• HQ H326558
• Dec 21, 2022

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

OT:RR:BSTC:EOE H326558 FKM

Mr. Derrick J. Carman
Robins Kaplan LLP
1325 Avenue of the Americas, Suite 2601
New York, New York 10019

VIA EMAIL: [email protected]

RE: Ruling Request; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-1259; Certain Toner Supply Containers and Components Thereof (I)

Dear Mr. Carman:

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 Katun Corporation and General Plastic Industrial Co. Ltd. (collectively, “Katun”) has not met its burden to show that certain redesigned toner cartridges (“articles at issue” or “Katun Redesign”) do not infringe one or more of claim 1 of U.S. Patent No. 10,209,667 (“the ’667 patent”); claim 1 of U.S. Patent No. 10,289,060 (“the ’060 patent”); claim 1 of U.S. Patent No. 10,289,061 (“the ’061 patent”); claim 1 of U.S. Patent No. 10,295,957 (“the ’957 patent”); claims 1 and 12 of U.S. Patent No. 10,488,814 (“the ’814 patent”); claims 50, 58, and 61 of U.S. Patent No. 10,496,032 (“the ’032 patent”); claims 1 and 13 of U.S. Patent No. 10,496,033 (“the ’033 patent”); claims 46 and 50 of U.S. Patent No. 10,514,654 (“the ’654 patent”); claims 1, 10, and 13 of U.S. Patent No. 10,520,881 (“the ’881 patent”); or claims 1 and 8 of U.S. Patent No. 10,520,882 (“the ’882 patent”) (collectively, “patents at issue”). Thus, CBP’s position is that the articles at issue are subject to the general exclusion order issued by the U.S. International Trade Commission (“Commission” or “ITC”) in Investigation No. 337-TA-1259 (“the underlying investigation” or “the 1259 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, Katun, the ruling requester and respondent in the 1259 investigation; and (2) Canon Inc., Canon U.S.A., Inc., and Canon Virginia, Inc. (“collectively, “Canon”), complainant in the 1259 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, 588 U. S. ___, ___, 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, e.g., U.S. Department of Justice, Office of Information Policy: 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-1259

Procedural History at the ITC

The Commission instituted Investigation No. 337-TA-1259 on April 13, 2021, based on a complaint filed by Canon. Certain Toner Supply Containers and Components Thereof (I), Inv. No. 337-TA-1259, EDIS Doc. ID 778370, Public Commission Opinion (Aug. 19, 2022) (“Comm’n Op.”) at 2 (citing 86 Fed. Reg. 19284-86 (Apr. 13, 2021)). The complaint, as supplemented, alleged a violation of section 337 by reason of infringement of certain claims of U.S. Patent Nos. 8,565,649; 9,354,551; 9,753,402; the ’667 patent; the ’060 patent; the ’061 patent; the ’957 patent; the ’814 patent; the ’032 patent; the ’033 patent; the ’654 patent; the ’881 patent; and the ’882 patent. Comm’n Op. at 2. The Commission instituted two separate investigations based on the complaint, pursuant to Commission Rule 210.10(a)(6) (19 C.F.R. § 210.10(a)(6), and defined the scope of the 1259 investigation to the allegations of infringement of the asserted claims of the ’667, ’060, ’061, ’957, ’814, ’032, ’033, ’654, ’881, and ’882 patents. Id. The notice of investigation named Katun, among other parties, as a respondent. Id. at 3-4. Katun was terminated from the investigation due to consent order stipulations. Id. at 4 (citing Order No. 10 (July 1, 2021), unreviewed by Notice (July 19, 2021)). The Commission’s Office of Unfair Import Investigations was named as a party in the investigation. Comm’n Op. at 4.

On March 15, 2022, the Administrative Law Judge (“ALJ”) issued a final initial determination (“FID”), granting Canon’s motion for summary determination and finding a violation of section 337. Id. at 5. 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 that infringe claim 1 of the ’667 patent; claim 1 of the ’060 patent; claim 1 of the ’061 patent; claim 1 of the ’957 patent; claims 1 and 12 of the ’814 patent; claims 50, 58, and 61 of the ’032 patent; claims 1 and 13 of the ’033 patent; claims 46 and 50 of the ’654 patent; claims 1, 10, and 13 of the ’881 patent; and claims 1 and 8 of the ’882 patent. Id. at 5 n.5.

On April 29, 2022, the Commission determined to review the FID in part and requested briefing remedy, bonding, and the public interest. Id. at 6 (citing 87 Fed. Reg. 26783-85 (May 5, 2022). The Commission, in its review of the ID, found a violation of section 337 by the defaulting respondents with respect to claim 1 of the ’667 patent; claim 1 of the ’060 patent; claim 1 of the ’061 patent; claim 1 of the ’957 patent; claims 1 and 12 of the ’814 patent; claims 50, 58, and 61 of the ’032 patent; claims 1 and 13 of the ’033 patent; claims 46 and 50 of the ’654 patent; claims 1, 10, and 13 of the ’881 patent; and claims 1 and 8 of the ’882 patent. Id. at 26. Furthermore, the Commission determined that the appropriate remedy was a general exclusion order and cease and desist orders directed to twenty defaulting respondents. Id.

In the general exclusion order, the Commission ordered that “[c]ertain toner supply containers and components thereof (as defined in paragraph 2 below) that infringe one or more of claim 1 of the ’667 patent; claim 1 of the ’060 patent; claim 1 of the ’061 patent; claim 1 of the ’957 patent; claims 1 and 12 of the ’814 patent; claims 50, 58, and 61 of the ’032 patent; claims 1 and 13 of the ’033 patent; claims 46 and 50 of the ’654 patent; claims 1, 10, and 13 of the ’881 patent; and claims 1 and 8 of the ’882 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 Toner Supply Containers and Components Thereof (I), Inv. No. 337-TA-1259, EDIS Doc. ID 776789, General Exclusion Order (Aug. 1, 2022) at 2 (“1259 GEO”). In paragraph 2, the Commission further defined the articles covered by the general exclusion order as “certain toner supply containers and components thereof that are sold as replacements for Canon toner supply containers used in Canon copy machines.” Id.

The Patents and Claims in the 1259 GEO

The 1259 GEO prohibits the unlicensed entry for consumption of toner supply containers and components thereof that infringe one or more of claim 1 of the ’667 patent; claim 1 of the ’060 patent; claim 1 of the ’061 patent; claim 1 of the ’957 patent; claims 1 and 12 of the ’814 patent; claims 50, 58, and 61 of the ’032 patent; claims 1 and 13 of the ’033 patent; claims 46 and 50 of the ’654 patent; claims 1, 10, and 13 of the ’881 patent; and claims 1 and 8 of the ’882 patent. See 1259 GEO at 2. The patents at issue in the 1259 GEO belong to same patent family, share the same drawings and common specification, and are all titled “Developer Supply Container and Developer Supplying System.” Certain Toner Supply Containers and Components Thereof (I), Inv. No. 337-TA-1259, EDIS Doc. ID 766498, Initial Determination Granting Canon’s Motion for Summary Determination of Violation of Section 337 and Recommended Determination on Remedy and Bond (March 15, 2022) at 13.

