OT:RR:BSTC:IPR H200715 WMW
Mr. David Lieberworth
Garvey Schubert Barer, PPC
Second & Seneca Building 1191 Second Avenue 18th Floor Seattle, WA 98101-2939
RE: Ruling Request; U.S. International Trade Commission; Limited Exclusion Order; Investigation No. 337-TA-644; Certain Composite Wear Components and Products Containing Same
Dear Mr. Lieberworth:
This is in reply to your letter, dated January 11, 2012, on behalf of AIA Engineering, Ltd., and Vega Industries, Ltd., (collectively, “AIA”), in which you requested a ruling, pursuant to 19 C.F.R. Part 177, as to whether certain of AIA’s newly developed products are subject to the limited exclusion order (“LEO”) issued by the U.S. International Trade Commission (“ITC” or “Commission”) in Investigation No. 337-TA-644. Two samples, one consisting of AIA’s ceramic composite material and a second consisting of the ceramic composite material with liquid metal impregnation, were submitted with the ruling request. The information contained in brackets below will be redacted from the public version of this ruling.
FACTS:
The ITC instituted this investigation on April 25, 2008, based on a complaint filed by Magotteaux International S/A and Magotteaux Inc. (“Magotteaux”). 73 Fed. Reg. 22431 (Apr. 25, 2008). The complaint, as supplemented, alleged violations of section 337 of the Tariff Act of 1930 (19 U.S.C. § 1337) in the importation into the United States, the sale for importation, or the sale within the United States after importation of certain composite wear components and welding products containing the same that infringe certain claims of United States Patent No. RE 39,998 (‘998). The complaint named Fonderie Acciaiere Rioale S.P.A. (“FAR”) and AIA as respondents. After assignment to an Administrative Law Judge (“ALJ”), FAR was subsequently terminated from the investigation on the basis of a settlement agreement, leaving AIA as the remaining respondent.
On March 23, 2009, AIA informed the ALJ that on March 16, 2009, AIA had filed a declaratory judgment action against Magotteaux in the U.S. District Court for the Middle District of Tennessee, challenging the validity of the ‘998 patent and that AIA would not participate any further in the ITC investigation, opting instead to seek redress in the forum of the district court.
On March 27, 2009, the Investigative Attorney (“IA”) from the Office of Unfair Import Investigations at the ITC filed a motion for an order finding AIA in default. On April 8, 2009, AIA filed a response arguing that it should only be found in default pursuant to 19 C.F.R Part 210.16 for “failure to make or cooperate in discovery” and that it opposed a finding of default under 19 C.F.R. Part 210.17 based on adverse inferences. On May 8, 2009, the ALJ issued an Initial Determination (“ID”) finding AIA in default pursuant to 19 C.F.R. Part 210.16(a)(2) and 210.17. AIA filed a petition for review of the ID, which was opposed by the Magotteaux and the IA.
On July 7, 2009, the ITC determined not to review the ID and indicated that, in addition to the ALJ’s finding of violation pursuant to 19 C.F.R. Part 210.17, the Commission presumed the facts alleged in the complaint to be true with respect to the AIA. Due to the procedural posture of the investigation, the ALJ did not issue a recommendation on remedy and bonding. The ITC then solicited briefs on remedy, the public interest, and bonding.
On November 24, 2009, the ITC, having affirmed the ALJ’s ID and found a violation of 19 U.S.C. § 1337, issued a LEO prohibiting the unlicensed entry for consumption of composite wear components and products containing the same that are covered by one or more of claims 12-13 and 16-21 of the ‘998 patent and that are manufactured abroad by or on behalf of, or are imported by or on behalf of, AIA or any of their affiliated companies, parents, subsidiaries, or other related business entities, or their successors or assigns. 74 Fed. Reg. 62814 (Dec. 1, 2009).
However, on September 3, 2010, the ‘998 patent was declared invalid by the United States District Court for the Middle District of Tennessee in the declaratory judgment action filed by AIA against Magotteaux. On September 28, 2010, Magotteaux filed a notice of appeal of the district court’s decision to the United States Court of Appeals for the Federal Circuit (“CAFC”). On October 5, 2010, AIA filed a petition under section 337(k), as amended, 19 U.S.C. § 1337(k), and 19 C.F.R. Part 210.76, asking the ITC to rescind its November 24, 2009, exclusion order in light of the district court’s invalidation of the ‘998 patent. On January 25, 2011, the ITC determined to temporarily rescind its LEO against AIA pending resolution on appeal of the decision to the CAFC. The ITC’s notice stated that the LEO would become permanently rescinded if the CAFC affirmed the district court’s judgment with respect to claims 12-13 and 16-21 of the ‘998 patent, but would be reinstated if the CAFC reversed the district court’s judgment with respect to those claims.
