• HQ H258492
• Nov 04, 2014

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

OT:RR:BSTC:IPR H258492 AMM

Christian Samay
Frommer Lawrence & Haug, LLP
745 5th Avenue
New York, NY 10151

RE: Ruling Request; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-861/867; Certain Cases for Portable Electronic Devices

Dear Mr. Samay:

This is in reply to your letter dated October 20, 2014, on behalf of Speculative Product Design, LLP (“Speck”), in which you requested a ruling, pursuant to 19 C.F.R. §177.1(a), as to whether the “Symmetry” electronic device cases manufactured and imported by Otter Products, LLC (“Otterbox”), not accused and not at issue before the U.S. International Trade Commission (“ITC” or “Commission”) in the above referenced general exclusion order (“GEO”), are subject to exclusion from entry for consumption into the United States. CBP has taken into consideration your submission, as well as the publicly available documents related to Otterbox’s Request for Advisory Opinion, filed with the ITC on September 4, 2014, and the publicly available documents related to the case of Otter Products, LLC v. United States International Trade Commission, Court No. 14-1840 (Fed. Cir., filed Sep. 16, 2014), filed with the U.S. Court of Appeals for the Federal Circuit (“CAFC”).

FACTS:

The Commission instituted investigation 337-TA-861 on November 16, 2012, based on a complaint filed by Speck. See 77 Fed. Reg. 68828 (Nov. 16, 2012). Speck alleged violations of section 337 of the Tariff Act of 1930 (19 U.S.C. §1337) by reason of infringement of various claims of U.S. Patent No. 8,204,561 (“the ‘561 patent”). The Commission instituted investigation 337-TA-867 on January 31, 2013, based on a complaint filed by Speck. See 78 Fed. Reg. 6834 (Jan. 31, 2013). The complaint alleged violations of section 337 of the Tariff Act of 1930 (19 U.S.C. §1337) by reason of infringement of various claims of the ‘561 patent. The investigations were consolidated on January 31, 2013. Id.

The Commission’s notices of investigation named numerous respondents, and during the course of the investigation several of the respondents were found to be in default, or were terminated due to consent orders, or were terminated due to settlement agreements, or were terminated based on an amendment to the complaint and notice of investigation, or were the subject of withdrawn allegations, or were terminated based on a finding that they had committed no acts in violation of 19 U.S.C. §1337. Eventually, the only parties remaining active in this investigation were Speck and the Investigative Attorney (“IA”). Otterbox was not a Respondent in the original investigation.

On February 21, 2014, the Administrative Law Judge (“ALJ”) issued his final initial determination (“ID”), finding that the asserted patent was infringed by the accused portable electronic device cases. See ID at 35 (February 21, 2014). On April 8, 2014, the Commission determined not to review the ID. See 79 Fed. Reg. 20228-30 (April 11, 2014). On June 20, 2014 the ITC issued the GEO, directing that “cases for portable electronic devices covered by one or more of claims 4, 5, 9, and 11 of the ‘561 patent are excluded from entry into the United States for consumption, for the remaining term of the patent, except under license of the patent owner or as provided by law.” Claims 1, 4, 5, 8, 9, and 11 of the ‘561 patent read as follows:

1. A one-piece case for enclosing a personal electronic device comprising: a flexible inner layer co-molded with an exterior hard layer and permanently affixed together to form a co-molded one-piece assembly; wherein the co-molded one-piece assembly is sufficiently flexible to accept insertion of the personal electronic device and sufficiently rigid to securely retain the inserted personal electronic device, wherein: the flexible inner layer includes a bottom surface, side surfaces joined to the bottom surface and extending upward therefrom, and a fitted cavity configured to accept and retain the inserted personal electronic device such that the bottom surface covers at least a portion of a bottom surface of the inserted personal electronic device and the side surfaces cover at least a portion of a side surface of the inserted personal electronic device; the exterior hard layer includes a bottom surface and side surfaces sized and shaped to substantially cover an exterior of the bottom and side surfaces of the flexible inner layer and a cut away portion that is permanently filled with a portion of the co-molded flexible inner layer.

4. The one-piece case of claim 1, wherein the side surfaces of the exterior hard layer form a corner joint and the co-molded flexible inner layer fills in the cut-away portion located at the corner joint contributing to the overall flexibility of the one-piece case.

5. The one-piece case of claim 1, wherein the flexible inner layer that fills in the cut-away portion creates a stretch-zone that is sufficiently flexible to enable the co-molded one-piece assembly to deform and thereby accept insertion of the personal electronic device.

8. The one-piece case of claim 1, further comprising: an opening parallel to the bottom surface of the flexible inner layer positioned such that a portion of the inserted personal electronic device is not enclosed by the co-molded one-piece assembly.

9. The case of claim 8, wherein an overhang extending from a top portion of one or more of the side surfaces and extends completely around the perimeter of the opening.

11.The one-piece case of claim 1, wherein the side surfaces of at least one of the flexible inner layer and the exterior hard layer extend above a top surface of the inserted personal electronic device.

On October 20, 2014, you submitted a ruling request to CBP regarding Otterbox’s “Symmetry” electronic device cases imported by Otterbox, requesting a determination as to whether said cases fall under the scope of the GEO. Samples of representative “Symmetry” cases, taken from Entry XXX-XXXX640-3, are pictured below:



 Top, Bottom, and Side views Otterbox Symmetry Case for iPhone 5/5s (Part Nos. 11-37555-4W, 11-30188-J1, and 11-37561-5B) Top, Bottom, and Side views Otterbox Symmetry Case for iPhone 6 (Part Nos. 16-46190-J1, 16-46190-6N, and 16-46190-9U)  ISSUES:

I. Whether CBP is precluded by 19 C.F.R. §177.7(b) from issuing a ruling on the accused Otterbox “Symmetry” electronic device cases.

II. The proper claim construction of the terms “bottom surface”, “co-molded … and permanently affixed” and “cut away portion”, found in claim 1 of the ‘561 patent.

III. Whether the Otterbox “Symmetry” electronic device cases (specifically, Part Nos. 11-37555-4W, 11-30188-J1, 11-37561-5B, 16-46190-J1, 16-46190-6N, and 16-46190-9U, taken from Entry XXX-XXXX640-3), are covered by the asserted claims of the ‘561 patent and therefore fall within the scope of the ITC’s General Exclusion Order in Investigation No. 337-TA-861/867, such that they would be excluded from entry for consumption into the United States.

