• HQ H300761
• Dec 18, 2018

• Type : 19 U.S.C. § 1337; Unfair Competition • HTSUS :
•  Related:   H121519   

OT:RR:BTSC:IPR H300761 CBC/JW/CAB

VIA EMAIL:

Steven M. Auvil
Squire Patton Boggs LLP
4900 Key Tower, 127 Public Square
Cleveland, Ohio 44114
[email protected]

RE: Ruling Request, U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-1056, Certain Collapsible Sockets For Mobile Electronic Devices and Components Thereof

Dear Mr. Auvil,

Pursuant to 19 C.F.R. part 177, the Intellectual Property Rights Branch (“IPR Branch”), Regulations and Rulings, U.S. Customs and Border Protection (“CBP”) issues this ruling letter. We find that the SPINPOP® collapsible socket (“the article at issue”) is subject to the general exclusion order issued by the U.S. International Trade Commission (“Commission” or “ITC”) in Investigation No. 337-TA-1056 pursuant to section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337.

This ruling is the result of an inter partes proceeding administered by CBP. The inter partes proceeding involved the two parties with a direct and demonstrable interest in the question presented by the ruling request: (1) your client, Quest USA Corporation (“Quest”); and (2) PopSockets LLC (“PopSockets”). See, e.g., Ruling Request at 1–2; Commission Opinion, dated July 9, 2018, (Quest Ex. 4) (“Commission Opinion”) at 1, 4.

The general exclusion order issued in Investigation No. 337-TA-1056 prohibits, among other things, the unlicensed entry of collapsible sockets for mobile electronic devices and components thereof that infringe one or more of claims 9–12 of U.S. Patent No. 8,560,031 (“the ’031 patent”) (Quest Ex. 1). See Inv. No. 337-TA-1056, General Exclusion Order, p. 2, Doc ID 647836 (June 14, 2018) (Quest Ex. 3) (“1056 GEO”). A party seeking to import a product potentially covered by an exclusion order has the burden to establish noninfringement as a condition of entry. See Hyundai Elecs. Indus. Co. v. Int’l Trade Comm’n, 899 F.2d 1204, 1210 (Fed. Cir. 1990). We find that Quest has not met its burden to establish that the article at issue does not infringe one or more of claims 9–12 of the ’031 patent. Specifically, we find that the article at issue meets all of the properly construed limitations of at least independent claim 9 of the ’031 patent. Accordingly, the article at issue literally infringes at least claim 9 of the ’031 patent and is therefore subject to the 1056 GEO.

The parties were asked to clearly identify confidential information, including information subject to the administrative protective order in the underlying ITC investigation, [[with red brackets]] in all of their submissions to the CBP. See CBP Email to the Parties, dated September 11, 2018. The only submission by the parties for which confidential treatment was requested is the entire transcript of the Oral Argument conducted on October 29, 2018. See Quest Email to CBP, dated November 6, 2018. However, neither party has made the requisite showing that any specific portion of the transcript of the Oral Argument, much less the transcript in its entirety, should remain confidential. See infra Section III.A.

If there is any information in this ruling letter that either party believes constitutes confidential information and should be redacted from the published ruling, then the parties are asked to contact CBP within five (5) business days of the date of this ruling letter.

Please note that any request for confidential treatment of information must provide a particularized showing of the specific harm that will result if the identified information is disclosed. Broad, unsubstantiated allegations of harm without specific examples articulating reasons for the harm will not suffice. As discussed in greater detail in Section III.A, a request for confidential treatment of information submitted in connection with a ruling requested under 19 C.F.R. part 177 faces a strong presumption in favor of disclosure. The person seeking this treatment must overcome that presumption with a request that is narrowly tailored and supported by evidence establishing a likelihood of substantial harm to a competitive position that outweighs the general history and public policy—embedded in the Freedom of Information Act (“FOIA”) (5 U.S.C. § 552) (“FOIA”), the common law, and the relevant Customs regulations—favoring transparency and disclosure.

I. BACKGROUND

U.S. Patent No. 8,560,031

PopSockets LLC is listed as the assignee of U.S. Patent No. 8,560,031. See U.S. Patent No. 8,560,031, Statement Under 37 C.F.R. 3.73(b) (October 15, 2013); Commission Opinion at 4.

Specification

The ’031 patent relates to “[e]xtending sockets, formed of accordions generally with buttons attached to their distal ends.” The ’031 patent, Abstract. “The sockets generally include extending elements, called ‘accordions,’ comprising cylindrical or conical membranes with flexural hinges having feet at their distal ends.” The ’031 Patent, 1:45–48. “The buttons may snap onto the ends of the accordions, be glued on, or be feet integrally formed with the accordions.” The ’031 Patent, 2:10–12. “A socket maintains full functionality without the buttons, and its feet may further form suction cups for attaching the player temporarily to flat surfaces.” The ’031 Patent, 2:18–20.

Figures 3A and 3B of the ’031 patent depict different embodiments of the “accordion” portion of the socket, each with alternative “folding sections.” The ’031 Patent, 5:48–63.
In figure 3A, reproduced above, the folding section 29 includes “flexural hinges.” The ‘031 Patent, 5:50-53. The ’031 patent explains that “accordion 2 includes a folding section 29 comprising a series of relatively rigid walls 10, 11, 12 interspersed with flexural (or ‘living’) hinges 9, which flex as accordion 2 is collapsed or expanded.” The ’031 Patent, 5:50–53.




 Figure 3B of the ’031 Patent (Patent at Issue) Figure 7 of the ’510 Patent (Slinky® Pop Toob) Figure 2 of the ’268 Patent (Bendable Straw)   With reference to figure 3B, reproduced above on the left, the ’031 specification further explains that “[a]s an alternative, folding section 29 could be configured similarly to the bendable portion of a bendable straw or Slinky® Pop Toob as shown in FIG. 3B. (see for example US. Pat. Nos. 2,094,268 and 4,846,510, incorporated herein by reference).” The ’031 Patent, 5:39–43. Thus, rather than limiting the “folding section” of the “accordion” portion of the socket solely to the “flexural hinges” depicted in Figure 3A, the ’031 specification provides further guidance that the “folding section” can include alternative structures such as the “pleated accordion fold” of U.S. Patent No. 4,846,510 (“the ’510 patent”). See, e.g., the ’510 patent, 2:6-23. For example, figure 7 of the ’510 patent, reproduced above, in the middle, “shows the pleated section pleats consecutively half popped or snap fitted into socketed relation with adjacent pleats along one side of the pleated section.” Id., 4:50-54. Likewise, the “folding section” of the “accordion” portion of the socket disclosed in the ’031 patent could be configured similarly to the series of corrugations of the flexible portion of the bendable straw depicted in Figure 2 of U.S. Patent No. 2,094,268 (“the ’268 patent”), reproduced above on the right. See, e.g., the ’268 patent, p. 1, col. 2, ll. 6–11.




The ’031 specification further states, with reference to Figure 5, reproduced above, that “[i]n the embodiment of FIG. 3A, accordion 2 forms a cone. This allows walls 8, 10, 11, 12 to fold next to one another (as shown in FIG. 5) rather than stacking on top of one another as is the case with the embodiment of FIG. 3B.” The ’031 Patent, 5:58–62.

Prosecution History

Original Prosecution

The ’031 patent issued from U.S. Patent Application No. 13/403,729 (“the ’729 application”), filed on February 23, 2012. The first office action issued by the U.S. Patent and Trademark Office included a rejection of application claim 9, among others, under 35 U.S.C. § 103, as obvious over U.S. Patent No. 5,568,549 to Wang (“Wang”) in view of U.S. Patent Application Publication No. 2007/0164036 to Brandenburg (“Brandenburg”). See Office Action of May 13, 2013 (Quest Ex. 9) at 2. Of note, the examiner found that Wang disclosed “an accordion capable of extending outward from the case body and retracting back toward the case body (see Wang, Fig. 2, bellows tube 22 extending and retracting).” Id. at 3. Figure 2 of Wang is reproduced below:




Figure 2 of Wang (U.S. Patent No. 5,568,549)

In response, the applicant amended several pending claims. Relevant to this proceeding, application claims 1–3 and 9–11 were amended as follows:

Claim 1 (Amended). A portable media player case for housing a portable media player, comprising:

a case body for housing the portable media player; and

an extendable socket attached to the case body, the socket including:

an accordion forming a tapered shape capable of extending outward from the case body generally along its axis and retracting back toward the case body by collapsing generally along its axis, and

a foot disposed at the distal end of the accordion.

Claim 2 (Original). The case of claim 1 wherein the accordion comprises rigid walls 20 interspersed with flexural hinges.

Claim 3 (Amended). The case of claim 2 wherein the accordion forms tapered shape comprises a cone shape constructed and arranged such that the walls fold generally parallel to the axis of the accordion when the accordion is collapsed.

Claim 9 (Amended). A socket for attaching to a portable media player or to a portable media player case, comprising:

a securing element for attaching the socket to the back of the portable media player or portable media player case; and

an accordion forming a tapered shape connected to the securing element, the accordion capable of extending outward generally along its axis from the portable media player and retracting back toward the portable media player by collapsing generally along its axis; and

a foot disposed at the distal end of the accordion.

Claim 10 (Original). The socket of claim 9 wherein the accordion comprises rigid walls interspersed with flexural hinges.

Claim 11 (Amended). The socket of claim 10 wherein the accordion forms tapered shape comprises a cone shape constructed and arranged such that the walls fold generally parallel to the axis of the accordion when the accordion is collapsed.

See Response of August 5, 2013, (Quest Ex. 10) at 3.




Figure 1 of Wang (U.S. Patent No. 5,568,549)

The Applicant then argued, with reference to Figure 1 of Wang, reproduced above, that the inclusion of a deformable metal plate (21) within the bellows tube (21) of Wang precludes the structure from being collapsible:

Deformable metal plate 21 includes a top mounting hole 211 which is fixed to post 116, and a bottom mounting hole 211 which is fixed to post 313 of frame 3. Bellows tube 22 is sleeved onto plate 21. Thus, the telephone attached to holder frame 3 cannot extend away from or towards the mounting base, as the metal plate prevents this. The metal plate is deformable, so the holder frame may be twisted up or down as shown in Figure 2. But the plate is not collapsible.

See Response of August 5, 2013, (Quest Ex. 10) at 6–7.

With respect to application claim 1, the applicant argued that “[s]ince Wang teaches a telephone holder which can’t extend outward along its axis away from the case body and retract back toward the case body by collapsing along its axis, claim 1 is patentable.” Id. at 8. Applicant then stated that “[i]ndependent claims 9, 16, and 22 are patentable for similar reasons.” Id.

The applicant then provided separate arguments for the patentability of each of application claims 2 and 3, and then stated that “[c]laims 10, 11, 16, and 17 are patentable for the same reasons, as well as depending from patentable claims in the case of claims 10, 11, and 17.” Id. at 8–9.

In a subsequent interview the examiner received consent to add “including an accordion forming a tapered shape to claim 22.” Examiner Interview Summary of August 8, 2018 (Quest Ex. 11). The examiner subsequently withdrew the obviousness rejection of application claim 9, among others, and eventually allowed it to issue as patent claim 9, without any additional amendments to the claim. See Notice of Allowance of August 20, 2013.

Inter Partes Review

On January 15, 2018, Quest filed a petition for inter partes review with the Patent Trial and Appeal Board (“PTAB”). Petition for Inter Partes Review, IPR2018-00497, Paper 2, (January 15, 2018) (PopSockets Exhibit E).

In the petition, Quest asserted several grounds of unpatentability of the claims at issue in the present case. Id. at 6-7. Among other grounds, Quest asserted that claims 9–11, 16, and 17 of the ’031 patent are invalid as anticipated by UK Patent Application GB 2 316 263 A to Grinfas (“Grinfas”) under 35 U.S.C. § 102(b). Id. at 23-28. PopSockets responded that Grinfas does not anticipate these claims. Patent Owner Preliminary Response at 24-31, IPR2018-00497, Paper 6, (May 14, 2018) (Quest Ex. 5) (PopSockets Ex. D). The PTAB subsequently determined that Quest had demonstrated a reasonable likelihood it would prevail in showing that claims 9–11, 16, and 17 are anticipated by Grinfas, and thus instituted inter partes review on this ground, among others. Decision on Institution of Inter Partes Review at 19-29, IPR2018-00497, Paper 8, (August 13, 2018) (Quest Ex. 6).

In the PTAB’s Decision to institute inter partes review, the PTAB determined that there is a reasonable likelihood that Quest will prevail in demonstrating that the collapsible conduit embodiment of Figures 7A–B of Grinfas, reproduced below, discloses the limitation in claim 9 of the ’031 patent of “an accordion forming a tapered shape connected to the securing element, the accordion capable of extending outward generally along its axis from the portable media player and retracting back toward the portable media player by collapsing generally along its axis.” Id. at 22-26; Quest Ex. 6 at 22–26.