On August 31, the CAFC reversed the district court’s decision that claims 12-13 and 16-21 of the ‘998 patent are invalid and remanded the case to the district court for further proceedings. On the same day, Magotteaux submitted a letter to the Commission requesting that the LEO be reinstated. As provided for in the Commission’s notice, the LEO entered on November 24, 2009, against AIA was automatically reinstated upon issuance of the CAFC’s mandate certifying its judgment reversing the district court’s decision that claims 12-13 and 16-21 of the ‘998 patent are invalid. On October 11, 2011, the CAFC issued its mandate certifying its judgment in this case and the LEO issued in ITC Investigation No. 337-TA-644 was reinstated.
The AIA “wear components” accused at the ITC and resulting in the exclusion order based on AIA’s default were from AIA’s “Sintercast” line of products. However, in connection with this ruling request, AIA has submitted a sample of a new composite wear component product identified as “CeraMet-V.” AIA alleges that the CeraMet-V product is produced from a new ceramic formulation that is different from that used in the Sintercast products and, moreover, that this new formulation does not infringe the ‘998 patent. AIA, along with its ruling request, submitted a testing protocol and composition report for the CeraMet-V product line. Upon receipt of the ruling request, CBP requested additional information regarding the quantitative calculations of Zr versus ZrO2 content. On February 12, 2012, AIA submitted the requested calculations from the report developed by the [], provided with the ruling request.
CeraMet-V product
As indicated above, AIA provided CBP with physical samples and a compositional analysis of the new CeraMet-V formulation. This analysis was provided by the [] . The focus of the analysis was the alleged compositional amounts of Al2O3 and ZrO2 in the CeraMet-V formulation. The EAG report utilized energy dispersive x-ray analysis to estimate the percent by weight of Zr content of the portion of the CeraMet-V product reflecting:
the “ceramic pad” (ceramic only)
the “metal matrix” (metal only), and
the “ceramic pad being integrated into the metal matrix by impregnation of a liquid metal in the porous ceramic pad” (metal & ceramic)
as described by claim 12, of the ‘998 patent.
The data submitted by the EAG shows that, while the quantity of Al2O3 is within the range mentioned in claim 12 of the ‘998 patent, as shown in the tables below, the quantity of ZrO2 is less than [0.5]%, falling well outside the claimed 80 to 20% quantitative range of ZrO2 required by claim 12 of the ‘998. Furthermore, the quantitative limitations of ZrO2 and Al2O3 in AIA’s CeraMet-V composition submission of a “ceramic pad” and “ceramic pad being integrated into the metal matrix” have been independently tested by CBP’s laboratory, which reported similar findings.
[]
Photographs of the AIA Sintercast and CeraMet-V composite wear components are displayed below.
ISSUE:
The issue presented is whether AIA’s CeraMet-V ceramic composite material, manufactured with the new compositional formulation, is covered by U.S. Patent RE 39,998 and therefore falls within the scope of the ITC’s limited exclusion order in Investigation No. 337-TA-644, such that the product would be excluded from entry for consumption into the United States.
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. 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. 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 infringed if the independent claim from which it depends is not found to be infringed. 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, the 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.”). Accordingly, the CAFC has provided the framework above for interpreting patent claims and reading those claims, as properly construed in light of the relevant evidence, 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.
As a general matter, the ITC directs its exclusion orders to articles “covered by” the infringed claims of the relevant patents. See Certain Hardware Logic Emulation Systems and Components Thereof, Inv. No. 337-TA-383, Commission Opinion at 16 (Publication 3089, dated March 1998) (“[T]he Commission’s long-standing practice is to direct its remedial orders to all products covered by the patent claims as to which a violation has been found, rather than limiting its orders to only those specific models selected for the infringement analysis.”). Moreover, CBP is bound by the ITC’s findings as they relate to section 337 and shall refuse entry as directed. See 19 U.S.C. § 1337(d).
Significantly, the CAFC 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). The CAFC also confirmed that such a rational applies with “increased force” to parties named in an investigation that resulted in the issuance of an exclusion order. Id. Accordingly, the burden is on AIA to establish that the devices at issue are not covered by one or more of claims 12-13 and 16-21 of the ‘998 patent.
