OT:RR:BSTC:EOE H345153 ACC
Stephanie L. Roberts
Morgan, Lewis & Bockius LLP
1111 Pennsylvania Avenue, NW
Washington, DC 20004
VIA EMAIL: [email protected]
RE: Ruling Request; U.S. International Trade Commission; Limited Exclusion Order;
Investigation No. 337-TA-1369; Certain Icemaking Machines and Components Thereof
Dear Ms. Roberts:
Pursuant to 19 C.F.R. Part 177, the Exclusion Order Enforcement Branch, Regulations and
Rulings, U.S. Customs and Border Protection (“CBP”) issues this ruling letter, based on a request
from Blue Air FSE, LLC and Bluenix Co., Ltd. (collectively, “Bluenix” or “Respondents”)
submitted on February 18, 2025 (“Ruling Request”), holding that the redesigned icemaking
machines, as described below, are not subject to the limited exclusion order (“LEO”) that the U.S.
International Trade Commission (“ITC” or “Commission”) issued as a result of Investigation No.
337-TA-1369 (“the 1369 investigation”) under Section 337 of the Tariff of 1930, as amended, 19
U.S.C. § 1337.
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 under 19 C.F.R. Part
177 that was 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 clients,
Blue Air FSE, LLC and Bluenix Co., Ltd., the ruling requester and respondents in the 1369
investigation; and (2) Hoshizaki America, Inc. (“Hoshizaki”), the patent owner and complainant
in the 1369 investigation. See, e.g., 19 C.F.R. § 177.1(c).
The parties were asked to identify in their submissions confidential information, including
information subject to the administrative protective order in the underlying investigation, with
[[red brackets]]. See 19 C.F.R. §§ 177.2, 177.8. Consistent with the above, the parties are directed
to identify information in this ruling that should be bracketed in red [[ ]] because it constitutes
confidential information, as defined below, such that it should be redacted from the public version
of this ruling that will be published in accordance with 19 C.F.R. § 177.10. The parties are to
contact the EOE Branch within ten (10) business days of the date of this ruling letter to identify
such information with brackets. See, e.g., 19 C.F.R. § 177.8(a)(3).
Please note that disclosure of information related to administrative rulings under 19 C.F.R.
Part 177 is governed by, for example, 6 C.F.R. Part 5, 31 C.F.R. Part 1, 19 C.F.R. Part 103, and
19 C.F.R. § 177.8(a)(3). See, e.g., 19 C.F.R. § 177.10(a). In addition, CBP is guided by the laws
relating to confidentiality and disclosure, such as the Freedom of Information Act (“FOIA”), as
amended (5 U.S.C. § 552), the Trade Secrets Act (18 U.S.C. § 1905), and the Privacy Act of 1974,
as amended (5 U.S.C. § 552a). A request for confidential treatment of information submitted in
connection with a ruling requested under 19 C.F.R. Part 177 faces a strong presumption in favor
of disclosure. See, e.g., 19 C.F.R. § 177.8(a)(3). The person seeking this treatment must overcome
that presumption with a request that is appropriately tailored and supported by evidence
establishing that: the information in question is customarily kept private or closely-held and either
that the government provided an express or implied assurance of confidentiality when the
information was shared with the government or there were no express or implied indications at the
time the information was submitted that the government would publicly disclose the information.
See Food Marketing Institute v. Argus Leader Media, 139 S. Ct. 2356, 2366 (2019) (concluding
that “[a]t least where commercial or financial information is both customarily and actually treated
as private by its owner and provided to the government under an assurance of privacy, the
information is ‘confidential’ within the meaning of exemption 4.”); see also U.S. Department of
Justice, Office of Information Policy (OIP): Step-by-Step Guide for Determining if Commercial
or Financial Information Obtained from a Person is Confidential Under Exemption 4 of the FOIA
(updated 10/7/2019); see also OIP Guidance: Exemption 4 after the Supreme Court’s Ruling in
Food Marketing Institute v. Argus Leader Media (updated 10/4/2019).
I. BACKGROUND
A. ITC Investigation No. 337-TA-1369
1. Procedural History At The ITC
The Commission instituted Investigation No. 337-TA-1369 on August 16, 2023, based on
a complaint filed by Hoshizaki America, Inc. of Peachtree City, Georgia. Certain Icemaking
Machines and Components Thereof, Inv. No. 337-TA-1369, EDIS Doc. ID 844570, Commission
Opinion (February 27, 2025) (Public) (“Comm’n Op.”) at 3 (citing 88 Fed. Reg. 55721–22 (Aug.
16, 2023)). The complaint alleged a violation of section 337 by reason of infringement of one or
more of claims 1–3, 6–8, and 11–20 of U.S. Patent No. 10,107,538 (“the ’538 patent”); claims 1–
4, 10–13, and 16 of U.S. Patent No. 10,113,785 (“the ’785 patent”); and claims 1, 2, 5–9, and 11–
14 of U.S. Patent No. 10,458,692 (“the ’692 patent”). Comm’n Op. at 3. The notice of
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investigation named Bluenix as respondent. Id. at 3. The Commission’s Office of Unfair Import
Investigations (“OUII”) was named as a party in the investigation but ceased participating in the
investigation on October 13, 2023. Id.
On January August 30, 2024, the presiding Chief Administrative Law Judge (“CALJ”)
issued a final initial determination, Certain Icemaking Machines and Components Thereof, Inv.
No. 337-TA-1369, EDIS Doc. ID 832206, Final Initial Determination (August 30, 2024) (Public)
(“FID”), finding a violation of section 337. Specifically, the CALJ determined that a violation of
section 337 occurred in the importation into the United States, the sale for importation, or the sale
within the United States after importation, of the accused products due to infringement of certain
claims of the ’539 patent, the ’785 patent, and the ’692 patent. Id.
On November 25, 2024, the Commission determined to review in part the FID issued by
the CALJ. Comm’n Op. at 2 (citing 89 Fed. Reg. 95233–35 (Dec. 2, 2024)). The Commission, in
its review of the FID, found a violation of section 337 as to the ’539 patent, the ’785 patent, and
the ’692 patent, and determined that the appropriate remedy was a limited exclusion order directed
to Bluenix. Id. at 2.
