OT:RR:BSTC:EOE H341926 JRW
Mr. Tommy Martin
700 K Street, NW
Washington, DC 20001-5692
USA
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
Dear Mr. Martin:
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 Brother Industries, Ltd.; Brother International Corporation (U.S.A.); and Brother
Industries (U.S.A.), Inc. (collectively, “Brother’s”) request for an administrative ruling, dated
September 20, 2024 (“Ruling Request”). We find that Brother has established, through this inter
partes proceeding, that certain TN830 “compatible” toner cartridges should be excluded from entry
for consumption into (collectively, “articles at issue”), as described in this ruling, are 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”), under Section 337 of the Tariff Act of 1930,
as amended, 19 U.S.C. § 1337 (“Section 337”), 1 unless and until this ruling letter is revoked or
1
The GEO issued in the 1174 investigation bars the unlicensed entry for consumption into the United States of toner
cartridges, components thereof, and systems containing same, as defined in ¶ 1 of the GEO, that infringe one or more
of Claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the ’093 Patent”); Claims 1, 7-11, 15, and 16 of U.S.
Patent No. 9,575,460 (“the ’460 Patent”); Claims 1-7 and 9 of U.S. Patent No. 9,568,856 (“the ’856 Patent”); Claims
1, 4, 5, and 9 of U.S. Patent No. 9,632,456 (“the ’456 Patent”); and Claims 1, 3, 5, 7-12, and 18 of U.S. Patent No.
9,846,387 (“the ’387 Patent”) (collectively, the “Asserted Patents”). See Certain Toner Cartridges, Components
Thereof, and Systems Containing Same, Investigation No. 337-TA-1174, EDIS Doc. ID 726161, General Exclusion
Order (November 23, 2020) (“1174 GEO”).
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 by operation of law
any contrary CBP ruling or decision pertaining to Section 337 exclusion orders.
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 following parties with a direct and demonstrable interest in the question
presented by the ruling request: (1) your client, Brother, the ruling requester, complainant and
patent owner from the 1174 investigation; and (2) Hunan Anhe Technology Co., Ltd. (“Hunan
Ahne”); MILLMIX INC (“MILLMIX”); Topjet Technology Co., Ltd. (“Topjet”); Shenzhen Moan
Technology Co., Ltd. (“Moan Tech.”); Shenzhen Haichuang E-Commerce Trading Co., Ltd.
(“Haichuang E-Comm.”); Zhuhai Xucai Electronic Commerce Co., Ltd. (“Xucai E-Comm.”); and
Shenzhen Xiyu Technology Co., Ltd. (“Xiyu Tech.”) (collectively, “Accused Infringers”). See 19
C.F.R. § 177.1(c).
On September 20, 2024, Brother submitted its Ruling Request to the EOE Branch. Brother
Email to EOE Branch, dated September 20, 2024. In its email, Brother (1) confirmed the counsel
for Accused Infringers to whom the ruling request was concurrently sent (via certified mail and
email to counsel of Accused Infringers 2) and (2) confirmed that there is no confidential information
in the materials linked. Id. The EOE Branch confirmed receipt of the Ruling Request as well as
the documents associated with the same. EOE Branch Email to Brother and Accused Infringers,
dated September 20, 2024. Due to the lack of a response from the Accused Infringers, on
September 25, 2024, the EOE Branch, set forth, in an email to the Accused Infringers:
The Exclusion Order Enforcement Branch (the “EOE Branch”) has not received
any responses to Brother’s email below (dated September 20, 2024), requesting an
administrative ruling under 19 C.F.R. § 177. The EOE Branch conducts such ruling
requests on an inter partes basis with the ruling requester and the other interested
party to the question presented (such as a foreign manufacturer, exporter, or
importer of the articles at issue). It is our understanding that, by way of your
inclusion in Brother’s email below, you represent in some capacity one of the
parties that has a direct and demonstrable interest in the question presented by this
ruling request. Please confirm whether you represent such a party and that you
have notified your client or company regarding this inter partes proceeding for its
participation in the adjudication of the articles at issue.
EOE Branch Email to Accused Infringers, dated September 25, 2024.