Figures 7A and 7B of Grinfas (UK Patent Application GB 2 316 263 A)

On November 13, the PopSockets submitted a Patent Owner Response, in which it once again argued that Grinfas does not anticipate claims 9–11, 16, and 17 of the ’031 patent. Patent Owner Response at 24-33, IPR2018-00497, Paper 16, (November 13, 2018).

With respect to claim construction, PopSockets argues that “based on the ’031 patent and its file history, and consistent with the extrinsic evidence cited in the Petition, the term ‘accordion’ should be construed according to its plain and ordinary meaning in the context of the ’031 patent as: a tubular structure with pleated folds.” Id. at 5, emphasis in original. PopSockets then argues that “Grinfas Figs. 7A and 7B do not teach a tubular structure with pleated folds in its expanded configuration. The walls of the expanded configuration shown in Fig. 7A lack the characteristic ‘zig-zag’ shape of accordion bellows; that is to say, they are linear, not pleated.” Id. at 26. PopSockets further argues:

Grinfas further reserves the benefit of being “tiltable about a pivot” for its “bellows” embodiment shown in Figs. 8A, 8B, and 8C, Ex. 1005 at 2:20–22. Likewise, the ability to tilt is disclosed as a benefit of the accordion of the ’031 patent. See [the ’031 patent] at 2:7–10 (‘The accordion structures allow the buttons to extend not just straight outward . . . but also to curve away from the outward axis at various oblique angles.’). This ability is grounded in the pleated folds of the accordions. Grinfas describes no tilt capability for the structure depicted in Figs. 7A and 7B. Ex. 2018 ¶ 86.

Id. at 27.

As of the issuance of this ruling letter, IPR2018-00497 remains pending before the PTAB, with no final decision yet issued.

The Claims at Issue

The general exclusion order issued in Investigation No. 337-TA-1056 prohibits, among other things, the unlicensed entry of collapsible sockets for mobile electronic devices and components thereof that infringe one or more of claims 9–12 of U.S. Patent No. 8,560,031 (“the ’031 patent”). See Inv. No. 337-TA-1056, General Exclusion Order, p. 2, Doc ID 647836 (June 14, 2018) (“1056 GEO”). Claim 9 is an independent claim. Claim 9 recites:

9. A socket for attaching to a portable media player or to a portable media player case, comprising:

a securing element for attaching the socket to the back of the portable media player or portable media player case; and

an accordion forming a tapered shape connected to the securing element, the accordion capable of extending outward generally along its [axis] from the portable media player and retracting back toward the portable media player by collapsing generally along its axis; and

a foot disposed at the distal end of the accordion.

The ’031 Patent, 7:60–8:4, Certificate of Correction (correcting claim 9 as follows, “At Column 8, Line 1, ‘its from’ should be – its axis from --.”).

Claim 10 depends from claim 9 and recites “[t]he socket of claim 9 wherein the accordion comprises rigid walls interspersed with flexural hinges.” The ’031 Patent, 8:5–6.

Claim 11 depends from claim 10 and recites “[t]he socket of claim 10 wherein the tapered shape comprises a cone shape constructed and arranged such that the walls generally fold parallel to the axis of the accordion when the accordion is collapsed.” The ’031 Patent, 8:7–10.

Claim 12 depends from claim 11 and recites “[t]he socket of claim 11 wherein the accordion is formed of a polyester-based thermoplastic polyurethane elastomer, the walls are about 1 to 2 mm thick and 2 to 4 mm long, and the flexural hinges are about 0.2 to 0.4 mm thick and 1 to 2 mm long. The ’031 Patent, 8:11–15.

ITC Investigation No. 337-TA-1056

Procedural History at the ITC

The Commission instituted Investigation No. 337-TA-1056 on May 15, 2017, based on a complaint filed on April 10, 2017 on behalf of PopSockets LLC of Boulder, Colorado (“PopSockets”). 82 Fed. Reg. 22348 (May 15, 2017); Comm’n Op. at 1–4. The complaint alleged violations of section 337 based upon the importation into the United States, the sale for importation, and the sale within the United States after importation of certain collapsible sockets for mobile electronic devices and components thereof by reason of infringement of U.S. Patent No. 8,560,031 (“the ’031 patent”). Id.

The notice of investigation named as respondents Agomax Group Ltd. of Kowloon, Hong Kong; Hangzhou Hangkai Technology Co., Ltd. of Zhejiang, China; Yiwu Wentou Import & Export Co., Ltd. of Zhejiang, China; Shenzhen Enruize Technology Co., Ltd. of Shenzhen, China; and Guangzhou Xi Xun Electronics Co., Ltd.; Shenzhen Chuanghui Industry Co., Ltd. of Guangdong, China; Shenzhen VVI Electronic Limited; Shenzhen Yright Technology Co., Ltd.; Shenzhen Kinsen Technology Co., Limited; Shenzhen Showerstar Industrial Co., Ltd.; Shenzhen Lamye Technology Co., Ltd.; Jiangmen Besnovo Electronics Co., Ltd.; Shenzhen Waking Electronic Co., Ltd.; Shenzhen CEX Electronic Co.,, Limited, all of Guangdong, China. Id. The Office of Unfair Import Investigations ("OUII") also was named as a party in the investigation. Id. On August 22, 2017, 13 out of 14 respondents were found in default. Notice (Aug. 22, 2017) (determining not to review Order No. 9 (Aug. 4, 2017)); Comm’n. Op. at 1–4. On September 18, 2017, the Commission terminated the only remaining respondent, Shenzhen Chuanghui Industry Co., Ltd., based on withdrawal of the complaint as to that respondent. Notice (Sept. 18, 2017) (determining not to review Order No. 10 (Aug. 28, 2017)); Comm’n Op. at 1–4.

On August 8, 2017, PopSockets filed a motion for summary determination that: (1) the defaulting respondents have sold for importation into the United States, imported into the United States, or sold after importation certain collapsible sockets for mobile electronic devices and components thereof that allegedly infringe certain claims of the ’031 patent in violation of section 337; (2) the accused products infringe the asserted claims of the ’031 patent; and (3) a domestic industry with respect to the ’031 patent exists. Id. The motion also requested a recommendation for entry of a general exclusion order and a bonding requirement pending Presidential review. Id. On August 31, 2017, OUII filed a response supporting the motion in substantial part and supporting the requested remedy of a general exclusion order. Id.

On February 1, 2018, the AU issued the subject ID (Order No. 11), granting PopSockets’ motion for summary determination of a section 337 violation. See also id. The ID found that the defaulting respondents' accused products infringe one or more of claims 9–12 of the ’031 patent (apparatus claims), but found no infringement of claims 16 and 17 of the ’031 patent (method claims). Id. The ID found that the defaulting respondents' accused products have been imported into the United States and that a domestic industry exists in the United States with respect to the ’031 patent. The ALJ also issued a Recommended Determination on Remedy and Bonding (“RD”), recommending that, if the Commission finds a section 337 violation, the Commission issue a general exclusion order and impose a bond of 100 percent during the period of Presidential review. Id. No petitions for review of the ID were filed. Id.

On March 19, 2018, the Commission determined to review in part the ID. 83 Fed. Reg. at 12812; id. Specifically, the Commission determined to review (1), the ID's findings on the technical prong of the domestic industry requirement to correct a typographical error and (2) the ID’s findings on the economic prong of the domestic industry requirement. Id. The Commission determined not to review the remaining issues decided in the ID. Id. The Commission requested additional briefing from the parties on the issues under review and also invited the parties, interested government agencies, and any other interested parties to file written submissions on the issues of remedy, the public interest, and bonding. Id.

On April 2, 2018, PopSockets and OUII filed initial written submissions in response to the Commission's notice. Id. On April 4, 2018, non-party Quest USA Corporation (“Quest”) filed a written submission concerning remedy. Id. On April 11, 2018, PopSockets filed a reply to Quest’s submission. Id. Also on that day, OUII filed a reply to the submissions of PopSockets and Quest. Id.

On July 9, 2018, the Commission issued their final determination finding a violation of section 337. See Notice of Commission Opinion (July 9, 2018). The Commission determined (1) to correct the citation at page 107 of the ID from “Mem. Ex. 2 (Kemnitzer Decl.) at ¶ 77 (Infringement Analysis and Chart)” to “Mem. Ex. 2 (Kemnitzer Decl.) at ¶ 61 (Analysis and Chart)”; (2) that PopSockets satisfied the economic prong of the domestic industry requirement under 19 U.S.C. § 1337(a)(3)(B), taking no position as to subsections (A) and (C); and (3) to adopt all findings and conclusions in the ID not inconsistent with its opinion. Id. at 20, 27.

Accordingly, having found a violation of section 337 in the investigation, the Commission determined that the appropriate form of relief was, inter alia, a general exclusion order prohibiting the unlicensed entry of certain collapsible sockets that infringe one or more of claims 9–12 of the ’031 patent, for the remaining term of the ’031 patent, except under license of the patent owner or as provided by law. See Notice of Comm’n Op. (June 14, 2018); 1056 LEO; Comm’n Op. at 1, 29.

Claim Construction at the ITC

The ITC construed the following claim terms of the ’031 patent:

’031 Patent  Term / Phrase ITC Construction  portable media player plain and ordinary meaning, i.e., ‘a portable device capable of playing media, such as a smartphone, tablet, or MP3 player’ (ID at 33–35) (Quest Ex. 2).  flexural hinges plain and ordinary meaning, i.e., ‘hinges capable of flexing as the accordion moves’ (ID at 35–37)   Accused Products at the ITC

PopSockets presented evidence that the identified respondents, as well as numerous additional entities, “either copied or made approximate facsimiles of the PopSockets product and, in many cases, are near-identical replicas differentiated only by low quality materials and sub-standard manufacturing.” ID at 13–16, 121–23.

Infringement Analysis at the ITC

The ALJ found that each of the respondents’ accused products infringed claims 9–12 of the ’031 patent. 37–101. PopSockets’s expert, Mr. Kemnitzer, analyzed each of the products, breaking claim 9 into elements, which he found in each: [a] a securing element for attaching the socket to the back of a portable media player or portable media player case, [b] an accordion forming a tapered shape connected to the securing element, and [c] a foot disposed at the distal end of the accordion. See, e.g., ID at 37–41:




In addition, Mr. Kemnitzer showed that the accused products extend outwardly generally from the portable media player, as shown above, and also retract back toward the portable media player by collapsing generally along their axes, as shown below:




See, e.g., id. at 39–40 (citing Mem. Ex. 2 (Expert Declaration of Ronald B. Kemnitzer (August 3, 2017) (PopSockets Ex. F)).

Mr. Kemnitzer also confirmed, through pictures on the products’ website listings and/or his own pictures, that the accused products attach to a portable media player or to a portable media player case, applying the ALJ’s construction of “portable media player.” See, e.g., id. at 40–41.

Part 177 Proceeding Before the IPR Branch

Procedural History of the Part 177 Proceeding

On September 10, 2018, Quest submitted a letter requesting an administrative ruling pursuant to 19 C.F.R. part 177, which included exhibits 1–8 and declarations and exhibits by Isaac Srour, President of Quest (“Srour Decl.”), and by Dr. Glenn E. Vallee, Ph.D (“Vallee Decl.”) (collectively, “Ruling Request”). The question presented in the Ruling Request was whether the SPINPOP® collapsible socket is subject to the 1056 GEO. Ruling Request at 1–2.

Subsequently, Quest and PopSockets agreed to a procedural schedule and to service by email. See, e.g., CBP Email to Parties Dated September 18, 2018.

On October 3, 2018, PopSockets served a response to the Ruling Request, which included exhibits A–D and a declaration by James Babock (collectively, “PopSockets Response”). On October 10, 2018, Quest served a reply to the PopSockets Response, which included exhibits 9–10 (collectively, “Quest Reply”). On October 18, 2018, PopSockets submitted a sur-reply to the Quest Reply, which included exhibits E–F and a supplemental declaration by James Babock. On October 26, 2018, Quest and PopSockets entered into a nondisclosure agreement. See Quest Email of October 26, 2018. Both parties presented arguments to CBP during the inter partes proceeding held on October 29, 2018. Both parties subsequently served post-proceeding briefs on November 6, 2018. Quest’s post-proceeding submission also included exhibit 11.

The Products at Issue in the Part 177 Proceeding

The products at issue in Quest’s request are its SPINPOP® collapsible socket. Ruling Request at 1–2. “[A]ll SPINPOPs have the identical construction and structure.” Id. at 13. A SPINPOP® collapsible socket has multiple uses, “but it is mainly designed for use as a phone older or phone stand.” Id. Used for its intended purpose, its structure can assume an “extended” and “locked” position, pictured, respectively, below:

Id. An internal spring pushes the SPINPOP® collapsible socket into its extended position, and “flanges on the discs that abut each other when the discs are rotated with respect to each other . . . keep the device in the collapsed state.” Id. at 13–14. A cross-section of a SPINPOP® collapsible socket, submitted by Quest’s expert, shows its internal spring and the uniform thickness of its sides:


Id. at 22. As “the SPINPOP [wall] deforms in reaction to a force being applied, the two wider regions deflect around the narrower diameter region.” Id. at 22. The deflection can be seen in this cross section of a collapsed SPINPOP® collapsible socket, submitted by Quest’s expert:


Vallee Dec. at ¶ 48.

