On February 1, 2013, the U.S. Court of International Trade (“CIT”) issued its opinion granting Plaintiff Corning Gilbert Inc.’s (“Corning”) motion for summary judgment in Corning Gilbert Inc. v. United States (11-00511).
By way of general background, U.S. Customs and Border Protection (“CBP”) is tasked with enforcing both limited exclusion orders (“LEO”) and general exclusion orders (“GEO”) issued from the U.S. International Trade Commission (“ ITC”). If an importer feels that CBP has erroneously denied entry to the importer’s goods based on a LEO or GEO, the party may file an administrative protest. If the protest is denied, the party may challenge the denial to the CIT.
According to the CIT Opinion, CBP denied entry to certain Corning coaxial cable connectors (the “Denied Products”) based on a GEO issued by the ITC in Investigation No. 337-TA-650 (the “650 Investigation”). The 650 Investigation GEO prohibits entry of coaxial cable connectors that infringe claim 1 and/or claim 2 of U.S. Patent No. 6,558,194 (the ‘194 patent). Corning was not a respondent to the 650 Investigation and, more specifically, the Denied Products were not at issue in the 650 Investigation. See our September 22, 2011 post for more details on the 650 Investigation. Corning protested CBP’s exclusion of the Denied Products, arguing that the Denied Products did not infringe the patent claims at issue in the 650 Investigation. CBP Headquarters denied the protest (the “HQ Ruling”), finding that the Denied Products were properly excluded under the 650 Investigation GEO. Corning then filed this action in the CIT, challenging the protest denial. Subsequently, both parties filed cross-motions for summary judgment.
According to the Opinion, three issues were before the court: “(1) whether the HQ Ruling, which is the basis for Customs’ denial of Corning Gilbert’s protest, warrants any deference; (2) the proper claim construction for contested terms found in the claims of the ‘194 Patent; and (3) application of the claims of the ‘194 Patent, properly construed, to the [Denied Products].”
First, the CIT determined that the HQ Ruling did not warrant deference. The CIT held that CBP failed to make a substantive determination that the Denied Products infringed claim 1 or claim 2 of the ‘194 patent. The CIT noted that CBP failed to take the first step in a patent infringement analysis by never engaging in claim construction of the disputed claim term, “cylindrical body member.” The CIT held that CBP improperly relied on the ITC’s finding that the accused products in the 650 Investigation infringed the asserted patent claims. In support of this assertion, the CIT noted that (1) no evidence was presented to CBP or the court that the Denied Products are “materially identical” to the products found to infringe the asserted claims of the ‘194 patent, and (2) Corning did not have an opportunity to be heard during the 650 Investigation as to whether the accused products infringed the asserted claims of the ‘194 patent. Accordingly, the CIT held that the HQ Ruling did not warrant deference.
Second, the CIT construed the claim term “cylindrical body member” to mean the “generally cylindrical shaped portion of the connector that surrounds the tubular post to define a central bore.” The CIT based this construction on the remaining claim language, the specification, the prosecution history, and Corning’s uncontroverted expert declaration supporting its construction.
Lastly, the CIT determined that the Denied Products do not infringe claims 1 and 2 of the ‘194 patent. The CIT held that the Denied Products failed to meet the claim limitation requiring the “cylindrical body member” to have a cylindrical sleeve that is deformable. The CIT noted that the only portion of the Denied Products that deforms is the “gripping ring.” Based on the claim construction discussed above, the CIT found that the “gripping ring” was a separate component from the “cylindrical body member.” Further, the CIT noted that the “gripping ring” is irregular shaped and, therefore, if it were a part of the “cylindrical body member,” the “cylindrical body member” would not meet the cylindrical limitation. Accordingly, the CIT granted Corning’s motion for summary judgment , holding that the Denied Products do not infringe claims 1 and 2 of the ‘194 and were improperly excluded from entry.