• HQ H320288
• Mar 29, 2022

• Type : 19 U.S.C. § 1337; Unfair Competition • HTSUS :
•  Related:   H315228; H315842   

OT:RR:BSTC:EOE H320288 WMW

Mr. Gary M. Hnath
Mayer Brown LLP
1999 K Street NW
Washington, D.C. 20006-1101

VIA EMAIL: [email protected]
[email protected]

RE: Ruling Request; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-1174; Certain Toner Cartridges, Components Thereof, and Systems Containing Same Dear Mr. Hnath: Pursuant to 19 C.F.R. Part 177, the Exclusion Order Enforcement Branch (“EOE Branch”), Regulations and Rulings, U.S. Customs and Border Protection (“CBP”) issues this administrative ruling. We find that Mito Color Imaging, Co., Ltd. (“Mito”) has met its burden to show that the TN221, TN223, TN225, and TN227 model toner cartridges (“subject cartridges”), as identified and described in Mito’s ruling request of August 23, 2021, do not infringe claims 1-5, 10, or 12-15 of U.S. Patent No. 9,785,093 (“the ‘093 patent”). Accordingly, CBP’s position is that these cartridges are not subject to the general exclusion order (“1174 GEO”) issued by the U.S. International Trade Commission (“ITC” or “Commission”) in Investigation No. 337-TA-1174, Certain Toner Cartridges, Components Thereof, and Systems Containing Same (“the underlying investigation” or “the 1174 investigation”), pursuant to section 337 of the Tariff Act of 1930 (“section 337”), as amended, 19 U.S.C. § 1337. We further note that determinations of the Commission resulting from a related proceeding under 19 C.F.R. Part 210 are binding authority on CBP and, in the case of conflict, will by operation of law modify or revoke any contrary CBP ruling or decision related to section 337 exclusion orders. This administrative ruling is the result of a request under 19 C.F.R. Part 177 and was conducted on an inter partes basis with the consent of the parties. The process involved the two parties with a direct and demonstrable interest in the question presented by the ruling request: (1) your client, Mito, the foreign manufacturer of the articles in question, and (2) Brother Industries, Ltd.; Brother International Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc. (collectively, “Brother”), the complainant and patent owner in the underlying investigation. See, e.g., 19 C.F.R. Part 177.1(c).

The parties were asked to clearly identify confidential information, including information subject to the administrative protective order in the underlying investigation, with [[red brackets]] in their submissions to CBP. See, e.g., EOE Branch Email to Parties (dated September 10, 2021). If there is additional information in this administrative ruling not currently bracketed in red [[ ]] that either party believes constitutes confidential information, and should be redacted from the published ruling, then the parties are asked to contact the EOE Branch within ten (10) working days of the date of this administrative ruling. See, e.g., 19 C.F.R. Part 177.8(a)(3).

Please note that disclosure of information related to administrative rulings under 19 C.F.R. Part 177 is governed by, for example, 6 C.F.R. Part 5, 31 C.F.R. Part 1, 19 C.F.R. Part 103, and 19 C.F.R. Part 177.8(a)(3). See, e.g., 19 C.F.R. Part 177.10(a). In addition, CBP is guided by the laws relating to confidentiality and disclosure, such as the Freedom of Information Act (“FOIA”), as amended (5 U.S.C. § 552), the Trade Secrets Act (“TSA”) (18 U.S.C. § 1905), and the Privacy Act of 1974, as amended (5 U.S.C. § 552a). 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. See, e.g., 19 C.F.R. Part 177.8(a)(3). The person seeking this treatment must overcome that presumption with a request that is appropriately tailored and supported by evidence establishing first that the submitter customarily keeps the information private or closely-held, and either (a) the government provided an express or implied assurance of confidentiality when the information was shared with the government or (b) there were no express or implied indications at the time the information was submitted that the government would publicly disclose the information. See, e.g., OIP Guidance: Step-by-Step Guide for Determining if Commercial or Financial Information Obtained from a Person is Confidential Under Exemption 4 of the FOIA (posted 10/3/2019).

