OT:RR:BSTC:IPR H164838 WMW
Port Director
U.S. Customs and Border Protection
1000 Second Ave, Suite 2100
Seattle, WA 98104s
RE: Protest 3001-11-100146; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-691; Certain Inkjet Supplies and Components Thereof; General Exclusion Order in Investigation No. 337-TA-565; Certain Ink Cartridges and Components Thereof
Dear Port Director:
This is in response to the application for further review of the above-referenced protest filed by Nano Business & Technology, Inc. (“Protestant”) challenging the exclusion from entry for consumption of certain ink cartridges, ink jet supplies and inkjet cartridges determined by the port to fall within the scope of the above-referenced general exclusion orders issued by the U.S. International Trade Commission (“ITC” or “Commission”).
Investigation 337-TA-565
ITC Inv. No. 337-TA-565 (“565 GEO”) was instituted based on a complaint filed by Epson Portland, Inc. of Oregon; Epson America, Inc. of California; and Seiko Epson Copr. Of Japan (“Epson”), which named 24 companies located in China, Germany, Hong Kong, Korea, and the United States, as respondents to the investigation. See Protest, Exhibit 1 at 3 (dated April 4, 2008); see also Administrative Law Judge’s (“ALJ”) Final Initial and Recommended Determination (“ID”) at 1-7 (dated March 30, 2007).
The ALJ found a violation of section 337 of the Tariff Act of 1930, as amended, which was affirmed in part by the Commission on review. See Certain Ink Cartridges and Components Thereof, Inv. No. 337-TA-565, Commission Opinion (“ITC CO”) at 1 (dated November 7, 2007). The Commission decided to provide relief in the form of a general exclusion order that bars the entry for consumption into the United States of ink cartridges that infringe claim 7 of U.S. Patent No. 5,616,957; claims 18, 81, 93, 149, and 164 of U.S. Patent No. 5,622,439; claims 83 and 84 of U.S. Patent No. 5,158,377; claims 19 and 20 of U.S. Patent No. 5,221,148; claim 1 of U.S. Patent no. 5,488,401; claims 1, 2, 3, and 9 of U.S. Patent No. 6,502,917; claims 1, 31, and 34 of U.S. Patent no. 6,550,902; claims 1, 10, and 14 of U.S. Patent no. 6,955,422; claim 1 of U.S. Patent No. 7,008,053; or claim 21 of U.S. Patent No. 7,001,397. Id. at 1-2; 565 General Exclusion Order (dated October 19, 2007). Subsequent to the issuance of the 565 GEO, U.S. Customs and Border Protection (“CBP”) excluded from entry ink cartridges of Protestant, for which the ITC, on March 30, 2011, issued a seizure and forfeiture order against Protestant pursuant to 19 U.S.C. § 1337(i).
Investigation 337-TA-691
ITC Inv. No 337-TA-691 (“691 GEO”) was instituted based on a complaint filed by Hewlett-Packard of Palo Alto, California (“HP”), which named 11 companies located in China and the United States, as respondents to the investigation. See Protest, page 1 (dated September 23, 2009).
The ALJ found a violation of section 337 of the Tariff Act of 1930, as amended, which was affirmed in part by the Commission on review. See Certain Ink Cartridges and Components Thereof, Inv. No. 337-TA-691, Commission Opinion (“ITC CO”) at 1 (dated January 28, 2011). The Commission decided to provide relief in the form of a general exclusion order that bars the entry for consumption into the United States of ink cartridges that infringe claim 6 and 9 of U.S. Patent No. 6,089,687 and claims 1, 5, and 6 of U.S. Patent No. 6,264,301. Id. at 1; 691 General Exclusion Order (dated January 28, 2011). Subsequent to the issuance of the 691 GEO, CBP excluded from entry ink jet cartridges of Protestant, for which the ITC, on March 30, 2011, issued a seizure and forfeiture order against Protestant pursuant to 19 U.S.C. § 1337(i).
FACTS:
On March 14, 2011, CBP officials at the port of Seattle issued a notice to Protestant indicating that a shipment of ink cartridges and inkjet cartridges was excluded from entry for consumption because the articles in question were covered by the 565 GEO and 691 GEO. See CBP Exclusion Notice (listing the date of denial of entry as March 11, 2011).