In the limited exclusion order, the Commission ordered that “icemaking machines and
components thereof that infringe one or more of claims 1, 3, 6, 7, and 19 of [the ’538 patent],
claims 1 and 10 of [the ’785 patent], and claims 1, 5, and 9 of [the ’692 patent], and are
manufactured abroad by, or on behalf of, or imported by or on behalf of [Bluenix] or any of their
affiliated companies, parents, subsidiaries, agents, or other related business entities, or its
successors or assigns, 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 Icemaking Machines and Components Thereof, Inv.
No. 337-TA-1369, EDIS Doc. ID 843470, Limited Exclusion Order (February 13, 2025) at 2, ¶ 1
(“1369 LEO”). The Commission further defined the articles covered by the limited exclusion
order as “automatic icemaking machines, evaporators, and evaporator plate assemblies.” Id. at 2,
¶ 2.
2. The Patents And Claims In The 1369 LEO
The 1369 LEO prohibits the unlicensed entry for consumption of icemaking machines and
components thereof that infringe one or more of claims 1, 3, 6, 7, and 19 of the ’538 patent, claims
1 and 10 of the ’785 patent, and claims 1, 5, and 9 of the ’692 patent. 1369 LEO at 2, ¶ 1. The
’538 patent, the ’785 patent, and the ’692 patent are all related. FID at 6. For instance, the ’692
patent is a continuation of the ’785 patent, which is a continuation-in-part of the ’538 patent. Id.
The ’785 and ’692 patents also share substantially the same specification. Id. All three patents
relate to a portion of ice making machines referred to as the evaporator plate assembly. FID at 6.
The asserted patents disclose examples of evaporator plate assemblies that utilize basic
refrigeration principles to make ice and aim to improve the efficiency of the ice making machines.
FID at 7-8.
3
a. Claims 1, 3, 6, 7, and 19 of the ’538 Patent
The ’538 patent is titled “Ice Cube Evaporator Plate Assembly” and describes “an
evaporator plate made of a metal plate having a plurality of shaped dimples thereon[.]” ’538
patent, abstract). Claim 1 is the only independent claim in the ’538 patent included in the 1369
LEO. The language of independent claim 1 of the ’538 patent is reproduced below:
’538 Patent Claim Language
Claim Limitation
l[pre] An evaporator plate assembly comprising:
l[a] a plate having opposing front and rear surfaces,
l[b] the plate defining a plurality of dimples,
l[c] each of the plurality of dimples projecting outwardly from the rear surface
and
l[d] disposed on the front surface in an array comprising a plurality of rows
and a plurality of columns, each of the plurality of rows extending in a
horizontal direction and each of the plurality of columns extending in a
vertical direction,
l[e] the plate comprising a plurality of fins projecting outwardly from the front
surface of the plate, each fin extending in the vertical direction and
disposed between adjacent columns of dimples;
l[f] the plurality of rows of dimples comprising a first row of dimples, a second
row of dimples disposed immediately adjacent to the first row of dimples
in the vertical direction, a third row of dimples disposed immediately
adjacent the second row of dimples in the vertical direction, and a fourth
row of dimples disposed immediately adjacent to the third row of dimples
in the vertical direction; and
l[g] a serpentine tubing coil comprising straight portions of tubing extending
horizontally and connected serially at their ends by connecting portions,
l[h] the straight portions of the tubing coil comprising a first straight portion
and a second straight portion connected to the first straight portion and
being immediately adjacent to the first straight portion in the vertical
direction,
1[i] the second straight portion connected to the first straight portions by a first
connecting portion of the connecting portions,
1[j] the tubing coil being in contact with the rear surface of the plate,
1[k] the first straight portion of the tubing coil disposed between the first row
of dimples and the second row of dimples,
1[l] and the second straight portion disposed between the third row of
dimples and the fourth row of dimples.
’539 patent, 8:32-67 (emphasis added).
b. Claims 1 and 10 of the ’785 Patent
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The ’785 patent is titled “Ice Making Machine and Ice Cube Evaporator” and it describes
“[a]n evaporator [that] includes a refrigerant conduit sandwiched between front and rear plates.”
’785 patent, abstract. Claim 1 is the only independent claim in the ’785 patent included in the
1369 LEO. The language of independent claim 1 of the ’785 patent is reproduced below:
’785 Patent Claim Claim Language
Limitation
l[pre] An evaporator comprising:
l[a] a refrigerant conduit; and
1[b] front and rear plates sandwiching the refrigerant conduit,
1[c] each of the front and rear plates having: inner flat portions,
l[d] each inner flat portion of the front plate facing, but being spaced from, a
respective inner flat po1tion of the rear plate to define a respective spaced
portion;
l[e] a plurality of fins dividing the respective plate into a plurality of ice
forming columns;
l[f] a set of first protrusions defined in the respective ice forming columns,
l[g] each first protrusion on the front plate facing a respective first protrusion
on the rear plate to define a respective active cavity,
l[h] the refrigerant conduit extending through each of the active cavities; and
1[i] a set of second protrusions defined in the respective ice forming columns,
l[j] each second protrusion on the front plate facing a respective second
protrusion on the rear plate to define a respective passive cavity,
l[k] the refrigerant conduit not extending through any of the passive cavities;
1 [l] wherein the active and passive cavities are interspersed and separated by
respective inner flat portions so as to define a plurality of ice forming sites
in the ice forming columns of the respective plate.
FID at 17; see also ’785 Patent, Col. 7:42-67 (emphasis added).
c. Claims 1, 5, and 9 of the ’692 Patent
The ’692 patent is titled “Ice Making Machine and Ice Cube Evaporator” and it describes
“[a]n evaporator includes a refrigerant conduit and front and rear plates sandwiching the refrigerant
conduit[.]” ’692 patent, abstract. Claim 1 is the only independent claim in the ’692 patent included
in the 1369 LEO. The language of independent claim 1 of the ’692 patent is reproduced below:
’692 Patent Claim Claim Language
Limitation
l[pre] An evaporator comprising:
l[a] a refrigerant conduit; and
l[b] front and rear plates sandwiching the refrigerant conduit,
l[c] each of the front and rear plates comprising: a plurality of ice forming
columns;
l[d] a set of first protrusions defined in the respective ice forming columns,
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l[e] each first protrusion on the front plate facing a respective first protrusion
on the rear plate to define a respective active cavity,
1[f] the refrigerant conduit extending through each of the active cavities;
1[g] a set of second protrusions defined in the respective ice forming columns,
l[h] each second protrusion on the front plate facing a respective second
protrusion on the rear plate to define a respective passive cavity,
1[i] the refrigerant conduit not extending through any of the passive cavities;
and
l[j] inner flat portions,
l[k] each inner flat portion of the front plate facing and spaced from a
respective inner flat portion of the rear plate to define a respective spaced
portion;
1[l] wherein the active cavities and passive cavities are interspersed in an
alternating pattern,
l[m] a first passive cavity of the passive cavities disposed adjacent to a first
active cavity of the active cavities and with no other passive cavity of the
passive cavities disposed therebetween,
l[n] the first active cavity disposed adjacent to a second passive cavity of the
passive cavities and with no other active cavity of the active cavities
disposed therebetween, and
l[o] the second passive cavity disposed adjacent to a second active cavity of
the active cavities and with no other passive cavity of the passive cavities
disposed therebetween,
l[p] the active cavities and passive cavities separated by respective inner flat
portions so as to define a plurality of ice forming sites in the ice forming
columns of the respective plate.