LAW AND ANALYSIS:

Patent infringement determinations for utility patents entail two steps. The first step is to interpret the meaning and scope of the patent claims asserted to be infringed. The second step is to compare the properly construed claims to the accused device. See Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). The first step is a question of law; the second step is a question of fact. See Freedman Seating Co. v. American Seating Company, 420 F.3d 1350, 1357 (Fed. Cir. 2005).

In patent law, there are two types of infringement: direct and indirect infringement. Direct infringement includes two varieties: literal infringement and infringement under the doctrine of equivalents.

Literal infringement is when every limitation recited in a claim is found in the accused device. See Strattec Security Corp. v. General Automotive Specialty Co., 126 F.3d 1411, 1418 (Fed. Cir. 1997); see also Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1349 (Fed. Circ. 1998) (“An accused device cannot infringe, as a matter of law, if even a single limitation is not satisfied.”). Additionally, a dependent claim cannot be found to infringe if the independent claim from which it depends is not found to infringe. See Becton Dickinson & Co. v. C.R. Bard Inc., 922 F.2d 792, 798 (Fed. Cir. 1990) (“The holding of noninfringement of claim 1 applies as well to all claims dependent on claim 1.”).

As for the scope of protection provided, it is a “bedrock principle” of patent law that “the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“[W]e look to the words of the claims themselves…to define the scope of the patented invention.”).

Furthermore, the CAFC has made clear that claim terms are given their ordinary and customary meaning, which refers specifically to the ordinary and customary meaning that the claim term would have to a person of ordinary skill in the art at the time of the invention. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). The inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation. See Innova, 381 F.3d at 1116. That starting point is based on the well-settled understanding that inventors are typically persons skilled in the field of the invention and that patents are addressed to and intended to be read by others of skill in the pertinent art. See Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1119 (Fed. Cir. 2002).

The person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification. See Phillips, 415 F.3d at 1313. Often, this requires an examination of terms that have a particular meaning in a field of art. Id. Since the meaning of a claim term, as understood by persons of skill in the art, is often not immediately apparent, and since patentees frequently act as their own lexicographers, a court or administrative body responsible for making patent infringement determinations should look to sources available to the public that show what a person of skill in the art would have understood a disputed claim term to mean. Id. These sources include, for example, the words of the claims themselves, the remainder of the specification and the prosecution history, along with certain extrinsic evidence in appropriate circumstances. Id.

Importantly, as stated by the CAFC in Vitronics and reaffirmed in Phillips, claims must be read in light of the specification, of which they are a part, since the specification “is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315 (citing Vitronics, 90 F.3d at 1582); see also Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985) (“The specification is, thus, the primary basis for construing the claims.”).

While continuing to be mindful of this fine line between interpretation and importation, Phillips explains that:

[T]he line between construing terms and importing limitations can be discerned with reasonable certainty and predictability if the court’s focus remains on understanding how a person of ordinary skill in the art would understand the claim terms. For instance, although the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.…In particular, we have expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment….That is not just because section 112 of the Patent Act requires that the claims themselves set forth the limits of the patent grant, but also because persons of ordinary skill in the art rarely would confine their definitions of terms to the exact representations depicted in the embodiments.

Phillips, 415 F.3d at 1323 (internal citations omitted). Accordingly, the CAFC has provided the framework above for interpreting patent claims and reading those claims, as properly construed in light of the relevant evidence, onto an accused device.

Pursuant to the Tariff Act of 1930, the ITC has authority to conduct investigations into imported articles that allegedly infringe United States patents and impose remedies if the accused products are found to be infringing. See 19 U.S.C. §1337(a)(1)(B), (b)(1), (d), (f). Specifically, 19 U.S.C. §1337(d) provides the Commission authority to direct the exclusion from entry of articles found to be infringing. Moreover, when the Commission determines that there has been a violation of section 337, it may issue two types of exclusion orders: a limited exclusion order and/or a general exclusion order. See Fuji Photo Film Co., Ltd. v. U.S. Int’l Trade Comm’n, 474 F.3d 1281, 1286 (Fed. Cir. 2007); see also Certain Ink Cartridges and Components Thereof, Inv. No. 337-TA-565, Commission Opinion (October 19, 2007).

Both types of orders direct CBP to bar the infringing products from entering the country. See Yingbin-Nature (Guangdong) Wood Indus. Co. v. U.S. Int’l Trade Comm’n, 535 F.3d 1322, 1330 (Fed Cir. 2008). A limited exclusion order is “limited in that it only applies to the specific parties before the Commission in the investigation”. Id. In contrast, a general exclusion order bars importation of the infringing products by everyone, regardless of whether they were respondents in the Commission’s investigation. Id. A general exclusion order is appropriate if two exceptional circumstances apply. See Kyocera Wireless Corp. v. U.S. Int’l Trade Comm’n, 545 F.3d 1340, 1356. A general exclusion order may only be issued if (1) “necessary to prevent circumvention of a limited exclusion order,” or (2) “there is a pattern of violation of this section and it is difficult to identify the source of infringing products.” 19 U.S.C. §1337(d)(2); see also Kyocera, 545 F.3d at 1356 (“If a complainant wishes to obtain an exclusion order operative against articles of non-respondents, it must seek a GEO by satisfying the heightened burdens of §§1337(d)(2)(A) and (B).”). Additionally, a seizure and forfeiture order issued under 19 U.S.C. §1337(i) directs CBP to seize and forfeit articles imported in violation of an exclusion order when the importer previously had articles denied entry and received notice that seizure and forfeiture would result from any future attempt to import covered articles.

The issuance of a general exclusion order by the ITC binds named parties and non-named parties alike and shifts to would-be importers, “as a condition of entry, the burden of establishing noninfringement.” Hyundai Electronics Industries Co. v. U.S. Int’l Trade Comm’n, 899 F.2d 1204, 1210 (Fed. Cir. 1990). Accordingly, the burden is on Otterbox to establish that the products at issue are not covered by one or more of claims 4, 5, 9, or 11 of the ‘561 patent.