On April 4, 2011, pursuant to 19 U.S.C. § 1514(c), as implemented by 19 C.F.R. Part 174, acting pro se, Protestant timely filed a protest challenging the exclusion and the determination that the excluded articles fell within the scope of the 565 GEO and 691 GEO. Specifically, Protestant argues that the excluded products are not violative because they are covered by patents owned by Protestant and therefore do not infringe the claims of the patents listed in the respective GEOs. See Protest, at 2. (April 4, 2011). This protest was given the reference number 3001-11-100146 by CBP.
On May 5, 2011, CBP personnel from the Seattle Area Port submitted a request for internal advice to the Intellectual Property Rights Branch regarding this protest filed on April 4, 2011.
On May 5, 2011, Allports Inc. (“Allports”), customs broker for Protestant and under 19 C.F.R. Part 174.3, acting as attorney in fact on its behalf, submitted a protest relating to the exclusion notice issued on March 14, 2011. This protest referred to the previous protest filed on April 4, 2011 for reasons for challenging the exclusion. See Protest, (May 5, 2011).
On May 10, 2011, CBP officials at the port of Portland issued a notice to Protestant indicating that a separate shipment of ink tanks was excluded from entry for consumption because the articles in question are covered by the 565 GEO and 691 GEO. See CBP Exclusion Notice (listing the date of denial on entry as May 9, 2011). Also on May 10, 2011, Protestant submitted a protest reiterating that the products excluded from entry at Portland practice patents owned by Protestant, and as such are not subject to the 565 GEO and 691 GEO.
On August 7, 2011, CBP officials at the port of Portland issued a notice to Protestant indicating that another shipment of ink tanks was excluded from entry for consumption because the articles in question are covered by the 691 GEO. See CBP Exclusion Notice (August 7, 2011).
Below are images of the Protestant’s products at issue:
HP – Compatible Cartridges
The Nano Business & Technology 02 Cartridge or NDH 02 Tank with an Auto-Reset-Chip (ARC).
NBbn
The Nano Business & Technology 02 Cartridge or NDH 02 Tank (top view).
The Nano Business & Technology Refillable HP 940 Cartridge or NDE Tank.
The Nano Business & Technology Refillable HP 940 Cartridge or NDE Tank (top view)
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NNN
The Nano Business & Technology Refillable HP 940 Cartridge or NDE Tank (bottom view)
Epson – Compatible Cartridges
The subject Protestant Epson compatible NBT ink cartridge models R280/IC50 and R320/IC32
The Protestant Epson compatible NBT ink cartridge
ISSUE:
The issue presented is whether the excluded ink cartridges and inkjet cartridges imported by Protestant infringe any of the relevant patents at issue and thereby fall within the scope of the ITC’s general exclusion order in Investigation No. 337-TA-691 or the ITC’s general exclusion order in Investigation No. 337-TA-565.
LAW AND ANALYSIS:
Patent infringement determinations for utility patents entail two steps. The first step is to interpret the meaning and scope of the patent claims asserted to be infringed. The second step is to compare the properly construed claims to the accused device. See Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). The first step is a question of law; the second step is a question of fact. See Freedman Seating Co. v. American Seating Company, 420 F.3d 1350, 1357 (Fed. Cir. 2005).
In patent law, there are two types of infringement: direct and indirect infringement. One variety of direct infringement is literal infringement.
Literal infringement is when every limitation recited in a claim is found in the accused device. See Strattec Security Corp. v. General Automotive Specialty Co., 126 F.3d 1411, 1418 (Fed. Cir. 1997); see also Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1349 (Fed. Circ. 1998) (“An accused device cannot infringe, as a matter of law, if even a single limitation is not satisfied.”). However, a dependent claim cannot be found to infringe if the independent claim from which it depends is not found to infringe. See Becton Dickinson & Co. v. C.R. Bard Inc., 922 F.2d 792 (Fed. Cir. 1990) (“The holding of noninfringement of claim 1 applies as well to all claims dependent on claim 1.”).
As for the scope of protection provided, it is a “bedrock principle” of patent law that “the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“[W]e look to the words of the claims themselves…to define the scope of the patented invention.”).
