OT:RR:BSTC:IPR H256238 AMM
Ms. Anne Maricich
Assistant Director Field Operations, Los Angeles
Director, Electronics Center of Excellence and Expertise
One World Trade Center, Suite 705
Long Beach, CA 90831
RE: Internal Advice Request; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-861/867; Certain Cases for Portable Electronic Devices
Dear Ms. Maricich:
This is in reply to your letter dated October 6, 2014, on behalf of Superior Communications, Inc. (“Superior”), in which you requested a ruling, pursuant to 19 C.F.R. Part 177, as to whether certain of Superior’s products developed before the issuance by the U.S. International Trade Commission (“ITC” or “Commission”) of the above referenced general exclusion order (“GEO”) are subject to exclusion from entry. Samples of Superior’s “Dualtek” model one-piece portable electronic device cases were included with the ruling request. In addition, CBP has reviewed a sample taken from Entry No. XXX-XXXX237-8, entered at the Port of Long Beach, CA, on December 31, 2014. CBP has considered your comments, as well as submissions from Superior dated August 12, 2014, August 21, 2014, September 10, 2014, and September 12, 2014.
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or were terminated based on an amendment to the complaint and notice of investigation, or were the subject of withdrawn allegations, or were terminated based on a finding that they had committed no acts in violation of 19 U.S.C. §1337.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 (“IA”).
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.
On August 12, 2014, Superior submitted a ruling request to CBP regarding the “Dualtek” one-piece portable electronic device cases imported by Superior, requesting a determination that said cases do not fall under the scope of the GEO. Superior submitted seven phone cases for determination, namely the “App iPhone 5C DualTek white”, Item No. 95009VRP; “One M8 Mini Dualtek, Matte Black”, Item No. 97501VRP; “One M8 Mini DualTek, Arctic White”, Item No. 97502VRP; “LG G3 DualTek Matte Black”, Item No. 97556VRP; “LG G3 DualTek Artic White”, Item No. 97558VRP; “Sam S5 Mini Dualtek Matte Black”, Item No. 97873VRP; and “iPhone 6 4.7 Dualtek Black”, Item No. 98099VRP. Superior indicates that a total of thirty versions of the “Dualtek” cases are available, and that the samples they submitted are representative of twenty-eight of those products. A sample of the “Kyocera Brigadier, Dltk, Mte Black”, Item No. 98683VRP, was taken from Entry No. XXX-XXXX237-8, as a representative sample of the final two “Dualtek” versions. The instant cases have similar construction, but vary by dimension to accommodate the specific electronic device which they are designed to contain. The cases are available in various color schemes, such as Matte Black, Arctic White, and Kayak Yellow. The “One M8 Mini DualTek, Arctic White”, Item No. 97502VRP, and “LG G3 DualTek Matte Black”, Item No. 97556VRP, models are pictured below:
One M8 Mini DualTek, Arctic White
Item No. 97502VRP
LG G3 DualTek, Matte Black
Item No. 97556VRP
Superior had previously manufactured a line of “Dualtek” cases using a different design, which was originally at issue in the Commission’s investigation. The construction of the new “Dualtek” case design is different from that of the old design. The older design is not at issue in this ruling request.
ISSUE:
Whether the thirty “Dualtek” electronic device cases are covered by the asserted claims of the ‘561 patent and therefore fall within the scope of the ITC’s General Exclusion Order in Investigation No. 337-TA-861/867, such that they would be excluded from entry for consumption into the United States.
LAW AND ANALYSIS:
Patent infringement determinations for utility patents entail two steps. The first step is to interpret the meaning and scope of the patent claims asserted to be infringed. The second step is to compare the properly construed claims to the accused device. See Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). The first step is a question of law; the second step is a question of fact. See Freedman Seating Co. v. American Seating Company, 420 F.3d 1350, 1357 (Fed. Cir. 2005).
In patent law, there are two types of infringement: direct and indirect infringement. Direct infringement includes two varieties: literal infringement and infringement under the doctrine of equivalents.
Literal infringement is when every limitation recited in a claim is found in the accused device. See Strattec Security Corp. v. General Automotive Specialty Co., 126 F.3d 1411, 1418 (Fed. Cir. 1997); see also Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1349 (Fed. Circ. 1998) (“An accused device cannot infringe, as a matter of law, if even a single limitation is not satisfied.”). Additionally, a dependent claim cannot be found to infringe if the independent claim from which it depends is not found to infringe. See Becton Dickinson & Co. v. C.R. Bard Inc., 922 F.2d 792, 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.
