OT:RR:BSTC:IPR H233123 WMW
Mr. Lei Mei
Mei & Mark LLP
1050 Connecticut Avenue NW
10th Floor
Washington, DC 20036
RE: Ruling Request; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-739; Certain Ground Fault Circuit Interrupters and Products Containing the Same
Dear Mr. Mei:
This is in reply to your letter dated September 10, 2012, on behalf of Zhejiang Trimone Electric Science & Technology Co., Ltd, (“Trimone”), in which you requested a ruling, pursuant to 19 C.F.R. Part 177, as to whether certain of Trimone’s products developed after the issuance by the U.S. International Trade Commission (“ITC”) of the above referenced general exclusion order (“GEO”) are subject to exclusion from entry. A sample of Trimone’s ground fault circuit interrupters (“GFCI”), were included with the ruling request.
FACTS:
The Commission instituted this investigation on October 8, 2010, based on a complaint filed by Leviton Manufacturing Co., of Melville, New York (“Leviton”). See 75 Fed. Reg. 62420 (Oct. 8, 2010). The complaint, as supplemented, alleged violations of section 337 of the Tariff Act of 1930 (19 U.S.C. § 1337) by reason of infringement of various claims of U.S. Patent Nos. 7,463,124 (“the ‘124 patent”); 7,737,809 (“the ’809 patent”); and 7,764,151 (“the ‘151 patent”). The Commission’s notice of investigation named numerous respondents, and during the course of the investigation several of the respondents were found to be in default, or were terminated due to settlement agreements, or consent orders, or were the subject of withdrawn allegations. The seven non-defaulting respondents that remained in the investigation may be categorized into two groups: (1) the “Trimone Respondents,” which includes the ruling requestor here, Zhejiang Trimone Electric Science & Technology Co. Ltd., of Zhejiang, China (“Trimone”); Fujian Hongan Electric Co, Ltd., of Fujian, China (“Hongan”); and TDE, Inc., of Bellevue, Washington (“TDE”);, and (2) the “ELE Respondents,” which consist of Shanghai ELE Manufacturing Corp., of Shanghai China (“ELE”); Orbit Industries, Inc., of Los Angeles, California (“Orbit”); American Electric Depot Inc., of Fresh Meadowns, New York (“AED”); and Shanghai Jia AO Electrical Co. of Shanghai, China (“Shanghai Jia”). The Trimone Respondents participated in an evidentiary hearing held before the presiding Administrative Law Judge (“ALJ”) from July 25 to August 2, 2011. The ALJ excluded the ELE Respondents from participating in the hearing because they failed to file a timely prehearing statement. See ID pg.4 (December 20, 2011).
On December 20, 2011, the ALJ issued his final initial determination (“ID”), finding that the asserted patents were infringed by the accused GFCI products. Id at 93. Specifically, Trimone did not dispute that their accused products infringed under Leviton’s proposed construction which the ALJ ultimately accepted, therefore waiving any of Trimone’s arguments that its accused products did not satisfy the relevant claim limitations. Id at 92-93. Therefore, the ALJ found the Trimone TGM product line practiced and infringed the ‘809 patent. Id. The ALJ also found, however, that complaintant Leviton had not sufficiently shown that a domestic industry exists with respect to the three asserted patents. Id at 106. Accordingly, while the products sold by the respondents infringed the claims of the patents above, the ALJ found no violation of section 337 by the seven respondents remaining in the investigation.
On January 6, 2012, several parties filed petitions for review of the ID. Complaintant Leviton and the Investigative Attorney from the Office of Unfair Import Investigations petitioned for review of the ID’s conclusion that the patents do not protect a domestic industry. The Trimone Respondents petitioned for review of conclusions of the ID that were adverse to them, including the ID’s conclusions concerning infringement, validity, and enforceability. The ELE Respondents did not file a petition for review of the ID.
On June 8, 2012, the Commission reversed the ALJ’s ID and found a violation of 19 U.S.C. § 1337. However, the Commission did not find infringement of the ‘121 patent or the ‘151 patent, but only the ‘809 patent. The Commission found that Leviton had sufficiently shown that a domestic industry exists with respect to the ‘809 patent. Accordingly, the Commission issued a GEO prohibiting the unlicensed entry for consumption of GFCI’s that are covered by one or more of claims 1-4, 6, 8-11, 13, 15-16, 35-37, 39, and 41-46 of the ‘809 patent. See 77 FR 26579 (May 4, 2012). On August 13, 2013, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) affirmed the ITC’s final determination.
