2011-27885. Certain Inkjet Ink Cartridges With Printheads and Components Thereof; Notice of the Commission's Final Determination Finding a Violation of Section 337; Issuance of a General Exclusion Order; and Termination of the 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 in this investigation and has issued a general exclusion order prohibiting importation of infringing inkjet ink cartridges with printheads and components thereof.

FOR FURTHER INFORMATION CONTACT:

Panyin A. Hughes, Esq., Office of the General Counsel, U.S. International Trade Commission, 500 E Street, SW., Washington, DC 20436, telephone [phone]. Copies of non-confidential 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 at 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 [phone].

SUPPLEMENTARY INFORMATION:

The Commission instituted this investigation on June 25, 2010, based on a complaint filed by Hewlett-Packard Company of Palo Alto, California and Hewlett-Packard Development Company, L.P., of Houston, Texas (collectively “HP”). 75 FR 36442 (June 25, 2010). The complaint alleged violations of section 337 of the Tariff Act of 1930 (19 U.S.C. 1337) in the importation into the United States, the sale for importation, and the sale within the United States after importation of certain inkjet ink cartridges with printheads and components thereof by reason of infringement of various claims of United States Patent Nos. 6,234,598 (“the '598 patent”); 6,309,053 (“the '053 patent”); 6,398,347 (“the '347 patent”); 6,481,817 (“the '817 patent”); 6,402,279 (“the '279 patent”); and 6,412,917 (“the '917 patent”). The '917 patent was subsequently terminated from the investigation. The complaint named the following entities as respondents: MicroJet Technology Co., Ltd. of Hsinchu City, Taiwan (“MicroJet”); ain Asia Pacific Microsystems, Inc. of Hsinchu City, Taiwan (“APM”); Mipo Technology Limited of Kowloon, Hong Kong (“Mipo Tech.”); Mipo Science & Technology Co., Ltd. of Guangzhou, China (“Mipo”); Mextec d/b/a Mipo America Ltd. of Miami, Florida (“Mextec”); SinoTime Technologies, Inc. d/b/a All Colors of Miami, Florida (“SinoTime”); and PTC Holdings Limited of Kowloon, Hong Kong (“PTC”).

Respondents Mipo, Mipo Tech., SinoTime, and Mextec were subsequently terminated from the investigation. Respondent MicroJet defaulted. Respondent PTC did not participate in the hearing and failed to file post-hearing briefs. Pursuant to 19 CFR 210.17(d) and (e), the ALJ drew an adverse inference against PTC that “PTC imported accused products into the United States, that those products were manufactured by MicroJet, and that those products contain ICs [integrated circuits] made by APM.” Final Initial Determination (“ID”) at 29.

On June 10, 2011, the Administrative Law Judge (“ALJ”) issued his final ID, finding a violation of section 337 by the respondents. Specifically, the ALJ found that the Commission has subject matter jurisdiction: in rem jurisdiction over the accused products and in personam jurisdiction over APM. The ALJ also found that there has been an importation into the United States, sale for importation, or sale within the United States after importation of the accused inkjet ink cartridges with printheads and components thereof. Regarding infringement, the ALJ found that MicroJet and PTC directly infringe claims 1-6 and 8-10 of the '598 patent; claims 1-6 and 8-17 of the '053 patent; claims 1, 3-5, and 8-12 of the '347 patent; claims 1-14 of the '817 patent; and claims 9-15 of the '279 patent. The ALJ also found that MicroJet induces infringement of those claims. The ALJ further found that APM does not directly infringe the asserted claims of the '598 and does not induce infringement of the asserted patents. The ALJ, however, found APM liable for contributory infringement. With respect to invalidity, the ALJ found that the asserted patents were not invalid. Finally, the ALJ concluded that an industry exists within the United States that practices the '598, '053, '347, '817, and '279 patents as required by 19 U.S.C. 1337(a)(2).

On June 24, 2011, HP filed a contingent petition for review of the ID. On June 27, 2011, APM and the Commission investigative attorney filed petitions for review of the ID. On July 5, 2011, the parties filed responses to the various petitions and contingent petition for review.

On August 11, 2011, the Commission determined to review a single issue in the final ID and requested briefing on the issue it determined to review, and on remedy, the public interest and bonding. 76 FR 51055 (Aug. 17, 2011). Specifically, the Commission determined to review the finding that HP failed to establish by a preponderance of the evidence that Respondent APM induced infringement of the asserted patents.

On August 25, 2011, the parties filed written submissions on the issue under review, remedy, the public interest, and bonding. On September 1, 2011, the parties filed reply submissions. Although Respondent PTC failed to appear at the hearing and failed to file post-hearing briefs, resulting in the ALJ drawing an adverse inference against PTC (ID at 29), PTC filed a letter dated August 24, 2011, responding to the issue under review. However, by failing to file a post-hearing brief, PTC has waived any arguments it has or may have had about any issues in this investigation. See Order No. 2, Ground Rule 11.1. Accordingly, the Commission declines to consider PTC's submission.

Having examined the record of this investigation, including the ALJ's final ID, the Commission has determined that there is a violation of section 337. The Commission has determined to reverse the ALJ's finding that HP failed to establish by a preponderance of the evidence that Respondent APM induced infringement of the asserted patents, and finds that HP established by a preponderance of the evidence that APM induced infringement of the asserted patents. The Commission adopts the ALJ's findings in all other respects.

The Commission has further determined that the appropriate remedy is a general exclusion order prohibiting the entry of inkjet ink cartridges with printheads and components thereof that infringe any of the asserted claims. The Commission has also determined that the public interest factors enumerated in section 337(d) (19 U.S.C. 1337(d)) do not preclude issuance of the general exclusion order. Finally, the Commission has determined that a bond of 100 percent of the entered value is required to permit temporary importation during the period of Presidential review (19 U.S.C. 1337(j)) of inkjet ink cartridges with printheads and components thereof that are subject to the order. The Commission's order and opinion were delivered to the President and to the United States Trade Representative on the day of their issuance.

The authority for the Commission's determination is contained in section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337, and in sections 210.42-46 and 210.50 of the Commission's Rules of Practice and Procedure, 19 CFR 210.42-46, 210.50.

By order of the Commission.

Issued: October 24, 2011.

James R. Holbein,

Secretary to the Commission.