BACKGROUND

ITC Investigation No. 337-TA-1174

The Commission instituted Investigation No. 337-TA-1174 on September 3, 2019, based on a complaint filed by Brother. Certain Toner Cartridges, Components Thereof, and Systems Containing Same, Investigation No. 337-TA-1174, EDIS Doc. ID 728235, Commission Opinion (Public) (December 17, 2020) (“Comm’n Op.”) at 2 (citing 84 Fed. Reg. 49762-63 (Sept. 23, 2019)). 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 toner cartridges, components thereof, and systems containing same by reason of infringement of claims 1-7 and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims 1, 4, 5, and 9 of U.S. Patent No. 9,632,456 (“the ’456 patent”); claims 1-5, 10, and 12-15 of the ’093 patent; and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387 (“the ’387 patent”). Id. The Commission’s notice of investigation named 32 respondents, including those that participated in the investigation: Aster Graphics, Inc. of Riverside, California (“Aster”); Cartridge Evolution, Inc. of Brooklyn, New York (“Cartridge Evolution”); E-Z Ink Inc. of Brooklyn, New York (“E-Z Ink”); Linkyo Corp. of La Puente, California (“Linkyo”); New Era (“New Era”); OW Supplies (“OW”); Theresa Meng (“Theresa”); Triple Best (“Triple”); and V4ink (“V4ink”). Id. at 2-3. The notice of investigation also named the Office of Unfair Import Investigations (“OUII”) as a party. Id. at 3. Mito was not named as a respondent in the underlying investigation.

During the course of the investigation, respondents AMI, Aster, Cartridge Evolution, E-Z Ink, Globest, and Linkyo introduced certain newly designed toner cartridges as replacements for the initially accused products, and Brother stipulated that these “will not be covered by any remedial order that issues in this Investigation.” Comm’n Op. at 23-25; see also Certain Toner Cartridges, Components Thereof, and Systems Containing Same, Investigation No. 337-TA-1174, EDIS Doc. ID 716848, Initial Determination (Public) (August 10, 2020) (“ID”) at 34, unreviewed, July 23, 2020, EDIS Doc. ID 719096 (85 Fed. Reg. 56628-31, September 4, 2020); and Comm’n Op. at 27 n.14.

Cartridge Evolution, E-Z Ink, Linkyo, and others were terminated from the investigation by consent orders. Comm’n Op. at 3. AMI, Globest, and Intercon, among others, ultimately defaulted. Comm’n Op. at 3-4. As the investigation continued, the only participating respondent remaining (Aster), Brother, and OUII all agreed that, for purposes of the accused products in the investigation, no claim terms in the asserted patents required a construction beyond their plain and ordinary meaning. See Joint Notice of Disputed Claim Terms (Dec. 6, 2019) (EDIS Doc ID 696586).

On July 23, 2020, the presiding administrative law judge (“ALJ”) issued an initial determination (Order No. 40), granting Brother’s motion for summary determination, finding a violation by Aster and the defaulting respondents, and finding that the accused products practiced the asserted claims. See Comm’n Op. at 4-5. Aster had not opposed Brother’s summary determination motion, even though Aster’s products were subject to the motion, and OUII filed briefing in support of the motion. Id. at 3-5. In finding infringement, the ALJ had considered three groups of representative products identified by Brother’s experts. ID at 118-22. For each representative product, Brother had provided “detailed claim charts” containing a “limitation-by-limitation analysis,” which the ALJ found to be “substantial, reliable, and undisputed evidence” of infringement. ID at 123–34.

