Ruling Request; U.S. International Trade Commission; General Exclusion Order; Investigation No. 337-TA-1174; Certain Toner Cartridges, Components Thereof, and Systems Containing Same

HQ H325566 July 18, 2022 OT:RR:BSTC:EOE H325566 SEH CATEGORY: 19 U.S.C. § 1337; Unfair Competition Gary M. Hnath MAYER BROWN LLP 1999 K Street NW Washington, D.C. 20006-1101 VIA EMAIL: [email protected] 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. Hnath: 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 in response to the request for an administrative ruling from Recharging Technologies Limited (“Recharging Tech.”), dated May 31, 2022, with Exhibits A-K (collectively, “Ruling Request”). We find that Recharging Tech. has established, through this inter partes proceeding, that its redesigned toner cartridges – model nos. TN730, TN760, and TN770 (collectively, “the Redesigned Cartridges”) – are not subject to exclusion from entry based on the general exclusion order (“GEO”) that the U.S. International Trade Commission (“Commission”) issued in Investigation No. 337-TA-1174 (“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”) unless and until this ruling letter is revoked or modified pursuant to 19 C.F.R. § 177.12. 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. As noted above, this ruling letter is the result of a request for an administrative ruling from CBP under 19 C.F.R. Part 177 that the EOE Branch 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, Recharging Tech., the ruling requester; and (2) Brother Industries, Ltd., Brother International Corporation (U.S.A.), and Brother Industries (U.S.A.), Inc. (collectively “Brother”), the complainants in the 1174 investigation. See e.g., 19 C.F.R. § 177.1(c). Recharging Tech. requested a ruling from CBP that its “redesigned toner cartridges (model nos. TN730, TN760, and TN770)” are not subject to the 1174 GEO. See e.g., Ruling Request at 1. Recharging Tech. noted, inter alia, that: the Redesigned Cartridges lack the “second gear” required by all claims of the ’387 patent; the Redesigned Cartridges lack the “detection gear” required by all claims of the ’093 patent; the Redesigned Cartridges lack the “gear” with a “plurality of gear teeth” required by all claims of the ’460 patent; the Redesigned Cartridges lack the “developing electrode” required by all claims of the ’856 patent; and the Redesigned Cartridges lack the “second cartridge electrode” required by all claims of the ’456 patent. Ruling Request at 2. The ruling request specifies that “images of the TN760 cartridge are used as representative of the remaining cartridges, and the TN730 and TN770 cartridges do not infringe for the same reasons as the TN760 cartridge.” Ruling Request at 13. Pictures from the Ruling Request of a TN760 cartridge are reproduced below: The ’387 Patent Recharging Tech. contended, “[i]n each of the Redesigned Cartridges, there is no ‘second gear mounted to the second end portion of the agitator shaft and rotatable with the agitator shaft[.]’” Ruling Request at 14. [[ ]] Ruling Request at 14. [[ ]] Ruling Request at 15. [[ ]] Ruling Request at 15. [[ ]] Ruling request at 16. When describing the Redesigned Cartridges, Recharging Tech. noted, inter alia, “[a]s shown from the preceding images, the Redesigned Cartridges lack the claimed ‘second gear.’ Instead, these cartridges use a cam on what Brother might refer to as the ‘second end’ of the cartridge.” Ruling request at 16 (footnote omitted). [[ ]] Ruling request at 16. Additionally, Recharging Tech. noted, “[a]s shown in the images below, the elongated member (annotated in green) connected to the cam in the Redesigned Cartridges cannot be the claimed ‘agitator shaft’ because, being external to the cartridge, that elongated member does not interact with or contribute to stirring toner or rotating the agitator (i.e., agitating toner). It is not associated with the toner reservoir at all.” Ruling Request at 18. [[ ]] Ruling Request at 19. The ’093 Patent When describing the Redesigned Cartridges, Recharging Tech. noted, inter alia, “[a]s shown in the images below, the Redesigned Cartridges do not include a ‘gear’ on a ‘second outer surface’ (the end of the cartridge opposite from where the coupling is located) to determine whether a cartridge is new. Instead, they