OT:RR:BSTC:EOE H331125 ACC
Mr. Gary M. Hnath
Mayer Brown LLP
1999 K Street NW
Washington, D.C. 20006
VIA EMAIL: [email protected]
RE: Ruling Request; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-1174; Certain Toner Cartridges, Components Thereof, and Systems Containing Same
Dear Mr. Hnath:
Pursuant to 19 C.F.R. Part 177, the Exclusion Order Enforcement Branch (“EOE Branch”), Regulations and Rulings, U.S. Customs and Border Protection (“CBP”) issues this ruling letter in response to Ninestar Corporation’s (“Ninestar”) request for an administrative ruling, dated April 3, 2023, which included Exhibits A-H (collectively, “Ruling Request”). We find that Ninestar has established, through this inter partes proceeding, that its redesigned toner cartridges – model numbers NT-PB223 and NT-PB227 (collectively, “articles at issue”) – are not subject to exclusion from entry based on the general exclusion order (“GEO”) issued by the U.S. International Trade Commission (“Commission”) in Investigation No. 337-TA-1174 (“the underlying investigation” or “the 1174 investigation”), pursuant to section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337 (“section 337”), unless and until this ruling letter is revoked or modified pursuant to 19 C.F.R. § 177.12. 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 modify or revoke any contrary CBP ruling or decision pertaining to section 337 exclusion orders by operation of law.
As noted above, this ruling letter is the result of a request for an administrative ruling from CBP under 19 C.F.R. Part 177 that the EOE Branch conducted on an inter partes basis. The proceeding involved the two parties with a direct and demonstrable interest in the question presented by the ruling request: (1) your client, Ninestar, the ruling requester; and (2) Brother Industries, Ltd.; Brother International Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc. (collectively, “Brother”), complainant in the 1174 investigation. See, e.g., 19 C.F.R. § 177.1(c).
Ninestar requested a ruling that the articles at issue are not subject to the 1174 GEO because they “do not infringe any claim of” the patents referenced above. Ruling Request at 1. Specifically, Ninestar argued that:
( the Redesigned Cartridges lack the “second gear” required by all claims of the’387 patent;
( the Redesigned Cartridges lack the “detection gear” which is “rotatable about the second shaft” required by all claims of the ’093 patent;
( the Redesigned Cartridges lack the “gear” with a “plurality of gear teeth” which is “rotatable about the protrusion” required by all claims of the ’460 patent;
( the Redesigned Cartridges lack the “developing electrode” required by all claims of the ’856 patent; and
( the Redesigned Cartridges lack the “second cartridge electrode” required by all claims of the ’456 patent.
Ruling Request at 2. Images of the redesigned NT-PB223 and NT-PB227 cartridges at issue in this ruling request are depicted below:
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Ruling Request at 14-18.
In an e-mail to the EOE Branch and counsel for Ninestar, counsel for Brother confirmed that “Brother will not be filing a substantive response to the Part 177 ruling request submitted by Ninestar on April 27 [sic], 2023, and does not intend to participate further in this proceeding.” See Brother Email to EOE Branch (dated April 24, 2023). Given the absence of an infringement contention by Brother that the articles at issue are covered by the relevant claims of the asserted patents, the EOE Branch finds that Ninestar has established that the articles at issue are not subject to exclusion from entry on the basis of the 1174 GEO.
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).
The decision above 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. Tommy Martin
Baker Botts LLP
700 K Street, NW
Washington, D.C. 20001
[email protected]