E7-20983. In the Matter of Certain Ink Cartridges and Components Thereof; Notice of Final Determination; Issuance of General Exclusion Order, Limited Exclusion Order, and Cease and Desist Orders; Termination of Investigation

AGENCY:

U.S. International Trade Commission.

ACTION:

Notice.

SUMMARY:

Notice is hereby given that the U.S. International Trade Commission has found a violation of section 337 of the Tariff Act of 1930 (19 U.S.C. 1337) based on the infringement of certain asserted claims of eleven asserted patents and has issued a general exclusion order, limited exclusion order, and cease and desist orders in the above-captioned investigation. The investigation is terminated.

FOR FURTHER INFORMATION CONTACT:

Michael Haldenstein, Office of the General Counsel, U.S. International Trade Commission, 500 E Street, SW., Washington, DC 20436, telephone [phone]. Copies of all nonconfidential documents filed in connection with this investigation are or will be available for inspection during official business hours (8:45 a.m. to 5:15 p.m.) in the Office of the Secretary, U.S. International Trade Commission, 500 E Street, SW., Washington, DC 20436, telephone [phone]. General information concerning the Commission may also be obtained by accessing its Internet server (http://www.usitc.gov). The public record for this investigation may be viewed on the Commission's electronic docket (EDIS) at http://edis.usitc.gov. Hearing-impaired persons are advised that information on this matter can be obtained by contacting the Commission's TDD terminal on 202-205-1810.

SUPPLEMENTARY INFORMATION:

The Commission instituted this investigation on March 23, 2006, based on a complaint filed by Epson Portland, Inc. of Oregon; Epson America, Inc. of California; and Seiko Epson Corporation of Japan. 71 FR 14720 (March 23, 2006). The complaint, as amended, alleged violations of section 337 in the importation into the United States, the sale for importation, and the sale within the United States after importation of certain ink cartridges and components thereof by reason of infringement of claim 7 of U.S. Patent No. 5,615,957 (“the ‘957 patent”); claims 18, 81, 93, 149, 164, and 165 of U.S. Patent No. 5,622,439 (“the ‘439 patent”); claims 83 and 84 of U.S. Patent No. 5,158,377 (“the ‘377 patent”); claims 19 and 20 of U.S. Patent No. 5,221,148 (“the ‘148 patent”); claims 29, 31, 34, and 38 of U.S. Patent No. 5,156,472 (“the ‘472 patent”); claim 1 of U.S. Patent No. 5,488,401 (“the ‘401 patent”); claims 1-3 and 9 of U.S. Patent No. 6,502,917 (“the ‘917 patent”); claims 1, 31, and 34 of U.S. Patent No. 6,550,902 (“the ‘902 patent”); claims 1, 10, and 14 of U.S. Patent No. 6,955,422 (“the ‘422 patent”); claim 1 of U.S. Patent No. 7,008,053 (“the ‘053 patent”); and claims 21, 45, 53, and 54 of U.S. Patent No. 7,011,397 (“the ‘397 patent”). The complaint further alleged that an industry in the United States exists as required by subsection (a)(2) of section 337. The complainants requested that the Commission issue a general exclusion order and cease and desist orders. The Commission named as respondents twenty-four companies located in China, Germany, Hong Kong, Korea, and the United States. Several respondents have been found in default.

On March 30, 2007, the presiding ALJ issued a final ID in the investigation finding a violation of section 337 and recommending the issuance of a general exclusion order and cease and desist orders. Respondents and the IA filed petitions for review of the ID on April 13, 2007. Responses were filed on April 20, 2007.

The Commission determined to review those portions of the ALJ's final ID concerning: (1) The claim construction of the terms “contacts” (claims 1, 2, 3, and 9 of the ‘917 patent; claims 1, 31, and 34 of the ‘902 patent); “overhang”(definition and location) (claims 1, 31, and 34 of the ‘902 patent); and “ink supply tank” (claim 7 of the ‘957 patent, claims 19 and 20 of the ‘148 patent, claims 83 and 84 of the ‘377 patent, and claim 164 of the ‘439 patent); (2) infringement of claims employing those terms by those products for which review was sought, viz. infringement of claims 1, 2, 3, and 9 of the ‘917 patent (representative cartridges RC-6 and RC-10); claims 1, 31, and 34 of the ‘902 patent (representative cartridges RC-2 and RC-6 to RC-10); and of claim 7 of the ‘957 patent, claims 19 and 20 of the ‘148 patent, claims 83 and 84 of the ‘377 patent, and claim 164 of the ‘439 patent (representative cartridge RC-2); (3) invalidity for obviousness of claims 1, 2, 3, and 9 of the ‘917 patent; claim 1 of the ‘053 patent; and claim 1 of the ‘422 patent. The parties filed briefs concerning the issues under review and remedy, the public interest, and bonding on July 13, 2007 and July 20, 2007.