Furthermore, CAFC has made clear that claim terms are given their ordinary and customary meaning, which refers specifically to the ordinary and customary meaning that the claim term would have to a person of ordinary skill in the art at the time of the invention. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). The inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation. See Innova, 381 F.3d at 1116. That starting point is based on the well-settled understanding that inventors are typically persons skilled in the field of the invention and that patents are addressed to and intended to be read by others of skill in the pertinent art. See Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1119 (Fed. Cir. 2002).
The person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification. See Phillips, 415 F.3d at 1313. Often, this requires an examination of terms that have a particular meaning in a field of art. Id. Since the meaning of a claim term, as understood by persons of skill in the art, is often not immediately apparent, and since patentees frequently act as their own lexicographers, a court or administrative body responsible for making patent infringement determinations should look to sources available to the public that show what a person of skill in the art would have understood a disputed claim term to mean. Id. These sources include, for example, the words of the claims themselves, the remainder of the specification and the prosecution history, along with certain extrinsic evidence in appropriate circumstances. Id.
Importantly, as stated by the CAFC in Vitronics and reaffirmed in Phillips, claims must be read in light of the specification, of which they are a part, since the specification “is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315 (citing Vitronics, 90 F.3d at 1582); see also Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985) (“The specification is, thus, the primary basis for construing the claims.”).
While continuing to be mindful of this fine line between interpretation and importation, Phillips explains that:
[T]he line between construing terms and importing limitations can be discerned with reasonable certainty and predictability if the court’s focus remains on understanding how a person of ordinary skill in the art would understand the claim terms. For instance, although the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.…In particular, we have expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment….That is not just because section 112 of the Patent Act requires that the claims themselves set forth the limits of the patent grant, but also because persons of ordinary skill in the art rarely would confine their definitions of terms to the exact representations depicted in the embodiments.
Phillips, 415 F.3d at 1323 (internal citations omitted). Accordingly, the framework above is provided for interpreting patent claims and reading those claims, as properly construed, onto an accused device.
Pursuant to the Tariff Act of 1930, the ITC has authority to conduct investigations into imported articles that allegedly infringe United States patents and impose remedies if the accused products are found to be infringing. See 19 U.S.C. § 1337(a)(1)(B), (b)(1), (d), (f). Specifically, 19 U.S.C. § 1337(d) provides the Commission authority to direct the exclusion from entry of articles found to be infringing. Moreover, when the Commission determines that there has been a violation of section 337, it may issue two types of exclusion orders: a limited exclusion order and/or a general exclusion order. See Fuji Photo Film Co., Ltd. v. U.S. Int’l Trade Comm’n, 474 F.3d 1281, 1286 (Fed. Cir. 2007); see also Certain Ink Cartridges and Components Thereof, Inv. No. 337-TA-565, Commission Opinion (October 19, 2007).
Both types of orders direct CBP to bar the infringing products from entering the country. See Yingbin-Nature (Guangdong) Wood Indus. Co. v. U.S. Int’l Trade Comm’n, 535 F.3d 1322, 1330 (Fed Cir. 2008). A limited exclusion order is “limited” in that it only applies to the specific parties before the Commission in the investigation. Id. In contrast, a general exclusion order bars importation of the infringing products by everyone, regardless of whether they were respondents in the Commission’s investigation. Id. A general exclusion order is appropriate if two exceptional circumstances apply. See Kyocera Wireless Corp. v. U.S. Int’l Trade Comm’n, 545 F.3d 1340, 1356. A general exclusion order may only be issued if (1) “necessary to prevent circumvention of a limited exclusion order,” or (2) “there is a pattern of violation of this section and it is difficult to identify the source of infringing products.” 19 U.S.C. § 1337(d)(2); see also Kyocera, 545 F.3d at 1356 (“If a complainant wishes to obtain an exclusion order operative against articles of non-respondents, it must seek a GEO by satisfying the heightened burdens of §§ 1337(d)(2)(A) and (B).”). Additionally, a seizure and forfeiture order issued under 19 U.S.C. § 1337(i) directs CBP to seize and forfeit articles imported in violation of an exclusion order when the importer previously had articles denied entry and received notice that seizure and forfeiture would result from any future attempt to import covered articles.
The issuance of a general exclusion order by the ITC binds named parties and non-named parties alike and shifts to would-be importers, “as a condition of entry, the burden of establishing noninfringement.” Hyundai Electronics Industries Co. v. U.S. Int’l Trade Comm’n, 899 F.2d 1204, 1210 (Fed. Cir. 1990). Accordingly, the burden is on Protestant to establish that the devices at issue are not covered by one or more of the claims from the patents listed in the 565 GEO and the 691 GEO.
