H326558

HQ H326558 December 21, 2022 OT:RR:BSTC:EOE H326558 FKM CATEGORY: 19 U.S.C. § 1337; Unfair Competition Mr. Derrick J. Carman Robins Kaplan LLP 1325 Avenue of the Americas, Suite 2601 New York, New York 10019 VIA EMAIL: RK-GPI@robinskaplan.com RE: Ruling Request; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-1259; Certain Toner Supply Containers and Components Thereof (I) Dear Mr. Carman: 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 Katun Corporation and General Plastic Industrial Co. Ltd. (collectively, “Katun”) has not met its burden to show that certain redesigned toner cartridges (“articles at issue” or “Katun Redesign”) do not infringe one or more of claim 1 of U.S. Patent No. 10,209,667 (“the ’667 patent”); claim 1 of U.S. Patent No. 10,289,060 (“the ’060 patent”); claim 1 of U.S. Patent No. 10,289,061 (“the ’061 patent”); claim 1 of U.S. Patent No. 10,295,957 (“the ’957 patent”); claims 1 and 12 of U.S. Patent No. 10,488,814 (“the ’814 patent”); claims 50, 58, and 61 of U.S. Patent No. 10,496,032 (“the ’032 patent”); claims 1 and 13 of U.S. Patent No. 10,496,033 (“the ’033 patent”); claims 46 and 50 of U.S. Patent No. 10,514,654 (“the ’654 patent”); claims 1, 10, and 13 of U.S. Patent No. 10,520,881 (“the ’881 patent”); or claims 1 and 8 of U.S. Patent No. 10,520,882 (“the ’882 patent”) (collectively, “patents at issue”). 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-1259 (“the underlying investigation” or “the 1259 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, Katun, the ruling requester and respondent in the 1259 investigation; and (2) Canon Inc., Canon U.S.A., Inc., and Canon Virginia, Inc. (“collectively, “Canon”), complainant in the 1259 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 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, then 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, 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-1259 Procedural History at the ITC The Commission instituted Investigation No. 337-TA-1259 on April 13, 2021, based on a complaint filed by Canon. Certain Toner Supply Containers and Components Thereof (I), Inv. No. 337-TA-1259, EDIS Doc. ID 778370, Public Commission Opinion (Aug. 19, 2022) (“Comm’n Op.”) at 2 (citing 86 Fed. Reg. 19284-86 (Apr. 13, 2021)). The complaint, as supplemented, alleged a violation of section 337 by reason of infringement of certain claims of U.S. Patent Nos. 8,565,649; 9,354,551; 9,753,402; the ’667 patent; the ’060 patent; the ’061 patent; the ’957 patent; the ’814 patent; the ’032 patent; the ’033 patent; the ’654 patent; the ’881 patent; and the ’882 patent. Comm’n Op. at 2. The Commission instituted two separate investigations based on the complaint, pursuant to Commission Rule 210.10(a)(6) (19 C.F.R. § 210.10(a)(6), and defined the scope of the 1259 investigation to the allegations of infringement of the asserted claims of the ’667, ’060, ’061, ’957, ’814, ’032, ’033, ’654, ’881, and ’882 patents. Id. The notice of investigation named Katun, among other parties, as a respondent. Id. at 3-4. Katun was terminated from the investigation due to consent order stipulations. Id. at 4 (citing Order No. 10 (July 1, 2021), unreviewed by Notice (July 19, 2021)). The Commission’s Office of Unfair Import Investigations was named as a party in the investigation. Comm’n Op. at 4. On March 15, 2022, the Administrative Law Judge (“ALJ”) issued a final initial determination (“FID”), granting Canon’s motion for summary determination and finding a violation of section 337. Id. at 5. 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 that infringe claim 1 of the ’667 patent; claim 1 of the ’060 patent; claim 1 of the ’061 patent; claim 1 of the ’957 patent; claims 1 and 12 of the ’814 patent; claims 50, 58, and 61 of the ’032 patent; claims 1 and 13 of the ’033 patent; claims 46 and 50 of the ’654 patent; claims 1, 10, and 13 of the ’881 patent; and claims 1 and 8 of the ’882 patent. Id. at 5 n.5. On April 29, 2022, the Commission determined to review the FID in part and requested briefing remedy, bonding, and the public interest. Id. at 6 (citing 87 Fed. Reg. 26783-85 (May 5, 2022). The Commission, in its review of the ID, found a violation of section 337 by the defaulting respondents with respect to claim 1 of the ’667 patent; claim 1 of the ’060 patent; claim 1 of the ’0

by examining the specification.2. The Specification According to Katun, the specification does indeed provide insight into the correct construction of the “provided at” limitation. Specifically, Katun argues that “because every single drawing and embodiment described in the specification shows the claimed track as being ‘on’ or ‘projecting from’ the developer discharging body, the claimed track . . . should be construed to be ‘on’ or ‘projecting from’ the developer discharging body.” Ruling Request at 22. Further, Katun notes that the patents “‘repeatedly, consistently, and exclusively depict[]” the track/engaging portions as being fixed tracks that are on or projecting from the developer discharging body. Id. (quoting Groove Digital, Inc. v. United Bank, 825 F. App’x 852, 856 (Fed. Cir. 2020) (citing In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1148-50 (Fed. Cir. 2012)). Because in Katun’s view the patent does not contemplate a configuration where the track is not “on” or “projecting from” the developer discharging body, Katun argues that the claims may be properly limited to the embodiments disclosed in the specification. Ruling Request at 22 (citing Profectus Tech. LLC v. Huawei Techs. Co., 823 F.3d 1375, 1381 (Fed. Cir. 2016). In response, Canon asserts that the plain and ordinary meaning controls, except in cases of lexicography or disavowal. Canon Response at 7 (citing Apple Inc. v. Wi-LAN Inc., 25 F.4th 960, 967 (Fed. Cir. 2022) (“We depart from the plain and ordinary meaning of claim terms based on the specification in only two instances: lexicography and disavowal.”) (quoting Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014)); Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732, 734 (Fed. Cir. 2014) (“A claim term should be given its ordinary meaning in the pertinent context, unless the patentee has made clear its adoption of a different definition or otherwise disclaimed that meaning.”); Thorner v. Sony Computer Entm’t Am. LLC, 6