• HQ H328080
• Feb 13, 2023

• Type : 19 U.S.C. § 1337; Unfair Competition • HTSUS :
•  Related:   H286719   

OT:RR:BSTC:EOE H328080 JW

Ms. Shanshan “Shannon” Liang
Liang + Mooney PLLC
2104 Delta Way, Suite #1
Tallahassee, FL 32303-4236

VIA EMAIL: [email protected]; [email protected]

RE: Ruling Request; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-739; Certain Ground Fault Circuit Interrupters and Products Containing Same

Dear Ms. Liang:

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 Wenzhou Fahint Electric Co., Ltd.’s (“Fahint”) request for an administrative ruling, dated November 3, 2022, which included Exhibit Nos. 1 to 5 (collectively, “Ruling Request”). Fahint is requesting a ruling as to whether certain of its ground fault circuit interrupters (“GFCIs”) are subject to the general exclusion order (“GEO”) issued in U.S. International Trade Commission (“ITC” or “Commission”) Investigation No. 337-TA-739 (“the underlying investigation” or “the 739 investigation”). See Ruling Request at 1. We find that Fahint has not met its burden to show that these GFCIs do not infringe claims 4, 6, 10, 35-37, 39, and 41-46 of U.S. Patent No. 7,737,809. Thus, CBP’s position is that these GFCIs are subject to the GEO issued in the 739 investigation (“the 739 GEO”), pursuant to section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337 (“section 337”).

We further note that determinations of the Commission resulting from the underlying investigation or 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 with agreement of the parties. See, e.g., EOE Branch Email to Parties, dated November 10, 2022. The proceeding involved the two parties with a direct and demonstrable interest in the question presented by the ruling request: (1) your client, Fahint, the ruling requester and manufacturer of the articles at issue; and (2) Leviton Manufacturing Co. (“Leviton”), complainant in the 739 investigation. See, e.g., 19 C.F.R. § 177.1(c).

The parties were asked to clearly identify confidential information with [[red brackets]] in all of their submissions to CBP. See, e.g., EOE Branch Email to Parties, dated November 10, 2022; see also 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 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).

I. BACKGROUND

ITC Investigation No. 337-TA-739 The Commission instituted this investigation on October 8, 2010, based on a complaint and an amended complaint filed by Leviton. See Certain Ground Fault Circuit Interrupters and Products Containing Same, Investigation No. 337-TA-739, Commission Opinion (Public), EDIS Doc. No. 482482, at 1 (June 8, 2012) (“Comm’n Op.”) (citing 75 Fed. Reg. 62420 (Oct. 8, 2010)). The complaint, as amended, alleged a violation of section 337 of the Tariff Act of 1930 (19 U.S.C. § 1337) by reason of infringement of various claims of U.S. Patent Nos. 7,463,124 (“the ‘124 patent”); 7,737,809 (“the ’809 patent”); and 7,764,151 (“the ‘151 patent”). Id. The Commission’s notice of investigation named multiple respondents, and during the course of the investigation several of the respondents were found to be in default, or were terminated due to settlement agreements, or consent orders, or were the subject of withdrawn allegations. Id. The seven non-defaulting respondents that remained in the investigation may be categorized into two groups: (1) the “Trimone Respondents,” which consist of Zhejiang Trimone Electric Science & Technology Co. Ltd., of Zhejiang, China (“Trimone”); Fujian Hongan Electric Co, Ltd., of Fujian, China (“Hongan”); and TDE, Inc., of Bellevue, Washington (“TDE”); and (2) the “ELE Respondents,” which consist of Shanghai ELE Manufacturing Corp., of Shanghai China (“ELE”); Orbit Industries, Inc., of Los Angeles, California (“Orbit”); American Electric Depot Inc., of Fresh Meadows, New York (“AED”); and Shanghai Jia AO Electrical Co. of Shanghai, China (“Shanghai Jia”). Id. at 2-3. The Trimone Respondents participated in an evidentiary hearing held before the presiding Administrative Law Judge (“ALJ”) from July 25 to August 2, 2011. Id. at 3. The ALJ excluded the ELE Respondents from participating in the hearing because they failed to file a timely prehearing statement. Id. (citation omitted).

