



                        United States Court of Appeals for the Federal Circuit



                                            03-1016,-1488



                                      FUJI PHOTO FILM CO., LTD.,

                                                   Appellant,

                                                  v.

                                   INTERNATIONAL TRADE COMMISSION,

                                                   Appellee,


                                                 and

                                      ACHIEVER INDUSTRIES, LTD.,

                                                   Intervenor.



      Lawrence Rosenthal, Stroock &  Stroock  &  Lavan  LLP,  of  New  York,  New  York,  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, Florida, argued for intervenor.

Appealed from:   United States International Trade Commission






                        United States Court of Appeals for the Federal Circuit



                                            03-1016,-1488

                                      FUJI PHOTO FILM CO., LTD.,

                                       Appellant,

                                                  v.

                                   INTERNATIONAL TRADE COMMISSION,


                                       Appellee,

                                                 and

                                      ACHIEVER INDUSTRIES, LTD.,

                                        Intervenor.
                       ___________________________

                       DECIDED:  October 7, 2004
                       ___________________________


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  transporting  means  to  be  partly  received  by  an
opening in the cover and does not address whether the taking lens is also  received  by  an  opening.
That construction of the claim language is not at odds with anything in the specification; it is  not
inconsistent with any embodiment described in the patent; and  it  does  not  produce  a  nonsensical
result.  Indeed, as a way of claiming a camera in which either or both of the shutter means  and  the
film transporting means must be received by an opening in the camera cover, the language used in  the
claim is perfectly suitable.
      Fuji suggests that the absence of the word “means”  after  “taking  lens”  was  an  inadvertent
omission and that this court should, in effect, correct  the  omission  through  claim  construction.
There is no indication, however, that the selected language was the product  of  error  and  as  such
should be disregarded.  During prosecution, the examiner stated,  in  reference  to  the  claim  that
ultimately became claim 1 of the ’168 patent:
      In claim 1, lines 12 and 13, there is no proper antecedent basis in the claim for  “said  means
      projecting beyond surfaces of said main case section”.  If applicant  intends  to  recite  only
      “said means” (referring back to the previous two means), then applicant should clearly indicate
      what the description “projecting beyond surfaces of said main case section” modifies.


