• HQ H329729
• Dec 01, 2023

• Type : 19 U.S.C. § 1337; Unfair Competition • HTSUS :
•  Related:   H328569; H284032; H326593   

HQ H329729 December 1, 2023
OT:RR:BSTC:EOE H329729 JRW

Mr. David M. Farnum
Anova Law Group, PLLC
21495 Ridgetop Circle, Suite 300
Sterling, VA 20166

VIA EMAIL: [email protected]

RE: Ruling Request; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-1174; Certain Toner Cartridges, Components Thereof, and Systems Containing Same

Dear Mr. Farnum, Pursuant to 19 C.F.R. Part 177, the Exclusion Order Enforcement Branch (“EOE Branch”), Regulations and Rulings, U.S. Customs and Border Protection (“CBP”) issues this administrative ruling in response to Zhuhai Yuancheng Digital Technology Co., Ltd.’s (“YDT”) request for an administrative ruling, dated November 14, 2022, which included Exhibits A-I (collectively, the “Ruling Request”). We find that YDT has failed to establish that the articles in question are not subject to the general exclusion order from the above-referenced investigation. We further note that determinations of the Commission resulting from the underlying investigation or a related proceeding under 19 C.F.R. Part 210 are binding authority on CBP and, in the case of conflict, will by operation of law modify or revoke any contrary CBP ruling or decision pertaining to administration of an exclusion order issued under Section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337.

This administrative ruling is the result of a request under 19 C.F.R. Part 177 and was conducted on an inter partes basis with the consent of the parties. The process involved the two parties with a direct and demonstrable interest in the question presented by the ruling request: (1) your client, YDT, the ruling requester and foreign manufacturer of the articles in question, and (2) Brother Industries, Ltd.; Brother International Corporation (U.S.A.); and Brother Industries (U.S.A.), Inc. (collectively, “Brother”), the complainant in the underlying investigation. See, e.g., 19 C.F.R. § 177.1(c). The parties were asked to clearly identify confidential business information, including information subject to the administrative protective order from the underlying investigation, with [[red brackets]] in their submissions to the EOE Branch. See 19 C.F.R. §§ 177.2, 177.8; see also, EOE Branch Email to Parties, dated November 17, 2022. If there is additional information in this administrative ruling not currently bracketed in red [[ ]] that either party believes constitutes confidential business information, and should be redacted from the published ruling, then the parties are asked to contact the EOE Branch within ten (10) working days of the date of this administrative ruling. See, e.g., 19 C.F.R. Part 177.8(a)(3).

Please note that disclosure of information related to administrative rulings under 19 C.F.R. Part 177 is governed by, for example, 6 C.F.R. Part 5, 31 C.F.R. Part 1, 19 C.F.R. Part 103, and 19 C.F.R. Part 177.8(a)(3). See, e.g., 19 C.F.R. Part 177.10(a). In addition, CBP is guided by the laws relating to confidentiality and disclosure, such as the Freedom of Information Act (“FOIA”), as amended (5 U.S.C. § 552), the Trade Secrets Act (18 U.S.C. § 1905), and the Privacy Act of 1974, as amended (5 U.S.C. § 552a). A request for confidential treatment of information submitted in connection with a ruling requested under 19 C.F.R. Part 177 faces a strong presumption in favor of disclosure. See, e.g., 19 C.F.R. Part 177.8(a)(3). The person seeking this treatment must overcome that presumption with a request that is appropriately tailored and supported by evidence establishing that: the information in question is customarily kept private or closely-held and either that the government provided an express or implied assurance of confidentiality when the information was shared with the government or there were no express or implied indications at the time the information was submitted that the government would publicly disclose the information. See Food Marketing Institute v. Argus Leader Media, 588 U. S. ___, ___, 139 S. Ct. 2356, 2366 (2019) (concluding that “[a]t least where commercial or financial information is both customarily and actually treated as private by its owner and provided to the government under an assurance of privacy, the information is ‘confidential’ within the meaning of exemption 4.”); see also, e.g., U.S. Department of Justice, Office of Information Policy: Step-by-Step Guide for Determining if Commercial or Financial Information Obtained from a Person is Confidential Under Exemption 4 of the FOIA (updated 10/7/2019) and OIP Guidance: Exemption 4 after the Supreme Court’s Ruling in Food Marketing Institute v. Argus Leader Media (updated 10/4/2019).

BACKGROUND

ITC Investigation No. 337-TA-1174

The Commission instituted Investigation No. 337-TA-1174 on September 3, 2019, based on a complaint filed by Brother. Certain Toner Cartridges, Components Thereof, and Systems Containing Same, Investigation No. 337-TA-1174, EDIS Doc. ID 728235, Commission Opinion (Public) (December 17, 2020) (“Comm’n Op.”) at 2 (citing 84 Fed. Reg. 49762-63 (Sept. 23, 2019)). The complaint, as supplemented, alleged violations of section 337 by reason of infringement of claims 1-7 and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”); claims 1, 7-11, 15, and 16 of U.S. Patent No. 9,575,460 (“the ’460 patent”); claims 1, 4, 5, and 9 of U.S. Patent No. 9,632,456 (“the ’456 patent”); claims 1-5, 10, and 12-15 of U.S. Patent No. 9,785,093 (“the ’093 patent”); and claims 1, 3, 5, 7-12, and 18 of U.S. Patent No. 9,846,387 (“the ’387 patent”). Id. The Commission’s notice of investigation named thirty-two (32) respondents, including those that participated in the investigation: Aster Graphics, Inc. of Riverside, California (“Aster”); Cartridge Evolution, Inc. of Brooklyn, New York (“Cartridge Evolution”); E-Z Ink Inc. of Brooklyn, New York (“E-Z Ink”); Linkyo Corp. of La Puente, California (“Linkyo”); New Era (“New Era”); OW Supplies (“OW”); Theresa Meng (“Theresa”); Triple Best (“Triple”); and V4ink (“V4ink”). Id. at 2-3. The notice of investigation also named the Office of Unfair Import Investigations (“OUII”) as a party. Id. at 3.