On September 10, 2012, Trimone submitted a ruling request to CBP regarding the new model of GFCI’s, the TGA-series, requesting a determination that that said new model does not fall under the scope of the GEO.
Photographs of the newly developed TGA-series GFCIs are displayed below.
ISSUE:
The issue presented is whether the newly developed TGA-series GFCIs manufactured and designed by Trimone, are covered by the listed claims of U.S. Patent 7,737,809 and therefore fall within the scope of the ITC’s limited exclusion order in Investigation No. 337-TA-739, such that they would be excluded from entry for consumption into the United States. Trimone’s previous product line, the TGM-series was found to infringe upon the above mentioned patent in Investigation No. 337-TA-739.
LAW AND ANALYSIS:
Patent infringement determinations for utility patents entail two steps. The first step is to interpret the meaning and scope of the patent claims asserted to be infringed. The second step is to compare the properly construed claims to the accused device. See Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). The first step is a question of law; the second step is a question of fact. See Freedman Seating Co. v. American Seating Company, 420 F.3d 1350, 1357 (Fed. Cir. 2005).
In patent law, there are two types of infringement: direct and indirect infringement. Direct infringement includes two varieties: literal infringement and infringement under the doctrine of equivalents.
Literal infringement is when every limitation recited in a claim is found in the accused device. See Strattec Security Corp. v. General Automotive Specialty Co., 126 F.3d 1411, 1418 (Fed. Cir. 1997); see also Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1349 (Fed. Circ. 1998) (“An accused device cannot infringe, as a matter of law, if even a single limitation is not satisfied.”). Additionally, a dependent claim cannot be found to infringe if the independent claim from which it depends is not found to infringe. See Becton Dickinson & Co. v. C.R. Bard Inc., 922 F.2d 792 (Fed. Cir. 1990) (“The holding of noninfringement of claim 1 applies as well to all claims dependent on claim 1.”).
As for the scope of protection provided, it is a “bedrock principle” of patent law that “the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“[W]e look to the words of the claims themselves…to define the scope of the patented invention.”).
Furthermore, the CAFC has made clear that claim terms are given their ordinary and customary meaning, which refers specifically to the ordinary and customary meaning that the claim 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, 1313 (Fed. Cir. 2005) (en banc). The inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation. See Innova, 381 F.3d at 1116. That starting point is based on the well-settled understanding that inventors are typically persons skilled in the field of the invention and that patents are addressed to and intended to be read by others of skill in the pertinent art. See Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1119 (Fed. Cir. 2002).
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. See Phillips, 415 F.3d at 1313. Often, this requires an examination of terms that have a particular meaning in a field of art. Id. Since the meaning of a claim term, as understood by persons of skill in the art, is often not immediately apparent, and since patentees frequently act as their own lexicographers, a court or administrative body responsible for making patent infringement determinations should look to sources available to the public that show what a person of skill in the art would have understood a disputed claim term to mean. Id. These sources include, for example, the words of the claims themselves, the remainder of the specification and the prosecution history, along with certain extrinsic evidence in appropriate circumstances. Id.
Importantly, as stated by the CAFC in Vitronics and reaffirmed in Phillips, claims must be read in light of the specification, of which they are a part, since the specification “is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315 (citing Vitronics, 90 F.3d at 1582); see also Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985) (“The specification is, thus, the primary basis for construing the claims.”).
While continuing to be mindful of this fine line between interpretation and importation, Phillips explains that:
[T]he 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….That is not just because section 112 of the Patent Act requires that the claims themselves set forth the limits of the patent grant, but also because persons of ordinary skill in the art rarely would confine their definitions of terms to the exact representations depicted in the embodiments.
Phillips, 415 F.3d at 1323 (internal citations omitted). Accordingly, the CAFC has provided the framework above for interpreting patent claims and reading those claims, as properly construed in light of the relevant evidence, onto an accused device.