      In that rejection, the examiner made clear that  he  believed  “said  means”  referred  to  two
means, not three.  The applicant responded to the examiner’s  rejection  by  amending  the  claim  to
clarify the antecedent basis for the term “said means.”  In so doing, however,  the  applicant  never
disputed that the “means” in question referred to the “previous  two  means,”  as  the  examiner  had
stated.  That exchange  indicates  not  only  that  the  applicant’s  attention  was  called  to  the
examiner’s interpretation of “said means” as not including the  “taking  lens,”  but  also  that  the
applicant was invited to correct the examiner’s interpretation—an invitation the  applicant  did  not
accept.  Although caution must be used in attaching weight to an applicant’s silence in  response  to
an examiner’s statement about claim scope, see 3M Innovative Props., Inc. v.  Avery  Dennison  Corp.,
350 F.3d 1365, 1373-74 (Fed. Cir. 2004); Inverness Med. Switz. GmbH v. Warner Lambert Co.,  309  F.3d
1373, 1380 (Fed. Cir. 2002), the applicant’s failure to correct the  examiner’s  characterization  of
the “said means” as referring to only two means rather than three supports  the  inference  that  the
omission of the word “means” after “taking lens” was not inadvertent.
      If the omission of the word “means” after “taking lens” was an oversight, it should  have  been
corrected with an amendment or by  some  other  timely  measure  to  correct  the  error.   Since  no
amendment or other corrective measure was proposed, we have no way of knowing whether it  would  have
been granted, i.e., whether the broader claim scope that Fuji now seeks would have been available  to
it.  As we have previously observed, “as  between  the  patentee  who  had  a  clear  opportunity  to
negotiate broader claims but did not do so, and the public at large, it  is  the  patentee  who  must
bear the cost of its failure to seek protection” for particular subject matter.   Sage  Prods.,  Inc.
v. Devon Indus., Inc., 126 F.3d 1420, 1425 (Fed. Cir. 1997); see also Lemelson v. Gen.  Mills,  Inc.,
968 F.2d 1202, 1208 (Fed. Cir. 1992) (“Other players in the marketplace are entitled to rely  on  the
record made in the Patent Office in determining the meaning and scope of the patent.”).
      Fuji points to the use of the phrase “said taking lens means” in claim 3,  which  is  dependent
on claim 1, as well as  other  references  to  “taking  lens  means”  in  the  specification.   Those
references, Fuji argues, require that the “taking lens” of claim 1 be construed  to  incorporate  the
“means” language.  While it is  true  that  the  use  of  the  term  “taking  lens”  in  claim  1  is
inconsistent with the use of the term “said taking lens means” in claim 3, it is by  no  means  clear
how that inconsistency would have been resolved if the applicant or  the  examiner  had  noticed  it.
The inconsistency could just as easily have been resolved by omitting the word “means” from  claim  3
as by adding the word “means” after  “taking  lens”  in  claim  1.   Accordingly,  the  inconsistency
between claims 1 and 3 does not indicate that claim 1 should have been construed as  if  it  included
the phrase “taking lens means.”
      As Fuji asserts, the phrase “taking lens means” is used twice in the  specification.   But  the
term “taking lens” without the word “means” is used 13 times in the specification,  so  there  is  no
basis for assuming that the use of the term “taking lens” without the term “means” was simply a  one-
time departure from a contrary usage employed throughout the patent.  Moreover,  while  the  “Summary
of the Invention” section of the patent refers to the “taking lens means” and states that  the  front
cover of the camera has “at least one opening for partially receiving therein a member  of  at  least
one of the means and elements mounted on the main case section,” ’168 patent, col. 2, ll. 41-43,  the
“Background  of  the  Invention”  section  refers  to  the  “present  invention”  as  relating  to  a
photographic film package having “a taking lens,  a  photographic  transporting  means,  an  exposure
means, and their associated elements,” id., col. 1, ll.  10-14.   In  light  of  the  fact  that  the
invention is described both narrowly and broadly in the  specification,  we  reject  Fuji’s  argument
that the specification dictates that the claim language be read expansively.
      Finally, Fuji argues  that  the  Commission’s  claim  construction  conflicts  with  the  claim
construction adopted in the original investigation in this case.  We do not agree.  The  infringement
analysis in the initial determination was made pursuant to a stipulation with respect to the  meaning
of the claim terms by one of the respondents in that  proceeding.   Since  the  respondents  who  are
affected by the claim construction in the present proceedings were not parties to  that  stipulation,
they are not bound by it, nor does the administrative  law  judge’s  acceptance  of  the  stipulation
constitute a formal claim construction.  Therefore, even  if  a  construction  made  in  the  initial