II. ISSUE

Whether the SPINPOP® collapsible socket infringes one or more of claims 9–12 of the ’031 patent and is therefore subject to the 1056 GEO. Ruling Request at 1–2; see PopSockets Post-Proceeding Br. at 1.

III. LAW AND ANALYSIS

Treatment of Confidential Business Information Submitted under 19 C.F.R. pt. 177

The parties have requested confidential treatment in connection with this ruling request for the entirety of the transcript of the oral argument conducted on October 29, 2018, and thereby seek to have the contents of the oral argument information redacted from any ruling that is published in accordance with 19 U.S.C. § 1625(a). Disclosure of information related to administrative rulings under 19 C.F.R. § 177 is governed by 31 C.F.R. § 1, 19 C.F.R. § 103, and 19 C.F.R. § 177.8(a)(3). See 19 C.F.R. § 177.10(a). Moreover, the determination whether to include or redact information within a published ruling is guided by various federal laws—and the relevant standards for their application—that involve confidentiality and disclosure, to include the Freedom of Information Act (“FOIA”) (5 U.S.C. § 552), the Trade Secrets Act (18 U.S.C.§ 1905), and the Privacy Act of 1974 (5 U.S.C. § 552a). See CBP HQ Ruling H121519 at 1 (dated February 8, 2011).

Congress enacted FOIA to overhaul the earlier public-disclosure section of the Administrative Procedure Act that gradually became more “a withholding statute than a disclosure statute.” Milner v. Dep't of the Navy, 562 U.S. 562, 565 (quoting EPA v. Mink, 410 U.S. 73, 79 (1973)). Accordingly, there is a strong presumption in favor of disclosure, which is consistent with the purpose as well as the plain language of the Act. United States Dep't of State v. Ray, 502 U.S. 164, 173 (1991). Thus, FOIA mandates that an agency disclose certain information unless it falls within one of nine exemptions. Milner, 562 U.S. at 565. These exemptions are “explicitly made exclusive,” EPA, 410 U.S. at 79, and must be “narrowly construed,” FBI v. Abramson, 456 U.S. 615, 630 (1982).

Exemption 4 of FOIA, which is especially relevant here, provides that FOIA does not apply to matters that are “trade secrets and commercial or financial information obtained from a person and privileged or confidential.” 5 U.S.C. § 552 (b)(4); see Chrysler Corp. v. Brown, 441 U.S. 281, 291 (1979). Furthermore, it is worth noting that, as a general matter, the proscriptions of the Trade Secrets Act are “at least co-extensive with Exemption 4 of FOIA . . . [such that], unless another statute or a regulation authorizes disclosure of the information, the Trade Secrets Act requires each agency to withhold any information it may withhold under Exemption 4 of the FOIA.” Venetian Casino Resort, LLC v. EEOC, 530 F.3d 925, 932 (D.C. Cir. 2008) (quoting Canadian Comm. Corp. v. Air Force, 514 F.3d 37, 39 (D.C. Cir. 2008)) (emphasis added); see also Dow Chem. Co. v. United States, 476 U.S. 227, 234 n.2 (1986) (“Dow's fear that EPA might disclose trade secrets revealed in these photographs appears adequately addressed by federal law prohibiting such disclosure generally under the Trade Secrets Act, 18 U.S.C. § 1905, and the Freedom of Information Act, 5 U.S.C. § 552(b)(4).”).

That said, “Congress did not design the Freedom of Information Act exemptions to be mandatory bars to disclosure.” Chrysler Corp., 441 U.S. at 293, 294 (“We therefore conclude that Congress did not limit an agency's discretion to disclose information when it enacted the FOIA.”); see GTE Sylvania v. Consumers Union of United States, 445 U.S. 375, 378, n. 2 (1980) (“The theory of the so-called ‘reverse Freedom of Information Act’ suit, that the exemptions to the Act were mandatory bars to disclosure and that therefore submitters of information could sue an agency under the Act in order to enjoin release of material, was squarely rejected in Chrysler Corp.”).

The test, for administrative rulings under 19 C.F.R pt. 177, to determine whether certain information is confidential (and therefore properly redacted from any published ruling) is identical to the federal government-wide standard for disclosure under FOIA Exemption 4 as it relates to the likelihood of substantial harm to the competitive position of the person submitting the information and requesting that it be withheld from publication. As with FOIA, the basic objective of administrative rulings under 19 C.F.R. pt. 177 favors disclosure to provide notice to interested persons of the reasons for the agency’s position and its decision-making process. See Chrysler Corp., 441 U.S. at 290 n. 10 (“We observed in Department of Air Force v. Rose that ‘disclosure, not secrecy, is the dominant objective of the Act.’ The legislative history is replete with references to Congress’ desire to loosen the agency's grip on the data underlying governmental decision making.”) (internal citation omitted). Notably, under 19 C.F.R. § 177.8(a)(3) referenced above, there is a general presumption that “[n]o part of the ruling letter, including names, addresses, or information relating to the business transactions of private parties, shall be deemed to constitute privileged or confidential commercial or financial information or trade secrets exempt from disclosure pursuant to the Freedom of Information Act, as amended (5 U.S.C. 552), unless, as provided in §?177.2(b)(7), the information claimed to be exempt from disclosure is clearly identified and the reasons for the exemption are set forth.”

In turn, 19 C.F.R. § 177.2(b)(7) provides that “[i]nformation which is claimed to constitute trade secrets or privileged or confidential commercial or financial information regarding the business transactions of private parties the disclosure of which would cause substantial harm to the competitive position of the person making the request (or of another interested party), must be identified clearly and the reasons such information should not be disclosed, including, where applicable, the reasons the disclosure of the information would prejudice the competitive position of the person making the request (or of another interested party) must be set forth.”

Significantly, § 177.2(b)(7) was added to this section through rulemaking (T.D. 75-186, 40 Fed. Reg. 31929, July 30, 1975 as amended by T.D. 85-90, 50 FR 21430, May 24, 1985 that promulgated a final rule based on a previous notice of proposed rulemaking (40 Fed. Reg. 2437, January 13, 1975) where the text as proposed did not contain (b)(7) or any other provision addressing the treatment of putative confidential business information. The “substantial harm to a competitive position” standard adopted in § 177.2(b)(7) to handle confidentiality issues is identical to that standard for FOIA Exemption (b)(4) contemporaneously established by the U.S. Court of Appeals for the District of Columbia Circuit (“D.C. Circuit”) in National Parks & Conservation Asso. v. Morton, 498 F.2d 765 (D.C. Cir. 1974). See N.H. Right to Life v. HHS, 136 S. Ct. 383; 193 L. Ed. 2d 412; 2015 U.S. LEXIS 7169 (2015) (Thomas, J., dissenting from denial of the petition for writ of certiorari). In 1974, a year before the promulgation of the Customs final rule, the D.C. Circuit construed the word “confidential” in Exemption 4 and determined that commercial information is “confidential” if disclosure would “cause substantial harm to the competitive position of the person from whom the information was obtained.” National Parks, 498 F.2d at 770; see also N.H. Right to Life, 136 S. Ct. at 384. The D.C. Circuit later elaborated that, when applying this test, there was no need to show actual competitive harm and that actual competition and the likelihood of substantial competitive injury sufficed. See Public Citizen Health Research Group v. FDA, 704 F.2d 1280, 1291 (D.C. Cir. 1983); see also N.H. Right to Life, 136 S. Ct. at 384. Accordingly, to overcome the strong presumption in favor of disclosure, ruling requesters seeking confidential treatment must prove (1) they actually face competition, and that (2) substantial competitive injury would likely result from disclosure. See Gov't Accountability Project v. FDA, 2016 U.S. Dist. LEXIS 114927, at *15 (D.C. Cir. 2016). Conclusory and generalized allegations of substantial competitive harm are unacceptable and will not support a ruling requester’s efforts to withhold certain information from publication. See Public Citizen Health Research Group, 704 F.2d at 1291.

There is no dispute that either party to this proceeding faces actual competition and therefore the relevant analysis will focus on the second prong above.

As suggested above, the relevant Customs regulations not only mirror the general presumption in favor of disclosure but also place the burden on the person requesting confidentiality to demonstrate that such information qualifies. See generally FCC v. Schreiber, 381 U.S. 279 (1965) (upholding a rule requiring public disclosure except where the proponents of a request for confidential treatment have established their burden to justify that such information should not be disclosed). Moreover, the provisions of the Customs regulations that place the burden on the ruling requester to establish, during the administrative proceeding, that the information at issue constitutes confidential business information is consistent with the burden the government must satisfy in an action brought against it under FOIA challenging the position an agency has taken not to disclose information pursuant to one or more of the exemptions. See 5 U.S.C. § 552(a)(4)(B); see also United States Department of Justice v. Landano, 508 U.S. 165, 171 (1993) (“The Government bears the burden of establishing that the exemption applies.”).

This line of inquiry is further illuminated by the “general right to inspect and copy public records and documents” that courts have historically recognized, including in patent cases involving highly sensitive information. Apple Inc. v. Samsung Elecs. Co., 727 F.3d 1214, 1221 (Fed. Cir. 2013) (quoting Nixon v. Warner Commc’ns, Inc., 435 U.S. 589 (1978)). The nature of this right, rooted in the common law, is not conditioned on a proprietary interest in the information, see Nixon, 435 U.S. at 597, although certainly there are instances where an interest in the information may rise to or approach such a level. Instead, the only interest necessary to compel access to such information is found in the “citizen’s desire to keep a watchful eye on the workings of public agencies.” Nixon, 435 U.S. at 597–98.

Therefore, a determination whether to grant a request for confidential treatment must balance the likelihood of substantial harm to a competitive position against the need to provide the greatest amount of transparency possible to the agency’s decision-making process. In light of the above, a request for confidential treatment of information submitted in connection with a ruling requested under 19 C.F.R. pt. 177 faces a strong presumption in favor of disclosure. The person seeking this treatment must overcome that presumption with a request that is narrowly tailored and supported by evidence establishing a likelihood of substantial harm to a competitive position that outweighs the general history and public policy—embedded in FOIA, the common law, and the relevant Customs regulations—favoring transparency and disclosure. To that end, any request for confidential treatment must provide a particularized showing of the specific harm that will result if certain information is disclosed. Broad, unsubstantiated allegations of harm without specific examples articulating reasons for the harm will not suffice.

Therefore, as noted above, requests for confidential treatment in the context of section 337 exclusion order-based rulings under 19 C.F.R. pt. 177 must be narrowly tailored, fully supported by evidence showing a likelihood of substantial harm to a competitive position, and still permit a description of the device’s operation.

Based on the framework above, any information for which the parties have established a likelihood of substantial harm to their respective competitive positions if disclosed (or consists of information that was redacted from the public version of the agency record at the Commission) will be bracketed in red [[ ]] for redaction from the published ruling. We note that the only submission by the parties for which confidential treatment was requested is the entire transcript of the Oral Argument conducted on October 29, 2018. See Quest Email to CBP, dated November 6, 2018. However, neither party has established that there would be a likelihood of substantial harm to their respective positions if any specific portion of the transcript of the Oral Argument (much less the transcript in its entirety) were disclosed. Accordingly, no portions of the Oral Argument transcript will be redacted from the published ruling and the Oral Argument transcript will not receive confidential treatment.

Law of Patent Infringement

“It is well established [] that an infringement analysis is a two-step process. The court must: (1) determine the scope and meaning of the patent claims asserted; and (2) compare the properly construed claims to the allegedly infringing device.” E.g., Phil-Insul Corp. v. Airlite Plastics Co., 854 F.3d 1344, 1358 (Fed. Cir. 2017). To establish literal infringement, every limitation recited in a claim must be found in the accused product whereas, under the doctrine of equivalents, infringement occurs when there is equivalence between the elements of the accused product and the claimed elements of the patented invention. Microsoft Corp. v. GeoTag, Inc., 817 F.3d 1305, 1313 (Fed. Cir. 2016). Equivalence can be demonstrated, on an element-by-element basis, by showing that the accused product performs substantially the same function in substantially the same way with substantially the same result as each claim limitation of the patented invention, which is often referred to as the function-way-result test, or by showing that the accused product has insubstantial differences with each of the claim elements. See, e.g., Mylan Institutional LLC v. Aurobindo Pharma Ltd., 857 F.3d 858, 866–67 (Fed. Cir. 2017) (citing Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605 (U.S. 1950)).

Claim construction is a question of law, although the consideration of extrinsic evidence may constitute a subsidiary finding of fact. See, e.g., Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841, 190 L. Ed. 2d 719, 733 (2015). The second step to establish infringement involves the comparison of the claims to the accused product, which is a question of fact. See, e.g., Apple Inc. v. Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1040 (Fed. Cir. 2016) (en banc).