use an entirely different mechanism (a cam)[.]” Ruling Request at 24-25. [[ ]] Ruling Request at 25. [[ ]] Ruling Request at 25. Additionally, Recharging Tech. noted, “[a]s shown in the following CAD images of the representative TN760 Redesigned Cartridge, the cam is part of the shaft such that the two rotate together (as indicated with the purple box and purple arrow in the following images), not ‘about’ or ‘relative to’ one another.” Ruling Request at 28. [[ ]] Ruling Request at 28. The ’460 Patent When describing the Redesigned Cartridges, Recharging Tech. noted, inter alia, “[a]s shown from the following images, the Redesigned Cartridges do not include any component that has both ‘a plurality of gear teeth’ and a ‘first covering portion’ that is rotatable with the component[.]” Ruling Request at 32. [[ ]] Ruling Request at 33. [[ ]] Ruling Request at 33. Additionally, Recharging Tech. noted, “[a]s shown in these images, the cam is not a ‘gear’ (as noted earlier), does not have ‘a plurality of gear teeth on a portion of a circumference of the gear,’ and does not have a ‘first covering portion’ that rotates together with the cam[.]” Ruling Request at 33. Recharging Tech. noted, “[f]urther, the opposite end of the Redesigned Cartridges lacks any component ‘including a plurality of teeth on a portion of a circumference’ while ‘including a first covering portion covering the first portion [of a circumferential surface of the protrusion].’” Ruling Request at 34. [[ ]] Ruling Request at 34. The ’856 Patent When describing the Redesigned Cartridges, Recharging Tech. noted, inter alia, “[e]ach of the Redesigned Cartridges lack the claimed ‘developing electrode.’ As shown in the images below, each of the Redesigned Cartridges include only one electrode (indicated with a purple arrow).” Ruling Request at 37-38. [[ ]] Ruling Request at 38. [[ ]] Ruling Request at 38. The ’456 Patent When describing the Redesigned Cartridges, Recharging Tech. noted, inter alia, “[r]egardless of whether the single electrode in the Redesigned Cartridges is alleged to be the ‘first cartridge electrode’ or the ‘second cartridge electrode,’ as shown in the images below, each of the Redesigned Cartridges includes only one electrode (indicated with a purple arrow).” Ruling Request at 40. [[ ]] Ruling Request at 41. [[ ]] Ruling Request at 41. On June 17, 2022, the parties proposed a schedule for this inter partes proceeding. See June 17, 2022, email from Bryan Nese. On June 22, 2022, the parties executed an NDA. See June 27, 2022, email from Bryan Nese. Moreover, the EOE Branch understands that Recharging Tech. provided the confidential version of the ruling request to Brother in June 2022. On July 5, 2022, counsel for Brother notified the EOE Branch and counsel for Recharging Tech, that “[b]ased on our review of the newly designed TN730/760/770 toner cartridge submitted for consideration in the above-referenced proceeding, Brother does not intend to file a response or otherwise contest Recharging Technologies Limited’s Rule 177 request.” See July 5, 2022, email from Tommy Martin. Given the absence of an infringement contention by Brother that the Redesigned Cartridges are covered by any of the claims of the patents on which the Commission based a finding of violation of section 337, the EOE Branch finds that Recharging Tech. has established that the Redesigned Cartridges are not subject to exclusion from entry on the basis of the 1174 GEO. If there is information in this ruling letter not currently bracketed in [[ ]] that either party believes constitutes confidential information, and should be redacted from the published ruling, then the relevant party is asked to contact the EOE Branch within ten (10) working days of the date of this ruling letter to indicate its belief that this ruling letter contains additional confidential information. Otherwise, the ruling letter will be published, in accordance with 19 U.S.C. § 1625, as implemented by 19 C.F.R. Part 177, without any additional redactions. The decision above is limited to the specific facts set forth herein. If articles differ in any material way from the Redesigned Cartridges 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: Tommy Martin, Esq. Baker Botts L.L.P. 700 K Street, NW Washington, DC 20001 [email protected]