Claim 1 of the ’667 Patent

Claim 1 of the ’667 patent is reproduced below:

1. A developer supply container comprising:

a developer accommodating body configured to contain developer, the developer accommodating body being rotatable about a rotational axis, and the developer accommodating body being provided with a gear portion provided about the rotational axis;

a developer discharging body in fluid communication with the developer accommodating body, the developer discharging body having a discharge opening that is provided in a bottom portion of the developer discharging body, with the discharge opening being configured to permit discharge of the developer from the developer discharging body, and with the developer accommodating body being rotatable relative to the developer discharging body; and

a track provided at each of opposite sides of the developer discharging body and extending below a horizontal plane that includes the rotational axis, each track (i) projecting from a surface, (ii) including a first part that extends from a first end portion to a second end portion, with the second end portion being closer to the gear portion than the first end portion, and with the first part ascending such that the second end portion is closer to the horizontal plane than the first end portion, and (iii) including a second part extending from the second end portion of the first part such that a plane perpendicular to the rotational axis and passing through the second part crosses the discharge opening, with a portion of the surface extending from the first end portion in a direction away from the gear portion.

’667 patent at 119:37-67.

Claim 1 of the ’060 Patent

Claim 1 of the ’060 patent is reproduced below:

1. A developer supply container comprising:

a developer accommodating body configured to contain developer, the developer accommodating body being rotatable about a rotational axis;

a developer discharging body in fluid communication with the developer accommodating body, the developer discharging body having a discharge opening provided in a bottom portion of the developer discharging body, with the discharge opening being configured to discharge the developer from the developer discharging body, and with the developer accommodating body being rotatable relative to the developer discharging body; and

a track provided at each of opposite sides of the developer discharging body, each track being provided below a plane that includes the rotational axis and divides the developer supply container into a lower section that includes the discharge opening and an upper section, each track extending from a first position to a second position, with the second position being closer to the plane than the first position and such that a plane perpendicular to the rotational axis and passing through the track passes through the discharge opening, and each track projecting from a surface, with a portion of the surface extending from the first position in a direction of the rotational axis and away from the second position.

’060 patent at 119:1-28.

Claim 1 of the ’061 Patent

Claim 1 of the ’061 patent is reproduced below:

1. A developer supply container comprising:

a developer accommodating body configured to contain developer, the developer accommodating body being rotatable about a rotational axis, and the developer accommodating body being provided with a gear portion provided about the rotational axis;

a developer discharging body in fluid communication with the developer accommodating body, the developer discharging body being adjacent to a first end of the developer accommodating body, the developer discharging body having a discharge opening that is provided in a bottom portion of the developer discharging body, with the discharge opening being configured to permit discharge of the developer from the developer discharging body, and with the developer accommodating body being rotatable relative to the developer discharging body; and

a track provided at each of opposite sides of the developer discharging body, each track (i) projecting from a surface, (ii) including a first part with a first end and a second end, the first part ascending away from a bottom of the developer supply container as a distance to a second end of the developer accommodating body that is opposite from the first end of the developer accommodating body decreases, and (iii) including a second part extending from the second end of the first part such that a plane perpendicular to the rotational axis and passing through the second part passes through the discharge opening, with a portion of the surface extending from the first end of the first part in a direction away from the second part,

wherein a plane parallel to the rotational axis and passing through the second parts of the tracks is between the rotational axis and the discharge opening.

’061 patent at 119:36-120:3.

Claim 1 of the ’957 Patent

Claim 1 of the ’957 patent is reproduced below:

1. A developer supply container comprising:

a developer accommodating body configured to contain developer, the developer accommodating body being rotatable about a rotational axis;

a developer discharging body in fluid communication with the developer accommodating body, the developer discharging body having a discharge opening that is provided in a bottom portion of the developer discharging body, with the discharge opening being configured to discharge the developer from the developer discharging body, and with the developer accommodating body being rotatable relative to the developer discharging body; and

a track provided at each of opposite sides of the developer discharging body, each track being provided below a plane that includes the rotational axis and divides the developer supply container into a lower section that includes the discharge opening and an upper section, each track (i) projecting from a surface, (ii) including a first part that extends from a first position to a second position, with the second position being closer to the plane than the first position, and (iii) including a second part extending from the second position of the first part such that a plane perpendicular to the rotational axis and passing through the second part passes through the discharge opening, with a portion of the surface extending from the first position of the first part in a direction away from the second part.

’957 patent at 119:36-64.

Claims 1 and 12 of the ’814 Patent

Claims 1 and 12 of the ’814 patent are reproduced below:

1. A developer supply container comprising:

a developer accommodating body configured to contain developer; a developer discharging body in fluid communication with the developer accommodating body, the developer discharging body being positioned adjacent to a first end of the developer accommodating body, the developer discharging body having a discharge opening, the discharge opening being configured to form at least a part of a discharge passageway through which developer may be discharged to outside of the developer supply container, with an end of the discharge passageway being positioned at a bottommost side of the developer supply container, and with the developer accommodating body being rotatable about a rotational axis thereof relative to the developer discharging body,

wherein the developer accommodating body is provided with a gear portion provided about the rotational axis; and

a track provided at each of opposite sides of the developer discharging body, each track including (i) a first part ascending away from a bottom of the developer supply container as a distance to a second end of the developer accommodating body that is opposite from the first end of the developer accommodating body decreases and (ii) a second part extending from an end of the first part such that a plane perpendicular to the rotational axis and passing through the second part passes through the end of the discharge passageway when the discharge passageway through which developer is discharged to outside of the developer supply container is formed,

wherein a plane parallel to the rotational axis and passing through the second parts of the tracks is between the rotational axis and the discharge opening.

’814 patent at 118:47-119:13.

12. The developer supply container according to claim 1, wherein the first part of each track includes a lower part and an upper part, with the lower part being parallel to the upper part.

Id. at 119:55-58.

Claims 50, 58, and 61 of the ’032 Patent

Claims 50, 58 and 61 of the ’032 patent are reproduced below:

50. A developer supply container comprising:

a developer accommodating body configured to contain developer;

a developer discharging body in fluid communication with the developer accommodating body, the developer discharging body having a discharge opening, the discharge opening being configured to form at least a part of a discharge passageway through which developer may be discharged to outside of the developer supply container, with an end of the discharge passageway being positioned at a bottommost side of the developer supply container, and with the developer accommodating body being rotatable about a rotational axis thereof relative to the developer discharging body,

wherein the developer accommodating body is provided with a gear portion provided about the rotational axis; and

a track provided at each of opposite sides of the developer discharging body, each track being positioned below a horizontal plane including the rotational axis, each track including (i) a first part that extends from a first position to a second position, with the second position being provided between the first position and the gear portion in a direction of the rotational axis, with the first part ascending such that the second position is closer to the horizontal plane than the first position, and (ii) a second part extending from the second position of the first part such that a plane perpendicular to the rotational axis and passing through the second part crosses the end of the discharge passageway when the discharge passageway through which developer is discharged to outside of the developer supply container is formed.