On December 20, 2011, the ALJ issued his final initial determination (“FID”), finding that the asserted patents were infringed by the accused GFCI products. Comm’n Op. at 3. The ALJ also found, however, that complainant Leviton had not sufficiently shown that a domestic industry exists with respect to the three asserted patents. Id. Accordingly, while the products sold by the respondents infringed the claims of the patents above, the ALJ found no violation of section 337 by the seven respondents remaining in the investigation. Id.

On June 8, 2012, the Commission reversed the ALJ’s FID and found a violation of 19 U.S.C. § 1337. Comm’n Op. at 95. However, the Commission did not find infringement of the ‘124 patent or the ‘151 patent, but only the ‘809 patent. Id. The Commission found that Leviton had sufficiently shown that a domestic industry exists with respect to the ‘809 patent. Id. Accordingly, the Commission issued a GEO prohibiting the unlicensed entry for consumption of GFCI’s that are covered by one or more of claims 1-4, 6, 8-11, 13, 15-16, 35-37, 39, and 41-46 of the ‘809 patent. Id. at 95-6. On August 13, 2013, the U.S. Court of Appeals for the Federal Circuit affirmed the ITC’s final determination. See Leviton Mfg. Co. v. ITC, 528 Fed. Appx. 993 (Fed. Cir. 2013).

The Patent and Claims in the 739 GEO

The 739 GEO prohibits the entry for consumption of ground fault circuit interrupters and products containing same covered by one or more of claims 1-4, 6, 8-11, 13, 15-16, 35-37, 39, and 41-46 of the ‘809 patent. See Certain Ground Fault Circuit Interrupters and Products Containing Same, Investigation No. 337-TA-739, Notice of Final Determination; Issuance of General Exclusion Order and Cease and Desist Orders; Termination of Investigation, EDIS Doc. No. 478830, at 88-90, ¶ 1 (April 27, 2012). However, claims 1-3, 8, 9, 11, 13, 15, and 16 were later cancelled based on a proceeding at the U.S. Patent and Trademark Office (“PTO”). See, e.g., Ruling Request at 4 (citing Zhejiang Trimone Electric Science & Technology Co., Ltd. and Fujian Hongan Elec. Co. v. Leviton Manufacturing, Inc., No. 2015-004513 (P.T.A.B. May 31, 2016); Inter Partes Reexamination Certificate No. US 7,737,809 C1 (U.S.P.T.O. June 1, 2018)). Thus, the remaining claims in the 739 GEO are claims 4, 6, 10, 35-37, 39, and 41-46 of the ‘809 patent. Of these claims, claims 4, 6, and 10 depend from independent claim 1, and claims 36-37, 39, and 41-46 depend from independent claim 35. See, e.g., Certain Ground Fault Circuit Interrupters and Products Containing Same, Investigation No. 337-TA-739, FID (Public), EDIS Doc. No. 471256, at 8 (Feb. 7, 2012).

The parties do not dispute any infringement with respect to claims 4, 6 and 10 and agree that only independent claim 35 of the ‘809 patent is at issue for the admissibility question presented in this inter partes proceeding. See Ruling Request at 4 (“So, the only independent claim at issue is Claim 35.”); see also Leviton Response at 2 (“At the present time, independent claim 35 of the ‘809 patent is the only independent claim in issue.”). Thus, for purposes of this ruling letter, the focus will be on claim 35 of the ‘809 patent only.

1. Claim 35 of the ’809 Patent

The ’809 patent is titled “Circuit Interrupting Device and System Utilizing Bridge Contact Mechanism and Reset Lockout.” FID at 8. “The ‘809 patent relates to a ‘family of resettable circuit interrupting devices that prevents electric power from being accessible to users of such devices when these devices are reversed wired.’” FID at 8 (citing the ‘809 patent at 2:54-57).

The text of claim 35 of the ’809 patent is reproduced below:

35. A circuit interrupting device comprising:

a housing having at least one user accessible receptacle defined therein;

a pair of line terminals that include a phase and neutral, the pair of line terminals disposed at least partially within the housing and adapted to electrically connect to a source of electric current;

a pair of load terminals that include a phase and neutral, the pair of load terminals disposed at least partially within the housing;

a pair of face terminals that include a phase and neutral, wherein the line, load, and face terminals are electrically isolated from each other and positioned to electrically connect to the at least one user accessible receptacle;

at least one lifter having a first opening defined therein and configured to move between a first position which provides electrical continuity between the line terminals and at least one of the load terminals and the face terminals and a second position which breaks electrical continuity between the line terminals and at least one of the load terminals and the face terminals;

a circuit interrupter configured to movably engage a latch having a second opening defined therein and positioned to substantially align with the first opening of the at least one lifter to move the at least one lifter from the first position to the second position upon the occurrence of an electrical abnormality; and

a reset arm configured to movably reorient the at least one lifter to the first position when the latch is disengaged by the circuit interrupter to reestablish electrical continuity amongst the pairs of terminals after resolution of the electrical abnormality.

