Customs Ruling HQ H325119 - Ruling Request; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-1194; Certain High-Density Fiber Optic Equipment and Components Thereof

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HQ H325119
Nov 30, 2023

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

OT:RR:BSTC:EOE H325119 FKM

Ms. Lisa M. Kattan
BAKER BOTTS L.L.P.
700 K Street, N.W.
Washington, D.C. 20001

VIA EMAIL: [email protected]

RE: Ruling Request; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-1194; Certain High-Density Fiber Optic Equipment and Components Thereof

Dear Ms. Kattan:

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 ruling letter. We find that Huber+Suhner AG and Huber+Suhner, Inc. (collectively, “H+S”) has met its burden to show that certain H+S products, specifically:

(1) the IANOS Lite Standard Chassis (model no. IANOS-LITE-STANDARD-t4) and the [[ ]], (2) the SYLFA HD 3U Chassis (model no. SY-HD Chassis 3U) and the SYLFA HD Transition Module (part no. STS-12-LCAD-03-12CF-SM-NS-00WW), and (3) the LSIA Fiber Chassis (model no. LISA-Fiber-Chassis-L-1U-GY) and the LISA Fiber Cassette (model no. LC-L-MH-88-18-36-53-M1-04O-ML) (collectively, “the articles at issue”),

do not infringe claims 1 or 3 of U.S. Patent No. 9,020,320 (“the ’320 patent”); claims 11, 12, 14-16, 19, 21, 27, or 28 of U.S. Patent No. 10,444,456 (“the ’456 patent”); claims 9, 16, 23, or 26 of U.S. Patent No. 10,120,153 (“the ’153 patent”); or claims 22 or 23 of U.S. Patent No. 8,712,206 (“the ’206 patent”). Thus, CBP’s position is that the articles at issue are not subject to the general exclusion order issued by the U.S. International Trade Commission (“Commission” or “ITC”) in Investigation No. 337-TA-1194 (“the underlying investigation” or “the 1194 investigation”), pursuant to section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337 (“section 337”).

We further note that determinations of the Commission resulting from the underlying investigation or 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 pertaining to section 337 exclusion orders. This ruling letter is the result of a request for an administrative ruling from CBP under 19 C.F.R. Part 177, which was conducted on an inter partes basis. The process involved the two parties with a direct and demonstrable interest in the question presented by the ruling request: (1) your client, H+S, the ruling requester and respondent in the 1194 investigation; and (2) Corning Optical Communications LLC (“Corning”), complainant in the 1194 investigation. See, e.g., 19 C.F.R. § 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 all of their submissions to CBP. See 19 C.F.R. §§ 177.2, 177.8. If there is additional information in this ruling letter 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 CBP within ten (10) working days of the date of this ruling letter. See, e.g., 19 C.F.R. § 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. § 177.8(a)(3). See, e.g., 19 C.F.R. § 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 (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. § 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 that: the information in question is customarily kept private or closely-held and either that the government provided an express or implied assurance of confidentiality when the information was shared with the government or there were no express or implied indications at the time the information was submitted that the government would publicly disclose the information. See Food Marketing Institute v. Argus Leader Media, 139 S. Ct. 2356, 2366 (2019) (concluding that “[a]t least where commercial or financial information is both customarily and actually treated as private by its owner and provided to the government under an assurance of privacy, the information is ‘confidential’ within the meaning of exemption 4.”); see also U.S. Department of Justice, Office of Information Policy (OIP): Step-by-Step Guide for Determining if Commercial or Financial Information Obtained from a Person is Confidential Under Exemption 4 of the FOIA (updated 10/7/2019); and OIP Guidance: Exemption 4 after the Supreme Court’s Ruling in Food Marketing Institute v. Argus Leader Media (updated 10/4/2019).

BACKGROUND

ITC Investigation No. 337-TA-1194

Procedural History at the ITC

The Commission instituted Investigation No. 337-TA-1194 on March 24, 2020, based on a complaint filed by Corning Optical Communications LLC of Charlotte, North Carolina. Certain High-Density Fiber Optic Equipment and Components Thereof, Inv. No. 337-TA-1194, EDIS Doc. ID 750094, Public Commission Opinion (Aug. 23, 2021) (“Comm’n Op.”) at 1 (citing 85 Fed. Reg. 16653-53 (Mar. 24, 2020)). The complaint, as supplemented, alleged a violation of section 337 by reason of infringement of certain claims of the ’153, ’206, ’320, ’456 patents and U.S. Patent No. 10,094,996 (“the ’996 patent”). Comm’n Op. at 3. The notice of investigation named H+S, among other parties, as a respondent. Id. at 3-4. The Commission’s Office of Unfair Import Investigations (“OUII”) was also named as a party in the investigation. Id.

On April 29, 2020, H+S filed default notices pursuant to 19 C.F.R. § 210.16(b)(3), and on June 9, 2020, H+S was found to be in default. Comm’n Op. at 5 (citing Order Nos. 7 and 8 (June 9, 2020), unreviewed by Comm’n Notice (June 22, 2020)). On August 13, 2020, the investigation was terminated with respect to the ’996 patent due to a motion for partial termination submitted by Corning. Comm’n Op. at 5. On March 23, 2021, the presiding Administrative Law Judge (“ALJ”) issued his final initial determination (“FID”) finding a violation of section 337. Id. at 6. Specifically, the ALJ determined that a violation of section 337 occurred in the importation into the United States, the sale for importation, or the sale within the United States after importation, of the accused products due to infringement of certain claims of the ’153, ’206, ’320, and ’456 patents. Id.

On May 24, 2021, the Commission issued a notice in which it determined to review in part the FID and requested submissions responding to the Commission’s questions on review and remedy, the public interest, and bonding. Id. at 7-8 (citing 86 Fed. Reg. 28890-93 (May 28, 2021). The Commission, in its review of the FID, found a violation of section 337 as to the ’153, ’206, ’320, and ’456 patents and determined that the appropriate remedy was a general exclusion order and cease and desist orders directed to various participating respondents. Id. at 97.