’032 patent at 123:52-124:19.

58. A developer supply container according to claim 50, further comprising a shutter including an opening, with the opening in the shutter being configured to form a part of the discharge passageway, the shutter being movable relative to the discharging body between (i) an open position wherein the opening in the shutter is aligned with the discharge opening to form the discharge passageway, and (ii) a closed position wherein the opening in the shutter is not aligned with the discharge opening to thereby close the discharge opening.

Id. at 124:43-52.

61. The developer supply container according to claim 50, wherein the first part of each track includes a lower part and an upper part, with the lower part being parallel to the upper part.

Id. at 124:61-63.

Claims 1 and 13 of the ’033 Patent

Claims 1 and 13 of the ’033 patent are reproduced below:

1. A developer supply container comprising:

a developer accommodating body configured to contain developer;

a developer discharging body in fluid communication with the developer accommodating body, the developer discharging body having a discharge opening configured to form at least a part of a discharge passageway through which developer may be discharged to outside of the developer supply container, with the developer accommodating body being rotatable about a rotational axis thereof relative to the developer discharging body; and

a track provided at each of opposite sides of the developer discharging body, each track being positioned below a horizontal plane that (i) includes the rotational axis and (ii) divides the developer supply container into a lower section that includes the discharge opening and an upper section, each track including (i) a first part that extends from a first position to a second position, with the second position being closer to the horizontal plane than the first position is to the horizontal plane, and with the first part having a surface facing upward, and (ii) a second part extending from the second position of the first part such that a plane perpendicular to the rotational axis and passing through the second part passes through an end of the discharge passageway when the discharge passageway through which developer is discharged to outside of the developer supply container is formed,

wherein, when the developer supply container is oriented such that the tracks are between an uppermost side and a lowermost side of the developer supply container, the end of the discharge passageway is positioned at a bottommost side of the developer supply container.

’033 patent at 119:19-52.

13. The developer supply container according to claim 1, wherein the first part of each track includes a lower part and an upper part, with the lower part being parallel to the upper part.

Id. at 120:31-34.

Claims 46 and 50 of the ’654 Patent

Claims 46 and 50 of the ’654 patent are reproduced below:

46. A developer supply container comprising:

a developer accommodating body configured to contain developer;

a developer discharging body in fluid communication with the developer accommodating body, the developer discharging body having a discharge opening, the discharge opening configured to form at least a part of a discharge passageway through which developer may be discharged to outside of the developer supply container at the end of the discharge passageway, and with the developer accommodating body being rotatable about a rotational axis thereof relative to the developer discharging body; and

a track provided at a side of the developer discharging body, and the track including a first part and a second part, with the first part and the second part intersecting each other such that the track is formed in at least two different directions, and with a portion of the surface extending (i) from an end of the first part that is opposite the intersection of the first part and the second part, and (ii) in a direction away from the second part,

wherein, the developer supply container is configured such that, when the developer supply container is oriented such that an end of the discharge passageway opens in a downward direction, the entire track is positioned higher in an upward direction than the end of the discharge passageway. ’654 patent at 123:20-46.

50. A developer supply container according to claim 46, further comprising a shutter including an opening, with the opening in the shutter being configured to form a part of the discharge passageway, the shutter being movable relative to the discharging body between (i) an open position wherein the opening in the shutter is aligned with the discharge opening to form the discharge passageway, and (ii) a closed position wherein the opening in the shutter is not aligned with the discharge opening to thereby close the discharge opening.

Id. at 123:61-124:3.

Claims 1, 10, and 13 of the ’881 Patent

Claims 1, 10, and 13 of the ’881 patent are reproduced below:

1. A developer supply container comprising:

a developer accommodating body configured to contain developer;

a developer discharging body in fluid communication with the developer accommodating body, the developer discharging body having a discharge opening, the discharge opening being configured to form at least a part of a discharge passageway through which developer may be discharged to outside of the developer supply container, with an end of the discharge passageway being positioned at a bottommost side of the developer supply container, and with the developer accommodating body being rotatable about a rotational axis thereof relative to the developer discharging body; and

a track provided at each of opposite sides of the developer discharging body, each track being positioned below a horizontal plane that (i) includes the rotational axis and (ii) divides the developer supply container into a lower section that includes the discharge opening and an upper section, each track including (i) a first part that extends from a first position to a second position, with the second position being closer to the horizontal plane than the first position is to the horizontal plane, and with the first part having a surface facing upward, and (ii) a second part extending from the second position of the first part such that a plane perpendicular to the rotational axis and passing through the second part passes through the end of the discharge passageway when the discharge passageway through which developer is discharged to outside of the developer supply container is formed.

’881 patent at 119:37-67.

10. The developer supply container according to claim 1, further comprising a shutter including an opening, with the opening in the shutter being configured to form a part of the discharge passageway, and with the shutter being movable relative to the discharging body between (i) an open position wherein the opening in the shutter is aligned with the discharge opening to form the discharge passageway, and (ii) a closed position wherein the opening in the shutter is not aligned with the discharge opening to thereby close the discharge opening.

Id. at 120:28-37.

13. The developer supply container according to claim 1, wherein the first part of each track includes a lower part and an upper part, with the lower part being parallel to the upper part.

Id. at 120:45-48.

Claims 1 and 8 of the ’882 Patent

Claims 1 and 8 of the ’882 patent are reproduced below:

1. A developer supply container comprising:

a developer accommodating body configured to contain developer;

a developer discharging body in fluid communication with the developer accommodating body, the developer discharging body having a discharge opening, the discharge opening being configured to form at least a part of a discharge passageway through which developer may be discharged to outside of the developer supply container, with an end of the discharge passageway being positioned at a bottommost side of the developer supply container, and with the developer accommodating body being rotatable about a rotational axis thereof relative to the developer discharging body; and

a track provided at each of opposite sides of the developer discharging body, each track being positioned (i) below a horizontal plane that includes the rotational axis and (ii) divides the developer supply container into a lower section that includes the discharge opening and an upper section, a surface of each track extending from a first position to a second position, with the second position being closer to the horizontal plane than the first position is to the horizontal plane, and with the surface facing upward, and each track extending such that a plane perpendicular to the rotational axis and passing through the track passes through the end of the discharge passageway when the discharge passageway through which developer is discharged to outside of the developer supply container is formed.

’882 patent at 119:18-46.

8. The developer supply container according to claim 1, further comprising a shutter including an opening, with the opening in the shutter being configured to form a part of the discharge passageway, and with the shutter being movable relative to the discharging body between (i) an open position wherein the opening in the shutter is aligned with the discharge opening to form the discharge passageway, and (ii) a closed position wherein the opening in the shutter is not aligned with the discharge opening to thereby close the discharge opening.

Id. at 119:66-120:8.