FID at 18-19; see also ’692 Patent, Col. 8:60-9:29 (emphasis added).
During the 1369 investigation, the parties reached agreement on the meaning of the
following claim terms that appear in claim 1 of the ’785 and claim 1 of the ’692 patent:
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FID at 34.
3. The Legacy Products Found To Infringe In The Underlying Investigation
The legacy products in the underlying investigation consisted of icemaking machines and
evaporator plate assemblies that were designated with the following product and part numbers:
• Icemaking Machines: BLUI-100A, BLUI-150A, BLUI-250A, BLMI-300A, BLMI-500A,
BLMI-650A, BLMI-900A, and BLMI-1300R/1400R;
• Evaporator Part Nos.: i858g-750, i858g-770, i858g-310, i858g-800, i858g820, i858g-840,
and i858g-860.
Ruling Request at 27-28; see also Hoshizaki Response at 8.
The legacy products were found to practice each limitation from claims 1, 3, 6, 7, and 19
of the ’538 patent, claims 1 and 10 of the ’785 patent, and claims 1, 5, and 9 of the ’692 patent.
FID at 234. Based on the petitions received from the parties after the CALJ’s FID, the Commission
determined to review the FID in part. See Comm’n Op. at 2. The Commission determined not to
review the ID’s finding that there has been a violation of section 337 with respect to claims 1, 3,
6, 7, and 19 of the ’538 patent. Ultimately, the Commission adopted the FID’s finding that there
has been a violation of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337, with
respect to claims 1 and 10 of the ’785 patent, and claims 1, 5, and 9 of the ’692 patent. Comm’n
Op at 5.
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B. 19 C.F.R. Part 177 Ruling Request
1. Procedural History Regarding The Current Ruling Request
On February 18, 2025, BlueNix submitted request an administrative ruling pursuant to 19
C.F.R. Part 177, which included Exhibits A-Y. BlueNix Submission to EOE Branch, dated
February 18, 2025. BlueNix’s request concerns its “redesigned models of its icemaking machines
and evaporator plate assemblies” as described in greater detail below. According to BlueNix, this
modification places the redesigned models of its icemaking machines and evaporator plate
assemblies outside the scope of the 1369 LEO. Id. at 1-2. On February 18, 2025, the EOE Branch
sent an email to BlueNix, confirming receipt of its Ruling Request. EOE Branch Email to BlueNix
(dated February 18, 2025). On February 21, 2025, BlueNix confirmed that a redacted copy of the
Ruling Request was sent to Hoshizaki. BlueNix Email to EOE Branch (dated February 21, 2025).
On February 24, 2025, the EOE Branch sent the parties an email with the ground rules for this
inter partes proceeding and to set up an initial conference call. See EOE Branch Email to Parties
(dated February 24, 2025). On February 27, 2025, the EOE Branch had an initial conference call
with BlueNix and Hoshizaki, during which both parties agreed to conduct this proceeding on an
inter partes basis as administered by the EOE Branch. The EOE Branch and parties also discussed
the procedural schedule and non-disclosure agreement, with the EOE Branch requesting that the
parties submit a joint proposed schedule and the executed non-disclosure agreement on March 3,
2025, and if the parties were unable to agree on such a schedule and non-disclosure agreement to
submit a status update that day. EOE Branch Email to Parties (dated February 27, 2025). On
March 3, 2025, both parties submitted an update regarding the difficulty agreeing ot an NDA and
their respective proposed procedural schedule. See BlueNix Email to EOE Branch (dated March
3, 2025); see also Hoshizaki Email to EOE Branch (dated March 3, 2025). Additionally, BlueNix
confirmed that an unredacted version of the Ruling Request was provided to Hoshizaki. See
BlueNix Email to EOE Branch (dated March 3, 2025). On March 4, 2025, the EOE Branch
established and distributed the procedural schedule for this inter partes proceeding. EOE Branch
Email to Parties (dated March 5, 2025). On March 5, 2025, the parties provided the EOE Branch
with a copy of the executed NDA. See Parties Email to EOE Branch (dated March 5, 2025).
On March 25, 2025, Hoshizaki provided its response to the Ruling Request (“Hoshizaki
Response”). On April 7, 2025, BlueNix provided its reply to Hoshizaki’s response, (“Blue
Reply”). On April 15, 2025, Hoshizaki sent an email to the EOE Branch stating that “[it] does not
intend to submit the sur-reply brief[.]” Hoshizaki Email to EOE Branch (dated April 15, 2025).
On May 1, 2025, the EOE Branch conducted an oral discussion with the parties, with each party
providing a presentation (“BlueNix Oral Discussion Slides” and “Hoshizaki Oral Discussion
Slides” respectively). On May 8, 2025, the parties submitted post oral discussion submissions
(“BlueNix Post Oral Discussion Submission” and “Hoshizaki Post Oral Discussion Submission”
respectively). On May 12, 2025, BlueNix sent an email to the EOE Branch alleging that “[certain]
arguments [made by Hoshizaki] at the Oral Discussion were never raised previously and were
therefore improper.” BlueNix Email to EOE Branch (dated May 12, 2025). On May 12, 2025,
the EOE Branch sent an email to the parties that “invite[d] Hoshizaki to respond to [BlueNix’s
May 13] message[.]” EOE Branch Email to Parties (dated May 12, 2025). On May 13, 2025,
Hoshizaki provided a submission in response to the arguments raised in BlueNix’s May 12 email.
Hoshizaki Email to EOE Branch (dated May 13, 2025).
