By John Presper

On March 15, 2022, Chief ALJ Clark S. Cheney issued an initial determination (“ID”) on violation of section 337 in Certain Toner Supply Containers and Components Thereof (I) (Inv. No. 337-TA-1259).

The ID is not currently available; however, the Commission issued a notice yesterday soliciting comments from the public on issues raised by the relief recommended by the ALJ should the Commission find a violation.

By way of background, this investigation is based on a March 8, 2021 complaint filed by Canon Inc. of Japan, Canon U.S.A., Inc. of Melville, New York, and Canon Virginia, Inc. of Newport News, Virginia (collectively, “Canon”) alleging violations of Section 337 by 26 respondents in China and the U.S. in the unlawful importation and/or sale in the U.S. of certain toner supply containers and components thereof that infringe one or more claims of U.S. Patent No. 10,209,667 (“the ’667 patent”); U.S. Patent No. 10,289,060 (“the ’060 patent”); U.S. Patent No. 10,289,061 (“the ’061 patent”); U.S. Patent No. 10,295,957 (“the ’957 patent”); U.S. Patent No. 10,488,814 (“the ’814 patent”); U.S. Patent No. 10,496,032 (“the ’032 patent”); U.S. Patent No. 10,496,033 (“the ’033 patent”); U.S. Patent No. 10,514,654 (“the ’654 patent”): U.S. Patent No. 10,520,881 (“the ’881 patent”); U.S. Patent No. 10,520,882 (“the ’882 patent”); U.S. Patent No. 8,565,649 (“the ’649 patent”); U.S. Patent No. 9,354,551 (“the ’551 patent”); and U.S. Patent No. 9,753,402 (“the ’402 patent”).  The asserted patents fall into two families:  The Group I patents are the ’667, ’060, ’061, ’957, ’814, ’032, ’033, ’654, ’881, and ’882 patents; the Group II patents are the ’649, ’551, and ’402 patents.  All the asserted patents generally relate to toner supply containers for use in an electrophotographic image forming apparatus, such as a copier. The Group I patents are the subject of the 337-TA-1259 investigation and the Group II patents are the subject of the 337-TA-1260 investigation.  See our April 8, 2021 post for more details regarding the complaint and Notice of Investigation.

According to the Commission’s notice, Chief ALJ Cheney found a violation of section 337 and recommended issuance a general exclusion order cease-and-desist orders directed to certain respondents.  Accordingly, the Commission is requesting comments that (i) explain how the articles potentially subject to the recommended remedial orders are used in the United States; (ii) identify any public health, safety, or welfare concerns in the United States relating to the recommended orders; (iii) identify like or directly competitive articles that complainant, its licensees, or third parties make in the United States which could replace the subject articles if they were to be excluded; (iv) indicate whether complainant, complainant's licensees, and/or third-party suppliers have the capacity to replace the volume of articles potentially subject to the recommended orders within a commercially reasonable time; and (v) explain how the recommended orders would impact consumers in the United States.  Written submissions must be filed no later than April 14, 2022.

We will post the public version of the ID when it becomes available.