19 C.F.R. Part 177 Ruling Request

Procedural History

On August 2, 2022, Katun submitted a letter to CBP requesting an administrative ruling pursuant to 19 C.F.R. Part 177, which included three attachments (collectively, “Ruling Request”). Katun Email to EOE Branch, dated August 2, 2022. Katun requested “a written ruling that certain toner supply containers that GPI and Katun manufacture and plan to import into the United States are not subject to the general exclusion order (‘GEO’) that the U.S. International Trade Commission (‘Commission’) issued in Investigation No. 337-TA-1259[.]” Ruling Request at 1. On August 4, 2022, Katun provided the EOE Branch with copy of the request that designated certain information contained in the request as confidential and confirmed that a redacted copy of the request had been provided to counsel for Canon. Katun Email to EOE Branch, dated August 4, 2022.

On August 11, 2022, the EOE Branch had an initial conference call with Katun and Canon, during which both parties agreed to the EOE Branch conducting this proceeding on an inter partes basis. The parties submitted a joint proposed procedural schedule and confirmed the execution of a non-disclosure agreement on August 16, 2022. Katun Email to EOE Branch, dated August 16, 2022. On August 18, 2022, after considering the party submission, the EOE Branch established the procedural schedule for the inter partes ruling process. See EOE Branch email to Parties, dated August 18, 2022. On September 9, 2022, Canon provided its response to the Ruling Request, which included Exhibits 1 and 2 (collectively, “Canon Response”). On September 16, 2022, Katun provided its reply to Canon’s Response (“Katun Reply”). On September 23, 2022, Canon provided its sur-reply (“Canon Sur-Reply”) to Katun’s Reply. On October 5, 2022, the EOE Branch conducted an oral discussion with the parties, for which both parties submitted presentations (respectively, “Katun Oral Discussion Presentation” and “Canon Oral Discussion Presentation”). The parties provided post-oral discussion submissions on October 14, 2022 (respectively, “Katun Post-Oral Discussion Submission” and “Canon Post-Oral Discussion Submission”).

The Articles at Issue

The articles at issue in the Ruling Request are certain toner supply containers that Katun manufactures and plans to import. Ruling Request at 1. Specifically, the products for which Katun requested a ruling are toner cartridges that employ a separate sliding engagement member, and thus, according to Katun, do not have a “track ‘on’ or ‘projecting from’” the developer discharging body. Ruling Request at 17. Katun also noted its view “that all products that include a similar separate, sliding engagement systems do not infringe the GEO Claims and therefore are not subject to the general exclusion order issued in the 1259 investigation.” Id. at 27.

Katun argues that “the properly construed GEO claims require that the claimed ‘track’ be ‘on’ or ‘projecting from’ the developer discharging body. In other words, the claimed track must be attached to the developer discharging body. . . . [T]he Katun Toner Cartridges employ a separate sliding engagement member . . . [that] is not ‘on’ or ‘projecting from’ the developer discharging body. Instead, the sliding engagement member is moveably coupled to the developer discharging body such that, by sliding relative to the developer discharging body, the developer receiving portion can be lifted to create a seal between the developer receiving portion and the developer discharging body.” Id. at 17. A depiction of the Katun Redesign is reproduced below:

[[ ]]

Ruling Request at 26.

ISSUE

Whether Katun has met its burden to show that the articles at issue do not infringe the patents at issue, and thus are not subject to the general exclusion order issued in the 1259 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. 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 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).

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. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). However, it sometimes involves “evidentiary underpinnings” that require courts to resolve underlying factual disputes. See Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 331-32 (2015) (internal quotation marks omitted). For example, “when a written instrument uses ‘technical words or phrases not commonly understood,’” such words or terms may “give rise to a factual dispute,” and factual findings will “‘preced[e]’ the ‘function of construction.’” See id. at 837-38 (citing Great Northern R. Co. v. Merchants Elevator Co., 259 U.S. 285, 292 (1922)).

The words of a claim “are generally given their ordinary and customary meaning.” Vitronics Corp. v. Conceptronic, 90 F.3d 1576, 1582 (Fed. Cir. 1996). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Vitronics, 90 F.3d at 1580). “The standards for finding lexicography and disavowal are exacting.” Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014). “To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning.’” Thorner, 669 F.3d at 1365. In such cases, the patentee must “‘clearly express an intent’ to redefine the term.” Id. Regarding disavowal, “[w]here the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.” Id. at 1366 (citing Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001)) (internal quotation marks omitted).

The ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art at the time of the invention. See Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005). “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. Claim construction in those cases requires “little more than the application of the widely accepted meaning of commonly understood words.” Id.

“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, 415 F.3d at 1313. Such context constitutes intrinsic evidence which is necessary for claim construction. See id. at 1313-17. However, “there is sometimes a fine line between reading a claim in light of the specification, and reading a limitation into the claim from the specification.” Phillips, 415 F.3d at 1305 (citing Comark Communs., Inc. v. Harris Corp., 156 F.3d 1182, 1186-87 (Fed. Cir. 1998)) (internal quotation marks omitted). “To avoid importing limitations from the specification into the claims, it is important to keep in mind that the purposes of the specification are to teach and enable those of skill in the art to make and use the invention and to provide a best mode for doing so.” Id. at 1323. For example, even if “the only embodiments, or all of the embodiments, contain a particular limitation,” one may not use such limitation to “limit claims beyond their plain meaning.” See Evolusion Concepts, Inc. v. HOC Events, Inc., 22 F.4th 1361, 1367 (Fed. Cir. 2022).

In construing claim language, in addition to consulting the claims and specification of a patent, a court “should also consider the patent's prosecution history,” which is also considered intrinsic evidence. See Phillips, 415 F.3d at 1317 (citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995)) (internal quotation marks omitted). However, because the prosecution history represents an “ongoing negotiation between the PTO and the applicant,” it “often lacks the clarity of the specification” and is “less useful for claim construction purposes.” See id.

Where further clarification on the scope of the patented invention, claim meaning, or the underlying science of the claim meaning is required after reviewing the intrinsic record, a court may need to consult extrinsic evidence. See Phillips, 415 F.3d at 1317, 1319. However, since extrinsic evidence is generally less reliable than the intrinsic record, it may not be used to contradict a claim meaning that is “unambiguous in light of the intrinsic evidence.” See id. at 1318, 1324.

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

The parties have categorized the patents at issue into two groups based on the claim language used. See e.g., Ruling Request at 18; Canon Response at 2. For the first category of patents – the ’667, ’060, ’061, and ’957 patents – the relevant claims recite a “track . . . projecting from a surface.” See id. (“Category 1 Claims”). With regard to these claims, Canon states that it “does not contest that the track in the Katun Redesigns does not project from a surface, and thus Canon agrees that the Katun Redesigns do not infringe the Category 1 Claims.” Canon Response at 4; see Oral Discussion Transcript at 34:12-14 (“Canon agrees that the Category 1 claims . . . are not infringed by the Katun redesigns.”).

