end portion, wherein the coupling member is movable between a first position in which the axis L2 of the coupling member is coaxial with the axis L1 of the photosensitive drum, and a second position in which the axis L2 of the coupling member is inclined with respect to the axis L1 of the photosensitive drum, and wherein a maximum distance from the axis L2 to the outermost surface of the connecting portion along a line perpendicular to the axis L2 is less than a maximum distance from the axis L2 to an outermost surface of the second end portion along a line perpendicular to the axis L2, and wherein a maximum distance from the axis L2 to an outermost surface of the connecting portion along a line perpendicular to the axis L2 is less than a maximum distance from the axis L2 to an outermost surface of the first end portion along a line perpendicular to the axis L2. * * * * * A drum unit usable in a process cartridge, the drum unit comprising: a photosensitive drum having an axis L1; a flange provided at one end of the photosensitive drum that is coaxial with the axis L1; and a coupling member having an axis L2, the coupling member having (i) a first end portion connected to the flange, (ii) a second end portion, and (iii) a connecting portion connecting the first end portion and the second end portion, wherein the coupling member is movable between a first position in which the axis L2 of the coupling member is coaxial with the axis L1 of the photosensitive drum, and a second position in which the axis L2 of the coupling member is inclined with respect to the axis L1 of the photosensitive drum, and wherein the second end portion comprises (i) a surface on a side opposite the connecting portion, the surface having an opening to a recess, and (ii) at least one pair of projections, with each projection having a tip that is the part of the projection that is farthest from the photosensitive drum when the coupling member is in the first position, and wherein the complete projections are farther from the first end portion than a portion of the recess that is closest to the first end portion in the direction of the axis L2 of the coupling member, wherein at least one of the projections includes a surface that is slanted with respect to the axis L2, and wherein, when the coupling member is in the first position, the tip of each projection is substantially the same distance from the photosensitive drum. The independent claim 23 of the ‘215 patent reads as follows: A process cartridge comprising: A casing; a photosensitive drum having an axis L1, the photosensitive drum being rotatably supported in the casing to permit rotation about the axis L1; a developer roller having an axis L2, the developer rotatably supported in the casing to permit rotation about axis L2; and a coupling member having an axis L3, the coupling member having (i) a first end portion connected to the photosensitive drum, (ii) a second end portion, and (iii) a connecting portion connecting the first end portion and the second end portion, wherein the coupling member is movable between a first portion in which the axis L3 of the coupling member is fully inclined with respect to the axis L1 of the photosensitive drum and in which a portion of the axis L3 at the first end portion side of the coupling member is nearer to the axis L2 of the developer roller than a portion of the axis L3 at the second end portion side of the coupling member, and wherein when the coupling member is in the second position, the axis L3 of the coupling member is inclined from about 20 degrees to about 60 degrees with respect to the axis L1 of the photosensitive drum. The independent claims 1 and 12 of the ‘008 patent read as follows: An image forming apparatus cartridge comprising: a casing; a developer roller having an axis L1, the developer roller being rotatably supported in the casing to permit rotation about the axis L1; a first gear connected to the developer roller; a second gear in meshing engagement with the first gear; and a coupling member having an axis L2, the coupling member having (i) a first end portion connected to the second gear and operatively connected with the developer roller so as to be capable of transmitting a rotational force to the developer roller via the first and second gears, (ii) a second end portion having a recess formed therein and including at least two projections provided at diametrically opposed positions, and (iii) a connection portion connecting the first end portion and the second end portion, wherein the coupling member is movable between a first portion in which the axis L2 of the coupling members is substantially parallel to and offset from the axis L1 of the developer roller, and a second position in which the axis L2 of the coupling member is inclined with respect to the axis L1 of the developer roller, and wherein a maximum angle of inclination of the axis L2 of the coupling member with respect to the axis L1 of the developer roller is about 20 degrees to about 60 degrees. . * * * * * An