“There is a heavy presumption that claim terms are to be given their . . . ordinary meaning [i.e.,] its meaning to the ordinary artisan after reading the entire patent.” See, e.g., MIT v. Shire Pharms. Inc., 839 F.3d 1111, 1118 (Fed. Cir. 2016) (internal quotations omitted). “‘In some cases, the ordinary meaning of claim language may be readily apparent even to lay judges;’” however, even if the meaning is clear, construction is required where the parties dispute “the scope that should be encompassed by the claim language.” O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1360–61 (Fed. Cir. 2008) (quoting Phillips v. AWH Corp., 415 F.3d 1303, 1327 (Fed. Cir. 2005) (en banc) (stating that such claims may “not require elaborate interpretation” and that “general purposes dictionaries may be helpful”)).

“To begin with, the context in which a term is used in the asserted claim can be highly instructive.” Phillips, 415 F.3d at 1314. (“To take a simple example, the claim in this case refers to ‘steel baffles,’ which strongly implies that the term ‘baffles’ does not inherently mean objects made of steel.”). Thus, “the use of two terms in a claim requires that they connote different meanings [but] not that they necessarily refer to two different structures.” Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1264 (Fed. Cir. 2010) (Gajarsa, J. dissenting) (quoting Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006)); Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1231–1232 (Fed. Cir. 2011) (collecting cases where the ordinary meanings of the terms in the light of the specification did not require separate structures). Similarly, “[a]n interpretation that would render other claims redundant “is disfavored . . . particularly where . . . the construction would without justification exclude embodiments in the specification,” Mems Tech. Berhad v. ITC, 447 Fed. Appx. 142, 151 (Fed. Cir. 2011); Inline Plastics Corp. v. EasyPak, LLC, 799 F.3d 1364, 1371 (Fed. Cir. 2015) (“Since the specification explicitly mentions the ‘alternative’ . . . there can be no debate concerning the application of the doctrine of claim differentiation.”) “[T]he doctrine [of claim differentiation] is at its strongest ‘where the limitation sought to be ‘read into’ an independent claim already appears in a dependent claim.’” Seachange Int’l, Inc. v. C-COR Inc., 413 F.3d 1361, 1368–69 (Fed. Cir. 2005) (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004) (The doctrine “is [even more] especially strong when the limitation in dispute is the only meaningful difference between an independent and dependent claim.”)).

After the claims themselves, the specification “is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315 (internal quotations omitted). Cf. Marine Polymer Techs., Inc. v. HemCon, Inc., 672 F.3d 1350, 1358 (Fed. Cir. 2012) (en banc) (“Because the term [] admits of no limitation based on the context of the claims, the district court properly turned to the teachings of the specification.’) (emphasis added). For example, even without claim differentiation, “[a] claim construction that excludes a preferred embodiment . . . is rarely, if ever correct and would require highly persuasive evidentiary support.” E.g., EPOS Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1347 (Fed. Cir. 2014) (internal quotations omitted). On the other hand, the written description may limit, as well as broaden, the choice of ordinary meaning, even without “explicit redefinition or disavowal,” particularly where the specification characterizes the “invention” or relevant claim element as so limited; such limitation will overcome the presumption of claim differentiation. See Cave Consulting Grp., LLC v. OptumInsight, Inc., 725 Fed. Appx. 988, 990, 995 (Fed. Cir. 2018) (stating that redefinition or disavowal was unnecessary to overcome claim differentiation where the ordinary meaning was informed by the repeated characterization of the “invention” in the specification as relating to indirect standardization, where the specification also disparaged the prior art direct standardization, and where the dependent claims purporting to narrow the subject matter of the independent claim at issue to indirect standardization were added five years after filing); Ruckus Wireless, Inc. v. Innovative Wireless Solutions, LLC, 824 F.3d 999, 1004 (Fed. Cir. 2016) (holding, where claim differentiation could lead to multiple interpretations broader than the dependent claim, only one of which was consistent with the specification’s discussion of the scope of the “invention,” that the consistent meaning would govern); id. at 1009 n.6 (Stark, C.J. dissenting) (noting that the majority opinion did not analyze whether the specification amounted to disclaimer); Marine Polymer Techs., 672 F.3d at 1358–59 (finding, without analyzing lexicography or disavowal, that the characterization of the “invention” in the specification overcame claim differentiation, and listing cases discussing the significance of the term “invention” in the specification); Am. Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1336–1337 (Fed. Cir. 2011) (limiting, without analyzing lexicography or disclaimer, the element “message” to containing a recipient address, notwithstanding such a limitation in a dependent claim, where the specification repeatedly compared the novel “C-mail messages” to E-mail.); Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1363–66 (Fed. Cir. 2016) (holding “explicit redefinition or disavowal” unnecessary to limit claim term where the specification repeatedly, if inconsistently, so implied); UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 824 (Fed. Cir. 2016) (“UltimatePointer’s argument that a court may only deviate from the ordinary meaning when there is an explicit definition or disclaimer does not apply because the ordinary meaning of ‘handheld device,’ when read in the specific context of the specification” is limited by “the repeated description of the invention as a direct-pointing system, the repeated extolling of the virtues of direct pointing, and the repeated criticism of indirect pointing.”); see also Wavetronix LLC v. Smart Microwave Sensors GmbH, 2018 U.S. App. LEXIS 24826, *13 (“repeated and consistent descriptions” required to limit claims under broadest reasonable construction) (distinguishing In re Smith Int’l, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017) (claims limited to “repeated and consistent descriptions”)). However, “the court has repeatedly stated since Phillips that redefinition or disavowal is required where claim language is plain, lacking a range of possible ordinary meanings in context.” Straight Path IP Group, Inc. v. Sipnet EU S.R.O., 806 F.3d 1356, 1361 (Fed. Cir. 2015) (citing Pacing Techs., LLC v. Garmin Int’l, Inc., 778 F.3d 1021, 1024 (Fed. Cir. 2015) (collecting cases)).

“A patent’s prosecution history, though less useful for claim construction purposes than the claim language and written description, plays various roles in resolving uncertainties about claim scope.” E.g., MIT, 839 F.3d at 1118–19 (collecting cases) (internal quotations omitted). “[T]he specification and prosecution history [including statements made during inter partes review] only compel departure from the plain meaning in two instances: lexicography and disavowal.” E.g., GE Lighting Solutions, LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014); Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) (collecting cases); Hill-Rom Servs. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014); Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012); Aylus Networks, Inc. v. Apple Inc., 856 F.3d. 1353, 1359 (Fed. Cir. 2017) (inter partes review). The doctrine of prosecution disclaimer precludes meanings that were unambiguously disavowed. E.g., MIT, 839 F.3d at 1118–19 (“Where the alleged disavowal is ambiguous, or even ‘amenable to multiple reasonable interpretations,’ we have declined to find prosecution disclaimer.”) (collecting cases); Hill-Rom Servs., 755 F.3d at 1372 (same). “[I]t is the applicant, not the examiner, who must give up or disclaim subject matter that would otherwise fall within the scope of the claims, and an applicant’s silence regarding statements made by the examiner during prosecution cannot amount to a clear and unmistakable disavowal of claim scope.” E.g., Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1095–1100 (Fed. Cir. 2013) (opinions of the Court and of Plager, J., dissenting) (finding disavowal where an applicant had implicitly adopted the examiner’s construction to overcome an enablement rejection); but cf. Salazar v. Procter & Gamble Co., 414 F.3d 1342, 1348 (Bryson, J. dissenting) (Fed. Cir. 2005) (“[T]he statement is relevant not because it serves as the basis for a finding of disclaimer by the inventor, but because it indicates how a person of ordinary skill in the art—in this instance, the examiner—would understand the claim term ‘elastic’ in the context of the patent.”). A clear and unmistakable disavowal will overcome claim differentiation, even if the examiner did not rely on it. Seachange Int’l, Inc. v. C-COR Inc., 413 F.3d 1361, 1374 (Fed. Cir. 2005). On the other hand, a decision by the patentee to add by amendment a claimed element not found in the prior art will not, without more, preclude structures in such prior art from embodying, in some augmented form, such amended element. See Mems Tech. Berhad v. ITC, 447 Fed. Appx. 142, 152 (Fed. Cir. 2011) (“MemsTech characterizes the applicant’s argument as an attempt to distinguish Cote as lacking a direct electrical connection. As the above passage demonstrates, however, the applicant [merely] distinguished Cote based on the fact that Cote [lacked a specific claim element.]”); SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1349 (Fed. Cir. 2016) (“ComplementSoft would [improperly] have us exclude object-oriented languages altogether—even when implemented with embedded data manipulation code using Structured Query Language (‘SQL’)—because the prior art Coad patent the patentee distinguished during prosecution discussed object-oriented languages.”) (applying the broadest reasonable interpretation).

Finally, extrinsic evidence, such as technical dictionaries or expert testimony, can be helpful to the extent it reveals a technical meaning or illuminates how a person of ordinary skill would read the claim’s ordinary meaning in the light of the specification, provided that the factfinder keeps in mind how it may be biased and litigation-driven. Phillips, 415 F.3d at 1317–19; cf. CSP Techs., Inc. v. Sud-Chemie AG, 643 Fed. Appx. 953, 957 (Fed. Cir. 2016) ([E]ven if the district court were to have erred by elevating the extrinsic record above the intrinsic, this error would be harmless because the intrinsic record is consistent with the conclusion the district court drew from the challenged extrinsic evidence.”). Extrinsic evidence is valuable because “a patent specification need not disclose or teach what is known in the art.” Hill-Rom Servs. v. Stryker Corp., 755 F.3d 1367, 1373–74 (Fed. Cir. 2014) (collecting cases).

Section 337 Exclusion Order Administration

Under section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337, the Commission has authority to conduct investigations into imported articles that allegedly infringe United States patents and impose remedies if the accused articles are found to be infringing. See 19 U.S.C. § 1337(a)(1)(B), (b)(1), (d), (f), (i). 19 U.S.C. § 1337(d), in particular, empowers the Commission to direct the exclusion from entry of articles found to infringe the asserted patents. When the Commission determines there is infringement and thus a violation of section 337, it generally issues one of two types of exclusion orders: (1) a limited exclusion order or (2) a general exclusion order. See Fuji Photo Film Co., Ltd. v. U.S. Int’l Trade Comm’n, 474 F.3d 1281, 1286 (Fed. Cir. 2007).

Both types of orders direct CBP to bar infringing products from entering the country. See Yingbin-Nature (Guangdong) Wood Indus. Co. v. 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. In contrast, a general exclusion order bars the importation of infringing products by everyone, regardless of whether they were respondents in the Commission's investigation.” Id. A general exclusion order is appropriate only if two exceptional circumstances apply. See Kyocera Wireless Corp. v. 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 Kyocera, 545 F.3d at 1356 (“If a complainant wishes to obtain an exclusion order operative against articles of non-respondents, it must seek a GEO [general exclusion order] by satisfying the heightened burdens of §§ 1337(d)(2)(A) and (B).”).

Significantly, unlike district court injunctions, the Commission can issue a general exclusion order that broadly prohibits entry of articles that infringe the relevant claims of an asserted 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. See Vastfame Camera, Ltd. v. U.S. Int’l Trade Comm’n, 386 F.3d 1108, 1114 (Fed. Cir. 2004). The Commission also has recognized that even limited exclusion orders have broader applicability beyond just the parties found to infringe during an investigation. See Certain GPS Devices and Products Containing Same, Inv. No. 337-TA-602, Comm’n Op. at 17, n. 6, Doc ID 317981 (Jan. 2009) (“We do not view the Court’s opinion in Kyocera as affecting the issuance of LEOs [limited exclusion orders] that exclude infringing products made by respondents found to be violating Section 337, but imported by another entity. The exclusionary language in this regard that is traditionally included in LEOs is consistent with 19 U.S.C. § 1337(a)(1)(B)–(D) and 19 U.S.C. § 1337(d)(1).”).

Exclusion orders apply to any articles—new, modified, or otherwise— that are “covered by” the patent claims included in the exclusion order. See Certain Optical Disk Controller Chips and Chipsets, Inv. No. 337-TA-506, Comm’n Op. at 56–57, USITC Pub. 3935, Doc ID 287263 (July 2007) (“The 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 only to those specific models selected for the infringement analysis . . . [W]hile individual models may be evaluated to determine importation and infringement, the Commission's jurisdiction extends to all models of infringing products that are imported at the time of the Commission's determination and to all such products that will be imported during the life of the remedial orders.”). The Commission has confirmed that this requires CBP to employ the traditional two-step test for patent infringement, and not the colorable differences test from TiVo, when administering a Commission exclusion order under section 337 to determine whether an imported article, or one at issue in a ruling request, is within the scope of that exclusion order. See Certain Sleep-Disordered Breathing Treatment Systems and Components Thereof, Inv. No. 337-TA-879, Advisory Opinion at 10, n. 2, Doc ID 539875 (Aug. 2014); see also Certain Erasable Programmable Read Only Memories, Inv. No. 337-TA-276, Enforcement Proceeding, Comm’n Op. at 11, Doc ID 43536 (Aug. 1991) (“The Commission has always issued its orders in terms of ‘infringing’ products, and has always intended them, as in this case, to prohibit to future importation or sale of products which were not specifically adjudged infringing in the violation proceeding, but do in fact infringe. The Commission has consistently issued exclusion orders coextensive with the violation of section 337 found to exist. Thus, in cases where the violation found involves infringement of patent claims, the Commission has consistently ordered the exclusion of articles which infringe the relevant patent claims.”) (emphasis added).