Having examined the record in this investigation, including the submissions on review and responses thereto, the Commission has determined that there is a violation of section 337 with respect to claim 7 of the ‘957 patent; claims 18, 81, 93, 149, and 164 of the ‘439 patent, claims 83 and 84 of the ‘377 patent; claims 19 and 20 of the ‘148 patent; claim 1 of the ‘401 patent; claims 1, 2, 3, and 9 of the ‘917 patent; claims 1, 31, and 34 of the ‘902 patent; claims 1, 10, and 14 of the ‘422 patent; claim 1 of the ‘053 patent; and claim 21 of the ‘397 patent.

The Commission has also made determinations on the issues of remedy, the public interest, and bonding, as well as relief against defaulting respondents. The Commission determined that the appropriate form of relief in this investigation is a general exclusion order, limited exclusion order, and cease and desist orders.

The general exclusion order prohibits the unlicensed entry of ink cartridges for consumption covered by one or more of claim 7 the ‘957 patent; claims 18, 81, 93, 149, and 164 of the ‘439 patent; claims 83 and 84 of the ‘377 patent; claims 19 and 20 of the ‘148 patent; claim 1 of the ‘401 patent; claims 1, 2, 3, and 9 of the ‘917 patent; claims 1, 31, and 34 of the ‘902 patent; claims 1, 10, and 14 of the ‘422 patent; claim 1 of the ‘053 patent; and claim 21 of the ‘397 patent.

The limited exclusion order prohibits the unlicensed entry for consumption of certain ink cartridges that are covered by one or more of claim 165 of the ‘439 patent and claims 29, 31, 34, and 38 of the ‘472 patent that are manufactured abroad by or on behalf of, or imported by or on behalf of defaulting respondents Glory South Software Mfg., Butterfly Image Corp., Mipo International (“Mipo”), Mipo America Ltd. (“Mipo America”), AcuJet USA, Tully Imaging Supplies, Ltd. (“Tully”), Wellink Trading Co., Ltd. (“Wellink”), and Ribbon Tree (Macao) Trading Co. (“Ribbon Tree Macao”) or any of their affiliated companies, parents, subsidiaries, or other related business entities, or their successors or assigns. The limited exclusion order also prohibits the unlicensed entry for consumption of certain ink cartridges that are covered by one or more of claims 45, 53, and 54 of the ‘397 patent that are manufactured abroad by or on behalf of, or imported by or on behalf of Mipo, Mipo America, Tully, Wellink, and Ribbon Tree Macao or any of their affiliated companies, parents, subsidiaries, or other related business entities, or their successors or assigns.

The Commission has also determined to issue cease and desist orders covering claim 7 of the ‘957 patent; claims 18, 81, 93, 149, and 164 of the ‘439 patent; claims 83 and 84 of the ‘377 patent; claims 19 and 20 of the ‘148 patent; claim 1 of the ‘401 patent; claims 1, 2, 3 and 9 of the ‘917 patent; claims 1, 31 and 34 of the ‘902 patent; claims 1, 10 and 14 of the ‘422 patent; claim 1 of the ‘053 patent; and claim 21 of the ‘397 patent and directed to domestic respondents Ninestar U.S., Town Sky, Dataproducts, and MMC.

The Commission has further determined to issue cease and desist orders covering claim 7 of the ‘957 patent; claims 18, 81, 93, 149, 164, and 165 of the ‘439 patent; claims 83 and 84 of the ‘377 patent; claims 19 and 20 of the ‘148 patent; claims 29, 31, 34, and 38 of the ‘472 patent; claim 1 of the ‘401 patent; claims 1, 2, 3 and 9 of the ‘917 patent; claims 1, 31 and 34 of the ‘902 patent; claims 1, 10 and 14 of the ‘422 patent; claim 1 of the ‘053 patent; and claims 21, 45, 53, and 54 of the ‘397 patent (Mipo America only) and directed to defaulting domestic respondents Glory South Manufacturing, Mipo America, and AcuJet U.S.A.

The Commission has determined that the public interest factors enumerated in 19 U.S.C. § 1337(d), (f), and (g) do not preclude issuance of the aforementioned remedial orders, and that the bond during the Presidential period of review shall be set at $13.60 per cartridge for covered ink cartridges.

The authority for the Commission's determinations is contained in section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337), and in sections 210.45-210.51 of the Commission's Rules of Practice and Procedure (19 CFR 210.45-210.51).

By order of the Commission.

Issued: October 19, 2007.

Marilyn R. Abbott,

Secretary to the Commission.