OT:RR:BSTC:IPR H058501 JLG
Simone Simon
Agra Services Brokerage Co., Inc.
221-20 147th Ave.
Jamaica, NY 11413
RE: U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-406; Certain Lens-Fitted Film Packages
Dear Ms. Simon:
This concerns your March 23, 2009, letter submitted on behalf of Elite Brands, Inc. (Elite), to the National Commodity Specialist Division of U.S. Customs and Border Protection (CBP), New York, requesting a classification ruling, pursuant to 19 C.F.R. § 177, regarding a photographic camera preloaded with 35-mm film that Elite intends to import into the United States. Your request also sought a determination whether the above-referenced camera falls within the scope of the general exclusion order issued by the U.S. International Trade Commission (ITC) in Investigation No. 337-TA-406 (“406 GEO”).
A sample of the camera was included with the ruling request. We regret the delay in responding.
FACTS:
ITC Investigation No. 337-TA-406 was instituted on March 25, 1998, based on a complaint filed by Fuji Photo Film Co., Ltd. (Fuji) of Tokyo, Japan. Fuji’s complaint alleged unfair acts in violation of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. §1337, by twenty-seven (27) respondents in the importation and sale of certain lens-fitted film packages (LFFPs) that infringed one or more claims of fifteen (15) patents held by Fuji. On February 24, 1999, the presiding administrative law judge (ALJ) issued his final initial determination, finding a violation of section 337 by reason of infringement of certain Fuji patents. See Certain Lens-Fitted Film Packages, Inv. No. 337-TA-406, USITC Pub. 3219, Final Initial and Recommended Determinations (February 24, 1999) (“ID”).
On review, the Commission affirmed in part the ALJ’s initial determination and found a violation of 19 U.S.C. § 1337. The Commission determined the appropriate form of relief was a general exclusion order which prohibited entry for consumption into the United States of unlicensed LFFPs that infringe claims 1, 5, 6, 9, and 11 of U.S. Letters Patent No. 4,833,495; claims 14 and 15 of U.S. Letters Patent No. 4,855,774; claims 1, 7, 8, and 15 of U.S. Letters Patent No. 4,884,087; claims 1, 19, and 22 of U.S. Letters Patent No. 4,954,857; claims 1 and 9 of U.S. Letters Patent No. 4,972,649; claims 14 and 16 of U.S. Letters Patent No. 5,063,400; claims 1 and 11 of U.S. Letters Patent No. 5,235,364; claim 1 of U.S. Letters Patent No. 5,361,111; claims 1, 15, 23, and 25 of U.S. Letters Patent No. 5,381,200; claims 1 and 7 of U.S. Letters Patent No. 5,408,288; claims 1 and 28 of U.S. Letters Patent No. 5,436,685; claims 1 and 13 of U.S. Letters Patent No. Re. 34,168; the claim of U.S. Letters Patent No. Des. 345,750; the claim of U.S. Letters Patent No. Des. 356,101; and the claim of U.S. Letters Patent No. Des. 372,722. Certain Lens-Fitted Film Packages, Inv. No. 337-TA-406, USITC Pub. 3219, General Exclusion Order at 1-2 (June 2, 1999).
On June 27, 2001, after issuance of the general exclusion order, Fuji filed a complaint with the ITC requesting enforcement and advisory proceedings to determine whether certain entities had violated the 406 GEO. See Certain Lens-Fitted Film Packages, Inv. No. 337-TA-406, Complaint for Enforcement Proceedings under Rule 210.75, a Petition for Modification under Rule 210.76 and/or Request for Advisory Opinion under Rule 210.79. Specifically, the validity of claim 15 of the ‘087 patent was addressed during these proceedings, and on remand, the ITC concluded that the preamble to claim 15 was a limitation.
