• HQ H328569
• Nov 28, 2022

• Type : 19 U.S.C. § 1337; Unfair Competition • HTSUS :
•  Related:   H325434; H525434; H242026; H284032; H326593   

OT:RR:BSTC:EOE H328569 WMW

Amol Parikh, Esq.
McDermott Will & Emery LLP
444 West Lake Street
Suite 4000
Chicago, IL 60606-0029

VIA EMAIL: [email protected]
[email protected]

RE: Reconsideration of CBP Headquarters Ruling Letter HQ H325434; U.S. International Trade Commission; Limited Exclusion Order; Investigation No. 337-TA-1237; Certain Cloud-Connected Wood Pellet Grills and Components Thereof

Dear Mr. Parikh:

This is in response to your request for reconsideration, submitted on behalf of Traeger Pellet Grills LLC (“Traeger”), of Headquarters Ruling Letter (“HQ”) H325434, issued by the Exclusion Order Enforcement Branch, Regulations and Rulings, Office of Trade, U.S. Customs and Border Protection (“CBP”) on September 30, 2022. That ruling determined that certain Cloud Control Variant (“CCV”) and the Local Control Variant (“LCV”) grill systems manufactured and imported by or on behalf of GMG Products, LLC (“GMG”) are not subject to the limited exclusion order issued by the U.S. International Trade Commission (“Commission” or “ITC”) in the above-referenced investigation under Section 337 of the Tariff Act of 1930 (19 U.S.C. § 1337) (“Section 337”). Traeger has requested reconsideration of that ruling with respect to the CCV grill system (“articles at issue”). In addressing that request for reconsideration, we have taken into consideration your submissions, dated October 11, 2022, and November 9, 2022, as well as the submission provided by GMG on November 2, 2022, and the prior administrative record in connection with HQ H325434.

As described in more detail below, Traeger raises two primary issues for reconsideration: (1) whether HQ H325434 contradicted certain Commission findings from the underlying investigation that resulted in the issuance of the exclusion order and (2) whether the CCV grill system is subject to the exclusion order under the doctrine of equivalents, as applied by CBP when administering a remedial order under Section 337.

BACKGROUND

ITC Investigation No. 337-TA-1237

Procedural History at the ITC

As noted in HQ H325434, the Commission instituted this investigation on January 4, 2021, based on a complaint filed on behalf of Traeger. 86 Fed. Reg. 129-30 (Jan. 4, 2021); see also Comm’n Op. at 1. The Commission Opinion notes the following regarding the underlying investigation:

The complaint, as supplemented, alleged violations of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337, based upon the importation into the United States, the sale for importation, and the sale within the United States after importation of certain cloud-connected wood-pellet grills and components thereof by reason of infringement of, inter alia, certain claims of the ’720 patent and U.S. Patent No. 10,218,833 (“the ’833 patent”). The Commission’s notice of investigation named GMG as the sole respondent. The Office of Unfair Import Investigations did not participate in the investigation.

On July 28, 2021, the former CALJ issued a Markman Order (Order No. 22) construing claim limitations in dispute. On September 9, 2021, the Commission found that Traeger has satisfied the economic prong of the domestic industry (“DI”) requirement with respect to the ’833 and ’720 patents. See Order No. 26 (Aug. 10, 2021), unreviewed by Comm’n Notice (Sept. 9, 2021). On October 28, 2021, the Commission affirmed, with supplemental reasoning, the former CALJ’s initial determination granting in part GMG’s motion for summary determination of non-infringement of the ’833 patent and terminated that patent from the investigation. See Order No. 28 (Sept. 3, 2021), aff’d, with supplemental reasoning, by Comm’n Notice (Oct. 28, 2021).

On December 6, 2021, the former CALJ issued the final ID finding a violation of section 337 as to claims 1 and 2 of the ’720 patent. The ID also includes the former CALJ’s recommended determination (“RD”), which recommended, should the Commission find a violation, the issuance of an LEO directed to GMG’s infringing products and a CDO directed to GMG and a requirement to post a bond in the amount of 53.1 percent of the entered value of infringing articles imported during the period of Presidential review.

The Commission received no submissions from the public in response to its Federal Register notice requesting comments on the public interest should the Commission find a violation of section 337. 86 Fed. Reg. 70860-61 (Dec. 13, 2021). Traeger and GMG did not submit any public interest comments pursuant to Commission Rule 210.50(a)(4) (19 C.F.R. § 210.50(a)(4)).

