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Court Orders New Determinations on Infringement of Disposable Cameras

October 07, 2004

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Last Month at the Federal Circuit - November/December 2004

Judges: Bryson (author), Clevenger, and Linn

In Fuji Photo Film Co. v. International Trade Commission, No. 03-1016 (Fed. Cir. Oct. 7, 2004), the Federal Circuit affirmed part of the ITC’s order relating to infringement by single-use or disposable 35 mm film cameras, but vacated another part of that order and remanded for a new determination of infringement concerning one patent.

Several years ago, the ITC found that twenty-six respondents had infringed one or more patents owned by Fuji Photo Film Company, Ltd. (“Fuji”) and issued a general exclusion order concerning fifteen Fuji patents. The ITC also issued cease and desist orders to twenty domestic respondents who were found to have had significant amounts of inventory in this country. The Federal Circuit upheld those orders.

Later, Fuji sought modification of a general exclusion order and named twenty respondents in the new proceeding, many of which were not respondents in the earlier proceeding. The ALJ made several findings of infringement involving seven patents, several of which are the subject of this appeal.

First, Fuji argued that the ITC had erred in construing claim 1 of reissued U.S. Patent No. Re 34,168 (“the ‘168 patent”). Fuji argued for a broad construction of the term “opening,” but the Federal Circuit agreed that the claim scope and specification required a more narrow construction. Specifically, the Court agreed that the term “opening” means a hole, breach, or aperture in a cover, not a threedimensional open space of the sort argued by Fuji.

Fuji also argued that the ITC had erred in the construction of the term “said means” in claim 1 of the ‘168 patent. Specifically, the ITC ruled that reference to “said means” included the “shutter means” and the “film transporting means” but did not include the “taking lens” recited in claim 1. Fuji argued that notwithstanding the omission of the word “means” following “taking lens,” the taking lens should still be considered as one of “said means” referred to in claim 1. The Federal Circuit rejected this argument, concluding that the plain language of the claim provided clear direction. Since the word “means” was used in reference to two of these three components but not the third (“taking lens”), this third limitation was not a means limitation.

Concerning two other patents, the claims recite a light-tight film casing that must be destroyed to open the same. The Federal Circuit agreed with the ALJ that the evidence showed that the respondent’s accused cameras did not have film casings that must be destroyed to open them. The wife of one expert witness was able to obtain through the Internet the film needed to reload one of the cameras. The casing readily snapped back in place without any apparent loss of light-tightness.

Concerning claim 1 of U.S. Patent No. 4,972,649 (“the ‘649 patent”), the ITC had required all three steps of the claim to be performed in a “dark room,” even though the words “in a dark room” were only recited for the first step of that claim. The Federal Circuit concluded, however, that the fact that this limitation was included in only one of the three steps provided strong textual support that the claim should be construed to distinguish between the first step and the other two. Moreover, nothing in the ‘649 patent required that a dark room be used for all three steps. Thus, according to the Federal Circuit, the ITC had erred in ruling otherwise.

Fuji also sought a cease and desist order against companies that import infringing products but maintain no inventory in the U.S. and those that do not import products but do business through third parties. The Federal Circuit concluded, however, that Fuji had not shown that the general exclusion order would be inadequate when enforced by customs.