In the general exclusion order, the Commission ordered that “high density fiber optical equipment and components thereof . . . that infringe one or more of claims 1 and 3 of the ’320 patent, claims 11, 12, 14-16, 19, 21, 27, and 28 of the ’456 patent, claims 9, 16, 23, and 26 of the ’153 patent, and claims 22 and 23 of the ’206 patent are excluded from entry for consumption into the United States, entry for consumption from a foreign-trade zone, or withdrawal from a warehouse for consumption, for the remaining terms of the Asserted Patents, except under license from, or with the permission of, the patent owner or as provided by law.” Certain High-Density Fiber Optic Equipment and Components Thereof, Inv. No. 337-TA-1194, EDIS Doc. ID 748567, General Exclusion Order (Aug. 3, 2021) at 2 (“1194 LEO”). The Commission further defined the articles covered by the general exclusion order as:

(a) chassis (or “enclosures”) with sliding trays that fit within the standardized racks used in data centers, and (b) removable modules (or “cassettes”) that are inserted into the sliding trays of the chassis, wherein the chassis and modules are used to terminate large numbers of fiber-optic cables using standardized connectors (the modules have simplex/duplex components (e.g., LC adapters) on the front and multi-fiber components (e.g., MPO/MPT adapters) on the rear, and are configured to support at least 98 connections per standard rack unit (or “U space”)). Also subject to this order are combinations of such chassis and modules, as well as subassemblies (such as tray subassemblies) that are components of such chassis and modules, and any other removable modules that provide a fiber optic connection density of at least one fiber optic connection per 7.0 millimeters (mm) of width of the module’s front opening. Not subject to this Order are cable assemblies for use with the covered chassis and modules or noninfringing products such as adapter plates, splice panels, or patch panels.

Id. at 2-3.

The Patents and Claims in the 1194 LEO

The 1194 GEO prohibits the unlicensed entry for consumption of high-density fiber optic equipment and components thereof that infringe one or more of claims 1 and 3 of the ’320 patent; claims 11, 12, 14-16, 19, 21, 27, and 28 of the ’456 patent; claims 9, 16, 23, and 26 of the ’153 patent; and claims 22 and 23 of the ’206 patent. 1194 GEO at 2. The discussion of the patents at issue below emphasizes the independent claims, as the burden of establishing noninfringement necessitates the failure of meeting a limitation of an independent claim. See, e.g., Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991) (“[T]he failure to meet a single limitation is sufficient to negate infringement of the claim[.]”); Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1552, n.9 (Fed. Cir. 1989) (“One who does not infringe an independent claim cannot infringe a claim dependent on (and thus containing all the limitations of) that claim.”).

Claims 1 and 3 of the ’320 Patent

The ’196 patent is titled “‘High density and Bandwidth Fiber Optic Apparatuses and Related Equipment and Methods’ . . . [and] relates to fiber optic connection density and bandwidth provided in fiber optic apparatuses and equipment.’” Certain High-Density Fiber Optic Equipment and Components Thereof, Inv. No. 337-TA-1194, EDIS Doc. ID 740348, Public Final Initial Determination (March 23, 2021) (“FID”) at 8 (citing ’320 patent at 1:32-34). Claim 3 depends from claim 1. Id. Claim 1 of the ’320 patent is reproduced below:

1. A fiber optic apparatus, comprising: a chassis; and a fiber optic connection equipment provided in the chassis; the fiber optic connection equipment configured to support a fiber optic connection density of at least ninety-eight (98) fiber optic connections per U space, based on using at least one simplex fiber optic component or at least one duplex fiber optic component.

FID at 37; ’320 patent at 19:52-59.

Claims 11, 12, 14-16, 19, 21, 27, and 28 of the ’456 Patent The ’456 patent is titled “‘High density and Bandwidth Fiber Optic Apparatuses and Related Equipment and Methods’ . . . [and] ‘ . . . relates to fiber optic connection density and bandwidth provided in fiber optic apparatuses and equipment.’” FID at 9 (citing ’456 patent at 1:33-35). Claims 12, 14-16, 19, and 21 depend from claim 11. Id. Claim 11 of the ’456 patent is reproduced below:

11. A fiber optic apparatus, comprising: a chassis configured to be disposed in an equipment rack, the chassis comprising front and rear ends that are spaced apart from one another in a longitudinal direction, and comprising opposite first and second ends that are spaced apart from one another in a lateral direction that extends crosswise to the longitudinal direction; a plurality of fiber optic equipment trays supported by the chassis and extendable relative to the chassis in the longitudinal direction; and a plurality of fiber optic modules configured to be installed in the plurality of fiber optic equipment trays, wherein each fiber optic module of the plurality of fiber optic modules comprises a front side, a rear side, an internal chamber, a plurality of first fiber optic adapters disposed through the front side, at least one second fiber optic adapter disposed through the rear side, and a plurality of optical fibers disposed within the internal chamber and extending from the at least one second fiber optic adapter to the plurality of first fiber optic adapters; wherein each fiber optic equipment tray of the plurality of fiber optic equipment trays is configured to receive multiple fiber optic modules of the plurality of fiber optic modules; wherein the plurality of fiber optic equipment trays and the plurality of fiber optic modules are configured to support a fiber optic connection density of at least ninety-eight (98) fiber optic connections per U space of the chassis, based on using a simplex fiber optic adapter or a duplex fiber optic adapter as each fiber optic adapter of the plurality of first fiber optic adapters; and wherein a U space comprises a height of 1.75 inches and comprises a width of 19 inches or 23 inches. FID at 184; ’456 patent at 21:43-22-9.

