By Eric Schweibenz
On May 22, 2012, ALJ David P. Shaw issued the public version of his Recommendation on Modification of Remedial Orders (“RD”) (dated February 21, 2012) in the consolidated advisory opinion and modification proceedings in Certain Ink Cartridges and Components Thereof (Inv. No. 337-TA-565).

By way of background, on October 19, 2007, the Commission issued, inter alia, a general exclusion order (“GEO”) and cease and desist orders in the underlying investigation.  The GEO prohibits the unlicensed entry of ink cartridges covered by one or more claims of U.S. Patent Nos. 5,615,957; 5,622,439; 5,158,377; 5,221,148; 5,488,401; 6,502,917; 6,550,902; 6,955,422; 7,008,053; and 7,011,397.  The cease and desist orders were directed toward certain domestic Respondents, including Ninestar Technology Company, Ltd. (“Ninestar US”).

On March 18, 2011, the Commission instituted consolidated advisory opinion and modification proceedings based on:  (A) Respondents Ninestar Technology Co., Ltd. and Ninestar US’s (collectively, “Ninestar”) request for an advisory opinion; (B) Ninestar’s petition for modification of the GEO and the cease and desist order directed to Ninestar US (“CDO”); and (C) a petition by Complainants Epson Portland Inc., Epson America, Inc., and Seiko Epson Corporation (collectively, “Epson”) for modification of the GEO and CDO.  See our March 22, 2011 post for more details.

On February 8, 2012, Epson and Ninestar filed a joint motion requesting that, based on a settlement agreement, the Commission terminate Ninestar’s request for an advisory opinion and petition for modification of the GEO and CDO.  ALJ Shaw granted that motion.  Also on February 8, 2012, Epson filed an unopposed motion for summary determination to modify the GEO and CDO to include components of ink cartridges, in addition to the ink cartridges themselves.

According to the RD, Epson argued that despite the GEO and CDO, “various manufacturers have continued to import and sell components of infringing cartridges, thus circumventing the intent and scope of the [GEO].”  According to Epson, these components indirectly infringe the patents that the Commission already found to be infringed by the cartridges themselves.  Epson therefore requested modification of the GEO and CDO “to prevent Ninestar and other foreign manufacturers and domestic distributors from engaging in the importation and sale of components of cartridges that infringe one or more claims of the asserted patents in the [GEO].”

After considering the arguments, evidence, and applicable law, ALJ Shaw determined to grant Epson’s motion for summary determination.  The ALJ noted that there was uncontroverted evidence that imported ink cartridge components are being used in indirect infringement, and that the importation and sale of ink cartridge components to be used in ink cartridges for Epson printers is commonplace.  Moreover, the ALJ found that there was ample precedent for including components within the scope of the remedial orders.  Accordingly, ALJ Shaw recommended that the GEO and CDO be modified in the manner requested by Epson to include “components.”  Specifically, the ALJ recommended that the phrase “ink cartridges” be amended to read “ink cartridges and components thereof” in the applicable portions of the GEO and CDO.