ITC Inv. No. 337-TA-691
Claims 6 and 9 of the ‘687 Patent
The ‘687 patent, owned by HP, is entitled “Method and Apparatus for Specifying Ink Volume in an Ink Container” and includes several drawings, Figures 2A & 2B of which depict a removable ink container (18), a ink reservoir (28) for storing ink therein, an electrical storage device (38) and a plurality of electrical contacts (40) which are connected to the electrical storage device. The figure is provided below along with its corresponding figure designations.
FIGS. 2A and 2B (sectional) depict a schematic representation of the Hewlett Packard inkjet printing system described in the ‘687 patent, illustrating a removable ink container and printhead each of which contain an electrical storage device.
Independent claims 6 and 9 of the ‘687 patent were the only claims of the ‘687 patent included in the ‘691 GEO. Claim 6 contains a preamble and four limitations; it is directed toward an ink container comprising an electrical storage device. Claim 9 contains a preamble and three limitations; it is directed toward an electrical storage device for use with an ink container. These claims read as follows:
6). An ink container for providing ink to an ink-jet printer, the ink container comprising:
a reservoir containing a supply of ink; and
an electrical storage device for providing ink container parameters to the inkjet printer, the electrical storage device containing:
an ink scale parameter for selecting an ink volume range from a plurality of ink volume ranges; and
a fill proportion parameter for specifying a fill proportion for the selected ink volume range associated with the supply of ink in the reservoir;
wherein an ink volume associated with the supply of ink within the reservoir is determined based on the fill proportion parameter and the ink scale parameter.
9). An electrical storage device for use with an ink container for providing information to an ink-jet printer related to an ink volume associated with the ink container, the electrical storage device comprising:
an ink scale parameter for selecting an ink volume range from a plurality of ink volume ranges; and
a fill proportion parameter for specifying a fill proportion for the selected ink volume range;
wherein the ink volume associated with the ink container is determined based on the fill proportion parameter and the ink scale parameter.
PROTESTANT’S ARGUMENT
The ink tank models excluded in relation to the 691 GEO are the “02” model and “NDE” model. Protestant argues that its “inkjet cartridges” are not covered by the patent claims under the 691 GEO and were improperly excluded from entry. The reason asserted by the Protestant is that the “[genuine HP products] are for one-time use only and have to be replaced or discarded.” Specifically, Protestant contends that unlike original HP cartridges, its inkjet cartridges are both reusable and refillable and that its products feature resettable or automatically refreshing chips. However, the ‘687 patent contains no claim limitations related to either multiple or single use.
Protestant further states, of its inkjet cartridges, that “the major feature is [that] ink level monitor[ing] of the ink cartridge can be automatically refreshed by a chip resetter; so that the cartridge can be refilled and reused.” Protestant asserts that the technology used in its HP compatible inkjet cartridges stems from its patent, U.S. Patent 7,192,109. Protestant thus concludes that the technology used in its products do not infringe the claims of the ‘687 patent (or the ‘301 patent).
As an initial matter, a patentable improvement to a previously patented invention does not authorize the holder of the patented improvement to practice the original patented technology. See Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 43, 74 L. Ed. 147, 50 S. Ct. 9 (1929) (“Nor is the infringement avoided, under the controlling weight of the undisputed facts, by any presumptive validity that may attach to the [subsequently granted] patent by reason of its issuance after the [previously granted] patent.”); see also Hoechst Celanese Corp. v. BP Chemicals, Ltd., 78 F.3d 1575, 1582 (Fed. Cir. 1996)(“The fact of separable patentability presents no legal or evidentiary presumption of noninfringement.”); General Electric v. U.S. Int’l Trace Comm’n, 685 F.3d 1034, 1037 (Fed. Cir. 2012)(“A separately patented invention may indeed be within the scope of the claims of a dominating patent.”). Thus, assuming even that Protestant practices its later issued patent related to the field of art to which the claims listed in the ‘691 GEO pertain does not avoid a finding of infringement. Although Protestant does not address the claim limitations of the ‘687 as applied to its products and only defends on the grounds of its own patent, contrary to Supreme Court and Federal Circuit precedent identified above, the analysis below turns to the second step whether the claim limitations are satisfied.
