Customs Ruling HQ H325435 - Ruling Request; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-1174; Certain Toner Cartridges, Components Thereof, and Systems Containing Same.

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HQ H325435
Nov 30, 2023

Type : 19 U.S.C. § 1337; Unfair Competition • HTSUS :
Related: H315842

OT:RR:BSTC:EOE H325435 ACC

Steven E. Adkins
Barnes & Thornburg LLP
1717 Pennsylvania Avenue, N.W., Suite 500
Washington, D.C. 20006-4623 U.S.A.

VIA EMAIL: [email protected]
[email protected]

RE: Ruling Request; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-1174; Certain Toner Cartridges, Components Thereof, and Systems Containing Same.

Dear Mr. Adkins:

Pursuant to 19 C.F.R. Part 177, the Exclusion Order Enforcement Branch (“EOE Branch”), Regulations and Rulings, U.S. Customs and Border Protection (“CBP”) issues this ruling letter in response to your request, dated May 20, 2022, on behalf of Union Technology International (Macao Commercial Offshore) Co. Ltd. and Print-Rite Unicorn Image Products Co. Ltd. (collectively, “Print-Rite”) for a ruling with respect to the above-referenced matter. We find that Print-Rite has not met its burden to show that the TN221/TN225 (RW3), TN223/TN227 (RW3), or TN730/TN760/TN770 (RW3) cartridges (collectively, “articles at issue ”) do not infringe claim 1 of U.S. Patent No. 9,785,093 (“the ’093 patent”). Thus, CBP’s position is that the articles at issue are subject to the general exclusion order (“GEO”) issued by the U.S. International Trade Commission (“ITC” or “Commission”) in Investigation No. 337-TA-1174, Certain Toner Cartridges, Components Thereof, and Systems Containing Same (“the underlying investigation” or “the 1174 investigation”), pursuant to section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337 (“section 337”) (“1174 GEO”).

We further note that determinations of the Commission resulting from the underlying investigation and a related proceeding under 19 C.F.R. Part 210 are binding authority on CBP and, in the case of conflict, will by operation of law modify or revoke any contrary CBP ruling or decision pertaining to section 337 exclusion orders.

This ruling letter is the result of a request for an administrative ruling from CBP under 19 C.F.R. Part 177, which was conducted on an inter partes basis. The process involved the two parties with a direct and demonstrable interest in the question presented by the ruling request: (1) your client, Print-Rite, the foreign manufacturer of the articles in question, and (2) Brother Industries, Ltd.; Brother International Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc. (collectively, “Brother”), the complainant and patent owner in the underlying investigation. See, e.g., 19 C.F.R. § 177.1.

The parties were asked to clearly identify confidential business information, including information subject to the administrative protective order in the underlying investigation, in all of their submissions to the CBP. See 19 C.F.R. §§ 177.2 and 177.8. If there is additional information in this ruling letter not currently bracketed in red [[ ]] that either party believes constitutes confidential business information, and should be redacted from the published ruling, then the parties are asked to contact CBP within ten (10) working days of the date of this ruling letter. See, e.g., 19 C.F.R. § 177.8(a)(3).

Please note that disclosure of information related to administrative rulings under 19 C.F.R. Part 177 is governed by, for example, 6 C.F.R. Part 5, 31 C.F.R. Part 1, 19 C.F.R. Part 103, and 19 C.F.R. § 177.8(a)(3). See, e.g., 19 C.F.R. § 177.10(a). In addition, CBP is guided by the laws relating to confidentiality and disclosure, such as the Freedom of Information Act (“FOIA”), as amended (5 U.S.C. § 552), the Trade Secrets Act (18 U.S.C. § 1905), and the Privacy Act of 1974, as amended (5 U.S.C. § 552a). A request for confidential treatment of information submitted in connection with a ruling requested under 19 C.F.R. Part 177 faces a strong presumption in favor of disclosure. See, e.g., 19 C.F.R. § 177.8(a)(3). The person seeking this treatment must overcome that presumption with a request that is appropriately tailored and supported by evidence establishing that: the information in question is customarily kept private or closely-held and either that the government provided an express or implied assurance of confidentiality when the information was shared with the government or there were no express or implied indications at the time the information was submitted that the government would publicly disclose the information. See Food Marketing Institute v. Argus Leader Media, 139 S. Ct. 2356, 2366 (2019) (concluding that “[a]t least where commercial or financial information is both customarily and actually treated as private by its owner and provided to the government under an assurance of privacy, the information is ‘confidential’ within the meaning of exemption 4.”); see also U.S. Department of Justice, Office of Information Policy (OIP): Step-by-Step Guide for Determining if Commercial or Financial Information Obtained from a Person is Confidential Under Exemption 4 of the FOIA (updated 10/7/2019) and OIP Guidance: Exemption 4 after the Supreme Court’s Ruling in Food Marketing Institute v. Argus Leader Media (updated 10/4/2019).

BACKGROUND

ITC Investigation No. 337-TA-1174

The Commission instituted Investigation No. 337-TA-1174 on September 3, 2019, based on a complaint filed by Brother. Certain Toner Cartridges, Components Thereof, and Systems Containing Same, Investigation No. 337-TA-1174, EDIS Doc. ID 728235, Commission Opinion (Public) (December 17, 2020) (“Comm’n Op.”) at 2 (citing 84 Fed. Reg. 49762-63 (Sept. 23, 2019)). The complaint alleged violations of section 337 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, components thereof, and systems containing same by reason of infringement of claims 1-7 and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460; claims 1, 4, 5, and 9 of U.S. Patent No. 9,632,456 (“the ’456 patent”); claims 1-5, 10, and 12-15 of the ’093 patent; and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387 (“the ’387 patent”). Id. The Commission’s notice of investigation named 32 respondents, including: AMI Brothers, Inc. of San Bruno, California (“AMI”); Aster Graphics, Inc. of Riverside, California (“Aster”); Cartridge Evolution, Inc. of Brooklyn, New York (“Cartridge Evolution”); E-Z Ink Inc. of Brooklyn, New York (“E-Z Ink”); Globest Trading Inc. of Ontario, California (“Globest”); Intercon International Corp. of Brea, California (“Intercon”); and Linkyo Corp. of La Puente, California (“Linkyo”). Id. at 2-3. The notice of investigation also named the Office of Unfair Import Investigations (“OUII”) as a party. Id. at 3.

All eight participating respondents, Brother, and OUII agreed that, for purposes of the accused products in the investigation, no claim terms in the asserted patents required a construction beyond their plain and ordinary meaning. See Joint Notice of Disputed Claim Terms (Dec. 6, 2019) (EDIS Doc ID 696586).

Cartridge Evolution, E-Z Ink, Linkyo, and others were terminated from the investigation by consent orders. Comm’n Op. at 3. AMI, Globest, and Intercon, among others, defaulted. Comm’n Op. at 3-4. On July 23, 2020, the presiding administrative law judge (“ALJ”) issued an initial determination (Order No. 40), granting Brother’s motion for summary determination, finding a violation by Aster and the defaulting respondents, and finding that the accused products practiced the asserted claims. Id. at 4-5. Aster had not opposed Brother’s summary determination motion, even though Aster’s products were subject to the motion, and OUII filed briefing in support of the motion. Id. at 3-5. In finding infringement, the ALJ had considered three groups of representative products identified by Brother’s experts. See Certain Toner Cartridges Components Thereof, and Systems Containing Same, Inv. No. 337-TA-1174, Initial Determination Granting Complainants’ Motion for Summary Determination of Violation, Recommended Determination on Remedy and Bonding (“FID”) at 118-22, EDIS Doc. ID 716848 (Public) (August 10, 2020). For each representative product in the underlying investigation, Brother had provided “detailed claim charts” containing a “limitation-by-limitation analysis,” which the ALJ found to be “substantial, reliable, and undisputed evidence” of infringement. FID at 123-34.

