Munford Page Hall II
Adduci Mastriani & Schaumberg LLP
1200 Seventeenth Street, N.W. Washington, D.C. 20036
RE: U.S. International Trade Commission; Limited Exclusion Order; Investigation No. 337-TA-
669; Certain Optoelectronic Devices, Components Thereof, and Products Containing the
Same
Dear Mr. Hall:
This is in response to your letter dated February 28, 2011, and supplemented on April 25,
2011, on behalf of your client Emcore Corporation ("Emcore") seeking a determination whether Emcore's vertical cavity surface emitting lasers with an aperture smaller than 8 micrometers fall within the scope of the above-referenced limited exclusion order issued by the U.S. International Trade Commission ("ITC").
FACTS:
Emcore is a company based in Albuquerque, New Mexico that has manufactured abroad and imports articles to the United States. See Ruling Request at 1. As indicated above, Emcore is seeking a determination whether its vertical cavity surface emitting lasers (VCSELs) with apertures less than 8 micrometers are covered by the relevant patent at issue during the investigation at, and found to be infringed by, the lTC.
lTC Inv. No. 337-TA-669 was instituted based on a complaint filed by Avago Technologies Fiber IP (Singapore) Pte. Ltd., Avago Technologies General IP (Singapore) Pte. Ltd., and Avago Technologies Ltd. (collectively "complainants"), which named Emcore as respondent to the investigation. See Administrative Law Judge's ("ALJ") Initial Determination ("ID") at 1 (March
12, 2010). The ITC instituted the investigation to determine whether there was a violation of subsection (a)(1)(B) of section 337 in the importation into the United States, the sale for importation into the United States, or the sale within the United States after importation of certain vertical cavity surface emitting lasers by reason of infringement of one or more of claims 1, 2, 3, 5, and 6 of utility U.S. Patent No. 5,359,447 ("the '447 patent"), and claim 8 of utility U.S. Patent No.
5,761,229 ("the '229 patent"). Id.
On March 12, 2010, The ALJ found in the Initial Determination that the accused products infringed claims 1, 2, 3, and 5 of the '447 Patent and that Respondent induced and contributed to the infringement of claims 1, 2, 3 and 5 of the '447 Patent. The ALJ also found that the accused products did not infringe claim 6 of the '447 Patent or the asserted claim of the '229 Patent. On May 13, 2010, the Commission issued notice of its determination not to review the ALJ's final ID finding a violation of section 337. The lTC provided relief in the form of a Limited Exclusion Order (LEO) that bars the entry for consumption into the United States of vertical cavity surface emitting lasers that infringe one or more of claim 1, 2, 3, or 5 of the '447 patent and are imported or are manufactured by or on behalf of Emcore. See 337-TA-669 Limited Exclusion Order (March
12, 2010).
The products accused of infringing the asserted claims of the '447 Patent are broken down into six categories. (JX-06; Complaint at ¶¶ 21-25, 49-55.) Those product categories are:
Type A: 12-channel parallel transmitter receiver sets
Type B: 4 channel parallel transceiver modules
Type C: VCSEL transmitter optical subassemblies ("TOSAs") and receiver optical subassemblies ("ROSAs").
Type D: lxl2 and lx4 VCSEL arrays and photodiode arrays
Type E: Singlet VCSELs and singlet pin photodiodes
Type F: VCSELs in TO cans
Avago had also accused Emcore's VCSEL transmitter optical subassemblies ("TOSAs") ("Type C") and Emcore's VCSELs in "TO cans" ("Type F") of infringing claim 8 of the '229 patent (JX-6; Complaint at ¶ 59.)
The evidence in the investigation established that the 1 x 12 and 1 x 4 VCSEL arrays identified as the accused Type D products were subcomponents of Emcore's 12-channel parallel transmitter and receiver sets ("Type A") or Emcore's 4-channel transceiver modules ("Type B"). (CX-231C at Q. 288, 291.) The evidence also established that the singlet VCSELs identified as the Type E products were used as subcomponents of the VCSELs in TO cans (Type F), which in tum were used as subcomponents of the TOSAs identified as the accused Type C products. (CX-231C at Q. 372, 376.) Each of the accused Emcore products includes either a VCSEL or a photodiode used to detect the light emitted by a VCSEL. (JX-6).