See, e.g., ’809 patent, col. 16:54-17:18.

In the underlying investigation, “[w]hen evaluating infringement of the ‘809 patent, the ALJ construed four phrases: (1) ‘electrical conductor,’ (2) ‘reset lockout,’ (3) ‘movable bridge,’ and (4) ‘positioned to electrically connect to at least one user accessible receptacle.’” Comm’n Op. at 44. Of these four phrases, the only one present in claim 35 of the ‘809 patent is “positioned to electrically connect to at least one user accessible receptacle,” which the Commission construed as “situated so as to be capable of electrically connecting to at least one user accessible receptacle.” Comm’n Op. at 31.

In addition, the phrases, “electrically isolated,” “circuit interrupter,” and “pair of . . . terminals,” which also appear in claim 35 of the ‘809 patent, were agreed upon by the parties and adopted by the ALJ to be construed according to their plain meanings. FID at 81-82.

19 C.F.R. Part 177 Ruling Request

Procedural History

On November 3, 2022, Fahint submitted a letter to CBP requesting an administrative ruling pursuant to 19 C.F.R. Part 177 and included Exhibits 1 to 5 with its request. Fahint’s request is for a ruling whether certain of its GFCIs are subject to the 739 GEO. See Ruling Request at 1. Fahint also notified the EOE Branch on November 3, 2022, that Fahint entered into a non-disclosure agreement with Leviton and provided Leviton a copy of the Ruling Request. See Fahint Email to EOE Branch, dated November 3, 2022.

On November 10, 2022, the EOE Branch had an initial conference call with Fahint and Leviton where both parties agreed to conduct this proceeding on an inter partes basis, as administered by the EOE Branch. See EOE Branch Email to Parties, dated November 10, 2022.

On November 18, 2022, the parties provided the EOE Branch with a joint, proposed schedule for this inter partes proceeding, which the EOE Branch subsequently agreed to. See Fahint Email to EOE Branch, dated November 18, 2022; and EOE Branch Email to Parties, dated November 18, 2022.

On November 28, 2022, Leviton provided its response to the Ruling Request, which included Exhibits 1 to 3 (collectively, “Leviton Response”). On December 4, 2022, Fahint asked for an extension to file its reply the Leviton Response. Fahint Email to Leviton and EOE Branch, dated December 4, 2022. On December 5, 2022, the parties agreed to extensions to file their respective reply and sur-reply and proposed modified dates to the EOE Branch. Leviton Email to EOE Branch, dated December 5, 2022. On December 5, 2022, the EOE Branch agreed to these extensions and the schedule was modified. EOE Branch Email to Parties, dated December 5, 2022. On December 7, 2022, Fahint submitted its reply (“Fahint Reply”). On December 20, 2022, Leviton submitted its sur-reply (“Leviton Sur-Reply”). On January 3, 2022, in line with the schedule the EOE Branch held an oral discussion with the parties. The oral discussion was held remotely by video conference, and Leviton also provided its presentation materials to the EOE Branch on January 3, 2022 (“Leviton Presentation”). Fahint did not use presentation materials. Following the oral discussion, the EOE Branch confirmed in an email to the parties, specific issues (beyond any additional issues the parties wished to raise) that the Branch would like addressed in the post oral discussion submissions. EOE Branch Email to Parties, dated January 3, 2022. The issues were:

Discussion of CBP Ruling Letter HQ H286719 (dated July 24, 2017), including the case law cited therein, and the application of that ruling letter and relevant case law to the issues presented in the instant ruling request; Identification from the ruling requester of any cities, counties, or other local jurisdictions within the four states identified in ruling requester’s reply for which the NEC has not been adopted; and Information from the ruling requester regarding the relevant supply chain, e.g., the entities involved and the process behind how the articles at issue ultimately reach the end consumer in the United States (e.g., during the oral discussion, counsel for the ruling requester mentioned the prospect of online sales but it does not appear that the administrative record includes this and other germane information concerning this point).

