By Eric Schweibenz
On September 27, 2011, the International Trade Commission (the “Commission”) issued a notice determining to terminate the investigation in Certain Toner Cartridges and Components Thereof (Inv. No. 337-TA-740) with a finding of a violation of Section 337.  The Commission further determined to issue a general exclusion order (“GEO”) and cease and desist orders (“CDOs”).

By way of background, the Complainant in this investigation is Lexmark International, Inc. (“Lexmark”).  The Commission’s notice of investigation named the following 24 entities as Respondents:  Ninestar Image Co. Ltd. (a/k/a Ninestar Technology Co., Ltd.), Ninestar Image Int’l, Ltd., Seine Image International Co., Ltd., Ninestar Technology Company, Ltd., Ziprint Image Corporation, Nano Pacific Corporation, IJSS Inc. (d/b/a TonerZone.com Inc. and Inkjet Superstore), Chung Pal Shin (d/b/a Ink Master), Nectron International, Inc., Quality Cartridges Inc., Direct Billing International Incorporated (d/b/a Office Supply Outfitter and The Ribbon Connection), E-Toner Mart, Inc., Alpha Image Tech, ACM Technologies, Inc., Virtual Imaging Products Inc., Acecom Inc-San Antonio (d/b/a inksell.com), Ink Technologies Printer Supplies, LLC (d/b/a Ink Technologies LLC), Jahwa Electronics Co., Ltd., Huizhou Jahwa Electronics Co., Ltd, Copy Technologies, Inc., Laser Toner Technology, Inc., C & R Services, Inc., Print-Rite Holdings Ltd., and Union Technology Int’l, (M.C.O.) Co.  Respondent Print-Rite Holdings Ltd. was terminated from the investigation based on a settlement agreement, but the other 23 entities (collectively, the “Defaulting Respondents”) were ultimately found to be in default. 

On April 25, 2011, Lexmark filed a motion for summary determination of violation of Section 337 and requested issuance of a GEO and CDOs against the Defaulting Respondents.  On June 1, 2011, ALJ Carl C. Charneski issued an Initial Determination (“ID”) granting Lexmark’s motion and recommending that the Commission issue a GEO and CDOs.  The ALJ found that the Defaulting Respondents’ products infringe certain claims of U.S. Patent Nos. 5,337,032, 5,634,169, 5,758,233, 5,768,661, 5,802,432, 5,875,378, 6,009,291, 6,078,771, 6,397,015, 6,459,876, 6,816,692, 6,871,031, 7,139,510, 7,233,760, and 7,305,204 (collectively, “the asserted patents”).  See our June 24, 2011 post for more details.

On July 12, 2011, the Commission determined not to review the ID and called for briefing on remedy, the public interest, and bonding.  On August 1, 2011, Lexmark submitted a brief on remedy, the public interest, and bonding, requesting that the Commission issue a GEO and CDOs and set a bond of 100 percent during the Presidential review period.  Also on August 1, 2011, the Commission Investigative Staff submitted a brief on remedy, the public interest, and bonding, supporting Lexmark’s requests for a GEO and CDOs and for a bond of 100 percent.

In the September 27 notice, the Commission determined to terminate the investigation with a finding of a violation of Section 337.  The Commission further determined that the appropriate form of relief is:  (1) a GEO prohibiting the unlicensed entry into the U.S. of toner cartridges and components thereof that infringe certain claims of the asserted patents; and (2) CDOs directed at the domestically-based Defaulting Respondents and certain of the foreign-based Defaulting Respondents.  Lastly, the Commission determined that the public interest factors do not preclude issuance of the GEO and the CDOs and that the bond during the Presidential review period should be set at 100 percent of the value of the imported articles that are subject to the GEO.