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ITC issues final determination

May 21, 2019

On 20 May 2019, the United States International Trade Commission (“ITC”) issued a notice to affirm the Administrative Law Judge (“ALJ”)’s initial determination (“ID”) (Order No. 40) granting Ninestar, Static and some other respondents’ respective motions for summary determination of non-infringement.

Ninestar issued a press release confirming that by affirming ALJ’s Markman Order issued earlier this year, the Commission has determined to find no violation of section 337 and the investigation is terminated.

By way of background, Canon Inc., Canon U.S.A., and Canon Virginia, Inc. (collectively, “Canon”) initiated this ITC investigation by filing a complaint on 28 February 2018, alleging that certain toner cartridges and components made and/sold by Ninestar, Static, Print-Rite, Aster and numerous other respondents infringe nine of Canon’s U.S. patents. On 13 June 2018, Canon filed a motion to amend the complaint which reduced the number of patents to 7: U.S. Patent Nos. 9,746,826; 9,836,021; 9,841,729; 9,857,764; 9,857,765; 9,869,960; 9,874,846.  

Previously, Canon filed numerous patent infringement lawsuits against aftermarket companies in federal district courts and before the ITC. Canon’s previous enforcement efforts have largely been successful, securing settlements, injunctions, exclusion orders, and default judgments.

As always, Ninestar mounted a fierce defense. The ITC record shows that on 30 August 2018, the ALJ held a Markman hearing (i.e., a hearing to determine the scope of Canon’s asserted patents). The hearing transcript obtained from the ITC’s online docket shows that two attorneys representing Ninestar and Static argued the case for all respondents only.

On 28 February 2019, the ALJ issued the Markman Order agreeing with Ninestar and Static on critical claim construction issues. In light of the Markman Order, Canon stipulated to non-infringement of the accused products by Ninestar, Static and others. As a result, the ALJ issued the ID of non-infringement on 13 March 2019.

“We are very pleased that the ITC confirmed that Ninestar does not infringe Canon’s patents,” said Jason Wang, General Manager of Ninestar Image Tech Limited. “As a leader of the aftermarket, Ninestar takes great pride in developing innovative cutting-edge products, protected by Ninestar’s own intellectual property,” Jason added.

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