The products which are the subject of this Ruling Request are in all respects identical to the accused products found to infringe in the 337-TA-669 Investigation except for the aperture of the VCSEL being 7.0 to 7.9 micrometers instead of 8.0 or above as stated in the '447 Patent. The Requester has offered to provide laboratory tests confirming the aperture of the VCSELs.
ISSUE:
The issue presented is whether Emcore's vertical cavity surface emitting lasers with apertures from 7.0 to 7.9 micrometers infringe any of the relevant claims at issue and therefore fall within the scope of the 669 LEO.
LAW AND ANALYSIS:
The ITC has authority to conduct investigations into imported articles that allegedly infringe United States patents and impose remedies if the accused products are found to be infringing. See 19 U.S.C. § 1337(a)(l)(B), (b)(l), (d), (f). Specifically, 19 U.S.C. § 1337(d) provides the Commission authority to direct the exclusion from entry of articles found to be infringing. Moreover, when the Commission determines that there has been a violation of section
337, as amended, it may issue two types of exclusion orders: a limited exclusion order and/or a general exclusion order. See Fuji Photo Film Co., Ltd. v. U.S. Int'l Trade Comm'n, 474 F.3d 1281,
1286 (Fed. Cir. 2007); see also Certain Ink Cartridges and Components Thereof, Inv. No. 337-TA-
565, Commission Opinion (October 19, 2007).
Both types of orders direct CBP to bar infringing products from entering the country. See Yingbin-Nature (Guangdong) Wood Indus. Co. v. U.S. Int'l Trade Comm'n, 535 F.3d 1322, 1330 (Fed Cir. 2008). A limited exclusion order is "limited in that it only applies to the specific parties before the Commission in the investigation. Id. In contrast, a general exclusion order bars the importation of infringing products by everyone, regardless of whether they were respondents in the Commission's investigation. ld. A general exclusion order is appropriate if two exceptional circumstances apply. See Kyocera Wireless Corp. v. U.S. Int'l Trade Comm'n, 545 F.ed 1340,
1356. A general exclusion order may only be issued if (1) "necessary to prevent circumvention of a limited exclusion order," or (2) "there is a pattern of violation of this section and it is difficult to identify the source of infringing products." 19 U.S.C. § 1337(d)(2); see also Kyocera, 545 F.3d at
1356 ("If a complainant wishes to obtain an exclusion order operative against articles of non respondents, it must seek a GEO by satisfying the heightened burdens of §§ 1337(d)(2)(A) and (B)."). Additionally, a seizure and forfeiture order issued under 19 U.S.C. § 1337(i) directs CBP to seize and forfeit articles imported in violation of an exclusion order when the importer previously had articles denied entry and received notice that seizure and forfeiture would result from any future attempt to import infringing articles to the United States.
As stated above, the 669 LEO issued by the lTC provides, in relevant part, that: Optoelectronic devices, components thereof, and products containing the same that are
covered by one or more of claims 1, 2, 3, and 5 of U.S. Patent No. 5,359, 447 and that are
manufactured abroad by or on behalf of, or are imported by or on behalf of Emcore Corporation or any of its affiliated companies, parents, subsidiaries, or other related business entities, or it successors or assigns are excluded from entry for consumption into the United States, entry for consumption from a foreign-trade zone, or withdrawal from a warehouse for consumption, for the remaining term of the patent, except under license of the patent owner or as provided by law.
A limited exclusion order is "limited" in that it only applies to the specific parties before the lTC in the investigation. Id. 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 only appropriate if two exceptional circumstances
apply. See Kyocera Wireless Corp. v. U.S. Int'l Trade Comm'n, 545 F.3d 1340, 1356 (Fed Cir.