The second category of patents – the ’814, ’032, ’033, ’654, ’881, and ’882 – includes claims that recite either “a track provided at each of opposite sides of the developer discharging body” or “a track provided at a side of the developer discharging body.” See e.g., Ruling Request at 18; Canon Response at 4 (“Category 2 claims”). The parties treat these two limitations as interchangeable, and thus, they will be treated as the same for the purposes of this ruling (“the ‘provided at’ limitation”). See, e.g., Ruling Request at 18 (“There is no meaningful distinction between ‘a track provided at each of opposite sides of the developer discharging body’ and ‘a track provided at a side of the developer discharging body.’ Accordingly, this letter treats them together.”). Unlike the first group of patent claims at issue, Canon argues that the Katun Redesign does infringe the second category of patent claims. See Canon Response at 5.

The only dispute in this ruling request regards the construction of the “provided at” limitation. See Canon Response at 1 (“The Ruling Request hinges entirely on claim construction.”); see also Katun Post-Oral Discussion Submission at 1 (“. . . the only real question for Customs to resolve is the meaning of [the ‘provided at’ limitation]. Once Customs resolves the claim construction question in Katun’s favor, Customs should find Katun’s redesigned toner supply containers do not infringe the GEO patents.”); see also Canon Post-Oral Discussion Submission at 6 (“All parties agree that the ruling Katun seeks hinges on CBP adopting its proposed ‘on’ or ‘projecting from’ claim construction.”). Both parties argue that the limitation should be given its plain and ordinary meaning, however, they disagree as to the scope of that plain and ordinary meaning.

Claim Construction of the “Provided At” Limitation

For the reasons discussed below, we find that the “provided at” limitation is not limited to tracks that are “on” or “projecting from” the developer discharging body, as the plain and ordinary meaning does not support such a limited scope.

Katun argues that the limitation should be understood to cover tracks that are “on” or “projecting from” the developer discharge body, “[g]iven the clear structural association between the claimed track and the developer discharging body in the claims[.]” Ruling Request at 19. In support of this understanding, Katun discusses the language of the claim itself, the specification, and the prosecution history. See e.g., Ruling Request at 19-24. Although the specification and prosecution history can provide context for the ordinary and customary meaning of a claim term, Phillips, 415 F.3d at 1313, we do not find Katun’s interpretation of these contextual points to be persuasive.

1. The Claim Language

With respect to the language of the claim itself, Katun argues that “given the clear structural association between the claimed track and developer discharging body in the claims, a person of ordinary skill in the art would understand that the claimed track is actually ‘on’ or ‘projecting from’ the developer discharging body.” Ruling Request at 19. Canon replies to Katun’s position, arguing that Katun merely asserts that the claim language demonstrates a clear structural association between the track and developer discharging body without providing any explanation or evidentiary support. Canon Response at 5-6.

Alternatively, Canon contends that “provided at” describes the location of the track and acts as a “locational description [that] has a readily understandable plain and ordinary meaning that encompasses both (1) tracks that are attached to the side of the developer discharging body and (2) tracks that are detached from and alongside the developer discharging body (like the track in the Katun Redesigns).” Canon Response at 5. In addition, Canon notes the inclusion of the phrase “projecting from a surface,” in the Category 1 claims, which is not present in the Category 2 claims. Id. at 6. In contrasting the two categories of claims, Canon argues that the addition of this phrase in the first category emphasizes the lack of such a limitation in the second category of claims, and if Katun’s construction was accurate, then any inclusion of the phrase “projecting from a surface” would be superfluous. Canon Response at 6 (citing Kara Tech. Inc. v. Stamps.com Inc., 582 F.2d 1341, 1347 (Fed. Cir. 2009) (declining to construe claims to require the use of a key when other independent claims explicitly recited a key); Phillips, 415 F.3d at 1314 (“Differences among claims can also be a useful guide in understanding the meaning of particular claim terms.”). Canon continues, noting that the Category 2 claims describe the track and developer discharging body as separate elements, rather than the track being simply a feature of the developer discharging body. Canon Response at 6.

Katun responds to Canon’s arguments by claiming that the Katun construction of the “provided at” limitation is “on” or “projecting from,” and thus, the tracks can be “on” the developer discharging body without “projecting from” it. Katun Reply at 4. Therefore, Katun argues, the proposed construction does not render the “provided at” limitation superfluous. Id. Further, Katun disputes Canon’s proposition with respect to the track and developer discharging body being claimed as separate elements because such a proposition would render the Category 1 claims as “nonsensical,” simultaneously claiming a separate track and an attached track. Id. at 5.

Canon views Katun’s reading of “projecting from” as unduly narrow, stating that Katun resorts to construing its own construction with no supporting evidence. Canon Sur-Reply at 3. Canon also raises the existence of claims that depend from the Category 1 claims, which expressly claim an integrally molded track, rather than using “projecting from.” Id. at 4. This point, according to Canon, also addresses Katun’s arguments relating to the tracks and developer discharging bodies being separately claims elements, as “[b]ecause ‘projecting from’ does not mean ‘integral with,’ there is nothing wrong with the Category 1 Claims encompassing a separate track that is attached to and projects from a surface.” Id.

Nothing in the “provided at” claim language suggests that the track must be “on” or “projecting from” the developer discharging body. The tracks and developer discharging bodies are separately claimed elements, and the Category 1 claims are described using language that differs from Category 2 claims, suggesting contrasting interpretations of the articles that are claimed. See Phillips, 415 F.3d at 1314 (“Differences among claims can also be a useful guide in understanding the meaning of particular claim terms.”). Additionally, the Category 1 claims have accompanying dependent claims that can be examined to further differentiate the Category 1 claims from the Category 2 claims, in that they expressly claim an integrated track rather than using “projecting from.” See Canon Sur-Reply at 4; see also Phillips, 415 F.3d at 1314 (“ . . . the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.”). Therefore, as claimed, there are distinctions to be made when tracks in the developer supply container are described as “integrally molded,” “projecting from,” or “provided at.” There is no language in the claims themselves that suggests that the track must be “on” or “projecting from” the developer discharging body when the limitation at issue describes the tracks as being “provided at” each of opposite sides of the developer discharging body or a side of the developer discharging body.

Though the language of the claims does not suggest such a limiting interpretation of the “provided at” limitation, the language of the claims is not the only source of meaning that may be relevant to the scope of the claims. See Phillips, 415 F.3d at 1315 (“The claims, of course do not stand alone. Rather they are part of ‘a fully integrated written instrument,’ consisting principally of a specification that concludes with the claims. For that reason, claims ‘must be read in view of the specification, of which they are a part.’”) (quoting Markman, 52 F.3d at 978, 979). Therefore, we will continue our analysis by examining the specification.

2. The Specification

According to Katun, the specification does indeed provide insight into the correct construction of the “provided at” limitation. Specifically, Katun argues that “because every single drawing and embodiment described in the specification shows the claimed track as being ‘on’ or ‘projecting from’ the developer discharging body, the claimed track . . . should be construed to be ‘on’ or ‘projecting from’ the developer discharging body.” Ruling Request at 22. Further, Katun notes that the patents “‘repeatedly, consistently, and exclusively depict[]” the track/engaging portions as being fixed tracks that are on or projecting from the developer discharging body. Id. (quoting Groove Digital, Inc. v. United Bank, 825 F. App’x 852, 856 (Fed. Cir. 2020) (citing In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1148-50 (Fed. Cir. 2012)). Because in Katun’s view the patent does not contemplate a configuration where the track is not “on” or “projecting from” the developer discharging body, Katun argues that the claims may be properly limited to the embodiments disclosed in the specification. Ruling Request at 22 (citing Profectus Tech. LLC v. Huawei Techs. Co., 823 F.3d 1375, 1381 (Fed. Cir. 2016).