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2. The Articles at Issue
The articles at issue in the Ruling Request consist of redesigned icemaking machines and
evaporator plate assemblies with embodiments or modifications that, as detailed below, were not
developed at the time of the investigation at the Commission and therefore were not accused of
infringement during the investigation. The new redesigned ice making machines and evaporator
place assemblies have different product and part designations to differentiate them from the legacy
products. Specifically, the redesigned icemaking machines and evaporator plate assemblies are
designated by the following part numbers:
Redesigned Icemaking Machines BLUC-102A, BLUC-152A, BLUC252A,
BLMC-302A, BLMC-502A, BLMC-502AD,
BLMC-652A,
BLMC-902A, BLMC-1402A, and BLMC-
1402R
Redesigned Evaporator Parts J840B-010, J840B-020, J840B-030, J840B-
040, J840B-050, J840B-060, and J840B-070
Ruling Request at 28; see also Hoshizaki Response at 8.
Unlike the legacy product, the redesigns products have a flat portion that does not have
indents near the tubing coil as shown below:
Legacy Product Redesigned Product
[[ ]]
[[ ]]
Ex. U and M to Ruling Request (annotations added).
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II. ISSUE
Whether BlueNix has carried its burden, as detailed below, to show that the articles at issue
do not infringe the relevant claims of the asserted patents and are not subject to the Commission’s
limited exclusion order.
III. LEGAL FRAMEWORK
A. Section 337 Exclusion Order Administration
The Commission shall investigate any alleged violation of section 337 to determine, with respect
to each investigation conducted by it under this section, whether there is a violation of this section.
See 19 U.S.C. § 1337(b)(1) and (c). If the Commission determines, as a result of an investigation under
this section, that there is a violation of this section, it shall direct that the articles concerned, imported by
any person violating the provision of this section, be excluded from entry into the United States unless
the Commission finds based on consideration of the public interest that such articles should not be
excluded from entry. See 19 U.S.C. § 1337(d)(1).
When the Commission determines that there is a violation of section 337, it generally issues
one of two types of exclusion orders: (1) a limited exclusion order or (2) a general exclusion order.
See Fuji Photo Film Co., Ltd. v. ITC, 474 F.3d 1281, 1286 (Fed. Cir. 2007). Both types of orders
direct CBP to bar infringing products from entering the country. See Yingbin-Nature (Guangdong)
Wood Indus. Co. v. ITC, 535 F.3d 1322, 1330 (Fed Cir. 2008). “A limited exclusion order is
‘limited’ in that it only applies to the specific parties before the Commission in the investigation.
In contrast, a general exclusion order bars the importation of infringing products by everyone,
regardless of whether they were respondents in the Commission's investigation.” Id. A general
exclusion order is appropriate only if two exceptional circumstances apply. See Kyocera Wireless
Corp. v. ITC, 545 F.3d 1340, 1356 (Fed. Cir. 2008). A general exclusion order may only be issued
if (1) “necessary to prevent circumvention of a limited exclusion order,” or (2) “there is a pattern
of violation of this section and it is difficult to Identify the source of infringing products.” 19
U.S.C. § 1337(d)(2); see Kyocera, 545 F.3d at 1356 (“If a complainant wishes to obtain an
exclusion order operative against articles of non-respondents, it must seek a GEO [general
exclusion order] by satisfying the heightened burdens of §§ 1337(d)(2)(A) and (B).”).
In addition to the action taken above, the Commission may issue an order under 19 U.S.C.
§ 1337(i) directing CBP to seize and forfeit articles attempting entry in violation of an exclusion
order if their owner, importer, or consignee previously had articles denied entry on the basis of
that exclusion order and received notice that seizure and forfeiture would result from any future
attempt to enter articles subject to the same. An exclusion order under § 1337(d)—either limited
or general—and a seizure and forfeiture order under § 1337(i) apply at the border only and are
operative against articles presented for customs examination or articles conditionally released from
customs custody but still subject to a timely demand for redelivery. See 19 U.S.C. §§ 1337(d)(1)
(“The Commission shall notify the Secretary of the Treasury of its action under this subsection
directing such exclusion from entry, and upon receipt of such notice, the Secretary shall, through
the proper officers, refuse such entry.”); id. at (i)(3) (“Upon the attempted entry of articles subject
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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.” 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.” 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 the U.S. Court
of Appeals for the Federal Circuit (“Federal Circuit”) “has upheld a Commission remedy which
effectively shifted the burden of proof on infringement issues to require a company seeking to
import goods to prove that its product does not infringe, despite the fact that, in general, the burden
of proof is on the patentee to prove, by a preponderance of the evidence, that a given article does
infringe[.]” Certain Integrated Circuit Telecommunication Chips, Inv. No. 337-TA-337, Comm’n
Op. at 21, n.14, USITC Pub. 2670, Doc ID 217024 (Aug. 1993) (emphasis in original) (citing
Sealed Air Corp. v. ITC, 645 F.2d 976, 988-89 (C.C.P.A. 1981)).
This approach is supported by Federal Circuit precedent. See Hyundai Elecs. Indus. Co.
v. ITC, 899 F.2d 1204, 1210 (Fed. Cir. 1990) (“Indeed, we have recognized, and Hyundai does
not dispute, that in an appropriate case the Commission can impose a general exclusion order that
binds parties and non-parties alike and effectively shifts to would-be importers of potentially
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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).
B. Patent Infringement
Determining patent infringement requires two steps. Advanced Steel Recovery, LLC v.
X-Body Equip., Inc., 808 F.3d 1313, 1316 (2015). The first is to construe the limitations of the
asserted claims and the second is to compare the properly construed claims to the accused product.
Id. To establish literal infringement, every limitation recited in a claim must be found in the
accused product whereas, under the doctrine of equivalents, infringement occurs when there is
equivalence between the elements of the accused product and the claimed elements of the patented
invention. Microsoft Corp. v. GeoTag, Inc., 817 F.3d 1305, 1313 (Fed. Cir. 2016). One way to
establish equivalence is by showing, on an element-by-element basis, that the accused product
performs substantially the same function in substantially the same way with substantially the same
result as each claim limitation of the patented invention, which is often referred to as the function-
way-result test. See Intendis GmbH v. Glenmark Pharms., Inc., 822 F.3d 1355, 1361 (Fed. Cir.
2016).
As for the first step above, “claim construction is a matter of law.” SIMO Holdings, Inc.
v. H.K. uCloudlink Network Tech., Ltd., 983 F.3d 1367, 1374 (Fed. Cir. 2021). Moreover, the
ultimate construction of a claim limitation is a legal conclusion, as are interpretations of the
patent’s intrinsic evidence (the patent claims, specifications, and prosecution history).
UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 822 (Fed. Cir. 2016) (citing Teva Pharms.
USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841, 190 L. Ed. 2d 719 (2015).1 “Importantly, the
person of ordinary skill in the art is deemed to read the claim term not only in the context of the
particular claim in which the disputed term appears, but in the context of the entire patent,
including the specification.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en
banc). “In some cases, the ordinary meaning of claim language as understood by a person of skill
in the art may be readily apparent even to lay judges.” Id. at 1314. In others, courts look to public
sources such as “the words of the claims themselves, the remainder of the specification, the
prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning
of technical terms, and the state of the art.” Id.
“To begin with, the context in which a term is used in the asserted claim can be highly
instructive.” Phillips, 415 F.3d at 1314 (“To take a simple example, the claim in this case refers
to ‘steel baffles,’ which strongly implies that the term ‘baffles’ does not inherently mean objects
made of steel.”). The context in which a claim term is used also includes the full chain of
dependence as well as the remaining suite of claims and the written description. See Inline Plastics
Corp. v. EasyPak, LLC, 799 F.3d 1364, 1371 (Fed. Cir. 2015) (“Since the specification explicitly
1
Although claim construction is a question of law, the consideration of extrinsic evidence may constitute a subsidiary
finding of fact. Teva, 135 S. Ct. at 841, 190 L. Ed. 2d at 733.
12
mentions the ‘alternative’ . . . there can be no debate concerning the application of the doctrine of
claim differentiation.”).
The second step to establish infringement involves a comparison of the claims, as properly
construed, to the accused product, which is a question of fact. Apple Inc. v. Samsung Elecs. Co.,
Ltd., 839 F.3d 1034, 1040 (Fed. Cir. 2016) (en banc).
IV. LAW AND ANALYSIS
A. Admissibility Question Regarding Literal Infringement of Claim 1 From The
’538 Patent
BlueNix first presents an argument that the Redesigned Products do not infringe claim 1
from the ’538 patent because “there are no dimples in the Redesigned Products.” Ruling Request
at 65. Specifically, BlueNix argues that the Redesigned Products do not have the claimed dimples
because an article “having an evaporator plate without slight ‘depressions’ or ‘indentations’ cannot
meet the requirements of the claims.” Id. at 68. In support of this non-infringement theory,
BlueNix provides the following images that compare the legacy and Redesigned Product:
Accused Product Redesigned Product
[[ ]]
Front View
(attached as Exhibit M)
13
[[ ]]
Cross-Section View
(attached as Exhibit M)
Id. at 68-69. BlueNix further argues that “unlike the Accused Products, the Redesign Products []
have no dimples and the tubing coil is situated within protrusions that extend in the opposite
direction, i.e., away from the midpoint of the evaporator plate assembly.” Id. at 69.
Hoshizaki disagrees and argues that the Redesigned Products infringe claim 1 of the ’528
patent because “respondent fail[s] to show that the redesign product no longer contain dimples[.]”
Response at 9. Specifically, Hoshizaki argues that “Respondent[] [has] not adequately explained
why the flat portions between the outward protrusions of the tubing coil do not constitute dimples
as disclosed in claim 1 of the ’538 Patent.” Furthermore, Hoshizaki takes the position that “the
flat portions of the evaporator plates are depressed compared to the portions of the plate that
protrude where the tubing coil is located.” Hoshizaki Response at 10.
Without entirely abandoning its non-infringement theory above, BlueNix additionally
argues that, assuming arguendo the flat portions of the evaporator plates are the claimed dimples,
the articles at issue still “do not infringe the ’538 Patent” because “there is no tubing coil 30
between the second row of dimples and the third row of dimples as required by [limitation 1[l]
from] claim 1 [of the ’538 patent].” BlueNix Reply at 5. BlueNix provides Figure 2 from the ’538
patent to illustrate the claimed “second straight portion [(i.e., the second straight portion of tubing
coil)] disposed between the third row of dimples and the fourth row of dimples” that is referenced
in limitation 1[l]:
14
BlueNix Reply at 5-6; see also ’538 Patent at Fig. 2 (annotations added). As explained by BlueNix,
“the second straight portion of the tubing coil [on the articles at issue] would not be disposed
between the third and fourth rows of ‘dimples,’ as required by the claim language, but instead
would be disposed between the second row of ‘dimples’ and the third row of ‘dimples[.]’”
BlueNix Reply at 6. In support of this argument, BlueNix provides the following image that shows
that the second straight portion of tubing coil on the redesigned evaporator plate assembly is
disposed between the second the second and third row of dimples:
[[ ]]
BlueNix Reply at 7.
15
Despite BlueNix’s raising in its reply this non-infringement theory -- that the redesigned ice
making machines and evaporator plate assemblies, assuming the presence of “dimples,”
nevertheless do not satisfy limitation 1[l] of the ’538 patent -- Hoshizaki declined to submit a sur-
reply submission as provided for in the procedural schedule governing this inter partes proceeding.
As such, Hoshizaki has not provided any argument prior to the oral discussion in response to this
additional non-infringement theory. Instead, Hoshizaki waited until the oral discussion and its
post oral discussion submission to argue that this non-infringement theory was “not part of
Respondents’ Request, and [] should not be considered” because the “Reply briefing and the oral
argument to the Branch does not constitute an opportunity to advance alternative arguments to
those presented in a ruling request[.]” Hoshizaki Post Oral Discussion Submission at 4.
The ground rules set by the EOE Branch for this inter partes proceeding allow the parties to
raise new arguments in their submissions prior to the oral discussion but not thereafter. See EOE
Branch Email to Parties (dated February 24, 2025)(“[The oral discussion] is an opportunity for the
parties to provide the EOE Branch with a better understanding of the facts, issues, and arguments
presented in the submissions. Accordingly, no new facts or arguments are to be presented at
the oral discussion.”) (emphasis added); see also EOE Branch Email to Parties (dated April 23,
2025) (“[T]he oral discussion is not an opportunity to submit new or additional evidence or
arguments to the EOE Branch. Instead, it is an opportunity for the parties to explain the positions
previously taken in their submissions and clarify the support for those positions as to the relevant
questions of law and fact.”) (emphasis added). We find that BlueNix’s non-infringement theory
relating to limitation 1[l] of the ’538 was proper because it was raised before the oral discussion
in BlueNix’s reply submission. Hoshizaki had the ability, under the procedural schedule, to
respond in a sur-reply but Hoshizaki declined to file such a submission.
