Ruling Request; 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 H291815 July 19, 2018 OT:RR:BSTC:IPR H291815 RES CATEGORY: 19 U.S.C. §1337 Hua Chen, Esq. ScienBiziP, P.C. 550 S. Hope Street Ste. 2825 Los Angeles, CA 90071 RE: Ruling Request; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-918; Certain Toner Cartridges and Components Thereof. Dear Mr. Chen: Pursuant to 19 C.F.R. part 177 the Intellectual Property Rights Branch, Regulations and Rulings, U.S. Customs and Border Protection (“CBP”) issues this ruling letter. We hold that the toner cartridges at issue in this ruling letter are not subject to the general exclusion order (“GEO”) issued by the U.S. International Trade Commission (“ITC” or “Commission”) in Investigation No. 337-TA-918 (“the ’918 investigation”). This ruling letter is the result of an inter partes proceeding administered by CBP. The inter partes proceeding involved the two parties with a direct and demonstrable interest in the question presented by the ruling request: your clients, Zhuhai Ever-Bright Technology Co., Ltd. and Tech-Sky Imaging, Inc., (collectively, “Requesters” or “ZEB”) and Canon Inc. of Japan, Canon U.S.A., Inc. of Melville, New York, and Canon Virginia, Inc. of Newport News, Virginia (collectively, “Canon”). BACKGROUND: A. Rule 177 Proceeding before the IPR Branch On November 2, 2017, Requesters submitted a letter (“Ruling Request”) requesting administrative rulings pursuant to 19 C.F.R. part 177 as to whether certain toner cartridges (“the ZEB toner cartridges”) manufactured by Zhuhai Ever-Bright Technology Co., Ltd., would be subject to the GEO issued by the ITC in the ’918 investigation. See Ruling Request at 1 and 12-13, Nov. 2, 2017. Specifically, the Ruling Request seeks a ruling with respect to the ZEB toner cartridges that incorporate the Component Model A flange (“Model A flange”) and the ZEB toner cartridges that incorporate the Component Model B flange (“Model B Flange”). Id. at 12-13. The coupling member is the same design regardless of flange model. Id. On December 22, 2017, Canon responded to the Ruling Request indicating that it “does not object to the requested ruling that toner cartridges manufactured by Zhuhai Ever-Bright Technology Co., Ltd. that incorporate the Component Model A or Component Model B coupling member-drum flange assembly do not fall within the scope of the GEO issued in Investigation No. 337-TA-918, but disagrees with one aspect of ScienBiziP’s (“SBIP”) November 2, 2017 177 Request, discussed below.” See E-mail from Michael Sandonato, counsel for Canon, to William Wittwer, Attorney-Advisor at CBP, Edmund Haughey, counsel for Canon, and Hua Chen, Counsel for ZEB (Dec. 22, 2017). Specifically, Canon stated: The disagreement relates to claim 1 of U.S. Patent No. 8,676,090 (“the ’090 patent”).  This claim requires, among other things, a drum flange that includes “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.”  The claim further requires that “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 at a position closer to the cylinder.”  SBIP first asserts that the Model A and B drum flanges lack projections that project radially inwardly.  Canon disagrees.  At the very least, the two semicircular structures within the drum flanges are projections that project radially inwardly.  Alternatively, SBIP asserts that the Model A and B assemblies do not infringe claim 1 of the ’090 patent because the internal structures within the drum flanges project radially inwardly to the same extent along their entire length.  Canon does not dispute this, and accordingly does not dispute the ultimate conclusion with respect to the ‘090 patent.   Id. Canon further stated that “[p]rovided that SBIP withdraws its first argument with respect to the ‘090 patent (i.e., the drum flanges lack projections that project radially inwardly) and/or CBP limits its ruling with respect to the ’090 patent to SBIP’s alternative argument (i.e., the structures inside the drum flanges do not project inwardly of the drum flange to a greater extent at a position farther from the cylinder than they do at a position closer to the cylinder), we see no reason for Canon to participate in this proceeding.” Id. In response to Canon, ZEB agreed to “withdraw[] its first non-infringement argument with respect to claim 1 of the ‘090 patent, i.e., contending that the drum flanges at issue lack projections that project radially inwardly.” See E-mail from Hua Chen to William Wittwer, Michael Sandonato, Edmund Haughey, and Calvin Chai, counsel for ZEB (Dec. 23, 2017). In view of ZEB’s withdrawal of all arguments disputed by Canon and Canon’s clear indication that