In response, Canon asserts that the plain and ordinary meaning controls, except in cases of lexicography or disavowal. Canon Response at 7 (citing Apple Inc. v. Wi-LAN Inc., 25 F.4th 960, 967 (Fed. Cir. 2022) (“We depart from the plain and ordinary meaning of claim terms based on the specification in only two instances: lexicography and disavowal.”) (quoting Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014)); Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732, 734 (Fed. Cir. 2014) (“A claim term should be given its ordinary meaning in the pertinent context, unless the patentee has made clear its adoption of a different definition or otherwise disclaimed that meaning.”); Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1367 (Fed. Cir. 2012) (“The patentee is free to choose a broad term and expect to obtain the full scope of its plain and ordinary meaning unless the patentee explicitly redefines the term or disavows its full scope.”)). Because there has been no lexicography or disavowal for the patents at issue, which neither party disputes, Canon reasons that Katun is merely identifying commonalties among the preferred embodiments, which “cannot limit the scope of the claims absent the patentee’s ‘words or expressions of manifest exclusion or restriction.’” Canon Response at 8 (quoting Hill-Rom, 755 F.3d at 1372 (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 989, 906 (Fed. Cir. 2004))). Canon continues, noting that the specification does not describe the track being “on” or “projecting from” the developer discharging body, and the figures and passages state that the specification does not limit the invention. Canon Response at 8 (citing, e.g., ’667 Patent at 7:43-44 (section titled “PREFERRED EMBODIMENTS OF THE INVENTION”), 7:52-4 (“[T]he present invention is not limited to the specific structures of the embodiments which will be described hereinafter, unless otherwise stated.”).

Furthermore, Canon argues that the purpose and function of the track, as described in the specification, is to “‘displace the developer supply container 1 with the mounting operation of the developer supply container 1 so that the connected state is established in which the developer supply from the developer supply container 1 to the developer receiving portion is enabled.’” Canon Response at 9 (quoting ’667 Patent at 13:31-36). According to Canon, the patent allows for other track configurations as long as “the track operates to ‘displace the developer receiving portion 11 toward the discharge opening 3a4.’” Canon Response at 9 (quoting ’667 Patent at 14:32-36). Canon argues that Katun’s “sliding engagement member,” which “engages[s] and lift[s] the developer receiving portion” operates in just this manner, thus proving that a detached track can perform the intended function of the claimed invention. Canon Response at 9 (quoting Ruling Request at 25).

Finally, Canon challenges the case law that Katun cites in support of its argument. Canon discusses Groove Digital, stating that the case is nonprecedential and, in any event, does not support Katun’s position because the patent in Groove Digital had triggering words and statements describing features necessary for the claimed invention to work effectively that informed the claim construction. Canon Response at 9-10. With respect to the Profectus case, Canon distinguishes it from the facts at issue, as the court in Profectus used the specification to confirm the plain and ordinary meaning, rather than to articulate that meaning itself. Id. at 10.

Katun then argues that “[e]ven if Customs were to conclude that the plain and ordinary meaning of the term ‘provided at each of opposite sides of the developer discharging body’ encompassed tracks that are not ‘on’ or ‘projecting from’ the developer discharging body, such claims would be ambiguous and invalid for lack of written description. Katun Reply at 5, 7. Katun views Canon’s construction as ambiguous, requiring analysis of the intrinsic record. See Katun Post-Oral Discussion Submission at 3. Further, Katun analogizes the facts at issue to Ruckus, where “the patentee argues that the claim term ‘communications path’ encompassed both wired and wireless communications. The court concluded that ‘because the specification makes no mention of wireless communications construing the instant claims to encompass that subject matter would likely render the claims invalid for lack of written description. . . . The canon favoring constructions that preserve claim validity therefore counsels against construing ‘communications path’ to include wireless communications.’” Katun Reply at 7 (quoting Ruckus Wireless, Inc. v. Innovative Wireless Sols., LLC, 824 F.3d 999, 1004 (Fed. Cir. 2016). Katun claims that the patents do not contemplate tracks detached from the developer discharging body and thus, construing the claims as such would render the claims invalid. Katun Reply at 7. Because of the canon favoring constructions that preserve claim validity, Katun argues that CBP should not construe the “provided at” limitation to include embodiments with detached tracks. Id.

In turn, Canon maintains that the claim language is not ambiguous and that Katun “demands a level of precision that the law does not require.” Canon Sur-Reply at 4 (citing Acumed LLC v. Stryker Corp., 483 F.3d 800, 806 (Fed. Cir. 2007). In addition, according to Canon, the notion that the claims may be broader than the preferred embodiments does not render the claims invalid for lack of written description, as claims may be broader than the specific examples disclosed, and any analysis of the written description requirement must include an evaluation of certain factors that Katun has failed to raise. Canon Sur-Reply at 5. Furthermore, Canon cites Phillips for the proposition that narrow claim construction for the purpose of preserving the claim’s validity should occur only in limited circumstances when “‘the court concludes, after applying all the available tools of claim construction, that the claim is still ambiguous.’” Id. (citing Phillips, 415 F.3d at 1327 (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 911 (Fed. Cir. 2004))). As the Federal Circuit stated:

[W]e recognize that the distinction between using the specification to interpret the meaning of a claim and importing limitations from the specification into the claim can be a difficult one to apply in practice. However, the line between construing terms and importing limitations can be discerned with reasonable certainty and predictability if the court’s focus remains on understanding how a person of ordinary skill in the art would understand the claim terms. For instance, although the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments. In particular, we have expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment. . . . Much of the time, upon reading the specification in that context, it will become clear whether the patentee is setting out specific examples of the invention to accomplish those goals, or whether the patentee instead intends for the claims and the embodiments in the specification to be strictly coextensive.

Phillips, 415 F.3d at 1323 (internal citations omitted).

Like the language of the claims themselves, nothing in the patent specifications suggests that the “provided at” limitation is limited to tracks that are “on” or “projecting from” the developer discharging body. Although the preferred embodiments depict – and the written description discusses – tracks located on the developer discharging body, the specification must be analyzed to illuminate the construction of the claims, rather than confining the claims to that which is included in the specification. Phillips at 1323. Moreover, the specification addresses this concern by including language describing the preferred embodiments as examples and explicitly noting that the invention is not confined to the specification. See Canon Response at 8.