On March 8, 2022, the Commission determined not to review the final ID. See 87 Fed. Reg. 14288-89. In the same notice, the Commission also requested written submissions from the parties, interested government agencies, and other interested persons on the issues of remedy, the public interest, and bonding. Id.

On March 22, 2022, Traeger and GMG each filed a brief on remedy, the public interest, and bonding. On March 29, 2022, the parties filed reply briefs.3 The Commission received no other submissions.

As noted above, the Commission previously adopted the final ID’s finding of a violation of section 337 as to the ’720 patent. See 87 Fed. Reg. 14288-89. For the reasons set forth below, the Commission has determined that the appropriate relief is an LEO directed to GMG’s infringing products and a CDO directed against GMG.

(Comm’n Op. at 1-3.)

The Patent and Claims in the 1237 LEO

The 1237 LEO prohibits entry for consumption of “cloud-connected wood-pellet grills and cloud-connected wood-pellet grill controllers” that infringe one or more of claims 1-2 of U.S. Patent No. 10,158,720 and that are manufactured abroad by or on behalf of, or imported by or on behalf of, Respondent or any of its affiliated companies, parents, subsidiaries, agents, or other related business entities, or their successors or assigns. (See 1237 LEO ¶¶ 1 and 2.)

The ’720 patent is entitled “Cloud System for Controlling Outdoor Grill with Mobile Application.” (GMG Ruling Request, Exhibit A.) Claim 1 is an independent claim for a “cloud computing platform.” (FID at 8; see also Claim Construction Order at 25.)

1. A cloud computing platform for communicating with and controlling operation of an electronically-controlled appliance comprising an outdoor barbecue grill or outdoor barbecue smoker, the cloud computing platform having at least one hardware processor, the cloud computing platform comprising:

a receiver configured to receive inputs from one or more computing systems including at least a first input indicating that an electronically-controlled appliance is in network communication with the cloud computing platform, the electronically-controlled appliance comprising an outdoor barbecue grill or outdoor barbecue smoker;

a notification generator configured to generate notifications that are to be sent to one or more software applications being executed at a mobile device, the one or more software applications being configured to control one or more functions of the electronically-controlled appliance;

a transmitter configured to send at least one generated notification to at least one of the software applications selected from the one or more software applications, the generated notification indicating that the cloud computing platform is communicably connected to the electronically-controlled appliance;

the receiver receiving a second input from the at least one software application indicating that one or more specified functions are to be performed on the electronically-controlled appliance; and

the transmitter sending one or more instructions to the electronically-controlled appliance to perform the one or more specified functions, the functions being interpreted and carried out by a hardware controller on the electronically-controlled appliance.

’720 patent at 15:36-16:2.

(FID at 8.)

The ’720 Patent Specification

As set forth in the FID:

The specification of the ’720 patent describes “a cloud computing platform” for “communicating with and controlling operation of electronically-controlled appliances.” ’720 patent at 4:25-27. In one embodiment, “a cloud service 301 links various devices including a smoker/grill 302 and a smart phone 303 or other electronic computing device.” Id. at 9:40-43.


The specification describes a “receiver 105” that is “configured to receive inputs from computing systems,” including a “first input 115 indicating that an electronically-controlled appliance is permitted to communicate with the cloud computing platform.” Id. at 7:27-31. The specification also describes a “notification generator 106” that is “configured to generate notifications (e.g., 112) that are to be sent to software applications such as software application 114 running on mobile computing device 113.” Id. at 7:32-36. The specification further describes a “transmitter 107” that “may be configured to send a generated notification 112 to software application 114, where the notification indicates that the cloud computing platform 101 is communicably connected to the electronically-controlled appliance 120.” Id. at 7:39-43.




The specification further describes a method “for communicating with and controlling operation of electronically-controlled appliances.” Id. at 11:47-49. Five steps of this method are depicted in Figure 5:




(FID at 4-7; see also Order No. 22, Construing Terms of the Asserted Claims of the Patents at Issue (“Claim Construction Order”) at 21-24 (July 28, 2021).)

Claim Constructions at the Commission

As set forth in the FID, relevant to claims 1 and 2 of the ’720 Patent:

The parties agreed to construe the term “cloud computing platform” to mean “a platform for enabling on-demand network access to a shared pool of configurable computing resources.” Order No. 22 at 27. In the Markman order, the term “a first input indicating that the electronically-controlled appliance is in network communication” was construed to mean an input indicating that the appliance is communicating over a network. Id. at 28-30. The term “notification indicating that the cloud computing platform is communicably connected” was construed to mean a notification indicating that the grill is connected for communication. Id. at 30-32.