On September 8, 2020, the Commission requested written submissions on remedy, the public interest, and bonding, which it received from Brother, Aster, and OUII. Comm’n Op. at 5. In so briefing, Aster requested that any remedial order include an express carve-out for its newly designed toner cartridges that Brother had stipulated it would not accuse of infringement in the underlying investigation. Id. at 23-25. Brother responded that an express carve-out would be “redundant and unnecessary” to the extent that the order would include “the general exception for imports made ‘with the permission[] of the patentee.’” Id. at 25-26. OUII agreed with Brother because “‘express carve outs in exclusion orders [are] only for products that were found to be non-infringing,’ but that here, the newly designed products were not found to be non-infringing.” Id. at 26-27 (emphasis in the original). Additionally, OUII noted that “the ‘Aster Joint Stipulation and Agreement do not contain . . . limiting language’ including in agreements with other respondents . . . restrict[ing] permissible importation of Aster’s newly designed products to any particular entity.’” Id. The Commission agreed with Brother and OUII, holding that “it [was] unnecessary to include an express exemption . . . as these products are already the subject of the Joint Stipulation and Agreement between the parties.” Id. at 28. The Commission stated that the Aster Joint Stipulation and Agreement was limited to “(1) compatibility with Brother’s identified toner cartridges; (2) conformity with identified configurations specified in the referenced Tables of the Agreement; and (3) include branded toner cartridges ‘with Aster-, Arcon-, Aztech-, CMYBabee-, Cool Toner-, EPS-, Greensky-, Ink4work-, and Toner Bank-brands.’” Id. at 29.

The Commission noted that a GEO was necessary because of concerns that infringing toner cartridges could be mass produced within a month, that “it [was] likely that the same entities [Respondents] would continue online sales and importation using different names,” and that manufacturers of toner cartridges could not be identified by the retail branding. Comm’n Op. at 17-18 (quoting FID at 137). Thus, among other things, the Commission issued a GEO prohibiting the unlicensed importation of certain toner cartridges, components thereof, and systems containing same that infringe one or more of claims 1-5, 10, and 12-15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7, and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 patent. Id. at 34. Paragraph 2 of the 1174 GEO identified “[t]he toner cartridges, components thereof, and systems containing the same that are subject to this Order (i.e., ‘covered articles’) [] as follows: laser toner cartridges designed for use with Brother printers, fax machines, and MFCs (‘Multi-Function Centers’).”

The Patents at Issue

Detection Gear Patents

“The asserted claims of the ’093, ’460, and ’387 patents are directed to various aspects of a detection gear. The detection gear enables a compatible printer, fax machine, or MFC to detect the insertion of a new toner cartridge.” FID at 19. An exemplary detection gear positioned on a side of the toner cartridge is depicted in the figure below: FID at 20.

Claim 1 of the ’093 Patent

As discussed in more detail below, the infringement question presented in this ruling request turns on an analysis of the ’093 patent. The abstract of the ’093 patent describes a cartridge where:

In a developing cartridge, a first supporting member is attached to a housing and has a first developing supporting portion and a driving-force-receiving-member supporting portion. The first developing supporting portion is configured to rotatably support a first part of a rotational shaft and the driving-force-receiving-member supporting portion is configured to rotatably support a driving-force-receiving member. The second supporting member is attached to the housing and has a second developing supporting portion and a detection-rotational-body supporting portion. The second developing supporting portion is configured to rotatably support a second part of the rotational shaft and the detection-rotational-body supporting portion is configured to rotatably support a detection rotational body.

’093 patent, abstract.

Claim 1 is the only independent claim of the ’093 patent. The text of claim 1 is reproduced below with emphasis on the relevant limitations for purposes of this ruling request:

[1 pre] A developing cartridge comprising: [1a] a developing roller rotatable about a first axis extending in a direction, the developing roller including a developing roller shaft extending in the direction, the developing roller shaft having a first end portion and a second end portion separated from the first end portion in the direction; [1b] a housing configured to accommodate developing material therein the housing having a first outer surface and a second outer surface separated from the first outer surface in the direction; [1c] a bearing through which the first end portion is inserted, the bearing being positioned to the first outer surface; [1d] a first shaft extending in the direction, the first shaft being positioned at an opposite side of the first outer surface relative to the bearing; [1e] a coupling rotatable about the first shaft; [1f] a second shaft extending in the direction, the second shaft being positioned to the second outer surface; and [1g] a detection gear rotatable about the second shaft. ’093 patent, col. 23:37-57 (emphasis added).

Figure 4 discloses an embodiment that uses a left side wall 36L (shown in yellow), a developing roller 16, and a bearing member 51 that, inter alia, includes a coupling support shaft 56 (shown in blue) and roller shaft support through-hole 54 (shown in orange):

’093 patent, Fig. 4; see also Brother’s Sur-Reply at 5.

As depicted below, Fig 6A shows a more-detailed image of bearing member 51 that includes a developing roller shaft support through-hole 54 (shown in yellow) and a coupling support shaft 56 (shown in blue):

’093 Patent, Fig. 6A; Brother Sur-Reply at 5-6 (highlighting added).

19 C.F.R. Part 177 Ruling Request

Previous Ruling Request From Print-Rite

On January 4, 2021, Print-Rite requested an administrative ruling under 19 C.F.R. Part 177 that Print-Rite’s detection gear cartridges (i.e., TN221/TN225, TN223/TN227, and TN730/760/770) did not violate the 1174 GEO because they do not infringe any claims of the ’460, ’093, and ’387 patents; and that (2) Print-Rite’s monochrome cartridges (i.e., TN420/450 and TN630/TN660) did not violate the 1174 GEO because they do not infringe any claims of the ’856 and ’456 patents. See CBP HQ H315842 (dated April 28, 2021) at 7. In the ruling that resulted, CBP found that certain Print-Rite’s monochrome cartridges (i.e., TN420/450 and TN630/TN660 model toner cartridges) were not subject to the GEO because they did not infringe the asserted claims referenced above. However, CBP found that certain Print Rite’s detection gear cartridges (i.e., TN221/TN225, TN223/TN227, and TN730/760/770 model toner cartridges) were subject to the 1174 GEO because Print-Rite did not meet its burden to show that they did not infringe the ’387 patent. Id. at 1-2. As noted below, the toner cartridge products and their specific embodiments from Print-Rite’s prior ruling request are not at issue in this ruling.

Procedural History of the Current Ruling Request

On May 20, 2022, Print-Rite submitted to the EOE Branch a request for an administrative ruling pursuant to 19 C.F.R. Part 177 that included four exhibits. See Ruling Request. Specifically, “Print-Rite [sought] a ruling that certain products that it would like to import into the United States are not covered by the 1174 GEO.” Ruling Request at 1.

