OT:RR:BSTC:IPR H034793 DAX
Port Director
U.S. Customs and Border Protection
301 East Ocean Blvd.
Suite 1400
Long Beach, CA 90802
RE: Protest 2704-09-102186; 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 [ ] (“Protestant”) with respect to the exclusion from entry of certain ink cartridges compatible with Epson-brand printers that were manufactured by [XXXXXXXX] and determined by the port to fall within the scope of the above-referenced general exclusion order issued by the U.S. International Trade Commission (“ITC”).
FACTS:
On May 14, 2008, U.S. Customs and Border Protection (“CBP”) issued a notice to Protestant indicating that a shipment of [ ] ink cartridges was deemed excluded from entry for consumption because the ink cartridges in question were covered by the general exclusion order issued by the ITC in Inv. No. 337-TA-565 (“565 GEO”). See Protest at 1; see also CBP Exclusion Notice, Date of Denial of Entry: April 26, 2008. Pursuant to 19 U.S.C. § 1514(c), as implemented by 19 C.F.R § 174, on July 16, 2008, Protestant
timely filed a valid protest challenging the exclusion from entry and determination that the [ ] ink cartridges fell within the scope of the 565 GEO. Specifically, the Protestant denies that the [ ] ink cartridges infringe any of the patents at issue during the investigation at, and found to be infringed by, the ITC.
As Protestant states, 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 (“Complainant”), which named a number of parties as Respondents to the investigation. See Protest at 2; see also Administrative Law Judge’s (“ALJ”) Final Initial and Recommended Determination at 1-7 (June 1, 2007). Neither Protestant nor [XXXXXXXX] or any of its affiliates were named as Respondents in the investigation.
The ALJ found a violation of section 337 of the Tariff Act of 1930, as amended, which was affirmed in part by the full Commission on review. See Commission Opinion at 1 (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 (October 19, 2007).
As stated above, neither Protestant nor [XXXXXXXX] or any of its affiliates were named as Respondents to the investigation. Therefore, the [ ] ink cartridges were neither at issue during the investigation nor analyzed by the ITC. Protestant describes the [ ] ink cartridge as “a two-part design, consisting of a permanent, reusable mounting adapter and a separate replaceable ink container.” See Protest at 4. The reusable adapter of an [ ] ink cartridge has a permanent integrated circuit chip mounted on the adapter with a row of electrical contacts. Id. at 5. The chip provides information through an electrical contact to the printer based on certain assumptions programmed into the chip. Id. at 6.
The [ ] ink cartridges are depicted in the images below. Notably, the [ ] ink cartridges excluded from entry by the port indicate on their product packaging (and on the individual ink containers) that they are suitable for use with the following models of the Epson Stylus printer: CX5000, CX6000,
CX7000F, CX7400, CX8400 and the CX9400. Furthermore, each product package includes ten replacement ink containers, each of which is accompanied by its own mounting adapter that is necessary for the container to function as an ink cartridge.
[
]
ISSUE:
The issue presented is whether the [ ] ink cartridge infringes any of the relevant patents at issue and therefore 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). 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/or a general exclusion order. See Fuji Photo Film Co., Ltd. v. U.S. Int’l Trade Comm’n, 474 F.3d 1281, 1286 (Fed. Cir. 2007).
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 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).”).
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 GEO directs CBP to exclude ink cartridges, regardless of their manufacturer or importer, that infringe the patents included above. Accordingly, since the ITC issued a general exclusion order based on the additional findings required by 19 U.S.C. § 1337(d)(2), the fact that Protestant and/or [XXXXXXXXXX] were not named as Respondents is immaterial to the question of whether the accused ink cartridges fall within the scope of the 565 GEO. The only pertinent question is whether the [ ] ink cartridges infringe any of the relevant patents. See Sealed Air Corp. v. U.S. Int’l Trade Comm’n, 645 F.2d 976, 985 (C.C.P.A. 1981) (“An exclusion order operates against goods, not parties.“); see also Vastfame Camera, Ltd. v. U.S. Int’l Trade Comm’n, 386 F.3d 1108, 1114 (Fed. Cir. 2004) (“A general exclusion order broadly prohibits entry of articles that infringe the relevant claims of a listed patent 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.”).
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.”).