Given the absence of an infringement contention from Hoshizaki in response to BlueNix’s
theory of non-infringement, as raised in its reply, the EOE Branch finds that BlueNix has
established that the articles at issue are not subject to exclusion with respect to claim 1 of the ’538
Patent. See Greenlaw v. United States, 554 U.S. 237, 243 (2008) (“In our adversary system, in
both civil and criminal cases, in the first instance and on appeal, we follow the principle of party
presentation. That is, we rely on the parties to frame the issues for decision and assign to courts
the role of neutral arbiter of matters the parties present.”) (emphasis added); see also Astellas
Pharma, Inc. v. Sandoz Inc., 2024 U.S. App. LEXIS 23669, at *12 (Fed. Cir. 2024) (“It is for the
parties—not the court—to chart the course of the litigation.”); see also Certain Robotic Floor
Cleaning Devices and Components Thereof, Inv. No. 337-TA-1252, Initial Determination on
Violation of Section 337 and Recommended Determination on Remedy and Bonding, EDIS Doc.
ID 783814 (Public) (October 7, 2022) at 10, FN 16 (“Given that [complainant] did not dispute
that the [relevant] products in this category are non-infringing, this Initial Determination finds
no reason to conclude otherwise.”) (emphasis added), aff’d, Notice of Commission Final
Determination Finding a Violation of Section 337, EDIS Doc. ID 792838 (Public) (March 21,
2023) (“All findings in the FID that are not inconsistent with the Commission’s determination are
affirmed.”); see also CBP HQ Ruling H338254 (dated January 7, 2025) at 35-36.
B. Admissibility Question Regarding Literal Infringement of Claim 1 of the ’785
Patent and the ’692 Patent
16
BlueNix argues that the articles at issue “[do] not meet the requirements of the ’785 and
’692 Patent’s claims because there are no second protrusions and no passive cavities in the
Redesigned Products.” Ruling Request at 69. As explained by BlueNix, “the flat plate portions
situated between the tubing coils (active cavities) cannot be considered “second protrusions”
forming passive cavities because the plates are flat and do not include any portion that projects
outward or curves away from the plate.” Ruling Request at 72. BlueNix provides the following
annotated image to describe the redesign:
Redesigned Product
[[ ]]
(attached as Exhibit M)
Ruling Request at 72.
As explained by BlueNix, the legacy products “have first protrusions (forming an active
cavity with tubing coil) and a second protrusions (forming a passive cavity) that project away
from a curved portion of the plate.” Ruling Request at 72. BlueNix provides the following
annotated image of the legacy product:
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Redesigned Product
Ruling Request at 72.
Further, BlueNix provides the following statement in an expert declaration from Dr.
Pokharna, who is an engineer with experience in thermal technology, to support its argument that
the redesigned ice making machines and evaporator plates have no second protrusions and no
passive cavities as required by the relevant claims of the ’785 patent and the ’692 patents:
In the Redesigned Products, the dimples have been removed so that there are now
only “first protrusions” (defining “active cavities” including the tubing coil) that
are separated by entirely flat plate portions. In other words, the portions of the
plate between active cavities are without any “second protrusions” defining
“passive cavities.”
In the Redesigned Products, the flat plate portions situated between the tubing coils
(active cavities) cannot be considered “second protrusions” forming passive
cavities because the plates are flat and do not include any portion that projects
outward or curves away from the plate. Therefore, this portion of the evaporator
assembly cannot be considered having any “protrusion” at all.
Pokharna Declaration to Ruling Request (“Pokharna Decl.”) at ¶¶ 52-53 (emphasis added).
Hoshizaki disagrees and argues that the Redesigned Products infringe claim 1 from each
of the ’785 patent and the ’692 patent because the “Respondents have failed to present sufficient
proof demonstrating that … the Redesigned Products do not contain ‘active and passive cavities’
as disclosed independent claim 1 of each of the ’785 and ’692 Patents.” Hoshizaki Response at
2. Specifically, Hoshizaki argues that Respondents failed to show that “the flat portions do not
constitute the claimed ‘second protrusions’ [and that] the space between the flat potions cannot
constitute a passive cavity.” Response at 12. In support of this argument, Hoshizaki argues that
18
“Respondents offer no explanation as to why [the] interior cavity cannot constitute a ‘passive
cavity’ formed between protruding portions of the opposing plates.” Hoshizaki Response at 12.
Hoshizaki argues that this approach is supported by the claim language. Specifically, Hoshizaki
argues that “[t]he claim language requires that the inner flat portions be spaced from one another
and that second protrusion form the passive cavities” and “does not require the second protrusion
to protrude in a specific direction.” Response at 12.
In response, BlueNix argues that “Hoshizaki’s argument fails because it ignores the claim
language requiring that ‘second protrusion on the front plate facing a respective second protrusion
on the rear plate’ that ‘define a respective passive cavity.’” (quoting ’785 Patent at Claim 1[j];
’692 Patent at Claim 1[h]) (emphasis added). The CALJ, relying on the entire record, found that
the legacy products “have protrusion that define passive cavities as required by limitation 1[j] of
the ’785” and limitation 1[h] of the ’692 patent. FID at 75-76, 84. To show this lack of the
second protrusion in the articles at issue, BlueNix provides the following chart comparing figure
2 of the ’785 patent, the legacy product, and articles at issue:
Figure 2 of the ’786 Patent CALJ’s Holding with Regard to Redesigned
“Passive Cavities” in Accused Products
Products
[[ ]]
BlueNix Reply at 9.
Hoshizaki argues, in its response submitted on March 25, 2025, that “[BlueNix] [has]
failed to provide sufficient proof of non-infringement regarding the specific redesigned products
they propose to import to the United States.” Hoshizaki Response at 12. Specifically, Hoshizaki
argues that “[i]t is uncertain … whether [the images in the ruling request depict redesigned articles
that] are ready to ship to the United States or mere prototypes that may differ from the products
that they would ultimately ship if their Request is granted” because “[BlueNix] [has] not provided
any samples of the Redesigned Products” to Hoshizaki. Hoshizaki Response at 12.
19
In response to this argument, Bluenix argues that it “submitted extensive and detailed
technical documentation with its Request, including annotated images, photographs, and CAD
drawings, all of which demonstrate that the Redesigned Products do not include key claimed
features, which were found to infringe the Asserted Patents in the underlying investigation.”