2008). A general exclusion order may be issued only if (1) "necessary to prevent circumvention of a limited exclusion order," or (2) "there is a pattern of violation of this section and it is difficult to identify the source of infringing products." 19 U.S.C. § 1337(d)(2); see also Kyocera, 545 F.3d at
1356 ("If a complainant wishes to obtain an exclusion order operative against articles of non respondents, it must seek a GEO by satisfying the heightened burdens of §§ 1337(d)(2)(A) and (B).").
The limited exclusion order issued in Investigation No. 337-TA-644 specifically applies to Emcore as a named party before the ITC in the investigation. No exceptional circumstances or heightened burden of proof apply to the exclusion of infringing products by Emcore. The only pertinent question is whether the product at issue infringes the relevant patent. See Sealed Air Corp. v. U.S. Int'l Trade Comm'n, 645 F.2d 976, 985 (C.C.P.A. 1981) ("An exclusion order operates against goods, not parties."); see also VastFame Camera, Ltd. v. U.S. Int'l Trade Comm'n,
386 F.3d 1108, 1114 (Fed. Cir. 2004) ("A general exclusion order broadly prohibits entry of articles that infringe the relevant claims of a listed patent without regard to whether the persons importing such articles were parties to, or were related to parties to, the investigation that led to issuance of the general exclusion order.").
Significantly, the Federal Circuit has recognized that issuance of a general exclusion order by the ITC binds named parties and non-named parties alike and shifts to would-be importers, "as a condition of entry, the burden of establishing noninfringement." Hyundai Electronics Industries Co. v. U.S. Int'l Trade Comm'n, 899 F.2d 1204, 1210 (Fed. Cir. 1990). And that such rational applies with "increased force" to parties named in a limited exclusion order. Id. Accordingly, the burden is on Emcore to establish that the product at issue does not infringe any relevant patent.
UTILITY PATENT INFRINGEMENT
Patent infringement determinations for utility patents entail two steps. The first step is to interpret the meaning and scope of the patent claims asserted to be infringed. The second step is to compare the properly construed claims to the accused device. See Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). The first step is a question of law; the second step is a question of fact. See Freedman Seating Co. v. American Seating Company, 420 F.3d 1350, 1357 (Fed. Cir. 2005).
In patent law, there are two types of infringement: direct and indirect infringement. Direct infringement includes two varieties: literal infringement and infringement under the doctrine of equivalents. Literal infringement is when every limitation recited in a claim is found in the accused device. See Strattec Security Corp. v. General Automotive Specialty Co., 126 F.3d 1411, 1418 (Fed. Cir. 1997); see also Digital Biometrics, Inc. v. ldentix, Inc., 149 F.3d 1335, 1349 (Fed. Circ.
1998) ("An accused device cannot infringe, as a matter of law, if even a single limitation is not satisfied.").
As for the scope of protection provided by the patent at issue in the 669 LEO, it is a "bedrock principle" of patent law that "the claims of a patent define the invention to which the patentee is entitled the right to exclude." Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
1576, 1582 (Fed. Cir. 1996) ("It is well-settled that, in interpreting an asserted claim, the court
should look first to the intrinsic evidence of the record ... first, we look to the words of the claims themselves … to define the scope of the patented invention.").
Furthermore, the Federal Circuit has made clear that claim terms are given their ordinary and customary meaning, which refers specifically to the ordinary and customary meaning that the claim term would have to a person of ordinary skill in the art at the time of the invention. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). The inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation. See Innova, 381 F.3d at 1116. That starting point is based on the well-settled understanding that inventors are typically persons skilled in the field of the invention and that patents are addressed to and intended to be read by others of skill in the pertinent art. See Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1119 (Fed. Cir. 2002).
