US Judge Imposes Penalty against G & G

The Honorable Paul J. Luckern issued an Enforcement Initial Determination on April 17 that finds Ninestar, which sells ink cartridges under the "G&G" and "OA-100" brands, repeatedly imported into the United States and sold after importation cartridges that infringe certain patents owned by Epson in violation of the General Exclusion Order and certain Limited Exclusion Orders and Cease and Desist Orders issued on October 19, 2007 by the U.S. International Trade Commission ("ITC").

The decision recommended that the ITC impose a penalty of US$ 20,504,974.16 jointly and severally against Ninestar Technology Co. Ltd. of Zhuhai, China and its two affiliated US companies, Ninestar US and Town Sky.

The judge also found four other companies violated the ITC's Orders and recommended penalties in the amount of US$ 9,700,000 against Mipo International Ltd. and Mipo America Ltd., as well as US$ 700,000 against Ribbon Tree USA Inc. doing business as Cana-Pacific Ribbons Inc. and Apex Distributing Inc.

The penalty against Ninestar is the largest penalty that has ever been recommended by an ITC judge.

Penalties have been assessed only infrequently in the reported history of the ITC. They are collected by and for the United States government.

ALJ Wants $30M In Penalties In ITC Ink Cartridge Spat

ALJ Wants $30M In Penalties In ITC Ink Cartridge Spat

Law360New York (April 22, 2009) --

A U.S. International Trade Commission administrative law judge has recommended that China's NineStar Technology Co. Ltd., a U.S. NineStar unit and Town Sky Inc. be held liable for $20.5 million and Mipo International and Mipo America for 9.7 million in civil penalties for violations of a cease-and-desist orders issued in an ink cartridge case brought by Seiko Epson Corp.

U.S. Court of Appeals Affirms ITC General Exclusion Order That Prohibits Imports of Infringing Ink Cartridges

Epson Continues Enforcement of Its Ink Cartridge Patents - – LONG BEACH, United States.- On January 13, the U.S. Court of Appeals for the Federal Circuit in Washington D.C. affirmed the Final Determination and General Exclusion Order of the U.S. International Trade Commission ("ITC").

A General Exclusion Order that bars imports of infringing new and refilled cartridges was entered by the ITC in October 2007, after an ITC trial established widespread infringement of Epson’s cartridge patents by many foreign manufacturers, importers and U.S. distributors.

The unsuccessful Appeal was filed by Ninestar Technologies Co, Ltd.of China, Ninestar’s U.S.
subsidiaries and Dataproducts USA LLC (a division of Clover Technologies Group). Epson will vigorously proceed with enforcement of its patents now that the validity and enforceability of its patents have again been ratified.

A second ITC trial was conducted on Jan.14-16, 2009 in Washington D.C. to determine any financial penalties that may be assessed against Ninestar, Mipo America,Ltd. and Cana-Pacific Ribbons Inc. and their affiliates for alleged violations of the General Exclusion Order.

The ITC has not yet determined any violations, but has the authority to assess substantial penalties up to $100,000 per day of violations or twice the commercial value of infringing imports. In addition to the ITC actions, Epson filed U.S. District Court lawsuits in Portland, Ore., for patent infringement damages against the same 24 companies named in the ITC action and numerous additional distributors and retailers alleged to have continued infringements after the ITC Final Determination.

The District Court cases were stayed pending the ITC Determination and Appeal, but will now proceed against those defendants that have not settled. Recently, Epson settled two of these lawsuits filed against major internet retailers: Media Street Inc. and Comptree Inc.

Epson maintains a Web site (http://www.itc.epson.com/) that provides U.S. importers, distributors and retailers with timely information about the ITC action and related U.S. District Court lawsuits. The U.S. Court of Appeals Judgment, ITC Exclusion Orders, ITC Seizure and Forfeiture Orders, ITC Enforcement Complaints, and U.S. District Court complaints referenced in this press release are all posted on the Web site with other useful information including a summary of the legal requirements for refilled cartridges.

These ITC actions and U.S. District Court lawsuits were all brought by Epson Portland Inc., Epson America Inc. and Seiko Epson Corp. as part of Epson’s worldwide efforts to protect Epson’s intellectual property rights and its substantial investments in R & D to produce high quality, innovative printers and ink cartridges.

Although most U.S. importers and distributors have now undertaken commendable efforts to avoid infringing Epson’s cartridge patents, Epson will continue taking the necessary actions to protect the company and legitimate competitors from ongoing infringements and unfair competition.

Compatible Inkjet Cartridge Prices Set to Rise

Well it was inevitable that with the constantly decreasing prices of inkjet products over the past 5 years that the celebrations would finally come to a head, and higher prices would be on our doorstep.

Why Now ?

a) Inkjet cartridges are manufactured from Plastic Components (Requires Oil)
and
b) are transported around the world for delivery (Requires Oil)


Withe the ever rising prices of oil, these cost eventually have to be absorbed by the consumer in the cost of products.

What else is influencing prices ?