determination proceedings governs  the  Commission’s  subsequent  enforcement  proceedings,  as  Fuji
contends, we find that nothing done in the previous proceedings barred the Commission  from  reaching
the conclusions it did about the proper construction of claim 1 of the ’168 patent.  Accordingly,  we
uphold the Commission’s construction of the pertinent  claim  language  and  reject  Fuji’s  argument
based on that claim.
                                                  II
      Claim 8 of U.S. Patent No. 4,884,087 (“the ’087 patent”) recites “[a] lens-fitted  photographic
film package comprising a light-tight film casing which must be destroyed to open the same . .  .  .”
Claim 1 of U.S. Patent  No.  4,833,495  (“the  ’495  patent”)  contains  similar  language.   At  the
conclusion  of  the  initial  investigation,  the  administrative  law  judge  determined  that   the
requirement that a light-tight film casing “must be destroyed  to  open  the  same”  means  that  the
camera “cannot be opened without losing its light tightness and . .  .  cannot  be  readily  reloaded
like a conventional camera.”  Fuji and the  Commission  agree  with  that  construction.   Intervenor
Achiever Industries, Inc., argues that the Commission’s claim construction is too broad and that  the
“must be destroyed” limitation requires that the film casing  be  constructed  so  that  it  must  be
broken or substantially disassembled in order to be opened.  Even  under  the  broader  construction,
however, Achiever argues that the administrative  law  judge  properly  concluded  that  its  accused
cameras do not satisfy the “must be destroyed” limitation.  The Commission agrees  with  Achiever  on
that point.
      The “must be destroyed” issue implicates certain camera models produced by respondents Achiever
and Highway Holdings.  The administrative law judge found  that  the  evidence  showed  that  neither
maker’s accused  cameras  had  film  casings  that  “must  be  destroyed  to  open  the  same.”   The
administrative law judge therefore held that the accused cameras  did  not  infringe  either  of  the
asserted claims of the ’087 and ’495 patents.  We review the administrative law judge’s  findings  on
the issue of infringement for substantial evidence.   Oak Tech., Inc. v.  U.S.  Int’l  Trade  Comm’n,
248 F.3d 1316, 1324-25 (Fed. Cir. 2001).  Because we conclude that substantial evidence supports  the
administrative law judge’s noninfringement findings with  respect  to  both  models  even  under  the
administrative law judge’s  claim  construction,  we  find  it  unnecessary  to  consider  Achiever’s
argument that the administrative law judge’s claim construction was too broad.
                                                  A
      Fuji’s arguments with respect to both the Achiever and Highway Holdings cameras center  on  the
meaning of the phrase “reloaded like a conventional camera” in the administrative law  judge’s  claim
construction.  Fuji argues that because the accused cameras are  not  marked  or  marketed  as  being
reloadable, and because consumers cannot readily purchase the  cartridges  necessary  to  reload  the
cameras, the cameras cannot be reloaded “like a conventional camera.”  Fuji also  contends  that  the
accused Achiever cameras cannot be reloaded like conventional cameras  because  conventional  cameras
do not need to be “pried open,” unlike the film casing of the Achiever cameras, and because the  film
counters on the accused cameras do not automatically reset as they do on conventional cameras.
      Fuji’s  arguments  distort  the  Commission’s  claim  construction  and  take  the  analogy  to
conventional cameras to the point of disregarding the plain language and prosecution history  of  the
claim.  The administrative law judge referred to  the  process  of  reloading  “like  a  conventional
camera” to distinguish between cameras that could not be reloaded with film  and  those  that  could.
The administrative law judge’s  claim  construction  did  not  mean  that  the  “must  be  destroyed”
limitation would be satisfied unless the accused camera performed like  a  conventional  35  mm  film
camera in all respects.  The point of the reference to a conventional camera was to explain that  the
“must be destroyed” limitation would not be met if a consumer could open the film casing and  replace
the film in the accused camera without causing the film  compartment  to  lose  its  light-tightness.
Whether other features of the camera, or the absence of reloading instructions, or the difficulty  of
obtaining suitable film would make it more difficult for a consumer to reuse the  camera  than  would
be the case for a conventional 35 mm camera is irrelevant to the  administrative  law  judge’s  claim
construction.
      The prosecution history of the ’087 patent supports this characterization of the administrative
law judge’s claim construction.  In the initial determination, the  administrative  law  judge  noted
that the applicants added the words “which must be destroyed to open the same”  to  claim  8  of  the