(FID at 13; see also Claim Construction Order at 27-32.).

Headquarters Ruling H325434

In HQ H325434, CBP held that the CCV and LCV grill systems do not practice claim 1 of the ‘720 patent and therefore are not subject to the exclusion order issued by the ITC in connection with Investigation No. 337-TA-1237. HQ H525434 found that neither of the systems practiced the limitation requiring “a transmitter configured to send at least one generated notification to at least one of the software applications selected from the one or more software applications, the generated notification indicating that the cloud computing platform is communicably connected to the electronically-controlled appliance.” Specifically, the ruling concluded that “[g]eneration, as understood within its ordinary and customary meaning, requires creation, not merely forwarding information in an unmodified, undecrypted manor. Throughout the ‘720 patent, whenever the term ‘generate’ is used, it is in conjunction with the creation of an instruction or the creation of a notification from the server to the app.” See H325434 at 22.

C. Reconsideration Request

On October 11, 2022, Traeger submitted a request for reconsideration of HQ H325434 with regard to the CCV grill system. In its submission, Traeger stated that there were two fundamental legal errors at issue in H325434. First, Traeger argues that there is a contradiction with two findings in the Commission’s final determination as related to (a) [XXXXX] and (b) the sending of a message in response to a request as being different from the generation of a notification that the claims require. Second, Traeger takes the position that the articles at issue are subject to the exclusion order under the doctrine of equivalents, as applied by CBP. See Traeger Reconsideration Request at 1. As noted above, Traeger has not requested reconsideration with respect to the LCV grill system.

On October 14, 2022, the EOE Branch held a conference call with Traeger and GMG regarding the procedural steps to be taken in connection with this reconsideration request. On October 17, 2022, the EOE Branch sent an email that established the following and set forth the procedural schedule for this reconsideration proceeding:

As noted in CBP HQ Ruling H242026 (dated June 24, 2013), “CBP does not require a compelling reason to revoke a prior ruling, even if there has been reliance on the ruling in question. Instead, the standard for CBP modification or revocation requires establishment that the prior ruling was issued in error or that it is not in accord with the current views of the agency.” Id. at 6 (citing International Custom Products v. United States, 549 F. Supp. 2d 1384, 1394-95 (Ct. Int’l Trade, 2008)).

Moreover, under CBP HQ Ruling H284032 (dated April 7, 2017), “[w]hen CBP undertakes review to determine if an issued ruling letter is in error based on a request from a person outside of CBP, the burden to establish that the ruling letter is incorrect, either legally or factually, falls on the person seeking to have that ruling letter modified or revoked.” Id. at 39 (emphasis added).

Accordingly, as the party requesting reconsideration pursuant to 19 C.F.R. 177.12, Traeger bears the burden to establish that HQ Ruling H325434 is legally or factually incorrect.  In light of the burden allocated in this reconsideration proceeding, the EOE Branch establishes the procedural schedule below:

GMG’s Response Brief is due by close of business (no later than 11:59pm eastern) on November 2nd (11/02/22); Traeger’s Reply Brief is due by close of business (no later than 11:59pm eastern) on November 9th (11/09/22); Target date for the EOE Branch to issue its reconsideration ruling is November 18th (11/18/22).

See EOE Branch Email (dated October 17, 2022).

Additionally, the EOE Branch denied Traeger’s request for interim revocation of HQ H325434 during the pendency of the reconsideration proceeding. Specifically, the EOE Branch reiterated that:

CBP does not require a compelling reason to revoke a prior ruling … [and] “Customs may modify or revoke an interpretive ruling … that has been in effect for less than 60 calendar days by simply giving written notice of the modification or revocation to the person to whom the original ruling was issued[.]” 19 C.F.R. 177.12(b). Accordingly, under the Customs regulations, during the 60-day period referenced above, CBP is invested with broad discretion to take action it considers appropriate in the sound administration of the Customs laws, including 19 U.S.C. 1337. At this stage in the reconsideration proceeding, the EOE Branch declines to exercise that discretion to revoke HQ Ruling H325434 but may avail itself of this authority before issuance of the reconsideration ruling, if warranted based on further reflection or in view of the developing administration record.

On this point, neither party during the inter partes proceeding, and including Traeger’s request for reconsideration, identified the standard that CBP applies with respect to the doctrine of equivalents when administering an exclusion order under 19 U.S.C. 1337. See CBP HQ Ruling H284032 at 26. The EOE Branch invites the parties, in their submissions pursuant to the procedural schedule established above, to address application of this standard to the question presented in HQ Ruling H325434 that is currently under reconsideration.