Id.

On January 20, 2023, both Leviton and Fahint filed their post oral discussion submissions, for which Fahint’s post oral discussion submission additionally included Exhibits 1 to 3 (respectively, “Leviton Post Oral Discussion Submission” and “Fahint Post Oral Discussion Submission”). As contemplated by the EOE Branch during the oral discussion, since Fahint’s submission allegedly identified “several jurisdictions which have not adopted any version of the National Electric Code” that were not identified previously, see, e.g., Fahint’s Post Oral Discussion Submission at 10, the EOE Branch gave each party until January 30, 2023, to file responsive submissions limited to addressing only any new point raised in the opposing side’s post oral discussion submission with respect to National Electric Code adoption or compliance.  EOE Branch Email to Parties, dated January 23, 2023. The EOE Branch also modified the schedule accordingly. Id. On January 30, 2023, both Fahint and Leviton filed their responsive submissions, Leviton’s responsive submission additionally included two video exhibits (respectively, “Fahint Responsive Submission” and “Leviton Responsive Submission”). Ultimately, based on the modifications to the procedural schedule, the EOE Branch set the target date for issuance of the ruling letter in this inter partes proceeding as February 13, 2023.

The Articles at Issue

Fahint initially stated that “[t]he model numbers of the GFCIs subject to this ruling request are GF15, GF20, GT15, GT20, GW15, GW20, GTN15 and GTN20.” Ruling Request at 2. However, after Leviton noted in its response that GFCIs with these model numbers were listed with Underwriters Laboratories (“UL”), stressing that “those designs isolated the face terminals from the load terminals” and that, in Leviton’s view, this evidenced an intention “to modify the subject GFCIs once here in the U.S. and then sell them under the UL listing,” see Leviton Response at 8, Fahint revised the model numbers of the GFCIs for which it was seeking a ruling. Fahint Reply at 5. In the reply, Fahint stated, “Requestor hereby submits that it will modify the model numbers of the GFCIs subject to this ruling request to [[ ]] (collectively, “articles at issue”). Id. With the exception of the model numbers, Fahint has not indicated that any other information in its ruling request related to the structural elements of the articles at issue have changed.

Fahint states that the articles at issue “will be manufactured by Fahint and exported by Fahint or its trading companies, including [[ ]]” Ruling Request at 2. Fahint explains that the articles at issue “appear to have three terminals – a line terminal that can be adapted to electrically connect to a source of electric current, a face terminal that is positioned to electrically connect to user accessible receptacle, and a load terminal that is capable of being electrically connected to one or more loads.” Id. However, Fahint notes, “the face terminal and the load terminal are designed so that they are permanently electrically connected to each other when the GFCI is properly assembled, regardless of whether the GFCI is in the connected state or in the tripped state. Therefore, the face terminal and the load terminal function as one terminal – face/load terminal.” Id. In Exhibit 2 of Fahint’s ruling request, Fahint provides photographs of the articles at issue, which are reproduced below:

[[ ]]

[[ ]]

Id.; see also Exhibit 2 of Ruling Request.

II. ISSUE

Whether Fahint has met its burden to show that the articles at issue do not infringe the relevant claims of the ‘809 patent, and thus are not subject to the 739 GEO. See, e.g., Ruling Request at 1.

III. LAW AND ANALYSIS

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).

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 claimed elements 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., 135 S. Ct. 831, 841, 190 L. Ed. 2d 719 (2015).14

“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).

Infringement Analysis

As noted above, the infringement question related to the articles at issue is focused on claim 35 of the ‘809 patent, and more specifically, the claim limitation stating, “wherein the line, load, and face terminals are electrically isolated from each other[.]” See Ruling Request at 4; see also Leviton Response at 3-4. There is no dispute that the other limitations in claim 35 are met. Id.

Fahint argues that the articles at issue are not subject to the 739 GEO because they “have only two functioning terminals, namely the line terminal and the face/load terminal” and “[t]hus, they do not satisfy Claim 35 limitations because they do not satisfy the limitation found in Claim 35 of the line, load, and face terminals being ‘electrically isolated from each other.’” Ruling Request at 4. In opposition, Leviton argues that while it agrees that the sample it was provided by Fahint has the face and load terminal electrically connected, Leviton nonetheless believes that the articles at issue are subject to the exclusion order because the articles at issue “were intentionally designed” to be altered after the articles at issue entered into the United States. Leviton Response at 5. Leviton explains that Fahint designed the articles at issue to include separate line, load and face terminals, but “they added a [[ ]] to each of the face terminals, shown in the red circle in [the figure] below.” Id. “The [[ ]] alone were added to prevent the electrical isolation of the face terminals and the load terminals.” Id.