02 model ink tanks
Protestant does not contest that its 02 model is an ink container for providing ink to an ink-jet printer, the ink container comprising: a cartridge bulk structure to hold larger content of ink; and an electrical storage device (ESD) in the form of an auto–reset or resettable chip which monitors the ink level within the ink cartridge and which will automatically refresh the ink level as read by the ESD when the ink reservoir is refilled, or can be manually reset to indicate a higher ink volume within the ink reservoir after refill of the ink reservoir. See May 10, 2013 Protest, at 12.
Protestant has identified its ESD as a one of two types of chips (Id. at 7); an Auto-Reset–Chip (ARC) which will automatically reset ink volume associated with the ink cartridge through a preset logical circuit operated by a CPU in the chip, or a Manually-Resettable-Chip (MRS) which must be reset by the user using a chip resetter.
Protestants ink cartridge is designed to replace an OEM product which contains a volume dependent function which will “lock” the functionality of the ink cartridge when the ESD determines the ink volume of the ink reservoir is empty based upon ink scale and ink proportion parameters. The ESD in Protestant’s ink container allows the reuse of an ink container with an ink-jet printer by providing the ability to re-set the ink volume as determined by the ESD and transmitted to an attached ink jet printer. To do this the ESD must determine the volume of ink within the ink reservoir; i.e. full – low/empty based upon a parameter associated with ink volume in order to monitor the ink level for reset. It is this determination of ink volume within the ink reservoir by the ESD that read upon the four limitations of claim 6 of the ‘687 patent. Additionally, it is this same function of the ESD pertaining to determination of the ink volume within the ink container that read upon the three limitations of claim 9 of the ‘687 patent.
As the image below attests, the subject 02 model is an ink container (18) and electrical storage device (38)
The 02 Cartridge (bottom view)
Protestant’s ESD chip monitors and controls the amount and flow of ink in the ink cartridge reservoir and the reset of ink container volume readings. Protestant’s automatically-refresh-chip is said to “provide functionality to monitor ink amount within the original ink cartridge, set ink amount [to the] return point of the ink cartridge and restore ink amount value after the ink cartridge has reached the return point.” This function conforms to certain claimed limitations of the “electrical storage device” in claims 6 and 9 of the ’687 patent.
The subject ESD chips are responsive to printing system and ink volume control signals and are used with an ink reservoir or ink storage container. Each chip monitors and transfers ink volume level information associated with ink storage containers to the ink jet printer.
The instruction manual for Protestant’s 02 Cartridge states that “[t]he auto refresh chip (ARC) will automatically refresh the ink level.” Determining the ink level or ink volume associated with the supply of ink within the reservoir based upon fill proportion parameters and the ink scale parameters read upon the claimed limitations found within claims 6 and 9 of the ‘691 patent. Accordingly, the determination here is that Protestant’s 02 Cartridges practice the claims of the ‘691 patent and were properly excluded from entry pursuant to the 691 GEO.
NDE model Refillable HP 940 Cartridges
When presented for entry, Protestant’s NDE model Refillable HP 940 compatible (ink containing) cartridge did not contain an electrical storage device (ESD). Protestant’s compatible HP 940 Cartridge is actually the ink reservoir (28) portion of an “ink container” (18), which does not include an attached ESD for providing information to an inkjet printer related to the ink volume associated within the ink container. Protestant’s submission and marketing brochure emphasizes the absence of such an ESD and the accompanying NDE tank user guide included with the imported cartridges states the following:
Our cartridges do not come with the HP 940 compatible chips due to the chip availability currently. You have to use the OEM chips by removing the chips from original cartridges and reattaching them to our cartridges.
Patented Refillable HP 940 Cartridge User Guide, [Instructions] 1 and 2 (a), (b); FIG. 1 and FIG.2.
Protestant’s User Guide provides detailed instructions for the installation of an “original” OEM chip (i.e., a genuine HP ESD) into a “Refillable HP 940 Cartridge.” As the image below reveals, Protestant’s NDE model Refillable HP 940 Cartridge lacked the requisite ESD at the time of entry to satisfy all the claim limitations at issue. If, however, an ESD were installed on Protestants NDE model Refillable HP 940 Cartridge (ink container), such a container would meet all limitations of claim 6 of the ‘691 patent.