BlueNix Post Oral Discussion Submission at 11. Additionally, BlueNix notes that Hoshizaki
“had multiple opportunities to request physical samples” and “it did not demand the production
of physical samples.” BlueNix Post Oral Discussion Submission at 8. Specifically, BlueNix
notes that its ruling request contains a section titled “Physical Samples” that states “should
Customs require physical Samples of the Redesigned Products, we will provide them
immediately.” Ruling Request at 73. Further, BluxNix notes that it “proactively shipped physical
samples to both Hoshizaki” despite no formal request from Hoshizaki on April 10, 2025. BlueNix
Post Oral Discussion Submission at 9. According to BlueNix, the first attempted delivery of the
physical sample occurred on April 11, 2025, about 6 days before Hoshizaki’s Sur-Reply
submission was due, and the physical sample was ultimately delivered to Hoshizaki on April 17,
2025 (i.e., the same day that Hoshizaki’s Sur-Reply submission was due). BlueNix Post Oral
Discussion Submission at 9.
While Hoshizaki presents arguments that BlueNix failed to meet its burden to demonstrate
non-infringement, Hoshizaki did not request a physical sample and is not contesting any specific
features of the redesigned ice making machines and evaporator assemblies. Thus, we find that
the expert testimony presented by BlueNix remains unrebutted as support for showing that the
redesigned articles do not have second protrusions or no passive cavities as required by the
relevant claims of the ’692 and ’785 patents. Hoshizaki also argues that the expert declaration
from Dr. Pokharna is deficient because it relies “only on ‘Bluenix technical documentation
relating to the Redesigned Products,’ and not on an examination of an actual physical sample of
a Redesigned Product.” Hoshizaki Response at 12.
The EOE Branch finds that the unrebutted expert declaration, annotated images,
photographs, and CAD drawings provided by BlueNix show that the redesigned ice making
machines and evaporator plate assemblies do not practice the “second protrusions” or “passive
cavities” as required by the relevant claims of the ’692 and ’785 patents. Accordingly, we find
that the articles at issue do not infringe the ’692 and ’785 patents.
C. Admissibility Question Regarding Infringement of Claim 1 of the ’785 Patent
and the ’692 Patent Under the Doctrine of Equivalents as Applied By CBP
Hoshizaki argues that the redesigned icemaking machines and evaporator plates infringe the
’785 patent and the ’692 patent under the doctrine of equivalents. The entirety of Hoshizaki’s
argument regarding the doctrine of equivalents is recited below:
Respondents’ failure is particularly acute here, where the Commission below found
that Respondents infringed the ’785 and ’692 Patents under the doctrine of
equivalents. ID at 62-89 (finding infringement of ’785 and ’692 Patents under
doctrine of equivalents); FD at 3 (affirming relevant findings). Customs has
indicated that where, as here, the Commission finds infringement under the doctrine
20
of equivalents, the doctrine is available to Customs in considering whether a
proposed redesign avoids infringement. See Ruling Request, U.S.I.T.C., Limited
Exclusion Order, Inv. No. 337-TA-944, Certain Network Devices, Related
Software and Components Thereof, HQ H284032RL (Customs) at 26 (Apr. 7,
2017) (“Where the violation found to exist includes an infringement finding under
the doctrine, CBP will apply that doctrine during its administration of the exclusion
order.”). Accordingly, to satisfy its burden of demonstrating non-infringement,
Respondents were obligated to demonstrate that the claimed structure does not
contain structures equivalent “second protrusions” that forms the claimed passive
cavities. Having failed to meet that high burden, Respondents have failed to
demonstrate non-infringement of the’785 and ’692 patent claims by the Redesigned
Products.
Hoshizaki Response at 12.
In CBP HQ Ruling H284032 (dated April 4, 2017), CBP established the standard for
applying the doctrine of equivalents when administering an exclusion order under Section 337:
CBP will not extend the doctrine of equivalents when administering an
exclusion order pursuant to section 337 except in two instances. The first is
where the Commission found a violation of section 337, during the underlying
investigation, through infringement under the doctrine. The second is, in those
cases when the Commission has found only literal infringement of the asserted
patents, where a respondent identified in an exclusion order fails to show a prima
facie case that the doctrine does not apply to its new or modified article under the
“function-way-result” or “insubstantial differences” test based on the
administrative record before CBP.
CBP HQ Ruling H284032 at 26 (emphasis added).
Even in cases, such as the one presented in the current ruling, where the Commission found
a violation of section 337 in the underlying investigation based on infringement under the doctrine
of equivalents, CBP will not extend the doctrine when administering an exclusion order pursuant
to section 337 unless the complainant, at a minimum, articulates a theory that the articles at issue
infringe based on doctrine of equivalents under the function-way-result test or insubstantial
differences test. This approach has previously been articulated in Ruling HQ H338254:
[A] respondent in an inter partes proceeding under 19 C.F.R. Part 177 does not
immediately waive its ability to present non-infringement arguments under the
doctrine of equivalents by failing to present them in the first instance as part of the
initial ruling request. While a respondent is encouraged to raises all legal and
factual arguments or defenses that support its noninfringement position, a
respondent can raise its arguments related to the doctrine of equivalents in a
subsequent submission, before any oral discussion, in reply to the complainant’s
theory of infringement under the doctrine. That said, the EOE Branch may, in
its discretion, consider a complainant, as the other interested party participating
21
in an inter partes proceeding under 19 C.F.R. Part 177, to have waived its ability
to present a theory of infringement under the doctrine if it is not raised in the
first submission responding to the ruling request.
Ruling HQ H338254 (dated January 7, 2025) (emphasis added).
This approach not only furthers the sound administration of the Customs law but is
consistent with the Federal Circuit’s recognition that “[t]he doctrine of equivalents provides a
limited exception to the principle that claim meaning defines the scope of the exclusivity right in
our patent system[.]” VLSI Tech. LLC v. Intel. Corp., 87 F.4th 1332, 1341 (Fed. Cir. 2023)
(emphasis added). Moreover, the Federal Circuit has “explained that liability under the doctrine
is ‘exceptional’ [and] ‘emphasized . . . that the doctrine of equivalents is the exception, however,
not the rule[.]’” Id. at 1342 (quoting Honeywell International, Inc. v. Hamilton Sundstrand Corp.,
523 F.3d 1304, 1313 (Fed. Cir. 2008) for the former point and quoting Eli Lilly & Co. v. Hospira,
Inc., 933 F.3d 1320, 1330 (Fed. Cir. 2019) for the latter) (emphasis added).