See EOE Branch Email (dated October 17, 2022).

GMG submitted its response brief according to the above-referenced schedule. In its submission, GMG acknowledged that the ITC did not expressly refer to [XXXXX]. See GMG Response at 2. GMG argued that the ITC referred to [XXXXX]. Id. at 8. ISSUES

Whether CBP HQ Ruling H325434 contradicted any Commission findings in determining that the CCV grill system is not infringing and therefore not subject to the exclusion order Whether the articles at issue are subject to the exclusion order under the doctrine of equivalents, as applied by CBP

LEGAL FRAMEWORK

Section 337 Exclusion Order Administration

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

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

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

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

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

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

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

Determining patent infringement requires two steps. Advanced Steel Recovery, LLC v. X-Body Equip., Inc., 808 F.3d 1313, 1316 (2015). The first is to construe the limitations of the asserted claims and the second is to compare the properly construed claims to the accused product. Id. To establish literal infringement, every limitation recited in a claim must be found in the accused product whereas, under the doctrine of equivalents, infringement occurs when there is equivalence between the elements of the accused product and the claimed elements of the patented invention. Microsoft Corp. v. GeoTag, Inc., 817 F.3d 1305, 1313 (Fed. Cir. 2016). One way to establish equivalence is by showing, on an element-by-element basis, that the accused product performs substantially the same function in substantially the same way with substantially the same result as each claim limitation of the patented invention, which is often referred to as the function-way-result test. See Intendis GmbH v. Glenmark Pharms., Inc., 822 F.3d 1355, 1361 (Fed. Cir. 2016).

As for the first step above, “claim construction is a matter of law.” SIMO Holdings, Inc. v. H.K. uCloudlink Network Tech., Ltd., 983 F.3d 1367, 1374 (Fed. Cir. 2021). Moreover, the ultimate construction of a claim limitation is a legal conclusion, as are interpretations of the patent’s intrinsic evidence (the patent claims, specifications, and prosecution history). UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 822 (Fed. Cir. 2016) (citing Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841, 190 L. Ed. 2d 719 (2015).

“Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges.” Id. at 1314. In others, courts look to public sources such as “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Id.

“To begin with, the context in which a term is used in the asserted claim can be highly instructive.” Phillips, 415 F.3d at 1314 (“To take a simple example, the claim in this case refers to ‘steel baffles,’ which strongly implies that the term ‘baffles’ does not inherently mean objects made of steel.”). The context in which a claim term is used also includes the full chain of dependence as well as the remaining suite of claims and the written description. See Inline Plastics Corp. v. EasyPak, LLC, 799 F.3d 1364, 1371 (Fed. Cir. 2015) (“Since the specification explicitly mentions the ‘alternative’ . . . there can be no debate concerning the application of the doctrine of claim differentiation.”).

The second step to establish infringement involves a comparison of the claims, as properly construed, to the accused product, which is a question of fact. Apple Inc. v. Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1040 (Fed. Cir. 2016) (en banc).

C. CBP Reconsideration of Rulings Under 19 C.F.R. 177

CBP, within the confines of its role as set forth above, issues administrative rulings pursuant to 19 C.F.R. Part 177 that address the admissibility of articles in light of exclusion orders under Section 337. This part of the regulations, as a general matter, covers the issuance of rulings to importers and other interested parties. The various sections therein describe the situations in which a ruling may be requested, the procedures to be followed in requesting a ruling, the conditions under which a ruling will be issued, the effect of a ruling when it is issued, and the publication of a ruling after its issuance. See 19 C.F.R. Part 177.

A ruling letter issued under the provisions of this part represents the official position of CBP with respect to the particular transaction or issue described therein and is binding on all CBP officials until modified or revoked. See 19 C.F.R. §177.9(a). The authority for CBP to modify or revoke a ruling stems from 19 U.S.C. § 1625, as promulgated in 19 C.F.R. §177.12, which establishes the procedures CBP must follow to take such an action. See International Custom Products, Inc. v. United States, 549 F. Supp. 2d 1384, 1395 (Ct. Int’l Trade, 2008) (noting the extensive modifications by Congress to 19 U.S.C. § 1625 in 1993 through the Customs Modernization Act).