On June 7, 2022, the EOE Branch had an initial conference call with Print-Rite and Brother where both parties agreed that the ruling request would be administered by the EOE Branch on an inter partes basis and to exchange submissions by email. See EOE Branch email to Parties (dated June 7, 2022). On June 10, 2022, the parties jointly submitted a proposed schedule for administration of the ruling request. See Print-Rite email to EOE Branch (dated June 10, 2022). On June 17, 2022, the parties executed a nondisclosure agreement and a copy of was provided to the EOE Branch on July 7, 2022. See Print-Rite email to EOE Branch (dated July 7, 2022).

On June 30, 2022, Brother provided its response to Print-Rite’s ruling request, which included exhibits A-B. See Brother Response. On July 6, 2022, Print-Rite provided its reply to Brother’s response. See Print-Rite Reply. On July 13, 2022, Brother provided its sur-reply to Print-Rite’s reply, which included exhibits C-J. See Brother Sur-Reply.

On July 20, 2022, in line with Print-Rite’s and Brother’s desire for an opportunity to orally discuss the issues, and the established schedule, an oral discussion was held with the EOE Branch. See, e.g., EOE Branch email to Parties, dated July 18, 2022. The oral discussion was held virtually by video conference, and the parties provided their respective presentation materials to the EOE Branch before the oral discussion commenced (hereinafter, “Print-Rite Slides” and “Brother Slides”). On July 28, 2022, both Print-Rite and Brother provided their post oral discussion submissions. See Print-Rite Post Oral Discussion Submission; see also Brother Post Oral Discussion Submission. Print-Rite’s post oral discussion submission included exhibit A. See Print-Rite Post Oral Discussion Submission.

The Articles at Issue

The Print-Rite toner cartridge models at issue in this ruling request are listed below: TN221/TN225 (RW3) TN223/TN227 (RW3) TN730/TN760/TN770 (RW3)

See Ruling Request at 5.

As explained by Print-Rite, the articles at issue are “different from the products bearing the same model numbers and considered by CBP in Print-Rite’s First Request in 2021.” Ruling Request at 5. Both the Print Rite 200s (i.e., TN221/TN225 (RW3) and TN223/TN227 (RW3)) and the Print-Rite 700s (i.e., TN730/TN760/TN770 (RW3)), inter alia, exhibit features that Print-Rite refers to as [[ ]]:

[[ ]]

Ruling Request at 15, Fig. 6 – [[ ]] of the Newly Designed 2022 Print-Rite Products TN225/TN227 (yellow highlighted annotations added) [[ ]] (emphasis in original); see also Brother Response at 20 (“There is no dispute that Print-Rite 200s include [[ ]]”); see also Print-Rite Post Oral Discussion Submission at 13 (“The Print-Rite 700 series products include [[ ]]”).

The [[ ]] on the Print-Rite 200s and 700s have [[ ]] as shown in the image below:

[[ ]]

[[ ]]

See Ruling Request at 15, Fig. 6 ( directional compass, dotted lines, red arrows, and highlighting added); see also Brother Response at 19 (“The specification [] discloses that each of these side walls (36L and 36R) has a ‘left’ surface and a ‘right’ surface.”); see also ’093 Patent at 7:49-51, 7:58-60 (The specification references “the left surface of the left side wall 36L” and “the right surface of the right side wall 36R”). Accordingly, the parties are in agreement, as a factual matter regarding the embodiment under consideration, that the Print-Rite 200s and 700s, as shown above, have [[ ]]. Print-Rite Post-Oral Discussion Submission at 6 ([[ ]]); see also Brother Slides at 15 (“Print-Rite [[ ]] such that [[ ]] disclosed in the patent.”) (emphasis in original). This is further depicted in the following images (where [[ ]] is highlighted in green and orange and [[ ]] is highlighted in yellow).

[[ ]]

[[ ]] Print-Rite Post Oral Discussion Submission at 6 (blue arrows added); see also Ruling Request at 15 ([[ ]]). As depicted, [[ ]]

ISSUE

Whether Print-Rite has met its burden to show that the articles at issue do not infringe any of relevant patent claims, as noted below, from the general exclusion order resulting from the 1174 investigation.

LEGAL FRAMEWORK

Section 337 Exclusion Order Administration

The Commission shall investigate any alleged violation of section 337 to determine, with respect to each investigation conducted by it under this section, whether there is a violation of this section. See 19 U.S.C. § 1337(b)(1) and (c). If the Commission determines, as a result of an investigation under this section, that there is a violation of this section, it shall direct that the articles concerned, imported by any person violating the provision of this section, be excluded from entry into the United States unless the Commission finds based on consideration of the public interest that such articles should not be excluded from entry. See 19 U.S.C. § 1337(d)(1).

When the Commission determines there is 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. ITC, 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. ITC, 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. ITC, 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).”).

Significantly, unlike district court injunctions, the Commission can issue a general exclusion order that broadly prohibits entry of articles that violate section 337 of the Tariff Act of 1930 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. ITC, 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).”).

Moreover, “[t]he Commission has consistently issued exclusion orders coextensive with the violation of section 337 found to exist.” See Certain Erasable Programmable Read Only Memories, Inv. No. 337-TA-276, Enforcement Proceeding, Comm’n Op. at 11, Doc ID 43536 (Aug. 1991) (emphasis added). “[W]hile individual models may be evaluated to determine importation and [violation], the Commission's jurisdiction extends to all models of [violative] 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.” 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).

Lastly, despite the well-established principle that “the burden of proving infringement generally rests upon the patentee [or plaintiff],” Medtronic, Inc. v. Mirowski Family Ventures, LLC, 571 U.S. 191 (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 the U.S. Court of Appeals for the Federal Circuit (“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 patentee to prove, by a preponderance of the evidence, that a given article does infringe[.]” 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. ITC, 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. ITC, 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).

Patent Infringement

Determining patent infringement requires two steps. Advanced Steel Recovery, LLC v. X-Body Equip., Inc., 808 F.3d 1313, 1316 (2015). The first is to construe the limitations of the asserted claims and the second is to compare the properly construed claims to the accused product. Id. To establish literal infringement, every limitation recited in a claim must be found in the accused product whereas, under the doctrine of equivalents, infringement occurs when there is equivalence between the elements of the accused product and the each claimed element of the patented invention. Microsoft Corp. v. GeoTag, Inc., 817 F.3d 1305, 1313 (Fed. Cir. 2016). One way to establish equivalence is by showing, on an element-by-element basis, that the accused product performs substantially the same function in substantially the same way with substantially the same result as each claim limitation of the patented invention, which is often referred to as the function-way-result test. See Intendis GmbH v. Glenmark Pharms., Inc., 822 F.3d 1355, 1361 (Fed. Cir. 2016).

As for the first step above, “claim construction is a matter of law.” SIMO Holdings, Inc. v. H.K. uCloudlink Network Tech., Ltd., 983 F.3d 1367, 1374 (Fed. Cir. 2021). Moreover, the ultimate construction of a claim limitation is a legal conclusion, as are interpretations of the patent’s intrinsic evidence (the patent claims, specifications, and prosecution history). UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 822 (Fed. Cir. 2016) (citing Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 325-6, (2015).

“Importantly, 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.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges.” Id. at 1314. In others, courts look to public sources such as “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Id.