During the course of the investigation, respondents AMI, Aster, Cartridge Evolution, E-Z Ink, Globest, and Linkyo introduced certain newly designed toner cartridges as replacements for the initially accused products, and Brother stipulated that these “will not be covered by any remedial order that issues in this Investigation.” Comm’n Op. at 23-25; see also Certain Toner Cartridges, Components Thereof, and Systems Containing Same, Investigation No. 337-TA-1174, EDIS Doc. ID 716848, Initial Determination (Public) (August 10, 2020) (“ID”) at 34, unreviewed, July 23, 2020, EDIS Doc. ID 719096 (85 Fed. Reg. 56628-31, September 4, 2020); and Comm’n Op. at 27 n.14.

Cartridge Evolution, E-Z Ink, Linkyo, and others were terminated from the investigation by consent orders. Comm’n Op. at 3. AMI, Globest, and Intercon, among others, ultimately defaulted. Comm’n Op. at 3-4. As the investigation continued, the only participating respondent remaining (Aster), Brother, and OUII all agreed that, for purposes of the accused products in the investigation, no claim terms in the asserted patents required a construction beyond their plain and ordinary meaning. See Certain Toner Cartridges, Components Thereof, and Systems Containing Same, Investigation No. 337-TA-1174, EDIS Doc ID 696586, Joint Notice of Disputed Claim Terms (Public) (Dec. 6, 2019) .

On July 23, 2020, the presiding administrative law judge (“ALJ”) issued an initial determination (Order No. 40), granting Brother’s motion for summary determination, finding a violation by Aster and the defaulting respondents, and finding that the accused products practiced the asserted claims. See Comm’n Op. at 4-5. Aster had not opposed Brother’s summary determination motion, even though Aster’s products were subject to the motion, and OUII filed briefing in support of the motion. Id. at 3-5. In finding infringement, the ALJ had considered three groups of representative products identified by Brother’s experts. ID at 118-22. For each representative product, Brother had provided “detailed claim charts” containing a “limitation-by-limitation analysis,” which the ALJ found to be “substantial, reliable, and undisputed evidence” of infringement. ID at 123-34.

On September 8, 2020, the Commission requested written submissions on remedy, the public interest, and bonding, which it received from Brother, Aster, and OUII. See Comm’n Op. at 5. In so briefing, Aster requested that any remedial order include an express carve-out for its newly designed toner cartridges that Brother had stipulated it did not accuse of infringement in the underlying investigation. Id. at 23-?25. Brother responded that an express carve-out would be “redundant and unnecessary” to the extent that the order would include “the general exception for imports made ‘with the permission[] of the patentee.’” Id. at 25-26. OUII agreed with Brother because “‘express carve outs in exclusion orders [are] only for products that were found to be non-infringing,’ but that here, the newly designed products were not found to be non-infringing.” Id. at 26-27 (emphasis in the original). Additionally, OUII noted that “the ‘Aster Joint Stipulation and Agreement do not contain . . . limiting language’ including in agreements with other respondents . . . restrict[ing] permissible importation of Aster’s newly designed products to any particular entity.’” Id. at 27. The Commission agreed with Brother and OUII, holding that “it [was] unnecessary to include an express exemption . . . as these products are already the subject of the Joint Stipulation and Agreement between the parties.” Id. at 28. The Commission stated that the Aster Joint Stipulation and Agreement was limited to articles that have “(1) compatibility with Brother’s identified toner cartridges; (2) conformity with identified configurations specified in the referenced Tables of the Agreement; and (3) include branded toner cartridges ‘with Aster-, Arcon-, Aztech-, CMYBabee-, Cool Toner-, EPS-, Greensky-, Ink4work-, and Toner Bank-brands.’” Id. at 29.

The Commission noted that a GEO was necessary because of concerns that infringing toner cartridges could be mass produced within a month, that “it [was] likely that the same entities [Respondents] would continue online sales and importation using different names,” and that manufacturers of toner cartridges could not be identified by the retail branding. See Comm’n Op. at 17-18 (quoting ID at 137). Thus, among other things, the Commission issued a GEO prohibiting the importation of certain toner cartridges, components thereof, and systems containing same that infringe one or more of claims 1-5, 10, and 12-15 of the ’093 patent; claims 1, 7-11, 15, and 16 of the ’460 patent; claims 1-7, and 9 of the ’856 patent; claims 1, 4, 5, and 9 of the ’456 patent; and claims 1, 3, 5, 7-12, and 18 of the ’387 patent. Id. at 34. Paragraph 2 of the 1174 GEO identified “[t]he toner cartridges, components thereof, and systems containing the same that are subject to this Order (i.e., ‘covered articles’) [] as follows: laser toner cartridges designed for use with Brother printers, fax machines, and MFCs (‘Multi-Function Centers’).”

