• HQ H334472
• Dec 20, 2023

• Type : 19 U.S.C. § 1337; Unfair Competition • HTSUS :
•  Related:   H324813; H323308   

OT:RR:BSTC:EOE H334472 FKM

Mr. Elliott J. Williams
Stoel Rives LLP
760 SW Ninth Avenue, Suite 3000
Portland, OR 97205

VIA EMAIL: [email protected]

RE: Ruling Request; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-1124; Certain Powered Cover Plates

Dear Mr. Williams:

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 ruling letter. We find that American Tack and Hardware, Inc. (“AmerTac”) has not met its burden to show that certain products accused by SnapRays, LLC d/b/a SnapPower (“SnapPower”) -- specifically (i) the Lumicover Nightlight Wallplate, (ii) the Lumicover Power Failure Light, (iii) the Lumicover USB Charger Wallplate, (iv) the GloCover Nightlight Wallplate, and (v) the GloCover Motion Activated Light (collectively, “the articles at issue”) -- do not infringe claim 13 of U.S. Patent No. 9,871,324 (“the ’324 patent”) or claims 1, 2, and 3 of U.S. Patent No. 9,917,430 (“the ’430 patent”). Thus, CBP’s position is that the articles at issue are subject to the general exclusion order issued by the U.S. International Trade Commission (“Commission” or “ITC”) in Investigation No. 337-TA-1124 (“the underlying investigation” or “the 1124 investigation”), pursuant to section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337 (“section 337”).

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 section 337 exclusion orders. This ruling letter is the result of a request for an administrative ruling from CBP under 19 C.F.R. Part 177, which was conducted on an inter partes basis. The process involved the two parties with a direct and demonstrable interest in the question presented by the ruling request: (1) your client, SnapPower, the ruling requester, complainant, and patent owner in the 1124 investigation; and (2) AmerTac, the importer of the articles at issue. See, e.g., 19 C.F.R. § 177.1(c). As noted below, AmerTac was not a named respondent in the underlying investigation at the Commission.

The parties were asked to clearly identify confidential information, including information subject to the administrative protective order in the underlying investigation, with [[red brackets]] in all of their submissions to CBP. See 19 C.F.R. §§ 177.2, 177.8. If there is additional information in this ruling letter not currently bracketed in red [[ ]] that either party believes constitutes confidential information, and should be redacted from the published ruling, the parties are asked to contact CBP within ten (10) working days of the date of this ruling letter. See, e.g., 19 C.F.R. § 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. § 177.8(a)(3). See, e.g., 19 C.F.R. § 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. § 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, 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 U.S. Department of Justice, Office of Information Policy (OIP): 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-1124

Procedural History at the ITC

The Commission instituted Investigation No. 337-TA-1124 on July 23, 2018, based on a complaint filed by SnapPower. Certain Powered Cover Plates, Inv. No. 337-TA-1124, EDIS Doc. ID 714335, Public Commission Opinion (Jul. 10, 2020) (“Comm’n Op.”) at 1 (citing 83 Fed. Reg. 34871-72 (Jul. 23, 2018)). The complaint, as supplemented, alleged a violation of section 337 by reason of infringement of certain claims of the ’324 and ’430 patents, as well as U.S. Patent No. 9,882,361 (“the ’361 patent”) and U.S. Design Patent No. D819,426 (“the ’D426 patent”). Comm’n Op. at 3. The notice of investigation named thirteen respondents, two of which participated throughout the investigation, including in the hearing before the presiding Administrative Law Judge (“ALJ”), four of which settled, four of which defaulted, and three of which had the complaint withdrawn due to an inability to serve the complaint. Id. at 3-4. As noted above, AmerTac was not a named respondent in the underlying investigation. Lastly, the Commission’s Office of Unfair Import Investigations (“OUII”) was named as a party in the investigation. Id. at 2.

The ALJ granted SnapPower’s motions for summary determination on importation and infringement because the participating respondents did not contest these issues. Id. at 3-4 (internal citations omitted). On August 12, 2019, the ALJ issued her final initial determination finding a violation of section 337. Id. at 6; Certain Powered Cover Plates, Inv. No. 337-TA-1124, EDIS Doc. ID 687137, Public Final Initial Determination (August 12, 2019) (“FID”). Specifically, the ALJ determined that a violation of section 337 occurred in the importation into the United States, the sale for importation, or the sale within the United States after importation, of the accused products due to infringement of certain claims of the ’324, ’430, ’361, and ’D426 patents. Comm’n Op. at 4.