Lastly, despite the well-established principle that “the burden of proving infringement generally rests upon the patentee,” Medtronic, Inc. v. Mirowski Family Ventures, LLC, 134 S. Ct. 843; 187 L. Ed. 2d 703; 2014 U.S. LEXIS 788 (2014), the Commission has held that Medtronic is not controlling precedent and does not overturn its longstanding practice of placing the burden of proof on the party who, in light of the issued exclusion order, is seeking to have an article entered for consumption. See Certain Sleep-Disordered Breathing Treatment Systems and Components Thereof, Inv. No. 337-TA-879, Advisory Opinion at 6–11. In particular, the Commission has noted that “[t]he Federal Circuit has upheld a Commission remedy which effectively shifted the burden of proof on infringement issues to require a company seeking to import goods to prove that its product does not infringe, despite the fact that, in general, the burden of proof is on the patent to prove, by a preponderance of the evidence, that a given article does infringe the patent in question.” Certain Integrated Circuit Telecommunication Chips, Inv. No. 337-TA-337, Comm’n Op. at 21, n.14, USITC Pub. 2670, Doc ID 217024 (Aug. 1993), (emphasis in original) (citing Sealed Air Corp. v. U.S. Int’l Trade Comm’n, 645 F.2d 976, 988–89 (C.C.P.A. 1981)).

This approach is supported by Federal Circuit precedent. See Hyundai Elecs. Indus. Co. v. U.S. Int’l Trade Comm'n, 899 F.2d 1204, 1210 (Fed. Cir. 1990) (“Indeed, we have recognized, and Hyundai does not dispute, that in an appropriate case the Commission can impose a general exclusion order that binds parties and non-parties alike and effectively shifts to would-be importers of potentially infringing articles, as a condition of entry, the burden of establishing noninfringement. The rationale underlying the issuance of general exclusion orders—placing the risk of unfairness associated with a prophylactic order upon potential importers rather than American manufacturers that, vis-a-vis at least some foreign manufacturers and importers, have demonstrated their entitlement to protection from unfair trade practices—applies here [in regard to a limited exclusion order] with increased force.”) (emphasis added) (internal citation omitted).

In the underlying investigation, the ITC determined that the respondents infringed certain claims of the ’031 patent through the importation of the ’031 Accused Products. ID at 37–101. Accordingly, the burden is on Quest to establish that the articles at issue do not infringe any of claims 9–12 of the ’031 patent.

Infringement Analysis

Infringement analysis is a two-step process: (1) determine the scope and meaning of the patent claims asserted; and (2) compare the properly construed claims to the allegedly infringing device.) See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc).

Claim Construction

Two terms in claim 9 of the ’031 patent warrant construction for the purposes of this ruling: “accordion forming a tapered shape” and “foot.”

“Accordion forming a tapered shape”

Claim 9 of the ’031 patent recites “an accordion forming a tapered shape connected to the securing element, the accordion capable of extending outward generally along its axis from the portable media player and retracting back toward the portable media player by collapsing generally along its axis.” For the reasons discussed below, we determine that the phrase “an accordion forming a tapered shape” should be given its plain and ordinary meaning, i.e., “a folding structure having a tapered shape.” We further determine that PopSockets has disclaimed folding structures that are completely linear (lacking a zig-zag shape) in a fully extended configuration or that are not ‘tubular.’

Quest argues that the proper construction of the phrase “accordion forming a tapered shape” is “a structure that progressively narrows towards one end, comprised of thicker wall segments interspersed with thinner, flexible sections that allow the walls to fold parallel to the socket’s longitudinal axis.” Ruling Request at 11. Quest alternatively proposes to find lexicography defining the limitation as “cylindrical or conical membranes with hinges capable of flexing as the accordion moves.” See Quest Post-Proceeding Submission at 12–14.

PopSockets takes the position that the term has a readily apparent meaning that does not require express construction, Tr. 62:13–20, but when pressed accepted that its construction in the inter partes review amounted to “a tapered structure having pleated folds.” Tr. 68:11–12.

With respect to Quest’s argument limiting the construction of an “accordion forming a tapered shape” to a structure with “thicker wall segments interspersed with thinner, flexible sections” we find Quest’s construction presumptively incorrect in view of claim differentiation. Claim differentiation is a “presumption [that] can be overcome only where a contrary construction is ‘dictated’—i.e., compelled—by the written description or prosecution history.” E.g., Marine Polymer Techs., Inc. v. HemCon, Inc., 672 F.3d 1350, 1368 (Fed. Cir. 2012) (en banc) (Dyk, J. dissenting) (internal citations omitted). “[T]he doctrine is at its strongest ‘where the limitation sought to be ‘read into’ an independent claim already appears in a dependent claim.’” Seachange Int’l, Inc. v. C-COR Inc., 413 F.3d 1361, 1368–69 (Fed. Cir. 2005). Claim 10 depends from claim 9 and recites “[t]he socket of claim 9 wherein the accordion comprises rigid walls interspersed with flexural hinges.” The ITC found a publication defining “‘living hinge,’” describing “‘thin sections of plastic,’” “support[ed] PopSockets’ proposed construction . . . [of] the claim term ‘flexural hinges’ . . . its plain and ordinary meaning, i.e., ‘hinges capable of flexing as the accordion moves.’” Claim 12 depends from claim 9 and recites “[t]he socket of claim 11 wherein the accordion is formed of a polyester-based thermoplastic polyurethane elastomer, the walls are about 1 to 2 mm thick and 2 to 4 mm long, and the flexural hinges are about 0.2 to 0.4 mm thick and 1 to 2 mm long.” Quest has failed to explain how its construction of “thinner, flexible sections” is different from claim 10’s further limitation of “flexural hinges.” See PopSockets Post-Proceeding Submission at 2. While Quest’s post-proceeding brief maintains that “a ‘thinner, flexible section’ is not necessarily a hinge,” its entire analysis concerns limiting the claim term to structures expressly described in the specification as flexural hinges. See Quest Post-Proceeding Submission at 9–14 (arguing that claim differentiation does not apply without explaining the difference between a “flexural hinge” and a “thinner, flexible section”); see also Quest Reply at 5–6 (same). Quest also notes that claim 10 has the additional requirement of “rigid walls,” but its own construction likewise implies that the “thicker wall segments” must be more rigid than the “thinner, flexible sections.” See Quest Reply at 6 (emphasis added). Accordingly, the presumption of claim differentiation applies.

Furthermore, the specification confirms that the ordinary meaning of “accordion forming a tapered shape” does not require “thicker wall segments, interspersed with thinner, flexible sections” because doing so would exclude a preferred embodiment. The canons of claim differentiation and of construing claims to encompass preferred embodiments are nigh-irrebutable in combination. See Inline Plastics Corp. v. EasyPak, LLC, 799 F.3d 1364, 1371 (Fed. Cir. 2015); Mems Tech. Berhad v. ITC, 447 Fed. Appx. 142, 151 (Fed. Cir. 2011). First, the embodiment of Fig. 3B is contrasted with the accordion of Fig. 3A; Fig. 3A is labeled with flexural hinges; Fig. 3B is not. The ’031 patent, 5:48–58. Second, the ’031 patent explicitly incorporates by reference an accordion of “uniform gauge.” The ’031 Patent, 5:39–43 (“folding section 29 [of accordion 2] could be configured similarly to the bendable portion of a bendable straw or Slinky® Pop Toob as shown in FIG. 3B. (see for example US. Pat. Nos. 2,094,268 and 4,846,510, incorporated herein by reference).”); U.S. Patent No. 4,846,510, 2:9–11 (“pleated accordion fold configuration formed from a semi-rigid but resiliently flexible materials of substantially uniform gauge…”); see PopSockets Post-Proceeding Submission at 3–4. Quest points out that the ’510 patent discloses a “hinged connection” of “pleats” and “crowns” that may not describe the SPINPOP, but the point is that requiring “thicker wall segments” and “thinner, flexible sections” would exclude the embodiment’s “uniform gauge.” See Quest Post-Proceeding Submission at 21–22. Third, the incorporated ’268 patent also appears to disclose an accordion of uniform width insofar as it teaches taking a “modern soda straw” or, alternatively, “a flat strip,” and corrugating it. See 2:17–50, Fig. 2; cf. In re Wright, 569 F.2d 1124, 1127 (CCPA 1977) (proportions of drawings may be considered if the description so implies). Accordingly, claim differentiation should be applied to capture the full range of embodiments disclosed in the specification.

Quest further argues that the repeated references to embodiments having flexural hinges in the specification constitute “‘the only description [of the claim term] [] in the patents in suit.’” Post-Proceeding Submission at 11 (quoting Meds. Co. v. Mylan, Inc., 853 F.3d 1296, 1309 (Fed. Cir. 2017)); see Ruling Request at 20. Quest notes that in the Summary of the Invention, “sockets generally include extending elements, called ‘accordions,’ comprising cylindrical or conical membranes with flexural hinges having feet at their distal ends.” The ’031 patent 1:45–48; Quest Post-Proceeding Submission at 9–10. Quest also notes the presence of “relatively rigid walls . . . interspersed with flexural (or ‘living’) hinges” in Figure 3A. The ’031 Patent, 5:50–53; Quest Post-Proceeding Submission at 10. Quest also cites the description of Figure 5, in which the “‘flipper walls’” are several times thicker than the “‘flexural hinges.’” The ’031 Patent, 6:25–31; Quest Post-Proceeding Submission at 10.

First, in view of the foregoing discussion of the preferred embodiment excluded by Quest’s construction, the ’031 patent discloses accordions lacking flexural hinges. Second, as a rule, “claims are not typically limited to the embodiments disclosed in the specification, even when just one such embodiment (or type of embodiment) is disclosed.” Ruckus Wireless, Inc. v. Innovative Wireless Sols., LLC, 824 F.3d 999, 1009 (Fed. Cir. 2016); PopSockets Response at 16. Third, the result Quest seeks is not compelled by Mylan, where, “critically,” the patentee “relied on” the preferred embodiment to overcome a prior art rejection of a product-by-process claim. 853 F.3d at 1305, 1309. See PopSockets Post-Proceeding Submission at 4–5. Accordingly, the presumptions of claim differentiation, and of construction to encompass embodiments, rule out Quest’s proposed “[t]hicker wall segments interspersed with thinner, flexible sections” limitation from the ordinary meaning of “accordion forming a tapered shape.”

Finally, “Quest submits that its position is further supported by cases following Mylan,” citing IYM Techs. LLC v. Advanced Micro Devices, Inc., No. 16-cv-649-GMS, 2017 U.S. Dist. LEXIS 182980, *1–3 n.1 (D. Del. Oct. 27, 2017). Quest Post-Proceeding Submission at 18. IYM does not compel the result Quest seeks. In IYM, the Court limited “system of initial constraints” to “linear equations,” because at least (1) “Plaintiff was unable to point to one place in the specification or embodiments that teach nonlinear equations,” and (2) the claim language referred to antecedent “coordinate variables,” which are found in linear equations. Id. In contrast, here (1) the specification does disclose embodiments of uniform width; and (2) the claim language of dependence implies that an accordion does not necessarily have flexural hinges.

Quest also argues that its expert declaration supports its construction. Quest Post-Proceeding Submission at 11–12; Quest Reply at 6–7. Dr. Vallee’s entire analysis comprises the statement that “a musical accordion uses a pattern of thicker, more rigid walls or sections interspersed with thinner, flexible walls or sections as its folding mechanism.” Vallee Dec. ¶ 54. Dr. Vallee is not an expert in musical instruments. See Vallee CV. Nor does the picture of the accordion from the dictionary cited by the parties in the inter partes review support his proposition:
See id.; see also PopSockets Response at 22–23. Even assuming that Dr. Vallee is factually correct, he fails to explain why the specification would lead a person of ordinary skill to interpret this particular feature (flexural hinges) from this particular disclosure (the definition of a musical accordion) as limiting the claim. In fact, before the PTAB, albeit under the broadest reasonable interpretation standard, Dr. Vallee alluded to a “more general engineering definition” of accordion that did not require flexural hinges since in his view “[t]he specification of the ’031 patent does not define this limitation.” Vallee IPR Dec. (PopSockets Ex. C) ¶ 42. Even if the flexural hinges of a musical accordion were salient to interpreting the claim, it would still be erroneous to import a limitation contradicted by the intrinsic evidence, namely the non-flexurally-hinged embodiments expressed in the specification and implied by claim differentiation.

Moreover, assuming, as Dr. Vallee does, that PopSockets’s construction in its Patent Owner Preliminary Response, “a structure with pleated folds so as to collapse like the bellows of a musical accordion,” citing the same dictionary Quest had cited in its petition for inter partes review in support, constitutes a disclaimer, PopSockets’s arguments concerned pleats as the structure and mechanism of collapse and never mentioned relative thickness or distinguished prior art for want of flexural hinges. See PopSockets Sur-Reply at 4 n.2; Vallee Dec. ¶ 38; see also Quest Reply at 7 n.2 (describing PopSockets’s characterization of the dictionary drawing in the inter partes review without mentioning hinges or relative thickness). In fact, before the PTAB, PopSockets took great pains to refute Quest’s arguments to import such a limitation. PopSockets Reply at 23 (citing Patent Owner Preliminary Response at 18–22).