Furthermore, the Court of Appeal for the Federal Circuit (“CAFC”) has made clear that claim terms are given their ordinary and customary meaning, which refers specifically to the ordinary and customary meaning that the claim term would have to a person of ordinary skill in the art at the time of the invention. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). The inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation. See Innova, 381 F.3d at 1116. That starting point is based on the well-settled understanding that inventors are typically persons skilled in the field of the invention and that patents are addressed to and intended to be read by others of skill in the pertinent art. See Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1119 (Fed. Cir. 2002).
The person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification. See Phillips, 415 F.3d at 1313. Often, this requires an examination of terms that have a particular meaning in a field of art. Id. Since the meaning of a claim term, as understood by persons of skill in the art, is often not immediately apparent, and since patentees frequently act as their own lexicographers, a court or administrative body responsible for making patent infringement determinations should look to sources available to the public that show what a person of skill in the art would have understood a disputed claim term to mean. Id. These sources include, for example, the words of the claims themselves, the remainder of the specification and the prosecution history, along with certain extrinsic evidence in appropriate circumstances. Id.
Importantly, as stated by the CAFC in Vitronics and reaffirmed in Phillips, claims must be read in light of the specification, of which they are a part, since the specification “is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Philips, 415 F.3d at 1315 (citing Vitronics, 90 F.3d at 1582) (emphasis added); 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.”).
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 [ ] ink cartridges 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).
Significantly, 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 (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.
Lever and Chip Patent
The lever and chip patent refers to United States Patent No. 6,955,422 (the ‘422 patent), which issued on October 18, 2005. See ALJ Final Initial and Recommended Determination (“ALJ ID”) at 130. The abstract of the ‘422 patent reads:
An ink cartridge having a container for storing ink therein and having an ink supply port formed at a leading end side in an insertion direction of the container, a memory device disposed on a first of two opposite surfaces parallel to the insertion direction of the container, the memory device having an electrode for electrical connection to the recording device; a retaining member disposed on the first surface and located at a trailing end side relative to the memory device in the insertion direction, the retaining member serving to selectively engage with the recording device; and another retaining member disposed on the second surface and which also serves to selectively engage with the recording device.
The ‘422 patent has 62 claims. Only claims 1, 10, and 14, all of which are independent claims, were asserted and found to be infringed at the ITC. Infringed claim 14 contains four limitations and reads as follows:
14. An ink cartridge comprising:
a container body having a first wall;
at least one electrode connected to main circuit components of a memory device, the at least one electrode being fixed relative to the first wall; and
a movable engagement portion, which is engageable with the engagement portion of a carriage, the cartridge's engagement portion being movable relative to the first wall and being higher in a Y-axis direction than the at least one electrode,
wherein the at least one electrode contacts the at least one electrode of the carriage when the engagement portion of the ink cartridge is engaged with the engagement portion of the carriage.
The ALJ construed each of the claim 14 elements underlined above that were put in issue by the parties (i.e., the ITC Complainant, Respondents, and/or the Office of Unfair Import Investigations Staff Attorney). As for the first claim limitation, the ALJ found, based on the language of the claims and the specification, that the claimed “container” stores the ink of the ink cartridge. See ALJ ID at 134. Additionally, as seen above, in the case of claim 14, the container body that stores the ink is also required to have a first wall.
As for the second claim limitation, the ALJ provided a construction of the claim element requiring “at least one electrode being fixed relative to” the first wall after analyzing the arguments of the parties. The Respondents at the ITC argued that the claimed phrase “requires that the electrodes [be] mounted on one of the surfaces of the container parallel to the insertion direction.” Id. at 135 (emphasis added). Complainants countered that the actual language of the claims requires only that the electrode be fixed relative to the first wall of the container. Id. The issue was whether the claim required the “at least one electrode” to be affixed directly to the first wall of the container in order to fall within the scope of claim 14. Based on a reading of the specification and the claims, the ALJ found that the plain language of the claim to one skilled in the art did not require the “at least one electrode” to be fixed directly to a surface of the container. Id. at 136. Instead, the ALJ found that the claim language only requires that the electrode be fixed relative to a surface of the container.
Based on the above interpretation, the ALJ found that both representative cartridge 7 (“RC-7”) and representative cartridge 8 (“RC-8”) infringed the ‘422 patent. See ALJ ID at 233-34, 236; see also Commission Opinion at 36 for depictions of the representative cartridges found in CPX-81 and CPX-103 (as shown below).
