Customs Ruling HQ H315842 - Ruling Request; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-1174; Certain Toner Cartridges, Components Thereof, and Systems Containing Same.

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HQ H315842
Apr 28, 2021

Type : 19 U.S.C. § 1337; Unfair Competition • HTSUS :
Related: H121519

OT:RR:BSTC:EOE H315842 CBC

Mr. Steven E. Adkins
McGuireWoods LLP
2001 K St. NW
Suite 400
Washington, D.C. 20006-1040

VIA EMAIL: [email protected]
[email protected]

RE: Ruling Request; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-1174; Certain Toner Cartridges, Components Thereof, and Systems Containing Same. Dear Mr. Adkins: 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 administrative ruling. We find that Union Technology International (Macao Commercial Offshore) Co. Ltd. and Print-Rite Unicorn Image Products Co. Ltd. (collectively, “Print-Rite”) has met its burden to show that the Print-Rite TN420/450 and TN630/TN660 model toner cartridges (“monochrome cartridges”) described in its ruling request of January 4, 2021, do not infringe claims 1-7 and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”) and claims 1, 4, 5, and 9 of U.S. Patent No. 9,632,456 (“the ’456 patent”). Accordingly, CBP’s position is that these monochrome cartridges are not subject to the general exclusion order (“GEO”) issued by the U.S. International Trade Commission (“ITC” or “Commission”) in Investigation No. 337-TA-1174, Certain Toner Cartridges, Components Thereof, and Systems Containing Same (“the underlying investigation” or “the 1174 investigation”), pursuant to section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337 (“section 337”) (“1174 GEO”). However, we find that Print-Rite has not met its burden to show that the Print-Rite TN221/TN225, TN223/TN227, and TN730/760/770 model toner cartridges (“detection gear cartridges”) do not infringe claim 1 of U.S. Patent No. 9,846,387 (“the ’387 patent”). Accordingly, CBP’s position that the detection gear cartridges are subject to the 1174 GEO. We further note that determinations of the Commission resulting from 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. This administrative ruling is the result of a request under 19 C.F.R. Part 177 and was conducted on an inter partes basis with the consent of the parties. The process involved the two parties with a direct and demonstrable interest in the question presented by the ruling request: (1) your client, Print-Rite, the foreign manufacturer of the articles in question, and (2) Brother Industries, Ltd.; Brother International Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc. (collectively, “Brother”), the complainant and patent owner in the underlying investigation. See, e.g., 19 C.F.R. § 177.1(c).

The parties were asked to clearly identify confidential information, including information subject to the administrative protective order in the underlying investigation, with [[red brackets]] in their submissions to the CBP. See, e.g., EOE Branch Email to Parties dated January 8, 2021. If there is additional information in this administrative ruling not currently bracketed in red [[ ]] that either party believes constitutes confidential information, and should be redacted from the published ruling, then the parties are asked to contact the EOE Branch within ten (10) working days of the date of this administrative ruling. See, e.g., 19 C.F.R. Part 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. Part 177.8(a)(3). See, e.g., 19 C.F.R. Part 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 (“TSA”) (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. Part 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 first that the submitter customarily keeps the information private or closely-held, and either (a) the government provided an express or implied assurance of confidentiality when the information was shared with the government or (b) there were no express or implied indications at the time the information was submitted that the government would publicly disclose the information. See, e.g., OIP Guidance: Step-by-Step Guide for Determining if Commercial or Financial Information Obtained from a Person is Confidential Under Exemption 4 of the FOIA (posted 10/3/2019).

BACKGROUND

ITC Investigation No. 337-TA-1174

The Commission instituted Investigation No. 337-TA-1174 on September 3, 2019, based on a complaint filed by Brother. Certain Toner Cartridges, Components Thereof, and Systems Containing Same, Investigation No. 337-TA-1174, EDIS Doc. ID 728235, Commission Opinion (Public) (December 17, 2020) (“Comm’n Op.”) at 2 (citing 84 Fed. Reg. 49762–63 (Sept. 23, 2019)). The complaint alleged violations of section 337 based upon the importation into the United States, the sale for importation, and the sale within the United States after importation of certain toner cartridges, components thereof, and systems containing same by reason of infringement of claims 1-7 and 9 of the ’856 patent; claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims 1, 4, 5, and 9 of the ’456 patent; claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the ’093 patent”); and claims 1, 3, 5, 7-12, and 18 of the ’387 patent. Id. The Commission’s notice of investigation named 32 respondents, including: AMI Brothers, Inc. of San Bruno, California (“AMI”); Aster Graphics, Inc. of Riverside, California (“Aster”); Cartridge Evolution, Inc. of Brooklyn, New York (“Cartridge Evolution”); E–Z Ink Inc. of Brooklyn, New York (“E-Z Ink”); Globest Trading Inc. of Ontario, California (“Globest”); Intercon International Corp. of Brea, California (“Intercon”); and Linkyo Corp. of La Puente, California (“Linkyo”). Id. at 2-3. The notice of investigation also named the Office of Unfair Import Investigations (“OUII”) as a party. Id. at 3.

All eight participating respondents, Brother, and OUII agreed that, for purposes of the accused products in the investigation, no claim terms in the asserted patents required a construction beyond their plain and ordinary meaning. See Joint Notice of Disputed Claim Terms (Dec. 6, 2019) (EDIS Doc ID 696586).

During the course of the investigation, respondents AMI, Aster, Cartridge Evolution, E-Z Ink, Globest, and Linkyo introduced certain newly designed toner cartridges as replacements for the initially accused products, and Brother stipulated that these “will not be covered by any remedial order that issues in this Investigation.” Comm’n Op. at 23-25; Certain Toner Cartridges, Components Thereof, and Systems Containing Same, Investigation No. 337-TA-1174, EDIS Doc. ID 716848, Initial Determination (Public) (August 10, 2020) (“ID”) at 34, unreviewed, July 23, 2020, EDIS Doc. ID 719096 (85 Fed. Reg. 56628–31, September 4, 2020); Comm’n Op. at 27 n.14. Print-Rite observes that the Linkyo Joint Stipulation as to Original and Newly Designed Products during the 1174 investigation involved “the same products that are the subject of this [ruling request] that are to be supplied by Print-Rite to customers other than Linkyo.” Ruling Request, 2.