In its email, the EOE Branch further provided:
2
The email was sent to Anhe Tech’s trademark counsel Evelyn Ufomadu; MILLMIX’s trademark counsel Kaitlyn
Haven; Topjet’s trademark counsel Evelyn Ufomadu, its prior Part 177 counsel David Farnum, and three secondary
correspondent emails provided to the USPTO; Moan Tech’s trademark counsel Victoria Velazquez Walker and a
secondary correspondent email provided to USPTO; Haichuang E-Comm’s trademark counsel Victoria Velazquez
Walker; Xucai E-Comm’s trademark counsel Evelyn Ufomadu; and Xiyu Tech’s trademark counsel Yanghao Liu
Significantly, the EOE Branch notes that the Federal Circuit has held, with regard
to service on foreign entities, that “service does not need to have been attempted
under the Hague Convention before alternative service methods can be employed.”
Nuance Communs. Inc. v. Abbyy Software House, 626 F.3d 1222, 1237 (Fed. Cir.
2010). Instead, alternative service is allowed “as deem[ed] appropriate,” which
includes substitute service pursuant to the Federal Rules of Civil Procedure, such
as Fed. R. Civ. P. 4(f)(3), to include “service via e-mail.” Id. at 1237-40. While
the Federal Rules of Civil Procedure do not cover the EOE Branch’s inter partes
proceedings, the procedures provided for or considered permissible are instructive.
Additionally, the EOE Branch provided as additional support for acceptable alternative service on
foreign-located defendants:
As an example, the Federal Circuit in Nuance cited Rio Props. Inc. v. Rio Int’l
Interlink, where the Ninth Circuit affirmed not only “court-ordered alternative
service methods on a Costa Rican business entity under Rules 4(f)(3) and 4(h)(2)”
but allowed “[i]n addition to service via e-mail . . . substitute service through the
mail both to the U.S. office of the defendant's international courier and on the
defendant's California based attorney.” Id. (citing Rio Props. Inc. v. Rio Int’l
Interlink, 284 F.3d 1007, 1016-19 (9th Cir. 2002)). Similarly, the U.S. Court of
International Trade has held that its rules “permit[] service on a foreign-located
defendant through its U.S.-located counsel.” United States v. Koehler, 2024 Ct.
Intl. Trade LEXIS 98, *12 (Ct. Int’l Trade, 2024).
The EOE Branch stated in conclusion that, due to the foregoing reasons, Brother’s means
of service (specifically, certified mail and email to counsel of Accused Infringers) constituted
sufficient notice unless the EOE Branch heard otherwise from any individual copied on the email.
Id. It further requested that counsel of the Accused Infringers respond to the message by close of
business on Friday, September 27, 2024. Id. The EOE Branch further stated that “[i]n the absence
of a response, the EOE Branch will take action as appropriate.” Id. None of the Accused Infringers
responded to this communication.
A. The Articles at Issue
Brother requested a ruling that “certain TN830 ‘compatible’ toner cartridges should be
excluded from entry for consumption into the United States pursuant to 1174 GEO. Ruling
Request at 1. The articles at issue consist of two different toner cartridge designs across the thirteen
different TN830 “compatible” toner cartridges sold by the seven Accused Infringers. Ruling
Request at 24. Brother provides that “The TN830 ‘compatible’ toner cartridges imported and sold
in the United States by Hunan Ahne, MILLMIX, Topjet, Moan Tech., Haichuang E-Comm., and
Xucai E-Comm. were all identical to each other and are referred to collectively hereinafter as the
‘Type A Cartridges.’” Id.
Brother states that the “Type B Cartridges,” which apply to “the TN830 ‘compatible’ toner
cartridge imported and sold in the United States by Xiyu Tech.” is different than the Type A
Cartridges, but “the differences are irrelevant in the context of the infringement analysis,” and that
“the TN830 ‘compatible’ toner cartridge imported and sold in the United States by Xiyu Tech. was
identical to Brother’s own TN830 toner cartridge and is considered to be what is known in the
industry as a ‘dead copy.’” Id.
The articles at issue, specifically, Type A and Type B cartridges, are shown below:
______
Id. at 24.
Brother argued, inter alia, that: “[t]he electrode configurations of the Type A Cartridges,
Type B Cartridge[s], and genuine Brother TN830 toner cartridges are not only similar to each other
in all relevant respects, they also are similar to the electrode configurations the Commission found
to infringe the Electrode Patents during the 1174 Investigation,” with the primary difference
between electrode configurations in these toner cartridges being “the amount of material disposed
between the two electrodes,” which Brother notes is “irrelevant to the issue of infringement.” Id.
at 24-25. The difference between the electrode configuration of the infringing cartridges (shown
on the left) and Brother’s genuine cartridges (shown on the right) is depicted below:
Id. at 25.