19 C.F.R. Part 177 Ruling Request

Procedural History

On November 14, 2022, YDT submitted a letter to the EOE Branch requesting an administrative ruling pursuant to 19 C.F.R. Part 177, which included Exhibits A-I (collectively, the “Ruling Request”). YDT requested a ruling that its cartridges (“article at issue”) are not subject to the 1174 GEO because they do not infringe any claims of the ‘456, ‘856, ‘387, ‘093, and ‘460 patents. YDT sent a copy of the ruling request to counsel for Brother, as the complainant in the 1174 investigation and the other interested party in the question presented in this inter partes proceeding. Brother received the copy of the ruling request on November 14, 2022.

On November 16, 2022, the EOE Branch held a conference call with YDT and Brother during which both parties agreed to the ruling request being administered by the EOE Branch on an inter partes basis and to exchange submissions by email. See EOE Branch Email to Parties, dated November 18, 2022. The EOE Branch further provided – in the sound administration of the Customs laws and, particularly, to comply with the statutory mandate in 19 U.S.C. § 1337(n) regarding the prohibition against disclosure of confidential business information – that YDT would need to sign a waiver agreement (attached to this administration ruling) for continued participation in this inter partes proceeding. Id. The reason, as the EOE Branch communicated to YDT, is that its counsel was not signed onto the administrative protective order (“APO”) from the underlying investigation. Id. (“The parties are asked to clearly identify confidential information with [[red brackets]] in all of their submissions (including any exhibits) to the EOE Branch. This includes information subject to the administrative protective order in the underlying ITC investigation. We understand that Brother is signed onto the administrative protective order, and that YDT is not signed onto the administrative protective order but has agreed to sign the attached waiver to continue participating in the proceeding.”) (emphasis added). On November 22, 2022, the parties jointly submitted a proposed schedule for administration of this inter partes proceeding, executed nondisclosure agreement, and YDT provided the signed Waiver for Continued Participation. See YDT Email to EOE Branch, dated November 22, 2022. The EOE Branch finalized the procedural schedule in its response to the parties. See EOE Branch Email to Parties, dated November 22, 2022.

On December 9, 2022, Brother provided its response to YDT’s ruling request (“Brother Response”), which included Exhibits A-H. On December 16, 2022, YDT provided its reply to Brother’s response (“YDT Reply”). On December 23, 2022, Brother provided its sur-reply to YDT’s reply, which included Exhibits I and J (“Brother Sur-Reply”). On January 9, 2023, the EOE Branch conducted an oral discussion with the parties. See, e.g., EOE Branch Email to Parties, dated January 9, 2023, for which Brother submitted a presentation (“Brother Oral Discussion Presentation”). After the oral discussion, the EOE Branch sought clarification from the parties regarding the following questions:

1. Whether YDT was a named respondent in the underlying investigation, is a related party to any named respondent in the 337-TA-1174 investigation (the “1174 investigation”), and whether YDT sold to any named respondent in the ‘1174 Investigation any products that were legacy products adjudicated by the Commission in the ‘1174 investigation; and

2. Whether any portion of YDT’s force transmitting shaft protrudes outside of YDT’s cartridge frame?

Id.

Furthermore, the EOE Branch sought both parties’ input regarding the following procedural considerations:

1. Their positions regarding the submission to the EOE Branch of any confidential business information (“CBI”) subject to the administrative protective order at the Commission that may be relevant to any of the questions above; and

2. Their positions on whether the parties should have the opportunity to file responsive briefs to the opposing side’s post-oral discussion submissions and, if so, the proposed date for such responsive submissions.

Id.

On January 13, 2023, YDT and Brother submitted their responses to the above questions. Notably, YDT provided the following response to the EOE Branch’s first question as to the procedural considerations: “YTD [sic] contends that it should have an opportunity to respond to any arguments that would be affected by such information, if it is submitted.” YDT Email to EOE Branch, dated January 11, 2023. Brother’s response to the EOE Branch’s first question regarding these procedural considerations included, in relevant part, that:

Brother maintains YDT should not have an opportunity to submit its own information in response to any information identified by Brother regarding whether YDT is related to a respondent in the ‘1174 Investigation or whether YDT sold to any named respondent in the ‘1174 Investigation any products that were legacy products adjudicated by the Commission in the ‘1174 investigation.

Brother Email to EOE Branch, dated January 11, 2023.

The EOE Branch considered both parties’ views and, in response, noted that the waiver agreement that YDT signed on November 22, 2022, provided in relevant part:

CBP and Brother are prohibited under 19 U.S.C. § 1337(n) from, inter alia, disclosing any confidential business information (“CBI”) from the underlying investigation subject to the APO and, to the extent that CBP or Brother may need to rely on a Commission determination or finding that was redacted from the publicly available record, they cannot disclose such CBI during this proceeding and CBP would redact the same from any ruling issued to YDT under 19 C.F.R. § 177. EOE Branch Email to Parties, dated January 13, 2023 (quoting Waiver Agreement at 1).

Accordingly, the EOE Branch established that, given YDT’s waiver, “any CBI subject to the APO cannot be provided or disclosed to YDT, and if Brother includes such information in its post-oral discussion submission to the EOE Branch, it must bracket that information and redact it from the version of its submission it provides to YDT.” Id.