[[ ]]

Id. (annotation in the original). Leviton explains that either “[[ ]], or bending of the [[ ]] [ ] would eliminate the electrical connection made thereby between the face and load terminals and the [articles at issue] would then infringe claim 35 of the ‘809 patent.” Id.

The parties generally do not dispute these facts. Namely, the parties agree that when the articles at issue detect a ground fault (1) if the [[ ]] is unaltered and in place, then the face and load terminals are electrically connected and the articles at issue do not meet the limitation at issue; but (2) if the [[ ]] is removed or bent, then the face and load terminals are no longer electrically connected and the articles at issue meet the limitation at issue. See, e.g., Leviton Response at 5 (agreeing that the sample has the face and load terminal electrically connected, but arguing that “the subject GFCIs were intentionally designed to either allow [[ ]] once the devices were imported”); see generally, Fahint Reply (arguing that there will be no modification of the articles at issue post importation, but not disputing that alteration of the [[ ]] would electrically isolate the face and load terminals and, therefore, satisfy the limitation).

Instead, the primary dispute between the parties is whether Fahint has carried its burden to establish that the articles at issue are not designed to be altered, in the manner described by Leviton that would infringe claim 35 of the ‘809 patent, before operation in the United States. While “a device does not infringe simply because it is possible to alter it in a way that would satisfy all the limitations of a patent claim[,] if a device is designed to be altered or assembled before operation, the manufacturer may be held liable for infringement if the device, as altered or assembled, infringes a valid patent.” High Tech Medical Instrumentation v. New Image Industries, 49 F.3d 1551, 1555-56 (Fed. Cir. 1995). As detailed below, the shifting positions and lack of specificity, coupled with serious questions about the market for these GFCIs in an unaltered state, as reflected in the present administrative record, support a finding that Fahint has failed to meet its burden that the articles at issue are not designed to be altered to infringe claim 35 of the ‘809 patent before their operation in the United States, and as such, the articles at issue are subject to the 739 GEO.

Fahint’s Changing Positions and Insufficient Evidence Throughout the course of this proceeding under 19 C.F.R. Part 177, details regarding the articles at issue and the import transactions related to their entry into the United States have continuously evolved. On several occasions, after Leviton pointed out an undisputed fact that contradicted Fahint’s prior assertions, Fahint’s response was to modify the articles at issue and the proposed nature of the import transactions in question. In other words, the facts Fahint identified in its ruling request underwent frequent change during the course of this proceeding.

For example, Fahint changed the model numbers of the articles at issue only after Leviton pointed out that all the model numbers of the articles at issue originally identified in Fahint’s ruling request were listed with UL. See Fahint Reply at 5 (“Leviton is correct that Requestor has previously listed GFCIs with the same model number as those disclosed in its ruling request.”); see also Exhibit 3 of Leviton Response (showing that the model numbers of Fahint’s GFCIs listed with UL are the exact same model numbers of the articles at issue as initially identified in the Ruling Request); see also Exhibit 2 of Ruling Request (photograph of an article at issue showing that the model number is “GW20”, i.e., one of the model numbers listed with UL). The significance of this, as Leviton explained, was that “[w]hile the specific designs presented to UL for testing are confidential, the fact that they are listed indicates that those designs isolated the face terminals from the load terminals,” Leviton Response at 8; see also Exhibit 2 of Leviton Response (Excerpts of UL 943), implying that in those designs, the line, load, and face terminals are electrically isolated from each other, and thus, meet the claim limitation at issue and infringe at least claim 35 of the ‘809 patent. Further, Leviton points to this as evidence suggesting that Fahint will alter the articles at issue, specifically by removing or bending the [[ ]] away from the load terminal thereby creating an infringing article since, once altered, the articles at issue “[[ ]] can be sold as listed, under the existing UL listing as long as the design is the same as the GFCIs previously submitted to UL for testing [and Fahint] would simply be able to affix the UL label to the subject GFCIs.” Id. at 4.