Cartridge Evolution, E-Z Ink, Linkyo, and others were terminated from the investigation by consent orders. Comm’n Op. at 3. AMI, Globest, and Intercon, among others, defaulted. Comm’n Op. at 3-4. On July 23, 2020, the presiding administrative law judge (“ALJ”) issued an initial determination (Order No. 40), granting Brother’s motion for summary determination, finding a violation by Aster and the defaulting respondents, and finding that the accused products practiced the asserted claims. Id. at 4-5. Aster had not opposed Brother’s summary determination motion, even though Aster’s products were subject to the motion, and OUII filed briefing in support of the motion. Id. at 3-5. In finding infringement, the ALJ had considered three groups of representative products identified by Brother’s experts. ID at 118-22. For each representative product, Brother had provided “detailed claim charts” containing a “limitation-by-limitation analysis,” which the ALJ found to be “substantial, reliable, and undisputed evidence” of infringement. ID at 123–34.

On September 8, 2020, the Commission requested written submissions on remedy, the public interest, and bonding, which it received from Brother, Aster, and OUII. Comm’n Op. at 5. In so briefing, Aster requested that any remedial order include an express carve-out for its newly designed toner cartridges that Brother had stipulated it would not accuse of infringement in the underlying investigation. Id. at 23–?25. Brother responded that an express carve-out would be “redundant and unnecessary” to the extent that the order would include “the general exception for imports made ‘with the permission[] of the patentee.’” Id. at 25–26. OUII agreed with Brother because “‘express carve outs in exclusion orders [are] only for products that were found to be non-infringing,’ but that here, the newly designed products were not found to be non-infringing.” Id. at 26-27 (emphasis in the original). Additionally, OUII noted that “the ‘Aster Joint Stipulation and Agreement do not contain . . . limiting language’ including in agreements with other respondents . . . restrict[ing] permissible importation of Aster’s newly designed products to any particular entity.’” Id. The Commission agreed with Brother and OUII, holding that “it [was] unnecessary to include an express exemption . . . as these products are already the subject of the Joint Stipulation and Agreement between the parties.” Id. at 28. The Commission stated that the Aster Joint Stipulation and Agreement was limited to “(1) compatibility with Brother’s identified toner cartridges; (2) conformity with identified configurations specified in the referenced Tables of the Agreement; and (3) include branded toner cartridges ‘with Aster-, Arcon-, Aztech-, CMYBabee-, Cool Toner-, EPS-, Greensky-, Ink4work-, and Toner Bank-brands.’” Id. at 29.

The Commission noted that a GEO was necessary because of concerns that infringing toner cartridges could be mass produced within a month, that “it [was] likely that the same entities [Respondents] would continue online sales and importation using different names,” and that manufacturers of toner cartridges could not be identified by the retail branding. Id. at 17-18 (quoting ID at 137). Thus, among other things, the Commission issued a GEO prohibiting the unlicensed importation of certain toner cartridges, components thereof, and systems containing same that infringe one or more of claims 1-5, 10, and 12-15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7, and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 patent. Id. at 34. Paragraph 2 of the 1174 GEO identified “[t]he toner cartridges, components thereof, and systems containing the same that are subject to this Order (i.e., ‘covered articles’) [] as follows: laser toner cartridges designed for use with Brother printers, fax machines, and MFCs (‘Multi-Function Centers’).”

The Patents at Issue

Detection Gear Patents

“The asserted claims of the ’093, ’460, and ’387 patents are directed to various aspects of a detection gear. The detection gear enables a compatible printer, fax machine, or MFC to detect the insertion of a new toner cartridge.” ID at 19. In particular, the abstract of the ’387 patent describes a cartridge where:

a housing has a developer accommodating portion and includes a first side wall and a second side wall. … A detection body is disposed at a position opposite to the developer accommodating portion with respect to the second side wall. A first driving force transmission member is positioned at the same side with the coupling member with respect to the first side wall, and transmits driving force from the coupling member to a rotating member. A second driving force transmission member is positioned at the same side with the detection body with respect to the second side wall, and transmits driving force from the rotating member to the detection body.

’387 Patent, abstract. An exemplary detection gear positioned on a side of the toner cartridge is depicted in the figure below:

ID at 20.

Claim 1 is the only independent claim of the ’387 patent. As emphasized for purposes of the ruling request, it reads:

A cartridge comprising: a coupling rotatable about a first axis extending in a first direction; a coupling gear rotatable with the coupling about the first axis; a developing roller including a developing roller shaft extending in the first direction, the developing roller being rotatable about a second axis extending in the first direction and the developing roller shaft including a first end portion and a second end portion separated from the first end portion in the first direction; a developing gear meshing with the coupling gear, the developing gear being mounted to the first end portion of the developing roller shaft and the developing gear being rotatable with the developing roller shaft about the second axis; an agitator including an agitator shaft extending in the first direction, the agitator shaft including a first end portion and a second end portion separated from the first end portion of the agitator shaft in the first direction, the agitator being rotatable with the agitator shaft about a third axis extending in the first direction; a first gear mounted to the first end portion of the agitator shaft and rotatable with the agitator shaft; a second gear mounted to the second end portion of the agitator shaft and rotatable with the agitator shaft; and an idle gear meshing with the coupling gear and the first gear.

Electrode Patents

Both the ’856 and ’456 patents are descended from U.S. Patent Application No. 14/992,553. The ’856 Patent and the ’456 Patent each have a single independent claim. As emphasized for purposes of this ruling request, claim 1 of the ’856 patent reads:

A developer cartridge comprising: a housing configured to accommodate developer therein; a developing roller rotatable about a first axis extending in an extending direction, the developing roller including a developing roller shaft extending in the extending direction; a Supply roller rotatable about a second axis extending in the extending direction, configured to Supply the developer to the developing roller and the supply roller including a Supply roller shaft extending in the extending direction; a developing electrode positioned at an outer surface of the housing; and a supply electrode positioned at the outer Surface, the Supply electrode including: a Supply connection part electrically connected to the Supply roller shaft; and a Supply protrusion protruding in the extending direction, the Supply protrusion spaced apart from the Supply connection part.