On October 11, 2019, the Commission issued a notice in which it determined to review in part the FID. Id. at 6-7 (citing 84 Fed. Reg. 55985-96 (Oct. 18, 2019)). The Commission, in its review of the FID, adopted the FID’s finding of a violation of section 337 as to the asserted patents. Id. at 7. On March 12, 2020, the Commission issued its notice determining not review the remand initial determination and requested written submissions on remedy, the public interest, and bonding. Id. (citing 85 Fed. Reg. 21457-59 (Apr. 17, 2020)). On July 10, 2020, the Commission found a violation of section 337 with regard to infringement of the ’324, ’430, ’361, and ’D426 patents and determined that the appropriate remedy was a general exclusion order and cease and desist orders directed to various respondents. Id. at 32.

In the general exclusion order, the Commission ordered that “power cover plated, which are electrical receptacle covers with built-in functionally, that infringe one or more of claims 1, 4, 8, 9, 10, 13, 17 and 19 of the ’324 Patent; claims 1, 4, 10, 14, 21, 23, and 24 of the ’361 Patent; claims 1, 2, 3, 7, 18, and 19 of the ’430 Patent; and the claim of the D’436 Patent are excluded from entry for consumption into the United States, entry for consumption from a foreign-trade zone, or withdrawal from a warehouse for consumption, for the remaining terms of the patents, except under license of the patent owner or as provided by law.” Certain Powered Cover Plates, Inv. No. 337-TA-1124, EDIS Doc. ID 712488, General Exclusion Order (June 11, 2020) at 2 (“1124 GEO”).

The Patents and Claims in the 1124 LEO

The 1124 GEO prohibits the unlicensed entry for consumption of powered cover plates that infringe one or more of claims 1, 4, 8, 9, 10, 13, 17 and 19 of the ’324 patent; claims 1, 4, 10, 14, 21, 23, and 24 of the ’361 patent; claims 1, 2, 3, 7, 18, and 19 of the ’430 patent; and the claim of the D’436 Patent. 1124 GEO at 2. Because SnapPower has alleged that the articles at issue infringe only claim 13 of the ’324 patent and claims 1, 2, and 3 of the ’430 patent, the discussion of the patents below is limited to these patent claims. Ruling Request at 4. Further, we note that, with regard to the ’430 patent, the burden of establishing noninfringement requires a showing that the articles at issue fail to meet a limitation of an independent claim. See, e.g., Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991) (“[T]he failure to meet a single limitation is sufficient to negate infringement of the claim[.]”); Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1552 n.9 (Fed. Cir. 1989) (“One who does not infringe an independent claim cannot infringe a claim dependent on (and thus containing all the limitations of) that claim.”).

Claims 13 of the ’324 Patent

The ’324 patent is titled “Active Cover Plates.” FID at 19 (internal citation omitted). Claim 13 of the ’324 patent is reproduced below:

13. An active cover plate comprising: a face plate; an electrical load; a clip extending rearward from the face plate to interface with screw terminals of a receptacle body, wherein the clip comprises: a contact; a conductor connected to the contact; a front insulator; and a rear insulator, wherein the conductor is sandwiched between the front insulator and the rear insulator; an electrical connection between the contact and the electrical load.

’324 patent at 30:65-31:5 (emphasis added).




’324 patent at Fig. 1A, Fig. 1B.




’324 patent at Fig. 4B; see id. at 9:22-23 (“The circuit board (435) is sandwiched between the face plate (405) and the back plate (430).”).

Claims 1, 2, and 3 of the ’430 Patent The ’430 patent is titled “Active Cover Plates.” FID at 21 (internal citation omitted). Claims 2 and 3 depend from claim 1. ’430 patent at 30:26-46. Claims 1, 2, and 3 of the ’430 patent are reproduced below:

1. A cover plate comprising: a face plate comprising at least one outlet aperture; a back plate abutting a back of the face plate; an electric load between the face plate and the back plate; at least one prong that extends from the face plate to a free end, the prong configured to interface with a terminal on a side of an outlet receptacle body, the prong comprising: an insulated portion; and an electrical contact; wherein the free end of the prong comprises the insulated portion and wherein the prong resiliently deflects outward when interfacing with the terminal, and wherein the prong deflects with a first resistance prior to the insulated portion contacting a wall, and a second resistance that is greater than the first resistance when the insulated portion contacts the wall, wherein the wall comprises an interior wall of an electrical receptacle box; and at least one conductor electrically connecting the prong to the electric load.