Claim 28 depends from claim 27, which is reproduced below:

27. A fiber optic apparatus, comprising: a chassis configured to be disposed in an equipment rack, the chassis comprising front and rear ends that are spaced apart from one another in a longitudinal direction, and comprising opposite first and second ends that are spaced apart from one another in a lateral direction that extends crosswise to the longitudinal direction; a plurality of fiber optic equipment trays supported by the chassis and extendable relative to the chassis in the longitudinal direction; and a plurality of fiber optic modules configured to be installed in the plurality of fiber optic equipment trays, wherein each fiber optic module of the plurality of fiber optic modules comprises a front side, a rear side, an internal chamber, a plurality of first fiber optic adapters disposed through the front side, at least one second fiber optic adapter disposed through the rear side, and a plurality of optical fibers disposed within the internal chamber and extending from the at least one second fiber optic adapter to the plurality of first fiber optic adapters; wherein each fiber optic equipment tray of the plurality of fiber optic equipment trays is configured to receive multiple fiber optic modules of the plurality of fiber optic modules; wherein the chassis defines a 4-U space, in which a U space comprises a height of 1.75 inches and comprises a width of 19 inches or 23 inches; and wherein the plurality of fiber optic equipment trays and the plurality of fiber optic modules are configured to support a fiber optic connection density of five hundred seventy-six (576) fiber optic connections in the 4-U space of the chassis, based on using a simplex fiber optic adapter or a duplex fiber optic adapter as each fiber optic adapter of the plurality of first fiber optic adapters.

FID at 186-87; ’456 patent at 24:3-38.

Claims 9, 16, 23, and 26 of the ’153 Patent

The ’153 patent is titled “‘Independently Translatable Modules and Fiber Optic Equipment Trays in Fiber Optic Equipment’ . . . [and] ‘ . . . relates to fiber optic modules for fiber optic equipment. The fiber optic equipment can be included in fiber optic equipment rack and/or trays.’” FID at 8 (citing ’153 patent at 2:4-6). Claim 9 depends from claims 1 and 6, id., reproduced below:

1. A fiber optic apparatus, comprising: a chassis configured to be disposed in an equipment rack, the chassis comprising opposite front and rear ends that are spaced apart from one another in a longitudinal direction, and comprising opposite first and second ends that are spaced apart from one another in a lateral direction that extends crosswise to the longitudinal direction; a guide system configured to be disposed within the chassis; at least one fiber optic equipment tray configured to slidably engage within the guide system, the at least one fiber optic equipment tray comprising a front end with at least one fiber optic routing element that comprises successive material sections extending frontward, upward, and rearward, respectively, to permit optical fibers to be routed to either left or right portions of the at least one fiber optic equipment tray toward the first and second ends of the chassis; and a plurality of fiber optic modules configured to be received by the at least one fiber optic equipment tray, wherein each fiber optic module of the plurality of fiber optic modules is independently movable in the longitudinal direction relative to the at least one fiber optic equipment tray, and wherein each fiber optic module of the plurality of fiber optic modules comprises a front end, a rear end, an interior, a plurality of first fiber optic adapters disposed through the front end, at least one second fiber optic adapter disposed through the rear end, and at least one optical fiber disposed within the interior and establishing at least one optical connection between the at least one second fiber optic adapter and at least one first fiber optic adapter of the plurality of first fiber optic adapters.

FID at 265-6; ’153 patent at 16:52-17:17.

6. The fiber optic apparatus of claim 1, wherein the at least one fiber optic equipment tray comprises a plurality of fiber optic equipment trays.

’153 patent at 17:32-34.

9. The fiber optic apparatus of claim 6, wherein: each fiber optic equipment tray of the plurality of fiber optic equipment trays is configured to receive multiple fiber optic modules of the plurality of fiber optic modules; and the plurality of fiber optic equipment trays and the plurality of fiber optic modules are configured to permit each fiber optic module of the plurality of fiber optic modules to be removable from a front of the plurality of fiber optic equipment trays, and releasably removable from a rear of the plurality of fiber optic equipment trays.

’153 patent at 17:42-53.

Claim 16, reproduced below, depends from the unasserted claim 1:

16. The fiber optic apparatus of claim 1, wherein at least one fiber optic module of the plurality of fiber optic modules comprises a locking latch comprising a lateral protrusion configured to prevent the at least one fiber optic module from moving rearward relative to the at least one fiber optic equipment tray, the locking latch being actuatable by a user from a rear of the at least one fiber optic module to enable removal of the at least one fiber optic module from a rear of the at least one fiber optic equipment tray.

’153 patent at 18:31-59.

Claim 26 depends from claim 23, FID at 9, which is reproduced below:

23. A fiber optic apparatus, comprising: a chassis configured to be disposed in an equipment rack, the cassis comprising opposite front and rear ends that are spaced apart from one another in a longitudinal direction, and comprising opposite first and second ends that are spaced apart from one another in a lateral direction that extends crosswise to the longitudinal direction; a guide system configured to be disposed within the chassis; a plurality of fiber optic equipment trays arranged in a stacked configuration and configured to slidably engage within the guide system, wherein each fiber optic equipment tray of the plurality of fiber optic equipment trays comprises a front end with at least one fiber optic routing element that comprises successive material sections extending frontward, upward, and rearward, respectively, to permit optical fibers to be routed to either left or right portions of the plurality of fiber optic equipment trays toward the first and second ends of the chassis; and a plurality of fiber optic modules configured to be received by the plurality of fiber optic equipment trays, wherein each fiber optic module of the plurality of fiber optic modules is independently movable in the longitudinal direction relative to each fiber optic equipment tray of the plurality of fiber optic equipment trays; wherein each fiber optic module of the plurality of fiber optic modules comprises a front end, a rear end, an interior, a plurality of first fiber optic adapters disposed through the front end, at least one second fiber optic adapter disposed through the rear end, and at least one optical fiber disposed within the interior and establishing at least one optical connection between the at least one second fiber optic adapter and at least one first fiber optic adapter of the plurality of first fiber optic adapters; wherein for at least one fiber optic module of the plurality of fiber optic modules, the at least one second fiber optic adapter comprises a higher connection density than each first fiber optic adapter of the plurality of first fiber optic adapters; wherein each fiber optic equipment tray of the plurality of fiber optic equipment trays is configured to receive multiple fiber optic modules of the plurality of fiber optic modules; and wherein the plurality of fiber optic equipment trays and the plurality of fiber optic modules are configured to permit the plurality of fiber optic modules to be removable from a front of the plurality of fiber optic equipment trays, and releasably removable from a rear of the plurality of fiber optic equipment trays.