Fahint does not dispute Leviton’s assertions that, in its UL listed GFCIs, the face terminals and load terminals are electrically isolated from each other, and as such, with the electrically isolated line terminals that are undisputedly present in the articles at issue, would infringe claim 35 of the ‘809 patent. Rather, Fahint merely states that it was an “oversight” for the model numbers of the articles at issue, as originally identified in the ruling request, to be the same as its GFCIs currently listed with UL. Fahint Reply at 5. Fahint summarily notes that “[t]he GFCI models that are currently listed with UL are other versions of the models that are intended for foreign markets” and modified the model numbers of the articles at issue. Id. Fahint also claims that it “does not intend to submit the modified (i.e., [[ ]]) GFCIs for UL testing and listing” and “[e]ven if it had such an intention, the timing of this Ruling proceeding and the expiration date of the ‘809 patent and the 739 GEO would make post-importation certification pointless.” Id. at 3.

Similar to the revised model numbers of the articles at issue, throughout this proceeding under 19 C.F.R. Part 177, Fahint’s business plans also changed and become narrower after Leviton brought to light that the market in the United States for GFCIs that do not meet National Electric Code standards is severely limited. See Leviton Response at 5. Leviton explains that, as designed with the [[ ]], the articles at issue “cannot pass the safety testing needed to be listed to the relevant standards and thus its installation would violate the National Electric Code.” Id. Leviton further states that “[w]ithout passing the listing tests the installation of the articles at issue would not satisfy the National Electric Code” and would thus be virtually unmarketable throughout much of the United States. Leviton Response at 2; see also Leviton Sur-Reply at 1-2. Leviton also notes that the [[ ]] serve no purpose for the operation of the GFCI and described the [[ ]] as “extra, and unnecessary.” Leviton Sur-Reply at 1.

Fahint does not dispute that the articles at issue “are incapable of passing the safety testing to be listed to the relevant standards, namely UL 943” and that “the lack of listing may limit the size of the U.S. market [available.]” Fahint Reply at 2. Rather, in its reply, Fahint states, “the NEC is not adopted in all states. Arizona, Illinois, Missouri, and Mississippi have not adopted any version of the NEC at the state level and therefore the subject GFCIs may be marketable in those jurisdictions.” Id. (citation omitted). However, in its post oral discussion submission, after Leviton pointed out in its sur-reply that numerous cities and local jurisdictions within those four states have, in fact, adopted the NEC, see Leviton Sur-Reply at 2-4, Fahint again pivoted and said “Fahint will sell directly to distributors who can sell to ultimate consumers either in stores or online or to contractors who case use the products in cities or counties which have not adopted NEC or have only adopted pre-2005 NEC [and] Fahint also intends to sell the [articles at issue] online through e-commerce stores.” Fahint Post Oral Discussion Submission at 11. Indeed, Fahint went from its initial position that (1) the articles at issue will be exported from China to the U.S. without expressing any limitation on distribution, to saying that (2) the articles at issue may be marketable in four states, and finally concluding that (3) the articles at issue will be sold to distributors who, in turn, will sell to ultimate consumers or to contractors that could use the products in counties that have not adopted NEC, or only adopted pre-2005 NEC. Additionally, Fahint’s latest proposal includes an undefined plan to sell the articles at issue through e-commerce stores. Compare Ruling Request at 2 (“Fahint intends to export the two-terminal GFCIs from China to the U.S.”), Reply at 2 (“Even assuming the subject GFCIs could not be listed with any listing organization, the NEC is not adopted in all states. Arizona, Illinois, Missouri, and Mississippi have not adopted any version of the NEC at the state level and therefore the subject GFCIs may be marketable within those jurisdictions.”), and Post Oral Discussion Submission at 11 (“Wenzhou Fahint will sell directly to distributors who can sell to ultimate consumers either in stores or online or to contractors who can use the products in cities or counties which have not adopted NEC or have only adopted pre-2005 NEC. Wenzhou Fahint also intends to sell the subject two-terminal GFCIs online through e-commerce stores.”).