it does not dispute any of the remaining arguments, no additional briefing or oral argument was needed by CBP in this inter partes proceeding to reach a determination regarding the questions presented in the Ruling Request. For the reasons discussed below, we hold that the ZEB toner cartridges, i.e., those using the Model A and Model B flanges, are not subject to the GEO issued in the ’918 investigation. B. Investigation No. 337-TA-918 1. Procedural History The Commission instituted the ’918 investigation 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 (collectively, “Canon Complainants”). See 79 Fed. Reg. 33777 (June 12, 2014). The Canon Complainants alleged violations by thirty-three respondents of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337, based upon the importation into the United States, the sale for importation, and the sale within the United States after importation of certain toner cartridges and components thereof by reason of infringement of certain claims of U.S. Patent No. 8,280,278 (‘‘the ’278 patent’’); U.S. Patent No. 8,630,564 (‘‘the ’564 patent’’); U.S. Patent No. 8,682,215 (‘‘the ’215 patent’’); U.S. Patent No. 8,676,090 (‘‘the ’090 patent’’); U.S. Patent No. 8,369,744 (‘‘the ’744 patent’’); U.S. Patent No. 8,565,640 (‘‘the ’640 patent’’); U.S. Patent No. 8,676,085 (‘‘the ’085 patent’’); U.S. Patent No. 8,135,304 (‘‘the ’304 patent’’); and U.S. Patent No. 8,688,008 (‘‘the ’008 patent’’). Id. Subsequently, the investigation was partially terminated based on withdrawal of the complaint as to all asserted claims of the following patents: (1) the ‘744 patent; (2) the ‘640 patent; (3) the ‘085 patent; and (4) the ‘304 patent. See Notice of a Commission Determination Not To Review an Initial Determination Terminating the Investigation as To U.S. Patent Nos. 8,369,744; 8,565,640; 8,676,085; and 8,135,304, Doc. ID 541874 (Sept. 11, 2014). On May 12, 2015, the Administrative Law Judge (“ALJ”) issued an Initial Determination (“ID”), granting the Canon Complainants’ motion for summary determination of violation and recommending the issuance of a general exclusion order. See ID at 80 – 249, Doc. ID 556964 (May 12, 2015). On August 31, 2015, the Commission determined to affirm the ALJ’s finding of a violation of section 337, and issued a general exclusion order (“GEO”) barring entry of certain toner cartridges and components thereof that infringe one or more of claims 160, 165, and 166 of the ’278 patent; claims 171, 176, 179, 181, 189, 192, and 200 of the ’564 patent; claims 23, 26, 27, and 29 of the ’215 patent; claims 1–4 of the ’090 patent; and claims 1, 7–9, 11, 12, and 34 of the ’008 patent. See 80 Fed. Reg. 53567, 53568 (Sept. 4, 2015). 2. Patent Claims at Issue The patent claims at issue are claims 160, 165, and 166 of the ’278 patent; claims 171, 176, 179, 181, 189, 192, and 200 of the ’564 patent; claims 23, 26, 27, and 29 of the ’215 patent; claims 1, 7–9, 11, 12, and 34 of the ’008 patent; and claims 1–4 of the ’090 patent. Claim 160 of the ’278 patent is an independent claim. Claim 160 of the ’278 patent recites (emphasis added): 160. 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. Claims 171, 179, 189, and 200 of the ’564 patent are independent claims. Claims 171, 179, 189, and 200 of the ’564 patent recite (emphasis added): 171. 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. 179. 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. 189. 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. 200. 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. Claim 23 of the ’215 patent is an independent claim. Claim 23 of the ’215 patent recites (emphasis added): 23. 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 coaxial with the axis L1 of the photosensitive drum, and a second position 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. Claims 1 and 12 of the ’008 patent are independent claims. Claims 1 and 12 of the ’008 patent recite (emphasis added): 1. 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. 12. 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. Claim 1 of the ’090 patent is an independent claim. Claim 1 of the ’090 patent recites (emphasis added): 1. An electrophotographic photosensitive drum unit comprising: (a) a cylinder having a photosensitive layer at an outer periphery; and (b) 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 at a position closer to the cylinder. Figures 1 through 5 below are excerpted from the ALJ’s determination. 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 ID 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 ID 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 couplin