FID at 266-8; ’153 patent at 19:8-20:10.

Claims 22 and 23 of the ’206 Patent

The ’206 patent is titled “‘High-Density Fiber Optic Modules and Module Housings and Related Equipment’ . . . [and] ‘ . . . relates to fiber optic modules and fiber optic modules housings provided in fiber optic equipment to support fiber optic connections.’” FID at 9 (citing ’206 patent at 1:17-19). Claims 22 and 23 depend from the unasserted claim 14, FID at 328, reproduced below:

14. A fiber optic module, comprising: a main body defining an internal chamber disposed between a front side and a rear side; a plurality of optical fibers disposed in the internal chamber; a front opening disposed along a longitudinal axis in the front side; a first plurality of fiber optic components optically connected to the plurality of optical fibers, the first plurality of fiber optic components disposed through the front opening providing a fiber optic connection density of at least one fiber optic connection per 7.0 millimeters (mm) of width of the front opening; and at least one second fiber optic component optically connected to at least one of the plurality of optical fibers to provide optical connection between the at least one second fiber optic component and at least one of the first plurality of fiber optic components.

FID at 328-9; ’206 patent at 20:48-65.

22. The fiber optic module of claim 14, further comprising at least one rail disposed on the main body.

’206 patent at 20:26-27.

23. The fiber optic module of claim 22, further comprising at least one latch attached to the at least one rail and configured to engage the at least one rail.

’206 patent at 20:28-30.

The Products from the Underlying Investigation

In its Complaint, Corning accused H+S high-density fiber optic equipment, including the IANOS Standard system and related components, of both direct and indirect infringement of the ’320 patent, ’153 patent, ’996 patent, and ’456 patent. Certain High-Density Fiber Optic Equipment and Components Thereof, Inv. No. 337-TA-1194, EDIS Doc. ID 703129, Public Complaint (Feb. 21, 2020) (“Complaint”) at 50-58. The Commission did not make specific findings relating to the IANOS Standard system, as H+S was found to be in default. Comm’n Op. at 5 (citing Order Nos. 7 and 8 (June 9, 2020), unreviewed by Comm’n Notice (June 22, 2020)).

19 C.F.R. Part 177 Ruling Request

Procedural History

On November 29, 2021, H+S submitted a letter to CBP requesting an administrative ruling pursuant to 19 C.F.R. Part 177, which included Exhibits 1 to 25 (collectively, “Ruling Request”). H+S Email to EOE Branch, dated November 29, 2021. H+S requested “a ruling . . . that certain unaccused and/or [[ ]] H+S products and components . . . do not infringe [the Asserted Patents] . . . and, therefore, should not be subject to exclusion from entry for consumption under the 1194 GEO.” Ruling Request at 1. On January 5, 2022, H+S confirmed that it had entered into a non-disclosure agreement with Corning and shipped samples of the products to Corning as requested. H+S Email to EOE Branch, dated January 5, 2022. On January 6, 2022, Corning provided the non-disclosure agreement to the EOE Branch. Corning Email to EOE Branch, dated January 6, 2022.

On January 13, 2022, the EOE Branch had an initial conference call with H+S and Corning, on which both parties agreed to conduct this proceeding on an inter partes basis as administered by the EOE Branch. During this initial call, the EOE Branch and the parties discussed scheduling for the inter partes ruling, and on February 3, 2022, H+S provided the EOE Branch with a proposed procedural schedule agreed to by both parties. H+S Email to EOE Branch, dated February 3, 2022. On February 7, 2022, after considering the submission, the EOE Branch adopted the procedural schedule for the inter partes proceeding proposed by the parties. EOE Branch email to Parties, dated February 7, 2022. Due to scheduling conflicts for the parties, on March 18, 2022, the EOE Branch and the parties agreed to modify the procedural schedule, adjusting the dates of the oral discussion and post oral discussion events. See EOE Email to Parties, dated March 17, 2022; H+S Email to EOE Branch, dated March 17, 2022; Corning Email to EOE Branch and H+S, dated March 17, 2022; H+S Email to EOE Branch and Corning, dated March 18, 2022; EOE Branch Email to Parties, dated March 18, 2022; EOE Branch Email to Parties, dated March 21, 2022; H+S Email to EOE Branch, dated March 21, 2022; Corning Email to EOE Branch, March 21, 2022; and EOE Branch Email to Parties, dated March 24, 2022.

On March 18, 2022, Corning provided its response to the Ruling Request, which included Exhibits A to I (collectively, “Corning Response”). On April 1, 2022, H+S provided its reply to the Corning Response, which included Exhibits 26 and 27 (collectively, “H+S Reply”). On April 8, 2022, Corning provided its sur-reply (“Corning Sur-Reply”) to the H+S Reply. On April 27, 2022, the EOE Branch conducted an oral discussion with the parties, with each party providing a presentation (“H+S Oral Discussion Presentation” and “Corning Oral Discussion Presentation accordingly). Lastly, on May 4, 2022, the parties submitted post oral discussion submissions (“H+S Post Oral Discussion Submission” and “Corning Post Oral Discussion Submission” accordingly).

The Articles at Issue

The articles at issue in the Ruling Request consist of certain unaccused or [[ ]] H+S products and components. Ruling Request at 1. According to H+S, the unaccused articles were “publicly available in the U.S. at the time Corning filed its complaint at the ITC.” Id. at 12 (internal citation omitted). Specifically, the products for which H+S requested a ruling are:

(a) the IANOS Lite Standard Chassis (model no. IANOS-LITE-STANDARD-t4) and the [[ ]] (referred to below as “the redesigned module”); (b) the SYLFA HD 3U Chassis (model no. SY-HD Chassis 3U) and the SYLFA HD Transition Module (part no. STS-12-LCAD-02-12CF-SM-NS-00WW); and (c) the LISA Fiber Chassis (model no. LISA-Fiber-Chassis-L-1U-GY) and the LISA Fiber Cassette (model no. LC-L-MH-88-18-36-53-M1-04O-ML).