On September 8, 2020, the Commission requested written submissions on remedy, the public interest, and bonding, which it received from Brother, Aster, and OUII. See Comm’n Op. at 5. In so briefing, Aster requested that any remedial order include an express carve-out for its newly designed toner cartridges that Brother had stipulated it would not accuse of infringement in the underlying investigation. Id. at 23–?25. Brother responded that an express carve-out would be “redundant and unnecessary” to the extent that the order would include “the general exception for imports made ‘with the permission[] of the patentee.’” Id. at 25–26. OUII agreed with Brother because “‘express carve outs in exclusion orders [are] only for products that were found to be non-infringing,’ but that here, the newly designed products were not found to be non-infringing.” Id. at 26-27 (emphasis in the original). Additionally, OUII noted that “the ‘Aster Joint Stipulation and Agreement do not contain . . . limiting language’ including in agreements with other respondents . . . restrict[ing] permissible importation of Aster’s newly designed products to any particular entity.’” Id. The Commission agreed with Brother and OUII, holding that “it [was] unnecessary to include an express exemption . . . as these products are already the subject of the Joint Stipulation and Agreement between the parties.” Id. at 28. The Commission stated that the Aster Joint Stipulation and Agreement was limited to “(1) compatibility with Brother’s identified toner cartridges; (2) conformity with identified configurations specified in the referenced Tables of the Agreement; and (3) include branded toner cartridges ‘with Aster-, Arcon-, Aztech-, CMYBabee-, Cool Toner-, EPS-, Greensky-, Ink4work-, and Toner Bank-brands.’” Id. at 29.

The Commission noted that a GEO was necessary because of concerns that infringing toner cartridges could be mass produced within a month, that “it [was] likely that the same entities [Respondents] would continue online sales and importation using different names,” and that manufacturers of toner cartridges could not be identified by the retail branding. See Comm’n Op. at 17-18 (quoting ID at 137). Thus, among other things, the Commission issued a GEO prohibiting the importation of certain toner cartridges, components thereof, and systems containing same that infringe one or more of claims 1-5, 10, and 12-15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7, and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 patent. Id. at 34. Paragraph 2 of the 1174 GEO identified “[t]he toner cartridges, components thereof, and systems containing the same that are subject to this Order (i.e., ‘covered articles’) [] as follows: laser toner cartridges designed for use with Brother printers, fax machines, and MFCs (‘Multi-Function Centers’).”

19 C.F.R. Part 177 Ruling Request

Procedural History

On August 23, 2021, Mito submitted a letter to the EOE Branch requesting an administrative ruling pursuant to 19 C.F.R. Part 177, which included attachments A-F (“Ruling Request”). Mito sought a ruling that its detection gear cartridges are not subject to the 1174 GEO because they do not infringe any claims of the ’460, ’093, and ’387 patents. A copy of the ruling request was provided via email on August 23, 2021, to counsel for Brother as the complainant in the 1174 investigation and other interested party in the question presented in this inter partes proceeding.

On September 10, 2021, the EOE Branch held a conference call with Mito and Brother where both parties agreed that the ruling request would be administered by the EOE Branch on an inter partes basis and further agreed to exchange submissions by email. See EOE Branch email to Parties (dated September 10, 2021). On September 13, 2021, the parties jointly submitted a proposed schedule for administration of the ruling request, as well as a nondisclosure agreement that the parties had executed. See Mito Email to EOE Branch (dated September 13, 2021).

On September 27 and 29, 2021, Brother provided its response to Mito’s ruling request, which included exhibits A-B (“Brother Response”). On October 4, 2021, Mito provided its reply to Brother’s response (“Mito Reply”). On October 11, 2021, Brother provided its sur-reply to Mito’s reply, which included exhibits C-J (“Brother Sur-Reply”).

On October 20, 2021, in line with the established schedule for this inter partes proceeding, the EOE Branch held an oral discussion with the parties. See, e.g., EOE Branch Email to Parties (dated October 12, 2021). Due to the national emergency over the coronavirus pandemic, the oral discussion was held remotely by video conference. On the day of the oral discussion, the parties provided their respective presentation materials to the EOE Branch (hereinafter, “Brother Slides” and “Mito Slides”). On October 29, 2021, both Mito and Brother submitted their post oral discussion submissions, with Brother’s submission including exhibits C-E (respectively, “Mito Post-Discussion Submission” and “Brother Post-Hearing Brief”).

The Articles at Issue

The Mito toner cartridge models at issue in the ruling request are listed and depicted below:

Subject Toner Cartridge Models  TN221/225  TN223/227  

()

Mito describes the operation of the subject cartridges as follows: “Mito’s detection mechanism uses a swing member … to engage with a collar … disposed on a screw. The screw is mounted to an agitator shaft on the cartridge, which rotates in order to stir the toner powder contained in the cartridge’s reservoir.” See Ruling Request at 11. As mentioned above, while this ruling addresses products whose model numbers are the same as in HQ H315228, the product embodiments are different and, in particular, the embodiment at issue in this ruling request includes a swing member that engages with a collar, as described above.

