• HQ H025822
• Nov 23, 2009

• Type : 19 U.S.C. § 1337; Unfair Competition • HTSUS :
•  Related:   965440   

OT:RR:BSTC:IPR H025822 DAX

Port Director
U.S. Customs and Border Protection
11099 South La Cienega Blvd.
Los Angeles, CA 90045

RE: Protest 2720-09-100402; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-565; Certain Ink Cartridges and Components Thereof

Dear Port Director:

This is in response to the application for further review of the above-referenced protest filed by Ninestar Technology Company, Ltd. (“Protestant”) with respect to the exclusion from entry for consumption of certain articles that were determined by the port to fall within the scope of the general exclusion order issued by the U.S. International Trade Commission (“ITC”) in Investigation No. 337-TA-565 (“565 GEO”).

FACTS:

On July 7, 2009, U.S. Customs and Border Protection (“CBP”) issued a notice to Protestant indicating that a shipment of Ninestar R-Series products was excluded from entry for consumption because the articles in question were covered by the 565 GEO. See Protest at 1-4 (dated August 7, 2009); see also CBP Exclusion Notice (listing the date of denial of entry as May 27, 2009). Pursuant to 19 U.S.C. § 1514(c), as implemented by 19 C.F.R § 174, Protestant timely filed a valid protest challenging the exclusion from entry and determination that the R-Series products fall within the scope of the 565 GEO. Specifically, the Protestant denies that the R-Series products infringe any of the patents at issue during the investigation at, and found to be infringed by, the ITC.

ITC Inv. No. 337-TA-565 was instituted based on a complaint filed by Epson Portland, Inc. of Oregon; Epson America, Inc. of California; and Seiko Epson Corp. of Japan (“Epson”), which named a number of parties, including Protestant and its related companies, as respondents to the investigation. See Protest, Exhibit 1 at 3 (dated April 4, 2008); see also Administrative Law Judge’s (“ALJ”) Final Initial and Recommended Determination (“ID”) at 1-7 (dated March 30, 2007).

The ALJ found a violation of section 337 of the Tariff Act of 1930, as amended, which was affirmed in part by the Commission on review. See Certain Ink Cartridges and Components Thereof, Inv. No. 337-TA-565, Commission Opinion (“ITC CO”) at 1 (dated November 7, 2007). The Commission decided to provide relief in the form of a general exclusion order that bars the entry for consumption into the United States of ink cartridges that infringe claim 7 of U.S. Patent No. 5,615,957; claims 18, 81, 93, 149, and 164 of U.S. Patent No. 5,622,439; claims 83 and 84 of U.S. Patent No. 5,158,377; claims 19 and 20 of U.S. Patent No. 5,221,148; claim 1 of U.S. Patent No. 5,488,401; claims 1, 2, 3, and 9 of U.S. Patent No. 6,502,917; claims 1, 31, and 34 of U.S. Patent No. 6,550,902; claims 1, 10, and 14 of U.S. Patent No. 6,955,422; claim 1 of U.S. Patent No. 7,008,053; or claim 21 of U.S. Patent No. 7,001,397. Id. at 1-2; 565 General Exclusion Order (dated October 19, 2007). Subsequent to the issuance of the 565 GEO, CBP excluded from entry ink cartridges of Protestant on a number of occasions, for which the ITC, on May 14, 2008, issued a seizure and forfeiture order against Protestant pursuant to 19 U.S.C. § 1337(i).

Protestant describes the R-Series product as a two-piece device consisting of a “cartridge” and an “adapter.” See Protest, Exhibit 1 at 6-8. There are two different configurations of the R-Series “cartridge” and “adapter.” Id. at 6, FN 3. Both configurations of the R-Series product, with the corresponding “cartridge” and “adapter,” are depicted below.









Protestant further indicates that:

R-Series cartridges are designed to fit within printers in which an R-Series adapter has been installed. As shown in the accompanying video (Exhibit 9), the R-Series adapted is affixed within the printer before the cartridge is inserted. When the R-Series cartridge runs out of ink and requires replacement, the R-Series adapter remains fixed within the printer and only the cartridge is replaced. The R-Series adapter and R-Series cartridge are supplied as separate products and do not engage each other to form a unitary assembly.

Id. at 9. Images of a sample R-Series “cartridge” and “adapter” that were part of the same shipment excluded from entry are included below, along with their retail product packaging.










For clarification purposes, the R-Series “cartridge” will be referred to from this point as the “ink container” while the R-Series “adapter” will continue to be referred to as the “adapter.”

ISSUE:

The issue presented is whether the R-Series “ink container,” when used in combination and imported with the R-series “adapter,” infringes any of the patents at issue and falls within the scope of the 565 GEO.

LAW AND ANALYSIS:

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), (i). 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, as amended, it may issue two types of exclusion orders: a limited exclusion order and 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). Both types of orders direct CBP to bar 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 the importation of infringing products by everyone, regardless of whether they were respondents in the Commission’s investigation. Id. A general exclusion order is only 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 infringing articles into the United States.

As stated above, the 565 GEO issued by the ITC provides, in relevant part, that:

Ink cartridges covered by one or more of claim 7 of the ‘957 patent; claims 18, 81, 93, 149, and 164 of the ‘439 patent; claims 83 and 84 of the ‘377 patent; claims 19 and 20 of the ‘148 patent; claim 1 of the ‘401 patent; claims 1, 2, 3 and 9 of the ‘917 patent; claims 1, 31 and 34 of the ‘902 patent; claims 1, 10 and 14 of the ‘422 patent; claim 1 of the ‘053 patent; or claim 21 of the ‘397 patent are excluded from entry for consumption, entry for consumption from a foreign-trade zone, or withdrawal from a warehouse for consumption, for the remaining term of the patents, except under license of the patent owner or as provided by law.