Distinctions can be drawn between the facts at issue and the precedent cited by Katun on this point. To begin, Groove Digital while not precedential holds, similarly to Abbott, that patents that “repeatedly, consistently, and exclusively” depict a certain embodiment may be treated as claiming such embodiment construction, as evidenced by the intrinsic record. Groove Digital, 825 Fed. Appx. at 856-57. Here, Canon has not exclusively described the tracks as being “on” or “projecting from” the developer discharging body, as evidenced by the language in the specification discussed above, nor has Katun pointed to any instance of Canon disparaging tracks that are not “on” or “projecting from” the developer discharging body. Katun’s reliance on Profectus is also unpersuasive. In Profectus, the court construed “mountable” in a patent claim for digital picture frames as requiring a feature for mounting because every embodiment disclosed in the specification included a feature for mounting, and the plaintiff could not point to a situation contemplated by the intrinsic record when no mounting feature would exist. Profectus, 823 F.3d at 1381. The Federal Circuit stated that “[b]y noting that the picture display or frame must have some intrinsic mounting feature, the district court correctly recognized, consistent with the claim language and specification, that the picture display or frame must include something that may be used for mounting the device.” Id. Here, the claim language and specifications do not suggest that the track must be “on” or “projecting from” the developer discharging body, and Katun does not argue that a specific orientation of the track is a feature that must be present for the toner supply container to function.

Finally, Katun argues that Ruckus is illustrative because, in that case, the court construed the term “communications path” within a patent for a method that computers use to communicate with local area networks over long distances covered by telephone lines to include a wired communication and not the additional wireless communication, as proffered by the patent holder. Ruckus, 824 F.3d at 1003-04. In Ruckus, however, the court found the intrinsic record instructive, as the titles of the patents referred to wired connections, the specification included particular references to wire lines, every embodiment specifically depicted a telephone wire, the specification disclaimer extended only to wired connections, and several dependent claims limited the communication through wired connection. Id. No such instructive intrinsic record exists with respect to the “provided at” limitation, and the simple lack of any reference to a track not specifically “on” or “projecting from” the developer discharging body does not suggest that the claims are limited to such a construction.

Nothing in the patent specifications suggests that the “provided at” limitation should be construed to mean tracks that are “on” or “projecting from” the developer discharging body. The final aspect of the intrinsic record raised by the parties is the prosecution history, which we will continue our discussion by analyzing.

3. The Prosecution History

In addition to the specification, the prosecution history may also be informative for the purposes of claim construction. See e.g., Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005) (“We cannot look at the ordinary meaning of the term . . . in a vacuum. Rather, we must look at the ordinary meaning in the context of the written description and the prosecution history.”). Katun argues that the original application filed for the ’667 patent recited “a track provided on each of opposite sides of the developer discharging body,” which was amended to recite “a track provided at each of opposite sides of the developer discharging body.” Ruling Request at 23 (quoting ’667 Patent File History, Preliminary Amendment dated December 8, 2017 at 4; ’667 Patent File History, Amendment dated May 23, 2018 at 2). The amendment described this change as “formal in nature and therefore do[es] not include new matter.” Ruling Request at 23 (quoting ’667 Patent File History, Amendment dated May 23, 2018 at 8). According to Katun, Canon’s representation indicates that Canon understood “at” and “on” to be interchangeable. Ruling Request at 23. In addition, Katun states that Canon amended claims of the patents at issue to expressly disclose that the “track/engaging portions were ‘projecting from a surface’ . . . for example . . . ‘the engaging portion is a protruding portion protruding at the lateral side’ . . . [or] the claimed track is ‘projecting from a surface.’” Id. at 23-24 (internal citations omitted).

With respect to the amendment from “on” to “at,” Canon cautions against reading these terms outside of the context of the entire clause (i.e., “provided on each of opposite sides of the developer discharging body the side of” or “provided at each of opposite sides of the developer discharging body.”). Canon Post-Oral Discussion Submission at 5. According to Canon, “the difference . . . is one of style rather than substance, and both can mean detached from and alongside the developer discharging body.” Canon Sur-Reply at 6. The parties raised multiple examples of varying uses of these phrases. Canon argues that “the tree on the side of the house” and “the tree at the side of the house” signify the same idea, but that one phrase may simply “sound[] better” than the other in common speech. Canon Response at 10. Katun rebuts this analogy, stating that a person having “ears on the side of their head” would not be understood to have ears that are detached from their head. Katun Reply at 8. In response, Canon argues that Katun’s attempted rebuttal in fact supports Canon’s position – a person with ears on the side of their head could indeed have ears that are detached, but those ears would simply not function as intended. Canon Sur-Reply at 6. “Here, there is nothing in the specification or prosecution histories that tells a person of ordinary skill in the art that tracks must be attached to the developer discharging body for the configuration to work. . . . [N]either the purpose nor function of the tracks . . . requires them to be attached to the developer discharging body, and Katun has admitted that its own detached ‘sliding engagement member’ carries out the job of the claimed track.” Id. (citing Canon Response at 9).

Though “on” and “at” may signify different ideas depending on the context, we agree with Canon that, when read in context of the claims, the amendment does not suggest that a claimed track must be “on” or “projecting from” the developer discharging body. Canon has consistently maintained its amendment position from the patent prosecution, namely, that the change from “provided on each of opposite sides of the developer discharging body” to “provided at each of opposite sides of the developer discharging body” was “formal in nature.” See Canon Response at 10 (quoting U.S. Patent Application No. 15/836,182, Amendment dated May 23, 2018 at 8). Katun has not raised specific evidence suggesting that “at” should be read differently from “on” in this context, but rather argues that, if the words are interchangeable, then the prosecution amendment suggests that the track must be “on” the developer discharging body. See e.g., Ruling Request at 23.

Phillips discusses the utility of prosecution history for claim construction quite clearly, stating that:

. . . because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes. See Inverness Med. Switz. GmbH v. Warner Lambert Co., 309 F.3d 1373, 1380-82 (Fed. Cir. 2002) (the ambiguity of the prosecution history made it less relevant to claim construction); Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1580 (Fed. Cir. 1996) (the ambiguity of the prosecution history made it “unhelpful as an interpretive resource” for claim construction). Nonetheless, the prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be. Vitronics, 90 F.3d at 1582-83; see also Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005) (“The purpose of consulting the prosecution history in construing claims is to ‘exclude any interpretation that was disclaimed during prosecution.’”), quoting ZMI Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1590 (Fed. Cir. 1988); Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995).

Phillips, 415 F.3d at 1317.

In light of the remarks made by Canon during the patent prosecution against the backdrop of the specification and claim language, as analyzed above, Canon did not limit the invention through this amendment, nor did Canon make the scope narrower by changing “provided on” to “provided at.” Furthermore, to the extent this issue raises “the ‘evidentiary underpinnings’ of claim construction that [the Supreme Court] discussed in Markman,” it may present the context in which CBP “will need to look beyond the patent’s intrinsic evidence and to consult extrinsic evidence in order to understand, for example, the background science or the meaning of a term in the relevant art during the relevant time period.” Teva Pharms., 574 U.S. at 331-32; see also Phillips, 415 F.3d at 1318. With that in mind, the dictionary definition of “on” includes, inter alia, “used as a function word to indicate position in contact with and supported by the top surface;” “used as a function word to indicate position in or in contact with an outer surface;” “used as a function word to indicate position in close proximity with;” and “used as a function word to indicate the location of something.” On, Merriam-Webster Online Dictionary, www.merriam-webster.com/dictionary/on (last visited Oct. 26, 2022) (emphasis added). Therefore, as defined, the word “on” does not necessarily signify direct contact between objects but can also indicate position or location. Moreover, the definition of “at” includes, inter alia, a direct reference to the word “on,” specifically “at” is “used as a function word to indicate presence or occurrence in, on, or near.” At, Merriam-Webster Online Dictionary, www.merriam-webster.com/dictionary/at (last visited Oct. 26, 2022) (emphasis added).