Superior’s “Dualtek” Electronic Device Cases
Superior provided CBP with seven sample phone cases, namely the “App iPhone 5C DualTek white”, Item No. 95009VRP; “One M8 Mini Dualtek, Matte Black”, Item No. 97501VRP; “One M8 Mini DualTek, Arctic White”, Item No. 97502VRP; “LG G3 DualTek Matte Black”, Item No. 97556VRP; “LG G3 DualTek Artic White”, Item No. 97558VRP; “Sam S5 Mini Dualtek Matte Black”, Item No. 97873VRP; and “iPhone 6 4.7 Dualtek Black”, Item No. 98099VRP, and indicated that these samples were representative of twenty-eight of the thirty available models. A sample of the “Kyocera Brigadier, Dltk, Mte Black”, Item No. 98683VRP, was taken from Entry No. XXX-XXXX237-8, as a representative sample of the final two “Dualtek” models. Superior asserted that the construction of all thirty models of “Dualtek” cases are substantially similar, only varying by color and dimension.
“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 Superior’s filing, it present a several claim construction arguments as to why the instant product does not infringe upon claim 1 of the ‘561 patent.
In Superior’s second argument, it asserted that the new “Dualtek” design could not infringe claim 1 (or any dependent claim) of the ‘561 patent, because the design “does not have a flexible inner layer that includes a bottom and side surfaces as required by claim 1.” See Ruling Request, at p. 15 (citing the ‘561 patent at col. 5, ll. 24-26). In particular, Superior states:
In addition, the flexible material on the sides of the New Dualtek cases does not have the claimed bottom surface required for the claimed flexible inner layer, or the claimed side surfaces joined to the claimed bottom surface. Note that the claim requires the bottom surface of the flexible inner layer to cover at least a portion of the bottom surface of the inserted personal electronic device. The New Dualtek cases do not include a bottom surface that has a flexible inner layer as claimed.
See Ruling Request, at p. 18.
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, dated November 4, 2014, 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. 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 new “Dualtek” 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 Inv. No. 337-TA-861/867. As such, CBP will undertake an independent analysis to construe the term “joined.” While the specification does 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).
The “Dualtek” models at issue do include a flexible inner layer co-molded to an exterior hard lard layer, permanently affixed together to form a one-piece assembly. However, 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. There is a flexible elastomeric insert glued to the bottom inner of the exterior hard layer, but this insert is not joined to the flexible inner layer which covers the 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.
One M8 Mini DualTek, Arctic White, Item No. 97502VRP
Top Down View
As such, the instant “Dualtek” 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 instant thirty models of Superior “Dualtek” electronic device cases (specifically, the “App iPhone 5C DualTek Black”, Item No. 95008VRP; “App iPhone 5C DualTek white”, Item No. 95009VRP; “App iPhone 5C DualTek Yellow”, Item No. 95010VRP; “One M8 Mini Dualtek, Matte Black”, Item No. 97501VRP; “One M8 Mini DualTek, Arctic White”, Item No. 97502VRP; “LG G3 DualTek Matte Black”, Item No. 97556VRP; “LG G3 DualTek Artic White”, Item No. 97558VRP; “Sam S5 Mini Dualtek Matte Black”, Item No. 97873VRP; “Sam S5 Mini Duatek, Arctic White”, Item No. 97875VRP; “iPhone 6 4.7 Dualtek Black”, Item No. 98099VRP; “iPhone 6 4.7 Dualtek White”, Item No. 98100VRP; “iPhone 6 5.5 Dualtek Black”, Item No. 98142VRP; “iPhone 6 5.5 Dualtek White”, Item No. 98143VRP; “iPhone 6 4.7 Dualtek Pink”, Item No. 98270VRP; “iPhone 6 4.7 Dualtek Blue”, Item No. 98271VRP; “iPhone 6 4.7 Dualtek Yellow”, Item No. 98408VRP; “LG G Vista, Dualtek, Matte Black”, Item No. 98487VRP; “LG G Vista, Dualtek, Arctic White”, Item No. 98488VRP; “Kycera Brigadier, Dltk, Mte Black”, Item No. 98683VRP; “Kyocera Brigadier, DulTek, White”, Item No. 98685VRP; “SM-G800A Dualtek Black”, Item No. 98688VRP; “Sam Gal S5 Dualtek Black”, Item No. 98793VRP; “Sam Gal S5 Dualtek White”, Item No. 98794VRP; “Sam Gal S5 Dualtek Yellow”, Item No. 98795VRP; “App iPhone 5S Dualtek Black”, Item No. 98796VRP; “App iPhone 5S Dualtek White”, Item No. 98797VRP; “App iPhone 5S Dualtek Pink”, Item No. 98798VRP; “App iPhone 5S Dualtek Blue”, Item No. 98799VRP; “App iPhone 5S Dualtek Yellow”, Item No. 98802VRP; and “App iPhone 5S Dualtek Green”, Item No. 98803VRP) are not covered by the claims at issue in 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 Superior manufactures or imports electronic device cases 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. §177.2(b)(1), (2), and (4), and §177.9(b)(1) and (2).
Sincerely,
Charles R. Steuart, Chief
Intellectual Property Rights Branch