As emphasized for purposes of this ruling request, claim 1 of the ’456 patent reads:

A cartridge comprising: a housing configured to accommodate developer therein; a first cartridge electrode made of conductive resin, the first cartridge electrode positioned on one side of the housing in an extending direction, and the first cartridge electrode including: a first protrusion protruding in the extending direction, the first protrusion being contactable with a first apparatus electrode of an image forming apparatus; and a second cartridge electrode made of conductive resin, the second cartridge electrode positioned on the one side of the housing in the extending direction, and the second cartridge electrode including: a second protrusion protruding in the extending direction, the second protrusion spaced apart from the first protrusion and the second protrusion being contactable with a second apparatus electrode of the image forming apparatus.

19 C.F.R. Part 177 Ruling Request

Procedural History

On January 4, 2021, Print-Rite submitted a letter to the EOE Branch requesting an administrative ruling pursuant to 19 C.F.R. Part 177, which included attachments 1-11 (“Ruling Request”). Print-Rite requested a ruling that: (1) Print-Rite’s detection gear cartridges do not violate the 1174 GEO because they do not infringe any claims of the ’460, ’093, and ’387 patents; and (2) Print-Rite’s monochrome cartridges do not violate the 1174 GEO because they do not infringe any claims of the ’856 and ’456 patents. A copy of the ruling request was provided via email on January 6, 2021, to counsel for Brother as the complainant in the 1174 investigation.

On January 13, 2021, the EOE Branch held a conference call with Print-Rite and Brother where both parties agreed that the ruling request would be administered by the EOE Branch on an inter partes basis and to exchange submissions by email. See EOE Branch email to Parties, dated January 13, 2021. On January 22, 2021, the parties jointly submitted a proposed schedule for administration of the ruling request as well as a nondisclosure agreement executed by the parties. See Print-Rite Email to EOE Branch, dated January 22, 2021.

On February 9, 2021, Brother provided its response to Print-Rite’s ruling request, which included exhibits A-F (“Brother Response”). On February 19, 2021, Print-Rite provided its reply to Brother’s response (“Print-Rite Reply”). On February 26, 2021, Brother provided its sur-reply to Print-Rite’s reply, which included exhibits A-C (“Brother Sur-Reply”).

On March 8, 2021, in line with Print-Rite’s and Brother’s desire for an opportunity to orally discuss the issues, and the established schedule, an oral discussion was held with the EOE Branch. See, e.g., EOE Branch email to Parties, dated January 28, 2021. Due to the national emergency over the coronavirus pandemic, the oral discussion was held remotely by video conference, and the parties provided their respective presentation materials to the EOE Branch on January 26, 2021 (hereinafter, “Brother Slides” and “Print-Rite Slides”). On March 12, 2021, both Print-Rite and Brother provided their post oral discussion submissions, Brother’s submission including an exhibit A (respectively, “Print-Rite Post-Discussion Submission” and “Brother Post-Discussion Submission”).

The Articles at Issue

The Print-Rite toner cartridge models at issue in the ruling request are listed below:

Accused Toner Cartridge Models TN221/225 TN223/227 TN420/450 TN630/660 TN730/760/770 The relevant patents from the 1174 GEO, for which Brother has alleged infringement in this inter partes proceeding with respect to the various product model numbers at issue, are identified below:

Accused Toner Cartridge Models “Detection Gear Cartridges” (’387 patent) “Monochrome Cartridges” (’856 and ’456 patents) TN221/225 TN223/227 TN730/760/770 TN420/450 TN630/660 TN730/760/770 As noted above, the TN730/760/770 models are the only toner cartridges that Brother has accused in response to this ruling request of infringing both the ’387 patent and the electrode patents (the ’856 patent and the ’456 patent).

ISSUE

Whether Print-Rite has met its burden to show that (1) the detection gear cartridges do not infringe any of claims 1, 3, 5, 7-12, or 18 of the ’387 patent, claims 1-5, 10, or 12-15 the ’093 patent, or claims 1, 7-11, 15, or 16 of the ’460 patent; and (2) the monochrome cartridges do not infringe claims 1-7 or 9 of the ’856 patent or claims 1, 4, 5, or 9 of the ’456 patent.

PATENT LAW, SECTION 337, AND CUSTOMS RULINGS

Section 337 Exclusion Order Administration

Section 337 of the Tariff Act of 1930 authorizes the Commission to exclude articles from entry into the United States when it has found “[u]nfair methods of competition [or] unfair acts in the importation of [those] articles.” 19 U.S.C. § 1337(a)(1)(B). When the Commission determines there is a violation of section 337, it generally issues one of two types of exclusion orders: (1) a limited exclusion order or (2) a general exclusion order. See Fuji Photo Film Co., Ltd. v. ITC, 474 F.3d 1281, 1286 (Fed. Cir. 2007).

Both types of orders direct CBP to bar infringing products from entering the country. See Yingbin-Nature (Guangdong) Wood Indus. Co. v. ITC, 535 F.3d 1322, 1330 (Fed Cir. 2008). “A limited exclusion order is ‘limited’ in that it only applies to the specific parties before the Commission in the investigation. In contrast, a general exclusion order bars the importation of infringing products by everyone, regardless of whether they were respondents in the Commission's investigation.” Id. A general exclusion order is appropriate only if two exceptional circumstances apply. See Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1356. A general exclusion order may only be issued if (1) “necessary to prevent circumvention of a limited exclusion order,” or (2) “there is a pattern of violation of this section and it is difficult to identify the source of infringing products.” 19 U.S.C. § 1337(d)(2); see Kyocera, 545 F.3d at 1356 (“If a complainant wishes to obtain an exclusion order operative against articles of non-respondents, it must seek a GEO [general exclusion order] by satisfying the heightened burdens of §§ 1337(d)(2)(A) and (B).”).