’087 patent in order to distinguish the invention from several  prior  art  references,  including  a
U.S. patent to Hamada.  The Hamada patent disclosed a compact camera that could  be  exchanged  at  a
camera shop for a new camera or reloaded by the camera shop for the  customer.   Thus,  it  is  clear
that the “must be destroyed” limitation was meant to  address  the  capacity  of  the  camera  to  be
reloaded, and that the language was not meant to carry with it all the features typically  associated
with conventional reloadable cameras, such as the automatic resetting of  film  counters,  the  ready
availability of replacement film, and the ease of loading that film.
                                                  B
      There was substantial evidence before the administrative law judge that  the  light-tight  film
casings of the accused Achiever cameras did not need to be destroyed in order  to  open  the  cameras
and that the Achiever cameras could be reloaded without damaging the cameras.  In  fact,  substantial
evidence showed that the cameras could be opened and reclosed by consumers  with  relative  ease  and
would maintain their light-tightness afterwards.
      The administrative law judge found that the accused Achiever cameras could  be  opened  with  a
thumbnail and did not require the use of a prying tool.  The  back  covers,  the  administrative  law
judge found, could be readily snapped back in place without any  apparent  loss  of  light-tightness.
In addition, as the administrative law judge noted, Achiever introduced  evidence  that  the  accused
Achiever cameras did not have to be destroyed or even disassembled in order to open  the  light-tight
film casing and remove the film, and that they could be reloaded by use of  their  hinged  backs  and
finger releasable tabs.  Furthermore, the administrative law judge noted that the wife of one of  the
expert witnesses was able to obtain through the Internet the  film  needed  to  reload  the  Achiever
cameras, thus demonstrating that reloading those cameras was not  just  theoretically  possible,  but
could be done in practice.  Because substantial evidence supported  the  administrative  law  judge’s
conclusion that the accused Achiever cameras did not have film casings that  “must  be  destroyed  to
open the same,” even under the administrative law judge’s broad construction of that claim  language,
we uphold the Commission’s determination of noninfringement with respect to those cameras.
                                                  C
      Fuji argues that the accused Highway Holdings cameras  cannot  be  reloaded  like  conventional
cameras and that the evidence does not show  that  they  retain  their  light-tightness  after  being
opened.  Fuji’s arguments with respect to the “conventional camera” issue are  essentially  the  same
as its arguments regarding the Achiever cameras.  Fuji argues that consumers cannot use  standard  35
mm film in the Highway Holdings cameras and cannot purchase specialized film  replacement  cartridges
for those cameras.  However, the administrative law judge’s claim construction did not require  proof
that replacement film cartridges were readily available to consumers;  the  cameras  would  not  fall
within the scope of the claims if the cameras could be opened and reloaded  without  loss  of  light-
tightness in their film casings.
      Fuji points out  that  its  expert  could  not  open  and  reload  a  Highway  Holdings  camera
successfully.  The administrative law judge, however, found that Highway Holdings’  expert  could  do
so readily and was able to  show  how  it  was  done.   Highway  Holdings’  expert  demonstrated  the
technique for opening, reloading, and closing the camera while  maintaining  its  light-tightness  by
using a specially designed clip,  and  he  testified  that  Fuji’s  expert  was  not  performing  the
procedure correctly.  That  evidence,  which  the  administrative  law  judge  credited,  constituted
substantial evidence that the Highway Holdings camera could readily be  reloaded  without  destroying
the light-tightness of its film canister.  Thus,  substantial  evidence  supported  the  Commission’s
conclusion that the Highway Holdings cameras did not infringe the asserted claims  of  the  ’087  and
’495 patents, even under the administrative law judge’s claim construction.
                                                 III
      Claim 1 of U.S. Patent No. 4,972,649 (“the ’649 patent”) recites a method for assembling a lens-
fitted film package consisting of three steps:
           winding a film withdrawn from said light-tight container in a roll in a darkroom;
           loading said film in a roll and said light-tight  container  from  which  said  film  was
                 withdrawn into separate receiving chambers formed in one of said  sections  of  said
                 light-tight casing of said lens-fitted photographic film package; and
           fixing said back cover section to said main body section so as to assemble  light-tightly
                 said lens-fitting photographic film package.


