OT:RR:BSTC:IPR H292356 RES
Christine E. Lehman
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
901 New York Avenue, NW
Washington, DC 20001-4413
RE: Ruling Request; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-918; Certain Toner Cartridges and Components Thereof.
Dear Ms. Lehman:
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 client, Zhuhai Kingly Technology Co., Ltd, (“Requestor” or “Zhuhai Kingly”) and Canon Kabushiki Kaisha (“Canon”).
BACKGROUND:
A. Rule 177 Proceeding before the IPR Branch
On November 21, 2017, Zhuhai Kingly submitted a letter requesting an administrative ruling pursuant to 19 C.F.R. part 177 as to whether certain toner cartridges (“Kingly Toner Cartridges”) manufactured and sold by Zhuhai Kingly, and potentially imported by several other entities, would be subject to the GEO issued by the ITC in the ’918 investigation. See Ruling Request at 1-2 and 15, Nov. 21, 2017. Zhuhai Kingly submitted a sample Kingly Toner Cartridge with the Ruling Request.
On December 13, 2017, Zhuhai Kingly provided Canon with a full, unredacted copy of the Ruling Request. See E-mail from Christine Lehman, counsel for Zhuhai Kingly, to Michael Sandonato, counsel for Canon (Dec. 13, 2017).
On January 5, 2018, Canon responded to the Ruling Request, indicating that it “does not object to the requested ruling that the Kingly cartridge does not fall within the scope of the GEO issued in Investigation No. 337-TA-918, but disagrees with one aspect of Kingly’s arguments…” See E-mail from Michael Sandonato to William Wittwer, attorney-advisor at CBP, and Christine Lehman (Jan. 5, 2018). Canon further indicated that if Zhuhai Kingly were to withdraw the disputed aspect of its argument, “we see no reason for Canon to participate in this proceeding.” Id.
In response, on January 31, 2018, Zhuhai Kingly submitted a letter supplementing its Ruling Request (“Supplemental Letter”). The Supplemental Letter withdraws the aspects of Zhuhai Kingly’s argument that Canon disputes. See Supplemental Letter at 1-2, January 31, 2018.
In view of Zhuhai Kingly’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 Zhuhai Kingly’s Ruling Request. For the reasons discussed below, we hold that the Kingly Toner Cartridges 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 the ’276 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 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 flange of the ‘090 patent is designed specifically to work with an inclinable coupling. The coupling member in Figure 2 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)
C. The Article at Issue and Arguments Presented to CBP
There is one article at issue in the Ruling Request (Figures 5 - 10), the Kingly Toner Cartridge. See Ruling Request, dated Nov. 21, 2017. The Kingly Toner Cartridge will be manufactured in China and imported by the companies listed in “Table 2” of the Ruling Request. Id. at 15. Zhuhai Kingly provided CBP with a sample of the Kingly Toner Cartridge for examination.
Zhuhai Kingly asserts that the Kingly Toner Cartridge does not infringe any of the patents listed in the GEO issued in the ’918 investigation because the Kingly Toner Cartridge lacks an inclining coupling member that is a required claim element of certain independent claims at issue and a particular flange design required by the remaining independent claim at issue. Id. at 1-2.
First, Zhuhai Kingly states that the Kingly Toner Cartridge does not possess an inclining coupling member on a separate axis from the developer roller. Rather, the coupling member is stationary along the same axis as the drum roller and is perpendicular to the drum-end flange. There is a lever on the end of the cartridge that is depressed when the cartridge is inserted into a printer, which then causes two projections to extend out from the coupling member. Figures 7-8. These projections then engage with the drive shaft of the printer to drive the photosensitive drum when printing. Id. at 11-14.
Second, Zhuhai Kingly asserts that the flange on the drum units do not have projections that project radially inward toward the drum to create a space to hold a coupling member and enable it to pivot. Rather, the drum flange has at most one inward projection and does not have at least two inward projections disposed diametrically opposed and the one projection in Zhuhai Kingly’s drum flange extends less inwardly at a position farther from the photosensitive drum that the projection does at a position closer to the photosensitive drum. Id. at 11 - 15.
Figure 5: Redesigned Model Front View
Figure 6: Redesigned Model Side View
Figure 7: Pushing Lever to Engage Coupling
Figure 8: The Gear Coupling Engaged
Figure 9: Schematic of Coupling on Kingly Toner Cartridge
Figure 10: Schematic of Coupling
Zhuhai Kingly also cited CBP Rulings HQ H272714 (dated July 1, 2016) and HQ H280845 (dated Feb. 1, 2017) in support of its arguments. Zhuhai Kingly argued that the coupling member of the Kingly Toner Cartridge, like the coupling members of the toner cartridges subject to review in H280845 and H272714, does not incline but is perpendicular to the end of the drum, and coaxial to the drum’s axis. Accordingly, Zhuhai Kingly concluded that, similar to the holdings in H280845 and H272714, the Kingly Toner Cartridge is outside the scope of the GEO issued in the ’918 investigation. See Ruling Request, p 15.