The ITC’s 565 order is typical of general exclusion orders, speaking in terms of patent claims rather than parties and/or infringing products. See Yingbin-Nature, 535 F.3d at 1331. The 565 GEO directs CBP to exclude ink cartridges, regardless of their manufacturer or importer, that infringe the patents included above. While Protestant was named as a respondent to the investigation at the ITC, the R-Series product was not analyzed by the ALJ or the Commission on review. However, as indicated above (and as exhibited by the vast majority of the orders issued by the ITC), the 565 GEO is not product specific and applies to any article that infringes the relevant patents and otherwise falls within the order’s scope. See Certain Hardware Logic Emulation Systems and Components Thereof, Inv. No. 337-TA-383, Commission Opinion at 16 (Publication 3089, dated March 1998) (“[T]he Commission’s long-standing practice is to direct its remedial orders to all products covered by the patent claims as to which a violation has been found, rather than limiting its orders to only those specific models selected for the infringement analysis.”).

Significantly, the Court of Appeals for the Federal Circuit (“CAFC”) has recognized that issuance of a general exclusion order by the ITC binds named parties and non-named parties alike and shifts to would-be importers (such as Protestant), “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). Accordingly, the burden is on Protestant to establish that the excluded ink cartridges at issue do not infringe any of the relevant patents.

Patent infringement determinations 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.”).

Under the doctrine of equivalents, “a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is ‘equivalence’ between the elements of the accused product or process and the claimed elements of the patented invention.” Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 21 (1997) (citing Graver Tank & Manufacturing Co. v. Linde Air Products Co., 339 U.S. 605, 609 (1950)). The CAFC applies two articulations of the test for equivalence. See Voda v. Cordis Corp., 536 F.3d 1311, 1326 (Fed. Cir. 2008) (explaining that different phrasing may be “more suitable to different cases, depending on their particular facts…”). Under the insubstantial differences test, “[a]n element in the accused device is equivalent to a claim limitation if the only differences between the two are insubstantial.” Id. at 1326 (citing Honeywell International Inc. v. Hamilton Sundstrand Corp., 370 F.3d 1131, 1139 (Fed. Cir. 2004)).

Alternatively, under the function-way-result test, an element in the accused device is equivalent to a claim limitation if it “performs substantially the same function in substantially the same way to obtain substantially the same result.” Id. (citing Schoell v. Regal Marine Industries, Inc., 247 F.3d 1202, 1209-10 (Fed. Cir. 2001). However, the doctrine of prosecution history estoppel acts as a constraint to limit the application of the doctrine of equivalents. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 733-41 (“Prosecution history estoppel requires that the claims of a patent be interpreted in light of the proceedings in the PTO during the application process….The doctrine of equivalents allows the patentee to claim those insubstantial alterations that were not captured in drafting the original patent claim but which could be created through trivial changes. When, however, the patentee originally claimed the subject matter alleged to infringe but then narrowed the claim in response to a rejection, he may not argue that the surrendered territory comprised unforeseen subject matter that should be deemed equivalent to the literal claims of the issued patent. On the contrary, by the amendment [the patentee] recognized and emphasized the difference between the two phrases[,]…and the difference which [the patentee] thus disclaimed must be regarded as material.…Prosecution history estoppel ensures that the doctrine of equivalents remains tied to its underlying purpose.”) (internal citations omitted).

As for the scope of protection provided by the patents at issue in the 565 GEO, 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.”).

Indeed, the Supreme Court has established the appropriateness of relying on the patent claims to define the scope of the invention and has declared that the claims are “of primary importance, in the effort to ascertain precisely what it is that is patented.” Merrill v. Yeomans, 94 U.S. 568, 570 (1876). Since the patentee is required to “define precisely what his invention is,” the Supreme Court explained elsewhere, it is “unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms.” White v. Dunbar, 119 U.S. 47, 52 (1886); see also Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405, 419 (1908) (“the claims measure the invention”); McCarty v. Lehigh Valley R.R. Co., 160 U.S. 110, 116 (1895) (“[I]f we once begin to include elements not mentioned in the claim, in order to limit such claim…, we should never know where to stop.”).

After establishing that the claims define the scope of the invention, the question becomes how to define the claim terms themselves. The CAFC has frequently stated that the words of a claim “are generally given their ordinary and customary meaning.” Vitronics, 90 F.3d at 1582. Additional cases have clarified that the ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application. See Phillips, 415 F.3d at 1312-1313; see also Innova, 381 F.3d at 1116 (“A court construing a patent claim seeks to accord a claim the meaning it would have to a person of ordinary skill in the art at the time of the invention.”); Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1358 (Fed. Cir. 2004) (“customary meaning” refers to the “customary meaning in [the] art field”); Ferguson Beauregard/Logic Controls v. Mega Sys., LLC, 350 F.3d 1327, 1338 (Fed. Cir. 2003) (claim terms “are examined through the viewing glass of a person skilled in the art”).