Ruling Request at 4. Of the articles at issue, the IANOS Lite and the LISA products were not accused of infringement during the underlying investigation, though they were publicly available at the time. Id. at 12. The SYLFA HD products also were not accused but became available in the United States after the filing of Corning’s complaint at the Commission. Id.

The articles at issue in the ruling request, as referenced above, are depicted below:

The IANOS Lite Standard Chassis

[[ ]] The Redesigned Module

The SYLFA HD 3U Chassis

The SYLFA HD Transition Module

The LISA Fiber Chassis

The LISA Fiber Cassette

IANOS Lite Chassis and [[ ]]

As noted above, during the underlying investigation, Corning accused the IANOS Standard system and related components of infringing the ’320 patent, ’153 patent, ’996 patent, and ’456 patent. See Complaint at 50-58. In its Ruling Request, H+S argues that its IANOS Lite system, including the IANOS Lite Chassis and [[ ]] was not accused at the Commission, as the redesigned module had yet to be produced at the time that the complaint was filed. Ruling Request at 12. H+S claims that the IANOS Lite Chassis is not within the scope of the exclusion order because the chassis has no “tray which slides or extends inward or outward” and “the cable routing guides are likewise not extendable.” Id. With regard to the [[ ]], which can be installed into the subrack of the IANOS Lite Chassis,

Ruling Request at 16, the [[

]] Id. at 17-18. Due to these features, H+S argues that the IANOS Lite system, including the IANOS Lite Chassis and [[ ]] do not infringe the patents at issue and are not subject to the 1194 GEO.

SYLFA HD 3U Chassis and SYLFA HD Transition Module

Corning did not accuse the SYLFA system, including the SYLFA HD 3U Chassis and SYLFA HD Transition Module, of infringement during the underlying investigation. Ruling Request at 12. Specifically, with respect to the SYLFA HD 3U Chassis, H+S argues that this chassis is not subject to the GEO because “up to 12 modules are inserted directly into the fixed rack of the chassis. There are no slidable or extendable trays into which the modules are inserted . . . [and] the cable routing guides are dispose on the underside of the top of the chassis and are not slidable or extendable with respect to the chassis.” Id. at 19. The SYLFA HD Modules, which are compatible with the SYLFA HD 3U Chassis, “support up to 12 duplex LC fiber optic adapters for a total of up to 24 fiber optic connections per module.” Id. at 24 (internal citation omitted). Thus, according to H+S, the modules do not infringe the patents at issue because if the modules are “installed into each of the 12 bays of the SYLFA HD 3U [C]hassis, the combination is able to support up to a maximum of 288 fiber optic connections per 3U space. On average then, the combination supports ninety-six fiber optic connections per 1U space. Furthermore . . . there are no rails or sides of the SYLFA HD [T]ransition [M]odule.” Id. at 25.

LISA Fiber Chassis and LISA Fiber Cassette

The LISA system, including the LISA Fiber Chassis and LISA Fiber Cassette, was also not accused during the underlying investigation. Ruling Request at 12. H+S argues that the LISA Fiber Chassis is not subject to the 1194 GEO because the fixed rack “does not move, slide, or extend inward or outward . . . [and] includes a fixed, arc-shaped cable routing conduit.” Id. at 25. The corresponding LISA Fiber Cassette, according to H+S, “supports up to 18 duplex fiber optic adapters for a total of up to 36 fiber optic connections per cassette. Further, the duplex adapters are vertically oriented, and resultingly there is only one connection per 9.3 mm or more of width of the side opening.” Id. at 27 (internal citation omitted). Thus, when the LISA Fiber Chassis is loaded with the maximum amount of LISA Fiber Cassettes, with each supporting up to 36 fiber optic connections, the total amount of fiber optic connections per 1U space is 72. Id. at 28. H+S claims that, due to the maximum fiber optic connections possible, and because “the fiber optic adapters and connections are located on the side, rather than the front side . . . [and] there are no rails on the sides[,]” the LISA system cannot infringe the patents at issue. Id.

ISSUE

Whether H+S has met its burden to show that the articles at issue do not infringe the ’320, ’153, ’456, or ’206 patents, and thus are not subject to the general exclusion order issued in the 1194 investigation. See Ruling Request at 1.

LEGAL FRAMEWORK

Section 337 Exclusion Order Administration

The Commission shall investigate any alleged violation of section 337 to determine, with respect to each investigation conducted by it under this section, whether there is a violation of this section. See 19 U.S.C. § 1337(b)(1) and (c). If the Commission determines, as a result of an investigation under this section, that there is a violation of this section, it shall direct that the articles concerned, imported by any person violating the provision of this section, be excluded from entry into the United States unless the Commission finds based on consideration of the public interest that such articles should not be excluded from entry. See 19 U.S.C. § 1337(d)(1).

When the Commission determines that 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 (Fed. Cir. 2008). 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).”) (emphasis added).

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 patentee 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).

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).

In addition to direct infringement, a party can indirectly infringe a patent through active inducement, which occurs if the party knew of the patent and that the induced acts constitute patent infringement. See Commil USA, LLC v. Cisco Sys., Inc., 575 U.S. 632 (2015), cited in FID at 23; see also 35 U.S.C. § 271(b) (“Whoever actively induces infringement of a patent shall be liable as an infringer.”). For a finding of induced infringement, the infringer must possess a specific intent to encourage another’s infringement. See i4i Ltd. Partnership v. Microsoft Corp., 598 F.3d 831, 851 (Fed. Cir. 2010), aff’d, 564 U.S. 91 (2011), cited in FID at 23. Furthermore, induced infringement requires a showing that the accused inducer took an affirmative act to encourage infringement. See Microsoft Crop. v. Datatern, Inc., 755 F.3d 899, 904 (Fed. Cir. 2013), cited in FID at 23.