In addition to the action taken above, the Commission may issue an order under 19 U.S.C. § 1337(i) directing CBP to seize and forfeit articles attempting entry in violation of an exclusion order if their owner, importer, or consignee previously had articles denied entry on the basis of that exclusion order and received notice that seizure and forfeiture would result from any future attempt to enter articles subject to the same. An exclusion order under § 1337(d)—either limited or general—and a seizure and forfeiture order under § 1337(i) apply at the border only and are operative against articles presented for customs examination or articles conditionally released from customs custody but still subject to a timely demand for redelivery. See 19 U.S.C. §§ 1337(d)(1) (“The Commission shall notify the Secretary of the Treasury of its action under this subsection directing such exclusion from entry, and upon receipt of such notice, the Secretary shall, through the proper officers, refuse such entry.”); id., at (i)(3) (“Upon the attempted entry of articles subject to an order issued under this subsection, the Secretary of the Treasury shall immediately notify all ports of entry of the attempted importation and shall identify the persons notified under paragraph (1)(C).”) (emphasis added).

Significantly, unlike district court injunctions, the Commission can issue a general exclusion order that broadly prohibits entry of articles that violate section 337 of the Tariff Act of 1930 without regard to whether the persons importing such articles were parties to, or were related to parties to, the investigation that led to issuance of the general exclusion order. See Vastfame Camera, Ltd. v. ITC, 386 F.3d 1108, 1114 (Fed. Cir. 2004). The Commission also has recognized that even limited exclusion orders have broader applicability beyond just the parties found to infringe during an investigation. See Certain GPS Devices and Products Containing Same, Inv. No. 337-TA-602, Comm’n Op. at 17, n. 6, Doc ID 317981 (Jan. 2009) (“We do not view the Court’s opinion in Kyocera as affecting the issuance of LEOs [limited exclusion orders] that exclude infringing products made by respondents found to be violating Section 337, but imported by another entity. The exclusionary language in this regard that is traditionally included in LEOs is consistent with 19 U.S.C. § 1337(a)(1)(B)–(D) and 19 U.S.C. § 1337(d)(1).”).

Moreover, “[t]he Commission has consistently issued exclusion orders coextensive with the violation of section 337 found to exist.” See Certain Erasable Programmable Read Only Memories, Inv. No. 337-TA-276, Enforcement Proceeding, Comm’n Op. at 11, Doc ID 43536 (Aug. 1991) (emphasis added). “[W]hile individual models may be evaluated to determine importation and [violation], the Commission's jurisdiction extends to all models of [violative] products that are imported at the time of the Commission’s determination and to all such products that will be imported during the life of the remedial orders.” See Certain Optical Disk Controller Chips and Chipsets, Inv. No. 337-TA-506, Comm’n Op. at 56–57, USITC Pub. 3935, Doc ID 287263 (July 2007).

Lastly, despite the well-established principle that “the burden of proving infringement generally rests upon the patentee [or plaintiff],” Medtronic, Inc. v. Mirowski Family Ventures, LLC, 571 U.S. 191 (2014), the Commission has held that Medtronic is not controlling precedent and does not overturn its longstanding practice of placing the burden of proof on the party who, in light of the issued exclusion order, is seeking to have an article entered for consumption. See Certain Sleep-Disordered Breathing Treatment Systems and Components Thereof, Inv. No. 337-TA-879, Advisory Opinion at 6–11. In particular, the Commission has noted that “[t]he Federal Circuit has upheld a Commission remedy which effectively shifted the burden of proof on infringement issues to require a company seeking to import goods to prove that its product does not infringe, despite the fact that, in general, the burden of proof is on the patent to prove, by a preponderance of the evidence, that a given article does infringe. . . .” Certain Integrated Circuit Telecommunication Chips, Inv. No. 337-TA-337, Comm’n Op. at 21, n.14, USITC Pub. 2670, Doc ID 217024 (Aug. 1993), (emphasis in original) (citing Sealed Air Corp. v. ITC, 645 F.2d 976, 988–89 (C.C.P.A. 1981)).

This approach is supported by Federal Circuit precedent. See Hyundai Elecs. Indus. Co. v. ITC, 899 F.2d 1204, 1210 (Fed. Cir. 1990) (“Indeed, we have recognized, and Hyundai does not dispute, that in an appropriate case the Commission can impose a general exclusion order that binds parties and non-parties alike and effectively shifts to would-be importers of potentially infringing articles, as a condition of entry, the burden of establishing noninfringement. The rationale underlying the issuance of general exclusion orders—placing the risk of unfairness associated with a prophylactic order upon potential importers rather than American manufacturers that, vis-a-vis at least some foreign manufacturers and importers, have demonstrated their entitlement to protection from unfair trade practices—applies here [in regard to a limited exclusion order] with increased force.”) (emphasis added) (internal citation omitted).

Treatment of Confidential Information Submitted Under 19 C.F.R. Part 177

The parties have requested confidential treatment in connection with this Part 177 request for the information bracketed in red in their submissions and thereby seek to have the bracketed information redacted from any ruling that is published in accordance with 19 U.S.C. § 1625(a).

Disclosure of information related to administrative rulings under 19 C.F.R. Part 177 is governed by 6 C.F.R. Part 5; 31 C.F.R. Part 1; 19 C.F.R. Part 103; and 19 C.F.R. Part 177.8(a)(3). See, e.g., 19 C.F.R. Part 177.10(a). In addition, the determination as to whether to include or redact information within a published ruling is guided by various federal laws that involve confidentiality and disclosure, including the Freedom of Information Act (“FOIA”) (5 U.S.C. § 552), the Trade Secrets Act (18 U.S.C. § 1905), and the Privacy Act of 1974 (5 U.S.C. § 552a). See, e.g., CBP HQ Ruling H121519 at 1 (Feb. 8, 2011). Congress enacted FOIA to overhaul the public disclosure section of the Administrative Procedure Act that gradually became more “a withholding statute than a disclosure statute.” Milner v. Dep't of the Navy, 562 U.S. 562, 565 (quoting EPA v. Mink, 410 U.S. 73, 79 (1973)). Hence, there is a strong presumption in favor of disclosure, consistent with the purpose and plain language of the Act. U.S. Dep't of State v. Ray, 502 U.S. 164, 173 (1991). FOIA mandates agency disclosure of requested records unless they fall within one of nine exemptions. Milner, 562 U.S. at 565. These exemptions are “explicitly made exclusive,” Mink, 410 U.S. at 79, and must be “narrowly construed,” FBI v. Abramson, 456 U.S. 615, 630 (1982). Nevertheless, “Congress did not design the Freedom of Information Act exemptions to be mandatory bars to disclosure.” Chrysler Corp. v. Brown, 441 U.S. 281, 293 (1979); see also, GTE Sylvania v. Consumers Union of United States, 445 U.S. 375, 378, n. 2 (1980) (“The theory of the so-called ‘reverse Freedom of Information Act’ suit, that the exemptions to the Act were mandatory bars to disclosure and that therefore submitters of information could sue an agency under the Act in order to enjoin release of material, was squarely rejected in Chrysler Corp.”).