A number of the patents have expired since this time, thus the remaining patents at issue include:
Claim 1 of U.S. Patent No. 5,361,111;
Claims 1, 15, 23, and 25 of U.S. Patent No. 5,381,200;
Claims 1 and 7 of U.S. Patent No. 5,408,288; and
Claims 1 and 28 of U.S. Patent No. 5,436,685
The camera at issue, referred to as the “Super Snaps” camera in Elite’s advertising, is a plastic handheld box camera that is preloaded with 35-mm film. The camera consists of two sections: the camera shell which contains the photo taking components, and the film cartridge. The front portion of the camera shell is equipped with an integrated flash unit, focus-free taking lens, front viewfinder, and flash circuit board. The back portion of the camera shell contains a rear viewfinder and film advance mechanism incorporating a thumb-wheel, as well as an AA-type battery that has a removable cover. A shutter release button is on the top panel of the camera. Inserted into the camera shell is a removable film cartridge, consisting of a cassette and film supply chamber which house the film cassette and photographic roll, respectively, as well as an exposure aperture. The operation of the unit is such that film is drawn out from the film cassette and wound in a roll around a spool contained in the film supply chamber, and when the shutter release button is pushed, film winds back into the film cassette until all the frames have been exposed.
The back and bottom portion of the camera contains branding, instructions and warnings regarding use of the camera, and language stating that the entire camera should be taken to a photo dealer for processing.
Photographs of the prototype sample camera that was submitted for our analysis are displayed below.
ISSUE:
The issue presented is whether Elite’s “Super Snap” camera infringes any of the relevant patents at issue and therefore falls within the scope of the ITC’s general exclusion order in Investigation No. 337-TA-406, such that they would be excluded from entry for consumption into the United States.
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 ITC 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 ITC 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 (Fed Cir. 2008). A general exclusion order may be issued only 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).”).
As stated above, the 406 GEO issued by the ITC provides, in part, that:
Lens-fitted film packages (“LFFPs”), also known as one-time use cameras, single-use cameras and disposable cameras, covered by one or more of claims 1, 5, 6, 9, and 11 of U.S. Letters Patent No. 4,833,495; claims 14 and 15 of U.S. Letters Patent No. 4,855,774; claims 1, 7, 8, and 15 of U.S. Letters Patent No. 4,884,087; claims 1, 19, and 22 of U.S. Letters Patent No. 4,954,857; claims 1 and 9 of U.S. Letters Patent No. 4,972,649; claims 14 and 16 of U.S. Letters Patent No. 5,063,400; claims 1 and 11 of U.S. Letters Patent No. 5,235,364; claim 1 of U.S. Letters Patent No. 5,361,111; claims 1, 15, 23, and 25 of U.S. Letters Patent No. 5,381,200; claims 1 and 7 of U.S. Letters Patent No. 5,408,288; claims 1 and 28 of U.S. Letters Patent No. 5,436,685; claims 1 and 13 of U.S. Letters Patent No. Re. 34,168; the claim of U.S. Letters Patent No. Des. 345,750; the claim of U.S. Letters Patent No. Des. 356,101; and the claim of U.S. Letters Patent No. Des. 372,722 are excluded from entry for consumption, into the United States for the remaining term of the patents, except under license of the patent owner or as provided by law.
See Certain Lens-Fitted Film Packages, Inv. No. 337-TA-406, USITC
Pub. 3219, General Exclusion Order at 1-2 (June 2, 1999).
The ITC’s 406 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 406 GEO directs CBP to exclude LFFPs, regardless of the manufacturers or importers, which 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), whether or not Elite was named as a respondent to the original investigation is immaterial to the question of whether the sample camera falls within the scope of the 406 GEO. The only pertinent question is whether the camera at issue infringes 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.”).
Significantly, the Federal Circuit 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. v. U.S. Int’l Trade Comm’n, 899 F.2d 1204, 1210 (Fed. Cir. 1990). Accordingly, the burden is on the importer to establish that the single-use camera at issue does not infringe any of the relevant patents.
UTILITY PATENT INFRINGEMENT
Patent infringement determinations for utility patents entail two-steps. The first step is to interpret the meaning and scope of the patent claims asserted to be infringed. The second step is to compare the properly construed claims to the accused device. See Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). The first step is a question of law; the second step is a question of fact. See Freedman Seating Co. v. American Seating Company, 420 F.3d 1350, 1357 (Fed. Cir. 2005). In patent law, there are two types of infringement: direct and indirect infringement. Direct infringement includes two varieties: literal infringement and infringement under the doctrine of equivalents. Literal infringement is when every limitation recited in a claim is found in the accused device. See Strattec Security Corp. v. General Automotive Specialty Co., 126 F.3d 1411, 1418 (Fed. Cir. 1997).