I. Whether CBP is Precluded by 19 C.F.R. §177.7(b) from Issuing a Ruling

On September 16, 2014, Otterbox appealed the ITC’s decision in GEO 337-TA-861/867 to the CAFC, pursuant to 19 U.S.C. §1337(c). See Otter Products, Court No. 14-1840. On September 24, 2014, Otterbox filed a Motion to Stay Enforcement of the GEO as to their products, asserting that all four factors required for the granting of a stay were met. With regard to the first factor, “whether the stay applicant has made a strong showing that he is likely to succeed on the merits,” Otterbox asserted that “the GEO should not apply to OtterBox because OtterBox’s products do not infringe the ‘561 patent[.]” See Otterbox’s Motion to Stay the GEO, page 15. The CAFC denied the Motion to Stay on October 20, 2014.

Otterbox filed a Request for Advisory Opinion with the ITC as to whether the instant products infringe the ‘561 patent, in accordance with 19 C.F.R. §210.79(a), on September 4, 2014. However, as of this writing, the ITC has issued no decision as to whether the accused products infringe. The CAFC does not consider the merits of defenses that were neither heard nor decided by the ITC. Instead, the issue is normally remanded back to the ITC for determination, rather than considered in the first instance. See Vastfame Camera, Ltd., v. ITC, 386 F.3d 1108, 1116 (Fed. Cir. 2004); Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984). Otterbox even states in its reply brief that “this appeal does not require the [CAFC] to determine whether or not [the products at issue] infringe the ‘561 patent[.]” See Otterbox Reply to Opposition to Motion for Stay of the GEO, filed October 6, 2014, page 7, FN 5.

CBP is precluded from issuing a ruling “with respect to any issue which is pending before … the United States Court of Appeals for the Federal Circuit[.]” 19 C.F.R. §177.7(b). However, the issue of whether the accused products infringe the ‘561 patent has not been decided by the ITC. As such, the CAFC has no initial determination to review, and the normal course of action is to remand the issue back to the ITC for a determination. See Vastfame, 386 F.3d, at 1116; Beloit, 742 F.2d, at 1423 (“issues not decided by the Commission cannot be presented to the court.”). Furthermore, the Court denied the motion to stay. Because the issue of infringement is not before the CAFC, this office is not precluded by 19 C.F.R. §177.7(b) from ruling on the instant matter.

II. Claim Construction

“It is axiomatic that dependent claims cannot be found infringed unless the claims from which they depend have been found to have been infringed[.]” Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed. Cir. 1989); See also Becton v. C.R. Bard, 922 F.2d, at 798. All of the claims at issue in the GEO depend from claim 1. Therefore, if claim 1 is not infringed, none of its dependent claims are infringed. In their filings, Otterbox presents three claim construction arguments as to why the instant products do not infringe upon claim 1 of the ‘561 patent. In your ruling request, you provide rebuttals to these arguments. Each argument will be addressed in turn.

CBP notes that during the investigation, the ITC issued “Order No. 13: Construing Terms of the Asserted Patent” on July 8, 2013 (“Claim Construction Order”). However, because Otterbox had no opportunity to litigate its position before the ITC, this order has no preclusive effect with regard to the question of whether the “Symmetry” products infringe the asserted claims of the ‘561 patent. See Corning Gilbert, Inc., v. United States, 896 F. Supp. 2d 1281, 1288-89 (Ct. Int’l. Trade 2013) (citing Yingbin-Nature, 535 F.3d, at 1332-33 (Fed. Cir. 2008)). As such, CBP must undertake an independent analysis to determine whether the accused products infringe. See Corning Gilbert, 896 F. Supp. 2d, at 1289.

With regard to the specific claim terms at issue, you assert: that the term “bottom surface” refers to the largest surface of the case, which would lie in the palm of the hand; that the term “co-molded … and permanently affixed” does not import a process limitation to claim 1; and that the term “cut away portion” should not be read with the limitation “located at the corner joints.” See Speck’s Ruling Request, pp.53-74.

A. Claim Construction of the Term “Bottom Surface”

As detailed in its ITC Advisory Opinion Request, at pp. 6-22, Otterbox asserts that the instant products do not have an “exterior hard layer [that] includes a bottom surface and side surfaces sized and shaped to substantially cover an exterior of the bottom and side surfaces of the flexible inner layer” as required by claim 1. Otterbox puts forth a legal claim construction argument to define the scope of the term “bottom surface” used in claim 1. To support their position, Otterbox points to text within the ‘561 patent itself, certain text within patents cited as prior art, the prosecution history of the ‘561 patent, and the understanding of the industry. Otterbox then presents a factual argument (which assumes that its claim construction argument is correct) asserting that the bottom surface of the accused product does not include an exterior hard layer which substantially covers it. In your ruling request, you present a rebuttal. It is CBP’s position that the “bottom surface” is taught by claim 7, and taught within the specification of the ‘561 patent at Figures 2b, 3, and 5, and at col. 2, lines 54-59. Furthermore, it is CBP’s position that claims 4, 6, and 15, and the specification at col. 4, lines 18-25, are consistent with its construction.

“Quite apart from the written description and the prosecution history, the claims themselves provide substantial guidance as to the meaning of particular claim terms.” Phillips, 415 F.3d, at 1314 (citations omitted). “Other claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment as to the meaning of a claim term. Because claim terms are normally used consistently throughout the patent, the usage of a term in one claim can often illuminate the meaning of the same term in other claims.” Id. (citations omitted).

Claim 7 reads:

The one-piece case of claim 1, wherein the co-molded one-piece assembly includes an overhang extending from the top portion of one or more of the side surfaces in parallel to the bottom surface of the one-piece case.

In claim 7, the ‘561 patent describes an elastomeric overhang as extending from the top portion of one or more of the side surfaces, and as being parallel to the bottom surface of the one-piece case. The language cited by Otterbox (namely, col. 4, lines 18-25, of the ‘561 patent) teaches “an additional large elastomeric overhang 21 for securing a device 19 …”. Figures 2b, 3, and 5 also show the elastomeric overhang 21:


 FIG. 2b 
 FIG. 3 
 FIG. 5   Therefore, claim 7, in combination with Figures 2b, 3, and 5, and the specification at col. 2, lines 54-59 and col. 4, lines 18-25, teach the location of the sides, top, and bottom surfaces, as pictured below:


 Figures 2b, 3, and 5 from the ‘561 patent With each surface identified under CBP’s construction of the term “bottom surface”   The “bottom surface” of the ‘561 patent is the surface parallel to the elastomeric overhang 21 as depicted in Figs. 2b and 5. The elastomeric overhang 21 extends from the top of three side surfaces, as depicted in Fig. 5. Support for this construction is found in claim 7, and within the specification of the ‘561 patent at Figures 2b, 3, and 5, and at col. 2, lines 54-59.