Thus, Canon’s amendment to the claim language does not clearly demonstrate that a track must be “on” or “projecting from” the developer discharging body. Canon has maintained that “on” and “at” are interchangeable in this context, the extrinsic evidence supports this proposition, and Katun has not provided any evidence to refute this reasoning.

The other amendments in the prosecution history that Katun raises regarding “protruding portions” or tracks “projecting from a surface” seem to suggest that Canon claimed tracks projecting from a surface explicitly in other contexts. Each of these amendments were in Category 1 claims, which Canon agrees are not infringed by the Katun Redesign due to this exact claim language used. See Canon Response at 4, 11. Further, according to the Canon, the “projecting from” language was added after the “provided at” limitation amendment, indicating that Canon amended the claims to specifically reflect tracks “projecting from” the developer discharging body. Id. at 11. The differences between the claims that include explicit language regarding the track “projecting from” the developer discharging body and those that do not are informative for the construction of the “provided at” limitation. The inclusion of this language suggests that Canon intended to claim tracks that specifically “project from” the developer discharging body in the Category 1 claims, while it did not in the Category 2 claims. See Phillips, 415 F.3d at 1314-15 (“Differences among claims can also be a useful guide in understanding the meaning of particular claim terms. For example, the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.”) (internal citations omitted); see also Kara Tech., 582 F.3d at 1347 (“. . . when the claims of the ’719 and ’575 patents are viewed together, it is clear that the claims at issue on appeal do not require a key in the preprinted data. . . . Here, when the inventor wanted to restrict the claims to require the use of a key, he did so explicitly. None of the claims at issue on appeal recite the term ‘key.’ By contrast all of the other independent claims require either an ‘encryption key’ or ‘key data.’”). In the prosecution history, Canon explicitly included patents with claimed tracks “projecting from” the developer discharging body and those without such language. Because of this difference, the fact that Canon amended claims to provide such “projecting from” language does not suggest that this language applies to all claims in the patents at issue, as Katun suggests.

Therefore, for the reasons discussed above, the “provided at” limitation is not limited to tracks that are “on” or “projecting from” the developer discharging body.

4. Conclusion Regarding the Plain and Ordinary Meaning of the “Provided At” Limitation

As noted above, “[t]he 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. There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution. Thorner, 669 F.3d at 1365 (internal citations omitted). The parties agree that there has been no lexicography or disavowal, and thus, both argue for the plain and ordinary meaning of the “provided at” limitation. See e.g., Canon Response at 7; Katun Reply at 5-6.

“The patentee is free to choose a broad term and expect to obtain the full scope of its plain and ordinary meaning unless the patentee explicitly redefines the term or disavows its full scope.” Thorner, 669 F.3d at 1367. As discussed above, the claims themselves, the specification, and the prosecution history do not support an understanding that the “provided at” limitation is limited to tracks “on” or “projecting from” the developer discharging body. In fact, the plain and ordinary meaning of “at” indicates that claimed track could be “in, on, or near” the developer discharging body. At, Merriam-Webster Online Dictionary, www.merriam-webster.com/dictionary/at (last visited Oct. 26, 2022). Based on this understanding, we agree with Canon that the “provided at” limitation acts as a “locational description [that] has a readily understandable plain and ordinary meaning that encompasses both (1) tracks that are attached to the side of the developer discharging body and (2) tracks that are detached from and alongside the developer discharging body[.]” Canon Response at 5.

Infringement by the Katun Redesign

The second step in establishing infringement involves a comparison of the claims 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). The parties have agreed that the factual infringement by the Katun Redesign is not an issue in the present ruling. See Canon Response at 1 (“The Ruling Request hinges entirely on claim construction.”); see also Katun Post-Oral Discussion Submission at 1 (“ . . . the only real question for Customs to resolve is the meaning of [the ‘provided at’ limitation]. Once Customs resolves the claim construction question in Katun’s favor, Customs should find Katun’s redesigned toner supply containers do not infringe the GEO patents.”); see also Oral Discussion Transcript 53:5-11 (“Mr. Terrill [on behalf of the EOE Branch]: . . . I want to make clear I understand that Canon is not at all disputing the factual representation of the operation of the products as part of its position that there’s no factual dispute between the parties; is that a correct understanding? Mr. Sandonato [on behalf of Canon]: That’s a correct understanding.”); see also id. at 61:20-25 (Mr. Madden [on behalf of the EOE Branch]: Do you agree with Canon’s position that there are no factual disputes at issue, and that the only issue, really, is that plain and ordinary meaning? Mr. Morton [on behalf of Katun]: Yes, I do think this decision rise [sic] and falls with claim construction”); see also Katun Post-Oral Discussion Submission at 1 (“During the oral discussion, the parties agreed that the question turns on claim construction, and that the question of infringement is straightforward depending on which party prevails on its claim construction position.) (internal citation omitted); see also Canon Post-Oral Discussion Submission at 6 (“All parties agree that the ruling Katun seeks hinges on CBP adopting its proposed ‘on’ or ‘projecting from’ claim construction.”).

Accordingly, due to the agreement by the parties relating to the second step in establishing infringement, we find that the Katun Redesign does infringe one or more of claim 1 of the ’667 patent; claim 1 of the ’060 patent; claim 1 of the ’061 patent; claim 1 of the ’957 patent; claims 1 and 12 of the ’814 patent; claims 50, 58, and 61 of the ’032 patent; claims 1 and 13 of the ’033 patent; claims 46 and 50 of the ’654 patent; claims 1, 10, and 13 of the ’881 patent; or claims 1 and 8 of the ’882 patent.

In light of the above, this determination does not address 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 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.”); see also 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 Katun has not met its burden to establish that the articles at issue do not infringe one or more of claim 1 of the ’667 patent; claim 1 of the ’060 patent; claim 1 of the ’061 patent; claim 1 of the ’957 patent; claims 1 and 12 of the ’814 patent; claims 50, 58, and 61 of the ’032 patent; claims 1 and 13 of the ’033 patent; claims 46 and 50 of the ’654 patent; claims 1, 10, and 13 of the ’881 patent; or claims 1 and 8 of the ’882 patent. Accordingly, we find that the articles at issue are subject to the GEO issued as result of Investigation No. 337-TA-1259.

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. Michael P. Sandonato
Venable LLP
1290 Avenue of the Americas, 20th Floor
New York, NY 10104
[email protected]