Quest also notes that PopSockets’s domestic industry product has walls of varying thickness but fails to explain the relevance of that fact. See Quest Post-Proceeding Submission at 11–12; Ruling Request at 12.

Quest observes that PopSockets described flexural hinges as “thin” before the ITC. ID at 37; Quest Post-Proceeding Submission at 10. Quest does not assert that this statement is entitled to judicial or collateral estoppel, but in any case consistency does not demand that this characterization of a dependent claim be imported to its parent.

With respect to Quest’s argument limiting the construction of an “accordion forming a tapered shape” to “walls that fold parallel to the socket’s longitudinal axis” we once again find Quest’s construction presumptively incorrect in view of claim differentiation. Claim differentiation is a “presumption can be overcome only where a contrary construction is ‘dictated’—i.e., compelled—by the written description or prosecution history.” E.g., Marine Polymer Techs., Inc. v. HemCon, Inc., 672 F.3d 1350, 1368 (Fed. Cir. 2012) (en banc) (Dyk, J. dissenting). “[T]he doctrine is at its strongest ‘where the limitation sought to be ‘read into’ an independent claim already appears in a dependent claim.’” Seachange Int’l, Inc. v. C-COR Inc., 413 F.3d 1361, 1368–69 (Fed. Cir. 2005). Claim 11 depends from claim 9 and recites “[t]he socket of claim 10 wherein the tapered shape comprises a cone shape constructed and arranged such that the walls generally fold parallel to the axis of the accordion when the accordion is collapsed.” While Quest is correct that in Wi-LAN USA, Inc. v. Apple Inc., 830 F.3d 1374, 1391–1392 (Fed. Cir. 2016), the Federal Circuit explained that claim differentiation is rebuttable and in SunRace Roots Enter. Co., Ltd. v. SRAM Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003), the Federal Circuit noted that the “presumption is especially strong when the limitation in dispute is the only meaningful difference between an independent and dependent claim,” which may not be the case here insofar as claim 11 also recites the limitations of claim 10 as well as the requirement of a “cone shape,” see Quest Post-Proceeding Brief at 16–17; Quest Reply at 7–8, the presumption still indisputably applies. Oral Arg. Tr. at 40:21–22 (conceding that claim differentiation does not require the absence of other meaningful differences).

Furthermore, the specification confirms that the ordinary meaning of “accordion forming a tapered shape” does not require “walls that fold parallel to the socket’s longitudinal axis” because doing so would exclude a preferred embodiment. The canons of claim differentiation and of construing claims to encompass preferred embodiments are nigh-irrebutable in combination. See Inline Plastics Corp. v. EasyPak, LLC, 799 F.3d 1364, 1371 (Fed. Cir. 2015); Mems Tech. Berhad v. ITC, 447 Fed. Appx. 142, 151 (Fed. Cir. 2011). The walls “stack[] on top of one another [in] the case with the embodiment of FIG. 3B.” The ’031 Patent, 5:59–62. Quest concedes that “the Figure 3B embodiment does allow walls to stack on top of one another.” Quest Post-Proceeding Submission at 15; Quest Reply at 8 (observing the “accordion of Figure 3B with non-parallel folding walls”). The fact that “[t]he specification further states that ‘the structure in Figure 3A forms a cone that ‘allows walls 8, 10, 11, 12 to fold next to one another (as shown in FIG. 5) rather than stacking on top of one another as is the case with the embodiment of [Figure] 3B,’” plainly states that a conical shape “allows” rather than requires parallel folding, contrary to Quest’s suggestion. Quest Post-Proceeding Submission at 15.

Quest argues that embodiments of “an accordion forming a tapered shape” that do not have “walls that fold parallel to the socket’s longitudinal axis” were disclaimed during prosecution. Quest quotes the applicant’s distinction between the claims and a prior art reference whose “‘walls are not capable of folding parallel to its axis.’” Quest Post-Proceeding Submission at 15 (quoting Reply to Office Action of May 13, 2013, at 9 (August 5, 2013)). But what Quest fails to mention is that this argument was made only in respect of claims 2, 3, 10, 11, 16, and 17, all of which require “flexural hinges,” unlike claim 9. See Reply of August 5, 2013, at 8–9. In fact, the applicant argued claim 9 separately, noting only that the prior art “can’t extend outward along its axis away from the case body and retract back toward the case body by collapsing along its axis.” Id.; see Patent Owner Response at 17–18.

Quest also cites the amendment of August 5, 2013, which added the “forming a tapered shape language,” and argues that “the applicant disavowed the [Figure 3B] embodiment by amending the claims to expressly require a tapered shape.” Quest Post-Proceeding Submission at 15–18; Quest Reply at 8–9; Ruling Request at 19–20. Quest’s argument misstates the law of disclaimer, which applies to claims, not disclosure. A decision by the patentee to add by amendment a claimed element not found in the prior art will not, without more, preclude structures in such prior art from embodying, in some augmented form, such amended element. See Mems Tech. Berhad v. ITC, 447 Fed. Appx. 142, 152 (Fed. Cir. 2011) (“MemsTech characterizes the applicant’s argument as an attempt to distinguish Cote as lacking a direct electrical connection. As the above passage demonstrates, however, the applicant [merely] distinguished Cote based on the fact that Cote [lacked a specific claim element.]”); SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1349 (Fed. Cir. 2016) (“ComplementSoft would [improperly] have us exclude object-oriented languages altogether—even when implemented with embedded data manipulation code using Structured Query Language (‘SQL’)—because the prior art Coad patent the patentee distinguished during prosecution discussed object-oriented languages.”) The applicant carefully chose to add language requiring “a tapered shape,” which was acceptable to the examiner without removing the folding portion of the accordion of Figure 3B from the specification or requiring the parallel folding language of dependent claim 11. Notwithstanding what Quest considers “the obvious implication of the amendment,” the applicant did not clearly and unmistakably disavow non-parallel-folding accordions. See, e.g., MIT v. Shire Pharms. Inc., 839 F.3d 1111, 1118–19 (Fed. Cir. 2016) (unambiguous disclaimer required for prosecution history to limit claims beyond their ordinary meaning).

Quest alternatively proposes construing “accordion” as comprising “cylindrical or conical membranes with hinges capable of flexing as the accordion moves.” Quest Post-Proceeding Submission at 12–13. Quest notes that the Summary of the Invention reads that: “The sockets generally include extending elements, called ‘accordions,’ comprising cylindrical or conical membranes with flexural hinges having feet at their distal ends.” The ‘031 patent, 1:45–48; Quest Post-Proceeding Submission at 12. Quest then substitutes “flexural hinges” for “hinges capable of flexing as the accordion moves,” based on the ITC’s construction of same. See ID at 37; Quest Post-Proceeding Submission at 13. Quest notes “that a term in the specification ‘set off by quotation marks [is] often a strong indication that what follows is a definition.’” Quest Post-Proceeding Submission at 12 (quoting Sinorgchem Co., Shandong v. ITC, 511 F.3d 1132, 1136 (Fed. Cir. 2007)).

“The standards for finding lexicography . . . are exacting . . . [and] must clearly set forth a definition of the disputed claim term and clearly express an intent to redefine the term.” E.g., MPHJ Tech. Invs., LLC v. Ricoh Americas Corp., 847 F.3d 1363, 1374 (Fed. Cir. 2017) (internal quotations omitted). Critically, unlike in Sinorgchem, where the patent made repeated and consistent references to the definitional statement, see 511 F.3d at 1136 (noting that “elsewhere in the same paragraph the specification again refers to [the definition of ‘a controlled amount’ as] 4%”), the ’031 patent describes accordion more loosely. See The ’031 patent at 2:6–7 (“[E]xtending elements may comprise accordions, including flexural hinges interspersed with walls”); PopSockets Post-Proceeding Submission at 8 (noting that such latter statement adds the requirement of “walls” while making no reference to “feet” or “cylindrical or conical membranes”). “The specification of the ’031 patent does not define this limitation.” Vallee IPR Dec. ¶ 42.

Quest also notes that the principle of Sinorgchem “has been applied in numerous cases.” Quest Post-Proceeding Submission at 12 (citing Netscape Communs. Corp. v. Valueclick, Inc., 684 F. Supp. 2d 678 (E.D. Va. 2009); Vapor Point LLC v. Moorhead, No. 4:11-CV-4639, 2013 U.S. Dist. LEXIS 190430 (Dec. 18, 2018); Oracle Corp. v. Druglogic, Inc., No. 11-00910 JCS, 2012 U.S. Dist. LEXIS 118405 (N.D. Cal. Aug. 21, 2012); Sun Microsystems, Inc. v. Network Appliance, No. C-08-01641 EDL, 2009 U.S. Dist. LEXIS 48209 (N.D. Cal. May 21, 2009)). In Netscape, the Court relied on “(ii) the patentee's use of the word ‘are,’” while the ’031 patent uses no such language of equivalence. See 684 F. Supp. at 688. In Vapor Point, the Court noted that the patent specifically stated what the term “‘means.’” 2013 U.S. Dist. LEXIS 190430, at *38 (citing Abbott Labs. v. Andrx Pharms., Inc., 473 F.3d 1196, 1210 (Fed. Cir. 2007)). In Oracle Corp., “the Court relie[d] on several factors,” including the use of the words “that is,” the rule against superfluous claim language, and consistent usage in the specification, none of which support Quest’s argument here. See 2012 U.S. Dist. LEXIS 118405, at *27–31. Finally, in Sun Microsystems, the Court noted that “the passage explicitly uses the word ‘defines.’” 2009 U.S. Dist. LEXIS 48209, *18–19. Quest’s brief fails to establish that Sinorgchem created a per se rule. See, e.g., Williamson v. Google Inc., No. 15-cv-00966-BLF, 2017 U.S. Dist. LEXIS 118205, *10–13 (N.D. Cal. July 27, 2017) (distinguishing Sinorgchem despite use of quotation marks and use of “includes”).

Quest finally argues that, assuming lexicography, the term “comprising” means that flexural hinges are therefore essential to accordions. Quest Post-Proceeding Submission at 13. While it is true that “‘[c]omprising’ is a term of art used in claim language,” Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) (emphasis added), the general definition of “‘comprising,’ [] is synonymous with ‘including.’” Regeneron Pharms., Inc. v. Merus N.V., 864 F.3d 1343, 1352 (Fed. Cir. 2017). The use of “includes” in lexicography does not exclude unlisted embodiments of the ordinary meaning. See Williamson, 2017 U.S. Dist. LEXIS 118205, at *10–13 (citing Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 957–958 (Fed. Cir. 2014)). Additionally, such a definition would violate claim differentiation with respect to dependent claim 10 by expressly importing “flexural hinges,” even if we were to accept Quest’s distinction between “flexible sections” and “flexural hinges.” PopSockets Post-Proceeding Submission at 8.

Quest also argues in its infringement analysis that the PopSockets’s inter partes review response, proposing “a structure with pleated folds,” limited the claim to accordions with multiple pleats. Quest Post-Proceeding Submission at 20–24. While we agree with Quest that PopSockets’s use of the plural does not impact the proper claim construction and we address the number of folds in our infringement analysis, infra, we clarify that Quest has not identified an unambiguous disclaimer. The ’031 patent repeatedly refers to a preferred embodiment having plural accordions with plural components, using such language broadly. E.g., Abstract (exclusively using plurals); Figs. 1, 2, 4, 10–11; 1:45–48 (“The sockets generally include extending elements, called ‘accordions,’ comprising cylindrical or conical membranes with flexural hinges having feet at their distal ends”); 1:50–51 (“Cavities [plural] in the case [singular] are provided so that the sockets [plural] may collapse”); 1:58–59 (“the sockets further act as stand legs”); 2:18–19 (“A socket [singular] maintains full functionality without the buttons, [plural] and its feet [plural] may . . . ”); 2:39–40 (“The case forms an opening . . . with two socket extensions”). Moreover, PopSockets was never presented with much less distinguished a single-pleat accordion before the examiner or PTAB.

Quest also asserts that “every structure that PopSockets identified in the IPR as illustrative of the claimed accordion exhibits a series of pleats.” Quest Post-Proceeding Submission at 24. However, disclosing multiple pleats inherently discloses a single pleat.

We find that the claims, themselves, and the specification provide sufficient guidance as to the meaning of the phrase “accordion forming a tapered shape.” After the claims themselves, the specification “is the single best guide to the meaning of a disputed term.” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (internal quotations omitted). Each embodiment of an accordion has a “folding portion,” i.e., a folding structure, and the specification describes multiple types folding. See, e.g., ’031 patent, 4:27 (diagram element 29).