Otterbox argues in their submission to the ITC that a different surface is the “bottom surface.” Specifically, Otterbox identifies the area pictured below:




Furthermore, Otterbox points to Figure 3 and a specific passage in the specification of the ‘561 patent for support:


These features could be detents 20 as described along the side or top and bottom of the external hard shell layer 12 or it could be a large area like illustrated in FIGS. 2 b and 4 where an additional large elastomeric overhang 21 for securing a device 19 may be included in the protective case 10 so that a device would be slipped under and secured thereby with some form of undercut on the opposite end whether molded into the external hard shell layer 12 or the inner elastomeric layer 13.  Fig. 3, from the ‘561 patent Col. 4, lines 18-25, from the ‘561 patent   First, Otterbox argues that “the reference to ‘detents’ teaches the location of the bottom of the case because the specification depicts the ‘detents’ as those that circle the perimeter of the part of the case that wraps around the edges of the personal electronic device to hold in the device.” See Otterbox’s ITC Advisory Opinion Request, at page 8. Because the detents 20 are depicted as being present around the perimeter of Figure 3, Otterbox asserts that the perimeter must necessarily include the sides, top, and bottom surfaces. See Id., at page 9.

Otterbox’s proposed construction is inconsistent with the language of the claims and the specification of the ‘561 patent. Under Otterbox’s construction, claim 7 should read “the side portion of the bottom surface and one or more side surfaces”, and should describe the overhang as perpendicular to the bottom surface, rather than parallel. Furthermore, if the bottom surface were in the location which Otterbox asserts, then Figure 3 should be described as a front view, rather than as a “top orthogonal view” (See the ‘561 patent, col. 2, line 54). However, this is not how the ‘561 patent reads.

In fact, Otterbox’s proposed construction would lead to a nonsensical result. Otterbox argues that Figure 3 depicts two side surfaces parallel to each other, and joined to a top and bottom surface. See Otterbox’s ITC Advisory Opinion Request, at page 8. Under Otterbox’s construction, the two side surfaces are parallel, and can never form a corner joint. However, claim 4 contains the limitation that “side surfaces of the exterior form a corner joint …”, and claim 15 contains the limitation that “the exterior hard layer includes at least two side surfaces that form a radiused corner”. It is geometrically impossible for two parallel surfaces to form a corner. Furthermore, Otterbox’s construction shows only two side surfaces. However, claim 6 requires that “the exterior hard layer includes at least four side surfaces …”. As such, Otterbox’s proposed construction of the term “bottom surface” would render claims 4, 6, and 15 nonsensical. “A claim construction that renders asserted claims facially nonsensical ‘cannot be correct.’” See Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1255 (Fed. Cir. 2010) (quoting Schoenhaus v. Genesco, Inc., 440 F.3d 1354, 1357 (Fed. Cir. 2006)). See also Bd. of Regents v. BENQ Am. Corp., 533 F.3d 1362, 1370 (Fed. Cir. 2008); AIA Eng'g Ltd. v. Magotteaux Int'l S/A, 657 F.3d 1264, 1276 (Fed. Cir. 2010) (“We strive, where possible, to avoid nonsensical results in construing claim language.”). CBP notes that its construction of the term “bottom surface” is consistent with the language of claims 4, 6, and 15.

The language Otterbox cites in its filings, “These features could be detents 20 as described along the side or top and bottom of the external hard shell layer 12,” at col. 4, lines 18-19 of the ‘561 patent, is also consistent with CBP’s construction of the term “bottom surface.” Under CBP’s construction, Fig. 3 of the ‘561 patent shows detents along the top of the four side surfaces. Furthermore, Fig. 3 is specifically described as a top orthogonal view. See the ‘561 patent, col. 2, line 54. As such, Fig. 3 and the specification at col. 4, lines 18-25, are consistent with CBP’s construction.

The patent itself does not include an embodiment which shows the detents along the bottom surface. However, the ITC considered an accused product which did include detents along its bottom surface. In Speck’s original Complaint, filed on December 21, 2012, Speck accused the Superior Communications, Inc. (“Superior”) “Dualtek” products of infringing the ‘561 patent. See Speck’s Complaint, at para. 17. The accused “Dualtek” products include detent features along the bottom surface, in the form of corner features whose surfaces are raised slightly above the rest of the bottom surface. The accused Superior product considered by the ITC is pictured below:


 Photo of Superior’s “PureGear DualTek (for Xperia)” See Speck’s Complaint, dated December 21, 2012, Ex. 21   As such, the record before us does not support the adoption of Otterbox’s proposed claim construction.

Second, Otterbox argues that twenty-two prior art references, cited on the face of the ‘561 patent, define the “bottom” surface in the manner they assert. See Otterbox’s Motion to Stay the GEO, Exhibit 14 (Doc. 5-3, pp. 228-242). CBP agrees that the prior art references constitute intrinsic evidence, and also agrees that they do in fact identify the bottom surface in the manner Otterbox asserts. However, seven other prior art references, which are also part of the intrinsic record, identify the bottom surface in a manner consistent with CBP’s claim construction. The remaining forty-one are silent on the issue. Because the prior art references do not consistently agree on the location of the “bottom surface”, the claims of the ‘561 patent itself remain the best source for determining the proper context of the term. See Phillips, 415 F.3d at 1312 (“The claims are ‘of primary importance, in the effort to ascertain precisely what it is that is patented.’” (quoting Merrill v. Yeomans, 94 U.S. 568, 570, 24 L. Ed. 235 (1876)). While the claim construction proposed by Otterbox is supported by certain prior art references, adopting their construction would render claims 4, 6, and 15 nonsensical, as discussed above. The existence of prior art which supports Otterbox’s view does not alter this conclusion. It is CBP’s position that the “bottom surface” is taught by claim 7, and is supported by claims 4, 6, and 15, and by the specification at Figures 2b, 3, and 5, col. 2, lines 54-59 and col. 4, lines 18-25, as discussed above, and we note that certain prior art references support this view.