2. The cover plate of claim 1, wherein the second resistance limits further deformation of the prong.

3. The cover plate of claim 1, wherein contact with the wall increases contact pressure between the prong and the terminal.

Id. (emphasis added).




’430 patent at Fig. 1A, Fig. 1B.




’430 patent at Fig. 12.





’430 patent at Fig. 14A, 14B; see id. at 3:16-18 (“FIGS 14A and 14B are a side view and a perspective rear view of a spring clip/prong, according to one example of principles described herein.”).

19 C.F.R. Part 177 Ruling Request

Procedural History

On September 15, 2023, SnapPower submitted a letter to CBP requesting an administrative ruling pursuant to 19 C.F.R. Part 177, which included Exhibits A, B-1 to B-5, C-1 to C-5, and Appendices 1 to 5 (collectively, “Ruling Request”). SnapPower Email to EOE Branch, dated September 15, 2023. SnapPower requested “a ruling from CBP that the imports of American Tack and Hardware, Inc. [] identified herein violate the General Exclusion Order [] issued by the U.S. International Trade Commission [] in Investigation No. 337-TA-1124 (Certain Powered Cover Plates).” Ruling Request at 1. On September 21, 2023, SnapPower confirmed that it had transmitted the ruling request to AmerTac’s counsel. SnapPower Email to EOE Branch, dated September 21, 2023. On November 27, 2023, the parties provided an executed non-disclosure agreement to the EOE Branch. SnapPower Email to EOE Branch, dated November 27, 2023; AmerTac Email to EOE Branch, dated November 27, 2023.

On September 28, 2023, the EOE Branch had an initial conference call with SnapPower and AmerTac, on which both parties agreed to conduct this proceeding on an inter partes basis as administered by the EOE Branch. During this initial call, the EOE Branch and the parties discussed scheduling for the inter partes proceeding, and on October 6, 2023, the parties each provided proposed procedural schedules to the EOE Branch. SnapPower Email to EOE Branch, dated October 6, 2023; AmerTac Email to EOE Branch, dated October 6, 2023. On October 11, 2023, after considering the submissions, the EOE Branch set the procedural schedule for the inter partes proceeding, establishing the target date to issue the ruling as December 20, 2023. EOE Branch Email to Parties, dated October 11, 2023. Significantly, in establishing this procedural schedule, the EOE Branch noted:

As part of its consideration of the parties’ views on the proposed procedural schedule, the EOE Branch took into account th[e] burden for establishing noninfringement as a condition of entry in the context of an inter partes proceeding under 19 C.F.R § 177 as well as when making entries into the United States outside of this context. CBP retains the authority to select shipments for examination, detain those shipments, and make admissibility determinations on the articles contained therein despite the existence of an ongoing inter partes proceeding. Specifically, “the EOE Branch may, in its discretion, … take into consideration … the point at which CBP should prevent the entry for consumption of the articles at issue … until they are found not to infringe. In appropriate cases, and depending on the relevant facts, that point could be at a preliminary stage in an inter partes proceeding, during the pendency of the proceeding, or at its conclusion.” HQ H324813 (dated June 3, 2022) at 38 (internal citations and quotation marks omitted) (emphasis added). With that in mind, the EOE Branch does not see a reason to deviate from tis normal procedural schedule in this inter partes proceeding.

Id. (emphasis in the original).

Additionally, the parties raised the issue of attendance and participation at the oral discussion. In response to the positions taken, the EOE Branch provided the following:

Thank you for your responses and for providing a copy of the nondisclosure agreement (“NDA”).  To ensure conformity with the U.S. International Trade Commission’s (“Commission”) requirements and safeguard any confidential business information (“CBI”) submitted or exchanged during the underlying investigation or this inter partes proceeding, the Exclusion Order Enforcement Branch (“EOE Branch”) strictly limits the individuals who may attend oral discussions held under 19 C.F.R. 177. 

Specifically, the EOE Branch’s message (dated November 22, 2023) with the ground rules for this inter partes proceeding noted that the oral discussion is limited to outside counsel who represent a party and have signed onto the administrative protective order (“APO”) from the underlying investigation at the Commission.  We understand, however, there may be instances where outside counsel cannot sign onto the APO, such as those cases involving a non-respondent to the underlying investigation.  For this reason, we noted in our November 22nd email that any confidential business information from the underlying investigation cannot be disclosed to an individual who has not signed onto the APO without consent of the submitter.  Moreover, although we recognize that, presently, neither party has designated any information as confidential under the NDA, nor have the parties referenced any CBI subject to the APO, the EOE Branch maintains the position that even in these cases attendance at the oral discussion is limited to outside counsel representing a party to the inter partes proceeding under 19 C.F.R. Part 177.  Therefore, unfortunately, we will not be able to permit anyone other than outside counsel to attend the oral discussion tomorrow.