Accordingly, 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. Moreover, the CAFC has instructed that certain intrinsic and, if necessary, extrinsic evidence can serve as important interpretive tools for claim construction purposes. Such intrinsic evidence includes “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.” Innova, 381 F.3d 1116; see also Gemstar-TV Guide Int’l, Inc. v. Int’l Trade Comm’n, 383 F.3d 1352, 1364 (Fed. Cir. 2004). For example, the claims themselves provide substantial guidance as to the meaning of particular claim terms. See Vitronics, 90 F.3d at 1582; see also ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003) (“the context of the surrounding words of the claim also must be considered in determining the ordinary and customary meaning of those terms”).

Therefore, the CAFC has held that the context in which a term is used in the asserted claim can be highly instructive. See 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. This court’s cases provide numerous similar examples in which the use of a term within the claim provides a firm basis for construing the term.”); see also Mars, Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1374 (Fed. Cir. 2004) (claim term “ingredients” construed in light of the use of the term “mixture” in the same claim phrase); Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1356 (Fed. Cir. 1999) (claim term “discharge rate” construed in light of the use of the same term in another limitation of the same claim).

Additionally, 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.” Philips, 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.”).

However, despite the specification’s significance, caution must be taken to avoid impermissibly reading a limitation from the specification into the claims of the patent. See Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186-1187 (Fed. Cir. 1998) (“We recognize that there is sometimes a fine line between reading a claim in light of the specification, and reading a limitation into the claim from the specification.”); see also Specialty Composites v. Cabot Corp., 845 F.2d 981, 987 (Fed. Cir. 1988) (“Where a specification does not require a limitation, that limitation should not be read from the specification into the claims.”) (emphasis in original).

While continuing to be mindful of this fine line between interpretation and importation, the CAFC explained in Phillips 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 outlined above for construing patent claims and has also highlighted certain intrinsic evidence that should be used to properly interpret the various claim elements. With this framework established, the analysis below now turns to the merits of the protest at hand.

Chip or Contact Patents

The first step in making a patent infringement determination, that of interpreting the claims, has been done for certain claim limitations by the ALJ and by the Commission on review. Therefore, the second step in the infringement analysis, involving a question of fact, requires CBP to read onto the R-Series product the claims as properly construed by the ITC. See Ninestar Technologies v. Int’l Trade Comm’n, 309 Fed. Appx. 388; 2009 U.S. App. LEXIS 492 (Fed. Cir. 2009) (Per Curiam opinion affirming the ITC’s determination).

The chip or contact patents refer to a number of patents at issue before the ITC, one of which is United States Patent No. 6,502,917 (“‘917 patent”), which issued on January 7, 2003. See ALJ ID at 77. The abstract of the ‘917 patent reads:

An ink jet type printing apparatus in which an ink supply needle is located near one side in a direction perpendicular to the reciprocated directions of a carriage, a circuit board is mounted on a wall of an ink cartridge in the vicinity of the side on which an ink supply port is formed and plural contacts for connecting to external control means are formed on the exposed surface of the circuit board.

Additionally, the ALJ found that it was undisputed that the ‘917 patent is directed to an ink cartridge having a semiconductor device for storing information for use in an inkjet printer and that the invention is more specifically described by the patent in the following manner:

The present invention is made in view of such a problem and an object of which is to provide an ink-jet printing apparatus wherein data stored in semiconductor storage means can be prevented from being lost independent of unsuitable operation for attaching or detaching an ink cartridge.

ALJ ID at 78; ‘917 patent, col.2 ll.6-11.

The ‘917 patent has 38 claims. Only claims 1, 2, 3, and 9 (the first and last of which are independent claims), were included in the 565 GEO. Infringed claim 1 contains a preamble and four limitations, which read as follows:

1. An ink cartridge for mounting on a carriage of an inkjet printing apparatus and for supplying ink to a printhead of said ink jet printing apparatus through an ink supply needle, the ink cartridge comprising:

a plurality of external walls, including a first wall and a second wall, defining at least some of a chamber;

an ink supply port for receiving said ink supply needle, the ink supply port having a centerline and communicating with the chamber,

a semiconductor storage device storing information about the ink carried by said cartridge; and

a plurality of contacts for connecting the semiconductor storage device to the ink jet printing apparatus, the contacts being formed in a plurality of rows lying essentially in a plane parallel to the centerline of the ink supply port, each said row being centered relative to the centerline of said ink supply port.

Claim Construction

The ALJ construed a number of the terms in claim 1 of the ‘917 patent, including the term “contacts” found in the fourth limitation. The ALJ characterized the issue concerning this term’s construction as “whether ‘contacts’ should be limited to the discrete electrodes identified as numeral 60 in figure 7(a) of the ‘917 patent as urged by the active respondents [Protestant and its related companies].” See ITC CO at 8. The Commission determined to review the ALJ’s construction of contacts as “the portions of conductive material on the printer when said cartridge is mounted.” Id. In doing so, the Commission decided to examine the ALJ’s conclusion that “the intrinsic evidence does not support the notion of electronically and physically discrete ‘contacts,’ as argued for by the active respondents [Protestant and its related companies], and…that contacts should not be limited to the structure identified as 60.” Id. at 9.

On review before the Commission, Protestant argued that the ALJ’s construction was improper because it was contrary to the ordinary meaning of the claim term, as defined by the specification, and because the ALJ’s construction rendered the term indefinite because infringement could not be determined without installing a cartridge in the printer. Id. The Commission determined that, contrary to the ALJ’s reading, the specification and claims do not indicate that contacts on the ink cartridge are created upon insertion in the printer.