Third, Otterbox finds support for their interpretation of the “bottom” surface in the prosecution history of the ‘561 patent. Speck filed a Petition for Accelerated Examination when they filed for their patent on October 26, 2011. In the supporting documents for this request, Speck identified Specification Paragraphs [0022] and [0024] as the source of the limitation of claim 1 which reads: “the exterior hard layer includes a bottom surface and side surfaces sized and shaped to substantially cover an exterior of the bottom and side surfaces of the flexible inner layer and a cut away portion that is permanently filled with a portion of the co-molded flexible inner layer.” Otterbox points out that Specification Paragraph [0022] is identical to col. 4, lines 18-25 of the ‘561 patent, and cites to this as further support that this particular text teaches which surface is the bottom of the patented device. CBP notes that Paragraph [0024] is identical to col. 4, lines 34-49 of the ‘561 patent.

It is CBP’s position that the text found in paragraphs [0022] and [0024] of the specification does not support Otterbox’s construction of the term “bottom surface.” As discussed above, the text of Paragraph [0022] (col. 4, lines 18-25 of the ‘561 patent) supports CBP’s contention that Fig. 3 shows detents along the top of the four side surfaces. In addition, Paragraph [0024] describes how “each sidewall of the external hard shell layer” will flex away from the device when inserted and “snap back into place” because of the unique geometry of the corner cutouts. See the ‘561 patent, col. 4, lines 41-42. This text supports CBP’s interpretation that the “bottom surface” is parallel to the overhang 21, and that the perimeter of Fig. 3 shows the four sides (rather than two sides and the top and bottom, as Otterbox asserts). As such, it is CBP’s position that the prosecution history supports the position that the “bottom surface” is taught by claim 7, Figures 2b, 3, and 5, col. 2, lines 54-59 and col. 4, lines 18-25 of the ‘561 patent.

Finally, Otterbox asserts that “[t]he normal understanding of the ‘bottom’ of a case in the personal electronic device or mobile phone case industry is the portion of the case which covers the bottom of the device – that is, the lowest edge of the device when the display is right-side-up and facing the user. This portion of the device often contains the charge port and speakers.” See Otterbox’s ITC Advisory Opinion Request, at page 13. In support, Otterbox submitted videos and other materials taken from Speck’s website (See Otterbox’s ITC Advisory Opinion Request, Exhibits 7 and 8), and a compilation of other information taken from various sources (See Otterbox’s ITC Advisory Opinion Request, Exhibit 9).

Extrinsic evidence “consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.” Markman, 52 F.3d, at 981. “[W]hile extrinsic evidence can shed useful light on the relevant art, we have explained that it is less significant than the intrinsic record in determining the legally operative meaning of claim language.” Phillips, 415 F.3d, at 1317. “The court may receive extrinsic evidence to educate itself about the invention and the relevant technology, but the court may not use extrinsic evidence to arrive at a claim construction that is clearly at odds with the construction mandated by the intrinsic evidence.” Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 977 (Fed. Cir. 1999).

Based on the foregoing, it is CBP’s position, based on a reasoned and deliberate analysis, that the “bottom surface” of the ‘561 patent is the surface parallel to the elastomeric overhang 21 as depicted in Figs. 2b and 5. See Corning Gilbert, 896 F. Supp. 2d, at 1291 (citing Burlington Truck Lines, Inc. v. United States, 371 U.S. 156, 167-68 (1962)). Support for this construction is found in claim 7, and within the specification of the ‘561 patent at Figures 2b, 3, and 5, and at col. 2, lines 54-59. Furthermore, the specification at col. 4, lines 18-25, is consistent with the above construction. Otterbox asserts that the extrinsic evidence presented supports a different claim construction for the term “bottom surface.” However, as discussed above, Otterbox’s proposed construction is not supported by the intrinsic evidence. As such, the evidence presented by Otterbox constitutes extrinsic evidence that supports a claim construction clearly at odds with intrinsic evidence, and it must be disregarded. See Elkay, 192 F.3d, at 977; Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 716-717 (citing Markman, 52 F.3d, at 981, and Vitronics, 90 F.3d, at 1584).

The remainder of Otterbox’s factual argument regarding this particular limitation of claim 1 relies on their construction of the claim term “bottom surface”. Because CBP declines to adopt Otterbox’s proposed construction, there is no need to consider their remaining arguments.

B. Claim Construction of the Term “Co-Molded … and Permanently Affixed”

As detailed in their ITC Advisory Opinion Request, at pp. 22-35, Otterbox puts forth a claim construction that, in order to satisfy the “flexible inner layer co-molded with an exterior hard layer and permanently affixed together to form a co-molded one-piece assembly” limitation of claim 1, the manufacturing process must include two separate and distinct processes; one process that co-molds the exterior hard layer with the flexible inner layer, and a second and distinct process which permanently affixes the two layers together. See Otterbox’s ITC Advisory Opinion Request, pages 22-31; See also Otterbox’s Motion to Stay the GEO, Exhibit 15 (Doc. 5-3, p. 248) (“The ‘permanently affixed’ limitation should properly be construed as requiring an adhesive step beyond co-molding, e.g., an additional chemical adhesion.”). To do this, Otterbox points to the text of the ‘561 patent itself, the prosecution history of the ‘561 patent, and the ITC’s Claim Construction Order. Otterbox then presents a factual argument (which assumes that its legal argument is correct) explaining that their particular manufacturing process uses a multi-shot injection molding process for the hard and soft components of their product. In your ruling request, you present a rebuttal.

“The patentability of a product does not depend on its method of production.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (citing In re Pilkington, 411 F.2d 1345, 1348 (C.C.P.A. 1969)). Claim 1 is directed to a “one-piece case for enclosing a personal electronic device”. This is a product claim, as it is directed to a concrete thing, consisting of parts, or of certain devices and combination of devices. Burr v. Duryee, 68 U.S. 531, 570, 17 L. Ed. 650 (1863). It is a device designed to perform some function and produce a certain effect or result. Corning v. Burden, 56 U.S. 252, 267, 14 L. Ed. 683 (1854). Claim 1 is not a process claim or a “means or step plus function” claim.

Otterbox seeks to read a process limitation into claim 1. “A novel product that meets the criteria of patentability is not limited to the process by which it was made.” Vanguard Prods. Corp. v. Parker Hannifin Corp., 234 F.3d 1370, 1372 (Fed. Cir. 2000). “However, process steps can be treated as part of a product claim if the patentee has made clear that the process steps are an essential part of the claimed invention.” Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1375 (Fed. Cir. 2007).

