By Eric Schweibenz
On May 7, 2014, Canon Inc. of Japan, Canon U.S.A., Inc. of Melville, New York, and Canon Virginia, Inc. of Newport News, Virginia (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, namely photosensitive drum units, that infringe one or more claims of U.S. Patent Nos. 8,280,278 (the ‘278 patent), 8,630,564 (the ‘564 patent), 8,682,215 (the ‘215 patent), 8,676,090 (the ‘090 patent), 8,369,744 (the ‘744 patent), 8,565,640 (the ‘640 patent), 8,676,085 (the ‘085 patent), 8,135,304 (the ‘304 patent), and 8,688,008 (the ‘008 patent) (collectively, the “asserted patents”):

  • Ninestar Image Tech Limited of China

  • Zhuhai Seine Technology Co., Ltd. of China

  • Ninestar Technology Company, Ltd. of City of Industry, California

  • Seine Tech (USA) Co., Ltd. of Walnut, California

  • Seine Image Int’l Co., Ltd. of Hong Kong

  • Ninestar Image Tech, Ltd. of Hong Kong

  • Seine Image (USA) Co., Ltd. of Diamond Bar, California

  • Nano Pacific Corp. of South San Francisco, California

  • Aster Graphics, Inc. of Placentia, California

  • Jiangxi Yibo E-tech Co., Ltd. of China

  • Aster Graphics Co., Ltd. of China

  • Print-Rite Holdings Ltd. of Hong Kong

  • Print-Rite N.A., Inc. of La Vergne, Tennessee

  • Union Technology Int’l (M.C.O.) Co. Ltd. of China

  • Print-Rite Unicorn Image Products Co. Ltd. of China

  • Innotex Precision Ltd. of Hong Kong

  • International Laser Group, Inc. of Woodland Hills, California

  • Shenzhen ASTA Official Consumable Co., Ltd. of China

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

  • ACM Technologies, Inc. of Corona, California

  • American Internet Holdings, LLC of Midland Park, New Jersey

  • The Supplies Guys, LLC of Midland Park, New Jersey

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

  • Grand Image Inc. d/b/a Grand Image USA d/b/a INK4S.com of City of Industry, California

  • Green Project, Inc. of Hacienda Heights, California

  • Ink Technologies Printer Supplies, LLC of Dayton, Ohio

  • Katun Corp. of Bloomington, Minnesota

  • LD Products, Inc. of Long Beach, California

  • Linkyo Corp. of La Puente, California

  • Nectron International, Inc. of Sugar Land, Texas

  • Online Tech Stores, LLC d/b/a SuppliesOutlet.com d/b/a SuppliesWholesalers.com d/b/a OnlineTechStores.com of Reno, Nevada

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

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

According to the complaint, the asserted patents generally relate to toner cartridge technology.  In particular, the ‘278, ‘564, and ‘215 patents relate to a unique coupling member provided at one end of a photosensitive drum to receive rotational driving force from a printer and transmit that driving force to the drum.  The ‘090 patent relates to a photosensitive drum unit including a cylinder with a photosensitive layer and a drum flange.  The ‘744 patent relates to a process cartridge having an inclinable coupling member.  The ‘640 and ‘085 patents relate to improvements to the inventions of the ‘278, ‘564, ‘215, and ‘090 patents that facilitate assembly and disassembly of the photosensitive drum unit.  The ‘304 patent relates to a process cartridge with a photosensitive drum, a drum flange, and an inclinable coupling member.  Lastly, the ‘008 patent relates to ways to implement the inventions of the ‘278, ‘564, and ‘215 patents in cartridges that do not necessarily contain photosensitive drum units.

In the complaint, Canon states that the Proposed Respondents import and sell products that infringe the asserted patents.  Canon specifically refers to various toner cartridges and components thereof associated with the Proposed Respondents as infringing products.

Regarding domestic industry, Canon states that is has engaged in a significant investment in plant and equipment, a significant employment of labor and capital, and a substantial investment in the exploitation of the asserted patents in the U.S.  Canon specifically refers to its facility in Newport News, Virginia, which includes a main plant, an advanced cartridge manufacturing plant, and a toner plant.  Canon states that it uses a significant amount of the total square footage at these facilities to manufacture toner cartridges covered by the asserted patents.

As to related litigation, Canon states that on January 29, 2014, it filed eleven complaints in the U.S. District Court for the Southern District of New York asserting various patents, including some of the asserted patents.  Canon states that each of these complaints involved one or more of the Proposed Respondents.  In addition, Canon states that, concurrently with the filing of the instant ITC complaint, it is also filing ten additional complaints in the U.S. District Court for the Southern District of New York.  These new complaints are directed to each Proposed Respondent that had not already been named in the previously-filed district court actions in New York.  Canon also refers to a number of foreign proceedings involving related patents.

With respect to potential remedy, Canon requests that the Commission issue a general exclusion order, a limited exclusion order, and permanent cease and desist orders directed at the Proposed Respondents.  Canon states that a general exclusion order is warranted because a limited exclusion order could be circumvented, there is a pattern of violation of Section 337, and it is difficult to identify the source of infringing downstream products.  In arguing for a general exclusion order, Canon refers to Certain Toner Cartridges and Components Thereof (Inv. No. 337-TA-829), and states that a general exclusion order would be warranted in the present investigation just as it was in the 829 investigation.  See our August 5, 2013 post for more details on the Commission opinion on remedy and bond in the 829 investigation.