EOE Branch Email to Parties, dated November 23, 2023.

On November 1, 2023, AmerTac provided its response to the Ruling Request, which included two exhibits (collectively, “AmerTac Response”). On November 8, 2023, SnapPower provided its reply to the AmerTac Response, which included Exhibits D to H and four enclosures (collectively, “SnapPower Reply”). On November 15, 2023, AmerTac provided its sur-reply (“AmerTac Sur-Reply”) to the SnapPower Reply. On November 29, 2023, the EOE Branch conducted an oral discussion with the parties, with each party providing a presentation (“SnapPower Oral Discussion Presentation” and “AmerTac Oral Discussion Presentation accordingly). Lastly, on December 6, 2023, the parties submitted post oral discussion submissions (“SnapPower Post Oral Discussion Submission” and “AmerTac Post Oral Discussion Submission” accordingly).

The Articles at Issue

The articles at issue in the Ruling Request consist of five AmerTac products. Ruling Request at 4. Specifically, the products for which SnapPower requested a ruling are (i) the Lumicover Nightlight Wallplate, (ii) the Lumicover Power Failure Light, (iii) the Lumicover USB Charger Wallplate, (iv) the GloCover Nightlight Wallplate, and (v) the GloCover Motion Activated Light, which are depicted below:


LumiCover Nightlight Wallplate


Lumicover Power Failure Light


LumiCover USB Charger Wallplate


GloCover Nightlight Wallplate


GloCover Motion Activated Light

The parties agreed that, for the purposes of this ruling, “the relevant claims of both patents have been asserted against all of the articles at issue in this inter partes proceedings; [t]he articles at issue consist of the five accused products referenced on page 4 of the Ruling Request [and referenced above]; and [t]he Lumicover Nightlight Wallplate is representative of all five products accused in this inter partes proceeding.” EOE Branch Email to Parties, dated November 29, 2023 (confirming representations made during the oral discussion). Therefore, further discussion of the articles at issue will focus on the Lumicover Nightlight Wallplate. According to SnapPower, the articles at issue “meet all the limitations of one or more of the GEO claims, are not licensed by the patent owner SnapPower, and therefore are excluded from entry for consumption in the United States under the GEO.” Ruling Request at 3.

ISSUE

Whether AmerTac has met its burden to show that the articles at issue do not infringe the ’324 or ’430 patents, and thus are not subject to the GEO issued in the 1124 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 (Fed. Cir. 2008). 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).”) (emphasis added).

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).

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).

LAW AND ANALYSIS

AmerTac’s Non-Infringement Arguments and Concession

To begin, on the ’324 patent, AmerTac argues that the articles at issue do not infringe because the following limitation is not satisfied: “. . . wherein the conductor is sandwiched between the front insulator and the rear insulator” (“the sandwiched limitation”). With regard to the ’430 patent, AmerTac’s noninfringement arguments focus solely on claim 1. Specifically, AmerTac argues that the articles at issue do not infringe because they do not satisfy the claim limitation requiring “at least one prong that extends from the face plate to a free end . . . wherein the free end of the prong comprises the insulated portion and wherein the prong resiliently deflects outward when interfacing with the terminal” (“the prong limitation”). As AmerTac has conceded that the articles at issue satisfy the other limitations in the relevant claims of the asserted patents, the discussion will proceed with the infringement analysis (i.e., claim construction and “read on”) regarding the sandwiched limitation of the ’324 patent and the prong limitation of the ’430 patent.

Claim Construction

The Sandwiched Limitation (the ’324 patent)

Determining patent infringement requires two steps, construing the limitations of the asserted claims and then comparing the properly construed claims to the accused product. Advanced Steel Recovery, 808 F.3d at 1316. With respect to the ’324 patent, SnapPower argues that “no further claim construction is necessary in this proceeding. SnapPower’s Ruling Request noted prior constructions of the ‘sandwiched’ term in Certain Powered Cover Plates (ITC) and O’Reilly Winship v. SnapRays [], and proposed that no further claim construction is required in this proceeding. Neither party proposed a claim construction in subsequent briefing.” SnapPower Post Oral Discussion Submission at 2. Similarly, AmerTac argues that claim construction is not necessary for this inter partes proceeding for the sandwiched limitation and instead states that “[t]he ITC construction is the controlling definition for the purpose of this proceeding.” AmerTac Response at 11 n.2.