The Patents at Issue

The ‘093 Patent

Of the five patents included in the 1174 GEO, the ‘093 patent is the only one for which a dispute exists between the parties whether there is infringement by the subject cartridges. See Mito Reply at 1. Specifically, in this inter partes proceeding, Brother has only alleged that the subject cartridges infringe claim 1 of the ‘093 patent.

The technology at issue concerns laser toner cartridges designed for use with Brother printers and the asserted claims of the ‘093 patent are directed to various aspects of a detection gear. See Comm’n Op. at 6, 7. Moreover, the patent generally relates to a developing cartridge that is reduced in size and can be prevented from being damaged. See ’093 patent, col. 1, ll. 50-52; see also Comm’n Op. at 8.

Claim 1 is the only independent claim of the ’093 patent. As emphasized for purposes of the ruling request, it reads:

A developing cartridge comprising:

a developing roller rotatable about a first axis extending in a direction, the developing roller including a developing roller shaft extending in the direction, the developing roller shaft having a first end portion and a second end portion separated from the first end portion in the direction;

a housing configured to accommodate developing material therein, the housing having a first outer surface and a second outer surface separated from the first outer surface in the direction;

a bearing through which the first end portion is inserted, the bearing being positioned to the first outer surface;

a first shaft extending in the direction, the first shaft being positioned at an opposite side of the first outer surface relative to the bearing;

a coupling rotatable about the first shaft;

a second shaft extending in the direction, the second shaft being positioned to the second outer surface; and

a detection gear rotatable about the second shaft. (emphasis added)

ISSUE

Whether Mito has met its burden to show that the subject cartridges do not infringe claims 1-5, 10, or 12-15 the ’093 patent.

LEGAL FRAMEWORK

Section 337 Exclusion Order Administration

Section 337 of the Tariff Act of 1930 authorizes the Commission to exclude articles from entry into the United States when it has found “[u]nfair methods of competition [or] unfair acts in the importation of [those] articles.” 19 U.S.C. § 1337(a)(1)(B). When the Commission determines there is 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. ITC, 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. ITC, 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. ITC, 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).”).

In addition to the action taken above, the Commission may issue an order under 19 U.S.C. § 1337(i) directing CBP to seize and forfeit articles attempting entry in violation of an exclusion order if their owner, importer, or consignee previously had articles denied entry on the basis of that exclusion order and received notice that seizure and forfeiture would result from any future attempt to enter articles subject to the same. An exclusion order under § 1337(d)—either limited or general—and a seizure and forfeiture order under § 1337(i) apply at the border only and are operative against articles presented for customs examination or articles conditionally released from customs custody but still subject to a timely demand for redelivery. See 19 U.S.C. §§ 1337(d)(1) (“The Commission shall notify the Secretary of the Treasury of its action under this subsection directing such exclusion from entry, and upon receipt of such notice, the Secretary shall, through the proper officers, refuse such entry.”); id., at (i)(3) (“Upon the attempted entry of articles subject to an order issued under this subsection, the Secretary of the Treasury shall immediately notify all ports of entry of the attempted importation and shall identify the persons notified under paragraph (1)(C).”).

Significantly, unlike district court injunctions, the Commission can issue a general exclusion order that broadly prohibits entry of articles that violate section 337 of the Tariff Act of 1930 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. ITC, 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).”).

Moreover, “[t]he Commission has consistently issued exclusion orders coextensive with the violation of section 337 found to exist.” See Certain Erasable Programmable Read Only Memories, Inv. No. 337-TA-276, Enforcement Proceeding, Comm’n Op. at 11, Doc ID 43536 (Aug. 1991) (emphasis added). “[W]hile individual models may be evaluated to determine importation and [violation], the Commission's jurisdiction extends to all models of [violative] 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.” 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).

