December 12, 2018
The OEM has released its responses to Ninestar, Aster, and Print-Rite regarding the ongoing USITC investigation, with the USITC also answering motions from all four parties.
Last week, The Recycler reported that the three aftermarket companies had filed their own responses to the investigation, started at Canon’s behest regarding allegations of patent infringement.
Regarding Print-Rite’s Motion of Summary Determination of Non-Infringement for its PR2 products, Canon stated that it would not oppose such a determination, “should the Administrative Law Judge’s claim construction ruling make clear that at least one disputed term of every claim asserted against the Type C, D, and E Products requires the claimed coupling member to be capable of pivoting or inclining with respect to the photosensitive drum.”
However, it also highlighted what it claimed were “inaccuracies” in Print-Rite’s motion, including the claim that the OEM had “offered no expert opinion concerning Infringement” and that “the asserted claims require the claimed coupling member to be capable of pivoting or inclining.”
In a similar vein, Canon called Ninestar’s Contingent Motion for Summary Determination of Invalidity for Failure to Satisfy the Written Description Requirement “mistaken” as it claimed the disputed patents “must expressly disclose a coupling member that can move only axially, without pivoting, in order to satisfy the written description requirement.”
“The law does not require any such express disclosure,” Canon argued, “and instead requires only that the disclosure of the patents ‘reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter.’”
The OEM cited the opinion of its own expert, Doctor Lux, in support of its opposition to Canon’s motion. “The Asserted Patents satisfy the written description requirement and Ninestar’s motion should be denied,” Canon added.
Regarding Aster, which, like Print-Rite, filed a motion for summary determination of non-infringement, Canon’s response was similar to its retort towards Print-Rite: It revealed that “should the Administrative Law Judge’s claim construction ruling make clear that at least one disputed term of every claim asserted against the Type A and B Products requires the claimed coupling member to be capable of pivoting or inclining with respect to the photosensitive drum, Canon would not oppose summary determination that Aster’s Type A and B Products do not infringe any of the claims asserted against them under that construction.”
Unlike with Print-Rite, however, Canon did not highlight any perceived inaccuracies in Aster’s motion.
Simultaneously to the OEM’s responses to the three aftermarket companies, the USITC itself has responded to the motions, as well as Canon’s own motion for summary determination of infringement.
“Summary determination is appropriate when the relevant material facts are so clear and beyond dispute that a hearing on the matter at issue would serve no useful purpose,” the USITC reported. “Literal direct infringement exists only where every element of a claim reads exactly on an accused device. If even one limitation is missing or not met as claimed, there is no literal infringement.”
“The disputes with respect to whether the Respondents’ accused products infringe the asserted claims are limited to legal disputes concerning claim construction and therefore no genuine issues of material fact exist,” the Commission continued.
“If the Administrative Law Judge clearly construes the claims such that the claimed coupling member must be capable of pivoting or inclining with respect to the photosensitive drum, the Commission Investigative Staff supports granting each of Respondents’ motions for summary determination of non-infringement for the products identified therein.”
However, in the event that the Judge “construes the claims such that they clearly do not require the claimed coupling member to be capable of pivoting or inclining with respect to the photosensitive drum,” the Commission Investigative Staff stated it will instead support Canon’s Motion of Summary Determination of Infringement.
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