“[I]n at least one embodiment, the accordions . . . walls fold[] down next to each other . . . rather than stacking on top of each other.” 2:12–17. “FIG. 3B is a side view of an alternative folding section.” 3:1–2. The “folding portion of accordion” is labeled 29 on the cover page and in Figs. 2, 3A–B, and 4A. When the user pulls on one embodiment, the “accordions 2 unfold and extend outward.” 4:66–5:1. In one embodiment of Figs. 2, 4, and 5, “a folding section 29 compris[es] walls and hinges.” 5:37–38.

“As an alternative, folding section 29 could be configured similarly to the bendable portion of a bendable straw or Slinky® Pop Toob as shown in FIG. 3B. (see for example US. Pat. Nos. 2,094,268 and 4,846,510, incorporated herein by reference).” 5:39–43. “FIG. 3B shows an alternative folding section 29A of accordion 2. In these examples, folding sections 29A comprises flexible membranes including hinges.” 5:56–58.

In figure 3A, “[e]ach accordion 2 includes a folding section 29 comprising a series of relatively rigid walls 10, 11, 12 interspersed with flexural (or “living”) hinges 9, which flex as accordion 2 is collapsed or expanded.” 5:50–53. “In the embodiment of FIG. 3A, accordion 2 forms a cone. This allows walls 8, 10, 11, 12 to fold next to one another (as shown in FIG. 5) rather than stacking on top of one another as is the case with the embodiment of FIG. 3B.” 5:58–62. “Note that flexing of hinges 9 [in Fig. 5] allows walls 10 and 11 to fold up in a generally parallel configuration next to one another, rather than stacking on top of one another.” 6:10–13.

Accordingly, the specification explains: (1) that folding is the mechanism by which the accordion “extend[s] outward generally along its axis from the portable media player and retract[s] back toward the portable media player by collapsing generally along its axis;” and (2) at least two methods of folding are contemplated: parallel and stacking. Thus, consistent with the specification of the ‘031 patent, we determine that the phrase “an accordion forming a tapered shape” should be given its plain and ordinary meaning, i.e., “a folding structure having a tapered shape.”

Nevertheless, we find that certain statements made by PopSockets before the PTAB amount to a clear and unmistakable disavowal of claim scope. Specifically, PopSockets has disclaimed folding structures that are completely linear (lacking a zig-zag shape) in a fully extended configuration or that are not ‘tubular.’

PopSockets states that “based on the ’031 patent and its file history, and consistent with the extrinsic evidence cited in the Petition, the term ‘accordion’ should be construed according to its plain and ordinary meaning in the context of the ’031 patent as: a tubular structure with pleated folds.” Patent Owner Response at 5, IPR2018-00497, Paper 16, (November 13, 2018) (emphasis in original). A statement made in an inter partes review before the PTAB may limit claim scope if it amounts to a “clear and unmistakable” disclaimer. Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1361 (Fed. Cir. 2017). In this instance, PopSockets explicitly limits the term “accordion” to “tubular” configurations. As such PopSockets has disclaimed folding structures that are not ‘tubular.’

PopSockets makes an additional disclaimer when arguing that Grinfas does not anticipate claim 9 of the ’031 patent. Specifically, PopSockets argues that “Grinfas Figs. 7A and 7B do not teach a tubular structure with pleated folds in its expanded configuration. The walls of the expanded configuration shown in Fig. 7A lack the characteristic ‘zig-zag’ shape of accordion bellows; that is to say, they are linear, not pleated.” Patent Owner Response at 26. PopSockets further argues:

Grinfas further reserves the benefit of being “tiltable about a pivot” for its “bellows” embodiment shown in Figs. 8A, 8B, and 8C, Ex. 1005 at 2:20–22. Likewise, the ability to tilt is disclosed as a benefit of the accordion of the ’031 patent. See [the ’031 patent] at 2:7–10 (‘The accordion structures allow the buttons to extend not just straight outward . . . but also to curve away from the outward axis at various oblique angles.’). This ability is grounded in the pleated folds of the accordions. Grinfas describes no tilt capability for the structure depicted in Figs. 7A and 7B. Ex. 2018 ¶ 86.

Id. at 27 (emphasis added).

Thus PopSockets clearly and unambiguously folding structures that are completely linear (lacking a zig-zag shape) in a fully extended configuration. See, e.g., MIT v. Shire Pharms. Inc., 839 F.3d 1111, 1118–19 (Fed. Cir. 2016) (unambiguous disclaimer required for prosecution history to limit claims beyond their ordinary meaning).

In view of the foregoing, we determine that the phrase “an accordion forming a tapered shape” should be given its plain and ordinary meaning, i.e., “a folding structure having a tapered shape.” We further determine that PopSockets has disclaimed folding structures that are completely linear (lacking a zig-zag shape) in a fully extended configuration or that are not ‘tubular.’

“Foot”

Claim 9 recites “a foot disposed at the distal end of the accordion.” Neither party has proposed a construction in their briefing. However, Quest maintains that, whatever it is, “the ‘foot’ must be a separate structure from the ‘accordion’ and separate from the ‘button.’” Quest Post-Proceeding Submission at 27; Quest Reply at 16 (“physically separate from both the accordion and the button”); Ruling Request at 29 (“the ‘foot’ must be a separate structure from the ‘accordion’ and separate from the ‘button.’”). PopSockets acknowledged that the term had a “plain meaning,” consistent with dictionary definitions 9 and 10 from Quest’s inter partes review petition, and suggested that it did not require further construction. Tr. at 75:1–19. While ‘foot’ has multiple lay definitions, we find that the meaning of the phrase “a foot disposed at the distal end of the accordion” as recited in claim 9 of the ’031 patent is properly given its plain and ordinary meaning, i.e., “a structure located at the distal portion of the accordion.”

Starting with the claim language, Quest argues that the rule against superfluity means that the foot must be physically separate from both the accordion of independent claim 9 and the button of claim 13. Quest asserts that “‘where a claim lists elements separately, the clear implication of the claim language is that those elements are distinct components of the patented invention,’” quoting Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010). Quest Post-Proceeding Brief at 27–28. However, in Becton, the Court continued:

The specification, moreover, confirms that the spring means is a separate element from the hinged arm, as the only elements disclosed in the specification as “spring means” for urging the guard forward are separate structures from the hinged arm and its hinges.

616 F.3d at 1254–55 (further parsing of specification omitted). “[T]he test for whether claim elements must be physically separate is . . . whether the specification ‘suggest[s] that the claim terms require separate structures.’” PopSockets Post-Proceeding Submission at 6 (quoting Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1232 (Fed. Cir. 2011)). We hold that the specification forecloses Quest’s construction.

The specification explains that the foot can be “integral” to the accordion and button, providing that “buttons may snap onto the ends of the accordions, be glued on, or be feet integrally formed with the accordions.” The ’031 Patent, 2:10–12. As bears repeating, Becton, 616 F.3d 1249, did not create a per se rule. See Powell, 663 F.3d at 1232. Quest misstates the law when, instead of reconciling the description, it asks us to ignore “that brief passage, with no corresponding description, [which] cannot override this clear requirement.” Quest Post-Proceeding Submission at 29.

To the contrary, as Quest acknowledges, “[t]he terms ‘foot’ or ‘feet’ are never used in relation to the preferred embodiment or in connection with any of the drawings; and, the term foot’ is not even listed in the table of more than 30 elements that appears in column 4 of the ’031 patent.” Quest Post-Proceeding Submission at 27. The specification’s silence is deafening. If the patentee wished to claim a separate structure, he failed to disclose one. Moreover, Quest has not argued that “foot” has any technical meaning in the art, and its own expert accordingly agreed with our construction before the PTAB. Compare Vallee IPR Dec. ¶ 43 (“The term ‘foot’ does not have any particular meaning in mechanical engineering, although in my experience I have seen the term used to describe the base of an object located at its end.”) with Vallee Dec. ¶ 55 (“I have also been asked to assume that the claimed ‘foot’ is a structure that is separate from both the ‘accordion’ and ‘button’ elements.”) (emphasis added); see PopSockets Reply at 21; see also PopSockets Response at 21. Accordingly, Quest’s construction would exclude every embodiment, and, accordingly, to the extent the claim language is ambiguous, would violate the canon of construing claims within their written description support. If, “[b]ased on the context of the claims and the lack of a discussion of a foot in the specification, the term ‘foot’ is ambiguous in claim 9,” as Quest argued (as its broadest reasonable construction before the PTAB, which essentially agrees with ours), then it would make more sense to apply the validity canon than a canon based on “claim structure.” See Pet. at 19; Quest Post-Proceeding Submission at 29. To reiterate, the canons of claim construction, such as the rule against superfluity, can all be overridden by clear evidence in the specification, and in this case several canons (exclusion of preferred embodiment, validity under § 112) cut against Quest’s contentions.

Far from creating redundancy, our construction reconciles claim 13 with the language of the specification and the preferred embodiments (all of the drawings contain buttons and none have a labeled foot), since it would construe claim 13 as: “The socket of claim 12 further comprising a button attached to a structure at the distal end of the accordion, the button formed of a rigid material and extending radially past a structure at the distal end of the accordion.”

Furthermore, we fail to see the relevance of Quest’s assertions that disposed means “placed, distributed, or arranged,” Ruling Request at 30 (citing Glick v. U.S. Toy Co., Inc., No. 01-cv-0260, 2001 U.S. Dist. LEXIS 26462, *6 (W.D. Mo. Nov. 19, 2001); the ’031 patent 2:64–65, 3:21–23; 6, 13–14); see PopSockets Reply at 20, or that certain preferred embodiments (other than the “integral” embodiment) depict a button that is manufactured separately until “snapped” or “glued” to the accordion, Ruling Request at 30 (citing the ’031 patent 2:10–12) (emphasis added). Surely the patent’s express description of the foot trumps Quest’s attempted corpus linguistics project, which also fails to disprove that ‘disposed’ can refer to the spatial relationship between parts of a structure as much as between multiple structures. Nor do we see the merit in the use of the word “having” implying a separate structure. See PopSockets Post-Proceeding Submission at 6 (quoting Quest Reply at 16 (noting that “[i]t is undisputed that” an accordion may “have” folds)).

Finally, while Quest is correct that the ITC recognized the foot as a “distinct element,” nothing in the ALJ’s analysis, which never construed the term, held that it must be a separate structure. See Quest Post-Proceeding Submission at 27–28.

Accordingly, we find that the meaning of the phrase “a foot disposed at the distal end of the accordion” as recited in claim 9 of the ’031 patent is properly given its plain and ordinary meaning, i.e., “a structure located at the distal portion of the accordion.”

Comparing the Article at Issue to the Claims

Infringement Overview

To establish literal infringement, every limitation recited in a claim must be found in the accused product whereas, under the doctrine of equivalents, infringement occurs when there is equivalence between the elements of the accused product and the claimed elements of the patented invention. Microsoft Corp. v. GeoTag, Inc., 817 F.3d 1305, 1313 (Fed. Cir. 2016).

With respect to infringement, Quest is “only disputing the limitations that [it has] put in [its] briefs.” Tr. at 14:10–15:23. For purposes of this proceeding, Quest concedes that article is “a socket for attaching a portable media player or portable media player case,” “include[s] a securing element for attaching the socket to the back of the portable media player or portable media player case,” and is “capable of extending outward generally along its axis from the portable media player and retracting back towards the portable media player by collapsing generally along its axis.” Id.

As set forth in the claim chart below, the article at issue meets every claim limitation of claim 9 of the ’031 patent. Accordingly, the article at issue literally infringes claim 9 of the ’031 patent.

Claim 9 of the ’031 patent Article in Question  9. A socket for attaching to a portable media player or to a portable media player case, comprising: Quest does not dispute that this limitation is met by the article at issue. Tr. at 14:10–15:23.

Quest describes the article at issue as a “collapsible and expandable device designed to be mounted on mobile phones or similar products.” Ruling Request at 13.

Accordingly, by Quest’s own admission, the article at issue is a socket for attaching to a portable media player or to a portable media player case, and thus meets this claim limitation.  a securing element for attaching the socket to the back of the portable media player or portable media player case; and Quest does not dispute that this limitation is met by the article at issue. Tr. at 14:10–15:23.

A visual inspection of a sample of the article at issue provided by Quest (Srour Ex. 1) revealed a clear adhesive element with a clear plastic cover on the bottom surface of the article at issue, as indicated below with the arrow in red:







As such, the cover of the adhesive element can be peeled off and the article at issue can be secured to the back of the portable media player or portable media player case via the adhesive element.

Accordingly, the adhesive element of the article at issue is a securing element for attaching the socket to the back of the portable media player or portable media player case.  an accordion forming a tapered shape connected to the securing element, We construe “accordion forming a tapered shape” to have the ordinary meaning “folding structure having a tapered shape.”

As discussed in great detail below in Section III.D.2.b, we find that the article at issue meets this limitation as the “cover” portion of the article at issue is a folding structure that that has a tapered shape.  the accordion capable of extending outward generally along its axis from the portable media player and retracting back toward the portable media player by collapsing generally along its axis; and Quest does not dispute that this limitation is met by the article at issue. Tr. at 14:10–15:23.