Like FOIA, an objective of administrative rulings under 19 C.F.R. Part 177 is disclosure, providing notice to interested parties of the agency’s decision-making process and position. See Chrysler Corp., 441 U.S. at 290, n.10. The relevant Customs regulations mirror the general presumption in favor of disclosure and place the burden on the party requesting confidentiality to demonstrate that such information qualifies. See generally FCC v. Schreiber, 381 U.S. 279 (1965). Moreover, the Customs regulations that place the burden on the ruling requester to establish, that the information at issue constitutes confidential business information is consistent with the burden that the government must satisfy in an action challenging an agency position not to disclose information pursuant to a FOIA exemption. See 5 U.S.C. § 552(a)(4)(B); see also United States Department of Justice v. Landano, 508 U.S. 165, 171 (1993).    Exemption 4 of FOIA, provides that FOIA does not apply to matters that are “trade secrets and commercial or financial information obtained from a person and privileged or confidential.” 5 U.S.C. § 552 (b)(4). Under 19 C.F.R. Part 177.8(a)(3), there is a general presumption that “[n]o part of the ruling letter, including names, addresses, or information relating to the business transactions of private parties, shall be deemed to constitute privileged or confidential commercial or financial information or trade secrets exempt from disclosure pursuant to the Freedom of Information Act, as amended (5 U.S.C. § 552), unless, as provided in §?177.2(b)(7), the information claimed to be exempt from disclosure is clearly identified and the reasons for the exemption are set forth.” Thus, 19 C.F.R. Part 177.2(b)(7) articulates the test for determining whether certain information is confidential in 19 C.F.R Part 177 administrative rulings.

The language of 19 C.F.R. Part 177.2(b)(7) provides that, “[i]nformation which is claimed to constitute trade secrets or privileged or confidential commercial or financial information regarding the business transactions of private parties the disclosure of which would cause substantial harm to the competitive position of the person making the request (or of another interested party), must be identified clearly and the reasons such information should not be disclosed, including, where applicable, the reasons the disclosure of the information would prejudice the competitive position of the person making the request (or of another interested party) must be set forth.”  The “substantial harm to a competitive position” standard adopted in 19 C.F.R. Part 177.2(b)(7) is identical to the standard for FOIA Exemption 4 established by the U.S. Court of Appeals for the District of Columbia Circuit. See Nat’l Parks & Conservation Ass’n. v. Morton, 498 F.2d 765, 770 (D.C. Cir. 1974) (construing information as “confidential” under FOIA Exemption 4 if disclosure would “cause substantial harm to the competitive position of the person from whom the information was obtained.”).

The Supreme Court’s decision in Argus Leader, however, overturned National Parks and the test upon which 19 C.F.R. Part 177.2(b)(7) is based. Food Marketing Institute v. Argus Leader Media, 139 S. Ct. 2356 (2019). In this decision, the Court addressed when information provided to a federal agency qualifies as “confidential” under Exemption 4 by analyzing the term’s “ordinary, contemporary, common meaning . . . when Congress enacted FOIA in 1966.” Id. at 2362. The Court found that “[t]he term ‘confidential’ means then, as it does now, ‘private’ or ‘secret.’” Id. at 2363. And, “[n]otably lacking from dictionary definitions, early case law, or any other usual source that might shed light on the statute’s ordinary meaning is any mention of the ‘substantial competitive harm’ requirement” articulated in National Parks. Id. at 2363–65.  The Court found “[c]ontemporary dictionaries suggest two conditions that might be required for information communicated to another to be considered confidential”: (1) the information is “customarily kept private, or at least closely held, by the person imparting it;” and (2) the “party receiving [the information] provides some assurance that it will remain secret.” Id. at 2363. For information to be deemed confidential under Exemption 4, the Court held that the first condition must be met, but with respect to the second condition, “there’s no need to resolve that question in this case . . . .” Id. Thus, “[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.” Id. at 2366. In light of the above, 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. Part 177.8(a)(3). The party seeking this treatment must overcome that presumption with a request that is appropriately tailored and supported by evidence establishing first that the submitter customarily keeps the information private or closely-held, and either (a) the government provided an express or implied assurance of confidentiality when the information was shared with the government or (b) there were no express or implied indications at the time the information was submitted that the government would publicly disclose the information. See, e.g., OIP Guidance: Step-by-Step Guide for Determining if Commercial or Financial Information Obtained from a Person is Confidential Under Exemption 4 of the FOIA (posted 10/3/2019).

Based on the framework above, any information meeting the criteria discussed above (or information that was redacted from the public version of the agency record at the Commission) will be bracketed in red [[ ]] for redaction from the published ruling.

Law of 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).

“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 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).

LAW AND ANALYSIS

As described in more detail below, we find that the detection gear cartridges are subject to the 1174 GEO by infringing claim 1 of the ’387 patent (one of the detection gear patents). We also find that the monochrome cartridges are not subject to the 1174 GEO because they do not infringe the relevant claims of the electrode patents.

Claim 1 of the ’387 and the Detection Gear Cartridges During this inter partes proceeding to address its ruling request, Print-Rite has argued that its detection gear cartridges do not infringe claim 1 of the ’387 patent because they do not meet one specific limitation in that claim. Print-Rite argues specifically that its detection gear cartridges do not satisfy the limitation requiring a “second gear mounted to the second end portion of the agitator shaft and rotatable with said agitator shaft.” Print-Rite’s position is premised on its argument that the “second gear” in claim 1 is limited to embodiments that exhibit teeth and, since there is no dispute between the parties that the “wheel” feature in its detection gear cartridges has no teeth, its products therefore cannot infringe.