In response, in an email dated January 5, 2018, Canon wrote that it “does not object to the requested ruling that the Kingly cartridge does not fall within the scope of the [918] GEO.” See E-mail from Michael Sandonato to Christine Lehman and William Wittwer (Jan. 5, 2018). Canon further indicated that if Zhuhai Kingly were to withdraw the disputed aspect of its argument, “we see no reason for Canon to participate in this proceeding.” Id. Specially, Canon disagreed with Zhuhai Kingly’s argument that the drum flange in its cartridges lack two inward projections diametrically opposed from each other. Canon did not dispute the second portion of Zhuhai Kingly’s argument concerning the ‘090 patent that the projection in the drum flange extends less inwardly at a position farther from the photosensitive drum that it does at a position closer to the drum. Canon stated:
Provided that Kingly withdraws its argument with respect to the ‘090 patent that the drum flange in its cartridge lacks two inward projections diametrically opposed from each other and/or CBP limits its ruling to the undisputed part of Kingly’s argument (i.e., the drum flange does not have any projections that 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, Zhuhai Kingly filed a supplement to its ruling request dated January 31, 2018, in which the argument that “the drum flange in its cartridge lacks at least two inward projections diametrically opposed from each other, for the purposes of this Ruling Request” was withdrawn. See Supplemental Letter at 1-2, January 31, 2018.
An examination by CBP of the sample Kingly Toner Cartridge revealed that the coupling does not pivot or move at all and that it is set perpendicular to the flange of the drum unit. In addition, there is a lever that when depressed by hand (the lever would also be depressed when the cartridge is inserted into a printer) pushes two projections out that would engage with the drive shaft of a printer. Lastly, the schematic of the drum flange indicates that it does not appear to have any projections that project inwardly of the drum flange to a greater extent at a position farther from the drum cylinder than they do at a position closer to the cylinder.
ISSUE:
Whether the Kingly Toner Cartridge infringes any 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, and is therefore within the scope of the GEO issued in the ’918 investigation.
LAW AND ANALYSIS:
Law of Patent Infringement
Under section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337, the Commission has authority to conduct investigations into imported articles that allegedly infringe United States patents and impose remedies if the accused articles are found to be infringing. See 19 U.S.C. § 1337(a)(1)(B), (b)(1), (d), (f), (i). 19 U.S.C. § 1337(d), in particular, empowers the Commission to direct the exclusion from entry of articles found to infringe the asserted patents. When the Commission determines there is infringement and thus a violation of section 337, it generally issues one of two types of exclusion orders: (1) a limited exclusion order or (2) 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).
Both types of orders direct CBP to bar 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. In contrast, a general exclusion order bars the importation of infringing products by everyone, regardless of whether they were respondents in the Commission's investigation.” Id. A general exclusion order is appropriate only 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 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 [general exclusion order] by satisfying the heightened burdens of §§ 1337(d)(2)(A) and (B).”).
In addition to the action taken above, the Commission may issue an order under 19 U.S.C. § 1337(i) directing CBP to seize and forfeit articles attempting entry in violation of an exclusion order if their owner, importer, or consignee previously had articles denied entry on the basis of that exclusion order and received notice that seizure and forfeiture would result from any future attempt to enter articles subject to the same. An exclusion order under § 1337(d)—either limited or general—and a seizure and forfeiture order under § 1337(i) apply at the border only and are operative against articles presented for customs examination or articles conditionally released from customs custody but still subject to a timely demand for redelivery. See 19 U.S.C. §§ 1337(d)(1) (“The Commission shall notify the Secretary of the Treasury of its action under this subsection directing such exclusion from entry, and upon receipt of such notice, the Secretary shall, through the proper officers, refuse such entry.”); id. at (i)(3) (“Upon the attempted entry of articles subject to an order issued under this subsection, the Secretary of the Treasury shall immediately notify all ports of entry of the attempted importation and shall identify the persons notified under paragraph (1)(C).”) (emphasis added); see also ClearCorrect Operating, LLC v. U.S. Int’l Trade Comm’n, 810 F.3d 1283, 1295 (Fed. Cir. 2015) (“This section [1337(i)] permits the Commission to exclude ‘articles’ from importation into the United States; however, it is difficult to see how one could physically stop electronic transmissions at the borders under the current statutory scheme…. A construction of the term ‘articles’ that includes electronically transmitted digital data is also not reasonable when applied to Section 337(i)(3). This section reads, ‘[u]pon the attempted entry of articles subject to an order issued under this subsection, the Secretary of the Treasury shall immediately notify all ports of entry of the attempted importation and shall identify the persons notified under paragraph (1)(C).’ Not only can an electronic transmission not be subject to an ‘attempted entry’ through a ‘port of entry,’ it also cannot be intercepted at a ‘port of entry’ as contemplated in the statute.”) (emphasis added), reh’ng en banc denied by Clearcorrect Operating v. U.S. Int’l Trade Comm’n, 819 F.3d 1334 (Fed. Cir. 2016).
