H324364

HQ H324364 April 5, 2022 OT:RR:BSTC:EOE H324364 WMW CATEGORY: 19 U.S.C. § 1337; Unfair Competition Mr. Hua Chen ScienBiziP, P.C. 550 S. Hope Street, Suite 2825 Los Angeles, CA 90071 VIA EMAIL: huachen@scienbizippc.com litigation@scienbizippc.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. Chen: 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 Jiangxi Yibo E-Tech Co., Ltd, Aster Graphics, Inc. and Aster Graphics Co., Ltd. (“Aster”) has met its burden to show that the TN7xxA/B model toner cartridges (“subject cartridges”), as identified and described in Aster’s ruling request of September 30, 2021, do not infringe claims 1-5, 10, or 12-15 of U.S. Patent No. 9,785,093 (“the ‘093 patent”). Accordingly, CBP’s position is that these cartridges are not subject to the general exclusion order (“1174 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 (“section 337”), as amended, 19 U.S.C. § 1337. 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 related to section 337 exclusion orders. 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, Aster, the foreign manufacturer and wholesale supplier 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. Part 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 CBP. See, e.g., EOE Branch Email to Parties (dated October 13, 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 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 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 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 Joint Notice of Disputed Claim Terms (Dec. 6, 2019) (EDIS Doc ID 696586). 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. F

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 “(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 RequestProcedural History On September 30, 2021, Aster submitted a letter to the EOE Branch requesting an administrative ruling pursuant to 19 C.F.R. Part 177, which included attachments A-Q (“Ruling Request”). Aster sought a ruling that its TN7xxA/B product se