The EOE Branch further modified the remainder of the procedural schedule for the proceeding, including allowing for post-oral discussion submissions to be submitted by January 20, 2023, and allowing for YDT and Brother to file responsive briefs by January 27, 2023, to the opposing side’s post-oral discussion submissions. On January 20, 2023, YDT and Brother submitted their post-oral discussion submissions, with Brother’s submission including Exhibits K-Z and no exhibits with YDT’s submission (respectively, “Brother Post-Discussion Submission” and “YDT Post-Discussion Submission”). Per the EOE Branch’s instruction on January 13, 2023, Brother submitted a confidential version of its post-oral discussion submission to the EOE Branch only and submitted a redacted version to YDT that removed the relevant CBI. See Brother Email to EOE Branch, dated January 20, 2023.

After reviewing Brother’s Post-Discussion Submission, the EOE Branch noted that a page number citation from the administrative record in the underlying investigation, specifically to the ALJ ID, was redacted. See EOE Branch Email to Parties, dated January 23, 2023. The EOE Branch asked Brother for the basis of this redaction, noting that without further clarification, it would consider the redaction of a page number, without more, to constitute public information. See id. Brother responded that the basis for this redaction was its belief that “it may be possible to determine that the ID is referring to [a specific] supplier[] of infringing products to U.S. customers and certain respondents on the cited page of the ID based on the unredacted portions of both the ID and Brother’s brief.” See Brother Email to EOE Branch, dated January 23, 2023.

The EOE Branch gave further consideration to that position and, after consultation with the Commission, responded to Brother that, as a general matter, it “does not consider citations—including page numbers—to an otherwise publicly available document or administrative record to constitute confidential business information.” See EOE Email to Brother, dated January 25, 2023. It further noted that any disagreement with the EOE Branch’s position on this point should be directed to the Commission. See id. Lastly, it provided that:

In future inter partes proceedings under 19 CFR 177, the EOE Branch will expect the relevant party in the same unique circumstances presented by this proceeding (i.e., where the other party to the proceeding was not a respondent and is not represented by counsel signed onto the Commission’s administrative protective order) to provide unredacted citations to the publicly available document or administrative record in question. However, for this proceeding, given the unique circumstances noted above and that this presented a question of first impression, the EOE Branch instead will provide the citation, and only that page number from the public version, to YDT.

Id.

The EOE Branch then provided the citation to the relevant page number from the public version of the ID to YDT. See EOE Branch Email to YDT, dated January 25, 2023. On Friday, January 27, 2023, both YDT and Brother submitted their responsive submissions to the post-discussion submissions, with Brother’s submission including Exhibit AA and YDT’s submission not including any exhibits (respectively, “Brother Post-Discussion Responsive Submission” and “YDT Post-Discussion Responsive Submission”).

On Monday, January 30, 2023, Brother sent an email to the EOE Branch pointing out that only Section III of YDT’s post-discussion responsive submission answers the EOE Branch’s questions in its email to the parties from January 9, 2023, and as such the other portions of YDT’s submission should be disregarded. See Brother Email to EOE Branch, dated January 30, 2023. Upon reviewing Brother’s email and YDT’s post-discussion responsive submission, the EOE Branch sent an email to the parties stating that it would not take into consideration YDT’s post-discussion responsive submission except for Section III. See EOE Branch Email to Parties, dated January 31, 2023.

The Patents At Issue

Of the five patents included in the 1174 GEO, the parties only dispute whether the articles at issue infringe the ’093 patent. See, e.g., Brother Response at 1; YDT Reply at 1. Specifically, in this inter partes proceeding, Brother has only alleged that the articles at issue infringe claim 1 of the ’093 patent. See id.

The technology at issue concerns laser toner cartridges designed for use with Brother printers, and the asserted claims of the ’093 patent are directed to various aspects of a detection gear. See Comm’n Op. at 6, 7. Moreover, the patent generally relates to a developing cartridge that is reduced in size and can be prevented from being damaged. See ’093 patent, col. 1, ll. 50-52; see also Comm’n Op. at 8.

Claim 1 is the only independent claim of the ’093 patent. As emphasized for purposes of the ruling request, it reads:

A developing cartridge comprising:

a developing roller rotatable about a first axis extending in a direction, the developing roller including a developing roller shaft extending in the direction, the developing roller shaft having a first end portion and a second end portion separated from the first end portion in the direction;

a housing configured to accommodate developing material therein, the housing having a first outer surface and a second outer surface separated from the first outer surface in the direction;

a bearing through which the first end portion is inserted, the bearing being positioned to the first outer surface;

a first shaft extending in the direction, the first shaft being positioned at an opposite side of the first outer surface relative to the bearing;

a coupling rotatable about the first shaft;

a second shaft extending in the direction, the second shaft being positioned to the second outer surface; and

a detection gear rotatable about the second shaft.

’093 patent at 23: 38-57 (emphasis added).

ISSUE

Whether YDT has met its burden to show that the articles at issue do not infringe claims 1-5, 10, or 12-15 of the ’093 patent, and thus are not subject to the general exclusion order issued in the 1174 investigation. See Ruling Request at 1.