The shifting positions reflected in the administrative record are concerning and raise significant questions whether Fahint has met its burden to shown noninfringement. The undisputed evidence in this inter partes proceeding shows, inter alia, that (1) the original model numbers of the articles at issue from the ruling request were identical to the model numbers listed with UL; (2) the face terminals, load terminals, and line terminals are electrically isolated from each other in the UL listed GFCIs; (3) the only difference between the UL listed GFCIs and the articles at issue in the ruling request is the presence of the [[ ]] in the articles at issue; (4) due to the presence of the [[ ]], the articles at issue are not able to pass the tests required for listing with UL; and (5) the lack of a listing will limit the market in the United States for the articles at issue. Taken together, along with Fahint’s lack of evidence showing otherwise, we find that Fahint has failed to meet its burden to establish that the articles at issue are not designed to be altered in a manner, prior to operation, that infringes claim 35 of the ‘809 patent. Beyond the shifting positions, which form an independent basis to find that Fahint has not carried its burden, we additionally find that Fahint failed to provide adequate support for many of its representations.

For example, Fahint claims that it “does not intend to modify its GFCIs to pass UL test or be NEC code compliant post-importation[.]” However, there is little to support this assertion, particularly in light of the evidence showing the incentive to alter the articles at issue once entered into the United States. Compare, e.g., HQ H286719 (dated July 24, 2017) (that involved a case with minimal evidence of any incentive to modify the articles post-importation and where the ruling requester, which included the importer of the articles at issue, provided, inter alia, a declaration from its Vice President of Operations and Engineering explaining that the key features at issue would not be removed and likewise that the service manual for the product at issue would be revised accordingly).

Consistent with past practice regarding section 337-based rulings and inter partes proceedings under 19 C.F.R. Part 177 that present questions whether the article at issue is designed to be altered or other issues related to post-importation modification, the EOE Branch considers the following, inter alia, to be significant for a party to carry its burden and establish admissibility with supporting evidence: (1) that any declaration submitted is from an appropriate officer or employee with authority to bind the company and includes pertinent representations bearing on the admissibility question presented, (2) that the foreign manufacturer or exporter and the importer, as defined by 19 C.F.R. § 101.1, are related companies, (3) that the importer would enter and distribute the articles within the United States in accordance with the representations made, and (4) that the entered articles would be sold within the United States under the condition that subsequent purchasers agree not to materially alter or modify the articles (including with respect to the removal or addition of a feature for which admissibility of the article turns).

Furthermore, the situation here is distinguishable from the factual scenario in cases such as High Tech Medical Instrumentation v. New Image Industries, 49 F.3d 1551, 1556 (Fed. Cir. 1995). In High Tech Medical, the Court noted that “the record provides no reason to disregard the set screws in determining the character of the coupling between the AcuCam camera and its housing” and goes further to point out, inter alia, that “it does not appear from the record that removing the set screws would serve any functional purpose not already accomplished by other means[.]” In contrast, here, the record, as shown by at least the five (5) undisputed facts listed, supra, provides a number of possible reasons to disregard the [[ ]] in determining whether the face and load terminals are electrically connected in the tripped state. Moreover, as shown, it does appear from the record that [[ ]] would serve an important functional purpose not already accomplished by other means. For example, Fahint concedes that the articles at issue “are incapable of passing the safety testing to be listed to the relevant standards, namely UL 943”, Fahint Reply at 2, which as Leviton notes “is the ‘Reverse line-load miswire Test’[ ] to ensure that there is no power to the face when power is first applied to the GFCI at the load terminals.” Leviton Response at 6. However, it is undisputed that [[ ]] would isolate the face terminals from the load terminals and enable the GFCIs, like Fahint’s UL listed GFCIs, to pass the Reverse line-load miswire tests. Id. at 8.

In addition, while Fahint argues that submitting “the modified (i.e., [[ ]]) GFCIs for UL testing and listing would not make sense from the timing perspective,” Fahint Reply at 3, Fahint still does not directly address Leviton’s point that Fahint “may very well not have to submit the subject GFCIs for UL listing because they already have a UL listing for a GFCI [and] [t]he subject GFCI, [[ ]] can be sold as listed, under the existing UL listing as long as the design is the same as the GFCIs previously submitted to UL for testing [and Fahint] would simply be able to affix the UL label to the subject GFCIs.” Leviton Sur-Reply at 4 (emphasis added). For instance, Exhibit 3 of the Fahint Post Oral Discussion Submission is related to UL testing of the article at issue (i.e., with the [[ ]] in place). Fahint did not provide evidence showing that additional UL testing is also required if the [[ ]] is removed post entry into the United States, i.e., the alleged designs that are already listed with UL. This is also true in the Fahint Responsive Submission where Fahint again states that “a UL listing for the subject GFCIs would require a submission and new testing” but Fahint does not address whether “a submission and new testing” would be required if the articles at issue were modified, i.e., by [[ ]], which would then seemingly make the GFCIs the same design as the design that Fahint already has listed with UL. See, e.g., Fahint Responsive Submission at 3.