image forming apparatus cartridge comprising: a casing; a developer roller having an axis L1, the developer roller being rotatably supported in the casing to permit rotation about the axis L1; and a coupling member having an axis L2, the coupling member having (i) a first end portion operatively connected with the developer roller, (ii) a second end portion, and (iii) a connecting portion connecting the first end portion and the second end portion, wherein the coupling member is movable between a first position in which the axis L2 of the coupling member is substantially parallel to and offset from the axis L1 of the developer roller, and a second position in which the axis L2 of the coupling member is fully inclined with respect to the axis L2 when the coupling member is in the first position and in which a portion of the axis L2 at the second end portion side of the coupling member is nearer to the axis L1 than a portion of the axis L2 at the first end portion side of the coupling member, and wherein when the coupling member is in the second position, the axis L2 of the coupling member is inclined from about 20 degrees to about 60 degrees with respect to the axis L1. The ‘090 patent makes up the second group and can be said to require a drum flange that is used to retain the coupling member addressed in the other group of patents. Independent claim 1 of the ‘090 patent reads as follows: An electrophotographic photosensitive drum unit comprising: a cylinder having a photosensitive layer at an outer periphery thereof; and a drum flange provided at one end of the cylinder, the drum flange including at least two projections provided inside of the drum flange and projected radially inwardly of the drum flange, with a space diametrically between the two projections, wherein each of the two projections projects radially inwardly of the drum flange to a greater extent at a position farther from the cylinder than it does a a position closer to the cylinder. The drum flange of the 255 cartridge drum flange is fashioned so that the drum flange has projections that extend inwardly to the same extent throughout the entire projection. The projections do not project inward or outward in any manner. Figures 1 through 5 below are excerpted from the ALJ’s determination and represent the portions of the patents highlighted, supra, in bold. Figure 1 demonstrates the movable coupling member of the ‘278, ‘564, and ‘215 patents. The coupling member in these patents are part of a toner cartridge and drum unit that is maximally inclined prior to a toner cartridge’s engagement with the drive shaft of a printer. See IDRD at 23. Prior to the toner cartridge being inserted into the printer, the coupling member’s axis is at an angle of inclination between 20 to 60 degrees from that of the axis of the developer roller/drum unit. Id. As the cartridge is inserted, the coupling member pivots to become coaxial with the drive shaft and the developer roller/drum unit as the coupling member and drive shaft become fully engaged. Id. at 23-24.
Figure 1: Diagram of the coupling member component from the ALJ’s Determination (See IDRD at 24). Figures 2 and 3 demonstrate the projections of the flange of the ‘090 patent. This patent describes a photosensitive drum unit for a replaceable toner cartridge such as that described in the ‘278, ‘564, and ‘215 patents. Id. at 25-26, 185. The key feature of this patent is the projections on the flange that is attached to the drum. The projections project radially inward of the drum such that the projections keep the coupling member in Figure 1 above, attached to the drum so that the member will pivot to become coaxial with the drive shaft and the drum unit as the drive shaft and drum unit become fully engaged. Id. The coupling member is not part of the ‘090 patent.

Figure 2 Figure 3 (See IDRD at 26) Figures 4 and 5 demonstrate the movable coupling member of the ‘080 patent. Id. 26-28. Here, the coupling member is used in a cartridge that does not have a photosensitive drum, but rather such a cartridge would be moved on a rotating carousel opposite a photosensitive drum. Id. at 27. As with the coupling members in the other patents, the coupling member here is inclined prior to being engaged with the drive shaft, with a maximum angle of inclination between 20 and 60 degrees. Id. When the coupling member is fully engaged with a drive shaft, it pivots to become coaxial with the drive shaft and parallel, but offset, with the developer roller/drum unit axis. Id.

Figure 4 Figure 5 (See IDRD at 28) Figures 6 and 7 were provided by Protestant as depictions of the 255 toner cartridge. Figures 6 and 7 demonstrate the features incorporated into the redesigned 255 toner cartridge. Figure 6 is a cut-away depiction of the new 255 toner cartridge when it is fully engaged with a drive shaft inside of a printer. Figure 7 is a cut-away depiction of the new 255 toner cartridge when it is not fully engaged with a drive shaft. The coupling member composes two different pieces 21a and 21b.