Claims 12-13 and 16-21 of U.S. Patent No. Re. 39,998
As noted by the CAFC, the patented technology in question involves composite wear products used for crushing and grinding abrasive materials in industrial settings. AIA Engineering Ltd. v. Magotteaux Int’l S/A, 657 F.3d 1264, 1268 (Fed. Cir. 2011). Specifically, the ‘998 patent is directed to a wear component that contains ceramic materials with a mixture of aluminum oxide (alumina or Al2O3) and zirconium oxide (zirconia or ZrO2). Id. The claims identified in the LEO are shown below.
Claim 12. Composite wear component produced by classical or centrifugal casting, said composite wear component comprising a metal matrix having a working face or faces including inserts which have wear resistance, the inserts include a porous ceramic pad, wherein the porous ceramic pad comprises a homogeneous ceramic composite 20 to 80% of Al2O3 and 80 to 20% of ZrO2, the percentages being expressed by weights of the constituents, and the porous ceramic pad being integrated into the metal matrix by impregnation of a liquid metal in the porous ceramic pad during the casting.
Claim 13. Composite wear component according to claim 12, wherein the ceramic material includes from 55 to 60% by weight of Al2O3 and from 38 to 42% by weight of ZrO2.
Claim 16. Composite wear component according to claim 12, wherein the inserts include an aggregate of composite ceramic grains which have a particle size within the range F6 to F22 according to the FEPA standard.
Claim 17. Composite wear component according to claim 16, wherein the ceramic grains are manufactured by one of electrofusion, sintering and flame spraying.
Claim 18. Composite wear component according to claim 16, wherein the ceramic grains are joined integrally with the aid of an inorganic or organic liquid adhesive prior to the casting with the liquid metal.
Claim 19. Composite wear component according to claim 18, wherein the pad does not contain more than 4% of adhesive.
Claim 20. Composite wear component produced by classical or centrifugal casting according to claim 12 and made up of a metal matrix including a wear-resistant ceramic pad, wherein the ceramic pad is in the form of a honeycomb structure in which the various cells are of polygonal or circular shape within the ceramic phase.
Claim 21. Composite wear component according to claim 20, wherein a thickness of walls of the various cells constituting the ceramic phase varies from 5 to 25 mm.
The importance of the Al2O3/ZrO2 interaction is highlighted in the specification. The invention is based on the finding that aluminum oxide and zirconium oxide have relatively different properties that make it possible, by a judicious choice within the claimed ranges, to adjust the hardness, the toughness and the thermal expansion coefficient of the ceramic composite so as to combine a good hardness and a good toughness, making it compatible with the precise application for which the component is intended, on the one hand, and to obtain, on the other hand, an expansion coefficient of the composite ceramic which is close to that of the casting metal chosen, that is to say of the pig iron or of the steel which has an expansion coefficient of between 10×10-6 and 11×10-6. See U.S. Patent RE 39,998, Col 3, 38-61.
Zirconium oxide has the advantage of having an expansion coefficient which is close to that of the metal. In addition, it contributes to good toughness, that is to say that it reduces the risks of breakage. Aluminum oxide, for its part, contributes to good hardness. Within the pads the zirconium particles present in the alumina make it possible to increase the resistance of the latter to cracking and thus to obtain a toughness greater than that of each of the components considered in isolation, namely ZrO2 or Al2O3. Id.
AIA specifically alleges that their new CeraMet-V formulation does not satisfy the composition limitation of “20 to 80% of Al2O3 and 80 to 20% of ZrO2, the percentages being expressed by weights of the constituents,” as construed in claim 12 of the ‘998 patent and that was satisfied by their Sintercast products.
The, CeraMet-V formulation contains ZrO2 in a quantitative amount far outside the range required by claim 12 of the ‘998 patent and found in the Sintercast product line. The basis of the invention, as described by the specification, is the interaction between ZrO2 and Al2O3 within the 20 to 80% of Al2O3 and 80 to 20% of ZrO2 range. Thus, the determination here is that CeraMet-V composition does not satisfy this claim limitation and therefore does not infringe the ‘998 patent.
HOLDING:
The CeraMet-V product at issue does not practice the ‘998 patent. Therefore, the composite material is not subject to the ITC’s LEO from Investigation. No. 337-TA-644. Accordingly, composite wear component and product identified as “CeraMet-V and containing the composition described in this ruling may be entered for consumption into the United States.
This decision is limited to the specific facts set forth herein. If the CeraMet-V formulation differs from the embodiment described above, or if future importations vary from the facts stipulated to herein, this decision shall not be binding on CBP as provided for in 19 C.F.R. Part 177.2(b)(1), (2), and (4), and Part 177.9(b)(1) and (2).
Sincerely,
Charles R. Steuart, Chief
Intellectual Property Rights Branch