B. Sufficient Notice and EOE Branch Position
The initial issue is whether sufficient notice was provided to the Accused Infringers by
Brother. As discussed supra, on September 20 , 2024, Brother submitted its Ruling Request to the
EOE Branch. Brother Email to EOE Branch, dated September 20, 2024. In its email, Brother (1)
confirmed the counsel for Accused Infringers to whom the ruling request was concurrently sent
and (2) confirmed that there is no confidential information in the materials linked. Id. Due to the
lack of a response from the Accused Infringers, on September 25, 2024, the EOE Branch sent an
additional email to the Accused Infringers requesting a response by close of business on September
27, 2024. Id. In the email, the EOE Branch stated that Brother’s email to the EOE Branch dated
September 20, 2024 constituted sufficient notice unless it heard otherwise from any individual
copied on the email, and that in the absence of a response, the EOE Branch would take appropriate
action. Id.
As provided for in the EOE Branch email dated September 25, 2024, the Federal Circuit in
Nuance cited Rio Props. Inc. v. Rio Int’l Interlink, where the Ninth Circuit affirmed not only
“court-ordered alternative service methods on a Costa Rican business entity under Rules 4(f)(3)
and 4(h)(2)” but allowed “[i]n addition to service via e-mail . . . substitute service through the mail
both to the U.S. office of the defendant's international courier and on the defendant's California
based attorney.” Id. (citing Rio Props. Inc. v. Rio Int’l Interlink, 284 F.3d 1007, 1016-19 (9th Cir.
2002)). Similarly, the U.S. Court of International Trade has held that its rules “permit[] service on
a foreign-located defendant through its U.S.-located counsel.” United States v. Koehler, 2024 Ct.
Intl. Trade LEXIS 98, *12 (Ct. Int’l Trade, 2024).
Additionally, as provided for in the EOE Branch email to the Accused Infringers, the
Federal Circuit has held, with regard to service on foreign entities, that “service does not need to
have been attempted under the Hague Convention before alternative service methods can be
employed.” Nuance Communs. Inc. v. Abbyy Software House, 626 F.3d 1222, 1237 (Fed. Cir.
2010). Instead, alternative service is allowed “as deem[ed] appropriate,” which includes substitute
service pursuant to the Federal Rules of Civil Procedure, such as Fed. R. Civ. P. 4(f)(3), to include
“service via e-mail.” Id. at 1237-40. Therefore, as also provided in the EOE Branch email, while
the Federal Rules of Civil Procedure do not cover the EOE Branch’s inter partes proceedings, the
procedures provided for or considered permissible are instructive. Id. As such, the EOE Branch
finds that Brother provided sufficient notice to the Accused Infringers.
C. Default and EOE Branch Position
The EOE Branch finds that the Accused Infringers’ lack of response to the sufficient notice
provided to them warrants the issuance of a ruling finding such Accused Infringers in default. In
United States v. E.G. Plastics, Inc., the Court of International Trade granted the government’s
motion for default judgment where the defendant “failed to appear, plead, or otherwise defend
itself in [the] action.” 494 F. Supp. 3d 1361, 1362 (2021). “A defendant who defaults thereby
admits all well-pleaded factual allegations contained in the complaint.” Id. at 1363 (citing United
States v. NYCC 1959, Inc., 40 CIT , , 182 F. Supp. 3d 1346, 1347 (2016) (citing City of New
York v. Mickalis Pawn Shop, LLC, 645 F.3d 114, 137 (2d Cir. 2011)); United States v. Deladiep,
Inc., 41 CIT , , 255 F. Supp. 3d 1326, 1336 (2017) (citing Au Bon Pain Corp. v. Artect, Inc.,
653 F.2d 61, 65 (2d Cir. 1981)).) Specifically, E.G. Plastics found that the government’s factual
allegations, admitted as true, established the defendant’s liability as a matter of law. Id. at 1364.
Turning to the instant case, the Accused Infringers also failed to appear, plead, or otherwise
defend themselves with respect to the Ruling Request despite sufficient notice from Brother and
additional notice from the EOE Branch via its email sent on September 25, 2024. As such, the
EOE Branch finds the Accused Infringers in default, and accordingly, that the Accused Infringers
admit all well-pleaded factual allegations contained in Brother’s complaint. The remaining issue
then, is whether Brother’s factual allegations, admitted as true, establish the Accused Infringers’
liability as a matter of law. In its Ruling Request, Brother asserts that the TN830 “compatible”
toner cartridges imported and sold in the United States by the Accused Infringers infringe at least
Claim 1 of the ‘856 Patent and at least Claim 1 of the ‘456 Patent. Ruling Request at 1-2.