Lastly, despite the well-established principle that “the burden of proving infringement generally rests upon the patentee [or plaintiff],” Medtronic, Inc. v. Mirowski Family Ventures, LLC, 571 U.S. 191 (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[.]” 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. ITC, 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. ITC, 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). Law of Patent Infringement

Determining patent infringement requires two steps. Advanced Steel Recovery, LLC v. X-Body Equip., Inc., 808 F.3d 1313, 1316 (2015). The first is to construe the limitations of the asserted claims and the second is to compare the properly construed claims to the accused product. Id. 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). One way to establish equivalence is by showing, on an element-by-element basis, 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. See Intendis GmbH v. Glenmark Pharms., Inc., 822 F.3d 1355, 1361 (Fed. Cir. 2016).

As for the first step above, “claim construction is a matter of law.” SIMO Holdings, Inc. v. H.K. uCloudlink Network Tech., Ltd., 983 F.3d 1367, 1374 (Fed. Cir. 2021). Moreover, the ultimate construction of a claim limitation is a legal conclusion, as are interpretations of the patent’s intrinsic evidence (the patent claims, specifications, and prosecution history). UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 822 (Fed. Cir. 2016) (citing Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841, 190 L. Ed. 2d 719 (2015).

“Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges.” Id. at 1314. In others, courts look to public sources such as “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Id.

“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.”). The context in which a claim term is used also includes the full chain of dependence as well as the remaining suite of claims and the written description. See 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.”).

The second step to establish infringement involves a comparison of the claims, as properly construed, to the accused product, which is a question of fact. Apple Inc. v. Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1040 (Fed. Cir. 2016) (en banc).

LAW AND ANALYSIS

As described in more detail below, we find that the subject cartridges do not infringe claim 1 of the ‘093 patent, the only independent claim asserted for purposes of this inter partes proceeding, as noted above.

Claim 1 of the ’093 Patent and the Subject Cartridges During this inter partes proceeding, Mito has argued that its subject cartridges do not infringe claim 1 of the ’093 patent because they do not meet one particular limitation from that claim. Mito specifically argues that its subject cartridges do not satisfy the limitation requiring “a detection gear rotatable about the second shaft[.]” Mito’s non-infringement position is separated into three different arguments as support for its view that no feature on the subject cartridges meets this limitation. Those three arguments are that (1) the subject cartridges do not have a detection gear, but rather a leadscrew, (2) if that leadscrew may be considered a “gear” for purposes of claim 1, it does not detect anything, as required by the claims, and lastly (3) the leadscrew is not rotatable about the second shaft. Both Brother and Mito addressed these three arguments in their respective submissions throughout this inter partes proceeding. See Mito Reply at 4-13; Brother Sur-Reply at 4-13.

As an initial matter, the parties disagree whether a construction of the relevant claim terms – “gear”, “detection”, and “rotatable about” – is necessary in this inter partes proceeding and, if so, what is the appropriate claim construction for any of those terms or, if no construction is necessary, whether this is because the claim terms should receive their plain and ordinary meaning or because the Commission already provided a binding construction of a term during the underlying investigation. For example, Mito argues that “Brother fails to provide any evidence that [its proffer] is the plain and ordinary meaning of the term ‘detection gear.’” See Mito Reply at 10. Brother replies that “[t]he function of the ‘screw’ … confirms that it is a ‘gear’ as that term would be understood by a POSITA at the time of the invention of the ‘093 Patent.” See Brother Response at 20. Notably, both parties at times argue that these claim terms should receive their plain and ordinary meaning but dispute what that plain and ordinary meaning should be. Along these lines, Mito interprets the plain meaning of “gear” to be “a wheel-like component that itself transfers rotary motion” while Brother argues that “a device that translates rotational movement into linear movement also may be considered a gear.” See Mito Post-Discussion Submission at 2; Brother Post-Hearing Brief at 6.

Therefore, on the question of claim construction, both Mito and Brother stated during the oral discussion that no claim construction was necessary and that the plain and ordinary meaning of the terms within the context of the ‘093 patent was sufficient. As such, both parties are trying to support their respective positions through reliance on plain and ordinary meaning; just a different and individualized plain and ordinary meaning depending on the party.