In the Claim Construction Order, the ALJ stated:

While the specification uses the terms “co-molded” and “over molded,” the specification does not discuss specific processes for manufacturing – indicating that the patentees did not intend to limit “co-molding” to a specific process of manufacturing. * * * There is no dispute that at the time the application resulting in the ‘561 patent was filed, both multi-shot molding and overmolding were known in the art as methods of manufacturing cases comprised of a hard plastic shell with an elastomeric liner. The specification characterizes the prior art as co-molded regardless of whether those cases were formed in a single mold or otherwise. * * * These passages [referring to col. 1, ll. 26-32 and col. 4, ll. 18-25 of the ‘561 patent] do not connote a method of manufacture. * * *

See Claim Construction Order, pp. 13 and 15. While the Claim Construction Order has no preclusive effect on CBP’s infringement analysis (See Corning Gilbert, 896 F. Supp. 2d, at 1288-89), CBP agrees with the ALJ’s position that the specification does not require a specific manufacturing process with regard to the term co-molded.

With regard to the term “permanently affixed”, the ‘561 patent states “The external hard shell layer 12 and the interior elastomeric layer 13 may be attached in several ways, such as glue, chemical bonding, heating, heat treated chemicals or any other means know[n] in the art which permanently attach the external hard shell layer 12 to the interior elastomeric layer 13.” See the ‘561 patent, col. 3, lines 44-49.

Based on the foregoing, it is CBP’s position, based on a reasoned and deliberate analysis, that the claim term “co-molded … and permanently affixed” of the ‘561 patent refers to a device that must be co-molded, and the layers must be permanently affixed, but these terms are not limited to any specific method of manufacture. See Vanguard, 234 F.3d, at 1372; See also Corning Gilbert, 896 F. Supp. 2d, at 1291 (citing Burlington, 371 U.S. 156, 167-68). There is no requirement, as Otterbox asserts, that two separate and distinct manufacturing processes are required. When read in context, the limitation describes the product more by its structure than by the process used to obtain it. See, e.g., Hazani v. International Trade Commission, 126 F.3d 1473, 1479 (Fed. Cir. 1997). As such, CBP declines to read a process limitation into claim 1. As long as the two layers are formed together during manufacturing, and those layers are permanently affixed when manufacturing is complete, the limitation “co-molded … and permanently affixed” is satisfied.

Otterbox asserts in the alternative that claim 1 was converted to a “product-by-process” claim during the prosecution of the patent. See Otterbox’s Motion to Stay the GEO, Exhibit 15 (Doc. 5-3, pp. 261-266). However, co-molding is not a specific process, but encompasses multiple processes, such as multi-shot injection molding and over-molding. Likewise, permanent affixation encompasses several processes, such as gluing, chemical bonding, heating or any other means known in the art. As such, CBP declines to treat claim 1 as a product-by-process claim.

In general, multi-shot injection molding is a process by which two or more materials (usually plastics) are injected into a mold to form layers. This process requires the materials to be liquefied, and as such, cannot be used to manufacture cases with metal, polycarbonate, or para-aramid exterior hard layers. The two layers are shot into the mold and molded together in a liquid form. The layers then permanently affix together as they cool. No additional process is necessary. The multi-shot injection molding process itself is an “other means known in the art which permanently attach the external hard shell layer 12 to the interior elastomeric layer 13”. See the ‘561 patent, at col. 3, ll. 47-49. An electronic device case which has undergone the multi-shot injection molding process has been co-molded (in that the layers are molded together), and has also been permanently affixed (because when the plastic layers cool, they bond together). As such, the separate limitations of “co-molded” and “permanently affixed” contained within claim 1 of the ‘561 patent are both satisfied.

Otterbox admits in their submission that the accused products are manufactured using a multi-shot injection molding process. See Otterbox’s Motion to Stay the GEO, Exhibit 13 (Doc. 5-3, p. 201). Otterbox also admits that the two layers are permanently affixed together during this molding process. See Otterbox’s Motion to Stay the GEO, Exhibit 13 (Doc. 5-3, p. 202). The remainder of Otterbox’s factual argument regarding this particular limitation relies on the conclusion that two separate processes are required to satisfy the claim 1 limitation of “co-molded” and “permanently affixed”. As such, there is no need to consider their remaining arguments, as CBP construes the multi-shot injection mold process which Otterbox practices to fall within the limitation.

C. Claim Construction of the Term “Cut Away Portion”

As detailed in their ITC Advisory Opinion Request, at pp. 35-43, Otterbox asserts argues that the term “cut away portion” contained in claim 1 must be read with the limitation “located at the corner joint.” Otterbox argues that the ‘561 patent teaches away from having cut away portions anywhere except the corners, and notes the various citations within the ‘561 patent where the cut away portion is in the corner. Otterbox specifically seeks to limit the ‘561 patent to require the feature that the cut aways must be in the corners. See Otterbox’s ITC Advisory Opinion Request, pages 35-40. Otterbox asserts that Speck’s use of the term “the present invention” in the ‘561 patent supports the importation of the “located at the corner joint” limitation into claim 1, and cites to Verizon Servs. Corp. v. Vonage Holding Corp., 503 F.3d 1295 (Fed. Cir. 2007) and Netcraft Corp. v. Ebay, Inc., 549 F.3d 1394 (Fed. Cir. 2008) in support of their position. In your submission, you present a rebuttal.

The courts have repeatedly warned against confining the claims of a patent to the specific embodiments described in a specification. See Phillips, 415 F.3d, at 1323; See also Nazomi Communications, Inc. v. ARM Holdings, PLC, 403 F.3d 1364, 1369 (Fed. Cir. 2005) (claims may embrace “different subject matter than is illustrated in the specific embodiments in the specification”); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906-08 (Fed. Cir. 2004); Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002); SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985). “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. Gemstar-TV Guide [Int'l, Inc. v. ITC], 383 F.3d [1352, 1366 (Fed. Cir. 2004)]. 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. “The presence of a dependent claim that adds a particular limitation raises a presumption that the limitation in question is not found in the independent claim.” Liebel-Flarsheim, 358 F.3d, at 910 (citing Wenger Mfg., Inc. v. Coating Mach. Sys., Inc., 239 F.3d 1225, 1233 (Fed. Cir. 2001); Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998)). “Even when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using 'words or expressions of manifest exclusion or restriction.’” Liebel-Flarsheim, 358 F.3d, at 906 (quoting Teleflex, 299 F.3d, at 1327).