While agreeing with the ALJ that claim 1 of the ‘917 patent indicates that “the contacts are formed in a plurality of rows,” the Commission found that the specification does not indicate that contacts must be formed by the mating of the cartridge and printer. For example, the specification equates the term “electrodes” and “contacts,” suggesting that the latter refers to discrete portions of conductive material. Id. at 11. Additionally, the figures of the ‘917 patent also indicate that “contacts” exist on the ink cartridge without regard to whether the printer cartridge has been installed in the printer. The Commission found this to indicate that the “contacts” encompass specific structures on the ink cartridge’s circuit board. Id. at 12 (“For example, the specification refers to contacts 60 being formed on the surface of the circuit board when the circuit board is mounted on the cartridge– not when the cartridge is installed in the printer…). Lastly, the Commission noted that none of the other references in the specification to contacts clearly indicate that contacts are only formed when the cartridge is installed, yet some of the references indicate that contacts are discrete structures on the cartridges regardless of whether it is installed in the printer. Accordingly, the Commission defined “contacts” as the discrete portions of the conductive material on the cartridge itself without regard to whether the printer cartridge has been installed. Id. at 12-13.

At no point, however, did the Commission or ALJ construe the term “ink cartridge” within the preamble of claim 1 in the ‘917 patent. Protestant argues that “ink cartridge” should be interpreted to require an integrated, unified structure prior to insertion into the printer. See Protest, Exhibit 4 at 6 (dated August 25, 2008). Protestant essentially makes three arguments for this interpretation. First, employing the Commission’s analysis above regarding the construction of the claim term “contacts,” Protestant argues that a proper construction of the term “ink cartridge” is one requiring a unified article prior to insertion in the printer. Second, Protestant argues that the intrinsic and extrinsic evidence further support such a construction. And third, Protestant argues that Epson has taken a position at the U.S. Patent and Trademark Office during a reexamination proceeding of the ‘917 patent that is contrary to finding that the R-Series “ink container” and “adapter,” when used in combination, infringe claim 1 of the ‘917 patent.

An initial question not addressed by Protestant is whether the term “ink cartridge” from the preamble to claim 1 should be treated as a limitation in the first place. See Symantec Corp. v. Computer Associates International, Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008) (“Because the disputed term appears in the preamble to claim 1, we must first determine whether it is in fact a separate limitation. In general, a preamble is construed as a limitation if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim. A preamble is not limiting, however, where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.”) (internal citations omitted). In this context, the determination is that the term “ink cartridge” in the preamble of claim 1 does serve as a separate claim limitation because it recites an essential structure necessary to give life and meaning to the claim. Moreover, the patentee has not defined a “structurally complete invention” elsewhere in the claim body. Accordingly, this term in the preamble is properly considered a limitation. The analysis now turns to Protestant’s first argument concerning this limitation’s construction. As indicated above, the ITC defined the term “contacts” to be discrete portions of conductive material on the cartridge and that these structures exist on the claimed ink cartridge regardless of whether it has been installed in the printer. Protestant has taken this analysis and argued that, in light of this finding by the ITC, the term “ink cartridge” must be construed to require an integral, unified structure prior to insertion into the printer. While Protestant has correctly summarized the ITC’s analysis as to the interpretation of “contacts,” it has failed to acknowledge that the above represents the ITC’s claim construction based on the specific intrinsic evidence supporting such a construction for this particular term. It does not apply, and should not be grafted onto, any other term in claim 1 of the ‘917 patent absent specific intrinsic evidence supporting such an interpretation. In other words, the ITC did not set up, per se, a rule of construction that all of the terms in claim 1 of the ‘917 patent must be considered without reference to their interface with a printing apparatus. In fact, the ITC specifically did not reach the merits of Protestant’s second argument before the Commission that the ALJ’s claim construction was improper because it rendered the term “contacts” indefinite since, according to Protestant, it could not be determined if a cartridge infringes without installing it into a printer. Accordingly, the ITC did not address here whether the claimed “ink cartridge” must be an integral, unified structure. Therefore, Protestant’s argument regarding the ITC’s construction of “contacts” is misplaced to the extent there is not similar intrinsic evidence supporting such an interpretation.

Protestant’s second argument is that “ink cartridge” must be construed to require an integral, unified structure prior to insertion into the printer in light of the available intrinsic evidence, particularly the ‘917 patent specification, as well as the extrinsic evidence in the form of dictionary definitions.

Protestant specifically cites to the ‘917 specification, which states “[t]he present invention relates to a printing apparatus to which ink is supplied from a replaceable ink cartridge for printing on a recording medium.” ‘917 patent, col.1 ll.23-25. Protestant also cites the specification, in the context of describing the conventional art in the field, for the proposition that “the patent recognizes that the ink cartridge is the replaceable structure which caries [sic] the ink, whether or not, it also includes a chip storing ink cartridges.” See Protest, Exhibit 4 at 8. However, Protestant’s references to the specification do not support an interpretation that an ink cartridge must be an integral, unified structure prior to insertion into the printer. At most, they suggest that the ink cartridge covered by the ‘917 patent is one that is capable of being replaced, but no more. They do not provide any evidence indicating that the structural nature of the claimed “ink cartridge” must be integral prior to insertion.