      Although the words “in a darkroom” appear in only the first of the three steps, the  Commission
argues that the “in a darkroom” limitation  should  be  read  into  the  remaining  two  steps.   The
Commission argues that the claim must be read in that manner because  in  the  initial  determination
the administrative law judge construed the claim to require that all three steps be  performed  in  a
darkroom.  According to the Commission, that unappealed claim construction  is  binding  on  Fuji  in
this proceeding as law of the case.
      Fuji points out that in the initial investigation there was no disputed  issue  as  to  whether
the last two steps required a darkroom, and that there was no ruling against Fuji on that issue.   We
agree that because there was no adverse judgment against Fuji with respect to the “in  the  darkroom”
limitation in the initial determination, there was no reason  for  Fuji  to  appeal  the  issue,  and
Fuji’s failure to appeal did  not  result  in  an  abandonment  of  that  claim  under  19  C.F.R.  §
210.43(b)(4) (“A party’s failure to petition for review of an initial determination shall  constitute
abandonment of  all  issues  decided  adversely  to  that  party  in  the  initial  determination.”).
Accordingly, we review the Commission’s claim construction de novo.
      The Commission acknowledges that the “in a darkroom” limitation is found in the first  step  of
the claim but not in the other two.  The Commission points out, however, that the embodiments of  the
process of claim 1 that are set forth in the specification describe the entire  assembly  process  as
being performed in a  darkroom.   Because  those  embodiments  describe  all  three  steps  as  being
performed in the darkroom, the Commission argues that claim 1 should be construed to  apply  the  “in
the darkroom” requirement to all three steps of the process.
      The fact that the “in a darkroom” limitation was included in the first step  and  omitted  from
the second and third steps provides strong textual support for Fuji’s argument that the claim  should
be construed to distinguish between the first step and the  other  two.   The  Commission’s  argument
that “there is no suggestion in the ’649 patent that steps 2 and 3 of  claim  1  could  be  performed
outside a darkroom” has it backwards; the proper question  is  whether  the  specification  indicates
that the second and third steps cannot be performed outside a darkroom, and thus that the claim  must
be interpreted more narrowly than its language appears to require.  See Teleflex, Inc. v.  Ficosa  N.
Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002) (an  accused  infringer  cannot  overcome  the  heavy
presumption that claims should be given their ordinary meaning “simply by pointing to  the  preferred
embodiment or other structures or steps disclosed in the  specification”);  Liebel-Flarsheim  Co.  v.
Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004)  (“the  claims  of  the  patent  will  not  be  read
restrictively unless the patentee has demonstrated a clear intention to limit the claim scope”).
      The administrative law judge pointed to  various  statements  in  the  specification  that  the
administrative law judge interpreted as indicating that the entire process  of  claim  1  had  to  be
performed in a darkroom.  In each instance that such a statement is made, however, the context  makes
it clear that the statement refers to a preferred embodiment of the invention, not to  the  invention
as a whole.  Thus, the statement that “[f]ilm loading and film package assembly has  to  be  done  in
the dark room,” ’649 patent, col. 5, ll.  33-34,  comes  in  a  portion  of  the  specification  that
describes “a first preferred embodiment of the present invention,” id. at col. 4, ll. 10-11,  and  is
immediately followed by a reference to the “film package of this embodiment,” id. at col. 5, ll.  34-
35.  Likewise, the statement that “[t]his loading operation is done in a dark room,” id., at col.  7,
ll. 26-27, is in a section of the specification that describes “another preferred embodiment  of  the
lens-fitted film package,” id. at col. 7, ll. 3-5.  And the statement that “[i]n the dark room . .  .
are carried out the steps of making a film roll . . . inserting the rolled film . . . into  the  film
roll receiving chamber . . and securing the back cover section,” id., col. 13, ll. 49-58, appears  in
a portion of the specification that describes, “by way of  example,  a  film  loading  apparatus  for
automatically loading a film roll and a film patrone into the main body section  of  the  lens-fitted
film package,” id. at col. 12, ll. 40-43.
      Nothing in the ’649 patent requires that a darkroom be used for all the steps of assembling  an
LFFP.  In fact, for some of the claimed assembly methods, the patent expressly  states  that  certain
steps can be conducted outside a  darkroom.   For  example,  claim  9  contains  no  reference  to  a
darkroom, and the specification explains that the film-winding operation recited in  that  claim  can
be performed in daylight.  ’649 patent, col. 12, ll. 13-14.  Claim 9 thus demonstrates that the  ’649
patent does not assume that all the assembly steps of the claimed methods  must  be  performed  in  a
darkroom, and it further suggests that  when  the  claim  is  silent  about  the  need  for  darkroom
assembly, a darkroom is not necessarily required.
      Nor can steps 2 and 3 of claim 1 be assumed to require a darkroom on the ground that  it  would
be difficult to devise a means for performing those steps outside a darkroom.  All that is  necessary
to perform those steps outside a darkroom would be to protect the roll of unexposed film  from  light
