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Canon USITC case closes

August 14, 2015

USITC logoThe case against GPI and Color Imaging, over patent infringement of toner bottles, has seen the two companies agree to a consent order, and has been terminated by the USITC.

The case, which The Recycler reported on in June, saw Canon accuse GPI and Color Imaging of patent infringement, with the United States International Trade Commission (USITC) issuing the details of the complaint, which refer to the importation of toner bottles used in the OEM’s imageRUNNER, imageRUNNER ADVANCE and imagePRESS devices. The OEM was looking to stop the companies from importing the bottles into the United States, the sale for importation, and the sale within the United States of the aforementioned products.

Canon had requested that the USITC issue “a permanent limited exclusion order and cease and desist orders”. A Limited Exclusion Order (LEO) differs from a General Exclusion Order (GEO), but would still bar the two companies from importing and selling the bottles infringing the patents, as well as enforcing cease and desist orders.

In a ‘Notice of institution of investigation’ in July, the USITC had “considered the complaint” and ordered “an investigation to be instituted to determine whether there is a violation” of patents in the case. However, the USITC has now revealed in documentation that both GPI and Color Imaging filed an unopposed motion to “terminate [the] investigation”, with a consent order.

The consent order, agreed by GPI and Color Imaging, outlines that both companies “will not sell for importation, import into the United States, or sell or offer for sale in the United States after importation” the toner bottles named in the case. They also both agreed not to “aid, abet, encourage, participate in, or induce importation” of the bottles “except under consent or license from Canon”.

It goes on to note that both companies “expressly waive all rights to seek judicial review or otherwise challenge or contest the validity of the consent order”, concluding that “termination of this investigation against respondents and entry of the proposed consent order is in the public interest, which favours the settlement of the dispute to avoid needless litigation and to conserve resources”.

As a consequence of the consent order, the Administrative Law Judge, David P. Shaw, signed an initial determination entitled “terminating the investigation based on a consent order stipulation and proposed consent order”. In this document, the USITC judge gave his view that “this investigation is terminated in its entirety”, as he could “not find any evidence that terminating this investigation […] would be contrary to the public interest”.

Canon previously undertook toner bottle IP cases in the UK against Parsia International, Allcopy Products and PPC Solutions Ltd. Parsia settled with the OEM in October 2013, as did AllCopy in September 2013 and PPC in April 2014.

Color Imaging had told The Recycler in June: “GPI and Color Imaging respect the intellectual property rights of others, including Canon’s. They firmly believe that their innovative aftermarket products offer a viable alternative that is beneficial to the consumers, and should not be squeezed out of the market by means other than fair competition in the market.”

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