Significantly, unlike district court injunctions, the Commission can issue a general exclusion order that broadly prohibits entry of articles that infringe the relevant claims of an asserted patent without regard to whether the persons importing such articles were parties to, or were related to parties to, the investigation that led to issuance of the general exclusion order. See Vastfame Camera, Ltd. v. U.S. Int’l Trade Comm’n, 386 F.3d 1108, 1114 (Fed. Cir. 2004). The Commission also has recognized that even limited exclusion orders have broader applicability beyond just the parties found to infringe during an investigation. See Certain GPS Devices and Products Containing Same, Inv. No. 337-TA-602, Comm’n Op. at 17, n. 6, Doc ID 317981 (Jan. 2009) (“We do not view the Court’s opinion in Kyocera as affecting the issuance of LEOs [limited exclusion orders] that exclude infringing products made by respondents found to be violating Section 337, but imported by another entity. The exclusionary language in this regard that is traditionally included in LEOs is consistent with 19 U.S.C. § 1337(a)(1)(B)–(D) and 19 U.S.C. § 1337(d)(1).”).
However, this is not the only difference between district court injunctions under section 283 of the Patent Act and Commission exclusion orders under section 337 of the Tariff Act. For example, the traditional test for injunctive relief, used by district courts in accordance with the Supreme Court’s eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), opinion “does not apply to Commission remedy determinations under Section 337.” Spansion, Inc. v. U.S. Int’l Trade Comm’n, 629 F.3d 1331, 1359 (Fed. Cir. 2010). This difference between exclusion orders under Section 337 and injunctions under the Patent Act follows “the long-standing principle that importation is treated differently than domestic activity.” Id. at 1360 (citing United States v. 12 200-Ft. Reels of Super 8mm Film, 413 U.S. 123 (1973) (“Import restrictions and searches of persons or packages at the national borders rest on different considerations and different rules of constitutional law from domestic regulations. The Constitution gives Congress broad, comprehensive powers ‘to regulate Commerce with foreign Nations.’ Art. I, § 8, cl. 3.”); see Buttfield v. Stranahan, 192 U.S. 470 (1904) (“As a result of the complete power of Congress over foreign commerce, it necessarily follows that no individual has a vested right to trade with foreign nations, which is so broad in character as to limit and restrict the power of Congress to determine what articles of merchandise may be imported into this country and the terms upon which a right to import may be exercised. This being true, it results that a statute which restrains the introduction of particular goods into the United States from considerations of public policy does not violate the due process clause of the Constitution.”) (emphasis added).
Moreover, in the district courts, the criteria for adjudicating a violation of an injunction against future infringement by a party whose legacy products have already been adjudged to infringe requires application of the colorable differences test. TiVo Inc. v. Echostar Corp., 646 F.3d 869, 876 (Fed. Cir. 2011) (en banc). Under this test, if new or redesigned products are so different from the product previously found to infringe (focusing not on differences randomly chosen between the two but on the specific features of the product found to infringe in the earlier infringement trial), such that they raise a fair ground of doubt as to the wrongfulness of the defendant's conduct, the new or redesigned products are deemed to be more than colorably different from the legacy one adjudged to be infringing and violation of the injunction at this point would not be the appropriate consideration. Instead, a new trial would be required to litigate the infringement question. Id. at 881-83. The initial inquiry under the colorable differences test, therefore, focuses on whether the modification in question is significant. Id.
