OT:RR:BSTC:IPR H239637 WMW
Mr. Richard Belanger
Sidley Austin LLP
1501 K Street, N.W.
Washington, D.C. 20005
RE: Ruling Request; U.S. International Trade Commission; Limited Exclusion Order; Investigation No. 337-TA-549; In the Matter of Certain Ink Sticks for Solid Ink Printers
Dear Mr. Belanger:
This is in response to your letter, dated October 9, 2012, as supplemented, on behalf of HANA Corporation (“HANA”) and Imaging Technologies, requesting a ruling, pursuant to 19 C.F.R. Part 177, as to whether certain ink sticks that HANA manufactures and sells for eventual importation into the United States are subject to the limited exclusion order issued by the U.S. International Trade Commission (ITC) as a result of Inv. No. 337-TA-549 (“549 LEO”).
FACTS:
HANA is a Korean corporation that manufactures chemical products, including printer supplies such as compatible toner cartridges and solid ink. See Complaint, Certain Ink Sticks for Solid Ink Printers (August 2, 2005) at 3, ¶ 3.1. HANA’s principal place of business is located at 8F Doojin B/D, 158 Samsung-Dong Kangnam-Ku, Seoul, Korea. Id. According to HANA, Imaging Technologies, while not an affiliated company, parent, subsidiary, or otherwise related business entity, is an exporter of the HANA manufactured ink sticks at issue here. See Ruling Request at 1.
The above-referenced ITC investigation was instituted based on a complaint filed by Xerox Corporation (“Xerox”). 70 Fed. Reg. 53027 (September 6, 2005). The complaint, as supplemented, alleged violations of section 337 of the Tariff Act of 1930, as amended, 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 ink sticks for solid ink printers by reason of infringement of various claims of U.S. Patent No. 6,739,713 (“the `713 patent”), U.S. Patent No. 6,840,613 (“the `613 patent”), and U.S. Patent No. 6,840,612 (“the `612 patent”). The complaint named only two respondents: HANA and InkSticks.com, Inc., who was believed to sell within the United States the accused ink sticks HANA manufactured. The specific HANA ink sticks accused at the ITC were compatible for use with Xerox’s Phaser 8200 and 8400 solid ink color printers. See Complaint at 4, ¶ 4.1.
On December 20, 2005, the presiding administrative law judge (ALJ) issued an initial determination (“ID”) granting Xerox’s motion for an order directing HANA to show cause why it should not be found in default for failing to respond to the investigation and, due to HANA’s failure to show cause, an ID finding HANA in default. See Order No. 6. On February 10, 2006, the ITC issued a notice requesting briefing on the issues of remedy, the public interest, and bonding as related to the ALJ’s ID finding HANA in default. Xerox submitted a brief along with its proposed order on February 24, 2006, as did the Investigative Attorney from the ITC’s Office of Unfair Import Investigations. Neither party filed reply briefs.
On April 14, 2006, the ITC determined that all statutory requirements had been met with respect to the defaulting respondents and presumed the facts alleged in the complaint to be true. The ITC determined that the appropriate form of relief was a limited exclusion order prohibiting the unlicensed entry of ink sticks for solid ink printers covered by one or more of claim 16 of the `713 patent, claims 5-10 and 13-14 of the `613 patent, or claims 1-2 of the `612 patent that are manufactured abroad by or on behalf of, or imported by or on behalf of, HANA, InkSticks.com, or any of their affiliated companies, parents, subsidiaries, or other related business entities, or their successors or assigns. 71 Fed. Reg. 19542 (April 14, 2006).
According to HANA, instead of participating in the investigation at the ITC, it decided to modify the configuration of its ink sticks in an attempt to design around the patent claims listed in the exclusion order that resulted from its default. See Ruling Request at 2-3. After its redesign efforts, the HANA manufactured ink sticks include the following models, as shown in the table below with the corresponding printer for which they are compatible.
From the information above, HANA’s ink sticks at issue in this ruling request can be grouped into one of three categories based on their compatibility with certain Xerox printers. The first category consists of HANA Model C2424, which is compatible with the Xerox WorkCentre printer. The model of ink stick in this category was in existence at the time Xerox filed its complaint and the ITC instituted the investigation, but this model was not accused or identified during the investigation. See Ruling Request at 22-23. The embodiment of this model is depicted in the images below.