“To begin with, the context in which a term is used in the asserted claim can be highly instructive.” Phillips, 415 F.3d at 1314 (“To take a simple example, the claim in this case refers to ‘steel baffles,’ which strongly implies that the term ‘baffles’ does not inherently mean objects made of steel.”). The context in which a claim term is used also includes the full chain of dependence as well as the remaining suite of claims and the written description. See Inline Plastics Corp. v. EasyPak, LLC, 799 F.3d 1364, 1371 (Fed. Cir. 2015) (“Since the specification explicitly mentions the ‘alternative’ . . . there can be no debate concerning the application of the doctrine of claim differentiation.”).

The second step to establish infringement involves a comparison of the claims, as properly construed, to the accused product, which is a question of fact. Apple Inc. v. Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1040 (Fed. Cir. 2016) (en banc). LAW AND ANALYSIS

The only patent in dispute for this inter partes proceeding is the ’093 patent. See Brother Response at 16 (“Print-Rite’s Ruling Request should be denied . . . [since] Print-Rite has not carried its burden of showing that each of the Print-Rite Cartridges avoids infringement of every Asserted Patent. Specifically, Print-Rite fails to demonstrate that the Print-Rite Cartridges do not include the “bearing” of the ’093 Patent[.]”) (emphasis added). With respect to the ’093 patent, Print-Rite argues that the articles at issue do not infringe and are not subject to the GEO because they do not practice limitation 1c from claim 1 of the ’093 patent. Ruling Request at 5. That claim limitation is recited below:

[1c] a bearing through which the first end portion is inserted, the bearing being positioned to the first outer surface[.]

Over the course of this inter partes proceeding, the parties raised the following arguments respectively and responses to the other side, as reflected in the various submissions identified below.

Print-Rite’s Ruling Request

In its ruling request, Print-Rite made the argument that the articles at issue “lack element 1[c] of claim 1” from the ’093 patent because they “have a bearing positioned on the inner surface of the cartridge, unlike the bearing claimed in the ‘093 patent that is positioned on the outer surface of the cartridge.” Ruling Request at 5, 15 (emphasis in original). Print-Rite argued that this position is supported by the specification which discloses the “bearing member 51, through which the developing roller 16 extends, is positioned on the outer surface of the left side wall 36L.” Ruling Request at 14 (emphasis in original); see also ’093 patent 8:51-9:58; 14:15-39.

Brother’s Response

In Brother’s response, it noted that “[t]he Parties’ only dispute … is whether the ‘bearing’ is ‘positioned to’ the correct side of [the left sidewall].” Brother Response at 20. Further, Brother argued that the articles at issue are subject to the exclusion order because “Print-Rite has not carried its burden to show that the [articles at issue] do not infringe Claim 1 of the ’093 Patent. Specifically, Brother’s position was that Print-Rite’s “non-infringement position depends on an unreasonably narrow reading of the term ‘outer surface’” and under a proper interpretation of the term outer surface, the articles at issue “[h]ave a ‘[b]earing [p]ositioned to the [f]irst [o]uter [s]urface’” as required by limitation 1[c] of claim 1 from the ’093 patent. Brother Response at 18, 21.

To support a broader interpretation for the term “outer surface”, Brother made the following arguments: First, Brother argued that language of claim 1 shows that the term “outer surfaces” has two sides—a first side that is “opposite” to a second side—not just a single, “outer” side[.]” Brother Response at 18; see also ’093 Patent at 23:51-53. Second, Brother argued that the specification supports their reading of the term “outer surface” because it “discloses that the left side wall (36L) of the exemplary developing cartridge has two surfaces; a left one and a right one[.]” See Brother Response at 19; see also ’093 Patent at Fig. 7A. Third, Brother argued that Print-Rite’s interpretation of “outer surface” would incorrectly “read[] limitations from an exemplary embodiment … into Claim 1 by incorrectly limiting the claimed ‘bearing’ to a location on the outside of the claimed ‘outer surface.’” Brother Response at 18. Print-Rite’s Reply

In Print-Rite’s reply, it acknowledged that “[t]he dispute between the parties regarding the ’093 patent hinges on the definition of the term ‘outer surface[.]’” Print-Rite Reply at 4. Further, Print-Rite argued that “Brother’s [c]urrent [interpretation] of ‘[o]uter [s]urface’ [i]s [i]ncorrect” and the “plain and ordinary meaning should apply[.] Print-Rite Reply at 4.

In support of Print-Rite’s interpretation of the term “outer surface,” it made the following arguments: First, Print-Rite argued that the language of claim 1 from the ’093 patent shows that “outer surface” should be interpreted to mean “an outer surface of the housing [of the cartridge] itself[.]” Print-Rite Reply at 6; see also ’093 Patent at 23:45 (“a housing configured to accommodate developing material therein, the housing having a first outer surface and a second outer surface separated from the first outer surface in the direction[.]”). Further, Print-Rite argued that the term “opposite side” should be limited to the “front-to-rear direction” and under this interpretation of “opposite side[,]” Brother’s interpretation of “opposite side” would cause the limitation “a first shaft extending in the direction, the first shaft being positioned at an opposite side of the first outer surface relative to the bearing” to become nonsensical. Print-Rite Reply at 12-13. Second, Print-Rite argued that certain dictionary definitions show “that one of ordinary skill in the art would conclude that the plain meaning of the term ‘outer surface’ would be, or would be substantially similar to, ‘a plane or curved two-dimensional locus of points, the exterior or upper boundary of an object or body, or the external part or layer that is situated or belonging on the outside[.]’” Print-Rite Reply at 8. Third, Print-Rite argued that the ‘093 patent’s specification reinforces that “the outer surface must be considered the outwardly facing surface of the left side wall 36L” and “shows that the ‘outer surface’ cannot be the inwardly-facing surface of the side wall 36L, [as proposed] by Brother[.]”. Print-Rite Reply at 9-10. Specifically, Print-Rite argued that the specification contains many references “to components being [necessarily] arranged on the ‘left surface of the left side wall 36L[.]” Print-Rite Reply at 9. Fourth, Print-Rite argued that Brother’s expert testimony from the underlying investigation shows that “one of skill in the art … would understand the ‘first outer surface’ on which the bearing is positioned, as recited in claim 1, is the left side surface of the left side wall that faces away from the interior of the housing. Print-Rite Reply at 14. Fifth, Print-Rite argued that “[t]he prior art cited by Brother in the ‘093 patent also undercuts Brother’s” interpretation of outer surface because the prior art has “gears are on the outer surface, instead of an inner surface.” Print-Rite Reply at 11.

Brother Sur-Reply

In Brother’s Sur-Reply, it argued that “Print-Rite still has not carried its burden of showing that each of the [articles at issue] avoids infringement the of (sic) ’093 Patent[,]” and that Print-Rite’s readings of the terms “outer surface” and “opposite side” should be rejected. Brother Sur-Reply at 4.

In support of Brother’s interpretation of the term “outer surface,” it made the following arguments. First, Brother argued that the “term ‘outer surface’ [should not be] limited to ‘a surface of the housing that faces away from the interior of the housing[]” because the claim language “of the ’093 Patent unambiguously recites that the ‘outer surface’ has two sides—a first side that is ‘opposite’ to a second side.” Brother Sur-Reply at 4. Second, Brother argued that figures 6A and 7A from the specification confirm its interpretation of the term “outer surface.” Brother Sur-Reply at 6-7. Third, Brother disagreed with Print-Rites interpretation of the word “exterior” from Brother’s expert testimony from the underlying investigation and argued that “‘exterior’ … merely refer[s] to the structure that defines an ‘interior’ or ‘inner’ portion, not to any particular side of that structure.” Brother Sur-Reply at 7. Fourth, Brother argued that Print-Rite’s own dictionary definitions support its interpretation of “outer surface.” See Brother Sur-Reply at 9.