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 Federal Circuit applies two articulations of the test for equivalence – the insubstantial differences test and the function-way-result test. 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…”) (quoting Warner-Jenkinson, 520 U.S. at 40).
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, 733-34 (2002) (“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. . . . [Thus,] 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 406 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) (“It is well-settled that, in interpreting an asserted claim, the court should look first to the intrinsic evidence of the record . . . first, we look to the words of the claims themselves . . . to define the scope of the patented invention.”).
Furthermore, the Federal Circuit 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 Federal Circuit 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.”).
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 Federal Circuit 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 Federal Circuit has provided the framework outlined above for construing utility patent claims. With this framework established, the analysis turns to the matter at hand.
As stated previously, the remaining patents at issue include:
Claim 1 of U.S. Patent No. 5,361,111;
Claims 1, 15, 23, and 25 of U.S. Patent No. 5,381,200;
Claims 1 and 7 of U.S. Patent No. 5,408,288; and
Claims 1 and 28 of U.S. Patent No. 5,436,685
The first step in making a utility patent infringement determination, that of interpreting the claims, has been completed for certain claim limitations by the ALJ and by the Commission on review. Thus, the second step in the infringement analysis, which involves a question of fact, requires CBP to compare the properly construed claims to the allegedly infringing device. See Playtex Prods., Inc. v. Procter & Gamble Co., 400 F.3d 901, 905-906 (Fed. Cir. 2005) (citing Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc)). As previously noted, for infringement to be found the court must determine that every claim limitation is found in the accused device. Id. at 906 (citing Deering Precision Instruments, LLC v. Vector Distribution Systems, Inc., 347 F.3d 1314, 1324 (Fed. Cir. 2003)).
Claim Construction and Infringement of Utility Patents
The starting point in the analysis is the preamble to the claims. The Federal Circuit has long eschewed the use of an absolute rule or test in determining whether a preamble is a limitation. Bell Communications Research Inc. v. Vitalink Communications Corp., 55 F.3d 615, 621 (Fed. Cir. 1995). Rather, the effect preamble language should be given can be resolved only on review of the entirety of the patent as described in the specification and illuminated in the prosecution history to gain an understanding of what the inventors actually invented and intended to encompass by the claim. Corning Glass Works v. Sumitomo Electric U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989); Allen Engineering Corp. v. Bartell Industries, Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002).
In general, a preamble to a claim is construed as a limitation if it gives life, meaning, and vitality to the claim. See Symantec Corp. v. Computer Associates International, Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008) (quoting Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)); Schram Glass Manufacturing Co. v. Homer Brooke Co., 249 F. 228, 232-33, cert denied, 247 U.S. 520 (1918). “[P]reamble language limits a claim if it recites not merely a context in which the invention may be used, but the essence of the invention without which performance of the recited steps is nothing but an academic exercise.” Boehringer Ingelheim Vetmedica v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed Cir. 2003). A preamble is not limiting, however, “when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention.” Am. Med. Sys. v. Biolitec, Inc., 618 F.3d 1354, 1358-1359 (Fed. Cir. 2010) (citing Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801,808 (Fed. Cir. 2002)). The preamble is not a limitation if it merely states the intended use or purpose of an invention. Symantec Corp., 522 F.3d at 1288.
The term “lens-fitted film package,” which is found in the preamble of every claim in issue, was not in dispute in the original investigation nor was it construed in the Commission Opinion or the ALJ's ID. In its Opinion, the Commission stated the following:
The products at issue in this investigation are inexpensive, disposable, single use cameras, technically referred to as “lens-fitted film packages” or “LFFPs.” LFFPs are generally constructed of a shell made of a plastic material such as polystyrene. They are equipped with a button-activated shutter, a lens, a viewfinder, a film advance mechanism, and optional flash units and buttons. An outer cardboard cover, containing printed information such as branding and instructions, encases the shell. LFFPs are preloaded with film and a film cartridge. When pictures are taken, the exposed film winds into the film cartridge. After taking pictures, a typical consumer brings the entire LFFP to a film processor to have the film developed and receives back only negatives and prints, not the LFFP shell and its contents.
Certain Lens-Fitted Film Packages, Inv. No. 337-TA-406, USITC Pub. 3219, Commission Opinion at 2 (June 2, 1999); see also Certain Lens-Fitted Film Packages, Inv. No. 337-TA-406, USITC Pub. 3219, Final Initial and Recommended Determinations, Additional Findings, 214 (February 24, 1999).