The second category includes three subsets of HANA manufactured ink sticks, all of which are compatible with the Xerox Phaser printer. The first subset, HANA Models 340, 350, 360, 840, 850, and 860, like Model C2424 from the first category above, were in existence at the time Xerox filed its complaint and the ITC instituted the investigation, but were not accused or identified during the investigation. See Ruling Request at 24. The various ink sticks from this subset are depicted below.
The second subset, HANA Models 8200 and 8400, included an embodiment that was accused at the ITC and is subject to the 549 LEO. However, after the issuance of the exclusion order, HANA modified the embodiment for this model of ink stick. See Ruling Request at 25. The legacy Model 8400 ink stick accused at the ITC and that is subject to the 549 LEO is depicted below on the left along with the modified Model 8400 ink stick as shown on the right, with the modified 8200 ink stick depicted further below.
The third subset from category two, HANA Models 8500, 8550, 8560, and 8860, are new models exhibiting an embodiment that was not in existence at the time the ITC investigation was instituted and therefore could not have been accused or identified therein. The various ink sticks from this third subset are depicted below.
Lastly, the third cateogory consists of HANA Models 8570, 8700, 8870, and 8900, which are compatible with the Xerox ColorQube printer. Like the ink sticks above in the third subset of the second category, these are new models exhibiting an embodiment that was not in existence at the time the ITC investigation was instituted and therefore could not have been accused or identified therein. The various ink sticks from this third category are depicted below.
ISSUE:
The issue presented is whether the modified and newly developed HANA ink sticks described above are covered by the claims of the patents listed in the 549 LEO and therefore subject to exclusion 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 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, 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 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 ITC authority to direct the exclusion from entry of articles found to be infringing. Moreover, when the ITC 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.”).
The ITC has provided clarification regarding the meaning of the term “covered by” as used in exclusion orders. In particular, the ITC has stated that “exclusion orders must be read in the context of the investigations in which they were issued and the Commission’s findings in that investigation.” In the Matter of Certain GPS Devices and Products Containing Same, Investigation No. 337-TA-602, Advisory Opinion (April 20, 2010) at 4. As further explained by the ITC:
The language of Commission limited exclusion orders directed to articles of named respondents “that infringe” or articles “covered by” generally refers to articles found by the Commission to infringe and articles that are “‘essentially the same,’ meaning that the differences between them are merely ‘colorable’ or ‘unrelated to limitations in the claim of the patent.’”
Id. (citing Yingbin-Nature, 535 F.3d at 1332, which directly cites Acumed LLC v. Stryker Corp., 525 F.3d 1319, 1324 (Fed. Cir. 2008)). .
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). Significantly, 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 HANA to establish that the devices at issue are not covered by one or more of claim 16 of the ‘713 patent, claims 5-10 and 13-14 of the ‘613 patent, or claims 1-2 of the ‘612 patent.
Moreover, it should be noted that HANA, by having been found in default has “deemed to have waived its right…to contest the allegations at issue in the investigation.” See 19 C.F.R. Part 210.16(b)(3). Any information conveyed by HANA in this ruling may not contradict findings of law or fact ruled upon by the ITC. With this framework established, the analysis turns to the matter at hand.
CLAIM 16 OF U.S. PATENT NO. 6,739,713
The subject matter of the `713 patent, as indicated in the abstract, pertains to an ink stick for use in a solid ink feed system of a phase change ink printer which includes a three dimensional ink stick body that has formed in it a guide means. Claim 16 is an independent claim that is representative of all the claims from the various patents listed in the 549 LEO because all contain, as discussed in greater detail below, a limitation requiring a “load bearing” contact formed between the shaped guide element of the ink stick and the shaped guide rail of the solid ink feed system. In other words, this limitation is found in all three patents at issue. Claim 16 is reproduced below, with emphasis added.
