In the Matter of Certain Ink Cartridges and Components Thereof; Notice of Institution of Formal Enforcement Proceeding

May 07, 2008 (U.S. International Trade Commission Documents and Publications/ContentWorks via COMTEX) -- -- SUMMARY: Notice is hereby given that the U.S. International Trade Commission has instituted a formal enforcement proceeding relating to exclusion orders and cease and desist orders issued at the conclusion of the above-captioned investigation.
FOR FURTHER INFORMATION CONTACT: Michael Haldenstein, Office of the General Counsel, U.S. International Trade Commission, 500 E Street, SW., Washington, DC 20436, telephone (202) 205-3041. 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 202-205-2000. 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 the 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 (collectively "Epson"). 71 FR 14720 (March 23, 2006). The complaint, as amended, alleged violations of section 337 of the Tariff Act of 1930 ("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; claims 18, 81, 93, 149, 164 and 165 of U.S. Patent No. 5,622,439; claims 83 and 84 of U.S. Patent No. 5,158,377; claims 19 and 20 of U.S. Patent No. 5,221,148; claims 29, 31, 34 and 38 of U.S. Patent No. 5,156,472; claim 1 of U.S. Patent No. 5,488,401; claims 1-3 and 9 of U.S. Patent No. 6,502,917; claims 1, 31 and 34 of U.S. Patent No. 6,550,902; claims 1, 10 and 14 of U.S. Patent No. 6,955,422; claim 1 of U.S. Patent No. 7,008,053; and claims 21, 45, 53 and 54 of U.S. Patent No. 7,011,397. 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 24 companies located in China, Germany, Hong Kong, Korea, and the United States. Several respondents were terminated from the investigation on the basis of settlement agreements or consent orders or were found in default.

On March 30, 2007, the presiding ALJ (Judge Luckern) issued a final ID in the investigation finding a violation of section 337 with respect to certain respondents. He found the asserted claims valid and infringement by certain respondents' products. He recommended issuance of a general exclusion order and cease and desist orders directed to certain respondents and bond in the amount of $13.60 per cartridge during the Presidential review period.

On October, 19, 2007, after review, the Commission made its final determination in the investigation, finding a violation of section 337. The Commission issued a general exclusion order, limited exclusion order, and cease and desist orders directed to several domestic respondents. The Commission also determined that the public interest factors enumerated in 19 U.S.C. 1337(d), (f), and (g) did not preclude issuance of the aforementioned remedial orders, and that the bond during the Presidential review period would be $13.60 per cartridge for covered ink cartridges.

On February 8, 2008, complainant Epson filed two complaints seeking enforcement proceedings under Commission Rule 210.75. One complaint alleges that Ninestar Technology Co., Ltd.; Ninestar Technology Company, Ltd.; and Town Sky Inc. have violated the general exclusion order and that Ninestar Technology Company, Ltd. and Town Sky Inc. have violated the cease and desist orders directed to them. Epson's second complaint alleges that Mipo International Ltd. and Mipo America, Ltd. have violated the general and limited exclusion orders and that Mipo America, Ltd. has violated the cease and desist order directed to it.

Having examined the complaints seeking a formal enforcement proceeding, and having found that the complaints comply with the requirements for institution of a formal enforcement proceeding contained in Commission rule 210.75, the Commission has determined to institute a consolidated formal enforcement proceeding to determine whether the five respondents are in violation of the Commission's exclusion orders and cease and desist orders issued in the investigation, and what, if any, enforcement measures are appropriate.

The following entities are named as parties to the formal enforcement proceeding: (1) Complainant Epson, (2) respondents (Ninestar Technology Co., Ltd.; Ninestar Technology Company, Ltd.; Town Sky Inc.; Mipo America Ltd., and Mipo International, Ltd.) and (3) a Commission investigative attorney to be designated by the Director, Office of Unfair Import Investigations.

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 section 210.75 of the Commission's Rules of Practice and Procedure (19 CFR 210.75).
Issued: May 1, 2008.
By order of the Commission.
Marilyn R. Abbott,
Secretary to the Commission.
[FR Doc. E8-9984 Filed 5-6-08; 8:45 am]
BILLING CODE 7020-02-P
Notice.
Citation: "73 FR 25768"
Document Number: "Inv. No. 337-TA-565 Consolidated Enforcement Proceeding"
Federal Register Page Number: "25768"
"Notices"

U.S. ITC Orders Review of the Initial Determination in Seiko Epson Cartridge Case

U.S. ITC Orders Review of the Initial Determination in Seiko Epson Cartridge Case

Zhuhai, China – July 2, 2007. Ninestar Technology Co., Ltd. announced today that on June 29, 2007, the United States International Trade Commission ordered review of the initial determination rendered earlier this year by an administrative law judge in the Seiko Epson ink cartridge investigation. Following the administrative law judge's initial determination, Ninestar identified to the Commission numerous errors in the initial determination including errors in claim interpretations and in the infringement conclusions. Ninestar requested that the Commission review and reverse those errors. Upon the U.S. Supreme Court's landmark decision in KSR International Co. v. Teleflex Inc. (April 30, 2007), Ninestar also requested that the Commission review validity of certain Epson patents in light of KSR's lower standard for obviousness.