As an initial matter, the parties disagree whether a construction of the relevant claim term – “second gear” as used in claim 1 of the ’387 patent – is necessary and, if so, what is the appropriate claim construction for that term and, if not, whether this is because the claim term should receive its plain and ordinary meaning or because the Commission already provided a binding construction of the term during the underlying investigation. Notably, both parties at times argue that the claim term “second gear” should receive its plain and ordinary meaning but dispute what that plain and ordinary meaning should be (with Print-Rite arguing that the plain meaning of “gear” must include teeth and Brother arguing that the plain meaning of “gear” includes structures with and without teeth). See Brother Post-Discussion Submission, 4; Print-Rite Reply, 14 (“Both Print-Rite and Brother agree that the term “gear” should have its plain and ordinary meaning, but disagree as to what that is.”). In fact, the parties’ respective positions on the question of claim construction have varied during the course of this inter partes proceeding. However, despite these variations in position, the parties ultimately agree that infringement of the ’387 patent depends on whether “second gear” is limited to embodiments with teeth.

On the question of claim construction, Print-Rite has adopted different positions. Its ruling request, with respect to the ’387 patent, only provides that “the drive wheel [on its cartridges] has no teeth” and that “[o]ne of skill in the art would recognize that the drive wheel is not a gear.” Print-Rite Ruling Request, 23. This presumably suggests a reliance on the plain and ordinary meaning of the term but, as noted above, both parties are trying to support their views by relying on the plain and ordinary meaning; just a different plain and ordinary meaning depending on the party. At other times, Print-Rite appears to advocate for a particular construction of the claim term “second gear” under the guise of plain and ordinary meaning. See Print-Rite Reply, 6 (“[T]he claim term should have its plain and ordinary meaning: a wheel with at least one portion having a plurality of teeth.” (emphasis added)).

Brother argues in opposition that “Print-Rite is precluded from offering any construction under the ITC’s binding implicit construction applying the plain and ordinary meaning” to the products determined to infringe during the 1174 investigation. See Brother Post-Discussion Submission, 12. However, the ITC did not formally construe any of the claims at issue in the underlying investigation because a detailed analysis was not necessary since the accused products were identical in material respects to the articles covered by the relevant patents. ID, 5 (“Imitation may be the sincerest form of flattery but copying patented components of copiers and printers is not flattery; it is infringement. And importing copied components is unlawful under section 337 of the Tariff Act of 1930.”) (emphasis added). Accordingly, the ALJ did not need to address the question whether the “second gear” in claim 1 of the ’387 patent is limited to a structure with teeth and, on that basis, provided no construction of this claim term. As such, the plain and ordinary meaning was sufficient for purposes at the Commission where none of the accused products exhibited a “toothless” gear.

Significantly, “[w]hen the parties present a fundamental dispute regarding the scope of a claim term, it is the court’s duty to resolve it.” O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008). In such cases, “[c]laim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement.” Id. (quoting U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997)). Print-Rite’s noninfringement argument for the ’387 patent is based entirely on the scope of the “second gear” limitation and whether it only applies to a structure with teeth. Brother, for its part, argues that the scope of claim 1 covers gears irrespective of whether they have teeth or are toothless. Accordingly, in cases such as this when the parties present a fundamental dispute regarding the scope of a claim term, the EOE Branch must construe the relevant limitation to resolve that dispute and, with respect to this ruling request, address whether the “second gear” limitation requires teeth and determine whether the detection gear cartridges at issue are subject to the 1174 GEO.

Claim Construction of “Second Gear”

Turning to the parties’ respective arguments on claim construction, Print-Rite “has [contended] throughout this proceeding [that] the gear claimed in the patents at issue requires a wheel with teeth on at least a portion of the wheel.” Print-Rite Post-Discussion Submission, 5. Beyond its reliance on plain and ordinary meaning, Print-Rite points to “the claim language itself and the specification” for the proposition that “teeth are a critical part of the claimed gear.” Print-Rite Reply, 15. Print-Rite notes that “the ’387 patent specification references ‘teeth’ thirty-one times.” Id. Print-Rite further notes that “all components having the word ‘gear’ in their names have teeth, except in the case of the fifth embodiment of the patent.” Id. (emphasis added).

Print-Rite does not dispute that Figure 27 in the ’387 patent discloses an embodiment (the “fifth embodiment”) where the structure depicted is toothless. See Print-Rite Post-Discussion Submission, 8. Instead, Print-Rite argues that “[t]he fifth embodiment is not claimed in the ’387 patent” and as such “[t]he unclaimed embodiment is, as a matter of law, dedicated to the public.” Id. In other words, in Print-Rite’s view, “the ’387 patent claims at issue require a second gear mounted to the second end portion of the agitator shaft and rotatable with the agitator shaft” but “Figure 27 and the fifth embodiment of the ’387 patent show a second resistance providing member 147 mounted to an end of a supply roller shaft – not to the agitator shaft.” Id., 8-9. For this reason, according to Print-Rite, “the fifth embodiment is not claimed in the ‘387 patent” and cannot support an argument that “second gear” should be construed to cover toothed and toothless structures. Id., 9.

Print-Rite also argues that the doctrine of claim differentiation does not apply. Print-Rite relies on Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1370-71 (Fed. Cir. 2007) for the proposition that claim differentiation is not relevant where claims are not otherwise identical but for the references to the claim element in dispute and there are numerous other differences varying the scope of the claimed subject matter. Print-Rite Reply, 17. Print-Rite notes that while “Brother supposes that dependent claim 10 of the ’387 patent requires that a previously recited ‘third gear’ (claim 8) includes ‘a plurality of gear teeth’ … Claim 10 also includes other limitations” and, as such, “[t]he previous limitation, ‘plurality of gear teeth,’ simply provides a basis.” Print-Rite Post-Discussion Submission, 11-12. According to Print-Rite, “Claim 10 does not just disclose a plurality of teeth – it specifically discloses a plurality of teeth on a portion of a circumference of the third gear, and further states ‘at least one of the plurality of gear teeth meshing with the second gear.’” Id. For these reason, Print-Rite argues the doctrine of claim differentiation is inapplicable.