In support of Brother’s interpretation of the term “opposite side,” it made the following arguments. Brother argued that Print-Rite’s interpretation of the claim language “opposite side” is incorrect because it “would improperly read [out the] preferred embodiment” disclosed in Fig 4 of the ’093 patent, which shows “the developing roller shaft support through-hole 54 (i.e., the bearing) and the coupling support shaft 56 (i.e., the shaft) are positioned entirely on one side (i.e., the ‘rear’ side) of the left side wall 36L in the front-to-rear direction.” Brother Sur-Reply at 5.

Brother raised the argument that a disagreement may exist regarding the interpretation of the term “bearing” and that it supports “[a] interpretation of the term “bearing” [that] focuses on the disclosed roller shaft support through-hole 54 and the coupling support shaft 56 [], rather than the bearing member 51 as a whole[.]” Brother Sur-Reply at 5. Moreover, with respect to the dispute regarding the claimed “bearing being positioned to the first outer surface,” Brother’s view is that the term should be understood to “include[] ‘positioned at, near, or toward,’ as [its] expert opined in the 1174 Investigation.” Brother Sur-Reply at 9 (emphasis added). Furthermore, according to Brother, the articles at issue are infringing because the “‘bearing’ in each of the Print-Rite Cartridges is positioned ‘at, near, or toward’ the ‘outer surface,’ regardless of whether that ‘outer surface’ has one side or two sides.” Brother Sur-Reply at 9. The reason for this from Brother’s perspective is that the articles at issue practice limitation 1c because “a ‘bearing’ can be ‘positioned to’ an ‘outer surface’ if it extends through the outer surface[.]” Brother Sur-Reply at 8 (emphasis added). In further support of Brother interpretation of the term “positioned to[,]” it made the following arguments: First, Brother argued that the specification confirms its interpretation because Figure 7A discloses an embodiment that shows the developing roller shaft support through-hole 54 extends through the left side wall 36L of the disclosed developing cartridge 25[.]” Brother Sur-Reply at 7. Second, referring again to its expert’s opinion, Brother argued that “positioned to” is “a commonly used term in the engineering field and is frequently used to mean positioned at, near, or toward.” Brother Sur-Reply at 8. Third, Brother argued that the claim charts supporting the Commission’s infringement findings show that a “bearing” can be “positioned to” an “outer surface” if it extends through the outer surface. Brother Sur-Reply at 8.

Print-Rite’s Oral Discussion Slides

During the oral discussion, Print-Rite made the following arguments: First, Print-Rite clarified that outer surface should be interpreted to mean “either inner or outer surface of the sidewall of the housing.” Print-Rite Slides at 24. Second, Print-Rite argued that “bearing” should be interpreted to mean “bearing member 51[.]” Print-Rite Slides at 19. Third, Print-Rite argued that the bearing on the articles at issue is not close enough to the outer surface to be “positioned to” the outer surface because the bearing is not on the correct side of the left sidewall. Print-Rite Slides at 39.

Brother’s Oral Discussion Slides

During the oral discussion, Brother made the follow arguments: First, Brother argued for the first time that its interpretation of the term “positioned to” is supported by Figure 8A from the specification because the embodiment uses “[t]he term ‘positioned to’ … to refer [to] elements ‘positioned at or near’ other elements. Brother Slides at 31. Second, Brother argued for the first time that the articles at issue are “even more infringing than the [articles] found to infringe in the 1174 investigation” because the articles at issue “have even more structure on an ‘opposite side’ of the ‘outer surface’ from the ‘first shaft’ when compared to the articles from the claim charts used to support the Commission’s infringement findings. See Brother Slides at 17. Third, Brother argued for the first time that “Print-Rite merely spilt the “interposed part 108” and moved it to the opposite outer surface [of left sidewall] 36L” instead of moving bearing 54. See Slides at 16 (emphasis omitted). Fourth, Brother clarified that “opposite side” should be interpreted to mean “opposite side of side wall in front-to-rear direction and opposite side of side wall in left-to-right direction. Brother Slides at 23.

Print-Rite’s Post Oral Discussion Submission

In Print-Rite’s Post Oral Discussion Submission, Print-Rite made the following arguments: First, Print-Rite argued that new arguments presented by Brother during the Sur-Reply and Oral Discussion “should be rejected [] by Customs[.]” See Print-Rite Post-Oral Discussion Submission at 3. Specifically, Print-Rite argues that the following arguments made by Brother should be rejected: (1) “positioned to” means “positioned at or near” (raised in Sur-Reply); (2) Claim 3 adds to the meaning of “positioned to” as being “positioned at or near” (raised during oral discussion); (3) Print-Rite “spilt the ‘interposed part’ and moved the bearing to the opposite side (raised during oral discussion; and (4) “bearing” is not element 51, but instead is through-hole 54 (raised in Sur-Reply). Print-Rite Post Oral Discussion Submission, Attachment A. Second, Print-Rite argued that “bearing” refers to bearing member 51 because the “the specification refers to the ‘bearing member’ ninety-five times, [and] never once mentions a ‘bearing’ alone.” Post Oral Discussion Submission at 10. Third, Print-Rite argued that “positioned to” should be construed to mean “attached or coupled to[.]” Post Oral Discussion Submission at 11.

To support Print-Rite’s interpretation of the term “outer surface[,]” Print-Rite made the following arguments: First, Print-Rite argued that the specification shows that the term outer mean “a part of the wall; [and] not the wall itself” because “[t]he specification describes the surface of the side wall 36L, as well as other components, as having ‘left’ and ‘right’ surfaces, that each correspond to a surface that faces outwardly away from the housing and a surface that faces inwardly toward the housing, respectively.” See Post Oral Discussion Submission at 8. Second, Print-Rite argued that Brother’s Interpretation would cause the claim language to become superfluous because “construct[ing] [] ‘outer surface’ [to] also mean[] ‘inner surface’ would erase ‘outer’ from the claim language. See Print-Rite Post-Oral Discussion Submission at 8.

To support Print-Rite’s interpretation of the term “positioned to”, it made the following arguments: First, the specification including Figures 4 and 6A supports Print-Rite’s interpretation of “positioned to” because it shows that the term “positioned to” is used to refer to the coupling or arranging of elements on surfaces. See Print-Rite Post Oral Discussion Submission at 11-12.

Assuming Brother’s interpretation of “positioned to” is correct, Print-Rite argued that the articles at issue “would still not meet [limitation 1c]” because [[ ]] and [[ ]] Print-Rite Post Oral Discussion Submission at 13-14.