LEGAL FRAMEWORK

Section 337 Exclusion Order Administration

The Commission shall investigate any alleged violation of section 337 to determine, with respect to each investigation conducted by it under this section, whether there is a violation of this section. See 19 U.S.C. § 1337(b)(1) and (c). If the Commission determines, as a result of an investigation under this section, that there is a violation of this section, it shall direct that the articles concerned, imported by any person violating the provision of this section, be excluded from entry into the United States unless the Commission finds based on consideration of the public interest that such articles should not be excluded from entry. See 19 U.S.C. § 1337(d)(1).

When the Commission determines that 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 patentee 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. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). However, it sometimes involves “evidentiary underpinnings” that require courts to resolve underlying factual disputes. See Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 331-32 (2015) (internal quotation marks omitted). For example, “when a written instrument uses ‘technical words or phrases not commonly understood,’” such words or terms may “give rise to a factual dispute,” and factual findings will “‘preced[e]’ the ‘function of construction.’” See id. at 837-38 (citing Great Northern R. Co. v. Merchants Elevator Co., 259 U.S. 285, 292 (1922)).

The words of a claim “are generally given their ordinary and customary meaning.” Vitronics Corp. v. Conceptronic, 90 F.3d 1576, 1582 (Fed. Cir. 1996). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (citing Vitronics, 90 F.3d at 1580). “The standards for finding lexicography and disavowal are exacting.” Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014). “To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning.’” Thorner, 669 F.3d at 1365. In such cases, the patentee must “‘clearly express an intent’ to redefine the term.” Id. Regarding disavowal, “[w]here the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.” Id. at 1366 (citing Scimed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001)) (internal quotation marks omitted).

The ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art at the time of the invention. See Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (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. Claim construction in those cases requires “little more than the application of the widely accepted meaning of commonly understood words.” Id.

“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, 415 F.3d at 1313. Such context constitutes intrinsic evidence which is necessary for claim construction. See id. at 1313-17. However, “there is sometimes a fine line between reading a claim in light of the specification, and reading a limitation into the claim from the specification.” Phillips, 415 F.3d at 1305 (citing Comark Communs., Inc. v. Harris Corp., 156 F.3d 1182, 1186-87 (Fed. Cir. 1998)) (internal quotation marks omitted). “To avoid importing limitations from the specification into the claims, it is important to keep in mind that the purposes of the specification are to teach and enable those of skill in the art to make and use the invention and to provide a best mode for doing so.” Id. at 1323. For example, even if “the only embodiments, or all of the embodiments, contain a particular limitation,” one may not use such limitation to “limit claims beyond their plain meaning.” See Evolusion Concepts, Inc. v. HOC Events, Inc., 22 F.4th 1361, 1367 (Fed. Cir. 2022).

In construing claim language, in addition to consulting the claims and specification of a patent, a court “should also consider the patent's prosecution history,” which is also considered intrinsic evidence. See Phillips, 415 F.3d at 1317 (citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995)) (internal quotation marks omitted). However, because the prosecution history represents an “ongoing negotiation between the PTO and the applicant,” it “often lacks the clarity of the specification” and is “less useful for claim construction purposes.” See id. Where further clarification on the scope of the patented invention, claim meaning, or the underlying science of the claim meaning is required after reviewing the intrinsic record, a court may need to consult extrinsic evidence. See Phillips, 415 F.3d at 1317, 1319. However, since extrinsic evidence is generally less reliable than the intrinsic record, it may not be used to contradict a claim meaning that is “unambiguous in light of the intrinsic evidence.” See id. at 1318, 1324.

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).

As noted above, under the doctrine of equivalents, “a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is ‘equivalence’ between the elements of the accused product or process and the claimed elements of the patented invention.” Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 21, (1997). “The doctrine of equivalents allows the patentee to claim those insubstantial alterations that were not captured in drafting the original patent claim but which could be created through trivial changes.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 733, (2002). “However, when a patent claim is narrowed during prosecution, prosecution history estoppel may limit application of the doctrine of equivalents.” O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1363 (Fed. Cir. 2008). “Infringement, whether literal or under the doctrine of equivalents, is a question of fact.” Advanced Steel Recovery, LLC v. X-Body Equip., Inc., 808 F.3d 1313, 1317 (Fed. Cir. 2015). Additionally, when administering an exclusion order under 19 U.S.C. 1337, CBP applies the standard with respect to the doctrine of equivalents as discussed below. See also CBP HQ Ruling H328569 (dated November 28, 2022).

LAW AND ANALYSIS

Whether YDT Has Carried Its Burden To Establish That The Articles At Issue Are Not Subject To The General Exclusion Order

In H284032, CBP articulated its standard for applying the doctrine of equivalents (“DOE”) when administering Section 337 exclusion orders:

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.

CBP HQ Ruling H284032 at 26 (dated April 7, 2017) (emphasis added).

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)). Sufficient evidence in this context includes that which the EOE Branch may rely on to determine that no reasonable factfinder “could conclude that an element of an accused device is equivalent to an element called for in the claim, or that the theory of equivalence to support the conclusion of infringement otherwise lacks legal sufficiency.” U.S. Philips Corp. v. Iwasaki Elec. Co., 505 F.3d 1371, 1378-79 (Fed. Cir. 2007).