LAW AND ANALYSIS

Corning’s Concessions and Positions Regarding the Exclusion Order’s Scope and the Test for Admissibility

To begin, Corning indicated—and confirmed during the oral discussion in this inter partes proceeding—that it “does not oppose Huber+Suhner’s request for a ruling that it may import . . . the IANOS Lite Chassis, the SYLFA HD 3U Chassis, the SYLFA HD Transition Module, the LISA Fiber Chassis, and the LISA Fiber Cassette.” Corning Response at 2, n.3. Given the absence of an infringement contention by Corning that these articles are covered by the patents at issue, the EOE Branch finds that H+S has established that these specific products are not subject to exclusion from entry on the basis of the 1194 GEO. See Certain Robotic Floor Cleaning Devices and Components Thereof, Inv. No. 337-TA-1252, Initial Determination on Violation of Section 337 and Recommended Determination on Remedy and Bonding, EDIS Doc. ID 783814 (Public) (October 7, 2022) at 10, FN 16 (“Given that [complainant] did not dispute that the [relevant] products in this category are non-infringing, this Initial Determination finds no reason to conclude otherwise.”), aff’d, Notice of Commission Final Determination Finding a Violation of Section 337, EDIS Doc. ID 792838 (Public) (March 21, 2023) (“All findings in the FID that are not inconsistent with the Commission’s determination are affirmed.”). Accordingly, our analysis will focus on the only article at issue remaining in dispute between the parties, the [[ ]].

Moreover, Corning does not contend that the [[ ]] infringes the ’206 patent and confirmed this point during the oral discussion, as well as in its subsequent submission. See, e.g., Corning Post Oral Discussion Submission at 2 (regarding “infringement of the ’206 patent, which Corning has not asserted in this proceeding.”). Thus, hereinafter, any reference to the “patents at issue” will refer only to the ’320, ’456, and ’153 patents. Finally, Corning does not argue that the [[ ]] directly infringes any of the patents at issue. Instead, it only claims that, with this product, H+S induces infringement of the patents at issue and, therefore, under Corning’s view, the redesigned module is subject to the exclusion order under a theory of indirect infringement. See, e.g., Corning Response at 12; Corning Sur-Reply at 8; Corning Post Oral Discussion Submission at 16. Corning confirmed this understanding of its position during the oral discussion.

However, before turning to the question of indirect infringement, Corning argues as a preliminary matter that H+S should be precluded from importing the redesigned module merely because it constitutes “high-density fiber optic equipment” that falls within the Commission’s definition of the type of commodity the general exclusion order covers generally and without regard to whether it is an infringing article. See Corning Response at 4 (citing 1194 GEO at ¶ 2); see also Corning Sur-Reply at 2 (“The [[ ]] should be excluded because they fall within the Commission’s definition of ‘covered articles.’”). According to Corning, “the only question that [the EOE] Branch must answer – is whether the [[ ]] themselves fall within the definition of excluded products under the Commission’s Exclusion Order.” Corning Response at 4 (emphasis in original). In other words, according to Corning, “[b]ecause the Exclusion Order covers the [[ ]], there is no need for [the EOE] Branch to assess independently whether those [redesigned modules] infringe the Asserted ’320, ’456, and ’153 Patents when used in combination with the IANOS Standard Chassis.” Corning Response at 12. Building on this position, Corning argues that the removal of the rail on the [[ ]] “. . . did not result in a ‘new and modified product’ that warrants a new infringement analysis.” Corning Post Oral Discussion Submission at 2.

Contrary to Corning’s interpretation of the operative text from the Commission’s order, we find that an infringement analysis is required and remains the test to determine admissibility under Section 337 absent specific direction from the Commission, such as in an exclusion order with express indication in any Commission Opinion from the underlying investigation. There seems to be no dispute that the [[ ]] falls within the scope of the investigation, and within the commodity-focused definition of a covered article that, if infringing, would require CBP to refuse its entry. The scope of the exclusion order, however, is best understood to encompass articles “covered by” the relevant patent claims, the infringement of which formed the basis of the violation of Section 337 in the underlying investigation and resulted in the issuance of the exclusion order. As it has repeatedly confirmed:

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.

Certain Road Construction Machines and Components Thereof, Inv. No. 337-TA-1088 (Modification), Commission Opinion, Doc. ID 719534 (Sept. 14, 2020) at 13 (emphasis added) (quoting Optical Disk Controller Chips and Chipsets and Products Containing Same, including DVD Players and PC Optical Storage Devices, Inv. No. 337-TA-506, Comm’n Op. at 56-57 (Sept. 28, 2005) (that quoted Certain Hardware Logic Emulation Systems & Components Thereof, Inv. No. 337-TA-383, Comm’n Op., 1998 WL 307240, *9 (Mar. 31, 1998))).

Moreover, the Commission has spoken to this exact question whether, for purposes of Section 337, a redesigned article may be considered to fall within an exclusion order’s scope without first determining infringement. The Commission made clear, during a modification proceeding in a different investigation, that, as in this inter partes proceeding, the patent holder has

point[ed] to no law that would authorize the Commission to determine whether previously unadjudicated products fall within the scope of remedial orders without first determining whether those products infringe the relevant claims of the patent-at-issue. In fact, the Commission has explicitly found that the issue is “whether the language of the claims reads on the redesigned products as required under the standard two-part infringement analysis.” Certain Network Devices, Related Software and Components Thereof (I), Inv. No. 337-TA-945 (Enforcement), Comm’n Order at (3) (Aug. 4, 2017); see MBO Labs, Inc v. Becton, Dickinson & Co., 474 F.3d 1323, 1329 (Fed. Cir. 2007).

Certain Network Devices, Related Software and Components Thereof (II) (Modification 2), Inv. No. 337-TA-945, EDIS Doc. ID 650147, Public Commission Opinion (Jul. 12, 2018) at 22 (emphasis added).

