H315842

April 28, 2021 OT:RR:BSTC:EOE H315842 CBC CATEGORY: 19 U.S.C. § 1337; Unfair Competition Mr. Steven E. Adkins McGuireWoods LLP 2001 K St. NW Suite 400 Washington, D.C. 20006-1040 VIA EMAIL: seadkins@mcguirewoods.com MW-1174@mcguirewoods.com 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. Adkins: 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. We find that Union Technology International (Macao Commercial Offshore) Co. Ltd. and Print-Rite Unicorn Image Products Co. Ltd. (collectively, “Print-Rite”) has met its burden to show that the Print-Rite TN420/450 and TN630/TN660 model toner cartridges (“monochrome cartridges”) described in its ruling request of January 4, 2021, do not infringe claims 1-7 and 9 of U.S. Patent No. 9,568,856 (“the ’856 patent”) and claims 1, 4, 5, and 9 of U.S. Patent No. 9,632,456 (“the ’456 patent”). Accordingly, CBP’s position is that these monochrome cartridges are not subject to the general exclusion order (“GEO”) issued by the U.S. International Trade Commission (“ITC” or “Commission”) in Investigation No. 337-TA-1174, Certain Toner Cartridges, Components Thereof, and Systems Containing Same (“the underlying investigation” or “the 1174 investigation”), pursuant to section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337 (“section 337”) (“1174 GEO”). However, we find that Print-Rite has not met its burden to show that the Print-Rite TN221/TN225, TN223/TN227, and TN730/760/770 model toner cartridges (“detection gear cartridges”) do not infringe claim 1 of U.S. Patent No. 9,846,387 (“the ’387 patent”). Accordingly, CBP’s position that the detection gear cartridges are subject to the 1174 GEO. We further note that determinations of the Commission resulting from 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. 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, Print-Rite, the 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 and patent owner in the underlying investigation. See, e.g., 19 C.F.R. § 177.1(c). 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 their submissions to the CBP. See, e.g., EOE Branch Email to Parties dated January 8, 2021. If there is additional information in this administrative ruling 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 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 (“TSA”) (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 first that the submitter customarily keeps the information private or closely-held, and either (a) the government provided an express or implied assurance of confidentiality when the information was shared with the government or (b) there were no express or implied indications at the time the information was submitted that the government would publicly disclose the information. See, e.g., OIP Guidance: Step-by-Step Guide for Determining if Commercial or Financial Information Obtained from a Person is Confidential Under Exemption 4 of the FOIA (posted 10/3/2019). 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 alleged violations of section 337 based upon the importation into the United States, the sale for importation, and the sale within the United States after importation of certain toner cartridges, components thereof, and systems containing same by reason of infringement of claims 1-7 and 9 of 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 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 the ’387 patent. Id. The Commission’s notice of investigation named 32 respondents, including: AMI Brothers, Inc. of San Bruno, California (“AMI”); 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”); Globest Trading Inc. of Ontario, California (“Globest”); Intercon International Corp. of Brea, California (“Intercon”); and Linkyo Corp. of La Puente, California (“Linkyo”). Id. at 2-3. The notice of investigation also named the Office of Unfair Import Investigations (“OUII”) as a party. Id. at 3. All eight participating respondents, Brother, and OUII 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 Joint Notice of Disputed Claim Terms (Dec. 6, 2019) (EDIS Doc ID 696586). 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; 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); Comm’n Op. at 27 n.14. Print-Rite observes that the Linkyo Joint Stipulation as to Original and Newly Designed Products during the 1174 investigation involved “the same products that are the subject of this [ruling request] that are to be supplied by Print-Rite to customers other than Linkyo.” Ruling Request, 2. 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, defaulted. Comm’n Op. at 3-4. On July 23, 2020, the presidin

was not necessary since the accused products were identical in material respects to the articles covered by the relevant patents. ID, 5 (“Imitation may be the sincerest form of flattery but copying patented components of copiers and printers is not flattery; it is infringement. And importing copied components is unlawful under section 337 of the Tariff Act of 1930.”) (emphasis added). Accordingly, the ALJ did not need to address the question whether the “second gear” in claim 1 of the ’387 patent is limited to a structure with teeth and, on that basis, provided no construction of this claim term. As such, the plain and ordinary meaning was sufficient for purposes at the Commission where none of the accused products exhibited a “toothless” gear.Significantly, “[w]hen the parties present a fundamental dispute regarding the scope of a claim term, it is the court’s duty to resolve it.” O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008). In such cases, “[c]laim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when necessary to explain what the patentee covered by the claims, for use in the determination of infringement.” Id. (quoting U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997)). Print-Rite’s noninfringement argument for the ’387 patent is based entirely on the scope of the “second gear” limitation and whether it only applies to a structure with teeth. Brother, for its part, argues that the scope of claim 1 covers gears irrespective of whether they have teeth or are toothless. Accordingly, in cases such as this when the parties present a fundamental dispute regarding the scope of a claim term, the EOE Branch must construe the relevant limitation to resolve that dispute and, with respect to this ruling request, address whether the “second gear” limitation requires teeth and determine whether the detection gear cartridges at issue are subject to the 1174 GEO.