The parties in the Consolidated Enforcement and Advisory Opinion Proceedings, however, disputed the meaning of the preamble term “lens-fitted film package,” arguing whether an LFFP was limited to preloaded cameras that cannot be reloaded with film after their initial use. Relying upon his findings in the ID and intrinsic evidence, the ALJ found that “having the capability of being reloaded with film does not mean that a camera is not an LFFP.” Certain Lens-Fitted Film Packages, Inv. No. 337-TA-406, Consolidated Enforcement and Advisory Opinion Proceedings, Enforcement Initial and Recommended Determination at 20-21 (August 27, 2002) (emphasis added). The ALJ determined that an LFFP is “a relatively inexpensive, disposable camera which is preloaded with film and a film cartridge so that after use, all of the film has been advanced into the film cartridge.” Enforcement Initial Determination at 19, 42.
Further, the ALJ noted that in certain proceedings in the ITC’s investigation, the ALJ and the Federal Circuit determined that the preamble to claim 15 of the ‘087 patent provided “positive limitations to . . . [the] claim . . . [and that] without the preamble, claim 15 of the ‘087 patent could describe merely a camera involving, a film cartridge, a film cassette, a film spooling device, or film testing machinery.” Certain Lens-Fitted Film Packages, Inv. No. 337-TA-406, Consolidated Enforcement and Advisory Opinion Proceedings (Remand), Final Initial Determination (September 9, 2005). Moreover, the Federal Circuit found that the ‘087 patent was “directed to the [structure] of an entire LFFP.” Jazz Photo Corp. v. International Trade Commission, 264 F.3d 1094, 1100 (2001).
In the remanded consolidated proceedings to determine the validity of claim 15 of the ‘087 patent, the ITC affirmed the ALJ’s claim construction concluding that the preamble to claim 15 of the ‘087 patent was a limitation. In its post hearing brief, the ITC’s Office of Unfair Import Investigations (OUII) Investigative Attorney maintained that it is only by the preamble that one knows that the subject matter defined by the ‘087 claims is a camera. See Certain Lens-Fitted Film Packages, Inv. No. 337-TA-406, Consolidated Enforcement and Advisory Opinion Proceedings (Remand), Posthearing Brief of the Commission Investigative Staff, 7 (July 19, 2005) (noting that the expert proffered by Fuji, Alfred H. Bellows, testified that the term “LFFP” in the preamble provides structural limitations to the claim such as a lens, shutter, and advance mechanism necessary for the invention to work, and that without the preamble, claim 15 of the ‘087 patent could describe a camera, a film cartridge, a film cassette, a film spooling device, or film testing machinery).
Following Federal Circuit precedent, the Investigative Attorney considered the specification of the ‘087 patent, the language of various priority applications of the ‘087 patent, and the divisional patent application that led to U.S. Patent No. 4,954,857, which shares the same specification as the ‘087 patent, and determined that the preamble of claim 15 of the ‘087 patent provides the essence of the invention and hence should be given meaning in claim 15. Accordingly, the specification, the entire prosecution history (including the priority applications and follow-on applications), and the prior art cited therein demonstrate that the patent applicants invented and intended to claim a lens-fitted photographic film package, such that the term serves as a separate claim limitation. Id. at 8.
Therefore, the ALJ found “that the preamble of claim 15 is necessary to give meaning to claim 15 and is a limitation . . . .” Id. at 11. The term “lens-fitted film package” is found in all of the claims at issue in this request. In the initial EID, the ALJ determined that a “lens-fitted film package” is not limited to a single-use non-reloadable camera.
In light of the various findings in the record detailed above, including the ALJ’s review that the capacity of a camera to be reloaded with film does not prevent finding the camera in question to be an LFFP and the ALJ’s characterization of the features of an LFFP, we determine the sample “Super Snaps” camera at issue is properly construed to be an LFFP. Moreover, we note that the sample camera has a construction similar to the embodiment claimed by the patents at issue and is also similar in general appearance to the cameras found to infringe at the ITC. Accordingly, we next consider whether the sample camera is covered by any of the patents at issue in the 406 GEO.