The photo below shows the accordion in a position in which it extends outward generally along its axis:




And the photo below shows the accordion in a position in which is retracted back toward the end of the socket that includes the securing element for attaching the socket to the back of the portable media player or portable media player case, by collapsing generally along its axis:




Accordingly, the photos above illustrate that this claim limitation is met by the article in question, as the accordion of the article in question is capable of extending outward generally along its axis from the portable media player and retracting back toward the portable media player (that would be attached to the socket by the securing element) by collapsing generally along its axis.  a foot disposed at the distal end of the accordion. We construe the phrase “a foot disposed at the distal end of the accordion” in accordance with its plain and ordinary meaning, i.e., “a structure located at the distal portion of the accordion.”

As discussed in great detail below in Section III.D.2.c, we find that the article at issue meets this limitation.   “An accordion forming a tapered shape”

As explained above, we construe “accordion forming a tapered shape” to have the ordinary meaning “folding structure having a tapered shape” with structures that are completely linear (lacking a zig-zag shape) in a fully extended configuration or that are not ‘tubular’ being disclaimed. We find that Quest has failed to prove, by a preponderance of the evidence, that the article at issue fail to satisfy the properly construed limitation.

Extended State Collapsed State (cut-away)  

 Ruling Request at 14 Vallee Dec. at ¶ 48   The table above shows the article at issue in an extended state on the left, and a collapsed state on the right. The collapsed state is a cut-away view, in which it is readily apparent that the article at issue folds in on itself at least four times. Furthermore, such folds are visible on the extended socket, and are therefore not the type of completely linear structure that was disclaimed by PopSockets. Finally, to the extent oblique folding evinces a properly construed accordion “(though not necessarily stable while tilted,)” Patent Preliminary Owner Response at 28, PopSockets’s expert confirms such a functionality:



 PopSockets Response at 26 (citing Babock Dec. ¶¶ 32–33) ’031 Patent Figure 9   Finally, visual inspection confirms that the folding structure of the article at issue has a tapered shape because it is wider at its distal end and narrower at the end connected to its securing element, with a profile that gradually closes in, albeit in a ‘zig-zag’ manner. We likewise see no reason why the structure is not ‘tubular.’

Accordingly, we find that the article at issue includes a folding structure having a tapered shape, and therefore meets the limitation in claim 9 of “an accordion forming a tapered shape.”

Quest raises several arguments that it has demonstrated noninfringement of the “accordion forming a tapered shape” element. First, Quest notes that the walls of the article at issue have uniform thickness. Ruling Request at 21; Quest Reply at 10; Quest Post-Proceeding Submission at 19. However, the properly construed claim has no requirement of varying thickness. See part D.1.a., supra.

Second, Quest alleges that the article at issue does not have walls that fold parallel to the longitudinal axis. Ruling Request at 22; Quest Reply at 10; Quest Post-Proceeding Submission at 19. However, the properly construed claim does not require parallel folding and, even if it did, Quest’s description of the article at issue as “deform[ed]” and “curled” around an “inflection point” does little to meet its burden of proof when its expert’s cut-away reveals the four aforementioned folds defining a silhouette of five lines parallel to the longitudinal axis of the article at issue. See Ruling Request at 22–23; see also PopSockets Response at 23–25; PopSockets Supplemental Infringement Contentions (Quest Ex. 8) at 9–10 (accusing the SPINPOP® collapsible socket of infringing claim 11). We are likewise unconvinced by Quest’s attempt to deny the obvious by pointing to the rule that factfinders may ignore unpersuasive or “wholly conclusive” expert testimony, see Quest Reply at 12–13, or what the photos of the collapsed article at issue’s cross section (pictured in our analysis above) “plainly belie.” See Quest Post-Proceeding Submission at 20. We likewise see no merit in Quest’s mathematically impossible demand for the walls to fold strictly, as opposed to “generally[,] parallel[ly].” See Quest Post-Proceeding Submission at 20. Moreover, as discussed in the following paragraph, it does not matter whether infringement of the accordion element cannot be shown “merely by exhibiting folds in its collapsed state.” See Quest Reply at 14; PopSockets Sur-Reply at 11.

Third, Quest alleges that the expanded article at issue does not have folds in its expanded configuration, as required by PopSockets’s disclaimer in the inter partes review (except Quest does not go so far as to call the argument a disclaimer). Ruling Request at 22–24; Quest Reply at 10–11. However, as shown above, the expanded article at issue has a silhouette defined by two lightning-bolt-shaped lines with at least two folds, notwithstanding Quest’s labeling of such as a “narrow” and “wider regions.” See PopSockets Response at 23–24. Again, we are likewise unconvinced by PopSockets’s attempt to deny the obvious by pointing to the rule that factfinders may ignore unpersuasive or “wholly conclusive” expert testimony. See Quest Reply at 11–12. Instead, it is Quest’s argument that the expanded article at issue does not resemble Figure 3A (both pictured above in our analysis) that is unpersuasive. See Quest Reply at 12.

Fourth, Quest argues that the article at issue cannot bend at oblique angles, also based its argument (which we reject, see part D.1.a., supra) that PopSockets’s patent owner preliminary response disclaimed non-oblique-folding embodiments. Ruling Request at 24–25; Quest Reply at 15. However, even if such functionality were required by the claim, PopSockets’s expert was able to tilt the article at issue using his thumb and index finger (pictured in our analysis above and below), notwithstanding whether the spring and uniform thickness cause it to revert to a straightened position. See PopSockets Response at 26 (citing Babock Dec. ¶¶ 32–33). Quest’s assertions that the spring will force the product into an upright position misses the point that instability in the tilted position was expressly not disclaimed, see Patent Owner Preliminary Response at 28 “(though not necessarily stable while tilted,)” and its allegation that oblique folding may be due to the article at issue’s “elastomeric properties” fails to carry its burden of proof, or even rule out that the bending also results from folding, much less refute the remaining evidence that the wall of the article at issue is a folding structure. See Quest Reply at 15. Mr. Babock’s picture of the tilted article at issue implies that the wall folds at sharper angles on the left, compressed side than on the right:




Babock Dec. ¶ 33.

Fifth, Quest argues that the article at issue does not meet PopSockets’s claim construction from the inter partes review, “collaps[able] like the bellows of a musical accordion,” because it only has two positions: fully collapsed and locked in place or fully extended. However, as discussed, such statement in the Patent Owner Preliminary Response was not a disclaimer and in fact the Patent Owner Preliminary Response actively argued against Quest’s construction of “selectively extending” as requiring one or more intermediate positions. Patent Owner Preliminary Response at 22–24. Moreover, PopSockets’s expert (and the IPR Branch’s own tactile inspection of the physical sample of Srour Ex. 1 and disassembled sample of Vallee Ex. 4) reveals that the SPINPOP has a natural gravity towards an intermediate position (pictured below), with or without the spring, which also further confirms that it has at least as many folds as positions. See PopSockets Response at 27 (citing Babock Dec. ¶¶ 35–38):




see also Tr. at 57:15–1, 85:2–7 (discussing the article at issue’s cover’s predictable, multi-stage folding mechanism).

Sixth, Quest argues that the article at issue does not fold but “deflects, bends, and bulges at various locations when the device is pressed to collapse. Ruling Request at 26–28; Quest Reply at 14–15; Quest Post-Proceeding Submission at 19, 25–26. However, we do not find Quest’s picture of the cross section of an irregularly partially folded SPINPOP persuasive insofar as it fails to explain the impact of slicing the accused accordion open upon its mechanism of collapse:





See Ruling Request at 26. In fact, in the two pictures provided by Quest to show its irregular collapse, the uncut article at issue on the left appears substantially more regular. Moreover, Quest admits that the walls predictably fold with “the two wider regions deflect[ing] around the narrower diameter region.” Ruling Request at 22. Quest even suggests that the spring “make[s] the collapse more [but apparently insufficiently] uniform.” Ruling Request at 28; see Quest Reply at 15 (alleging “the spring’s integral role in the SPINPOP’s collapse”); Quest Post-Proceeding Submission at 25 (same). In any event, the walls of the article at issue can be folded and unfolded into visually identical expanded, collapsed, and intermediate positions with or without the spring. See Tr. at 57:15–19 (Quest admission); 85:2–7 (PopSockets argument; see also PopSockets Response at 23–28 (citing Babock Dec. ¶¶ 33–41). Needless to say, Quest does not dispute the “black letter” proposition that adding even patentable features to a patented article will not avoid infringement. See Tr. at 58:1–7.

Seventh, Quest reiterates its argument of noninfringement by reason of uniform thickness based on the alternative claim construction argument (as part of its infringement analysis) of limiting the element to the definition of a musical accordion. Ruling Request at 28. However, the dictionary definition Quest cites neither binds Customs nor requires flexural hinges (or even variable width). See PopSockets Reply at 22–23.

Eight, Quest argues that the article at issue cannot infringe because it does not have “multiple pleats” (folds) and reiterates its argument that folds cannot be demonstrated merely by examining the SPINPOP in a collapsed position. See Quest Post-Proceeding Submission at 23–25. However, as discussed in our claim construction analysis, multiple folds are neither required by the specification nor disclaimer, and, as discussed in our infringement analysis (in our response in particular to Quest arguments two, three, and six), the article at issue has multiple folds in its expanded and collapsed positions. See PopSockets Post-Proceeding Submission at 10.

In view of the foregoing, we find that the article at issue includes a folding structure having a tapered shape, and therefore meets the limitation in claim 9 of “an accordion forming a tapered shape.”

“A foot disposed at the distal end of the accordion”

We construe the phrase “a foot disposed at the distal end of the accordion” as recited in claim 9 of the ’031 patent in accordance with its plain and ordinary meaning, i.e., “a structure located at the distal portion of the accordion.” As discussed above, we find that the “cover” portion of the article at issue meets the limitation of an accordion forming a tapered shape. The cover portion has a longitudinal axis and a distal end, opposite the securing element. As shown in the annotated figure, below, the article at issue includes a structure located at the distal portion of the accordion.




Quest notes that PopSockets suggested that the foot is “a structure that ‘form[s] stands legs . . . for propping’ [a] portable device player.” Quest Post-Proceeding Submission at 30 n.12. We note that the packaging for the article at issue, such as the physical sample of Srour Ex. 1 or the Supplemental Infringement Contentions of Ruling Request Ex. 8 (pictured below) advertise such a functionality.




We also observe that the wall of the article at issued remains rigid enough to prop up a portable media player, as construed, even with the spring and top disk removed.

Quest also argues that, assuming that the foot must be a separate structure from both the accordion and the button, the top disc of the article at issue cannot be a foot because PopSockets accused it of satisfying the button limitation of claim 13 in a pending lawsuit. See Ruling Request at 31. However, under the proper construction, PopSockets cannot possibly be estopped, first because the foot need not be separate from the button, and, second, because the foot is part of the accordion. Furthermore, PopSockets’s contention was made in court, not the patent office, and therefore Quest would have to argue estoppel, which, first, it has not demonstrated applies to the United States, and, second, would require Quest’s position to be adjudged, and the Southern District of New York has yet to engage in claim construction or infringement analysis. Cf., e.g., ArcelorMittal Atlantique et Lorraine v. AK Steel Corp., No. 17-1637, 2018 U.S. App. LEXIS 32232, *11 (Fed Cir. Oct. 5, 2018) (discussing requirements). Collateral estoppel is inappropriate for the additional reason that a finding of infringement of a dependent claim cannot possibly be interpreted as a finding of noninfringement of its parent. In fact, the Supplemental Infringement Contentions also specifically accuse the article at issue of infringing claim 9. Which is to say that even if somehow subject to estoppel PopSockets never made the argument that the foot must be a separate structure from the accordion.

The ITC did not analyze whether the foot of the accused products was a separate structure either. See, e.g., ID at 37–41.

In view of the foregoing, we find that the article at issue includes a Structure located at the distal portion of the accordion, and therefore meets the limitation in claim 9 of “a foot disposed at the distal end of the accordion.”

IV HOLDING:

We find that Quest has not met its burden to establish that the SPINPOP® collapsible socket, i.e., the article at issue, does not infringe the intellectual property at issue in the 1056 GEO (i.e. claims 9–12 of U.S. Patent No. 8,560,031). Specifically, the article at issue meets all the limitations of at least independent claim 9 of the ’031 patent, and Quest has not met its burden to establish that the article at issue does not infringe that claim. Accordingly, we hold that the article at issue are subject to the 1056 GEO.

Accordingly, the article at issue is prohibited from entry for consumption into the United States, entry for consumption from a foreign-trade zone, or withdrawal from a warehouse for consumption except as provided by law.

The decision is limited to the specific facts set forth herein. If the SPINPOP® collapsible sockets differ in any material way from the articles at issue described above, or if future importations vary from the facts stipulated to herein, this decision shall not be binding on CBP as provided for in 19 C.F.R. Part 177.2(b)(1), (2), and (4), Part 177.9(b)(1) and (2).

Sincerely,

Charles R. Steuart
Chief, Intellectual Property Rights Branch


cc. Benjamin T. Horton
Marshall, Gerstein & Borun LLP
233 South Wacker Drive
6300 Willis Tower
Chicago, IL 60606-6357
[email protected]