H305358

 HQ H305358 June 30, 2020 OT:RR:BSTC:IPR H305358 SEH/JW/CBC CATEGORY: 19 U.S.C. § 1337; Unfair Competition VIA EMAIL: Jay Reiziss McDermott Will & Emery LLP The McDermott Building 500 North Capitol Street, NW, Washington, DC 20001-1531 jreiziss@mwe.com RE: Ruling Request, U.S. International Trade Commission; Limited Exclusion Order; Investigation No. 337-TA-1082, Certain Gas Spring Nailer Products and Components Thereof Dear Mr. Reiziss, Pursuant to 19 C.F.R. part 177, the Intellectual Property Rights Branch (“IPR Branch”), Regulations and Rulings, U.S. Customs and Border Protection (“CBP”) issues this ruling letter. We find that Koki has met its burden to show that its redesigned gas spring nailer products (“new products”) do not infringe any of claims 1, 10, and 16 of U.S. Patent No. 8,387,718 (“the ’718 Patent”) because they do not include a “bottom firing mode,” as construed by the U.S. International Trade Commission (“Commission” or “ITC”), which is required to practice the claimed method and that, therefore, its New Products are not subject to the limited exclusion order issued by the Commission in Investigation No. 337-TA-1082 pursuant to section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337. This letter is the result of a request for a ruling from CBP, which was conducted upon consent of the parties 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 as named as a respondent in the underlying ITC Investigation, Hitachi Koki U.S.A., Ltd., (now known as Koki Holdings America Ltd.,) (“Koki”); and (2) Kyocera Senco Brands, Inc. (Kyocera Senco Industrial Tools, Inc.) (“Kyocera”). (See, e.g., Ruling Request at 1; Commission Opinion, dated March 5, 2020, (Kyocera Ex. C) (“Commission Opinion”) at 2.) The limited exclusion order issued in Investigation No. 337-TA-1082 prohibits, among other things, the unlicensed entry of gas spring nailer products and components thereof that infringe one or more of claims 1, 10, and 16 of the '718 Patent. (See Inv. No. 337-TA-1082, Limited Exclusion Order, pp. 1-2, Doc ID 704131 (March 5, 2020) (“1082 LEO”); Resp. Ex. A.) A party seeking to import a product potentially covered by an exclusion order has the burden to establish noninfringement as a condition of entry. See Hyundai Elecs. Indus. Co. v. Int’l Trade Comm’n, 899 F.2d 1204, 1210 (Fed. Cir. 1990). We find that Koki has met its burden to establish that the article(s) at issue does not infringe one or more of claims 1, 10, and 16 of the ’718 patent. The parties were asked to clearly identify confidential information, including information subject to the administrative protective order in the underlying ITC investigation, [[with red brackets]] in all of their submissions to the CBP. See CBP Email to the Parties, dated March 17, 2020. The parties have requested confidential treatment for the following documents: Koki -- Koki’s April 14, 2020, letter requesting confidential treatment for Koki’s bracketed Reply, April 14, 2020 Kyocera’s bracketed Response, April 9, 2020 Ex.’s C, G, and H (to Kyocera’s April 9, 2020, Response) “any similar material that might be included in Kyocera’s upcoming sur-reply” “any portion of the ultimate ruling that includes such information” Koki’s April 27, 2020 email requesting confidential treatment for Koki’s bracketed Oral Discussion presentation Koki’s May 1, 2020 letter requesting confidential treatment for Koki’s bracketed post Oral Discussion brief, May 1, 2020 “confidential portions of the transcript of the oral discussion,” provided as separated documents Kyocera -- Kyocera’s April 14, 2020, letter requesting confidential treatment for Kyocera’s bracketed Response, April 9, 2020 “materials designated by Koki as confidential business information” “confidential versions of decisions issued in the 1082 Investigation….to maintain the confidentiality represented to, and maintained, by, the [Commission] in the underlying 1082 Investigation.” CX-0011C (Ex. H) Remand Initial Determination (Ex. G) Commission Opinion (Ex. C) Kyocera’s April 20, 2020, letter requesting confidential treatment Kyocera’s bracketed Sur-reply, April 20, 2020 Kyocera’s May 1, letter requesting confidential treatment Kyocera’s bracketed post Oral Discussion brief, May 1, 2020 Ex. K, to Kyocera’s May 1, 2020, post Oral Discussion brief (Kyocera’s April 27, 2020 presentation) Ex. L to Kyocera’s May 1, 2020, post Oral Discussion brief (full Oral Discussion transcript designated confidential) If there is any 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, then the parties are asked to contact CBP within five (5) business days of the date of this ruling letter. As discussed in greater detail in Section III.B., 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. I. BACKGROUND: U.S. Patent No. 8,387,718 The ’718 Patent is titled Method for Controlling a Fastener Driving Tool Using a Gas Spring. Senco Brands, Inc. is listed as the assignee of U.S. Patent No. 8,387,718. See ‘718 Patent (Kyocera Ex. A); U.S. Patent No. 8,387,718, Recordation of Assignment, Form PTO-1595 (April 4, 2011) (Compl. Ex. 16); ID at 20 f.n.6 (Public Version) (July 1, 2019) (“Complainant owns by assignment the entire right, title, and interest in the asserted patent. (See Am. Compl. Ex. 16.)”). Selected Technology Overview The ’718 Patent is directed to “portable linear fastener driving tools (or nailers) that can drive staples, nails, or other linearly driven fasteners into a workpiece.” (Comm’n Op. at 6 (citing JX-4 at 1:17-19.) The Commission noted Fig.1 (shown below) of the ’718 patent illustrates a fastener driving tool 10 which is the first embodiment of the invention. (Comm’n Op. at 7 (citing JX-4 at 7:27-32).) 