D. Accused Infringers’ Liability as a Matter of Law
Brother states that there are “only two different toner cartridge designs across the thirteen
different TN830 “compatible” toner cartridges sold by the seven Accused Infringers.” Ruling
Request at 24. Brother provides that “The TN830 ‘compatible’ toner cartridges imported and sold
in the United States by Hunan Ahne, MILLMIX, Topjet, Moan Tech., Haichuang E-Comm., and
Xucai E-Comm. were all identical to each other and are referred to collectively hereinafter as the
‘Type A Cartridges.’” Id. Brother states that the “Type B Cartridges,” which apply to “the TN830
‘compatible’ toner cartridge imported and sold in the United States by Xiyu Tech.” is different
than the Type A Cartridges, but “the differences are irrelevant in the context of the infringement
analysis,” and that “the TN830 ‘compatible’ toner cartridge imported and sold in the United States
by Xiyu Tech. was identical to Brother’s own TN830 toner cartridge and is considered to be what
is known in the industry as a ‘dead copy.’” Id. Brother also provided claim charts showing how
the Type A and Type B cartridges infringe Claims 1 of the ‘456 and ‘856 Patents. See Exs. AI-
AL.
Brother further states:
The Accused Infringers all share several things in common. All seven Accused
Infringers are selling, or have sold, toner cartridges on Amazon that are marketed
as direct replacements for Brother’s TN830 model toner cartridges…All seven
Accused Infringers are selling, or sold, these replacement toner cartridges under
their own federally registered U.S. trademark…All seven Accused Infringers
import their respective toner cartridges from China…All seven Accused Infringers
practice at least Claim 1 of the ’856 Patent and Claim 1 of the ’456 Patent. All
seven Accused Infringers are doing so without a license or permission from
Brother.
Ruling Request at 11.
Admitted as true, Brother’s allegations establish the Accused Infringers’ liability as a
matter of law. Specifically, such allegations would prove violation of the 1174 GEO by way of
unlawful importation, sale for importation or sale within US after importation of certain toner
cartridges, components thereof, and systems containing same that infringe one or more of claims
1-7, and 9 of ‘856 Patent and claims 1, 4, 5, and 9 of the ’456 Patent. Given that the well-
pleaded facts in Brother’s Ruling Request, admitted as true, establish the Accused Infringers’
liability as a matter of law, the EOE Branch finds that Brother has established, through this inter
partes proceeding, that the articles at issue are subject to exclusion from entry based on the 1174
GEO.
The EOE Branch has maintained that:
As set forth in 19 C.F.R. § 177.2(b)(3), “[e]ach request for a ruling regarding the
status of an article under any Customs or related law affecting the importation or
arrival of that article should be accompanied by photographs, drawings, or other
pictorial representations of the article and, whenever possible, by a sample
article[.]” (emphasis added). In other words, it is the ruling requester who
identifies the “article at issue” that forms the basis of the ruling request and
provides information and evidence regarding the embodiment of that article
by means of, inter alia, pictorial representations and a physical
sample. Moreover, an admissibility determination in a ruling under 19 C.F.R.
Part 177, including for purposes of a Section 337 exclusion order, is limited to
the embodiment described and depicted therein. As such, a “determination in
[an] administrative ruling does not apply to future products if the articles in
question differ in any material way from those described [in the ruling].” CBP
HQ Ruling H323308 at 23 (dated February 8, 2022). Instead, to the extent any
articles attempting to make entry for consumption differ in a material respect from
those described in the ruling, the admissibility determination in the ruling is not
binding on CBP, as provided for in 19 C.F.R. §§ 177.2(b)(1), (2), (4), and
177.9(b)(1) and (2), and the burden to establish admissibility remains. See CBP
HQ Ruling H324813 at 37-40 (dated June 3, 2022).
CBP HQ Ruling H339732 (dated June 11, 2024) at 16, n.4 (emphasis added).
Therefore, to the extent that Accused Infringers attempt to enter articles for consumption
that differ materially from the articles at issue, this ruling would not be applicable. Additionally,
if either party is interested in CBP’s binding position as to the admissibility of articles other than
those at issue in this inter partes proceeding, the EOE Branch remains available to receive
additional ruling requests under 19 C.F.R. Part 177 when in the sound administration of the
Customs laws.
Lastly, the parties were asked to clearly identify confidential information, including
information subject to the administrative protective order in the underlying investigation, with
[[red brackets]] in their submissions to CBP. See 19 C.F.R. §§ 177.2, 177.8. If there is 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, the parties are to
contact CBP within ten (10) working days of the date of this ruling letter to indicate the same. 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