Fuji Photo Film v. International Trade Com'n

• Citation: 386 F.3d 1095
• Decision Date: 07 October 2004
• Docket Number: No. 03-1488.,No. 03-1016.,03-1016.,03-1488.
• Parties: FUJI PHOTO FILM CO., LTD., Appellant, v. INTERNATIONAL TRADE COMMISSION, Appellee, and Achiever Industries, Ltd., Intervenor.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

386 F.3d 1095

FUJI PHOTO FILM CO., LTD., Appellant, v. INTERNATIONAL TRADE COMMISSION, Appellee, and Achiever Industries, Ltd., Intervenor.

No. 03-1016.

No. 03-1488.

United States Court of Appeals, Federal Circuit.

DECIDED: October 7, 2004.

Appeal from the United States International Trade Commission.

COPYRIGHT MATERIAL OMITTED

Lawrence Rosenthal, Stroock & Stroock & Lavan LLP, of New York, NY, argued for appellant. With him on the brief were Matthew W. Siegal, Lisa A. Jakob, Angie M. Hankins and Howard D. Shatz.

Jean H. Jackson, Attorney, Office of the General Counsel, U.S. International Trade Commission, of Washington, DC, argued for appellee. With her on the brief were Lyn M. Schlitt, General Counsel; and James M. Lyons, Deputy General Counsel.

Joseph W. Bain, Akerman Senterfitt, of West Palm Beach, FL, argued for intervenor.

Before CLEVENGER, BRYSON, and LINN, Circuit Judges.

BRYSON, Circuit Judge.

This is one of two related appeals from a decision of the International Trade Commission in a case involving "single-use" or "disposable" 35 mm film cameras, more formally known as lens-fitted film packages ("LFFPs"). In 1998, appellant Fuji Photo Film Co., Ltd., filed a complaint with the Commission alleging that various respondents were violating section 337 of the Tariff Act of 1930 as amended, 19 U.S.C. § 1337, by importing LFFPs that infringed a number of Fuji's utility and design patents. The Commission initiated an investigation. At the conclusion of the investigation, the Commission found that 26 respondents had infringed one or more of Fuji's patents. As a remedy, the Commission issued a general exclusion order under 19 U.S.C. § 1337(d)(2) excluding cameras covered by various claims of 15 Fuji patents from entry into the United States. The Commission also issued cease and desist orders to 20 domestic respondents who were found to have significant amounts of infringing inventory in this country. On appeal, this court upheld the general exclusion order and the cease and desist orders in pertinent part. Jazz Photo Corp. v. Int'l Trade Comm'n, 264 F.3d 1094 (Fed.Cir.2001).

In June 2001, Fuji sought additional relief. It filed a complaint seeking enforcement of the prior orders, modification of the general exclusion order, and an advisory opinion as to the scope of the original exclusion order. Fuji named 20 respondents in the new proceeding, many of which were not respondents in the earlier proceeding. In May 2002, the administrative law judge to whom the case was assigned issued an initial advisory opinion and an enforcement initial determination in which he made 59 infringement determinations involving seven patents. In June 2003, the Commission decided not to review the portions of the initial advisory opinion and enforcement initial determination that are pertinent to this appeal. Those orders thus became the orders of the Commission.

Fuji took this appeal from the Commission's orders. It has raised objections to the Commission's disposition of several of the patent issues and has challenged two aspects of the Commission's rulings on matters of remedy. We affirm the Commission's rulings on all but one of the patent issues, and we affirm the Commission's rulings on the two remedial issues.

I

Fuji's first argument is that the Commission erred in its construction of claim 1 of Fuji's reissued U.S. Patent No. Re. 34,168 ("the '168 patent"). The relevant portion of that claim is a limitation that refers to the front cover section of the camera. That limitation reads as follows, with the disputed language emphasized:

a front cover section which is attached to said main case section and closes said open front of said main case section to cover the majority of said taking lens and said shutter means and said film transporting means, said front cover section being formed with at least one opening for partly receiving therein a member of one of said means ....

Fuji argued to the Commission that several cameras infringed claim 1 of the '168 patent because in each of the accused cameras an opening in the front cover of the camera received at least one of (1) the film transporting means, (2) the shutter means, or (3) the taking lens. The Commission ruled that based on a proper construction of the terms "opening" and "said means" the accused cameras did not infringe.