Brother has responded that Print-Rite’s proposed construction is incorrect “because it ignores claim differentiation, ignores the applicant’s choice of claim language, improperly imports limitations from particular embodiments into the claims, and excludes disclosed toothless friction gear embodiments for the scope of the term ‘gear.’” Brother Post-Discussion Submission, 13. Brother notes that “the ordinary and customary meaning of the claim language generally controls unless the patentee acts as his own lexicographer and provides a special definition for a particular claim term or the patentee disavows the ordinary scope of a claim term either in the specification or during prosecution.” Id., 14 (citing InterDigital Communs., LLC v. U.S. Int’l Trade Comm’n, 690 F.3d 1318, 1324 (Fed. Cir. 2012). According to Brother, Print-Rite has not identified an intent by the applicant to disavow claim scope or act as its own lexicographer to provide a specific definition of a claim term.

As for intrinsic evidence, Brother points to Figure 27 of the ’387 Patent that, in its view, “clearly depicts the ‘detection gear 82’ of the fifth disclosed embodiment as being toothless” and, as such, expressly discloses the toothless ‘friction gear’ or ‘wheel’ embodiments that Print-Rite improperly seeks eliminate from the scope of the claims.” Brother Post-Discussion Submission, 16. Addressing Print-Rite’s argument concerning the fifth embodiment as an unclaimed disclosure, Brother replies that it “does not seek to demonstrate that the claims ‘cover’ the scope of the entire fifth embodiment” but instead “references this embodiment with regard to its disclosure of a ‘gear’” and the interpretive support it provides for the meaning of this term.

On claim differentiation, Brother emphasizes its view that “claim 6 recites first and second portions, one of which includes a plurality of gear teeth. Under the doctrine of claim differentiation, the ‘detection gear’ of claim 1 must have different, broader scope than the ‘detection gear’ of claim 6 that includes a ‘plurality of gear teeth. Accordingly, claim differentiation supports the conclusion that the term ‘gear’ recited in the independent claims includes structures without teeth.” Brother Response, 15.

“The words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Blackbird Tech LLC v. ELB Elecs., Inc., 895 F.3d 1374, 1377 (Fed. Cir. 2018) (citing Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (emphasis added)). “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. The Federal Circuit, in addition, has “often remarked that a construction which excludes the preferred embodiment is rarely, if ever correct.” PPC Broadband, Inc. v. Corning Optical Communs. RF, LLC, 815 F.3d 747, 755 (Fed. Cir. 2016).

Nothing on the face of the claim or the context in which the term appears expressly limits the “second gear” to require teeth. Additionally, the specification of the ’387 patent references both toothed and toothless gears. For example, Figure 7A (shown below) describes an embodiment in which the detection gear 82 is integrally provided with a tooth-missing gear 96, a cylindrical portion 97, and a detection end portion 95. In this embodiment, a teeth portion 98 and a tooth-missing portion 99 are formed on the peripheral surface of the tooth-missing gear 96, with gear teeth formed in the teeth portion 98 and no gear teeth in the tooth-missing portion 99. This allows the teeth portion 98 to engage with the rear side of the second agitator gear 78. The tooth-missing portion 99 cannot engage with the second agitator gear 78.

The specification of the ’387 patent also describes the “fifth embodiment” mentioned previously. As noted above, the patent abstract refers to the invention as a cartridge where “[a] first driving force transmission member is positioned at the same side with the coupling member with respect to the first side wall, and transmits driving force from the coupling member to a rotating member” and “[a] second driving force transmission member is positioned at the same side with the detection body with respect to the second side wall, and transmits driving force from the rotating member to the detection body.” The specification continues that, “[w]ith reference to FIG. 27, a fifth embodiment of the cartridge will be described.” Col. 26, ln. 25-26. Significantly, the specification provides the following:

However, according to the fifth embodiment, instead of the tooth-missing gear 96, a first resistance providing member 146 is provided on the new-product detection gear 82 as shown in FIG. 27.

…

According to the fifth embodiment, the same operations as those of the first embodiment described above can be attained.

Col. 26, ln. 36-39 and 65-67.

Accordingly, the detection gear 82 depicted above, unlike the detection gear 82 depicted in Fig. 7A before that, reveals a completely toothless structure. Accordingly, the specification supports a construction that is not limited to a structure having teeth. This is further supported by the other patent claims in the ’387 patent that depend from claim 1 and that expressly claim “a plurality of gear teeth on a portion” of the gear. For example, claim 13 depends on claim 1 and adds a “third gear,” corresponding to the detection gear, “engaging with the second gear.” Claim 14 then reads:

The cartridge according to claim 13, wherein the third gear includes a plurality of gear teeth on a portion of a circumference of the third gear, at least one of the plurality of gear teeth engaging with the second gear.

(emphasis added)

The claim language above corresponds to the “tooth-missing portion” referenced previously. Notably, it specifies not only the absence of teeth around a portion of the circumference but expressly provides the limitation for gear teeth that does not appear in the independent claim. As such, under the doctrine of claim differentiation, “the presumption is especially strong in this case, because the limitation in dispute is the only meaningful difference between an independent and dependent claim.” InterDigital Communs., LLC v. ITC, 690 F.3d 1318, 1325 (Fed. Cir. 2012).

Therefore, the EOE Branch construes the “second gear” in claim 1 of the ’387 patent as not limited to structures having teeth. Infringement Under the Construction of “Second Gear” As noted above, Print-Rite’s only noninfringement argument concerns its proposed construction of “second gear” as requiring teeth. See Print-Rite Post-Discussion Submission, 13. Thus, we find that Print-Rite has not met its burden of proof to show that the detection gear cartridges do not infringe claim 1 and are not subject to the 1174 GEO.