during the process of loading the film into the camera and securing the back cover of the  camera  to
the main body, as Fuji’s expert testified.  In short, we discern no  reason  to  read  into  claim  1
limiting language that is not there, and  we  therefore  reject  the  Commission’s  conclusion  that,
notwithstanding the plain language of the claim, all three steps of claim 1 must be  performed  in  a
darkroom.
      Intervenor Achiever makes several arguments in support  of  the  Commission’s  construction  of
claim 1 of the ’649 patent, but we do not find those arguments persuasive.   First,  Achiever  argues
that an LFFP requires unexposed film in order to function, and because the back cover of the  package
is not closed until step three, all the steps  that  occur  prior  to  closing  the  casing  must  be
performed in a darkroom.  The fact that the unexposed film must be  protected  from  light,  however,
does not mean that all the loading steps must be performed in a  darkroom.   Achiever’s  citation  to
the testimony of Fuji’s expert does not support its argument.  The expert  merely  acknowledged  that
unexposed film must be protected from light, and that if it is not protected it  will  become  fogged
and unusable.
      Achiever suggests that if the claim language were not interpreted to require all three steps to
be performed in the darkroom, the claim would not be supported by the  specification,  and  that  the
claim should be read narrowly for that reason.  It is a familiar axiom of patent law,  however,  that
the scope of the claims is not limited to the preferred embodiments described in  the  specification.
Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1365 (Fed. Cir. 2003).  While  the  specification
refers to the need to avoid exposing the film that is  removed  from  the  light-tight  canister  and
loaded into the camera, nothing in the specification suggests that the only  way  to  avoid  exposing
the film during the loading process is to  perform  the  process  in  a  darkroom.   Absent  a  clear
indication in the specification that the invention was limited to processes performed entirely  in  a
darkroom, or evidence that a person of ordinary skill in the art of designing cameras would not  have
known how to perform those steps anywhere but in a darkroom, the scope of claim 1 is not  limited  to
the particular method of avoiding premature exposure that was described in  the  specification.   See
PIN/NIP, Inc. v. Platte Chem. Co., 304 F.3d 1235, 1248 (Fed. Cir. 2002); Lampi  Corp.  v.  Am.  Power
Prods., Inc., 228 F.3d 1365, 1378 (Fed. Cir. 2000).
      In sum, the “in a darkroom” limitation of claim 1 of the ’649 patent is not applicable to steps
2 and 3, and nothing in the specification requires that the plain language of the claim be read  more
restrictively.  We hold that the Commission erred in ruling otherwise.
                                                  IV
      Fuji’s final arguments on appeal relate to the Commission’s refusal to issue cease  and  desist
orders to two groups of companies: those that import infringing products but  maintain  no  inventory
in the United States; and those that do not import products but do business through third parties.
                                                  A
       The  Commission  found  that  respondents  Achiever,  Highway  Holdings,  and   VastFame   all
manufactured, imported, or sold infringing products, but it found that none maintained any  inventory
in the United States.  For that reason, the Commission concluded there  was  no  threat  of  imminent
harm to Fuji, because the general exclusion order from the initial investigation was  being  enforced
by the Customs Service.
      This court may set aside the Commission’s choice of remedy only if  it  is  legally  erroneous,
arbitrary and capricious, or constitutes an abuse of discretion.  If the  Commission  has  considered
the relevant factors rationally and not made a clear error of judgment,  the  determination  will  be
affirmed.  Hyundai Elec. Indus. Co. v. Int’l Trade Comm’n, 899 F.2d  1204,  1209  (Fed.  Cir.  1990).
That is particularly true in the case of cease and desist orders which, by  statute,  are  permissive
measures.  See 19 U.S.C. § 1337(f)(1) (“[i]n addition to, or in lieu of [issuing  exclusion  orders],
the Commission may issue” a cease and desist order).
      Fuji takes issue with what the Commission describes as its standard  practice  of  not  issuing
cease and desist orders against respondents who have no domestic inventory.  That practice  is  based
on the Commission’s view that ordinarily exclusion orders enforced by Customs  should  be  sufficient
to prevent entry of articles into the United States, whereas an order to Customs is ineffective  with
regard to existing stockpiles of domestic inventory.  Fuji argues, in effect, that  the  Commission’s
practice is an abuse of discretion because the Commission’s reliance on Customs to bar the  entry  of
infringing goods is unrealistic and thus is legally unjustified.
      The administrative law judge found that Fuji had not shown that  the  general  exclusion  order
would be inadequate when enforced by Customs in light  of  the  Commission’s  new  determinations  of
infringement.  In response,  Fuji  argues  that  the  Customs  Service’s  enforcement  of  a  general
exclusion order is ineffective, particularly in light of the Customs Service’s  new  responsibilities
in combating terrorism.  Fuji also argues that the prior Customs Service opinions of  noninfringement
issued in this case demonstrate that Customs cannot adequately enforce the general  exclusion  order.