Pursuant to the Tariff Act of 1930, the ITC has authority to conduct investigations into imported articles that allegedly infringe United States patents and impose remedies if the accused products are found to be infringing. See 19 U.S.C. § 1337(a)(1)(B), (b)(1), (d), (f). Specifically, 19 U.S.C. § 1337(d) provides the Commission authority to direct the exclusion from entry of articles found to be infringing. Moreover, when the Commission determines that there has been a violation of section 337, it may issue two types of exclusion orders: a limited exclusion order and/or a general exclusion order. See Fuji Photo Film Co., Ltd. v. U.S. Int’l Trade Comm’n, 474 F.3d 1281, 1286 (Fed. Cir. 2007); see also Certain Ink Cartridges and Components Thereof, Inv. No. 337-TA-565, Commission Opinion (October 19, 2007).
Both types of orders direct CBP to bar the infringing products from entering the country. See Yingbin-Nature (Guangdong) Wood Indus. Co. v. U.S. Int’l Trade Comm’n, 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”. Id. In contrast, a general exclusion order bars importation of the infringing products by everyone, regardless of whether they were respondents in the Commission’s investigation. Id. A general exclusion order is appropriate if two exceptional circumstances apply. See Kyocera Wireless Corp. v. U.S. Int’l Trade Comm’n, 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 also 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 by satisfying the heightened burdens of §§ 1337(d)(2)(A) and (B).”). Additionally, a seizure and forfeiture order issued under 19 U.S.C. § 1337(i) directs CBP to seize and forfeit articles imported in violation of an exclusion order when the importer previously had articles denied entry and received notice that seizure and forfeiture would result from any future attempt to import covered articles.
The issuance of a general exclusion order by the ITC binds named parties and non-named parties alike and shifts to would-be importers, “as a condition of entry, the burden of establishing noninfringement.” Hyundai Electronics Industries Co. v. U.S. Int’l Trade Comm’n, 899 F.2d 1204, 1210 (Fed. Cir. 1990). Significantly, such a rational applies with “increased force” to parties named in an investigation that resulted in the issuance of an exclusion order. Id. Accordingly, the burden is on Trimone to establish that the devices at issue are not covered by one or more of claims 1-4, 6, 8-11, 13, 15-16, 35-37, 39, and 41-46 of the ‘809 patent.
Claims 1 and 35 of U.S. Patent No. 7,737,809
The subject matter of the ‘809 patent, as indicated in the abstract, pertains to a GFCI device that provides reverse wiring protection when no power is present at the face terminals, and even if the device is reverse wired. Claims 1 and 35 are the independent claims referred to in the GEO. Claims 1 and 35 are reproduced below.
Claim 1. A circuit interrupting device comprising:
a first pair of electrical conductors including a phase and neutral, the first pair of electrical conductors adapted to electrically connect to a source of electric current;
a second pair of electrical conductors including a phase and neutral;
a third pair of electrical conductors including a phase and neutral, wherein the first, second, and third pairs of electrical conductors are electrically isolated from each other and positioned to electrically connect to at least one user accessible receptacle;
a lifter having a first opening defined therein and configured to move between a first position which provides electrical continuity between the first pair of electrical conductors and at least one of the second and third pairs of electric al conductors and a second position which breaks electrical continuity between at least two of the electrical pairs of electrical conductors;
a circuit interrupter configured to movably engage a latch having a second opening defined therein and positioned to substantially align with the first opening of the lifter to move the lifter from the first position to the second position upon the occurrence of an electrical abnormality; and
a reset arm configured to movably reorient the lifter to the first position when the latch is disengaged by the circuit interrupter to reestablish electrical continuity between the pairs of electrical conductors after resolution of the electrical abnormality.
(emphasis added).
