OT:RR:BSTC:IPR H280845 JW
Merritt R. Blakeslee
The Blakeslee Law Firm
1250 Connecticut Avenue, N.W.
Suite 700
Washington, D.C. 20036
RE: Ruling Request; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-918; Certain Toner Cartridges and Components Thereof.
Dear Mr. Blakeslee:
This is in response to your letter, dated November 1, 2016, which included Attachments 1 to 7 and physical samples of the products at issue (“Ruling Request”), on behalf of your client Mito Color Imaging Co., Ltd., (“Mito”), in which you requested an administrative ruling, pursuant to 19 C.F.R. § 177, whether certain of Mito’s toner process cartridges (“Mito Process Cartridges”) and components (collectively, “Mito Products”) are subject to the above-referenced general exclusion order (“918 GEO”) issued by the U.S. International Trade Commission (“ITC” or “Commission”).
FACTS:
The Commission instituted Investigation No. 337-TA-918 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, 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).
The independent claims of the patents at issue in the 918 GEO are listed below with the specific parts relevant to this Ruling Request 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 independent claim 1 of the ‘090 patent reads as follows:
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 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 are 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. at 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).
The Mito Products
The Ruling Request states that the Mito Process Cartridges utilize one of three types of coupling member-drum flange assemblies, referred to as Types MTG01, MTG02, and MTG03. Ruling Request dated November 1, 2016 at 1. The Ruling Request further notes that the design of the three coupling member-drum flange assemblies is essentially the same and all three use the same number of components. Id. The Ruling Request points out that the primary difference between the three assembly types is size, and while there are a few other minor design differences, they do not affect the infringement analysis. Id.
The Ruling Request asserts that the Mito Products do not infringe any of the patents listed in the 918 GEO because the Mito Products lack the following key components required in the independent claims of the patents at issue. With respect to the ‘278, ‘564, ‘215, and ‘008 patents the Ruling Request states that “the coupling member of the Mito Process Cartridge is held rigidly in alignment with Axis L1 [defined as the “axis of the rotary member (i.e., photosensitive drum)”] by a collar within the circumference of the drum flange . . . . [hence,] the angle of inclination between the rotary member and the coupling member of the Mito Process Cartridges is essentially 0°.” See Ruling Request dated November 1, 2016 at 19, 21. The following pictures below (taken from the Ruling Request) depict the coupling member-drum flange assemblies of the Mito Process Cartridges; the Ruling Request notes that “[a] collar (1) that aligns the coupling member in the center of the drum flange serves to prevent the coupling member from inclining from the axis of the drum flange.” Id. at 22; Figures 5-13 of Ruling Request dated November 1, 2016 at 22-26.
Figure 5: MTG01 coupling member with collar (1) and drum flange disassembled
Figure 6: MTG02 coupling member with collar (1) and drum flange disassembled
Figure 7: MTG03 coupling member with collar (1) and drum flange disassembled
Figure 8: MTG01 coupling member and drum flange assembled as a single unit, with the axis of the coupling coaxial with Axis L1
Figure 9: MTG02 coupling member and drum flange assembled as a single unit, with the axis of the coupling coaxial with Axis L1
Figure 10: MTG03 coupling member and drum flange assembled as a single unit, with the axis of the coupling coaxial with Axis L1
Figure 11: MTG01 coupling member and drum flange assembled, showing collar that prevents coupling member from inclining from Axis L1
Figure 12: MTG02 coupling member and drum flange assembled, showing collar that prevents coupling member from inclining from Axis L1
Figure 13: MTG03 coupling member and drum flange assembled, showing collar that prevents coupling member from inclining from Axis L1
With respect to the ‘090 patent the Ruling Request asserts that there is no literal infringement because (1) “the Mito Process Cartridge drum flange does not have ‘a space diametrically between the . . . projections,’” rather “each drum flange of the Mito Process Cartridge has five equally spaced projections” (see Figures 14-15 (reproduced below) of the Ruling Request dated November 1, 2016 at 29-30); and (2) the projections on the drum flange of the Mito Process Cartridges do not project radially inwardly to a greater extent at a position farther from the cylinder than they do at a position closer to the cylinder, rather “the projections on the drum flange of the Mito Process Cartridge project radially inward at a constant rate [maintaining] an even height along their entire length” (see Figures 17-19 (reproduced below) of the Ruling Request dated November 1, 2016 at 31-32). Ruling Request dated November 1, 2016 at 28 and 30.
ISSUE:
The issue presented is whether the Mito Products are covered by any of the patents listed in the 918 GEO, and as a result, subject to exclusion 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 unnamed parties 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 Mito to establish that the products at issue are not covered by one or more of the independent claims of the ‘278, ‘564, ‘215, ‘090, and ‘008 patents.