Whether YDT Has Carried Its Burden To Show It Should Not Be Considered A Respondent For Purposes Of Applying The Doctrine Of Equivalents In The Context Of A General Exclusion Order Under Section 337

During the underlying investigation, the Commission found only literal infringement of the ’093 patent. YDT Reply at 2. Therefore, CBP will apply the second prong under the standard provided above. Accordingly, the next question is whether YDT should be considered a “respondent” to determine whether it bears the burden of proving a prima facie case that the doctrine does not apply under the “function-way-result” or “insubstantial differences” test.

After the oral discussion held on January 9, 2023, the EOE Branch sought clarification from the parties regarding the following question:

Whether YDT was a named respondent in the underlying investigation, is a related party to any named respondent in the 337-TA-1174 investigation (the “’1174 investigation”), and whether YDT sold to any named respondent in the ’1174 Investigation any products that were legacy products adjudicated by the Commission in the ‘1174 investigation?

EOE Branch Email to Parties, dated January 9, 2023.

In its submission replying to the EOE Branch’s question, YDT did not provide any response to this question. Instead, it reasoned that because it “has clearly established a prima facie case of no infringement under the DOE,” it did not “believe a determination of these issues is required to approve YDT’s ruling request.” YDT Post-Discussion Submission at 2. YDT further stated that it had no specific comments on what categories of parties, if any, should be required to establish a prima facie case of noninfringement under the doctrine of equivalents in the context of a general exclusion order under Section 337. Id.

On the other hand, in its response to the EOE Branch’s question whether YDT qualifies as a named respondent or “related party” thereto, Brother noted that while YDT was not expressly named as a respondent in the underlying investigation, it or a related entity may have been identified as a respondent under a different name. See Brother Post-Discussion Submission at 11. Brother noted that, in a previous Part 177 ruling request YDT filed on August 4, 2022, YDT identified Zhuhai Yuancheng Technology Co., Ltd. (“Yuancheng Tech”) as one of nineteen “brands” under which YDT planned to sell the YDT Cartridges “now or in the future.” Id. at 2-3. Brother further noted that YDT appears to use the term “brands” to refer to “manufacturers.” Id. at 3. Brother provided that YDT’s “brands” include, but are not limited to, the following:

Mito Color Imaging Co., Ltd. Forcolor Company Limited Recharging Technologies Limited

Id.

Brother then raised its belief that YDT is a related party to at least one of the named respondents in the 1174 investigation and that, at the very least, YDT sold legacy products to named respondents in the 1174 investigation. See id. at 11-13. Specifically, Brother noted that it believes YDT is in the same business syndicate as at least one of the named respondents in its initial or amended complaint. See id. at 12. Brother provided, as a basis for this belief, that (1) at least one of YDT’s purported “brands,” Mito Color Imaging Co., Ltd. (“Mito”), “is … ‘a high-tech enterprise specialized in manufacturing, researching and sales of laser toner cartridges,’ including those that are ‘compatible with various well-known OEM printers.’” See id. Furthermore, Brother noted that Mito is located in Zhuhai, China, like both of the YDT entities that have identified themselves in this Part 177 proceeding. Id. Brother also notes that at least five other purported YDT “brands,” -- Zhuhai Gikar Industrial Co., Ltd. (“Gikar”), Zhuhai Baisine Technology Co., Ltd. (“Baisine”), Power Print Technology Ltd. (“PPT”), Zhuhai XinYing Technology Co., Ltd. (“XinYing”), and Zhuhai Aicon Image Co. Ltd. (“Aicon”) -- also are toner cartridge manufacturers, and at least four of them (Baisine, PPT, XinYing, and Aicon) “boast similar manufacturing and supply chain capabilities as Mito.” Id. at 13. Additionally, Brother provided information showing that Mito, Gikar, Baisine, PPT, XinYing, and Aicon each offer Brother-compatible toner cartridge models that were accused of infringement in the 1174 investigation, and that at least some, if not all of those entities (e.g., Gikar) were selling legacy toner cartridges during and before the 1174 investigation. See id. at 13. Due to this information, as well as its understanding of the aftermarket toner cartridge industry, Brother’s position is that “YDT and its ‘brands’ are part of an intricate array of similar subsidiaries acting together as a common enterprise and under common management, and that they all are in the same business syndicate.” See id. Finally, Brother noted that YDT should bear the burden of establishing that “neither it nor any of its purported ‘brands’ is related to any named respondent in the 1174 Investigation,” especially because most of the named respondents in the 1174 investigation defaulted and provided no discovery whatsoever, much less discovery into their corporate structure and relationships. See Brother Post-Discussion Submission at 13.

Furthermore, on the question whether YDT sold to any named respondent in the 1174 investigation any products that constitute the legacy products the Commission adjudicated during that investigation, Brother answered affirmatively. See Brother Post-Discussion Submission at 13. As support for its representation, Brother provided information showing that [[ ]] Brother Post-Discussion Submission at 14 (citing Joint Stipulation of Brother and Globest as to Importation, Sale, U.S. Inventory, Bond, and Representativeness at ¶ 2 (Jan. 27, 2020) (Confidential Version) (EDIS Doc ID 700411); Motion for Summary Determination, Statement of Material Facts at 240 (Mar. 12, 2020) (Confidential Version) (EDIS Doc ID 704827)). As further support for its position, Brother provided information that “[a]ll five of the publicly available bills of lading where Yuancheng Digital actually used its own name to import toner cartridges show the address of the U.S. consignee as that of a postal center located at 18351 Colima Road, Rowland Heights, California 91748,” and that one of YDT’s “brands,” Mtb International Trading Inc., also uses the postal center to import toner cartridges. Id. Furthermore, Brother noted that the same postal center is used by Globest to register the trademark of its infringing toner cartridges, and that V4Ink also used the postal center to import toner cartridges. Id.