Significantly, “[w]hen the parties present a fundamental dispute regarding the scope of a claim term, it is the court’s duty to resolve it.” O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008). In such cases, “[c]laim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement.” Id. (quoting U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997)). Mito’s noninfringement argument for the ’093 patent is based entirely on the scope of the “detection gear rotatable about the second shaft” limitation and whether, for example, it extends to a leadscrew feature. Brother, for its part, argues that the scope of claim 1 covers the leadscrew feature if, in some manner, it facilitates detection and is rotatable near or around the second shaft. Accordingly, in such cases where the parties present a fundamental dispute regarding the scope of a claim term, the EOE Branch must construe the relevant limitations to resolve that dispute and, with regard to this specific ruling request, address the “detection gear rotatable about the second shaft” limitation to determine whether the cartridges at issue are subject to the 1174 GEO. See CBP HQ H315842 at 15 (dated April 28, 2021).

Claim Construction of “Gear”

The parties’ respective arguments concerning plain and ordinary meaning provide an appropriate place to start an analysis regarding the construction of this claim term. Mito states that a “‘gear’ in view of the ‘093 patent’s specification … [means] ‘a wheel-like component that itself transfers rotary motion.’” Mito Post-Discussion Submission at 2. As additional support for this meaning, Mito points to “the claim language itself and the specification” for the proposition that “gears transfer rotary motion from one rotating component to another.” Id. at 10.

Brother responds by noting “that a device that translates rotational movement into linear movement also may be considered a gear.” Brother’s Post-Hearing Brief at 6. To support its contention, Brother points to various types of gears, such as worm gears and rack and pinion gears, as examples in the field that show the ability of gears to “convert rotary motion to linear motion.” Id. at 7. While Brother does not provide an express construction for this limitation from the ’093 patent, to further define its plain and ordinary interpretation, it looks to “those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean,” including “extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Id. at 8.

Both parties appear to urge the plain and ordinary meaning of this claim term without an express construction. As such, the EOE Branch looks to Federal Circuit case law for guidance. “The words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Blackbird Tech LLC v. ELB Elecs., Inc., 895 F.3d 1374, 1377 (Fed. Cir. 2018) (citing Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). “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. The Federal Circuit, in addition, has “often remarked that a construction which excludes the preferred embodiment is rarely, if ever correct.” PPC Broadband, Inc. v. Corning Optical Communs. RF, LLC, 815 F.3d 747, 755 (Fed. Cir. 2016).

Nothing on the face of the claim language or the context in which the term appears expressly limits the term “gear” to encompass only rotational movement translated to another rotational movement. While the various embodiments of the patent specification show gears that only interact using rotational movement, nonetheless “[i]t is improper to read limitations from a preferred embodiment described in the specification—even if it is the only embodiment—into the claims absent a clear indication in the intrinsic record that the patentee intended the claims to be so limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).

The intrinsic evidence for the ‘093 patent does not contain this “clear indication” and therefore it would be inappropriate to restrict the claimed “gear” only to features where rotational movement is translated to other rotational movement. A gear could be of the type that translates rotational movement to linear movement utilizing either a rack and pinion or worm type gear. As there is nothing in the specification that limits the type of movement for a feature to be considered a gear, such as those that translate rotational movement to linear movement, the leadscrew on the subject cartridges may be considered a gear for purposes of the ‘093 patent.

Claim Construction of “Detection”

Continuing with the parties’ dueling arguments on plain and ordinary meaning, Mito states that the term “detection” in the claims of the ‘093 patent should be understood to mean “for detecting whether the developing cartridge is a new one or a used one.” Mito Post-Discussion Submission at 14. Mito supports this proposed meaning by citing a sentence in the specification that references what the detection gear is for. That sentence states “[t]he detection gear is for detecting whether the developing cartridge is a new one or a used one.” ‘093 patent at 1:38-40. Furthermore, Mito takes issue with Brother’s proposed construction, stating that it “injects ambiguity into the claims.” Mito Post-Discussion Submission at 15.

For its part, Brother specifically proposes the plain and ordinary meaning for what the term “detection” should be. Brother states that the word “detection” is merely used to distinguish the gear it is associated with in a similar manner as the terms “first,” “second,” and “third.” See Brother’s Post-Hearing Brief at 12. Brother further expounds upon the fact that the only part of the printer cartridge that can actually facilitate the “detection” is the electrode, therefore the screw is a detection gear because it facilitates detection and is part of the detection mechanism. See Brother’s Post-Hearing Brief at 14.