Brother’s Post Oral Discussion Submission

In Brother’s Post Oral Discussion Submission, it made the following argument: First, Brother argued that interpreting “outer surface” to include both the left and right side of the sidewall would not cause the word “outer” to become superfluous because a person of ordinary skill in the art “would therefore understand that the word ‘outer’ in ‘outer surface’ distinguishes that structure from the ‘inner’ structure of a developing cartridge. Brother Post Oral Discussion Submission at 9-10. Second, Brother argued for the first time that Print-Right is using the specification to “improperly import[] a limitation from the specification into the claims.” See Brother Post Oral Discussion Submission at 11. Third, to support its previous interpretation of the term “bearing” focuses on the disclosed roller shaft support through-hole 54 and the coupling support shaft 56, Brother argued for the first time that this view is additionally supported because “the ‘bearing’ and the ‘first shaft’ … are recited as separate elements in Claim 1 of the ’093 Patent[,]” and “the ‘bearing’ simply cannot be ‘opposite’ the ‘first shaft’ if the ‘bearing’ and ‘first shaft’ are one and the same.” Brother Post Oral Discussion Submission at 9. Fourth, to support Brother’s previous interpretation of “positioned to” to mean “at, near, or towards[,]” Brother argued for the first time that “‘positioned to’ is necessarily broader than ‘attached to’ under the doctrine of claim differentiation” because “Claim 1 recites that the claimed ‘bearing’ is ‘positioned to the first outer surface,’ while dependent Claim 2 recites that the claimed ‘bearing’ is ‘attached to the first outer surface.’” Brother Post Oral Discussion Submission at 10.

Print-Rite’s Objection to New Arguments in Brother’s Submissions

In addition to the disagreement with Brother concerning the proper construction of the relevant claim limitation above, Print-Rite takes the position that CBP should disregard any claim construction arguments that Brother raised for the first time in its Sur-Reply because those “new theories would be unfairly prejudicial to Print-Rite if they were actually considered.” Print-Rite Post Oral Discussion Submission at 10. According to Print-Rite, “the notion that an outer surface can somehow include an inner surface … was immunized from question by the briefing schedule agreed to by the parties,” id. at 9, and therefore the EOE Branch should not rely on these arguments as a basis for its ruling. Despite its objection, Print-Rite does not cite any authority for the proposition that it would be prejudicial for the EOE Branch to take these arguments into consideration.

As a starting point, the ground rules for this inter partes proceeding that the EOE Branch communicated to the parties envisioned this to an extent. Specifically, the ground rules noted that “the oral discussion is not an opportunity to submit new or additional evidence or arguments to the EOE Branch. Instead, it is an opportunity for the parties to explain the positions previously taken in their submissions and clarify the support for those positions as to the relevant questions of law and fact.” EOE Branch Email to Parties (dated July 13, 2022) (emphasis added). Under these ground rules, the parties are not permitted to raise new arguments or submit new evidence for the first time at the oral discussion and only can respond to arguments that have been raised previously, including those for the first time in a sur-reply. As such, any arguments – whether new or an expansion on previously raised arguments – could be made in a submission prior to the oral discussion. Importantly, permitting new arguments in a submission prior to an oral discussion does not foreclose a party’s ability, under the procedural schedule, to respond to such arguments because the oral discussion itself and, most importantly, the post-oral discussion submissions provide a vehicle to make such rebuttal arguments, just as they did in this inter partes proceeding.

Finally, this approach does not conflict with the weight of Federal Circuit precedent. In Rembrandt Diagnostics, the Federal Circuit held that the Patent Trial and Appeal Board “did not abuse its discretion by relying on [petitioner’s] theories and evidence.” Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1382 (Fed. Cir. 2023). Under the regulations governing the Board’s proceedings in that case, and unlike those discussed above for this inter partes proceeding, “in [a] sur-reply, the patent owner ‘may only respond to arguments raised in the corresponding reply and may not be accompanied by new evidence other than deposition transcripts of the cross-examination of any reply witness.’” Id. at 1383 (quoting 37 C.F.R. § 42.23(b)). Notwithstanding the differences in the specific rules underlying these respective proceedings, the Federal Circuit recognized that “[i]n other circumstances, … a reply may be proper if it is responsive and simply expands on previously raised arguments” and cautioned agencies “not to parse ‘arguments on reply with too fine of a filter.’” Id. at 1384 (quoting Ericsson Inc. v. Intell. Ventures I LLC, 901 F.3d 1374, 1380 (Fed. Cir. 2018); see also Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F.3d 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1081-82 (Fed. Cir. 2015) (rebuttal evidence should be responsive such that it is offered “to explain, repel, counteract, or disprove the evidence of the adverse party”).

Therefore, under the ground rules established for an inter partes proceeding under 19 C.F.R. Part 177, it is not improper for a party to raise new arguments or submit additional evidence in any submission prior to the oral discussion. Moreover, while the oral discussion is not for new arguments or evidence that were not submitted prior to that time, it does provide the parties an opportunity to expand upon or reply to an argument previously raised (such as in a sur-reply). Finally, the post-oral discussion submissions are the culmination of the parties’ briefing schedule whereby they may further articulate or crystalize positions taken previously or respond to any questions specifically directed to them by the EOE Branch.

In light of the above, the EOE Branch has taken into consideration both parties’ claim construction arguments raised in their respective submissions before the oral discussion, for which each had an opportunity to respond and attempt to rebut in the post-oral discussion submissions. With that established, the ruling will turn to the patent infringement question presented with respect to the articles at issue.

Disputed Terms for Claim Construction

As an initial matter, the parties’ primary disagreement is to the meaning of the claim terms “bearing” and “positioned to” from limitation 1c in claim 1 of the ’093 patent. Significantly, the Federal Circuit has held, “[w]hen the parties present a fundamental dispute regarding the scope of a claim term, it is the [adjudicator’s] duty to resolve it.” O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008). In such cases, “[c]laim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement.” Id. (quoting U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997)). As Print-Rite and Brother’s respective positions on infringement of the ’093 patent are based on their different views regarding the meaning and scope of the terms “bearing” and “positioned to” from limitation 1c in claim 1 of the ’093 patent, the EOE Branch will start with the meaning and scope of these terms.

Notably, the ITC did not formally construe any of the claim terms at issue during the underlying investigation, as a detailed analysis was not necessary to finding infringement. See Joint Notice of Disputed Claim Terms (Dec. 6, 2019) (EDIS Doc ID 696586) (in which all parties from the underlying investigation agreed that no claim terms in the asserted patents required a construction beyond their plain and ordinary meaning); see also FID at 5 (“Imitation may be the sincerest form of flattery but copying patented components of copiers and printers is not flattery; it is infringement.”) (emphasis added). For this reason, the ALJ did not need to provide an express constructions of the terms from claim 1 of the ’093 patent that are in dispute for purposes of this inter partes proceeding. In such cases where there is a dispute during an inter partes proceeding regarding the meaning and scope of a claim term that was not construed at the Commission, the EOE Branch must construe the relevant term to resolve the dispute. We will turn first to the parties’ understanding of the terms “bearing” and “positioned to” as they appear in limitations 1c. Claim Construction of “The Bearing Being Positioned To The First Outer Surface”

As noted above, the parties have conflicting interpretations for the claim term “bearing” as it appears in limitations 1c from claim 1 of the ’093 patent. In its Sur-Reply, Brother argued that the term “bearing” in claim 1 should refer to “the developing roller shaft support through-hole 54,” as depicted below, with highlighting in yellow, from Fig. 6A in the ’093 patent.

’093 Patent, Fig. 6A; Brother Sur-Reply at 5-6 (arguing that the interpretation of the term “bearing” from the ’093 Patent is “the developing roller shaft support through-hole 54” and that this interpretation “focuses on the disclosed roller shaft support through-hole 54 and the coupling support shaft 56 [], rather than the bearing member 51 as a whole[.]”) (highlighting in the original); see also ’093 patent, col. 23:51-53 (“a first shaft extending in the direction, the first shaft being positioned at an opposite side of the first outer surface relative to the bearing[].” (emphasis added)).