Brother also provided evidence that “the same five bills of lading where Yuancheng Digital actually used its own name to import toner cartridges identified ‘Ninestar Corporation’ as Yuancheng Digital’s ‘Ultimate Parent,’” and that furthermore, [[ ]] Brother Post-Discussion Submission at 14 (citing Initial Determination Granting Complainants’ Motion for Summary Determination of Violation, Recommended Determination on Remedy and Bonding (Jul. 23, 2020) (Confidential Version) (EDIS Doc ID 715457)).

As a starting point, of the two parties, YDT is in the better position to access and provide the relevant information regarding itself in response to the EOE Branch’s request from January 9, 2023. Despite the opportunity provide this information, YDT declined to submit an answer to any of the questions posed by the EOE Branch. While it is undisputed that YDT was not expressly named as respondent in the 1174 investigation, it has failed to make any showing regarding (1) whether it is a related party to any named respondent in the 1174 investigation or (2) whether it sold to any named respondent in the 1174 investigation any products that were legacy products adjudicated by the Commission in the 1174 investigation. On this basis alone, YDT has failed to carry its burden.

Conversely, Brother presented several arguments supported by evidence on the question why YDT should be considered a respondent for purposes of applying the doctrine of equivalents in this inter partes proceeding involving a general exclusion order under Section 337. Brother argued that YDT should be considered a respondent not only due to its relationship with named respondents but because of its connection to the legacy products that the Commission found to infringe. This position is further supported by case law confirming the in rem nature of the Tariff Act and the Commission’s authority under it. See Suprema, Inc. v. ITC, 796 F.3d 1338, 1346 (Fed. Cir. 2015) (en banc) (“Section 337 refers not just to infringement, but to ‘articles that infringe.’”) (emphasis in original).

Accordingly, in addition to YDT’s failure to carry its burden, Brother’s arguments and evidence have persuasively shown that YDT should be considered a respondent for purposes of applying the doctrine of equivalents in this inter partes proceeding under the test established above. To confirm, the test the EOE Branch uses to evaluate this question is whether the relevant party qualifies as (1) a respondent expressly named in the underlying investigation, (2) a related party to any named respondent in the underlying investigation, or (3) someone who manufactured or sold to any named respondent the legacy products in the underlying investigation that the Commission adjudicated to infringe. As a result, YDT must establish 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.

Whether YDT Has Carried Its Burden To Show A Prima Facie Case That The Doctrine Of Equivalents Does Not Apply To The Articles At Issue Under The “Function-Way-Result” Or “Insubstantial Differences” Test

The “function-way-result” test requires a showing of “whether the substitute element matches the function, way, and result of the claimed element,” while the “insubstantial differences” test requires a showing of “whether the substitute element plays a role substantially different from the claimed element.” Tronzo v. Biomet, Inc., 156 F.3d 1154, 1160 (Fed. Cir. 1998) (quoting Warner-Jenkinson, 520 U.S. at 40). For the “function-way-result” test, therefore, rather than comparing the claimed invention to the subject technology as a whole, the analysis should be provided “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 product.” Intendis GmbH v. Glenmark Pharms., Inc., 822 F.3d 1355, 1360 (Fed. Cir. 2016) (quoting Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1312 (Fed. Cir. 2009)). Furthermore, “[e]ach prong of the function-way-result test is a factual determination.” Intendis GmbH, 822 F.3d at 1360.

For the “insubstantial differences” test, the question is whether “the substitution . . . is a change of such substance as to make the doctrine of equivalents inapplicable.” Graver Tank v. Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 610 (1950). For this test, “an important factor is whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was.” Id. at 609.

“If a theory of equivalence would vitiate a claim limitation, however, then there can be no infringement under the doctrine of equivalents as a matter of law.” Tronzo, 156 F.3d at 1159. A party establishing vitiation in an inter partes proceeding under 19 C.F.R. 177 would carry its burden to show a prima facie case. However, the Federal Circuit has confirmed that “[v]itiation is ‘not an exception to the doctrine of equivalents, but instead a legal determination that the evidence is such that no reasonable [factfinder] could determine two elements to be equivalent.’” Ring & Pinion Serv. Inc. v. ARB Corp. Ltd., 743 F.3d 831, 836 (Fed. Cir. 2014) (quoting Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1356 (Fed. Cir. 2012)).

Moreover, “[t]he vitiation test cannot be satisfied by simply noting that an element is missing from the claimed structure or process because the doctrine of equivalents, by definition, recognizes that an element is missing that must be supplied by the equivalent substitute.” x Deere, 703 F.3d at 1356 (emphasis added). Neither can “[t]he vitiation test cannot be satisfied merely by noting that the equivalent substitute is outside the claimed limitation’s literal scope.” Brilliant Instruments, Inc. v. GuidTech, LLC, 707 F.3d 1342, 1347 (Fed. Cir. 2013).

