By Eric Schweibenz
On August 20, 2010, Lexmark International, Inc. (“Lexmark”), of Lexington, Kentucky filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that Ninestar Image Co. Ltd. (a/k/a Ninestar Technology Co., Ltd.) of China, Ninestar Image Int'l, Ltd. of China, Seine Image International Co. Ltd. of Hong Kong, Ninestar Technology Company, Ltd. of Piscataway, New Jersey, Ziprint Image Corporation of Walnut, California, Nano Pacific Corporation of South San Francisco, California, IJSS Inc. (d/b/a TonerZone.com Inc. and Inkjet Superstore) of Los Angeles, California, Chung Pal Shin (d/b/a Ink Master) of Cerritos, California, Nectron International, Inc. of Sugarland, Texas, Quality Cartridges Inc. of Brooklyn, New York, Direct Billing International Incorporated (d/b/a Office Supply Outfitter and The Ribbon Connection) of Carlsbad, California, E-Toner Mart, Inc. of South El Monte, California, Alpha Image Tech of South El Monte, California, ACM Technologies, Inc. of Corona, California, Virtual Imaging Products Inc. of Canada, Acecom Inc-San Antonio (d/b/a inksell.com) of San Antonio, Texas, Ink Technologies Printer Supplies, LLC (d/b/a Ink Technologies LLC) of Dayton, Ohio, Jahwa Electronics Co., Ltd. of South Korea, Huizhou Jahwa Electronics Co., Ltd of China, Copy Technologies, Inc. of Atlanta, Georgia, Laser Toner Technology, Inc. of Atlanta, Georgia, C & R Services, Inc. of Corinth, Texas, Print-Rite Holdings Ltd. of Hong Kong, and Union Technology Int'l, (M.C.O.) Co. of Macao (collectively, “Respondents”) through the manufacture, sale for importation, importation, and/or sale within the U.S. after importation of replaceable toner cartridges and components thereof infringe certain claims in U.S. Patent Nos. 5,337,032 (‘032 patent), 5,634,169 (‘169 patent), 5,758,233 (‘233 patent), 5,768,661 (‘661 patent), 5,802,432 (‘432 patent), 5,875,378 (‘378 patent), 6,009,291 (‘291 patent), 6,078,771 (‘771 patent), 6,397,015 (‘015 patent), 6,459,876 (‘876 patent), 6,816,692 (‘692 patent), 6,871,031 (‘031 patent), 7,139,510 (‘510 patent), 7,233,760 (‘760 patent), and/or 7,305,204 (‘204 patent) (collectively, the “Asserted Patents”).

The complaint more specifically asserts that the products at issue are replaceable cartridges and components thereof used to supply toner to Lexmark laser printers for black-and-white printing.  The complaint further asserts that Respondents provided copies or “clones” of  Lexmark genuine toner cartridges (i.e., “compatible” cartridges) that are covered by the Asserted Patents, or Respondents provide genuine Lexmark toner cartridges originally first sold outside of the United States that have been refilled and worn components replaced (i.e., “remanufactured” cartridges) that are covered by the Asserted Patents.

The complaint asserts that the ‘032 patent is directed toward a reduced component toner cartridge with a configuration that eliminates the need for a separate toner pump.  The complaint describes the ‘169 patent and ‘015 patent as relating to encoded devices, for example an encoder wheel, wherein a toner agitator or paddle are mounted to a shaft that rotates the encoded device and paddle at the same time.  Slots or windows on the encoded device convey information about the cartridge to the printer including, for example, the cartridge type or size, toner capacity, amount of toner remaining in the cartridge, toner type, photoconductive drum type, and whether the cartridge is an OEM cartridge.  The complaint describes the ‘233 patent as pertaining to a toner cartridge comprised of two assemblies and having locating surfaces that aid in positioning the cartridge within a printer.  The ‘661 patent is directed to a pair of curved “wing-like” guides on two sides of the toner cartridge to follow a curved guide track in the printer in which the cartridge is installed, facilitating insertion of the toner cartridge into the printer.  The complaint describes the ‘432 patent as directed to a spring assembly holding together two housing members comprising a toner cartridge, wherein only two rear rollers are provided in the cartridge, and the two rollers which usually correspond to two front wheels in a cartridge are in the printer - reducing positional variations in the developer unit or breakage of the front wheels of a cartridge during rough handling.  The complaint describes the ‘378 patent as directed to an agitator at an exit surface of the toner hopper, arranged such that it jars toner loose and eliminates jams of toner.  The ‘291 patent describes increasing control of the PC drum by utilizing a frictional member, such as a spring clutch having uniform drag pressed against the PC drum.   The ‘771 patent is described as relating to structures used to position a doctor blade against a developer roller within a toner cartridge to ensure an even amount of toner and consistent print quality, while the ‘876 patent is directed to a dual-paddle for moving and agitating toner within the toner hopper of the toner cartridge. The ‘510 patent, ‘204 patent, and ‘031 patent are described in the complaint as pertaining generally to two-part toner cartridges comprising a developer unit and a photoconductor unit that are biased together by a front cover of a printer in which the two-part cartridge is inserted.  The ‘692 patent is described as relating generally to a support assembly for mounting a roller body to a frame of a toner cartridge and for protecting the roller body from being damaged or deformed from lateral forces.   Lastly, the ‘760 Patent is described as relating generally to a system for positioning a doctor blade of a toner cartridge against a developer roller while preventing toner loss.

Regarding related litigation, Lexmark identifies a number of U.S. district court cases that involved several of the Asserted Patents.  Lexmark added that concurrently with its complaint, it filed an action against all proposed Respondents in the United States District Court for the Southern District of Ohio for infringement of the Asserted Patents.

With respect to the technical prong of the domestic industry requirement, Lexmark asserts that several of its monochrome toner cartridges are covered by the Asserted Patents.  As to the economic prong, Lexmark asserts it has significant investments in plant and equipment, for example through its two largest facilities in Lexington, Kentucky and Boulder Colorado dedicated in whole or in part to the development and production of its cartridges covered by the Asserted Patents.

With respect to potential remedy, Lexmark requests the ITC to issue a permanent general exclusion order, or in the alternative, a limited exclusion order forbidding entry into the United States of all toner cartridges infringing the Asserted Patents, and a permanent cease-and-desist order directed to each Respondent.