Print-Rite disagrees with Brother’s interpretation and argues that the term “bearing” means “‘bearing member’ (element 51) and all other elements associated with bearing member including various holes and shafts (54, 55, 56, 57) arranged on the bearing 51 as disclosed in the specification” including the coupling support shaft 56. Print-Rite Post Oral Discussion Submission at 10-11. Specifically, Print-Rite notes that the “specification refers to the ‘bearing member’ [51] ninety-five times [and] never once mentions a ‘bearing’ alone.” Id. at 10.

Based on the intrinsic evidence, and consistent with arguments Brother raised above, it is clear that the claimed “bearing,” when read in the context of the claim as a whole, does not refer to the entirety of “bearing member 51.” For instance, the parties do not disagree that the “coupling support shaft 56,” as depicted above in Fig. 6A, corresponds to the claimed “first shaft.” See Print-Rite Post Oral Discussion Submission at 11 (“the additional claim element ‘a first shaft extending in the direction, the first shaft being positioned at an opposite side of the first outer surface relative to the bearing’ is referring to the support shaft 56.”). This and the intrinsic evidence provided by Fig. 6A leads the EOE Branch to conclude that a person of ordinary skill in the art would not understand the term “bearing” to mean the entirety of “bearing member 51,” which undisputedly includes “the coupling support shaft 56” because the “coupling support shaft” is a part of the “bearing member.” Thus, we find that a person of ordinary skill in the art would understand that the claimed “bearing” in the ’093 patent to mean a support through-hole structure on a toner cartridge that corresponds to the developing roller shaft support through-hole 54 rather than the entirety of bearing member 51.

Claim Construction of “The Bearing Being Positioned To The First Outer Surface”

The parties disagree on the plain and ordinary meaning of the term “positioned to” in claim 1 of the ’093 patent. Print-Rite argues that the plain and ordinary meaning of the term “positioned to” is “attach or couple an object directly to another object or surface.” Print-Rite Post Oral Discussion Submission at 11. Brother argues instead that the term “positioned to” is “at, near, or towards.” See Brother Sur-Reply at 9.

Brother primarily argues that its expert testimony from the 1174 investigation “establishes that Print-Rite’s [] interpretation of the term ‘positioned to’ is incorrect” and “confirms Brother’s reading of [‘positioned to’.]” Brother Post Oral Discussion Submission at 15. As previously raised in its Sur-Reply, Brother places emphasis on testimony from Brother’s expert who opined that “[t]he phrase ‘positioned to’ is a commonly used term in the engineering field and is frequently used to mean positioned at, near, or toward.” See Certain Toner Cartridges Components Thereof, and Systems Containing Same, Inv. No. 337-TA-1174, Complainants’ Motion for Summary Determination of Violation and for Recommended Determination on Remedy and Bonding, Ex. 34 (“Gayne Declaration”) at ¶ 408, Doc ID 705126, Attachment ID 1529234 (Public) (March 17, 2020); see also Ex. A to Print-Rite Reply at ¶ 408 (emphasis added). Notably, the ALJ and Commission relied upon this expert testimony in determining infringement in the 1174 Investigation. See FID at 123; see also Brother Post Oral Submission Brief at 15. While in some cases less consideration is given to expert testimony for the purpose of claim construction, there are other cases “where the proper claim construction cannot be reached without the aid of extrinsic evidence[.]” Actelion Pharms. Ltd. v. Mylan Pharms. Inc., 85 F.4th 1167, 2023 U.S. App. LEXIS 29433 [*16] (Fed. Cir. 2023). “The Supreme Court has made clear that there are cases where the [adjudicator] must ‘look beyond the patent's intrinsic evidence and . . . consult extrinsic evidence in order to understand, for example, the background science or the meaning of a term in the relevant art during the relevant time period.” Id. at [*16-17] (quoting Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 331 (2015). This approach seems particularly applicable in cases, such as this, where there is evidence that a claim term “is commonly used [] in the engineering field” and the evidence will inform the meaning of that term to a skilled artisan.

To support its interpretation, Print-Rite argues that the claim language shows that “‘positioned to’ is used in the claims to refer to coupling or arranging elements directly on surfaces.” Print-Rite Oral Discussion Brief at 11. Specifically, Print-Rite relies on the claim limitation ‘a first shaft extending in the direction, the first shaft being positioned at an opposite side of the first outer surface relative to the bearing’ [which is] referring to the support shaft 56.” Id. at 11; see also ’093 patent, col. 23:51-53. Furthermore, Print-Rite argues that the embodiments depicted in Figs. 4 and 6A show “the support shaft 56 is directly arranged on the outer surface of the side wall 36L by the fitting protrusion 107 hooking into the holes 60 in the outer surface of the side wall 36L.” Id. at 12. Images of the Fig. 4 and 6A are shown below:

’093 patent, Fig. 4, Fig. 6A.

Print-Rite also argues that all six instances of “positioned to” in the specification “undermine Brother’s” interpretation. Id. at 12. First, Print-Rite notes that the specification, when referencing Fig. 4 (shown above), states: “[t]he coupling support shaft 56 is positioned to the left of the rear edge defining the front portion of the left side wall 36L, which front portion faces the toner-accommodating portion 79. Through the above operation, the bearing member 51 is mounted on the left side wall 36L.” Id. at 12; see also ’093 patent at l4:34-40. The relevant portions of Figure 4 are shown below:

Id. at 12; see also ’093 patent, Fig. 4 (annotations added by Print-Rite). Print-Rite argues that Fig. 4 shows that the coupling support shaft 56 of the bearing member 51 is positioned to the side wall 36L at the circled rear edge of the front portion as to mount the bearing member 51 on the side wall 36L. Print-Rite Oral Discussion Submission at 12. Print-Rite also argues that there are no other ways for the bearing member 51 to “be ‘mounted on’ or ‘positioned on’ the front portion of the outwardly-facing surface for the side wall 36L if it were not arranged or coupled directly to the front portion” and that the cartridge could not be “assembled and structurally sound if the bearing [member] 51 were merely ‘somewhere near’ the front portion[.]” Id. at 12.

The EOE Branch recognizes that as a legal matter “[t]here is a fine line between construing the claims in light of the specification and improperly importing a limitation from the specification into the claims” and that the Federal Circuit has “acknowledge[d] the difficulty in drawing [that line].” Cont'l Circuits LLC v. Intel Corp., 915 F.3d 788, 797 (Fed. Cir. 2019). In light of the claim construction canon, we reject Print-Rite’s narrowing interpretation as further informed by the Federal Circuit’s guidance that, “[t]o avoid improperly importing limitations into the claims, ‘it is important to keep in mind that the purposes of the specification are to teach and enable those of skill in the art to make and use the invention and to provide a best mode for doing so.’” Id. (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005)). Instead, based on our review, the EOE Branch finds that none of Print-Rite’s references above to the specification rises to the level of “a clear and unmistakable disclaimer.” Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1367 (Fed. Cir. 2012). Accordingly, the EOE Branch concludes that the relevant case law supports adoption of Brother’s proposed claim construction, based on its expert’s testimony, that a person skilled in the art would understand “positioned to” to include “positioned at, near, or toward.” Print-Rite has not pointed to any intrinsic evidence that rebuts this plain and ordinary meaning of the claim limitation. Thus, we reject Print-Rite’s proposed interpretation and construe the term “positioned to” to mean “at, near, or toward.”