Additionally, there is intrinsic evidence elsewhere in the ‘917 patent that contradicts Protestant’s proposed construction. First, to reiterate the CAFC’s claim construction methodology, the claims and the context in which a term is used can provide substantial guidance as to its proper construction. See Vitronics, 90 F.3d at 1582; see also Arlington Industries, Inc. v. Bridgeport Fittings, Inc., 345 F.3d 1318, 1325 (Fed. Cir. 2003) (“The context of the surrounding words in a claim also must be considered in determining the ordinary and customary meaning of a disputed claim limitation.”). Claim 1 of the ‘917 patent states that it covers an “ink cartridge for mounting on a carriage of an inkjet printing apparatus….” ‘917 patent, col.11 ll.30-31 (emphasis added). Under the CAFC’s precedent, the claim language supports not only interpreting the claimed “ink cartridge” in the context of the printing apparatus, but also construing the claimed “ink cartridge” as one that is capable of being mounted on a printing apparatus. There is no inherent requirement found in the claim language that the claimed “ink cartridge” must form an integral, unified structure prior to insertion in the printer. Moreover, it must be remembered that a proper construction of a claim term cannot import a limitation that is not found in the claims or provided for through a definition contained in the specification.

Furthermore, the ‘917 specification itself does not provide any evidence that the claimed “ink cartridge” should be interpreted to require integration prior to insertion into the printing apparatus. In fact, the specification describes the ink cartridge, its function and embodiment, in the following manner:

As best shown in FIGS. 6(a) and 6(b), the circuit boards 31 is [sic] attached on a side wall having the shorter width than the other side wall of the ink cartridges 40 and 50 and located on a central line of the ink supply ports 44 and 54, respectively. The circuit board 31 is disposed substantially in parallel with the side wall. In addition, as shown in FIG. 6(b), the ink cartridge 50 is provided with a plurality of ink chambers for different ink, and the circuit board 31 is disposed substantially at a center of the total width of the plurality of the ink chambers. Because the circuit boards 31 are located as described above, the accurate positional relationship of the circuit boards 31 with the contact member of the printing apparatus can be assured when the ink cartridges 40 and 50 are mounted on the printing apparatus. ‘917 patent, col.5 ll.3-16 (emphasis added). Therefore, according to the specification, the “circuit board” of the claimed “ink cartridge” is attached to one of the container walls. The specification does not say that it must be directly affixed to the wall in an integral fashion or that the circuit board, if contained on a separate piece, must be integrated into one unitary device prior to insertion into the printing apparatus. Instead, the specification indicates that the positional relationship between the circuit board and the printer’s contact member is confirmed “when the ink cartridges 40 and 50 are mounted on the printing apparatus.” Id. Additionally, while it is noted that the figures in the ‘917 specification show the ink cartridge as a unitary structure, the determination here is that it would be an error, in light of the language in claim 1 and the specification, to limit the construction to this one embodiment found in the patent by requiring a unified structure prior to insertion. See Phillips, 415 F.3d at 1323 (“ [A]lthough 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.”); see also SRI International v. Matsushita Electric Corp., 775 F.2d 1109, 1122 (Fed. Cir. 1985) (“While the claims of a patent may incorporate the specifications or drawings by reference,…and thus limit the patent to the form described in the specification, it is not necessary to embrace in the claims or describe in the specifications all possible forms in which the claimed principle may be reduced to practice.”) (internal citation omitted).

Lastly, in the “Infringement” portion of the ID, the ALJ found that a two-piece device, when assembled, satisfied the first limitation of claim 1 in the ‘917 patent. See ALJ ID at 250 (“In addition, the structures of the multi-piece cartridges RC-6, RC-8, RC-9 and RC-10 in issue are found to consist of separate ink or chamber inserts and an outer shell, and when assembled, the components form a complete cartridge.”) (emphasis added). Neither the ALJ, nor the Commission, ever construed the term “ink cartridge” to require an integral device prior to insertion into the printer and the intrinsic evidence cited above does not support such a construction. Additionally, the ALJ’s infringement analysis above found that certain claim elements were met when a two-piece device was assembled. Accordingly, it would be consistent with the ALJ’s approach to analyze the R-Series product at the time the “ink container” and “adapter” are assembled, which is when they are installed in the printer to supply ink to the printhead.

Accordingly, based on the claim term, the context in which it is used, and the evidence contained in the specification, it is determined that “ink cartridge” in claim 1 of the ‘917 patent should be construed as a unitary or unifiable device for containing ink that is capable of being mounted on a carriage of an inkjet printing apparatus and supplying ink to a printhead of the inkjet printing apparatus through an ink supply needle.

Protestant has also provided two separate claim constructions for the claim term “ink cartridge” based on dictionary definitions. The first definition of “cartridge” offered by Protestant is “any small container for…liquid…made for ready insertion into some device or mechanism: an ink cartridge for a pen.” Protest, Exhibit 2 at 9 (dated June 2, 2008). Subsequently, Protestant provided another dictionary definition, claiming that an “ink cartridge” is a “removable module that contains ink or toner.” Protest, Exhibit 4 at 8.

The CAFC has found that, while in some circumstances the use of dictionaries and technical treatises may be helpful, extrinsic evidence is generally a less reliable interpretative tool for claim construction purposes. Phillips, 415 F.3d at 1318-1319 (noting that some reasons for this perspective are that “extrinsic evidence by definition is not part of the patent and does not have the specification’s virtue of being created at the time of patent prosecution for the purpose of explaining the patent’s scope and meaning[;] that while claims are construed as they would be understood by a hypothetical person of skill in the art, extrinsic publications may not be written by or for skilled artisans and therefore may not reflect the understanding of a skilled artisan in the field of the patent[;]…that there is a virtually unbounded universe of potential extrinsic evidence of some marginal relevance that could be brought to bear on any claim construction question[;] [that during] the course of litigation, each party will naturally choose the pieces of extrinsic evidence most favorable to its cause, leaving the court with the considerable task of filtering the useful extrinsic evidence from the fluff[;] [and lastly that] undue reliance on extrinsic evidence poses the risk that it will be used to change the meaning of claims in derogation of the indisputable public records consisting of the claims, the specification and the prosecution history, thereby undermining the public notice function of patents.”) (internal citations removed).