In reaching an infringement determination regarding RC-8, the ALJ addressed the issue involving the claim element requiring the container to have a first wall and whether this first wall was on the inner insert of the two-piece RC-8 or somewhere else. During the investigation, RC-8 was described as a “two-piece structure…in which the pieces (an outer shell and an inner insert) snap together solidly to form a unitary cartridge when assembled and used.” ALJ ID at 220 (citing Complainant’s Post-hearing Brief at 139). In the images below of RC-8, the depiction on the left is taken from the Commission Opinion, as shown above. The depiction on the right is the same image with the inner insert represented by the sections in white and the outer shell represented by the sections in gray.
Furthermore, the digital image below depicts the two-piece structure when the outer shell and the inner insert are disengaged.
Additionally, Complainant’s expert provided the following description of the RC-8 during the investigation hearing:
THE WITNESS:
A: I was making the point that the cartridge [RC-8] can be disassembled into two components, an internal component and an outside component. But to function as an ink cartridge, it needs to be assembled. So what I did was just snap the internal section into the outer wall to complete the cartridge.
***
BY MR. ANDERSON:
Q: Dr. Murch, we have looked at representative cartridge 8 with respect to other claims. This is one of the two-piece structures; is that right?
A: That's correct.
Q: And do you have representative cartridge 8 with you?
A: I did.
Q: Again, if you could just show the Court the two pieces and then show again how they fit together.
A: We looked at this cartridge before. It contains an outer shell, as I described it. The electrode is actually on the outer shell. And the portion containing the ink and the engagement lever fits into the cartridge and snaps into place to form the complete cartridge.
Murch, Hearing Transcript at 684:22-685:3, 1071:6-23 (emphasis added).
Accordingly, for clarification purposes, the following depiction of RC-8 is provided with the various parts labeled according to the ALJ’s findings and the ‘422 patent’s specification.
As found several times throughout the “read on” portion of the infringement analysis, the ALJ determined that “the ink ‘container’ in RC-8 is the inner insert and therefore, the ‘first wall’ of the container is also on the inner insert.” Id. at 234. As stated above, the ALJ then concluded that RC-8 infringed claim 14 of the ‘422 patent, which was not subsequently reviewed and therefore became the determination of the Commission See Notice of Commission Decision to Review Portions of a Final ID (July 2, 2007); see also 19 CFR 210.42(h)(2) (“An initial determination under § 210.42(a)(1)(i) shall become the determination of the Commission 60 days after the date of service of the initial determination, unless the Commission within 60 days after the date of such service shall have ordered review of the initial determination or certain issues therein or by order has changed the effective date of the initial determination.”).
The next step here is to extrapolate the ALJ’s claim interpretation and “read on” analysis from above and use it to determine whether the [ ] Ink cartridges satisfy the first and second limitations of claim 14 in the ‘422 patent. As with RC-8, the [ ] is a two-piece structure in which the pieces snap together solidly to form a unitary cartridge when assembled and used. Also, as shown in the images below, the [ ] ink cartridge has a container body that contains the ink and this container body has a first wall (depicted below on the left). Furthermore, the [ ] ink cartridge has at least one electrode connected to the main circuit components of a memory device (i.e., the electrodes of the chip on the permanent adapter) and that at least one electrode is fixed relative to the first wall of the container (depicted below on the right). Therefore, the first and second limitations read onto the [ ] ink cartridge.
Protestant contends that the [ ] ink cartridge does not meet the second limitation. See Protest at 10-12. Specifically, Protestant argues that the electrodes of the [ ] ink cartridge chip are fixed relative to the permanent adapter and therefore they are not fixed relative to the replaceable ink container. Id. at 12. However, this argument misapplies the ALJ’s express construction of the limitation “fixed relative to the first wall” found in claim 14. The ALJ found that the plain language of claim 14 did not require the electrode to be fixed directly to the container’s surface. Instead, the ALJ found that the claim language only requires that the electrode be fixed relative to the first wall of the container.
