Canon and the complexities of countering infringement

November 22, 2018

In the latest patent infringement-related news from the OEM, it has been revealed that Canon is partially terminating its well-documented USITC investigation while continuing a steady campaign against patent infringing Amazon sellers.

Three sets of legal documents viewed by The Recycler reveal the latest intriguing developments in Canon’s USITC investigation, which was initially launched in March this year. The investigation centred around the alleged violation “of section 337 of the Tariff Act of 1930 in the importation into the United States and sale of certain toner cartridges and components thereof that infringe patents asserted by the complainants.” 50 companies were involved in the investigation, including some prominent aftermarket figures.

The first set of documents, filed on 16 November 2018, consists of a Memorandum in support of Canon’s “Unopposed Motion for Partial Termination of the Investigation” regarding some of its patent claims, which was also viewed by The Recycler.

Canon is moving for the Issuance of an Initial Determination partially terminating the investigation “without prejudice as to claim 2 of U.S. Patent No. 9,746,826 (“the ’826 patent”), claims 10, 13, 18, and 20 of U.S. Patent No. 9,836,021 (“the ’021 patent”), claims 3, 8, 9, 11, 16-18, 20, and 26 of U.S. Patent No. 9,841,729 (“the ’729 patent”), claim 9 of U.S. Patent No. 9,857,764 (“the ’764 patent”), and claims 4 and 6 of U.S. Patent No. 9,857,765 (“the ’765 patent”).”

According to the documents, Canon’s withdrawal of these claims “will simplify the investigation, streamline the hearing, and conserve judicial, Staff, and private-party resources.”

Along with these two sets of documents, Canon and its respondents (consisting of Ninestar Corporation, Ninestar Image Tech Limited, Ninestar Technology Company, Ltd., Static Control Components, Inc., Aster Graphics, Inc., Aster Graphics Company Ltd., Jiangxi Yibo E-Tech Co., Ltd., Print-Rite Holdings Ltd., Print-Rite N.A., Inc., Union Technology Int’l (M.C.O.) Co. Ltd., Print-Rite Unicorn Image Products Co. Ltd., LD Products, Inc., and The Supplies Guys, Inc.) have filed an Unopposed Joint Motion for Leave to Exempt Certain Uncontested Portions of Witness Statements from the Ground Rule 9.3.1.3. Page Limits.

In the simplest terms, this means that all parties concerned are requesting “that any witness statement pages devoted to the issues of infringement, noninfringement, and satisfaction of the domestic industry technical prong that the parties mutually agree are not contested not count towards the page limits”, which in this case is 500 pages per side.

This Joint Motion also includes the information that all of the parties “intend to move for summary determination of infringement or noninfringement under their proposed claim constructions” and it is expected that “the issues of infringement, noninfringement” and the technical prong will be resolved by a hearing on 28 January 2019.

In other Canon patent infringement news, the OEM has filed a new triplicate of Report Infringement forms with the Spanish division of Amazon, “based on the alleged use of claim 1 and 25 of the Spanish portion of Canon’s European Patent EP 2 087 407”. The three sellers accused of selling infringing products were GOLDAN COLOR S.L.U., DRUCK QUALITY SL and CARLOS MARTINEZ GONZALEZ. The products were all compatible with the OEM HP cartridge model CE505X and consisted of a non-OEM coupling member, a non-OEM drum and a non-OEM housing.

Amazon took down the respective products and informed the vendors, as per the retailer’s protocol.