• HQ H321507
• Apr 05, 2022

• Type : 19 U.S.C. § 1337; Unfair Competition • HTSUS :
•  Related:   H315842; H323308   

OT:RR:BSTC:EOE H321507 WMW

Mr. Hua Chen
ScienBiziP, P.C.
550 S. Hope Street, Suite 2825
Los Angeles, CA 90071

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. Chen: 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 Jiangxi Yibo E-Tech Co., Ltd, Aster Graphics, Inc. and Aster Graphics Co., Ltd. (“Aster”) has met its burden to show that the TN22x model toner cartridges (“subject cartridges”), as identified and described in Aster’s ruling request of September 30, 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, Aster, the foreign manufacturer and wholesale supplier 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 October 13, 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.

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 September 30, 2021, Aster submitted a letter to the EOE Branch requesting an administrative ruling pursuant to 19 C.F.R. Part 177, which included attachments A-Q (“Ruling Request”). Aster sought a ruling that its TN22x product series toner cartridges are not subject to the 1174 GEO because they do not infringe any claims of the ’460, ’093, and ’387 patents. Additionally, Aster filed another letter requesting an administrative ruling regarding its TN7xx-A/B product series toner cartridges. Aster sent a copy of both ruling requests, as well as physical samples of the subject cartridges, to counsel for Brother, as the complainant in the 1174 investigation and other interested party in the question presented in this inter partes proceeding, that Brother received on November 10, 2021.

On October 28, 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 October 28, 2021). On November 16, 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 Aster Email to EOE Branch (dated November 16, 2021).

On December 2, 2021, Brother provided its response to Aster’s ruling request, which included exhibits A-K (“Brother Response”). On December 9, 2021, Aster provided its reply to Brother’s response (“Aster Reply”). On December 16, 2021, Brother provided its sur-reply to Aster’s reply, which included exhibits K-N (“Brother Sur-Reply”).

On January 23, 2022, 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 December 17, 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 “Aster Slides”). On January 11, 2022, both Aster and Brother submitted their post oral discussion submissions, with Brother’s submission including exhibits C-E and Aster’s submission including exhibits A-D (respectively, “Brother Post-Discussion Brief” and “Aster Post-Hearing Submission”).

The Articles at Issue

The Aster toner cartridge model at issue in the ruling request is the TN22x product line and is depicted below. See Ruling Request at 21.

[[ ]]

Aster describes the operation of the subject cartridges as follows:

[[ ]]

Ruling Request at 20-21.

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 Aster Reply at 4. 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 Aster 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, Aster has argued that its subject cartridges do not infringe claim 1 of the ’093 patent because they do not meet two particular limitations from that claim. Aster specifically argues that its subject cartridges do not satisfy the limitations requiring “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[.]” Aster’s non-infringement position is separated into four different arguments. Those four arguments are (1) the subject cartridges do not have a shaft that rotates about the agitator shaft, but rather they rotate with each other, (2) the major portion of the agitator shaft is placed inside the cartridge and not placed close to the second outer surface, (3) the subject cartridge does not possess a rotational body including a “wheel” having “meshing”/”interlocking” features, and (4) the subject cartridge does not possess a singular rotational body comprising a detection gear. Both Brother and Aster addressed these four arguments in their respective submissions throughout this inter partes proceeding. See Aster Post-Hearing Submission at 15-18; Brother Post-Discussion Brief at 36-42.

There are three terms in the claim limitations of the ‘093 patent that the parties dispute regarding claim construction. See Aster Post-Hearing Submission at 4-5; Brother Post-Discussion Brief at 10-27. Those three terms are as follows: (1) “detection gear” (2) “rotatable about” (3) “positioned to”.