As noted above, CBP does not require a compelling reason to revoke a prior ruling, even if there has been reliance on the ruling in question. Instead, the standard for CBP modification or revocation requires establishment that the prior ruling was issued in error or that it is not in accord with the current views of the agency. See 19 C.F.R. §177.12(a); See also International Custom Products, 549 F. Supp. 2d at 1394-95. With this framework provided, the decision now turns to the question of whether Traeger has established that HQ H325434 was issued in error.

LAW AND ANALYSIS

Whether CBP HQ Ruling H325434 contradicted any Commission findings in determining that the CCV grill system is not infringing and therefore not subject to the exclusion order Traeger argues that HQ H325434 contains two contradictions with findings of the Commission, as follows: (a) [XXXXX] and (b) [XXXXX].

Traeger points to the fact that [XXXXX]. See Traeger Request for Reconsideration at 3. [XXXXX] Id. In its response, GMG acknowledged that [XXXXX]. See GMG Response at 2. (November 2, 2022). GMG points to the fact that at no time did the Commission ever evaluate [XXXXX]. Id at 5.

Both Traeger and GMG are correct in that the Commission did not explicitly state [XXXXX]. At no point in the underlying investigation was the question at issue in this reconsideration proceeding presented to the Commission since the CCV grill system at issue here includes [XXXXX]. The CCV grill system at issue here and in HQ H325434, as modified from the legacy devices before the Commission, does not pose the same infringement question, such that the issue now in front of CBP was never presented to the Commission. [XXXXX].

With regard to that infringement analysis, the argument that [XXXXX] is sufficient to meet the generation limitation ignores the primary basis that the EOE Branch relied on in finding the CCV grill system not to infringe. The patent has multiple claim limitations that Traeger claims are met by [XXXXX]. As mentioned in HQ H325434,

[i]n claim 1 of the ‘720 patent, communication between the grill, server, and app is addressed by “a receiver configured to receive inputs from one or more computing systems” and “the receiver receiving a second input from at least one software application.” See ‘720 patent at 16:42-63. This is a distinct claim limitation from the generation limitation and it would be improper to accord them the same meaning. “Different claim terms are presumed to have different meanings.” Bd. Of Regents of the Univ. of Tex. Sys. V. BENQ Am. Corp., 533 F.3d 1362, 1371 (Fed. Cir. 2008).

This differentiation in claim terms is not limited to the above referenced case. In Becton, Dickinson & Co. v. Tyco Healthcare Grp., 616 F.3d, 1249, it was described as “claims must be interpreted with an eye toward giving effect to all terms in the claim.” Id. at 1257. This is further cited in Hamilton Beach Brands, Inc. v. F’Real Foods, LLC, 908 F.3d 1328, Simpleair, Inc. v. Sony Ericsson Mobile Communications AB, 820 F.3d 419, and Gemalto S.A. v. HTC Corp., 754 F.3d 1364. Because these different claim terms were not addressed by the ITC [XXXXX], the CBP ruling did not contradict the Commission’s infringement finding but, instead, placed emphasis on the distinction not squarely addressed in Traeger’s submissions that the claim limitation reciting “generation” requires creation rather than “merely forwarding information in an unmodified, undecrypted manor.” H325434 at 22. Without that creation in the CCV grill system, the relevant claim is not satisfied and the articles at issue are not infringing or subject to the exclusion order.

Whether the articles at issue are subject to the exclusion order under the doctrine of equivalents, as applied by CBP

In CBP HQ H284032 (dated April 7, 2017), CBP established the standard for applying the doctrine of equivalents when administering an exclusion order under Section 337: CBP will not extend the doctrine of equivalents when administering an exclusion order pursuant to section 337 except in two instances. The first is where the Commission found a violation of section 337, during the underlying investigation, through infringement under the doctrine. The second is, in those cases when the Commission has found only literal infringement of the asserted patents, where a respondent identified in an exclusion order fails to show a prima facie case that the doctrine does not apply to its new or modified article under the “function-way-result” or “insubstantial differences” test based on the administrative record before CBP. HQ H284032 at 26. For a party to establish “a prima facie case,” it is not required to reach “a conclusion on the ultimate issue.” Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1348 (Fed. Cir. 2012); see also HQ H326593 (dated September 30, 2022). Instead, the party with such a burden must simply “present evidence ‘sufficient to establish a fact or raise a presumption [regarding the relevant issue] unless disproved or rebutted.’” Transocean at 1348. (quoting Black’s Law Dictionary (9th ed 2009)). We find that GMG has established a prima facie case that the doctrine of equivalents does not subject the articles at issue to exclusion from entry and that Traeger has not shown otherwise.