Claim 1 of the ’456 Patent and Claim 1 of the ’856 Patent and the Monochrome Cartridges Print-Rite presented arguments that the monochrome cartridges do not infringe claim 1 of the ’456 patent or claim 1 of ’856 patent, the only independent claims at issue. See Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1552 n.9 (Fed. Cir. 1989) (“One who does not infringe an independent claim cannot infringe a claim dependent on (and thus containing all the limitations of) that claim.”). Brother responded during the inter partes proceeding to challenge Print-Rite’s non-infringement arguments. Primarily, Brother argued that Print-Rite has failed to describe its proposed transaction in sufficient detail to meet the requirements for CBP to issue a ruling letter under 19 C.F.R. Part 177. For the reasons described below, we find that Print-Rite has met its burden to establish non-infringement and has described the proposed transaction relative to the monochrome cartridges in sufficient detail to determine their admissibility under the GEO.

Infringement and the “Second Cartridge Electrode” and “Supply Electrode” Limitations Print-Rite argues that, with respect to its monochrome cartridges, “only a developing electrode is provided to receive a developing bias from the corresponding developing contact point member of the printer.” Ruling Request, 16. Thus Print-Rite asserts that its monochrome cartridge lack the “second cartridge electrode” of the ’456 patent and the “supply electrode” of the ’856 patent. The Print-Rite TN630/660 model’s electrode is pictured below:

Ruling Request, 18.

Print-Rite further argues:

[[

]] This would be problematic and fail to meet customer acceptable standards.

Print-Rite Post-Discussion Submission, 17.

Brother takes issue with Print-Rite’s support of its allegations and provides examples of “critical” reviews of the relevant Linkyo models as well as “Print-Rite’s own website[’s] . . . instructions for . . . ‘[t]aking off the chip from the finished cartridge and install[ing] it into new cartridge.’ Thus, [Brother argues] it is reasonable to assume that end users also would be able to use a screwdriver to modify the Monochrome Cartridges to include separate supply and developing electrodes.” Brother Response, exhibits A-C. Brother notes that its counsel was able to reattach a supply electrode “in a matter of seconds with just a Philips head screwdriver.” Id., at 21–24.

Brother also notes that, should the cartridge’s developing electrode prevent it from operating with a legacy supply electrode, a customer could easily replace the developing electrode in addition to installing a supply electrode. See Brother Post-Discussion Submission, 8. Brother also takes issue with Print-Rite’s “unsupported attorney argument” regarding the [[ ]]. Id., at 3. In summarizing its infringement argument, Brother also notes:

Print-Rite admits that the Monochrome Cartridges do not work as intended in Brother’s printers, admits that it left structure in place that would allow the Monochrome Cartridges to be modified to infringe, fails to provide any testing to substantiate its claim that “the Monochrome Cartridges work perfectly well with a single electrode.” Id.

Print-Rite for its part disputes that the reviews cited by Brother come from Print-Rite products and were instead purchased before [[ ]] when Print-Rite began supplying the newly designed products to Linkyo. Print-Rite Post-Discussion Submission, 17. Moreover, Print-Rite argues that the reviews themselves constitute “reliable hearsay” for the proposition that the newly designed products function since, as Brother notes, 94 percent of the reviews are positive. See Brother Post-Discussion Submission, 9. Print-Rite otherwise asserts that, based on its knowledge since [[ ]] Print-Rite Post-Discussion Submission, 17.

While Brother is correct that the burden is on Print-Rite to show noninfringement, Print-Rite has satisfied its burden to establish in this case that the articles in this ruling request do not directly infringe the patents included in the 1174 GEO since they do not satisfy a claim limitation. Brother raises in response an argument that the cartridges at issue constitute “a device … designed to be altered.” Brother Submission, 7. However, the case Brother cites continues that infringement was found where the accused “components” had “no useful noninfringing purpose” and ultimately held that the “principle is inapplicable here, however, because the record provides no reason to disregard the [noninfringing configuration].” High Tech Med. Instrumentation, Inc. v. New Image Indus., 49 F.3d 1551, 1556 (Fed. Cir. 1995). The EOE Branch determines that this case applies equally to the facts presented in this ruling request.

Brother also notes that a party potentially subject to an exclusion order has an “affirmative duty to take energetic steps to do everything in their power to ensure compliance.” Brother Response, 7 (quoting Certain Agricultural Tractors Under 50 Power Take-Off Horsepower, USITC Pub. 3227, Inv. No. 337-TA-380 (1999)). However, Brother does not cite authority under which CBP is authorized to refuse entry to a product under this standard. Rather, the cited portion of Agricultural Tractors does not concern whether a violation occurred but whether, in assessing a penalty in an enforcement proceeding at the Commission, a party could be considered to have acted in good faith.

Lastly, as for Brother’s argument concerning alleged deficiencies in Print-Rite’s request, Brother asserts that Print-Rite has failed to describe its transaction in the detail required for the sound administration of the customs laws. See Brother Response, 5. Namely, Brother asserts that: (1) Print-Rite has failed to provide “a complete statement of all relevant facts relating to the transaction,” as required by section 177.2(b)(1); and (2) the transaction is “essentially hypothetical in nature” within the meaning of section 177.7(a). We find, in light of the submissions during this inter partes proceeding, that Print-Rite has described its request in sufficient detail for CBP to identify the articles concerned and that the ruling request is not essentially hypothetically in nature.

V. HOLDING:

We find that Print-Rite has met its burden to establish that the monochrome cartridges described above do not infringe the claims at issue. Specifically, we find that the monochrome cartridges do not have a “supply electrode” or a “second cartridge electrode” as the relevant claims of the ’856 and ’456 patents require. Accordingly, we find that the monochrome cartridges are not subject to the GEO issued as result of Investigation No. 337-TA-1174.

We also find that Print-Rite has not met its burden to show that the detection gear cartridges do not have a “gear” within the meaning of “a second gear mounted to the second end portion of the agitator shaft and rotatable with the agitator shaft” as claimed by the ’387 patent. Accordingly, we find that the detection gear cartridges are subject to the 1174 GEO.

This 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. Part 177.2(b)(1), (2), and (4), and Part 177.9(b)(1) and (2).

Sincerely,

Dax Terrill
Chief, Exclusion Order Enforcement Branch

cc VIA EMAIL: Ms. Lisa M. Katan
Baker Botts LLP
700 K Street, N.W.
Washington, DC
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