Exclusion orders, however, apply to any articles—new, modified, or otherwise— that are “covered by” the patent claims included in the exclusion order. See Certain Optical Disk Controller Chips and Chipsets, Inv. No. 337-TA-506, Comm’n Op. at 56-57, USITC Pub. 3935, Doc ID 287263 (July 2007) (“The Commission's long-standing practice is to direct its remedial orders to all products covered by the patent claims as to which a violation has been found, rather than limiting its orders only to those specific models selected for the infringement analysis...[W]hile individual models may be evaluated to determine importation and infringement, the Commission's jurisdiction extends to all models of infringing products that are imported at the time of the Commission's determination and to all such products that will be imported during the life of the remedial orders.”). The Commission has confirmed that this requires CBP to employ the traditional two-step test for patent infringement, and not the colorable differences test from TiVo, when administering a Commission exclusion order under section 337 to determine whether an imported article, or one at issue in a ruling request, is within the scope of that exclusion order. See Certain Sleep-Disordered Breathing Treatment Systems and Components Thereof, Inv. No. 337-TA-879, Advisory Opinion at 10, n. 2, Doc ID 539875 (Aug. 2014); see also Certain Erasable Programmable Read Only Memories, Inv. No. 337-TA-276, Enforcement Proceeding, Comm’n Op. at 11, Doc ID 43536 (Aug. 1991) (“The Commission has always issued its orders in terms of ‘infringing’ products, and has always intended them, as in this case, to prohibit to future importation or sale of products which were not specifically adjudged infringing in the violation proceeding, but do in fact infringe. The Commission has consistently issued exclusion orders coextensive with the violation of section 337 found to exist. Thus, in cases where the violation found involves infringement of patent claims, the Commission has consistently ordered the exclusion of articles which infringe the relevant patent claims.”) (emphasis added).
Lastly, despite the well-established principle that “the burden of proving infringement generally rests upon the patentee,” Medtronic, Inc. v. Mirowski Family Ventures, LLC, 134 S. Ct. 843; 187 L. Ed. 2d 703; 2014 U.S. LEXIS 788 (2014), the Commission has held that Medtronic is not controlling precedent and does not overturn its longstanding practice of placing the burden of proof on the party who, in light of the issued exclusion order, is seeking to have an article entered for consumption. See Certain Sleep- Disordered Breathing Treatment Systems and Components Thereof, Inv. No. 337-TA- 879, Advisory Opinion at 6-11. In particular, the Commission has noted that “[t]he Federal Circuit has upheld a Commission remedy which effectively shifted the burden of proof on infringement issues to require a company seeking to import goods to prove that its product does not infringe, despite the fact that, in general, the burden of proof is on the patent to prove, by a preponderance of the evidence, that a given article does infringe the patent in question.” Certain Integrated Circuit Telecommunication Chips, Inv. No. 337-TA-337, Comm’n Op. at 21, n.14, USITC Pub. 2670, Doc ID 217024 (Aug. 1993), (emphasis in original) (citing Sealed Air Corp. v. U.S. Int’l Trade Comm’n, 645 F.2d 976, 988–89 (C.C.P.A. 1981)).
This approach is supported by Federal Circuit precedent. See Hyundai Elecs. Indus. Co. v. U.S. Int'l Trade Comm'n, 899 F.2d 1204, 1210 (Fed. Cir. 1990) (“Indeed, we have recognized, and Hyundai does not dispute, that in an appropriate case the Commission can impose a general exclusion order that binds parties and non-parties alike and effectively shifts to would-be importers of potentially infringing articles, as a condition of entry, the burden of establishing noninfringement. The rationale underlying the issuance of general exclusion orders—placing the risk of unfairness associated with a prophylactic order upon potential importers rather than American manufacturers that, vis-a-vis at least some foreign manufacturers and importers, have demonstrated their entitlement to protection from unfair trade practices—applies here [in regard to a limited exclusion order] with increased force.”) (emphasis added) (internal citation omitted)
Accordingly, the burden is on Zhuhai Kingly to establish that the Kingly Toner Cartridges do not infringe one or more of the independent claims at issue of the ’278, ’564, ’215, ’090, and ’008 patents. All of the dependent claims at issue in the 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 GEO issued in the ’918 investigation applies to articles manufactured or imported by Zhuhai Kingly only if they infringe any of the listed claims above for any of the ’278, ’564, ’215, ’008, and ’090 patents.
Infringement Analysis
There are two different claim elements of patents ’278, ’564, ’215, and ’008 at issue with the Kingly Toner Cartridge: (1) an inclining moveable coupling member and (2) the angle of inclination of the moveable coupling member. 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 at issue of the ’278, ’564, ’215, and ’008 patents, a toner cartridge must possess a coupling member that meets the claim language highlighted in bold, above, in section I(B)(2). All of the independent claims at issue of the ’278, ’564, ’215, and ’008 patents recite a coupling member that is movable between a first position in which the coupling member is substantially parallel to (claims 1 and 12 of the ’008 patent) or coaxial with (claim 160 of the ’278 patent, claims 171, 179, 189, and 200 of the ’564 patent, and claim 23 of the ’215 patent) an axis of a rotary member (claim 160 of the ’278 patent) / photosensitive drum (claims 171, 179, 189, and 200 of the ’564 patent, and claim 23 of the ’215 patent) / developing roller (claims 1 and 12 of the ’008 patent) and a second position in which the coupling member is inclined with respect to the axis of the rotary member / photosensitive drum / developing roller.