As noted above, neither party identified or analyzed the doctrine of equivalents under the standard articulated above during the inter partes proceeding resulting in HQ H325434. However, at the EOE Branch’s invitation following Traeger’s reconsideration request, each party addressed this standard and noted that the ITC did not find infringement based on the doctrine of equivalents. As such, the first instance mentioned in the standard above does not apply to the present case. As for the second instance, Traeger advances three arguments as to why GMG did not meet its burden to show a prima facie case of non-infringement: (1) [XXXXX]; (2) GMG has misapplied the function-way-result and insubstantial differences tests and (3) GMG’s vitiation argument is not legally credible because, even under GMG’s mistaken view of the facts in this matter, the CCV still literally satisfies almost the entire claim limitations. For its side, GMG points to the submission filed with its initial ruling request as providing a prima facie case foreclosing application of the doctrine of equivalents by CBP when administering this exclusion order under Section 337.

As for Traeger’s first argument, this reconsideration ruling has already found above that, while the relevant claim limitation does not recite a [XXXXX]. It is therefore not the case that GMG’s argument concerning [XXXXX] is without any relevance to the infringement question presented and this applies with equal force to the question of literal infringement and the prima facia case that would foreclose application of the doctrine of equivalents, for CBP’s purposes, under Section 337.

As for Traeger’s second argument, it focuses on GMG’s purported misapplication of the function-way-result and insubstantial differences tests. In particular, Traeger argues that “[t]here is no genuine dispute that [XXXXX]. At most, this is an insubstantial difference that cannot avoid infringement under the doctrine of equivalents.” See Traeger Reply at 11 (quoting Traeger Request at 7-8) (internal citations omitted). However, given the significance placed on the need for “generation” that has informed the analysis throughout the initial ruling and this reconsideration ruling, it is difficult to see how this difference should be properly considered as insubstantial. In any case, the difference is substantial enough that, for CBP’s administration of the exclusion order, it qualifies as a prima facia case of noninfringement such that CBP will not extend the doctrine of equivalents on this basis.

Lastly, Traeger argues that “GMG’s vitiation argument also is not legally credible” because “the GMG System as a whole still performs the same function (generating and sending a notification to the app indicating the grill’s connectivity) to achieve the same result [XXXXX], and the end user notices no difference at all.” Traeger Reply at 12 (emphasis in the original). However, as the Supreme Court noted in Warner-Jenkinson, “[e]ach element contained in a patent claim is deemed material to defining the scope of the patented invention, and thus the doctrine of equivalents must be applied to individual elements of the claim, not to the invention as a whole. It is important to ensure that the application of the doctrine, even as to an individual element, is not allowed such broad play as to effectively eliminate that element in its entirety.” Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29 (1997) (emphasis added). As such, “[t]he determination of equivalence should be applied as an objective inquiry on an element-by-element basis.” Id. at 40. It is the individual features of the CCV grill system that must be compared with the claim limitations on an element-by-element basis to determine if each of those claim limitations read onto the articles at issue, literally or under the doctrine of equivalents. With GMG’s modifications to the CCV grill system that are at issue in the initial ruling and this reconsideration ruling, it has established a prima facia case that extending the doctrine of equivalents in this matter, where the claimed “generation” is lacking, could result in vitiation. Therefore, taking all of the above into consideration, CBP will not refuse entry to the articles at issue based on its application of the doctrine of equivalents under Section 337.

HOLDING

We affirm that GMG has established that the CCV grill system does not infringe claim 1 of the ’720 patent or the articles at issue are not subject to the exclusion order under the doctrine of equivalents. Moreover, Traeger has not carried its burden to show that HQ H325434 was issued in error. Accordingly, we find that the articles at issue are not subject to the limited exclusion order issued as result of Investigation No. 337-TA-1237.

The decision is limited to the specific facts set forth herein. If articles differ in any material way from the articles at issue described above, or if future importations vary from the facts stipulated to herein, this decision shall not be binding on CBP as provided for in 19 C.F.R. §§ 177.2(b)(1), (2), (4), and 177.9(b)(1) and (2).

EFFECT ON OTHER RULINGS: Headquarters Ruling Letter H325434, dated September 30, 2022, is AFFIRMED.


Sincerely,

Dax Terrill
Chief, Exclusion Order Enforcement Branch

CC: Mr. David Lowe
Lowe Graham Jones PLLC
1325 Fourth Avenue
Suite 1130
Seattle, WA 98101
[email protected];
[email protected]