As such, it is understood that “[t]he Commission has always issued its orders in terms of ‘infringing’ products, and has always intended them, as in this case, to prohibit to [sic] 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.” Certain Erasable Programmable Read Only Memories, Inv. No. 337-TA-276, Enforcement Proceeding, Comm’n Op. at 11, EDIS Doc ID 43536 (Aug. 1991). Therefore, infringement is the touchstone for admissibility questions under 19 C.F.R. § 177 when administering a Section 337 exclusion order as “the language of the patent claims are controlling as to the scope of the remedial orders[,]” Certain Digital Video Receivers and Hardware and Software Components Thereof, Inv. No. 337-TA-1001, EDIS Doc. ID 630893, Public Commission Opinion (Dec. 6, 2017) at 37, and not whether an article qualifies as the type of commodity identified in the notice of investigation or falls under a plain English statement regarding the category of products included with the exclusion order.

To be clear, Corning recognizes that the redesigned module was not at issue in the underlying investigation and does not dispute that there have been certain modifications to the [[ ]] at issue in this ruling. Instead, Corning questions the degree or significance of those modifications. Corning Sur-Reply at 2 (“Huber+Suhner nonetheless argues that the [EOE] Branch ‘must conduct an infringement analysis’ because these [[ ]] that the Commission did not analyze. The minor and irrelevant modification that Huber+Suhner has made to its product requires no such undertaking.”) (internal citation omitted). In essence, Corning’s argument is that CBP may reach the admissibility question in this inter partes proceeding divorced from any infringement analysis simply by recognizing that the articles H+S seeks to import constitute “high-density fiber optic equipment” that, in Corning’s view, have not been materially altered from the legacy products from the underlying investigation. Corning, however, has not cited any legal authority to support its position, and its view conflicts with Federal Circuit and Commission precedent on the test whether an article is subject to an exclusion order issued under Section 337. As noted above, “[Commission] orders direct [Customs] to bar infringing products from entering the country,” Yingbin-Nature, 535 F.3d at 1330 (emphasis added), and it is “the language of the patent claims [that] control[s] as to the scope of the remedial orders.” Certain Digital Video Receivers and Hardware and Software Components Thereof, Inv. No. 337-TA-1001, EDIS Doc. ID 630893, Public Commission Opinion (Dec. 6, 2017) at 37.

Accordingly, when CBP decides under 19 C.F.R. § 177 whether an article is subject to an exclusion order under Section 337, it is not enough that the article is the same type of commodity identified in the Commission’s notice of investigation from the underlying matter. Instead, the Commission has made clear that the traditional test for patent infringement remains the one for CBP to apply when administering an exclusion order. As such, even if the modifications in question are “minor and irrelevant,” as Corning suggests, the test that the EOE Branch must apply requires an analysis of whether the [[ ]] infringes any claims from the patents at issue based on the traditional two-step approach to determine patent infringement, as described above. While the burden to establish admissibility remains on the party seeking to enter the articles at issue, see Hyundai, 899 F.2d at 1210, and there may be circumstances where insignificant modifications to a product will prevent a party from carrying that burden, this does not alter the legal test required to establish admissibility.

H+S has Established Admissibility With Respect to the Articles at Issue

As discussed in more detail below, it is our position that the redesigned module is not subject to the exclusion order based on a theory of indirect infringement because H+S cannot be found to actively induce infringement of the patents at issue. As noted above, the parties’ dispute concerns one theory of infringement—whether H+S induces infringement of the patents at issue when an ultimate customer or end user combines a [[ ]] with a IANOS Standard Chassis. Importantly, H+S does not primarily contest that the combination of the [[ ]] with the IANOS Standard Chassis practices the patents at issue. See H+S Response at 1 (“even if the combination practices a claim of the ’320, ’153, and ’456 Patents, it does not ‘infringe’”) (emphasis added); see also H+S Post Oral Discussion Submission at 12. Rather, H+S makes two non-infringement arguments in this inter partes proceeding. First, H+S contends that an end user’s combination of the [[ ]] with the IANOS Standard Chassis is non-infringing because that “combination necessarily involves a IANOS Standard [C]hassis that [[ ]]” Under this view, infringement is “precluded by the doctrine of patent exhaustion.” H+S Post Oral Discussion Submission at 1. Second, H+S argues that – in addition to [[ ]] – it does not possess the requisite specific intent to induce infringement. See H+S Post Oral Discussion at 2.

To reiterate, a finding of induced infringement requires, inter alia, specific intent to encourage another’s infringement, with the inducer taking an affirmative act to encourage infringement, having knowledge of the patent at issue and that the induced acts constitute infringement. See Microsoft, 755 F.3d at 904; i4i, 598 F.3d at 851, cited in FID at 93-94.

The Knowledge Requirement

“[I]nduced infringement under § 271(b) requires knowledge that the induced acts constitute patent infringement.” Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 766 (2011). In requiring proof that the party knew that the induced acts were infringing, the Supreme Court has held that a party cannot be liable for induced infringement if that party maintains a reasonable non-infringement position. Commil, 575 U.S. at 642 (“[T]he Global-Tech rationale is sound. Qualifying or limiting its holding . . . would lead to the conclusion, both in inducement and contributory infringement cases, that a person, or entity, could be liable even though he did not know the acts were infringing. In other words, even if the defendant reads the patent’s claims differently from the plaintiff, and that reading is reasonable, he would still be liable because he knew the acts might infringe. Global-Tech requires more. It requires proof that the defendant knew the acts were infringing. And the Court’s opinion was clear in rejecting any lesser mental state as the standard.”) (internal citations omitted); see also Warsaw Orthopedic, Inc. v. NuVasive, Inc., 824 F.3d 1344, 1351 n.2 (Fed. Cir. 2016) (“To show the intent to induce infringement, it is sufficient that the plaintiff establish that defendant’s asserted belief in non-infringement was unreasonable.”). This requirement can be satisfied by a finding of willful blindness as to infringement, which requires that the accused subjectively believed that there was a high risk of infringement and took deliberate actions to avoid confirming infringement, as opposed to deliberate indifference to a known risk of infringement. Global-Tech., 563 U.S. at 769-70.

