By Eric Schweibenz and Alex Englehart
On February 5, 2015, ALJ David P. Shaw issued Order No. 23 in Certain Toner Cartridges and Components Thereof (Inv. No. 337-TA-918).  In the Order, ALJ Shaw denied Respondents International Laser Group, Inc., Ninestar Image Tech Limited, Zhuhai Seine Technology Co., Ltd., Ninestar Technology Co., Ltd., Seine Tech (USA) Co., Ltd., Seine Image Int'l Co., Ltd., Ninestar Image Tech, Ltd., Seine Image (USA) Co., Ltd., and Nano Pacific Corp.'s (collectively, "Respondents") motion for summary determination of permissible repair.

By way of background, this investigation is based on a May 7, 2014 complaint filed by Canon Inc.; Canon U.S.A., Inc.; and Canon Virginia, Inc. (collectively, "Canon") alleging violation of Section 337 in the importation into the U.S. and sale of certain toner cartridges and components thereof, namely photosensitive drum units, that infringe one or more claims of U.S. Patent Nos. 8,280,278; 8,630,564; 8,682,215; 8,676,090; 8,369,744; 8,565,640; 8,676,085; 8,135,304; and 8,688,008.  See our May 8, 2014 and June 11, 2014 posts for more details on the complaint and the notice of investigation, respectively.

According to the Order, Respondents argued that they do not infringe the asserted claims of the asserted patents because they generally repair empty toner cartridges by reusing most components, and replacing worn components such as photosensitive drums, thereby engaging in permissible repair.  Canon opposed the motion, arguing that there are genuine issues of material fact that preclude summary determination.  In particular, Canon argued that the issues of "whether the OEM cartridges and drum units that Respondents allegedly 'repair' were the subject of exhausting sales in the United States" and "whether Canon's separately patented drum units, viewed as a whole, are spent at the time Respondents replace the original OEM photosensitive drum with a new drum" were outstanding genuine issues of material fact.  The Commission Investigative Staff ("OUII") also opposed summary determination.

After considering the arguments, ALJ Shaw determined to deny Respondents' motion.  The ALJ found that there are genuine issues of material fact as to whether or not the patented articles identified in the motion underwent an exhausting first sale, and that a finding of summary determination was not appropriate under the circumstances.