The embodiment described by Speck in the ‘561 patent does have cut corners. See ‘561 patent, Figs. 1, 3, 5, 7a and 7b; col. 2, lines 41-45; col. 4, lines 26-30; and col. 4, lines 62-64. However, the scope of the patent is limited by its claims. Innova/Pure Water, 381 F.3d, at 1115; Vitronics Corp., 90 F.3d, at 1582. The limitation of claim 1 reads “a cut away portion that is permanently filled with a portion of the co-molded flexible inner layer. No limitation is given as to the location of this cut away portion. It is not until claim 4 that a location is given. Claim 4, which depends from claim 1, reads:

4. The one-piece case of claim 1, wherein the side surfaces of the exterior hard layer form a corner joint and the co-molded flexible inner layer fills in the cut-away portion located at the corner joint contributing to the overall flexibility of the one-piece case.

However, when we turn next to look at claim 5, any reference to the location of the cut away portion has been removed. Claim 5, which also depends from claim 1 (and not claim 4), reads:

5. The one-piece case of claim 1, wherein the flexible inner layer that fills in the cut-away portion creates a stretch-zone that is sufficiently flexible to enable the co-molded one-piece assembly to deform and thereby accept insertion of the personal electronic device.

It is not until claim 4 that a location is specified. But then, in the claim 5, which immediately follows, the reference to location is removed. As such, there is a presumption that the “located at the corner joint” limitation is not found in independent claim 1. See Liebel-Flarsheim, 358 F.3d, at 910; InterDigital Communs., LLC v. ITC, 690 F.3d 1318, 1324-25 (Fed. Cir. 2012).

With regard to the term “present invention”, the CAFC has recently “held that disclaimer applies when the patentee makes statements such as ‘the present invention requires …’ or ‘the present invention is …’ or ‘all embodiments of the present invention are …’” Hill-Rom Servs. V. Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014) (citing Regents of Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 936 (Fed. Cir. 2013); Honeywell Int'l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1316-19 (Fed. Cir. 2006); and SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343-44 (Fed. Cir. 2001)). The ‘561 patent does not use the phrases “the present invention requires …” or “all embodiments of the present invention are …” anywhere in the specification. The phrase “the present invention is …” does appear twice:

SUMMARY OF THE INVENTION The present invention is an improvement over the existing cases because it combines the best features of both hard cases and the elastomeric cases while being only a single part, which is particularly useful from a consumer viewpoint. * * * DETAILED DESCRIPTION OF THE INVENTION In the following detailed description of the invention of exemplary embodiments of the invention, reference is made to the accompanying drawings (where like numbers represent like elements), which form a part hereof, and in which is shown by way of illustration specific exemplary embodiments in which the invention may be practiced. These embodiments are described in sufficient detail to enable those skilled in the art to practice the invention, but other embodiments may be utilized and logical, mechanical, electrical, and other changes may be made without departing from the scope of the present invention. The following detailed description is therefore, not to be taken in a limiting sense, and the scope of the present invention is defined only by the appended claims. * * *

See the ‘561 patent, col. 1, ll. 57-62; col. 3, ll. 7-21 (emphasis added). As noted above, the ‘561 patent clearly states that “the scope of the present invention is defined only by the appended claims.” See the ‘561 patent, col. 3, ll. 20-21. The detailed description of the invention and the accompanying drawings are shown by way of illustrating specific exemplary embodiments. See the ‘561 patent, col. 3, ll. 9-14. The language cited above does not demonstrate a clear intention to limit the claim scope. Rather, the opposite is true. See Liebel-Flarsheim, 358 F.3d, at 906; Northrop Grumman Corp. v. Intel Corp., 325 F.3d 1346, 1355 (Fed. Cir. 2003) (“Absent a clear disclaimer of particular subject matter, the fact that the inventor may have anticipated that the invention would be used in a particular way does not mean that the scope of the patent is limited to that context.”)

Based on the foregoing, it is CBP’s position, based on a reasoned and deliberate analysis, that the claim term “cut away portion” in the ‘561 patent should not be read with the limitation “located at the corner joint.” See Corning Gilbert, 896 F. Supp. 2d, at 1291 (citing Burlington, 371 U.S. 156, 167-68). The language of claims 1, 4, and 5 create a presumption that the “located at the corner joint” limitation is not found in independent claim 1. The specification at col. 3, lines 7-21 of the ‘561 patent indicates that there was no clear intention to limit the scope of claim 1. In its filings, Otterbox has not presented sufficient evidence to rebut the principles enunciated in Liebel-Flarsheim.

III. The Products at Issue

In your submission, you assert that Otterbox’s “Symmetry” electronic device cases infringe claims 5, 9, and 11 of the ‘561 patent, and as such, are covered by the GEO. See Speck’s Ruling Request, pp. 13-53. This office obtained six samples of Otterbox’s Symmetry product line of phone cases from Entry XXX-XXXX640-3. Three of the products (specifically Part Nos. 11-37555-4W, 11-30188-J1, and 11-37561-5B) are designed to hold an iPhone 5 or 5s, and vary only by color. The other three products (Specifically, Part Nos. 16-46190-J1, 16-46190-6N, and 16-46190-9U) are designed to hold an iPhone 6, and vary only by color. Photos of representative samples are included below:



 Top, Bottom, and Side views Otterbox Symmetry Case for iPhone 5/5s (Part Nos. 11-37555-4W, 11-30188-J1, and 11-37561-5B) Top, Bottom, and Side views Otterbox Symmetry Case for iPhone 6 (Part Nos. 16-46190-J1, 16-46190-6N, and 16-46190-9U)   A. Claim 1 of the ‘561 patent

Upon examination of the samples provided, CBP has determined that the accused products contain all of the limitations set forth in claim 1 of the ‘561 patent. The accused products are one piece cases for enclosing a personal electronic device. The inner layer is made of a flexible elastomeric material (the gray portion of the iPhone 5/5s design and pink portion of the iPhone 6 design, pictured above). The exterior layer is made of a hard plastic (the white portion of the iPhone 5/5s design and purple portion of the iPhone 6 design, pictured above). According to Otterbox, these products are manufactured using a multi-shot injection molding process. See Otterbox’s Motion to Stay the GEO, Exhibit 13 (Doc. 5-3, p. 201). The two layers are permanently affixed together during this molding process. See Otterbox’s Motion to Stay the GEO, Exhibit 13 (Doc. 5-3, p. 202). As such, the accused products comprise “a flexible inner layer co-molded with an exterior hard layer and permanently affixed together to form a co-molded one-piece assembly” as recited in claim 1.