Accordingly, the CAFC has found that, although extrinsic evidence may be useful in some circumstances, “it is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence.” Phillips, 415 F.3d at 1319. Therefore, while it is permissible for a court or administrative body to use extrinsic evidence in a judicious manner, it is the intrinsic evidence that should be principally relied upon and analyzed to reach a proper claim interpretation. Therefore, the analysis above has focused on the intrinsic evidence and disregarded any dictionary definitions tending to alter or limit the definition provided by the intrinsic evidence. Parenthetically, it is unclear why either of Protestant’s proffered dictionary definitions would not read onto the R-Series product, but the analysis regarding this extrinsic evidence ends here since these constructions have not been adopted.

Protestant’s third and final argument in support of its construction is that Epson has taken a position during the reexamination proceeding of the ‘917 patent at the PTO that is contrary to finding that the R-Series “ink container” and “adapter” infringe claim 1 of the ‘917 patent. However, the PTO has not yet reached a final determination regarding the ‘917 patent and therefore the proceedings before the PTO, and any assertions made concerning the scope of the ‘917 patent, are not properly part of the patent’s prosecution history. Furthermore, Protestant has not provided an update regarding the status of these proceedings. The last notice provided to CBP indicated that the PTO had issued a first office action finding all of the claims of the ‘917 patent to be invalid. See Protest, Exhibit 1 at 31. However, the ITC has recognized that this is a fairly routine outcome for a first office action. See Certain Semiconductor Chips With Minimized Chip Package Size and Products Containing Same, Inv. No. 337-TA-605, Commission Opinion at 10 (dated May 27, 2008) (“The IA [investigative attorney] notes that an adverse office action in the reexamination process is fairly routine and is not an indication that the patent claims are going to be rejected or amended. Furthermore, as the IA argues, once a request for reexamination is granted, a first office action generally issues repeating the arguments in the third party’s request....Likewise, a second office action will issue later addressing the remarks of the patentee and third party requester. This second office action is not a final office action and is only an Action Closing Prosecution if no new issues were raised by the patentee’s remarks.”) (internal citations omitted); see also 37 C.F.R. § 1.935, MPEP § 2660; 37 C.F.R. § 1.949, MPEP § 2671.01.

Accordingly, based on the record before CBP, it does not appear that there has been a final determination, let alone a second office in the reexamination proceeding. Therefore, the reexamination proceeding for the ‘917 patent and any positions taken during it are not currently part of the prosecution history for claim construction purposes. Furthermore, the determination here is that, while the reexamination proceeding is not part of the ‘917 patent’s prosecution history, Epson is also not judicially estopped from making infringement arguments regarding the R-Series product because the test outlined by the Supreme Court for judicial estoppel has not been established in this context. See Zedner v. United States, 547 U.S. 489, 504 (2006) (“[W]here a party assumes a certain position in a legal proceeding, and succeeds in maintaining that position, he may not thereafter, simply because his interests have changed, assume a contrary position, especially if it be to the prejudice of the party who has acquiesced in the position formerly taken by him....This rule, known as judicial estoppel, generally prevents a party from prevailing in one phase of a case on an argument and then relying on a contradictory argument to prevail in another phase.”). There is no evidence in the record that Epson has succeeded in the position it is alleged to have advocated before the PTO and therefore no estoppel can apply in these circumstances. For all of these reasons, the construction provided above still applies.

Read On

The next step in the infringement analysis is to determine whether the claims, as interpreted, read onto the R-series “ink container” and “adapter” when used in combination. As indicated above, the CAFC has recognized that 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., 899 F.2d at 1210.

In fact, Protestant does not challenge that each of the claim elements are met when the “ink container” and “adapter” are considered in combination. Instead, Protestant has focused on its construction of “ink cartridge” and argued that applying its construction to the R-Series “ink container” would not result in a finding of infringement. However, as detailed above, Protestant’s proposed claim construction has not been adopted. Accordingly, the determination below addresses whether each of the limitations contained in claim 1 of the ‘917 patent reads onto the R-Series product.

Under the claim construction provided above, the R-Series “ink container” and “adapter” satisfy the “ink cartridge” limitation because together they are a unifiable device for containing ink that is capable of being mounted on a carriage of an inkjet printing apparatus and supplying ink to a printhead of the inkjet printing apparatus through an ink supply needle. As shown in the images below, the R-Series “ink container” and “adapter” are capable of being unified inside the printer when assembled and mounted on the printer.






The procedure starts by opening the printer, locating the housing for the various ink cartridges, and removing one that is empty. Once the empty ink cartridge has been removed, the R-Series product can be inserted into the printer track left vacant by the empty cartridge. Although the R-Series “ink container” and “adapter” cannot be physically joined outside the printer without using force, the “ink container” and “adapter” are joined after being assembled inside the printer, as shown in the bottom images below.










As for the remaining claim elements, based on visual inspection, the R-Series product has a plurality of external walls, including a first wall and a second wall, defining at least some of a chamber. Likewise, the R-Series product has an ink supply port for receiving the ink supply needle, the ink supply port having a centerline and communicating with the chamber. The R-Series product also has a semiconductor storage device for storing information about the ink carried by said cartridge. See Protest, Exhibit 4 at 11 (“It is indisputable that the R-Series products do not provide this benefit since the information concerning ink characteristics stored in the chip on the adapter is fixed.”) (emphasis added).