To be clear, in this context, Emcore bears the burden of proof as it has already been established above that the issuance of a limited exclusion order by the ITC shifts the burden of establishing non-infringement to the would-be importer. See Hyundai Electronics Industries Co.,
899 F.2d at 1210. Accordingly, the CAFC has provided the framework outlined above for construing utility patent claims. With this framework established, the analysis turns to the matter at hand. As stated previously, the claims of the patent at issue include:
CLAIM 1 OF U.S. PATENT NO. 5,359,447
The subject matter of the '447 patent involves vertical cavity surface emitting lasers. See ALJ Initial Determination ("ALJ ID") at 11. The '447 patent has 4 claims at issue. Claims 1, 2, 3, and 5 were included in the 669 LEO. Claims 2, 3, and 5 are dependent on claim 1 and are construed to incorporate by reference all the limitations of claim 1. See Boston Scientific Corp. v. Micrus Corp., 556 F. Supp. 2d 1045, 1061 (N.D. Cal. 2008)("Although a dependent claim includes all of the limitations of the independent claim from which it depends, the dependent claim adds limitations and might not be subject to the same asserted ground of invalidity"). Because here, the additional limitation or limitations found in each of the dependent Claims 2, 3, and 5 of the '447 patent are dependent upon the aperture size limitation of "larger than eight micrometers" in claim
1, the dependent claims may specify other aperture sizes but do not change or dispense with the requirement that the aperture size be larger than eight micrometers.
Accordingly, if the product before us is not found to infringe claim 1, claims 2, 3, and 5 are also not literally infringed. See National Recovery Technologies, Inc. v. Magnetic Separation Systems, Inc., 166 F.3d 1190, (Fed. Cir. 1999)(finding dependent claims invalid where the dependent claims "stand or fall" with an independent claim found to be invalid).
Claim 1 contains the following limitations and reads as follows:
1. An optical communication network comprising:
a vertical-cavity, surface-emitting semiconductor laser structure having an aperture larger than eight micrometers through which an optical signal may be emitted;
a power supply that provides a bias current to drive the laser into a multiple transverse mode of operation in which the laser is responsive to a signal carrying data to provide an optical signal modulated with the data and to emit the optical signal through an aperture; and
a multimode optical medium optically coupled to the laser to carry the optical signal from the laser to a remotely-located receiver.
The first step in making a utility patent infringement determination is that of interpreting the claims. As stated above "An accused device cannot infringe, as a matter of law, if even a single limitation is not satisfied." See Digital Biometrics 149 F.3d at 1349. Here, it is self evident that VCSELs having a 7.0 to 7.9 micrometer aperture cannot infinge upon the '447 claimed limitation of “an aperture larger than eight micrometers.” We find that the VCSEL's proposed for
importation by Emcore areHere, the key issue to be resolved is whether the greater than 8 micrometer limitation on size of the aperture is literally infringed by.
Emcore argues that it's vertical cavity surface emitting lasers are noninfringing because they contain an aperture size below 8 micrometers and therefore outside the scope of the LEO. It is CBP's position that VCSELs having a 7.0 to 7.9 micrometer aperture do not literally infringe the claims at issue in Inv. No. 337-TA-669 because of the “larger than 8 micrometer” claim limitation of the '447.
HOLDING:
Emcore's vertical cavity surface emitting lasers (VCSELs) with an aperture range from 7.0 to 7.9 micrometers do not literally infringe the claims at issue in the 337-TA-669 LEO. Accordingly, Emcore's vertical cavity surface emitting lasers with apertures from 7.0 to 7.9 micrometers are admissible into the United States and may make entry for consumption, entry for consumption from a foreign-trade zone, and withdrawal from a warehouse for consumption.
This decision is limited to the specific facts set forth herein. If the vertical cavity surface emitting lasers differ from the embodiment described above, or if future importations vary from the facts stipulated to herein, this decision shall not be binding on CBP as provided for in 19 C.F.R. §
177.2(b)(1), (2) and (4), and § 177.9(b)(1) and (2).
Sincerely,
Charles R. Steuart
Chief, Intellectual Property Rights Branch