Claim 35. A circuit interrupting device comprising:
a housing having at least one user accessible receptacle defined therein;
a pair of line terminals that include a phase and neutral, the pair of line terminals disposed at least partially within the housing and adapted to electrically connect to a source of electric current;
a pair of load terminals that include a phase and neutral, the pair of load terminals disposed at least partially within the housing;
a pair of face terminals that include a phase and neutral, wherein the line, load, and face terminals are electrically isolated from each other and positioned to electrically connect to the at least one user accessible receptacle;
at least one lifter having a first opening defined therein and configured to move between a first position which provides electrical continuity between the line terminals and at least one of the load terminals and the face terminals and a second position which breaks electrical continuity between the line terminals and at least one of the load terminals and the face terminals;
a circuit interrupter configured to movably engage a latch having a second opening defined therein and positioned to substantially align with the first opening of the at least one lifter to move the at least one lifter from the first position to the second position upon the occurrence of an electrical abnormality; and
a reset arm configured to movably reorient the at least one lifter to the first position when the latch is disengaged by the circuit interrupter to reestablish electrical continuity amongst the pairs of terminals after resolution of the electrical abnormality.
(emphasis added).
Trimone specifically alleges that their newly developed TGA-series of GFCIs does not satisfy the three pairs of electrical conductors “electronically isolated from each other” limitation found in claim 1 or the line, load and face terminals being “electronically isolated from each other” limitation found in claim 35. Trimone did not claim noninfringement of the TGM-series under the claim construction ultimately accepted by the ALJ. Using the same claim construction used by the ALJ, Trimone asserts that the TGA-series of GFCI does not infringe upon the underlying ‘809 patent at issue in the GEO.
TGA-series of GFCIs
With its submission, Trimone provided CBP with samples of the TGA-series of GFCIs as well as samples of the TGM-series of GFCIs at issue in the GEO. Where the TGM-series of GFCIs were found to practice the “electronically isolated” limitation of the ‘809 patent, Trimone states that the TGA-series only uses two separate pairs of conductors that are electrically isolated in a tripped/disconnected state and that are electrically connected in a reset/connected state.
The TGM-series of GFCI contains three separate pairs of electrical conductors, the line, load and face conductors. Upon installation of a TGM-series GFCI, two of the electrical conductors are connected permanently, depending on the manner in which the GFCI is installed. If installed properly, the face conductor and the load conductor are permanently electronically connected through the use of a switch and will not become isolated from each other in the event of a tripped/disconnected state. This first switch will not be released depending on the state of the GFCI. This switch provides electrical continuity between the face conductor and the load conductor which will not be interrupted. If the TGM-series GFCI is reverse-wired (i.e., if the source of electricity is connected to the load side instead of the line side), the face conductor and the line conductor are permanently electronically connected through the use of a second switch and will not become isolated from each other in the event of a tripped/disconnected state. This second switch will not be released depending on the state of the GFCI. This switch provides electrical continuity between the face conductor and the load conductor which will not be interrupted. Once the GFCI is installed, one of the two switches will be activated effectively combining two of the three conductors. With the combination of two of the three conductors upon installation, there exist only two electronically isolated conductors which are separated upon the occurrence of an electrical anomaly, and are united to electrical continuity upon return to the reset/connected state.
The ‘809 patent at issue in the GEO requires that there be three pairs of electrical conductors which are “electronically isolated from each other”. In the TGM-series of conductors at issue before the ITC, there existed three pairs of electrical conductors which were electronically isolated from each other upon the event of an electrical anomaly. They were then connected electronically upon the reestablishment of the reset/connected state which allowed for electricity to flow to at least one user accessible receptacle. With the TGA-series of GFCI, there are only two electronically isolated conductors, either the face/load conductor and the line conductor or the face/line conductor and the load conductor. When these two conductors are connected upon the reestablishment of the reset/connected state, electricity can then flow to at least one user accessible receptacle
Due to the fact that the three conductors of the TGA-series of GFCI are not electrically isolated from each other as required by both claim 1 and 35 of the ‘809 patent, they cannot be found to practice the ‘809 patent.
HOLDING:
The TGA-series of GFCIs are not covered by the claims at issue in the ‘809 patent. Therefore, the TGA-series of GFCI is not within the scope of the ITC’s limited exclusion order in Investigation. No. 337-TA-739.
Accordingly, the TGA-series of GFCIs may be entered for consumption into the United States.
This decision is limited to the specific facts set forth herein. If Trimone manufactured GFCIs that differ from the embodiment 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. Part 177.2(b)(1), (2), and (4), and Part 177.9(b)(1) and (2).
Sincerely,
Charles R. Steuart, Chief
Intellectual Property Rights Branch