The remaining question is whether the R-Series product meets the final claim limitation from claim 1 of the ‘917 patent requiring “a plurality of contacts for connecting the semiconductor storage device to the ink jet printing apparatus, the contacts being formed in a plurality of rows lying essentially in a plane parallel to the centerline of the ink supply port, each said row being centered relative to the centerline of said ink supply port.” As shown in the images below, both versions of the R-Series product possess a semiconductor storage device that is very similar to the representative semiconductor storage devices that were analyzed at the ITC and found to infringe claim 1 of the ‘917 patent. See ITC CO at 28 (“Furthermore, we agree with the ALJ’s conclusions with respect to infringement of claim 1 of the ‘902 patent and claims 1, 2, 3, and 9 of the ‘917 patent because we concluded the two representative cartridges [RC-6 and RC-10] have two rows of ‘contacts.’ First, despite the additional portions of conductive material on RC-6 and RC-10, creating the serpentine patterns, a pattern of two rows can still be discerned, especially with respect to RC-6. On both cartridges, the patterns of conductive material have areas where the material is wider and the areas of widened material are arranged in rows.”); see also Epson’s ITC Exhibit CPX-25 (for representative cartridge 6), CPX-52 (for representative cartridge 10), and CDX-1, Slides 3, 4; Office of Unfair Import Investigations Brief on Issues Under Review at 15 (dated July 13, 2007).

















Additionally, Protestant has not provided any reason why the above determination of the ITC should not apply to the semiconductor storage devices exhibited by the R-Series product. As indicated above, the burden is on Protestant to establish non-infringement and that burden has not been met for this or any of the other elements addressed above. Accordingly, all the limitations from claim 1 of the ‘917 patent read onto both versions of the R-Series product. Therefore, the R-Series “ink container” and “adapter” have been determined to infringe the ‘917 patent when used in combination.

Scope of the 565 GEO

Protestant makes one final argument regarding why the R-Series product falls outside the scope of the 565 GEO. Protestant points to the language of the 565 GEO itself, which states that “[i]nk cartridges covered by [the relevant patents] are excluded from entry…for the remaining term of the patents, except under license of the patent owner or as provided by law.” 565 General Exclusion Order (emphasis added). Based on this language, Protestant argues that the scope of the 565 GEO does not extend to components of ink cartridges. See Protest, Exhibit 1 at 35 (“Quite simply, the Exclusion Order does not cover the importation of separate components of an ink cartridge, but rather only a complete ink cartridge.”).

To further support its position, Protestant states that the ITC instituted the investigation that resulted in the 565 GEO based on Epson’s complaint seeking relief from infringing imports of ink cartridges and components thereof. Moreover, the ALJ’s ID at various points, including the “Conclusions of Law” section, refers to ink cartridges and components thereof. See ALJ ID at 387, 396 (“There has been an importation involving each of the respondents of certain ink cartridges and components thereof, which are the subject of the alleged unfair unfair [sic] trade allegations.”). According to Protestant, this establishes the fact that the investigation initially applied to ink cartridges and components thereof, but does not so extend in the post-issuance stage. Additionally, the ITC further clarified that its remedy does not apply to ink cartridge components when it modified the seizure and forfeiture order issued pursuant to 19 U.S.C. § 1337(i). As indicated above, on May 14, 2008, the ITC issued a seizure and forfeiture order against Protestant based on a denial of entry by CBP. The seizure and forfeiture order, as originally issued, applied to ink cartridges and component parts thereof imported in violation of the 565 GEO. However, on September 11, 2008, the ITC modified this order to delete the phrase “component parts thereof.” Significantly, the ITC stated in the modified seizure and forfeiture order that “[t]he general exclusion order does not in fact cover components of ink cartridges.” See Protest, Exhibit 5 (dated September 11, 2008) (emphasis added).

The determination above has found that the R-Series “ink container” satisfies the “ink cartridge” limitation of claim 1 from the ‘917 patent when used in combination with the R-series “adapter.” Furthermore, in this instance, the R-Series “ink containers” have been imported along with the “adapters” in the same shipment that was excluded from entry. See Ninestar Image International Ltd. Commercial Invoice (dated May 11, 2009) (indicating the shipment in question contains “ink tank” products and “adapter” products). Since the two products, when used in combination, were determined to infringe claim 1 of the ‘917 patent and, in this instance, were attempting to make entry in the same shipment, the determination here is they qualify as an “ink cartridge” that is subject to the 565 GEO and were properly excluded from entry. A contrary reading of the exclusion order’s language would mean the entry for consumption of a two-piece ink cartridge found to infringe at the ITC, such as representative cartridge 8, would not violate the 565 GEO if the ink cartridge was disassembled into its two pieces and imported together in the same shipment. See CO at 36 (for depictions of representative cartridge 8 from CPX-103). The determination here is that such a reading is untenable in light of the infringement analysis above and the commingled nature of this entry. The fact that the ITC did not extend the 565 GEO to cover “components” does not mean unassembled ink cartridges likewise do not fall within the order’s scope.