All of the claims at issue in the 918 GEO depend from at least one of the following independent claims: claim 160 of the ‘278 patent; claims 171, 179, 189, and 200 of the ‘564 patent; claim 23 of the ‘215 patent; claim 1 of the ‘090 patent; and claims 1 and 12 of the ‘008 patent. If these independent claims are not infringed, then none of the dependent claims in these patents are infringed. “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. Thus, the 918 GEO applies to articles manufactured or imported by Mito only if they infringe the listed claims above for any of the ‘278, ‘564, ‘215, ‘090, and ‘008 patents.
There are two different claim elements of patents ‘278, ‘564, ‘215, and ‘008 at issue with the Mito Products: (1) an inclining moveable coupling member; and (2) the angle of inclination of the moveable coupling member. With regard to the ‘090 patent, the claim element at issue is the direction of the inward projections inside the drum unit flange. These claim elements are addressed in turn.
“Inclining Moveable Coupling Member” Claim Element of the ‘278, ‘564, ‘215, and ‘008 Patents
To infringe on any of the independent claims of the ‘278, ‘564, ‘215, and ‘008 patents, a toner cartridge/drum unit (collectively referred to as a “toner cartridge”) must possess an inclining moveable coupling member as described and highlighted in bold in each patent listed in the FACTS section. These independent claims require an inclining moveable coupling member that, prior to when a toner cartridge is inserted into a printer, the coupling member inclines on an axis separate from the axis of the drum unit. When the toner cartridge is fully engaged in the printer, the moveable coupling member pivots to become coaxial with the drum unit. Figure 1 above demonstrates what type of moveable coupling member is covered by the claims of the patents.
As noted supra, Mito asserted that the Mito Process Cartridges do not infringe these patents because they do not possess the inclining moveable coupling member as required by these patent claims. The Ruling Request stated that the coupling members of the Mito Process Cartridges do not incline from Axis L1. Ruling Request dated November 1, 2016 at 21. An examination of samples of the Mito Products; specifically, the coupling members of the Mito Process Cartridges, and also the separately provided Mito coupling member/drum flange assemblies (as depicted supra in Figures 5 through 13), confirms this assertion. While the coupling members of the Mito Process Cartridges are able to, when compressed, move along the axis L1 (i.e., coaxial to the drum unit’s axis), they are not able to become inclined with respect to the axis L1 (i.e., on an axis separate from the axis of the drum unit). Accordingly, as the Mito Process Cartridges do not possess an inclining moveable coupling member, they do not meet all the claim elements of the independent claims of any of the ‘278, ‘564, ‘215, and ‘008 patents.
“Angle of Inclination of Moveable Coupling Member” Claim Element of the ‘278, ‘564, ‘215, and ‘008 Patents
In addition to the claim element requirement that a toner cartridge possess a moveable coupling member as described above, such a coupling member’s axis must also pivot within a 20 degree to 60 degree range from the axis of the drum unit. This claim element is found in the following claims: claim 160 of the ‘278 patent; claim 171 of the ‘564 patent; claim 23 of the ‘215 patent; and claims 1 and 12 of the ‘008 patent.
As described above, none of the Mito Process Cartridges have a moveable coupling member that is able to be inclined with respect to axis L1 of the drum unit. Rather, the Mito Process Cartridges have coupling members which only move coaxially with respect to the axis L1 of the drum unit; hence, the angle of inclination is essentially 0 degrees. As a result, they do not create an angle of inclination that falls within 20 degrees to 60 degrees from that of the drum unit’s axis and thus do not meet all the claim elements of the independent claims listed in the preceding paragraph of the ‘278, ‘564, ‘215, and ‘008 patents that have an angle of inclination requirement.
Claim 1 of the ‘090 Patent
The final patent claim at issue is claim 1 of the ‘090 patent, which requires that the flange on the drum unit have projections inside the flange that project radially inward to a greater extent at a position farther from the cylinder than at a position closer to the cylinder. See claim 1 of the ‘090 patent.
As shown in Figures 17 to 19 supra, and as an examination of the Mito Process Cartridge drum flanges reveal, the projections inside the flanges project radially inward to the same extent regardless of whether the position is farther from, or closer to, the cylinder. Because the flange projections in the drum units of the Mito Process Cartridges project radially inward to the same extent along their entire length, the drum units of the Mito Process Cartridges do not meet all the claim elements of claim 1 of the ‘090 patent.
Therefore, based on the evidence in the record, the Mito Products do not infringe upon the independent claims of the ‘278, ‘564, ‘215, ‘008, and ‘090 patents and thus these articles are outside the scope of the 918 GEO.
HOLDING:
As discussed above, the Mito Products, do not infringe upon the ‘278, ‘564, ‘215, ‘008, and ‘090 patents. As such, they are not subject to exclusion from entry for consumption into the United States, entry for consumption from a foreign-trade zone, or withdrawal from a warehouse for consumption.
This decision is limited to the specific facts set forth herein. If Mito manufactures or imports toner process cartridges and components whose designs differs 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. §§ 177.2(b)(1), (2), and (4), and §§ 177.9(b)(1) and (2).
Sincerely,
Charles R. Steuart, Chief
Intellectual Property Rights Branch