Figure 6 Figure 7 ISSUE: The issue presented is whether the 255 cartridge is covered by the claims at issue in the underlying patents of the 918 exclusion order and are subject to exclusion from the United States. LAW AND 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 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 Protestant to establish that the cartridges at issue are not covered by one or more of the claims from the patents listed in the 918 GEO. The Protestant does not claim that the cartridges do not practice the claims of the patents in question rather that the patent rights have been exhausted due to a qualifying first sale. The Protestant also claims that the excluded products are the result of permissible repair. 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 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.”). 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.”). PROTESTANT’S ARGUMENT The 255 cartridge is described by the Protestant as not having a coupling member with a single axis that is inclined with respect to the axis of a rotary member, but rather that the 255 cartridge has a multi-piece coupling with two distinct axes. While some parts of the coupling incline, others never do. Protestant states that the portion of the toner cartridge that couples with the printer does not incline with respect to the axis of the drum. Protestant further states that the claims of the patents at issue recite “a coupling member having an axis” Protestant then cites Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001) to attest that the term having is not an open-ended transition word similar to comprising and including. Protestant also states that the claim language itself states that the coupling member has “an” axis; the term “an” is singular, and does not suggest a coupling member with more than one axis. Regarding the second patent group, Protestant states that the 255 cartridge “drum flange” design does not possess radial projections that extend inward to a varying extent as required by the ‘090 patent’s claims. The type of “drum flange” on the 255 cartridge is substantially the same “drum flange” that Canon stipulated did not infringe the ‘090 patent during the 918 investigation. Seeing that this is the same type of “drum flange” that was previously found not to infringe, the 255 cartridge cannot be said to practice all of the limitations of the ‘090 patent. The coupling member of the 255 cartridge is essentially the same as those coupling members found to infringe the underlying patents at issue in the 918 GEO with a singular addition, the use of a hinge to connect the first end portion of the coupling member to the second end portion of the coupling member as opposed to a straight shaft which was present in the coupling member found to infringe. None of the patents at issue speak to how the first and second portions of the coupling member should be connected together. This hinge can be seen in Figures 6 and 7 joining the two pieces of the coupling member, 21a and 21b. This addition causes the coupling member to possess two distinct axes. As stated in Crystal, “the transition ‘having’ can … make a claim open”. Id. This was additionally show in Lami Corp. v. Am. Power Prods. Inc., 228 F.3d 1365, 1376 (Fed. Cir. 2000) and in Regents of Univ. of Cal. V. Eli Lilly & Co., 119 F.3d 1559, 1573 (Fed. Cir. 1997). In each of these cases, the specification was used to help determine whether the term “having” should be construed as being open or closed. In the specification for the ‘564 patent, column 82, lines 19-31 states “As has been described hereinbefore, in the present invention, the axis of the drum coupling member can take a different angular positions relative to the axis of the photosensitive drum. The drum coupling member can be engaged with the drive shaft in the direction substantially perpendicular to the axis of the drive shaft provided in the main assembly by this structure. In addition, the drum coupling member can be disengaged from the drive shaft in the direction substantially perpendicular to the axis of the drive shaft. The present invention can be applied to the process cartridge, the electrophotographic photosensitive member drum unit, the rotation force transmitting portion (drum coupling member), and the electrophotographic image forming device.” Similar language is found in the ‘215 patent on column 82, lines 25-30 and ‘008 patent on column 63, lines 6-19. This opens up the possibility of multiple axes being used in the coupling member seeing that this is exactly what has been done by the 255 cartridge coupling member, multiple axes being used to help transmit rotational force. As such we can see that “having” can be construed as being open. Turning then to the article “an”, the Federal Circuit stated in Crystal, “indefinite articles ‘a’ or ‘an,’ when used in a patent claim, mean ‘one or more’ in claims containing open-ended transitional phrases”. Crystal at 1347. The relevant claims of the patents at issue all include language describing the coupling member “having an axis”. Due to the connection between the first and the second portion of the coupling member being a hinge, the coupling member itself possess multiple axes. At least one of the axes of the coupling member practice the limitations set out in the ‘564 patent, the ‘215 patent, and the ‘008 patent. These limitations being some form of axis that can fall in the same axis of the photosensitive drum and an axis at inclined to that first axis. The 255 toner cartridge has added the capability of the coupling to have multiple axes, however due to the open term used in the ‘564 patent, the ‘215 patent, and the ‘008 patent this addition is not then outside of the scope of these patents. As such, the 255 toner cartridge still practices the claims at issue in the patents which are the center of the 918 GEO. HOLDING: Based on the record before this office, Protestant has not established by a preponderance of the evidence that the 255 cartridge does not practice the patents underlying the 918 GEO. Therefore, the protest challenging exclusion from entry is DENIED. 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 Branch