Notwithstanding the above, the 691 GEO reads in pertinent part: “Inkjet supplies and components thereof covered by one or more of claims 6 and 9 of the ‘687 patent …are excluded from entry into the United States.” Despite the absence of an electrical storage device (ESD), Refillable HP 940 cartridge constitutes a component part thereof and is excludable under the 691 GEO. In the instant case, the excluded NDE model Refillable HP 940 cartridge is not only an integral part for performing the claimed functionality, but Protestant’s User Guide, directs the end-user to attach an OEM chip, such that one is able to practice the patented invention. Upon completion, the device satisfies all the relevant claim limitations and therefore is subject to the exclusion order as a component.
Additionally, for purposes of tariff classification regarding all merchandised imported into the United States, the courts have considered the nature and definition of “parts” under the Harmonized Tariff Schedule of the United States, (HTSUS). Two distinct though not inconsistent tests have resulted. See Bauerhin Technologies Limited Partnership, & John V. Carr & Son, Inc. v. United States, 110 F.3d 774, 779 (Fed. Cir. 1997). The first, articulated in United States v. Willoughby Camera Stores, 21 C.C.P.A. 322 (1933) requires a determination of whether the imported item is “an integral, constituent, or component part, without which the article to which it is to be joined, could not function as such article.” Bauerhin, 110 F.3d at 778 (quoting Willoughby Camera, 21 C.C.P.A., at 324). The second, set forth in United States v. Pompeo, 43 C.C.P.A. 9 (1955), states that an imported item “dedicated solely for use” with another article is a part of that article provided that, “when applied to that use,” the article will not function without it. Pompeo, 43 C.C.P.A., at 14. Accordingly, the determination here is that the subject NDE model Refillable HP 940 Cartridge (or NDE Tank) is indeed a part for entry and tariff classification purposes under both the Pompeo and Bauerhin tests and a component for purposes of the 691 GEO.
While the NDE model ink jet cartridges which do not contain a memory and control chip at the time of entry do not practice all of the claim limitations of the ‘687 patent at the heart of General Exclusion Order 337-TA-691, they do constitute an essential part of a device which does practice the above mentioned claims and properly excluded from entry.
In light of the above, this determination does not address Protestant’s remaining non-infringement arguments. The other arguments are not separate claims, but instead represent additional grounds for determining whether the Nano Business & Technology product should be refused entry and therefore need not be addressed here. See Solomon Technologies, Inc. v. U.S. Int’l Trade Comm’n, 524 F.3d 1310, 1320 (Fed. Cir. 2008) (Where the court stated, “[i]f we uphold the Commission’s order, as we do in this case, we are not required to address every possible ground on which the Commission’s order might be sustained.”).
ITC Inv. No. 337-TA-565
Claim 1 of U.S. patent No. 6,502,917
United States Patent No. 6,502,917 (“the ‘917 patent”), which issued on January 7, 2003, was before the Commission in Inv. No. 337-TA-565. See ALJ ID at 77. The abstract of the ‘917 patent reads:
An ink jet type printing apparatus in which an ink supply needle is located near one side in a direction perpendicular to the reciprocated directions of a carriage, a circuit board is mounted on a wall of an ink cartridge in the vicinity of the side on which an ink supply port is formed and plural contacts for connecting to external control means are formed on the exposed surface of the circuit board.
The ALJ found that it was undisputed that the ‘917 patent is directed to an ink cartridge having a semiconductor device for storing information for use in an inkjet printer and that the invention is more specifically described by the patent in the following manner:
The present invention is made in view of such a problem and an object of which is to provide an ink-jet printing apparatus wherein data stored in semiconductor storage means can be prevented from being lost independent of unsuitable operation for attaching or detaching an ink cartridge. See ALJ ID at 78; ‘917 patent, col.2 ll.6-11.