As with other Commission conclusions of law or findings of fact, a claim construction from the underlying investigation is binding for the purposes of an inter partes proceeding under 19 C.F.R. Part 177. The Commission’s adopted construction for the sandwiched limitation is the “[p]lain and ordinary meaning, for example, the conductor is enclosed between the front insulator on one side and the rear insulator on the other side. The conductor cannot be separated from the front insulator and the rear insulator by an air gap.” Certain Powered Cover Plates, Inv. No. 337-TA-1124, EDIS Doc. ID 668781, Construing Certain Terms of the Asserted Claims of the Patents at Issue (Markman Claim Construction) (Feb. 21, 2019) Appendix A at 1 (“Markman Order”) (emphasis added); Comm’n Op. at 7 (“The Commission determined not to review the remainder of the ID. In not reviewing other findings in the ID, the Commission adopted the ID’s finding of a violation of section 337 by Enstant/Vistek and the Defaulting Respondents.”) (internal citations omitted). Because the Commission’s claim construction is binding, and the parties have not argued that a construction of that claim construction is necessary or offered any express construction to consider, the EOE Branch will apply the Commission’s construction in the read on analysis below.

The Prong Limitation (the ’430 patent)

Regarding the ’430 patent, neither party has proposed an express claim construction relating to the limitation at issue. AmerTac does reference claim construction, but mainly to assert that “. . . the only reliable evidence that is now before the EOE [Branch] with regard to the meaning of Claims 1, 2, and 3 terms is that provided by AmerTac.” AmerTac Sur-Reply at 21. AmerTac has argued that the term “prong” has not been “defined in the specification and is not defined by the claim-like embodiment examples. As such, that word needs to be construed and defined as it is used in the claims. [] Snap[Power] does not consult the specifications to ascertain the meaning of the word ‘prong’ as it should. As noted, the primary source of claim construction in the specifications.” Id. at 20-21. Throughout its submissions, AmerTac primarily argues that the specifications should be controlling as to the claim construction of the limitation at issue. Id. at 2 (“AmerTac is following the prescribed hierarchy of patent claim construction by using the specifications and drawings as its primary sources of claim construction evidence.”); AmerTac Response at 14 (“The drawings and specifications are the best source of information for discerning the meaning of the claim limitations[.]”); AmerTac Post Oral Discussion Submission at 3 (“Claim 13, as construed in view of the specifications and drawings[.]”); id. at 7 (“The specification provides guidance on the meaning of the words ‘front insulator’ and ‘rear insulator’ as they are used in the [c]laim. AmerTac reviewed the specification to ascertain that additional meaning.”).

Conversely, SnapPower has responded to AmerTac’s arguments by challenging AmerTac’s singular reliance on the specifications and prior art for claim construction, and raising arguments to undermine the implications of that reliance. See, e.g., SnapPower Reply at 2-4, 14-15; SnapPower Post Oral Discussion Submission at 2-4, 8-9; id. at 3 (“It is improper to narrow the scope of claim terms from the full scope of their ordinary meaning unless the specification or prosecution history defines the term more narrowly or expressly disclaims the ordinary meaning.”) (internal citation omitted).

Despite numerous references to the specification and prior art regarding claim construction, AmerTac fails to propose an express construction or legal basis for departing from the plain and ordinary meaning of the claim limitation at issue. Additionally, although AmerTac argues at length that the EOE Branch should analyze the specification and prior art to construe the claims at issue, AmerTac seemingly contradicts that argument, stating that “. . . the [c]laims . . . must be construed to their plain and ordinary meaning.” AmerTac Post Oral Discussion Submission at 17. AmerTac has misapplied the standards regarding claim construction and the relevant precedent, most notably in arguing that the specification is controlling for purposes of claim construction. As the Federal Circuit has confirmed, “[t]he words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). 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).

To the extent possible, claim terms are given their ordinary and customary meaning, as they would be understood by one of ordinary skill in the art in question at the time of the invention. Idiosyncratic language, highly technical terms, or terms coined by the inventor are best understood by reference to the specification. While we construe the claims in light of the specification, limitations discussed in the specification may not be read into the claims. Courts may rely on dictionary definitions when construing claim terms, so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents. [] Where . . . a disavowal does not exist, the ordinary and customary meaning of the claim term will be given its full effect.