Rather, vitiation applies when one of skill in the art would understand that the literal and substitute limitations are not interchangeable, not insubstantially different, and when they do not perform substantially the same function in substantially the same way, to accomplish substantially the same result. In short, saying that a claim element would be vitiated is akin to saying that there is no equivalent to the claim element in the accused device based on the well-established “function-way-result” or “insubstantial differences” tests.

Id.

Discussion of the doctrine of equivalents under either the “function-way-result” test or the “insubstantial differences” test should not constitute broad, conclusory statements. See Akzo Nobel Coatings Inc. v. Dow Chem. Co., 811 F.3d 1334 (Fed. Cir. 2016). In Akzo, for example, the Federal Circuit found the following “function-way-result test” argument provided to be “broad and scant:”

Dow’s and Michelman’s piping and heat exchangers perform the same function (maintain the pressure) and achieve the same result (maintaining sufficient pressure to prevent boiling of the aqueous medium) in substantially the same way (by collecting the dispersed material in a contained volume) as the vessel used by the inventors in Examples 2 and 3 of the patent).

Id. at 1343.

The Federal Circuit further noted the statement’s “failure to articulate how Dow’s accused process operates in substantially the same way,” as well as the failure to articulate “how the differences between the two processes are insubstantial.” Id.

In the instant case, YDT argued that the articles at issue do not meet the “rotatable about” limitation (i.e., “a detection gear rotatable about the second shaft”) in Claim 1 of the ’093 patent under the doctrine of equivalents because the gear in question “rotates with” the shaft. See Ruling Request at 29. In attempting to address the “function-way-result” and “insubstantial differences” test, YDT merely provided:

[T]he differences between the claimed inventions and the compatible cartridges are neither insubstantial, nor achieve the same function-way-result as the proposed cartridges do not have a detection gear that rotates about a second shaft, but instead has its detection gear (the portion that has the protrusions that facilitate detection) located on the driving side of the cartridge, and only the detection end portion is located on the detection side.

Id.

As an initial matter, YDT failed to provide any comparison between the substitute element and claimed element on an element-by-element basis. Instead, YDT’s cursory application of the “function-way-result” and “insubstantial differences” tests improperly compare the articles at issue to Brother’s cartridges generally, rather than analyzing the specific limitations at issue.

Furthermore, YDT fails to provide any explanation, under the “function-way-result” test, of (1) how its substitute element differs from the claimed “rotatable about” element in function, (2) the way in which its substitute element differs from the claimed “rotatable about” element, or (3) how its substitute element achieves a different result from the claimed “rotatable about” element. YDT’s statement that the articles at issue do not achieve the same function-way-result as Brother’s claimed invention is closer in kind to the statement that the Federal Circuit found in Akzo to be conclusory, broad, and scant. In fact, the statement found to be insufficient in Akzo contained more detail and substance than YDT’s present statement, as the former separately analyzed each of the prongs in the “function-way-result” test.

YDT does not fare any better under the “insubstantial differences” test, as it includes only conclusory statements in its brief discussion of that test. Specifically, YDT did not show how the substitute element (“rotatable with”) plays a role that is substantially different from the claimed element (“rotatable about”). See Tronzo, 156 F.3d at 1160. Therefore, YDT’s arguments regarding the “function-way-result” and “insubstantial differences” tests fail to present a prima facie case that the articles in question do not satisfy the relevant claim limitations when viewed on an element-by-element basis. While YDT presented arguments regarding claim vitiation, those arguments are insufficient to overcome the lack of a prima facie case offered under either the “function-way-result” test or the “insubstantial differences” test. As noted above, vitiation is “not an exception to the doctrine of equivalents, but instead a legal determination” that, based on the evidence in the administrative record, it would be unreasonable to consider the two elements in question to be equivalent.

YDT’s primary argument regarding claim vitiation is that the “rotatable about” limitation is vitiated if considered to be equivalent to “rotatable with” simply because the EOE Branch previously determined that “rotatable about” does not literally include “rotatable with.” See Ruling Request at 25. However, as Brother points out, “[a]t bottom, ‘the vitiation test cannot be satisfied by simply noting that an element is missing from the claimed structure or process because the doctrine of equivalents, by definition, recognizes that an element is missing that must be supplied by the equivalent substitute.’” Brother Post-Discussion Submission at 24 (quoting Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1356 (Fed. Cir. 2012). Furthermore, as Brother notes, “YDT’s argument that reading Claim 1 to cover a ‘detection gear’ that is ‘rotatable with’ a ‘second shaft’ would vitiate the limitation ‘rotatable about the second shaft’ is an improper application of the vitiation doctrine because it would render the doctrine of equivalents nothing more than a repeat of literal infringement and, therefore, meaningless.” Id. at 21.

Consequently, we find that YDT, the party with the burden under the standard set forth in H284032, has failed to prove a prima facie case that the doctrine of equivalents does not apply to the articles at issue.

V. HOLDING

We find that YDT has not met its burden to establish that the articles at issue do not infringe claim 1 of the ’093 patent. Specifically, we find that YDT has failed to prove a prima facie case that the articles at issue do not meet the relevant claim limitation under the doctrine of equivalents as applied by CBP.

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).


Sincerely,

Dax Terrill
Chief, Exclusion Order Enforcement Branch

CC: Tommy Martin
Baker Botts L.L.P.
700 K STREET, N.W.
WASHINGTON, D.C. 20001
[email protected]
[email protected]

WAIVER AGREEMENT
(Executed November 22, 2022)