By Eric Schweibenz
On January 23, 2012, Canon Inc. of Japan, Canon U.S.A., Inc. of Lake Success, New York, and Canon Virginia, Inc. of Newport News, Virginia (“CVI”) (collectively, “Canon”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that the following entities (collectively, the “Proposed Respondents”) unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain toner cartridges and components thereof, including but not limited to photosensitive drums, that infringe one or more claims of U.S. Patent Nos. 5,903,803 (the ‘803 patent) and 6,128,454 (the ‘454 patent) (collectively, the “asserted patents”):

  • Clover Holdings, Inc. of Hoffman Estates, Illinois

  • Clover Technologies Group, LLC d/b/a Depot International f/k/a Depot America f/k/a Image1 Products of Ottawa, Illinois

  • Clover Vietnam Co., Ltd. of Vietnam

  • Dataproducts USA, LLC of Thousand Oaks, California

  • Dataproducts Imaging Solutions S.A. de C.V. of Mexico

  • CAU, Inc. d/b/a Cartridges Are Us of Ithaca, Michigan

  • Shanghai Orink Infotech International Co., Ltd. of China

  • Orink Infotech International Co., Ltd. of Hong Kong

  • Zhuhai Rich Imaging Technology Co., Ltd. of China

  • Standard Image Co., Ltd. a/k/a Shanghai Orink Co., Ltd. of China

  • Zhuhai National Resources & Jingjie Imaging Products Co., Ltd. d/b/a Huebon Co., Ltd. d/b/a Ink-Tank of China

  • Standard Image USA, Inc. d/b/a Imaging Standard Inc. of Santa Ana, California

  • Printronic Corporation d/b/a Printronic.com d/b/a InkSmile.com of Santa Ana, California

  • Nukote, Inc. of Plano, Texas

  • Nukote International de Mexico, S.A. de C.V. of Mexico

  • Acecom, Inc. – San Antonio d/b/a InkSell.com of San Antonio, Texas

  • Atman, Inc. s/b/a pcRUSH.com of El Segundo, California

  • Dexxxon Digital Storage, Inc. of Lewis Center, Ohio

  • Discount Office Items, Inc. of Columbus, Wisconsin

  • Deal Express LLC d/b/a Discount Office Items of Columbus, Wisconsin

  • Do It Wiser LLC d/b/a Image Toner of Marietta, Georgia

  • E-Max Group, Inc. d/b/a Databazaar.com of Miramar, Florida

  • Green Project, Inc. of Hacienda Heights, California

  • GreenLine Paper Company, Inc. of York, Pennsylvania

  • IJSS Inc. d/b/a TonerZone.com d/b/a InkJetSuperstore.com of Los Angeles, California

  • Imaging Resources, LLC of Chatsworth, California

  • Ink Technologies Printer Supplies, LLC of Dayton, Ohio

  • Myriad Greeyn LLC of Virginia Beach, Virginia

  • Office World, Inc. of Eugene, Oregon

  • OfficeWorld.com, Inc. of Eugene, Oregon

  • OnlineTechStores.com, Inc. d/b/a SuppliesOutlet.com of Reno, Nevada

  • SupplyBuy.com, Inc. of Nashville, Tennessee

  • Virtual Imaging Products Inc. of Canada

  • Zinyaw LLC d/b/a TonerPirate.com of Houston, Texas

According to the complaint, the asserted patents both disclose the same subject matter.  In particular, the complaint states that the asserted patents are directed, in part, to a novel and advantageous projection on a photosensitive drum that is configured to couple with and receive a rotational force from a hole in a laser beam printer (“LBP”), so that the drum may be rotated.  The novel structure of the projection enables a process cartridge which contains the drum to be easily inserted and removed from a LBP by a user and at the same time enables the drum to be rotated in a smooth and stable fashion, thereby ensuring a high quality of the resultant printing.

In the complaint, Canon states that the Proposed Respondents import and sell products that infringe the asserted patents.  The complaint specifically identifies a number of infringing products associated with the various Proposed Respondents.

Regarding domestic industry, Canon states that CVI currently manufactures, inspects, packages, engineers, and recycles millions of toner cartridges and photosensitive drums in the U.S. that utilize technology protected by each of the asserted patents.  According to the complaint, CVI manufactures certain toner cartridges that it sells to Hewlett-Packard Company (“HP”) for distribution throughout the U.S. under the HP brand name.  Canon states that CVI’s main campus is located in Newport News, Virginia, and that this campus includes three primary facilities: (1) a Main Plant, (2) an Advanced Cartridge Manufacturing (“ACM”) Plant, and (3) a Toner Plant.  The complaint includes a photograph of former Virginia Governor Tim Kaine officiating a ribbon cutting ceremony in celebration of the completion of CVI’s ACM Plant. 

As to related litigation, Canon states that, concurrently with the filing of the instant ITC complaint, it is also filing a civil action against the Proposed Respondents in the U.S. District Court for the Southern District of New York alleging infringement of the asserted patents.  Additionally, Canon states that on June 28, 2010, it filed an ITC complaint relating to the asserted patents.  The ITC instituted an investigation (Inv. No. 337-TA-731) based on this complaint.  See our July 28, 2010 post for more details.  Canon states that the 731 investigation was terminated on May 5, 2011, when the Commission issued a consent order prohibiting all 20 Respondents in that investigation from importing into the U.S., selling for importation, and selling or offering for sale in the U.S. after importation the accused toner cartridges and components thereof.  Canon further states that, concurrently with the filing of the complaint in the 731 investigation, it also filed a complaint in the U.S. District Court for the Southern District of New York against the same Respondents.  Canon states that this action was terminated on May 24, 2011 in view of a stipulation, consent judgment, and permanent injunction.  Canon also states that the asserted patents have undergone ex parte reexaminations, and that the USPTO has issued reexamination certificates for each of the asserted patents.  Lastly, Canon refers to various foreign proceedings involving a Korean counterpart to the asserted patents. 

With respect to potential remedy, Canon requests that the Commission issue a permanent general exclusion order—or, alternatively, a limited exclusion order—and permanent cease and desist orders directed at the Proposed Respondents.  Canon states that a general exclusion order is warranted in view of the numerous sources abroad of infringing toner cartridges and components thereof and the available channels of distribution.