Courts have held that accused infringers knew of, or were willfully blind to, infringement due to claim constructions unsupported by prosecution history and that were “clearly inconsistent” with what the accused previously argued. See Warsaw, 824 F.3d at 1349-50. Further, the Federal Circuit has emphasized that “[t]he Supreme Court’s Global-Tech Appliances and Commil decisions require a showing of the accused infringer’s subjective knowledge as to the underlying direct infringement.” Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1364 (Fed. Cir. 2016) (emphasis added).

Here, we find that H+S does not possess the requisite subjective knowledge that the acts identified constitute infringement because H+S maintains a reasonable non-infringement position. Corning has argued that H+S instructs its customers to combine the [[ ]] and the IANOS Standard Chassis, and that this combination is the basis for a finding of infringement. See e.g., Corning Sur-Reply at 8. H+S, however, claims that “Corning’s patent rights with respect to such a combination are exhausted pursuant to [[ ]] such that, even if the combination practices a claim of the ’320, ’153 and ’456 Patents, it does not ‘infringe’ and is not thereby subject to exclusion from entry for consumption into the United States under the 1194 GEO.” H+S Reply at 1.

Patent exhaustion occurs when there is an authorized sale of an article that substantially embodies the patent. See Quanta Computer, Inc. v. LG Elec., Inc., 553 U.S. 617, 638 (2008). Such an authorized sale for the purposes of patent exhaustion may occur through a licensee. See Impression Prods. V. Lexmark Int’l, Inc. 137 S. Ct. 1523, 1535 (2017) (“In sum, patent exhaustion is uniform and automatic. Once the patentee decides to sell—whether on its own or through a licensee—that sale exhausts its patent rights, regardless of any post-sale restrictions the patentee purports to impose, either directly or through a license.”). Articles substantially embody a patent when “their only reasonable and intended use was to practice the patent and [when] they ‘embodie[d] essential features of [the] patented invention.’” Quanta, 553 U.S. at 631 (quoting United States v. Univis Lens Co., 316 U.S. 241, 251). The embodiment requirement can be satisfied when the article has no reasonable noninfringing use and includes all the inventive aspects of the patented methods. See Quanta, 553 U.S. at 683; see also Keurig, Inc. v. Sturm Foods, Inc., 732 F.3d 1370, 1372 (Fed. Cir. 2013) (“[T]he Supreme Court’s substantial embodiment test [] provid[es] that method claims are exhausted by sale of an unpatented component article if that article includes all the inventive aspects of the patented method and has no reasonable noninfringing use[.]”).

According to H+S, “[[ ]] the sale of all IANOS Standard Chassis that are currently in the United States, and no more are being imported by H+S.” H+S Reply at 5. It is uncontested that this [[ ]]. Corning Response Ex. C at 4 ([[ ]]). Further, Corning [[ ]]. Id. at 5 ([[ ]]). And Corning agreed that it would “[[ ]]” Id. H+S argues that the only reasonable and intended use for the IANOS Standard Chassis was to practice the patent. H+S Reply at 6 (“More specifically, Corning said that the ‘Huber+Suhner IANOS [Standard] [C]hassis … has no other use than to be combined with Huber+Suhner IANOS modules’ and thereby infringe[] at least one of the claims of the ’320 patent.’” (quoting Complaint Ex. 1 at ¶ 154) (emphasis provided by H+S). According to H+S, (1) the chassis embodies the essential features of the patents, as the chassis is the first limitation recited in the claims of the patents at issue, (2) Corning conceded that the chassis include features that satisfy limitations necessary for an infringement finding, and (3) Corning does not dispute that the combination of the [[ ]] and the IANOS Lite Chassis does not infringe. See H+S Reply at 6-7 (internal citations omitted).

Corning offers counterarguments to H+S’s patent exhaustion claims but does not argue that H+S’s core noninfringement position is unreasonable. See Warsaw, 824 F.3d at 1351, n.2 (“To show the intent to induce infringement, it is sufficient that the plaintiff establish that defendant’s asserted belief in non-infringement was unreasonable.”). In this context, weighing the respective strength of each party’s arguments is not warranted, as the EOE Branch instead must analyze only whether H+S has maintained a reasonable noninfringement argument for purposes of determining whether it possesses the knowledge required. See Unwired Planet, 829 F.3d at 1364 (“Because the district court’s grant of summary judgment was based exclusively on its view of the strength of Apple’s non-infringement argument, we vacate. The Supreme Court’s Global-Tech Appliances and Commil decisions require a showing of the accused infringer’s subjective knowledge as to the underlying direct infringement. The district court’s reliance on the objective strength of Apple’s non-infringement arguments as precluding a finding of induced or contributory infringement was erroneous.”). Although Corning has provided counterarguments as to H+S’s noninfringement position, they have not defeated the showing by H+S that it has maintained a reasonable noninfringement position and, as such, that it does not possess the knowledge that the identified acts constitute patent infringement under a theory of indirect infringement based on active inducement. Instead, after reviewing the arguments submitted on this point, H+S is determined to possess a reasonable noninfringement position with respect to the patent exhaustion question and therefore does not have the requisite knowledge for a finding of induced infringement. V. HOLDING

We find that H+S has met its burden to establish that the IANOS Lite Chassis, the SYLFA HD 3U Chassis, the SYLFA HD Transition Module, the LISA Fiber Chassis, and the LISA Fiber Cassette do not infringe any of claims 1 or 3 of the ’320 patent; claims 11, 12, 14-16, 19, 21, 27, or 28 of the ’456 patent; claims 9, 16, 23, or 26 of the ’153 patent; or claims 22 or 23 of the ’206 patent. We also find that the H+S has met its burden to establish that the [[ ]] does not infringe any of the patent claims mentioned above. Accordingly, we find that the articles at issue are not subject to the GEO issued as result of Investigation No. 337-TA-1194.

The 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. §§ 177.2(b)(1), (2), (4), and 177.9(b)(1) and (2).

Sincerely,

Dax Terrill
Chief, Exclusion Order Enforcement Branch

CC: Mr. John Thorne
KELLOGG, HANSEN, TODD, FIGEL & FREDERICK, P.L.L.C.
1615 M Street NW, Suite 400
Washington, D.C. 20036
[email protected]