As such, “[t]he exceptional character of the doctrine’s use is maintained by closely related
demands that restrict the availability of liability under the doctrine.” VLSI, 87 F.4th at 1342
(emphasis added). These demands that restrict extension of the doctrine include the following:
First, proof of equivalents must be limitation specific, not focused only on the claim
as a whole, though the limitation-specific inquiry of equivalence may be informed
by the “role played by each element in the context of the specific patent claim.”
Warner-Jenkinson, 520 U.S. at 40; see DePuy Spine, Inc. v. Medtronic Sofamor
Danek, Inc., 469 F.3d 1005, 1017 (Fed. Cir. 2006); Ethicon Endo-Surgery, Inc. v.
U.S. Surgical Corp., 149 F.3d 1309, 1315 (Fed. Cir. 1998); Dawn Equipment Co.
v. Kentucky Farms Inc., 140 F.3d 1009, 1015 (Fed. Cir. 1998).
Second, for the determination of whether a substitute element is only
insubstantially different from a claimed element and hence an equivalent, a
traditional formulation . . . asks “whether a substitute element matches the function,
way, and result of the claimed element.” Warner-Jenkinson, 520 U.S. at 40. Such
matching requires that each of function, way, and result be “substantially the
same,” see Spectrum Pharmaceuticals, Inc. v. Sandoz Inc., 802 F.3d 1326, 1337
(Fed. Cir. 2015), with the “way” requirement of particular importance, as a
practical matter, in keeping the doctrine properly limited. See Warner-Jenkinson,
520 U.S. at 35, 39; Union Paper-Bag Machine Co. v. Murphy, 97 U.S. 120, 125, 24
L. Ed. 935, 1878 Dec. Comm’r Pat. 199 (1877) (stressing the crucial importance of
“way”); Advanced Steel Recovery, LLC v. X-Body Equipment, Inc., 808 F.3d
1313, 1320 (Fed. Cir. 2015) (similar); Zygo Corp. v. Wyko Corp., 79 F.3d 1563,
1569 (Fed. Cir. 1996) (similar); Slimfold Manufacturing Co. v. Kinkead Industries,
Inc., 932 F.2d 1453, 1457-58 (Fed. Cir. 1991) (similar).
Third, we have long demanded specificity and completeness of proof as crucial to
enforcing the limits on the doctrine: The patentee must provide “particularized
testimony and linking argument as to the insubstantiality of the differences between
22
the claimed invention and the accused device.” Akzo Nobel Coatings, Inc. v. Dow
Chemical Co., 811 F.3d 1334, 1342 (Fed. Cir. 2016) (internal quotation marks
omitted); see Gemalto S.A. v. HTC Corp., 754 F.3d 1364, 1374 (Fed. Cir. 2014);
Texas Instruments Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1566-67
(Fed. Cir. 1996); Lear Siegler, Inc. v. Sealy Mattress Co. of Michigan, 873 F.2d
1422, 1426 (Fed. Cir. 1989).
VLSI Tech. LLC, 87 F.4th at 1342 (emphasis added). Accordingly, the Federal Circuit has placed
special emphasis on the “way” requirement in the function-way-result test.
Additionally, “both the Supreme Court and this court have made clear that the evidence of
equivalents must be from the perspective of someone skilled in the art, for example through
testimony of experts or others versed in the technology; by documents, including texts and
treatises; and, of course, by the disclosures of the prior art.” Nexstep, Inc. v. Comcast Cable
Commc’ns, LLC, 119 F.4th 1355, 1371 (Fed. Cir. 2024) (quoting AquaTex Indus., Inc. v.
Techniche Sols., 479 F.3d 1320, 1329 (Fed. Cir. 2007) (cleaned up)). “‘[W]hen the patent holder
relies on the doctrine of equivalents,’ [the Federal Circuit] ‘require[s] that evidence be presented
to the jury or other fact-finder through the particularized testimony of a person of ordinary skill
in the art, typically a qualified expert.” Id. (emphasis added).
And finally, the Federal Circuit has “‘long demanded specificity and completeness of proof
as crucial to enforcing the limits on the doctrine: The patentee must provide particularized
testimony and linking argument as to the insubstantiality of the differences between the claimed
invention and the accused device.” Nexstep, 119 F.4th at 1371 (quoting VLSI, 87 F.4th at 1343)
(emphasis added). “Generalized testimony as to the overall similarity between the claims and the
accused infringer’s product or process will not suffice.” Id. (quoting Texas Instruments, Inc. v.
Cypress Semiconductor Corp., 90 F.3d 1558, 1567 (Fed. Cir. 1996)). “Rather, the patentee must
provide a ‘meaningful explanation of why’ the element or elements from the accused product or
process are equivalent to the claimed limitation.” Id. (quoting VLSI, 87 F.4th at 1344). However,
for purposes of Section 337, as the burden to establish admissibility based on noninfringement is
shifted to the would-be importer, it is that party that must provide the “particularized testimony”
and “meaningful explanation” once a theory of infringement based on the doctrine of equivalents
has been presented by complainant under the function-way-result test or insubstantial differences
test. As such, after a theory of infringement under the doctrine of equivalents is sufficiently raised
by a complainant, a respondent would be required to provide “the evidence to establish what the
function, way, and result of both the claimed device and the accused device are, and why those
functions, ways, and results are [not] substantially the same.” Nexstep, 119 F.4th at 1371 (quoting
Malta v. Schulmerich Carillons, Inc., 952 F.2d 1320, 1327 n.5 (Fed. Cir. 1991)).
We find that the argument regarding the doctrine of equivalents in Hoshizaki’s response,
which merely mentions the doctrine of equivalents without articulating a theory of infringement
based on the doctrine under the function-way-result test or insubstantial differences test, is not
sufficient such that the EOE Branch will not give further consideration to this theory of
infringement under the doctrine. Consequently, the EOE Branch will not apply the doctrine of
equivalents to the articles at issue in this ruling.
23
V. HOLDING
We find that BlueNix has met its burden to establish that the articles at issue do not infringe
the relevant claims of the asserted patents. Accordingly, we find that the articles at issue are not
subject to the limited exclusion order issued as a result of Inv. No. 337-TA-1369.
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. Paul M. Bartkowski
Bartkowski PLLC
6803 Whittier Ave, Suite 200A
McLean, VA 22101
[email protected]
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