16. An ink stick for use in a solid ink feed system of a phase change ink printer, wherein the solid ink feed system includes a shaped guide rail, the ink stick comprising:
a three dimensional ink stick body having a bottom surface and a plurality of side surfaces that intersect the bottom surface; and
a shaped guide element formed in the bottom surface of the ink stick body;
wherein at least one at the side surfaces has a predetermined non-planar key shape so that the ink stick can be inserted in a first direction into the solid ink feed system through an opening having a corresponding non-planar key shape;
wherein the shaped guide element is shaped for guiding the ink stick in a second direction along a defined path in the ink stick feed system;
wherein the second direction is substantially perpendicular to the first direction; and
wherein the shaped guide element has a shape that complements the shape of the shaped guide rail in the solid ink feed system and adapted so that when the ink stick is placed in the solid ink feed system, the shaped guide element forms a load bearing contact with the shaped guide rail of the solid ink feed system.
Figure 13, from the `713 patent, provides a visual representation of an embodiment of the claimed invention when ink stick 130 is placed in feed channel 128. Significantly, the `713 patent, when referring to the contact between the ink stick and the feed channel, states that “[t]he ink stick is placed in the channel with the ink stick guide element…166 on the feed channel guide rail…140 so that the contact between the ink stick guide element and the feed channel guide rail is substantially the only contact between the bottom surface of the ink stick and the feed system.” U.S. Patent No. 6,739,713, col. 13, ln. 28-34 (emphasis added).
HANA alleges that, in light of the above, its modified and newly developed ink sticks do not practice claim 16 of the `713 patent included in the 549 LEO. HANA specifically points to the requirement of a “shaped guide element” forming a “load bearing contact” with the printer’s guide rail. As noted above, the embodiment of the ink sticks at issue here can be grouped into one of three categories based on their compatibility with specific Xerox printers: (1) WorkCentre, (2) Phaser and (3) ColorQube.
WorkCentre Compatible Ink Sticks
HANA states that this category of ink stick was in existence when Xerox filed its complaint at the ITC but was not accused of infringing any of the asserted patents. This would appear to be for the reason that these models do not have any protrusion necessary to qualify as a shaped guide element capable of forming a load bearing contact with the guide rail of the corresponding printer. Upon visual inspection, it is apparent that these ink stick are essentially flat on the bottom surface without any protuberances. Accordingly, without any type projection from their bottom surface, the models from this category cannot satisfy the claim limitation requiring a shaped guide element that forms a load bearing contact with the guide rail of the feed system.
Phaser Compatible Ink Sticks
The ink sticks in this category can be further divided into three subsets as follows: (a) Phaser 340/350/360 and 840/850/860; (b) Phaser 8200 and 8400; and (c) Phaser 8500/8550, 8560, and 8860.
Phaser 340/350/360 and 840/850/860
As with the WorkCentre compatible ink sticks discussed above, HANA states that the ink sticks from this subset were in existence when Xerox filed its complaint at the ITC but were not accused of infringing any of the asserted patents. This again would appear to be for the reason that these models do not have any protrusion necessary to qualify as a shaped guide element capable of forming a load bearing contact with the guide rail of the corresponding printer. After examining the ink sticks, it is apparent that they are essentially flat on the bottom surface without any protuberances. Accordingly, these ink sticks have no projection from their bottom surface and therefore cannot satisfy the claim limitation requiring a shaped guide element that forms a load bearing contact with the guide rail of the feed system.
Phaser 8200 and 8400
Although HANA-manufactured ink sticks with these model numbers were accused at the ITC, HANA modified the embodiment of the current ink sticks with this designation. As described above, these models appear to have had all protrusions from their bottom surface removed, thereby eliminating any protrusion that might be considered the shaped guide element. Accordingly, the models of ink sticks from this subset cannot satisfy the claim limitation requiring a shaped guide element that forms a load bearing contact with the guide rail of the feed system.
Phaser 8500/8550, 8560, and 8860
HANA states that while these ink stick models have a protrusion on the bottom of the ink stick, the protrusion does not satisfy the “shaped guide element,” nor does this protrusion form a “load bearing contact” with the guide rail of the printers in question. HANA refers to this protrusion on the bottom surface of these ink stick models as a “trigger.” HANA states that the trigger functions only to engage a push sensor that extends in one place from a hole at one end of the printer’s guide rail. According to HANA, the trigger has no contact with the guide rail itself and only makes contact with the push sensor.