A

The Commission construed the term "opening" in claim 1 of the '168 patent to mean a "hole, breach, or aperture." Fuji argues that the term should be construed more broadly, to include "[a]n open space serving as a passage or gap," or "an unobstructed or unoccupied space or place."

Claims must be read in the context of the specification of which they are a part. Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1379 (Fed.Cir.2001). The term "opening," as used throughout the '168 patent, refers to an opening in the cover of a disposable camera. The specification makes clear that the front cover section consists of a surface that encloses the camera body and that is perforated in several places. Because the patent consistently uses the term "opening" to refer to the perforations in the camera's cover sections or external container, the context strongly suggests that "opening" means a hole, breach, or aperture in the cover, not a three-dimensional open space of the sort that Fuji contends should be part of the construction of the term.

Each time the term "opening" is used in the specification, it refers to a hole, breach, or aperture in the camera cover, either by textual description or by reference to the patent figures. In support of its broader claim construction, Fuji points to a sentence from the specification that describes the lens hole in the front cover as being "defined by a circular boss 37a." '168 patent, col. 5, ll. 27-29. Because the circular boss consists of a hollow bulge in the front cover section, and because the specification states that the hollow bulge is "for receiving therein the taking lens," Fuji argues that the term "opening" must be interpreted to include an open space such as is created by a bulge in the camera cover.

Significantly, the sentence on which Fuji relies does not refer to the circular boss as an "opening." Nor is the circular boss ever referred to as an opening. To the contrary, the specification characterizes the lens hole as being "defined by" the circular boss, and it characterizes the lens hole as an "opening." See '168 patent, col. 6, ll. 56-62. The sentence cited by Fuji thus does not support Fuji's argument at all, but in fact indicates that what the patent refers to as an "opening" — the lens hole — is different from what the patent refers to as the "boss" that surrounds and defines the opening. We therefore agree with the Commission that the claimed "front cover section being formed with at least one opening" uses the term "opening" to refer to a hole, breach, or aperture.

B

Fuji next argues that the Commission erred in its construction of the term "said means" in claim 1 of the '168 patent. The Commission ruled that the reference to "said means" included the "shutter means" and the "film transporting means," but did not include the "taking lens." Because the taking lens was not denominated as a "means" in the claim, the Commission held that the taking lens was not one of the "said means" referred to in the limitation requiring a front cover having "at least one opening for partly receiving therein a member of one of said means." The result of the Commission's construction of the "said means" limitation is that in order for an accused camera to infringe, either the shutter means or the film transporting means must be received by an opening in the camera's front cover.

Fuji argues that, notwithstanding the omission of the word "means" following "taking lens," the taking lens should still be considered one of the "said means" referred to in claim 1. In support of its argument, Fuji points out that other parts of the patent refer to the taking lens as a "means," and that the patent discloses cameras in which the taking lens is received by a hole in the camera's front cover.

The plain meaning of the claim language provides clear direction here. The word "means" is used in reference to two of the three components set forth in the "front cover section" limitation ("shutter means" and "film transporting means") but not the third ("taking lens"). Moreover, the same distinction is found in the preamble of claim 1, which refers, like the text of the claim, to "a taking lens, shutter means, and film transportation means." '168 patent, col. 9, ll. 31-32. The patent drafter's repeated use of the term "means" in connection with only two of the three components provides strong support for the Commission's construction, which interprets the claim as it is written, as opposed to Fuji's construction, which requires that the word "means" be read into a portion of the claim where it is conspicuously absent.

Nor does the specification require a different construction. While all the embodiments of the '168 patent disclose a lens protruding through a hole in the front cover of the camera, the patent does not disclose any embodiment in which the lens is the sole element that is partly received by an opening in the camera cover. The specification therefore does not refer to any embodiments that would be outside the scope of the claim as the Commission has construed it. Although the specification makes clear that the lens in each camera is mounted on the main case section and protrudes through an opening in the front cover section, the question is not whether claim 1 requires a protruding lens. Rather, the question is whether a camera that has an opening for the lens thereby satisfies the requirement of claim 1 that the cover contain "at least one opening for partly receiving therein a member of one of said means." The plain language of the claim requires a member of either the shutter means or the film...