3M Innovative Props. Co. v. Tredegar Corp., 724 F.3d 1315, 1322, 1326 (Fed. Cir. 2013).

Though the specifications may be relevant for understanding certain terms and the intention of the inventor, one may not import limitations from the specification into the claims. See Phillips, 415 F.3d at 1323. “One of the best ways to teach a person of ordinary skill in the art how to make and use the invention is to provide an example of how to practice the invention in a particular case. Much of the time upon reading the specification in that context, it will become clear whether the patentee is setting out specific examples of the invention to accomplish the goals, or whether the patentee instead intends for the claims and the embodiments in the specification to be strictly coextensive.” Id. (citing SciMed Life Sys. v. Advanced Cardiovascular Sys., 242 F.3d 1337, 1341 (Fed. Cir. 2001)).

In light of the Commission not needing to provide an express construction for the ’430 patent in the underlying investigation, as well as the precedent discussed above and the fact that neither party has proposed a specific claim construction for the prong limitation, the claim language will be given its plain and ordinary meaning.

Infringement by the Articles at Issue

The Sandwiched Limitation (the ’324 patent)

The parties’ first dispute regarding the sandwiched limitation stems from whether the articles at issue contain an air gap. As discussed above, the Commission construed “sandwiched” to be its “[p]lain and ordinary meaning, for example, the conductor is enclosed between the front insulator on one side and the rear insulator on the other side. The conductor cannot be separated from the front insulator and the rear insulator by an air gap.” SnapPower has accused the articles at issue of satisfying the sandwiched limitation, as depicted below:




Ruling Request Exhibit B-1 at 5.

AmerTac argues that the articles at issue contain an air gap, and thus, they cannot satisfy this limitation:




AmerTac Response at 5.

The Commission in the underlying investigation addressed air gaps that may lead to a finding of noninfringement of the ’324 patent. During the underlying investigation, OUII argued that the ALJ should “. . . clarify that the conductor cannot be separated from the front insulator and the rear insulator by an air gap.” Certain Powered Cover Plates, Inv. No. 337-TA-1124, EDIS Doc. ID 660903, Public Commission Investigative Staff’s Claim Construction Brief (Nov. 2, 2018) at 11. While SnapPower contended “that the conductor need only be ‘in close proximity’ to the front and rear insulator, i.e. not necessarily in physical contact with the insulators[,]” OUII argued that the claim construction adopted should require that there be no air gap. Id. at 19. OUII suggested that SnapPower was reluctant to agree to the inclusion of the reference to an air gap, as this reference “could exclude situations in which the conductor was partially separated from the conductor [sic] by an air gap, such as that shown below:


.”

Id. at 19.

However, OUII did not disagree with SnapPower that the embodiment depicted above would satisfy the limitation at issue. Instead OUII wrote “[t]he Staff does not believe its proposed instruction (which excludes an air gap between the conductor and insulators) necessarily excludes the illustrated scenario. It is possible in such a scenario that the conductor is not ‘separated from the front insulator and the rear insulator by an air gap’ because arguably there would not be an air gap between the conductor and the insulator in the green vertical portions.” Id. (emphasis added). OUII differentiated such an embodiment with that which is depicted below, where there is a complete air gap between the conductor and front and rear insulators:




Id. at 20.

To further confirm this understanding, OUII noted that “there is no use of the term in the specification in which a component is ‘sandwiched’ between two other components but wholly separated from those components by an air gap.” Id. at 18 (emphasis added). In light of the arguments presented, the ALJ, and subsequently the Commission, adopted OUII’s construction. Markman Order Appendix A at 1 (“Alltrade and Staff’s proposed construction is adopted.”); Comm’n Op. at 7 (“The Commission determined not to review the remainder of the ID. In not reviewing other findings in the ID, the Commission adopted the ID’s finding of a violation of section 337 by Enstant/Vistek and the Defaulting Respondents.”).

Based on this aspect from the underlying investigation, the EOE Branch understands the Commission’s findings—that the conductor cannot be separated from the front insulator and the rear insulator by an air gap—to mean that the conductor and insulators cannot be wholly separated by an air gap, such that there is no contact between the conductors and insulators. The articles at issue, as depicted below and which no party disputes, contain conductors that make contact with the front and rear insulators:




SnapPower Post Oral Discussion Submission at 5.