 “The ’718 specification discloses various types of firing (or driving) modes for using the tool 10 to drive fasteners into a workpiece [JX-4] at 14:43-61. For one driving mode, i.e., a ‘trigger fire’ mode, the user of the tool first presses the tool nose 34 against a work surface, and then depresses the trigger actuator 54 (shown in Fig. 1 above), which causes the drive stroke to occur. Id. Alternatively, for another driving mode, i.e., a ‘bottom fire’ mode, the trigger 54 is actuated first, and then user of the tool presses the tool nose 34 against a work surface, and it is the work surface contact that initiates the drive stroke. Id.” (Comm’n Op. at 13.) Prosecution History U.S. Patent No. 8,387,718 The ’718 Patent issued from application No. 12/913,049, a divisional of Ser. No. 12/243,693, and claims priority to provisional application Ser. No. 60/977,678 filed October 5, 2007. Application No. 12/243,693 In a non-final office action, mail date June 18, 2010, the examiner identified Claims 1–36 as subject to a restriction and/or election requirement. (Reply, Ex. 1 (Restriction Requirement) at 1.) In particular, the examiner required restriction to one of three distinct inventions under 35 U.S.C § 121, including Invention II: Claims 13–21, drawn to a method for controlling a fastener driving tool, comprising the step of selecting an operating mode of a driving cycle to be one of a “bottom firing mode” and a “restrictive firing mode”, classified in class 172, subclass 1. (Reply, Ex. 1 (Restriction Requirement) at 2.) The examiner explained further, “…and the process of invention II requires the step of selecting between at least two operational modes.” (Reply, Ex. 1 (Restriction Requirement) at 3.) In addition with respect to invention III, the examiner explained, “the apparatus as claimed can be used to practice another materially different process, such as a process comprising the step of ac

Section 337 Exclusion Order AdministrationCongress charged the Commission with investigating and making a determination whether or not there is a violation of Section 337, and on that basis, absent a finding that the public interest would be negatively affected, issuing an Order to “direct that the articles concerned, imported by any person violating the provision of this section, be excluded from entry into the United States.” See Section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337(a)(1) (“the following are unlawful, and when found by the Commission to exist shall be dealt with, in addition to any other provision of law. …”); 19 U.S.C §§ 1337(b), (c) and (d); see also S.Rep. No. 1298, 93d Cong., 2d Sess. 196 (“the relief provided for violations of section 337 is ‘in addition to’ that granted in ‘any other provisions of law’”). “Any person adversely affected by a final determination of the Commission . . . may appeal such determination . . . to the United States Court of Appeals for the Federal Circuit for review. ” 19 U.S.C. § 1337(c).When the Commission determines there is a violation of section 337, it generally issues one of two types of exclusion orders: (1) a limited exclusion order or (2) a general exclusion order. See Fuji Photo Film Co., Ltd. v. U.S. Int’l Trade Comm’n, 474 F.3d 1281, 1286 (Fed. Cir. 2007). Both types of orders direct CBP to bar infringing products from entering the country. See Yingbin- Nature (Guangdong) Wood Indus. Co. v. U.S. Int’l Trade Comm’n, 535 F.3d 1322, 1330 (Fed Cir. 2008). “A limited exclusion order is ‘limited’ in that it only applies to the specific parties before the 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.The “Commission has broad discretion in selecting the form, scope and extent of the remedy. Viscofan, S.A. v. United States ITC, 787 F.2