As such, 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 on page 7 above demonstrates what type of moveable coupling member infringes the claims of the patents.
As noted supra, Zhuhai Kingly asserts that the Kingly Toner Cartridge does not infringe these patents because its article does not possess the inclining, moveable coupling member as recited in the relevant patent claims. According to Zhuhai Kingly, the Kingly Toner Cartridge has a coupling member that does not move in its own plane or perpendicular to the same axis as the drum unit, but is firmly set in the flange. An examination by CBP of a sample of the Kingly Toner Cartridge, as depicted in Figures 5 and 6 (page 9 above), confirms Zhuhai Kingly’s assertion. The coupling member in Figures 7 and 8 (page 9 above) uses a lever mechanism to push out two protrusions that engage the drive shaft of the printer to rotate the photosensitive drum when in use. Because the Kingly Toner Cartridge does not possess a coupling member that is moveable between first and second positions in the manner recited in the relevant claims, these articles do not meet all the claim elements of any of the independent claims at issue of any of the ’278, ’564, ’215, or ’008 patents, or any of the claims that depend therefrom.. Canon does not dispute Zhuhai Kingly’s arguments as to this basis for non-infringement.
“Angle of Inclination of Moveable Coupling Member” Claim Element of the ’278, ’564, ’215, and ’008 Patents
In addition to the claim element that requires 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, the coupling on the Kingly Toner Cartridge does not pivot at all. Rather, the coupling on the Kingly Toner Cartridge is set in place in the flange coaxial with the axis of the drum unit and it is the two protrusions inside the coupling that are the only things that move (they are pushed out of the coupling). Because the coupling does not pivot at all it does not create any angle of inclination that falls within 20 degrees to 60 degrees (or any degrees) from that of the drum unit’s axis and thus do not meet the claim elements of the asserted claims listed in the preceding paragraph of the ’278, ’564, ’215, and ’008 patents that have an angle of inclination requirement. Canon does not dispute Zhuhai Kingly’s arguments as to this basis for non-infringement.
The ’090 Patent
Independent claim 1 of the ’090 patent recites an electrophotographic photosensitive drum unit that includes a cylinder and a drum flange provided at one end of the cylinder. The drum flange includes at least two projections that are provided inside of the drum flange and that project radially inwardly of the drum flange. Claim 1 further recites, in relevant part, 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.”
As noted above in section I(C), Zhuhai Kingly withdrew a portion of its non-infringement argument relating to the flange of the Kingly Toner Cartridge in response to a request by Canon. Nevertheless, Canon indicates that it does not dispute Zhuhai Kingly’s remaining argument that, on the Kingly Toner Cartridge, “the projection in its drum flange extends less inwardly at a position further from the photosensitive drum that it does at a position closer to the drum.” (See E-mail from Michael Sandonato to Christine Lehman and William Wittwer (Jan. 5, 2018). A review of the schematics in figures 9 and 10 (page 10 above) of the Kingly Toner Cartridge drum flanges confirms the Kingly Toner Cartridge possesses a configuration in which the projection in its drum flange extends less inwardly at a position further from the photosensitive drum that it does at a position closer to the drum. By contrast, claim 1 requires the opposite configuration, one in which 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. As such, the Kingly Toner Cartridge does not meet all the elements of claim 1 of the ’090 patent, or any of the claims that depend therefrom.
Therefore, based on the evidence in the record, we find that Zhuhai Kingly has met its burden to show that the Kingly Toner Cartridge does not infringe any of the independent claims at issue of any of the ’278, ’564, ’215, ’008, or ’090 patents, or any of the claims at issue that depend therefrom. Thus, the Kingly Toner Cartridge is outside the scope of the GEO issued in the ’918 investigation.
HOLDING:
The Kingly Toner Cartridge manufactured by Zhuhai Kingly Technology Co., Ltd. does not infringe any of the independent claims at issue of any of the ’278, ’564, ’215, ’008, or ’090 patents, or any of the claims at issue that depend therefrom. As such, Kingly Toner Cartridges 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 facts set forth herein. If Zhuhai Kingly manufactures or imports toner cartridges and drum units 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