      With respect to the second point, the Commission’s more recent order has  effectively  modified
the general exclusion order and provided more guidance as to the scope of the order with  respect  to
various models of imported cameras.  Customs will therefore have new guidance as to the scope of  the
general exclusion order, which will assist it in restricting the entry of infringing cameras.
      With respect to the first point, Fuji’s argument is similar to the  argument  advanced  in  the
Hyundai case, which we rejected as “a thinly veiled and vaguely expressed  dissatisfaction  with  the
certification procedure it expects the Customs Service to devise when it implements the  Commission’s
order.”  899 F.2d at 1210.  As we did in Hyundai,  we  reject  Fuji’s  suggestion  that  the  Customs
Service is incapable of enforcing the Commission’s general exclusion order effectively because  of  a
lack of expertise and other priorities.  To  the  extent  that  Fuji’s  argument  is  directed  at  a
perceived lack of resources or competence on the part of the Customs Service, we cannot address  that
problem through a judicial directive that would, in effect,  require  the  Commission  to  alter  its
practices based on our unsupported suspicion that the Customs Service is incapable of performing  the
duties Congress has assigned to it.
                                                  B
      The Commission also declined to issue a cease and desist  order  to  respondent  Message  Group
because it found that Message Group procures infringing cameras from domestic  sources  and  arranges
for their shipment  to  American  customers.   Fuji  argues  that  Message  Group  arranges  for  the
infringing  cameras  to  be  imported  and  sold  and  that,  notwithstanding  its  lack  of   direct
participation in the importation of the cameras, Message Group is intimately involved in the  overall
transactions and therefore should be the subject of a cease and desist order.
      The Commission correctly points out that Fuji named Message  Group  as  a  respondent  in  this
enforcement proceeding, which  was  directed  at  enforcing  the  existing  general  exclusion  order
prohibiting “the unlicensed importation  of  infringing  lens-fitted  film  packages.”   Because  the
general exclusion order is limited to  importation,  it  is  not  an  abuse  of  discretion  for  the
Commission to limit the remedies to companies that import, either directly or through an agent.
      Fuji argues that the Commission should have found an agency relationship between Message  Group
and its domestic importer, and that it  should  have  concluded  that  as  a  result  of  the  agency
relationship Message Group should be treated as an importer  of  infringing  goods.   The  Commission
argues that there was no evidence of anything other  than  a  purchaser-seller  relationship  between
Message Group and the importer from which Message Group purchased  its  cameras,  and  Fuji  has  not
cited any persuasive evidence to the contrary.  Based on the absence of evidence that  Message  Group
was engaged in an agency relationship that brought its activities within the  scope  of  the  general
exclusion order, it was not an abuse of discretion for the Commission to decline  to  enter  a  cease
and desist order against Message Group.
                                                  V
      To summarize, we hold that the Commission correctly interpreted claim 1 of the ’168 patent  and
claim 8 of the ’087 patent.  The Commission’s order with respect to claim 1 of the  ’649  patent  and
the associated accused products is vacated and the case is remanded for a  new  determination  as  to
infringement.  Finally, the Commission did not abuse its discretion in refusing to  issue  cease  and
desist orders against foreign respondents  with  no  inventory  in  the  United  States  and  foreign
respondents that did not directly import products into the United States.
      Each party shall bear its own costs for this appeal.
                           AFFIRMED IN PART, VACATED AND REMANDED IN PART.


