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Dramatic developments in Canon investigation

March 5, 2019

There have been some new twists in the OEM’s well-documented legal saga, as both a joint stipulation and a Markman order have been issued as part of Canon’s USITC Investigation No. 337-TA-1106.

Legal documents viewed by The Recycler reveal that the Markman order, served on 28 February 2019, follows on from the Markman hearing held at the end of August 2018, which triggered a series of motions filed on 28 November 2018 from the various parties involved in the investigation.

The investigation was initially launched to determine “whether there is a violation of section 337 of the Tariff Act of 1930, as amended, in the importation into the United States, the sale for importation, and the sale within the United States after importation of certain toner cartridges and components thereof by reason of the infringement of” Canon’s U.S. patents ‘826, ‘021, ‘729, ‘764, ‘765, ‘960, ‘846, ‘727,  and ‘728.

However, Canon later withdrew its allegations regarding the ‘727 and ‘728 patents, and also withdrew its allegations with respect to certain claims of the ‘826, ‘021, ‘729, ‘764, ‘765, ‘960 and ‘846 patents. As a result, the investigation was terminated in regards to those particular patents and claims.

The legal documents go on to lay out, in detail, the composition and action of the disputed cartridges and how they pertain to Canon’s claims of infringement. The documents also elaborate on claim construction, revealing that the parties involved in the investigation have agreed to constructions for claims 1 and 6 of the ‘826 patent, claims 1 and 8 of the ‘021 patent, claims 1 and 27 of the ‘729 patent, claims 7 and 20 of the ‘764 patent, claims 1 and 13 of the ‘765 patent, claim 1 of the ‘960 patent and claim 1 of the ‘846 patent. Claim 6 of the ‘826 patent has also been approved.

However, disagreement has arisen over five of the terms, with the complainants and respondents disputing descriptive terms such as “first position”, “second position” and “movable”, when it comes to the physical description of the cartridges and how they function.

As a result, the respondents and staff argue that the patentees’ disavowed claim scope. “Claim scope”, explain the legal documents, “can be disavowed implicitly, as well as explicitly.”

Canon’s argument regarding the position of its patented coupling member axis has been deemed “unpersuasive.”

However, both the respondents’ and staff’s proposed constructions have also been found to be “unduly narrow”, regarding the “first position” and “second position” of the axis of the drum coupling member, and therefore “must be rejected”. These issues are subsequently addressed in the documents by Administrative Law Judge Dee Lord.

The Markman order concludes the parties “shall meet and confer concerning the effect of the adopted constructions on the pending motions for summary determination and the hearing in this investigation.” No later than 8 March 2019, the parties must file a joint submission (1) identifying each motion for summary determination that has been rendered moot by the adopted claim constructions and (2) for each motion that a party contends is still viable, indicating whether the motion is ripe for adjudication or whether any party contends that supplemental briefing is necessary to address the adopted claim constructions.

This supplemental briefing should be filed no later than 15 March 2019, which is also the given deadline for the private parties to file pre-hearing statements and briefs.

As well as this Markman order a joint stipulation has also been issued in this investigation, between Canon and Ninestar respondents, concerning withdrawal of remanufactured cartridges.

The joint stipulation documents, filed on 1 March 2019, explain that, on 10 September 2018, Ninestar “made available for inspection” certain remanufactured cartridges “for the purpose of seeking a determination on whether they are protected by the doctrine of permissible repair.”

Canon has asserted that these cartridges infringe at least claim 1 of patent ‘826, claim 1 of the ‘021 patent, claim 13 of the ‘765 patent, claim 1 of the ‘960 patent and claim 1 of the ‘846 patent.

Ninestar contends that the remanufactured cartridges are “subject to the permissible repair doctrine, and thus should be outside the scope of any remedial orders that issue in this investigation.”

However, they have not “at this time offered for commercial sale or commercially sold the remanufactured cartridges within the United States, and have not yet decided whether they will do so in the future.”

In order to “streamline the issues” to be resolved at the upcoming trial, the Ninestar respondents will no longer seek a determination on whether the remanufactured cartridges are covered by the doctrine of permissible repair, and Canon will not seek a determination on whether they infringe any patent claims.

However, if Ninestar ever offer the remanufactured cartridges for commercial sale or commercially sell the cartridges, or any “substantially similar”, Canon will be free to assert the infringement of its patents, while Ninestar will be free to argue that they are subject to the permissible repair doctrine “with respect to any Canon patents.”

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