The Federal Circuit has noted that the “the descriptive part of the specification aids in ascertaining the scope and meaning of the claims inasmuch as the words of the claims must be based on the description. The specification is, thus, the primary basis for construing the claims.” Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985). Without any basis in the specification or the claims, Brother states that detection is merely a distinguishing term to differentiate between the various gears present in the subject cartridge. The view that the screw is a detection gear because it facilitates detection would broaden the term “detection” to a degree to render the term meaningless, as Mito highlights in its submission. See Mito Post-Discussion Submission at 15. Defining the detection gear as such because it facilitates detection is a circular argument that ultimately leaves detecting without an understood meaning.

Brother does not attempt to state that detection means anything other than as an identifying term such as gear A contrasted with gear B. This would essentially lead to the limitation of “gear” in relation to detection being made superfluous and the Federal Circuit notes that “interpretation[s] that render some portion of the claim language superfluous are disfavored.” See Power Mosfet Techs., LLc v. Siemens AG, 378 F.3d 1396, 1410 (Fed. Cir. 2004). The specification for the ‘093 patent states that “the detection gear is for detecting whether the developing cartridge is a new one or a used one.” See ‘093 patent, col.1 l.38-40. The screw on the redesigned product is, as stated by Mito, “too far removed from any component on the cartridge that actually engages with the printer to determine ‘whether the developing cartridge is a new one or a used one.’” See Mito Post-Discussion Submission at 16. Accordingly, the screw identified on the subject cartridge cannot be said to be a “detection gear.”

Claim Construction of “Rotatable About”

Finally, Mito argues that the plain and ordinary meaning of the term “rotatable about” is “rotatable relative to.” Mito Post-Discussion Submission at 16. Mito points to the specification as support for its interpretation that the detection gear (82) is described as being rotatable “relative to” the second shaft (88): “the new-product detection gear 82 is supported by and capable of rotating relative to the detection-gear-supporting part 88.” ‘093 patent at 15:67-16:2.

Brother’s position regarding the plain and ordinary meaning of the term “rotatable about” is “at,” “near,” or “around.” Brother’s Post-Hearing Brief, 15. In the Sur-Reply, Brother states that “rotatable about” includes “rotatable with.” Sur-Reply, 14,

Under the doctrine of claim differentiation, “[t]here is presumed to be a difference in meaning and scope when different words or phrases are used in separate claims.” Tandon Corp. v. United States Int’l Trade Comm’n, 831 F.2d 1017, 1023 (Fed. Cir. 1987). To the extent that the absence of such difference in meaning and scope would make a claim superfluous, the doctrine of claim differentiation states the presumption that the difference between claims is significant.” Id. Claim 1 of the ‘093 patent contains the limitation “a detection gear rotatable about the second shaft” while claim 8 contains the limitation “the second agitator gear being rotatable with the agitator.” ‘093 patent at 24:46 (emphasis added). This shows that the claim language has a different meaning for the terms “rotatable about” and “rotatable with” when used in the context of the ‘093 patent. “Different claim terms are presumed to have different meanings.” Bd. Of Regents of the Univ. of Tex. Sys. V. BENQ Am. Corp., 533 F.3d 1362, 1371 (Fed. Cir. 2008). Given that the only rotation the screw of the subject cartridges accomplishes is in relation to the shaft on which it is mounted, it cannot be said to rotate about the claimed “second shaft” and as such cannot meet this limitation.

V. HOLDING

We find that Mito has met its burden to establish that the subject cartridges described above do not infringe the claims at issue. Specifically, we find that the subject cartridges do not have a “a detection gear rotatable about the second shaft” as claim 1 of the ‘093 patent requires. Accordingly, we find that these cartridges are not subject to the GEO issued as result of Investigation No. 337-TA-1174.

This decision is limited to the specific facts set forth herein. If articles 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), and Part 177.9(b)(1) and (2).

Sincerely,

Dax Terrill
Chief, Exclusion Order Enforcement Branch

VIA EMAIL: Ms. Lisa M. Katan
Baker Botts LLP
700 K Street, N.W.
Washington, DC
[email protected]
[email protected]