The ‘917 patent has 38 claims. Only claims 1, 2, 3, and 9 (the first and last of which are independent claims), were included in the 565 GEO. Claim 1 contains a preamble and four limitations, which read as follows:
1. An ink cartridge for mounting on a carriage of an inkjet printing apparatus and for supplying ink to a printhead of said ink jet printing apparatus through an ink supply needle, the ink cartridge comprising:
a plurality of external walls, including a first wall and a second wall, defining at least some of a chamber;
an ink supply port for receiving said ink supply needle, the ink supply port having a centerline and communicating with the chamber,
a semiconductor storage device storing information about the ink carried by said cartridge; and
a plurality of contacts for connecting the semiconductor storage device to the ink jet printing apparatus, the contacts being formed in a plurality of rows lying essentially in a plane parallel to the centerline of the ink supply port, each said row being centered relative to the centerline of said ink supply port.
PROTESTANT’S ARGUMENT
The ink tank models R280/IC50 and R320/IC32 excluded in relation to the 565 GEO are the “Epson Compatible” ink-jet cartridge. In the instant case, Protestant argues that its Epson compatible ink-jet cartridges are outside the scope of the 565 GEO because of the product’s “easily resettable and refillable features.” Specifically, Protestant asserts that its products do not contain a sponge in the ink storage area and “can be easily refilled from the refilling hole.” Again, Protestant cites to one of its patents, U.S. Patent No. 7,328,986, which provides for spongeless (storage) cartridges that utilize a siphoning technology. Secondly, Protestant contends that its products differ in that they do not feature permanently attached semiconductor storage device (memory chip) but instead consist of a “detachable chip set piece.” In support of this contention, Protestant cites yet another of its patents, U.S. Patent No. 7,192,109, which provides in pertinent part for, resettable and automatically refreshable onboard electrical ink-jet chips. Protestant reasons that their memory chips are not “disposable” as are the Epson memory chips and as such do not come within the purview of the 565 GEO.
As with the analysis of the 691 GEO, Protestant’s patents are not relevant to the analysis. Moreover, the technological functions of Protestant’s products are within the scope of the 565 GEO. The plain language of claim 1 of the ‘917 patent calls for “a semiconductor storage device storing information about the ink carried by the cartridge.” By Protestant’s own admission, its products consist of a semiconductor storage device (memory chip) which stores information about the ink being carried by the cartridge. Secondly, claim 1 of the ‘917 patent describes “a plurality of contacts for connecting the semiconductor storage device to the ink jet printing apparatus.” According to their submission, the Protestant’s memory chip functions in a manner identical to that of claim 1 of the ‘917 patent, and features a plurality of contacts for connecting the semiconductor storage device (memory chip) to the ink jet printing apparatus. Finally, claim 1 of the ‘917 patent provides for “a plurality of rows lying essentially in a plane parallel to the centerline of the supply port, each said row being centered relative to the centerline of said ink supply port.” A visual examination of the subject merchandise reveals that the electrical contacts of the NBT cartridge are formed in a plurality of rows which sit parallel to the centerline of the ink supply port, making these articles virtually identical in design and utility to the technology protected by the 565 GEO.
Again, this determination does not address Protestant’s remaining non-infringement arguments. Protestant’s other arguments are not separate claims, but instead represent additional grounds for determining whether the NBT products should be refused entry and therefore need not be addressed here. See Solomon Technologies, Inc. v. U.S. Int’l Trade Comm’n, 524 F.3d 1310, 1320 (Fed. Cir. 2008) (“If we uphold the Commission’s order, as we do in this case, we are not required to address every possible ground on which the Commission’s order might be sustained.”); see also 565 General Exclusion Order (Where the court held that, “[i]nk cartridges covered by one or more of [the asserted claims of the relevant patents] are excluded from entry...”) (emphasis added).
HOLDING:
Protestant’s ink tank model lines 02 and NDE were properly considered to fall within the scope of the 691 GEO issued by the ITC. Protestant’s Epson compatible ink tank model lines were properly considered to fall with the scope of the 565 GEO issued by the ITC. Therefore, the protest challenging exclusion from entry is DENIED.
In accordance with the Protest/Petition Processing Handbook (CIS HB, December 2007), you are to mail this decision, together with the Customs Form 19, to the Protestant no later than 60 days from the date of this letter. Any reliquidation of the entry in accordance with the decision must be accomplished prior to mailing of the decision. Sixty days from the date of the decision, Regulations and Rulings of the Office of International Trade will make the decision available to CBP personnel, and to the public on the CBP Home Page on the World Wide Web at www.cbp.gov, by means of the Freedom of Information Act, and other methods of public distribution.
Sincerely,
Charles R. Steuart
Chief, Intellectual Property Branch