The parties next dispute regarding the sandwiched limitation concerns whether the articles at issue contain front and rear insulators or one “wrap-around insulator.” AmerTac argues that, to satisfy the sandwiched limitation, there must be three separate structures: (1) a conductor; (2) a front insulator; and (3) a rear insulator. See, e.g., AmerTac Sur-Reply at 17. Because the two insulators are connected to one another, AmerTac contends that the limitation is not satisfied.

In response, SnapPower argues that a single structure can satisfy multiple limitations. SnapPower Post Oral Discussion Submission at 6 (quoting Intellectual Prop. Dev., Inc. v. UA-Columbia Cablevision of Westchester, Inc., 336 F.3d 1308, 1320 n.9 (Fed. Cir. 2003) (“[W]e see no reason why, as a matter of law, one claim limitation may not be responsive to another merely because they are located in the same physical structure.”)). To advance this point, SnapPower provided the following depiction, with annotations in red, yellow, and blue, of the article at issue:




SnapPower Reply at 13.

AmerTac failed to meaningfully respond to this argument during the oral discussion or in its Post Oral Discussion Submission. Accordingly, on this factual point, AmerTac has not carried its burden because it has not raised any material argument in reply. Moreover, since the articles at issue contain both a rear insulator and a front insulator, despite the physical connection between the two insulators, the articles at issue satisfy the sandwiched limitation in this respect as SnapPower argued in reliance on Intellectual Prop. See also In re Kelley, 305 F.2d 909, 915-16 (C.C.P.A. 1962) (explaining that two limitations can read onto the same structure).

The final dispute between the parties related to the sandwiched limitation concerns whether the insulators must cover or enclose the conductor. AmerTac states that the specification requires that the front insulator covers the front of the conductor and that the rear insulator covers the rear of the conductor, such that the conductor is enclosed between the front and rear insulators. AmerTac Response at 15. AmerTac argues that “[t]he obvious purpose of front and rear insulators, as described in the specification, is not served by the LumiCover insulator because that insulator is almost entirely absent in the front.” Id. at 17. SnapPower responds that “AmerTac also errs by importing limitations from the specification to argue that the front of the claim element ‘conductor’ must be covered or enclosed with insulation. AmerTac argues directly from the specification: ‘the specification requires that the front insulation “cover” the front of the conductor[.]’ Yet, it is the claims, not the specification, that define the invention. Nothing in claim 13 requires covering all or even most of the front the [sic] conductor, contrary to AmerTac’s argument.” SnapPower Reply at 2 (internal citations omitted). In other words, SnapPower’s view is that AmerTac’s non-infringement argument above is focused on something the claim does not require.

Consistent with SnapPower’s view of the relevant claim limitation, the Commission stated that “[a]n object ‘sandwiched’ between two objects is enclosed between them.” Markman Order Appendix A at 2. The claim language requires nothing further as a legal matter, and therefore, based on the factual analysis above, we find that the articles at issue satisfy the sandwiched limitation.

The Prong Limitation (the ’430 patent)

SnapPower has accused the articles at issue of satisfying the prong limitation, as depicted below:








Ruling Request Exhibit C-1 at 2-4.

Looking to the specification, AmerTac argues that the articles at issue do not satisfy the prong limitation because, in AmerTac’s view, SnapPower conflates an insulating tab with the required non-conductive free end of the prong. AmerTac Response at 18. AmerTac argues that the articles at issue contain a tab, rather than a prong, drawing on the specification’s reference to other tab and prong features of the patented invention. Id. at 18-27. Furthermore, according to AmerTac, the article’s conductor is the “free end of the prong,” thereby not satisfying the prong limitation, as it does not include an insulated portion due to the presence of an insulating tab:




AmerTac Response at 6.




AmerTac Post Oral Discussion Submission at 9.

AmerTac also argues that the articles at issue cannot satisfy “the prong resiliently deflects outward” in the prong limitation because the articles have “remote/distal flexion point” and “[n]owhere in the specifications or drawings is there any disclosure of a remote/distal flexion point.” AmerTac Sur-Reply at 22.




See AmerTac Sur-Reply at 23.

Rather than referencing the specifications, SnapPower directs its attention to the claim language itself, noting that:

Claim 1 . . . explains what a “prong” is in claim 1, including that it extends from the face plate to a free end, is configured to interface with a terminal on a side of an outlet receptacle body, comprises an insulated portion and an electrical contact, and wherein the free end of the prong comprises the insulated portion. Additional structural and functional limitations of the prong are set forth in the remainder of claim 1.

SnapPower Post Oral Discussion Submission at 8.