Upon visual inspection of the ink sticks from this subset after insertion into an actual guide rail of a compatible printer, it appears that the trigger comes into contact with the guide rail only sporadically. At most times when the ink stick travels along the printer’s feed system, there is no contact between the trigger and the guide rail. Instead, it is the flat bottom portion of the ink stick that primarily comes into contact with and rests upon the surface of the printer that is outside of the shaped guide rail. Absent the contact between the trigger and the corresponding printer’s guide rail being substantially the only contact between the bottom surface of the ink stick and the feed system, the HANA ink stick at issue cannot satisfy the claim limitation requiring a load bearing contact, as defined by the `713 patent’s specification and as established by the legacy HANA ink sticks found to infringe at the ITC. Accordingly, the models of ink sticks from this subset are not covered by the relevant claims of the `713 patent.
ColorQube Compatible Ink Sticks
HANA states that the ink sticks from this third category are compatible with a printer that does not use push sensors and that, for this reason, HANA does not include any triggers or protrusions on these models. Without a protrusion, HANA argues, there is no guide element and these ink sticks cannot satisfy the claim limitation at issue. Upon visual inspection, it is apparent that no portion of these ink sticks contacts a portion of the corresponding printer’s guide rail such that it cannot be said that there exists a load bearing contact between the ink stick and the feed system. Accordingly, the models of ink sticks from this last category cannot satisfy the claim limitation requiring a shaped guide element that forms a load bearing contact with the guide rail of the feed system.
CLAIM 5 OF U.S. PATENT NO. 6,840,613
The subject matter of the ‘613 patent pertains to the same class of invention of the ‘712 patent discussed above. Claim 5 is the independent claim upon which the other claims 6-10, 13, and 14 rely.
Claim 5. An ink stick for use in a solid ink feed system of a phase change ink jet printer, the ink stick comprising:
a body having a lower portion and at least two sides; and
a longitudinal ink stick guide element formed in the lower portion of the body;
wherein the longitudinal ink stick guide element is substantially centrally positioned between the sides of the body; and
wherein the ink s[t]ick body is adapted so that when the ink stick is inserted into the solid ink feed system, the longitudinal ink stick guide element forms a load-bearing contact with the solid ink feed system.
The same “ink stick guide element” forming a “load-bearing contact” limitation present in the ‘712 patent is found in the ‘613 patent. For the same reasons listed in the ‘712 patent section, none of the ink stick models at issue satisfy all of the claim limitations required by the ‘613 patent and therefore should not be excluded from entry into the United States.
CLAIM 1 OF U.S. PATENT NO. 6,840,612
The subject matter of the ‘612 patent pertains to the same class of invention of the ‘712 patent discussed above. Claim 1 is the independent claim upon which claim 2 relies.
Claim 1. An ink stick for use in a solid ink feed system of a phase change ink jet printer, wherein the feed system comprises a feed channel having a feed channel guide rail, the ink stick comprising:
an ink stick body having a lateral dimension;
a first ink stick guide element; and
a second ink stick guide element; wherein:
the ink stick body has a lateral center of gravity along the lateral dimension of the ink stick body;
the first ink stick guide element is formed as a part of the bottom portion of the ink stick body;
the first ink stick guide element is adapted so that when the ink stick is placed in the feed channel of the solid ink feed system with the first ink stick guide element contacting the feed channel guide rail, the contact between the first ink stick guide element and the feed channel guide rail is a load –bearing contact;
the first ink stick guide element is laterally offset between a first lateral side extremity and the lateral center of gravity of the ink stick body; and
the second ink stick guide element is laterally offset to a second side from the lateral center of gravity of the ink stick body, opposite the first side.
The same “ink stick guide element” forming a “load-bearing contact” limitation present in the ‘712 patent is found in the ‘612 patent. For the same reasons listed in the ‘712 patent section, none of the ink stick models at issue satisfy all of the claim limitations required by the ‘612 patent and therefore should not be excluded from entry into the United States.
HOLDING:
The three categories of ink stick embodiments designated as the WorkCentre compatible ink sticks, the Phaser compatible ink sticks (with the three subsets discussed herein), and the ColorQube ink sticks do not meet the claim limitation common among the patents at issue requiring a shaped guide element that forms a load bearing contact with the printer’s guide rail. Accordingly, the HANA manufactured ink sticks at issue in this ruling are not covered by the relevant claims of the patents listed in the 549 LEO and therefore may be entered for consumption into the United States.
This decision is limited to the specific facts set forth herein. If the HANA manufactured ink sticks 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. 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