United States Patent No. 5,361,111
United States Patent No. 5,361,111 (“‘111 patent”) entitled “Lens-Fitted Photographic Film Unit Means Preventing Unintended Actuation of Pushbuttons,” issued on November 1, 1994. The ‘111 patent has 11 claims. Only claim 1, an independent claim, was found to be infringed and identified in the 406 GEO. The abstract of the ‘111 patent reads:
A lens-fitted photographic film unit has a pushbutton such as a flash button or a shutter release button. The pushbutton is formed integrally with a front wall of the film unit but partially separated therefrom by a slit. The pushbutton is surrounded by a ridge-shaped barrier which prevents it from being accidentally depressed by neighboring articles. The barrier projects outwardly from the front wall. (emphasis added).
Claim 1 contains two limitations. It recites:
1. A lens-fitted photographic film unit containing a photographic film and being adapted to take photographs, comprising:
at least one plastic pushbutton formed integrally with a wall of said film unit, only a portion of said pushbutton being separated from said wall by a slit which surrounds most but not all of said pushbutton, said pushbutton being connected to said film unit by an integral bridge, said pushbutton being adapted to be depressed inwardly of the wall from an initial position and to move back outwardly to said initial position when released; and
a barrier formed on an outer surface of said wall surrounding said pushbutton only partially, said barrier projecting outwardly relative to an actuating surface of said pushbutton is in said initial position, said barrier terminating in two ends disposed on opposite sides of said bridge.
U.S. Patent No. 5,361,111 col. 4 l.23 (emphasis added).
The ‘111 patent covers features that prevent inadvertent actuation of the shutter trip button or the flash charging button.” ID at 69. The elements of this claim include at least one pushbutton in the form of a flash button or a shutter release button, either of which is formed as a portion of the camera’s outside wall, and where the pushbutton is partially surrounded by a barrier to protect the button from unintended pressing. Specifically, the first limitation of claim 1 requires the pushbutton to be an indivisible part of the film unit wall, separated only by a slit that surrounds the majority of the pushbutton and connected to the film unit wall by an integral bridge. The second limitation requires a barrier that partially surrounds the pushbutton of the film unit wall.
Below are drawings of the ’111 patent, with certain parts labeled according to the patent specification, as well as photographs of the sample camera under consideration.
The parties in the initial ITC investigation did not seek to construe any of the elements from claim 1 of the ‘111 patent. The nature of the elements from claim 1, however, were addressed by the ALJ while determining whether certain cameras infringed the ‘111 patent. Relying upon the testimony of the Complainant’s expert, Alfred Bellows, the ALJ concluded that a distinct elevated barrier need not be present to satisfy the second limitation of claim 1. Specifically, the ALJ found:
Bellows testified that each of the Types 1 thru 4 sample single-use cameras that had flash units were examined and found to have a flash-charging button with all of the claimed features; that those buttons were molded into the front face of the front cover section where the distinct features claimed would be readily molded with simple injection mold-opening motions; that all of the units, flash or not, were found to have a shutter trip button that fit the claimed features except that a distinct elevated barrier was not present in every case; that the shutter trip button is located on the top of the front cover section where it is more difficult to mold complicated shapes without added mold tooling cost; and that thus the barrier feature was present more subtly in the form of the button being recessed below the surrounding flat plastic.
ID at 69-70. As such, the ALJ found infringement of certain cameras.
Upon visual inspection of the sample camera, it is evident that the shutter release pushbutton is an integral portion of the film unit’s outside wall. Further, the pushbutton is connected to the camera by an integral bridge, and it is separated from the camera wall by a slit, which surrounds the majority of the pushbutton. Lastly, as shown in the image above, the shutter release button is recessed below the surrounding flat plastic such that a subtle barrier is formed which surrounds the button and ends on opposite sides of the bridge. In light of the claim language and the factual findings of the ALJ, it is determined that the camera at issue exhibits a barrier, and therefore infringes the ‘111 patent.
HOLDING:
In conformity with the analysis above, the sample “Super Snaps” camera under consideration satisfies each limitation of claim 1 of the ‘111 patent and thus falls within the scope of the ITC’s general exclusion order in Investigation No. 337-TA-406. Therefore, the sample camera may not be entered for consumption into the United States.
Sincerely,
Charles R. Steuart, Chief
Intellectual Property Branch