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)). Aster’s noninfringement argument for the ’093 patent is based entirely on the scope of the “detection gear rotatable about the second shaft” and the “second shaft being positioned to the second outer surface” limitations. Brother, for its part, argues that the scope of claim 1 covers the Component (1) feature of the subject cartridge because, 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” and the “second shaft being positioned to the second outer surface” limitations 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 “Detection Gear”

Aster states that a “‘detection gear’… include[s] a wheel structure having ‘meshing’/’interlocking’ features and the claimed ‘detection gear’ cannot read on a single component in a multi-component detection module.” Aster Post-Hearing Submission at 9-10. As additional support for this meaning, Aster points to dictionaries, the specification and contemporaneously filed patents with overlapping inventors for the proposition that “detection gears” consistently and repeatedly have a part that is substantially in the shape of a circular plate. Id. at 10.

Brother responds by noting “’gear’ to mean ‘a mechanism that performs a specific function in a complete machine.” Brother’s Post-Discussion Brief at 26. To support its contention, Brother points to claim language to show that there is no requirement that the “detection gear” have teeth, engage (or “mesh with”) another gear, or be of any particular shape. Id. at 15. Brother states that the plain and ordinary meaning of the term gear is sufficient, and that no construction is required. Id. at 10.

In this dispute, one party has urged the plain and ordinary meaning of the claim term without an express construction, whereas the other party requests a more specific 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 a wheel like structure with a meshing/interlocking feature. While various embodiments of the patent specification show gears with a wheel like structure with a meshing/interlocking feature, it is nonetheless “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 structures with a wheel like structure with a meshing/interlocking feature. Aster itself recognizes that the EOE Branch has previously held that a gear does not need to be a toothed gear. See Aster Ruling Request at 10 (referencing CBP HQ H315842). As there is nothing in the specification that limits the shape of the gear to having a wheel like structure with a meshing/interlocking feature, it would be improper to narrow the construction of the term “gear” in this manner. In its own description of the cartridge at issue, Aster describes the interaction of Component (1)’s tiny bump with the helical groove inside of Component (2) as being akin to a singular toothed worm driving a worm gear to translate rotational movement to linear movement. As such, the features of the subject cartridges may be considered to contain a gear for purposes of the ‘093 patent.

Claim Construction of “Rotatable About”

Next, Aster argues that the plain and ordinary meaning of the term “rotatable about” is “in a circle around; on every side of; around.” Aster Post-Hearing Submission at 14. Aster points to the specification as support for its interpretation that the detection gear is to rotate around a stationary shaft. Id.

Brother’s position regarding the plain and ordinary meaning of the term “rotatable about” is broad enough to include “rotatable with” and “rotatable relative to.” Brother Sur-Reply at 18. Brother continues in its Post Discussion Brief to state “the only limitation the claims place on ‘rotatable about’ is that all of the rotating elements … must be oriented in the same direction.” Brother Post Discussion Brief at 12.

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 col. 24 ln. 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.

Conclusion

For the reasons above, we find Aster has met its burden to show that the subject cartridges do not infringe 1 of the ‘093 patent (the only patent claim, as noted above, from the 1174 LEO that Brother has asserted in this inter partes proceeding against the subject cartridges). Accordingly, we do not address the remainder of the parties’ other arguments as those arguments are not separate claims, but instead represent additional grounds for determining whether the products at issue should be refused entry and therefore need not be addressed here. See CBP HQ H323308 at 21 (dated February 8, 2022); see also Solomon Technologies, Inc. v. U.S. Int’l Trade Comm’n, 524 F.3d 1310, 1320 (Fed. Cir. 2008) (where the court stated, “[i]f we uphold the Commission’s order, as we do in this case, we are not required to address every possible ground on which the Commission’s order might be sustained.”); Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (“The Commission … is at perfect liberty to reach a ‘no violation’ determination on a single dispositive issue.”); Delorme Publ. Co. v. ITC, 805 F.3d 1328, 1336, n.4 (Fed. Cir. 2015) (“We leave this issue to a future case where its resolution is briefed and necessary to the outcome.”).

V. HOLDING

We find that Aster 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 detection gear that is “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]