The Commission has now agreed that review of the issues identified by Ninestar is necessary. This is the first time the Commission has agreed to review invalidity issues using the new KSR standard. Currently the administrative law judge's initial determination has no legal effect.

Rusong Lu, Chairman of Ninestar has stated, "We are extraordinarily pleased that the ITC has accepted our petition for review and are confident that this review will result in reversal of the errors in the initial determination." Mr. Lu added, "This has been a long and expensive battle for Ninestar.

We are the only respondent in the investigation to have actively defended against Seiko Epson's assertions. We have engaged in this battle to protect the investment we have made in independently developed technology as well as to protect our customers.

The Commission's decision to review demonstrates that the confidence we have in our position is justified." Ninestar is represented in this case by a team of lawyers from Schulte Roth & Zabel LLP, of New York headed by Joel Lutzker, chair of Schulte's Intellectual Property Department.

NINESTAR TO CONTEST SECTION 337 INITIAL DETERMINATION with Epson Compatible Products

Judge Rules Ninestar GandG infringed on Epson Patents

ZHUHAI, CHINA, APRIL 5, 2007 – On March 30, Administrative Law Judge Paul J. Luckern of the U.S. International Trade Commission issued an Initial Determination that a number of Epson's U.S. patents relating to ink jet cartridges are infringed by certain products of Ninestar Technology Company, Ltd., a leading Chinese developer and manufacturer of aftermarket ink cartridges and its United States subsidiaries.


Judge Rules 20 other manufacturers infringed on Epson Patents

The Administrative Law Judge also determined that these patents are infringed by 20 other manufacturers, each of whom have either acknowledged infringement by their products or failed to offer any defense. Ninestar is alone among the accused manufacturers in actively contesting Epson's assertions. Ninestar remains fully committed to continue this active defense.

ITC Determination Pending

The Initial Determination has no legal effect unless and until it is adopted by the International Trade Commission which had the power to reject it in full. The Initial Determination also has no effect outside of the United States, or on Ninestar products sold for use in Non-Epson printers or on many Epson compatible products offered by Ninestar which were not accused of infringement. Ninestar thus remains committed to offering its customers a wide range of high quality printer consumables.

Ninestar Contests Ruling.

The Initial Determination is subject to review by the International Trade Commission, which is expected to issue its final decision this summer. Ninestar intends to move the Commission to review and reverse the Initial Determination. Should the Commission adopt the Initial Determination, Ninestar intends to pursue all available appellate channels to seek reversal of the determination.

Ninestars R Series Still OK

Ninestar's new R-series products are not involved in the ITC investigation. Ninestar is confident that its new R-series products therefore will continue to be available to its customers regardless of whether or not the Initial Determination is adopted by the full Commission.

Epson Targets Counterfeit Cartridges

Counterfit Cartridges

Well it looks like those counterfitters have now made it to the inkjet market. Yup they are packaging thier Non OEM cartridges to resemble the real macoy.As a result Epson Australia is following through to deter counterfeit copies and patent infringements of the ink and cartridge technology used in Epson inkjet printers

In Australia and New Zealand Epson employs private investigators to trace sales of possible counterfeit cartridges and help prosecute offenders.

Imported Non Genuine Cartridges

Epson is also looking at imported non-genuine cartridges being sold as compatible with Epson printers to see if they violate any of Epson’s patents. This follows Epson’s successful actions on patent infringements internationally.

In the latest of a series of international actions, Epson has entered settlement agreements in a patent infringement action pending with the U.S. International Trade Commission and similar lawsuits pending in the U.S. District Court in Oregon, with five suppliers of aftermarket printer supplies and their related companies.

Among the settling defendants are three major manufacturers of aftermarket printer supplies: Artech GMBH of Germany, Ink Lab Co. Ltd. of Hong Kong, and InkTec Co. Ltd. of Korea, as well as two major U.S. distributors of aftermarket printer supplies: Inkjetwarehouse.com Inc. of Connecticut, and Rhinotek Computer Products Inc. of California.

As part of the District Court settlements and proposed ITC consent orders, each of the defendants has acknowledged the validity and infringement of at least 10 Epson patents and agreed to cease importing a wide range of infringing cartridges for Epson desktop inkjet printers.