Furthermore, the ALJ, in the context of reading a similar limitation from claim 1 of the ‘422 patent onto RC-8, dismissed the arguments of the Respondents that the electrode is not fixed relative to the first wall of the container because of movement and play between that first wall and the outer shell. See ALJ ID at 224. The ALJ found, based on a physical inspection of the accused product, that where “there is very little movement between the outer and inner insert[,] the memory device affixed to the outer shell is ‘fixed relative to the first surface of the container,’ and therefore, representative cartridge 8 satisfies the second limitation of claim 1 of the ‘422 patent.” Id. at 224-25. Upon physical inspection of the [ ] ink cartridges, it is apparent that there is very little movement or play between the first wall of the container and the electrode affixed on the permanent adapter.
This analysis is further supported by the ALJ’s additional infringement findings involving RC-8. As stated above, RC-8 consists of a two-piece structure in which the pieces (an outer shell and an inner insert) snap together solidly to form a unitary cartridge when assembled and used. The ALJ found that the first wall was not the outer shell (where the electrode on RC-8’s chip was directly attached), but instead was on the inner insert. See ALJ ID at 234; see also Murch, Hearing Transcript, at 1071:6-23 (“The electrode is actually on the outer shell.”). Yet, despite the lack of direct contact, the ALJ still determined that, based on a proper claim interpretation, the electrode was fixed relative to the first wall of RC-8 and therefore infringed claim 14 of the ‘422 patent. The same analysis applies to the two-piece [ ] ink cartridge to find that this claim limitation is met. Accordingly, the accused [ ] ink cartridge meets the first and the second claim limitations of the ‘422 patent.
The next step is to determine whether the accused products meet the third limitation of the ‘422 patent. The third limitation requires “a moveable engagement portion, which is engageable with the engagement portion of a carriage, the cartridge’s engagement portion being movable relative to the first wall and being higher in a Y-axis direction than the at least one electrode.” Protestant contends that the [ ] ink cartridge does not meet this limitation because the electrode in this embodiment is mounted on and integral with the moveable engagement portion, which extends down to the very bottom of the adapter. See Protest at 12. Therefore, according to Protestant, the electrode is above the bottom of the adapter and does not satisfy the requirement in claim 14 that the engagement portion be “higher in a Y-axis direction than the at least one electrode.” Id. However, Protestant’s interpretation has incorrectly construed the term “engagement portion” of claim 14.
As an initial matter, the ALJ did not construe the term “moveable engagement portion” for purposes of claim 14 because it was not one of the claim elements put in issue by the parties to the investigation for this particular claim. Accordingly, since no construction was provided, the first step is to construe this term correctly using the proper tools. As stated above, the inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation. See Innova, 381 F.3d at 1116. Since the meaning of a claim term, as understood
by persons of skill in the art, is often not immediately apparent, a proper analysis should look to sources available to the public that show what a person of skill in the art would have understood a disputed claim term to mean. See Phillips, 415 F.3d at 1313. These sources include the words of the claims themselves, the remainder of the specification and the prosecution history. Id.
As emphasized above, the CAFC has reiterated that 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) (emphasis added); 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.”).
Protestant has not made any reference to the patent’s specification to support its proposed claim construction of the claim term “moveable engagement portion” in claim 14. However, the specification describes the invention of the ‘422 patent as having the following arrangement:
An ink cartridge comprising: a container body having a first wall; at least one electrode connected to a memory device, the at least one electrode being fixed relative to the wall; and an engagement portion movable relative to the wall and being higher in a Y-axis direction than the at least one electrode.
By way of not-limiting example, as shown in FIG. 2c, a movable engagement protrusion 5a is higher in a Y-axis direction than the electrodes 7a. In this embodiment shown in FIGS. 2A to 2C, the movable engagement portion is in the form of the protrusion 5a which is formed on the retaining member 5 in the form of a pivotable lever and which is to be engaged with the recess 107 of the carriage 100, but the present invention should not be restricted thereto or thereby.
‘422 patent, col. 10, ll. 19-26 (emphasis added).
According to the specification, and as shown in Figs. 2A, 2B, and 2C, the “moveable engagement portion” is defined as the protrusion 5a which is formed on the retaining member 5. In other words, the ‘422 patent specification makes clear that the “moveable engagement portion” of claim 14 is a projection that is formed on the upper portion of the retaining member. Furthermore, Fig. 2B in particular (as shown below on the left and enlarged on the right) shows that the moveable engagement portion represented by protrusion 5a consists of a small protuberance on the retaining member 5. Lastly, Fig. 2C (shown above) also clearly shows that protrusion 5a on retaining member 5 is higher in a Y-axis direction than the electrode 7a.