* * *

For the reasons discussed above, we find that a person of ordinary skill in the art would have understood the plain and ordinary meaning of the phrase “the bearing being positioned to the first outer surface” from claim 1 of ’093 patent to mean a through-hole bearing that holds a developing roller shaft, corresponding to the developing roller shaft support through-hole 54, that is positioned at, near, or toward the first outer surface.

Articles at Issue Infringe Claim 1 of the ’093 Patent

Having construed the disputed claim terms, we now compare the claim as construed to the articles at issue to determine if infringement exists. See Applied Med. Res. Corp. v. United States Surgical Corp., 448 F.3d 1324, 1332 (Fed. Cir. 2006) (“Determining infringement requires two steps. ‘First, the claim must be properly construed to determine its scope and meaning. Second, the claim as properly construed must be compared to the accused device or process.’”).

Print-Rite argues that the articles at issue do not meet limitation 1c from claim 1 of the ’093 patent under its or Brother’s proposed construction discussed above because [[

]] Print-Rite Post Oral Discussion Submission at 13. Specifically, Print-Rite notes that [[

]] Id. at 13.

Brother disagrees, arguing that “even if … ‘outer surface’ only includes the outwardly facing portion of that surface, … [the] ‘bearing’ would be positioned ‘at, near, or toward’ that outer surface [as required by limitation 1c from claim 1 of the ’093 patent], in the same way Brother’s expert found in no fewer than eight infringing products in the 1174 Investigation.” Brother Sur-Reply at 9-10. Specifically, Brother argues that the expert testimony from the 1174 investigation shows that the legacy articles found to infringe in the underlying investigation, like the articles at issue, have a “bearing” both “positioned to” the “outer surface” and “positioned to” an “opposite side” of the “outer surface” (i.e., the “inner” inwardly facing surface) from the first shaft because the bearing “extends through the outer surface[.]” See Brother Post Oral Discussion Submission at 11-12, 16 (emphasis in the original); see also Brother Sur-Reply at 7-9. During the 1174 investigation, the ALJ and Commission determined that claim charts Brother provided were “substantial” and “reliable” evidence to reach a summary determination that certain accused articles infringed the ’093 patent. See FID at 123-124. For example, the ALJ made a summary determination finding that the accused “Arcon-branded TN-255” infringed claim 1 of the ’093 patent. Id. at 124-125. The “Arcon-branded TN-255” that the Commission found to infringe claim 1 of the ’093 patent contains a “bearing being positioned to the first outer surface” as shown in the below image from the claim chart used in the underlying investigation:

See Certain Toner Cartridges Components Thereof, and Systems Containing Same, Inv. No. 337-TA-1174, Complainants’ Motion for Summary Determination of Violation and for Recommended Determination on Remedy and Bonding, Ex. 34-K (“Arcon Claim Chart Exhibit”) at 9, Doc ID 705126, Attachment ID 1529225 (Public) (March 17, 2020) (annotations in original); Ex. D to Brother Sur-Reply at 7 (annotation in original).

As shown above, the infringing “Arcon-Branded TN-255” has a bearing that is arranged on the left, outwardly facing surface of the left sidewall and extends inwards towards the interior of the housing such that a portion of the bearing extends through the right, inwardly facing surface of the left sidewall. Additionally, the infringing “Arcon-Branded TN-255” has a “first shaft being positioned at an opposite side of the first outer surface relative to the bearing” as shown in the image below from the claim chart used in the underlying investigation:

Arcon Claim Chart Exhibit at 9 (annotations in original); Ex. D to Brother Sur-Reply at 8 (annotations in original).

Brother argues that the above claim charts used by the ALJ and Commission during the 1174 investigation to find infringement of the accused “Arcon-Branded TN-255” show that the “Arcon-Branded TN-255” have a “bearing” both “positioned to” an “outer surface” (i.e., left, outwardly facing surface of the left sidewall) and an “opposite side” of the “outer surface” (i.e., right, inwardly facing surface of the left sidewall) because the bearing “extends through the outer surface[.]” Brother Post Oral Discussion Submission at 11-12, 16 (emphasis in the original); see also Brother Sur-Reply at 9-14.

Notwithstanding the above, Print-Rite’s argument that the articles at issue cannot practice limitation 1c because “the majority of the bearing is positioned ‘at or near’ the inner surface of the outer wall of the cartridge frame” attempts to introduce a requirement of measurement or degree (i.e., a “majority of the bearing”) that is absent from the claim constructions adopted above and does not appear in any of the Commission’s findings from the underlying investigation. Unlike the articles found to infringe by the Commission that have a bearing that is arranged on the left, outwardly facing surface of the left sidewall and extends through the right, inwardly facing surface of the left sidewall, the articles at issue have a bearing [[

]] Images showing the different bearing arrangements on the Arcon-Branded TN-255 found to infringe by the Commission and the articles at issue are shown below. The differences shown establish that the Commission did not reach this issue and, as such, the EOE Branch must make a finding to reach its infringement determination.

[[ ]]

Arcon Claim Chart Exhibit at 9 (annotations in green added); see also Brother Sur-Reply at 10, 15 (annotation in green added).

Print-Rite 200s Have a “Bearing Positioned to The First Outer Surface” as Required by Limitation 1c

As shown by the image below, the Print-Rite 200s toner cartridges have [[ ]] (shown in the green rectangle) [[

]] such that the Print-Rite 200s ink cartridges have a bearing positioned at or near the outer surface as required by limitation 1c from claim 1.

[[ ]]

Ruling Request at 15; Brother Sur-Reply 14 (annotations in green added).

Accordingly, we find that Print-Rite has failed to show that the Print-Rite 200s ink cartridges do not have a “bearing being positioned to the first outer surface” as required by limitation 1c from claim 1 of the ’093 patent.

Print-Rite 700s Have a “Bearing Positioned to The First Outer Surface” as Required by Limitation 1c

As shown by the below image, the Print-Rite 700s ink cartridges have [[ ]] (shown below in solid red) [[

]] such that the Print-Rite 700s ink cartridges have a bearing positioned at or near the outer surface as required by limitation 1c from claim 1.

[[ ]]

Brother Post Oral Discussion Submission at 14 (annotations in green added)); see also Brother Sur-Reply at 15.

Accordingly, we find that the Print-Rite has failed to show that the Print-Rite 700s ink cartridges do not have a “bearing being positioned to the first outer surface” as required by limitation 1c from claim 1 of the ’093 patent. For the reasons discussed above, we find that Print-Rite has not met its burden to show that the articles at issue do not infringe claim 1 of the ’093 and therefore do not address Brother’s additional arguments presented during this inter partes proceeding.

V. HOLDING

We find that Print-Rite has not met its burden to establish that the articles at issue do not infringe claim 1 of the ’093 patent. Specifically, we find that Print-Rite has failed to show that the articles at issue do not have a “bearing being positioned to the first outer surface” that is required by limitation 1c from claim 1 of the ’093 patent.

The decision is limited to the specific facts set forth herein. If articles differ in any material way from the articles at issue 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), (4), and 177.9(b)(1) and (2).

Sincerely,

Dax Terrill
Chief, Exclusion Order Enforcement Branch

CC: Tommy Martin
Baker Botts L.L.P.
700 K STREET, N.W.
WASHINGTON, D.C. 20001
[email protected]
[email protected]