Moreover, for purposes of the U.S. General Rules of Interpretation (“GRI”) of the Harmonized Tariff Schedule, unassembled products are treated as assembled products for entry and classification purposes. See GRI 2(a), 19 U.S.C. § 1202 (“Any reference in a heading to an article shall be taken to include a reference to that article incomplete or unfinished, provided that, as entered, the incomplete or unfinished article has the essential character of the complete or finished article. It shall also include a reference to that article complete or finished (or falling to be classified as complete or finished by virtue of this rule), entered unassembled or disassembled.”). Furthermore, the Court of International Trade has interpreted GRI 2(a) thusly:

According to the relevant Explanatory Notes, for purposes of GRI 2(a), “‘articles presented unassembled or disassembled’ means articles the components of which are to be assembled either by means of fixing devices (screws, nuts, bolts, etc.) or by riveting or welding, for example, provided only assembly operations are involved.” See Explanatory Note 2(a)(VII).

That is not to say that assembly of an imported article must involve “fixing devices (screws, nuts, bolts, etc.) or…riveting or welding” to fall within the definition of an “unassembled or disassembled” article for purposes of GRI 2(a). Articles involving even simpler assembly are also covered. See, e.g., HQ 965440 (Aug. 7, 2002) (ruling that “Swiffer Wet Jet” (a manual floor mop with an internal, hand-operated sprayer, used to wet-mop hard surface floors), which is imported unassembled in three basic pieces that “snap together for ease of assembly by the ultimate consumer,” is properly classified under heading 8509 “at [the level of] GRI 1 and GRI 2(a) (because the Wet Jet is imported unassembled)”). Indeed, the Explanatory Notes themselves state that “[n]o account is to be taken…of the complexity of the assembly method.” See Explanatory Note 2(a)(VII).

Pomeroy Collection, Ltd. v. United States, 559 F. Supp. 2d 1374, 1386, FN 13 (Ct. Int’l Trade 2008) (emphasis in original). Accordingly, since unassembled products are considered assembled for entry purposes, the determination here is that the R-Series products were properly excluded from entry when the “ink container” and “adapter” were contained in the same shipment. Such a

position is consistent with the application by the courts of the “doctrine of entireties.” See United States v. Watches, Watch Parts, Calculators & Misc. Parts, 692 F. Supp. 1317 (S.D. Fla. 1988) (applying the doctrine to uphold a seizure by the Customs Service of various watch parts imported along with watch faces bearing counterfeit trademarks). Significantly, the court found:

If an importer brings into the country, at the same time, certain parts, which are designed to form, when joined or attached together, a complete article of commerce, and when it is further shown that the importer intends to so use them, these parts will be considered for tariff purposes as entireties, even though they may be unattached or inclosed in separate packages, and even though said parts might have a commercial value and be salable separately.

In cases in which imported parts were declared an entirety it was determined either that the combination of the parts resulted in a separate and distinct article, or that the imported article needed all of the parts to function as a whole. See E.M. Stevens Corp. v. United States, 49 Cust. Ct. 203, 204 (1962). E.M. Stevens makes it clear that the doctrine is equally applicable to parts that though contained in the same shipment are packaged separately. See also Standard Brands Paint, Inc. v. United States, 62 C.C.P.A. 72, 511 F.2d 564, 567 (C.C.P.A. 1975) ("the importer is selling, 'using,' and/or 'treating' the imported merchandise as unassembled picture frames, albeit one-half of each frame is sold in a separate package"). In Standard Brands Paint, the pieces were not intended to be assembled until they reached the consumer. In the present case, then, the watch parts, though packaged separately, are essentially parts of a whole and not discrete products. The article needs all of the parts to function as a whole, a conclusion recognized and asserted unequivocally by the claimants.

United States v. Watches, Watch Parts, Calculators & Misc. Parts, 692 F. Supp. at 1320 (emphasis added). Therefore, based on the entire analysis above, the entered “ink container” and “adapter” articles that were contained in the same shipment fall within the scope of the 565 GEO.

Finally, since the R-Series products have been found to infringe the ‘917 patent and fall within the scope of the 565 GEO, this determination does not address Protestant’s remaining non-infringement arguments. The other arguments are not separate claims, but instead represent additional grounds for determining whether the R-Series product should be refused entry and therefore need not be addressed here. See Solomon Technologies, Inc. v. U.S. Int’l Trade Comm’n, 524 F.3d 1310, 1320 (Fed. Cir. 2008) (“If we uphold the Commission’s order, as we do in this case, we are not required to address every possible ground on which the Commission’s order might be sustained.”); see also 565 General Exclusion Order (“Ink cartridges covered by one or more of [the asserted claims of the relevant patents] are excluded from entry...”) (emphasis added).

HOLDING:

The Ninestar R-Series products, consisting of the “ink container” and “adapter,” were properly considered to fall within the scope of the 565 GEO issued by the ITC. Therefore, you are instructed to deny the protest. However, we note that the importation of this shipment of R-Series products occurred after the ITC issued its amended seizure and forfeiture order against Protestant. Accordingly, the R-Series products at issue are amenable to seizure and forfeiture under 19 U.S.C. § 1337(i), as implemented by 19 C.F.R. § 12.39(c).

In accordance with the Protest/Petition Processing Handbook (CIS HB, December 2007), you are to mail this decision, together with the Customs Form 19, to the Protestant no later than 60 days from the date of this letter. Any reliquidation of the entry in accordance with the decision must be accomplished prior to mailing of the decision. Sixty days from the date of the decision, Regulations and Rulings of the Office of International Trade will make the decision available to CBP personnel, and to the public on the CBP Home Page on the World Wide Web at www.cbp.gov, by means of the Freedom of Information Act, and other methods of public distribution.


Sincerely,

Charles R. Steuart, Chief
Intellectual Property Rights Branch