Additionally, this analysis is consistent with the ALJ’s findings regarding a similar limitation found in claim 1 of the ‘422 patent. See ALJ ID at 226 (“Murch [Complainant’s expert] identified…that the ‘retaining member’ is the lever above the electrode and extending away from the first surface. Murch further identified…that the ‘moveable engagement portion’ is the protrusion on the retaining member as identified in CDX-1-317. The active respondents do not dispute Murch’s identification of the ‘retaining member’ or the ‘moveable engagement portion.’ From this testimony and a visual inspection of representative cartridge 8, the administrative law judge finds that the ‘retaining member’ is attached to the inner insert (first surface) and extends outward above the electrode. The administrative law judge further finds that the protrusion on the retaining member, as identified in CDX-1-317, is the ‘moveable engagement portion’ which upon visual inspection by the administrative law judge can shift position relative to the first surface of the container as it is moveable toward the ink container.”) (emphasis added) (internal citations omitted). Moreover, the CAFC has held that since claim terms are normally used consistently throughout a patent, the usage of a term in one claim can often illuminate the meaning of the same term in other claims. See Phillips, 415 F.3d at 1314; see also Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001) (“[A] claim term should be construed consistently with its appearance in other places in the same claim or in other claims of the same patent.”). Accordingly, the above analysis serves as additional evidence of the proper construction of the “moveable engagement portion” limitation of claim 14.
The next step is to read this proper construction of the claim limitation onto the [ ] ink cartridges. Upon visual examination, it is clear that the [ ] ink cartridges exhibit a movable engagement portion on the retaining member as defined and claimed by the ‘422 patent. The [ ] ink cartridges have a projection on the retaining member that, when engaged, is moveable toward the ink container’s first wall and therefore satisfies this claim limitation (as shown below). Furthermore, this projection is higher in a Y-axis direction than the electrode on the ink cartridge’s chip. Accordingly, the accused [ ] ink cartridge meets the third claim limitation of the ‘422 patent.
Lastly, Protestant has not challenged that the [ ] ink cartridge meets the fourth and final limitation of claim 14 in the ‘422 patent. Using the plain meaning to one skilled in the art, the fourth limitation requires that the at least one electrode of the cartridge contact the at least one electrode of the carriage (on the printer) when the engagement portion of the ink cartridge is engaged with the engagement portion of the carriage. Protestant’s description of the function of the accused products in the context of the contact/chip patents establishes that the [ ] ink cartridges satisfy this final claim limitation. See Protest at 18 (“The [ ] ink cartridges…have only a single row of contacts that are capable of allowing electrical communication between the chip and the printer….[T]he electrical contacts connecting the chip to the ink jet printer are in a single row toward the bottom of the adapter. All communication to or from the circuit board occurs through the single row of electrical conductors on the bottom.”).
Based on the above description, it is clear that the electrode of the cartridge contacts the electrode of the carriage on the printer to exchange information when the cartridge and the printer are engaged. Accordingly, the accused [ ] ink cartridge meets the fourth claim limitation of the ‘422 patent.
Therefore, Protestant has not meet its burden, as a condition of entry for consumption, to establish noninfringement because the [ ] ink cartridges meet all of the limitations of claim 14 and therefore fall within the scope of the 565 GEO. Accordingly, the infringing [ ] ink cartridges were properly excluded from entry for consumption and the importer’s protest is denied.
Since the [ ] ink cartridges have been found to infringe the ‘422 patent (and therefore fall within the scope of the 565 GEO) and are the only accused products whose exclusion is being protested, this decision does not address the remainder of Protestant’s noninfringment arguments. The [ ] ink cartridges have been found to infringe and therefore were properly excluded from entry. The other arguments are not separate claims, but instead represent additional grounds for determining whether the [ ] ink cartridges should be refused entry and therefore do not need to be addressed since it has already been determined that the articles were properly excluded. 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 (October 19, 2007) (“Ink cartridges covered by one or more of [the asserted claims of the relevant patents] are excluded from entry...”) (emphasis added).
HOLDING:
The accused [ ] ink cartridges were properly excluded from entry for consumption because they fall within the scope of the 565 GEO issued by the ITC.
You are instructed to deny the protest.
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 D. Ressin
Acting Director
Border Security and Trade Compliance Division