Finally, while Fahint argues that [[ ]] would deform the receptacle face bus bar, rendering the GFCI inoperable, see Fahint Post Oral Discussion Submission at 4-6, it is not clear how these depictions Fahint provided in support of its argument were obtained or who removed the [[ ]]. In particular, the depictions were not accompanied, for example, by an expert report or declaration. Indeed, the weight given to this argument would vary depending on whether the [[ ]] was removed by a lay person or attorney, or if it was removed by a person of ordinary skill in the art. See, e.g., HQ H286719 (dated July 24, 2017), fn. 1 (“While an expert declaration was also submitted by Diebold, the expert declaration relied on Diebold’s counsel’s opinion that it was ‘very difficult or impossible to remove electrical connections on the encrypted pin pads (EPPs) of the modified Halo II, MX5200, and MX5600.’ See Exhibit 1 (Kurfess Declaration) of Diebold’s Post Proceeding Submission at ¶ 24 (‘I understand from counsel that it is[.]’).”). In any event, Leviton noted in its responsive submission that this information was presented for the first time in Fahint’s post oral discussion submission and, therefore, should not be given further consideration. Leviton Responsive Submission at 3-4. Moreover, Leviton provided video evidence showing that the [[ ]]. Id.; see also Video Exhibits to Leviton Responsive Submission. As such, if consideration were given to this factual point, to the extent an expert report is required, neither party has submitted evidence of this kind and, to the extent such a report is not needed, Leviton’s evidence contradicts that of Fahint.

Thus, in view of Fahint’s pattern of revisions when confronted by unrebutted arguments and evidence, and based on the lack of adequate support to substantiate its own representations, we find that Fahint has not carried its burden to establish that the articles at issue are not designed to be altered such that they would infringe claim 35 of the ‘809 patent before operation in the United States, and as such, the articles at issue are subject to the 739 GEO. While we believe that the reasoning above is sufficient to establish that Fahint has not met its burden, to the extent there remains any doubt, we address an additional ground below.

The Unknown Parties to the Purported Import Transactions As mentioned above, Fahint’s description of the import transactions are vague at best. In its ruling request, when describing the “prospective importation” at issue, Fahint stated that the articles at issue “will be manufactured by Fahint and exported by Fahint or its trading companies, including [[ ]]” Ruling Request at 2. In this regard, Fahint states that it intends to export the articles at issue from China to the United States. Id. Fahint also notes that the articles at issue “may be imported through various ports, including the Port of Los Angeles/Long Beach.” Id. As we noted, supra, by the time Fahint filed its post oral discussion submission, the plan seemed to become that “Fahint will sell directly to distributors who can sell to ultimate consumers either in stores or online or to contractors who can use the products in cities or counties which have not adopted NEC or have only adopted pre-2005 NEC. Wenzhou Fahint also intends to sell the subject two-terminal GFCIs online through e-commerce stores.” Fahint Post Oral Discussion Submission at 11.

While we take Fahint’s point that the ruling request pertains to a prospective transaction and not all the information may be known at present, we nonetheless find that Fahint did not provide information that, given the plan it has proposed, should be its possession. This is less a question of compliance with the requirements of 19 C.F.R. § 177.2(b)(1) and more about carrying the burden to establish admissibility for purposes of section 337 and as a matter of patent law under the precedent cited above. Thus, while we have already found that Fahint has not met its burden, the uncertainty and missing details in regard to the prospective transaction Fahint has proposed is another ground for finding that it has not met its burden to show that the articles at issue are not subject to the exclusion order, particularly as the main issue under consideration is whether the articles at issue were designed to be altered prior to operation in the United States.

IV. HOLDING

We find that Fahint has not met its burden to show that the articles at issue do not infringe claim 35 of the ‘809 patent. Thus, CBP’s position is that the articles at issue are subject to the 739 GEO.

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: Mr. Meir Y. Blonder
Leviton Manufacturing Co., Inc.
201 North Service Road.
Melville, NY 11747
[email protected]; [email protected]