An iPhone 5 was inserted into one of the samples, and CBP determined from physical examination that the sample was sufficiently flexible to accept insertion of the device and also sufficiently rigid to retain the device. As such, the accused products are “sufficiently flexible to accept insertion of the personal electronic device and sufficiently rigid to securely retain the inserted personal electronic device” as recited in claim 1.

As discussed above, the bottom surface is taught by Figs. 2b, 3, and 5, and by claim 7. The “bottom surface” of the ‘561 patent is the surface parallel to the elastomeric overhang 21 as depicted in Figs. 2b and 5:


 Figures 2b, 3, and 5 from the ‘561 patent, with each surface identified  
 Top Down View of accused product, with each surface identified   As pictured in the sample above, the flexible inner layer (pictured in dark purple) includes a bottom surface and side surfaces extending upward from them, and forms a fitted cavity configured to accept and retain an electronic device. The sides and bottom surfaces cover substantially all the of bottom and side surfaces of a device. As such, the accused product comprises “a flexible inner layer [which] includes a bottom surface, side surfaces joined to the bottom surface and extending upward therefrom, and a fitted cavity configured to accept and retain the inserted personal electronic device such that the bottom surface covers at least a portion of a bottom surface of the inserted personal electronic device and the side surfaces cover at least a portion of a side surface of the inserted personal electronic device” as recited in claim 1.

The exterior surfaces of the accused product are mostly covered by the hard plastic layer (pink or burgundy), with the exception of certain cutouts, as shown below:



 Otterbox Symmetry Case for iPhone 5/5s Otterbox Symmetry Case for iPhone 6   As shown in the pictures, certain cut away portions of the exterior hard layer are permanently filled in with a portion of the inner flexible layer (purple or pink). CBP notes that the cut away portions are located along the sides and bottom. As such, the accused products include an “exterior hard layer [which] includes a bottom surface and side surfaces sized and shaped to substantially cover an exterior of the bottom and side surfaces of the flexible inner layer and a cut away portion that is permanently filled with a portion of the co-molded flexible inner layer” as recited in claim 1.

B. Claim 4 of the ‘561 patent

Claim 4, which depends from claim 1, requires a “cut away portion [of the exterior hard layer] located at the corner joint”. None of the samples examined has a cut away portion located in the corner joint. The cut away portions are either along a side surface or on the bottom surface. As such, the accused products do not infringe claim 4 of the ‘561 patent.

C. Claim 5 of the ‘561 patent

Upon examination of the samples, CBP has determined that the flexible inner layer which fills in the cutaways along the sides of the accused products creates a stretch-zone which is sufficiently flexible to deform and accept a device. As such, the accused products comprise a “flexible inner layer that fills in the cut-away portion creates a stretch-zone that is sufficiently flexible to enable the co-molded one-piece assembly to deform and thereby accept insertion of the personal electronic device” as recited in claim 5. Because the accused products practice all the limitations of claim 5 (including those of claim 1, from which claim 5 depends), the accused product are found to infringe upon claim 5 of the ‘561 patent.

D. Claim 9 of the ‘561 patent

Claim 9 depends from claim 8, which in turn depends from claim 1. A sample of an accused product is pictured below:




  Upon examination of the samples, CBP has determined that the top surface, through which the electronic device is inserted, is an opening parallel to the bottom surface, and that the four side surfaces include a flexible overhang which extends from the top portion of those sides and goes around the entire perimeter. As such, the accused products comprise an “opening parallel to the bottom surface of the flexible inner layer positioned such that a portion of the inserted personal electronic device is not enclosed by the co-molded one-piece assembly” as recited by claim 8, and also comprise “an overhang extending from a top portion of one or more of the side surfaces and extends completely around the perimeter of the opening” as recited by claim 9. Because the accused products practice all the limitations of claim 9 (including those of claims 1 and 8, from which claim 9 depends), the accused product are found to infringe upon claim 9 of the ‘561 patent.

E. Claim 11 of the ‘561 patent

Upon examination of the samples, CBP has determined that the side surfaces of the flexible interior layer extend above the top surface of an inserted electronic device, as pictured below:


  As such, the accused products comprise “side surfaces of at least one of the flexible inner layer and the exterior hard layer extend above a top surface of the inserted personal electronic device” as recited in claim 11. Because the accused products practice all the limitations of claim 11 (including those of claim 1, from which claim 11 depends), the accused product are found to infringe upon claim 11 of the ‘561 patent.

HOLDING:

CBP is not precluded by 19 C.F.R. §177.7(b) from ruling on the instant Otterbox “Symmetry” electronic device cases because the issue of whether these products infringe the ‘561 patent is not before the CAFC in the matter of Otter Products, LLC v. United States International Trade Commission, Court No. 14-1840, (Fed. Cir., filed September 16, 2014).

The “bottom surface” of the ‘561 patent is the surface parallel to the elastomeric overhang 21 as depicted in Figs. 2b and 5. The elastomeric overhang 21 extends from the top of three side surfaces, as depicted in Fig. 5. Support for this construction is found in claim 7, and within the specification of the ‘561 patent at Figures 2b, 3, and 5, and at col. 2, lines 54-59. The claim term “co-molded … and permanently affixed” does not limit claim 1 to any specific processes. And finally, the claim term “cut away portion” in claim 1 should not be read with the additional limitation “located at the corner joint”.

The Otterbox Symmetry cases at issue (specifically, Part Nos. 11-37555-4W, 11-30188-J1, 11-37561-5B, 16-46190-J1, 16-46190-6N, and 16-46190-9U) are covered by claims 5, 9, and 11 of the ‘561 patent. Therefore, the accused products are within the scope of the ITC’s general exclusion order in Investigation No. 337-TA-861/867, and may not be entered for consumption into the United States.

This decision is limited to the specific facts set forth herein. If Otterbox manufactures or imports cases for portable electronic devices that differ from the embodiment described above, or if future importations vary from the facts stipulated to herein, this decision shall not be binding on CBP as provided for in 19 C.F.R. Part 177.2(b)(1), (2), and (4), and Part 177.9(b)(1) and (2).


Sincerely,

Charles R. Steuart, Chief
Intellectual Property Rights Branch