The underlying investigation provides context as to the legacy products that were shown to satisfy the prong limitation. Specifically, a respondent’s product was shown to satisfy the prong limitation, as depicted below:














Certain Powered Cover Plates, Inv. No. 337-TA-1124, EDIS Doc. ID 662924, SnapPower’s Motion for Summary Determination Regarding Infringement by the Defaulting Respondents, Enstant, and Vistek (Nov. 28, 2018) Exhibit 2 at 75-76, 78-79. See Certain Powered Cover Plates, Inv. No. 337-TA-1124, EDIS Doc. ID 683780, Initial Determination: Granting SnapPower’s Motion for Summary Determination Regarding Infringement [] (Jul. 10, 2019) at 28 (granting the motion based on undisputed evidence provided in the motion); Comm’n Op. at 7 (“The Commission determined not to review the remainder of the ID. In not reviewing other findings in the ID, the Commission adopted the ID’s finding of a violation of section 337 by Enstant/Vistek and the Defaulting Respondents.”) (internal citations omitted).

The Commission’s findings suggest that a structure, similar to that on the articles at issue, satisfies the prong limitation. AmerTac’s argument that “[t]here is nothing in the specification that would suggest that the location identified [by SnapPower] could be the free end of the prong” again misapplies the standards for patent infringement. AmerTac Post Oral Discussion Submission at 10. As noted in the claim construction analysis above, AmerTac has not identified anything in the specification or the prosecution history that restricts the construction of the term “prong,” nor has it identified any disavowal by SnapPower regarding the broader interpretation of the term. See InterDigital Communs., LLC v. ITC, 690 F.3d 1318, 1324 (Fed. Cir. 2012). Moreover, structures that can satisfy the prong limitation are not limited to the exemplary embodiments in the specification. See CCS Fitness, Inv. v. Brunswick Corp., 288 F.3d 1359, 1368 (Fed. Cir. 2002) (a party “cannot use the intrinsic evidence’s silence to narrow the ordinary meaning of an unambiguous claim term. See, e.g., Johnson Worldwide, 175 F.3d at 992, 50 USPQ2d at 1612 (‘Mere inferences drawn from the description of an embodiment of the invention cannot serve to limit claim terms.’); Kegel, 127 F.3d at 1427, 44 USPQ2d at 1127 (‘Without an express intent to impart a novel meaning to a claim term, the term takes on its ordinary meaning.’); see also Wang Labs, 197 F.3d at 1384, 53 USPQ2d at 1165-66 (limiting term ‘frame’ to the character-based system in the specification when (among other things) the prosecution history distinguished the claimed invention from prior art based on that system)”). See also Renishaw PLC v. Marposs Societa; Per Azioni, 158 F.3d 1243, 1249-50 (Fed. Cir. 1998) (“Thus, when a claim term is expressed in general descriptive words, we will not ordinarily limit the term to a numerical range that may appear in the written description or in other claims. Nor may we, in the broader situation, add a narrowing modifier before an otherwise general term that stands unmodified in a claim. For example, in an apparatus claim recites a general structure [] without limiting that structure to a specific subset of structures [], we will generally construe the claim to cover all known types of that structure that are supported by the patent disclosure.”) (internal citations omitted).

The Commission’s findings and relevant precedent discussed above underscore the point that the prong limitation, when given its plain and ordinary meaning, may be satisfied by features on the articles at issue, as the structure extends from the face plate to a free end, that free end comprising an insulated portion and that resiliently deflects outward when interfacing with the terminal, as shown by SnapPower. As noted, AmerTac has not raised any meaningful basis for narrowing the limitation at issue and has not provided factual evidence that contradicts SnapPower’s showing. Consequently, we find the prong limitation is satisfied by the articles at issue.

We have considered AmerTac’s remaining arguments and do not find them persuasive or necessary to the disposition of the question presented in the ruling request. See HQ H323308 (dated February 8, 2022) at 21.

V. HOLDING

We find that AmerTac has not met its burden to establish that the articles at issue -- the Lumicover Nightlight Wallplate, the Lumicover Power Failure Light, the Lumicover USB Charger Wallplate, the GloCover Nightlight Wallplate, and the GloCover Motion Activated Light -- do not infringe claims 13 of the ’324 patent or claims 1, 2, and 3 of the ’430 patent. Accordingly, we find that the articles at issue are subject to the GEO issued as result of Investigation No. 337-TA-1124.

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: Mr. Terry Booth
Rogahn Jones LLC
N16W23233 Stone Ridge Drive
Waukesha, WI 53188
[email protected]