Epson among others has recently won a ITC ruling against Third party manufacturers sighting patent infringement.

a) This has removed many key players from the market.
b) Put increasing pressure on supply versus demand
c) Caused the redesign of products to ensure compliance with the ITC ruling.

also

Last Mile Delivery

a) Local Shipping costs
b) Your Car fill-up

As gasoline prices are directly related to oil costs, there is increasing costs associated with delivery (or Pick-up).

What can you do to minimize costs....

a) Well as many of the pressures for inflated costs are related to transportation, most suppliers offer reduced prices for quantity purchases, or free shipping for order meeting certain $ values.

Make sure when you purchase to take advantage of these specials, to maximize your savings.

b) Summer vacation times see reduced volumes of sales of Inkjet Products putting increased pressure on retailers to offer specials and or reduced pricing.

Keep your eye on the lookout for specials during the summer season, and purchase in quantity. Most Cartridges have expiry dates going forward for up to 2 years.

What Not to do !

Don't wait for the summer to end and purchase at back to school time. It will probably be too late to avoid the increased costs due to the oil price increases.

ITC General Exclusion Order Upheld

President George W. Bush and the Office of the U.S. Trade Representative allowed the 60-day Presidential Review Period to expire without modifying the General Exclusion Order by the U.S. International Trade Commission that bars all imports of infringing cartridges. As a result, the order is being actively enforced by the U.S. Customs and Border Protection Service.

The General Exclusion Order resulted from a complaint filed by Epson Portland Inc., Epson America Inc., and the Seiko Epson Corp.against 24 of the largest aftermarket ink cartridge manufacturers and distributors. Following the Commission’s review of the trial results in which the ITC judge found that all 750 accused cartridges infringed one or more of Epson’s 11 patents, the ITC issued a General Exclusion Order that prohibits all imports of infringing cartridges and Cease and Desist Orders that prohibit the Respondent companies and their distributors from all sales of infringing cartridges. Epson has set up a Web site at http://itc.epson.com/ with further information to help ensure importers,distributors and retailers are not caught unaware regarding the consequences of violating the orders and continued infringement.

The General Exclusion Order and Cease and Desist Orders do not bar imports or resale of non-infringing cartridges, like non-infringing refilled cartridges. Resellers should be cautious, however, to avoid liability by noting the following legal parameters:

Legal Parameters

1) Refilling an infringing cartridge, like an infringing aftermarket cartridge, still results in another infringing cartridge.

2) Refilled cartridges that were Epson branded cartridges must have been first sold by Epson to consumers in the United States. A “first sale” exception to patent law allows the resale of refilled patented devices that were first sold in the United States by the patent holder. Cartridges that were first sold by Epson to consumers outside the United States and refilled by a third party still infringe Epson’s patents. Epson officials have observed that some suppliers commingle cartridges first sold by Epson in the United States with cartridges first sold to consumers outside the United States in identical packaging, so resellers cannot reliably avoid liability for patent infringement.

3) The refilling process must be limited to legally permissible repair to restore the cartridge to usable condition, but the cartridges cannot be completely reconstructed. Legally permissible repair includes refilling the ink, resetting the IC chip, removing or covering Epson labels, and repackaging.

4) Refilled cartridges must be prominently described at point of sale and on packaging as “refilled” or “remanufactured.” Any Epson trademarks must be removed so consumers cannot be misled into believing that the cartridges were refilled or approved by Epson.

“Epson is pleased that U.S. Customs is now effectively enforcingthe ITC Orders to prevent unfair competition,” said Elizabeth Leung, director of Consumer Supplies, Epson America Inc. “Distributors and retailers in every market channel can expect Epson to continue vigorous enforcement against any infringers who try to undermine the commendable efforts of all the resellers who compete fairly.”

Epson Settles With 123inkjets.com

Epson has entered into a settlement agreement in its patent infringement lawsuit with one of the largest Internet retailers of aftermarket cartridges for Epson inkjet printers.

The settlement with E-Babylon Corp. dba 123inkjets.com and 411inkjets.com, a subsidiary of Valueclick Inc., resulted from a patent infringement lawsuit filed in June 2007 by Epson Portland Inc., Epson America Inc., and Seiko Epson Corp. in the U.S. District Court in Portland, Ore., against four resellers alleging infringement of a total of 18 patents that cover innovations in on-carriage cartridges for Epson desktop inkjet printers and off-carriage cartridges used in certain large format inkjet printers for graphic arts printing.

E-Babylon admitted infringement and enforceability of the patents and agreed to a permanent injunction that prohibits further infringements. Financial terms of the settlement were not releasedl.

Epson said “We commend E-Babylon for deciding to respect Epson’s patents and compete fairly,” said Elizabeth Leung, director, Consumer Supplies, Epson America Inc. “We will continue taking all necessary steps to vigorously defend our intellectual property rights and our investments in R&D against infringement and other unfair competition at every stage of the supply chain from manufacturing to distribution.”

Epson has taken aggressive measures worldwide to protect the company from unfair competition of all types, including a 10-year history of successful patent and trademark enforcement in the United States to protect its intellectual property rights relating to ink cartridges.

Most recently, Epson prevailed in a trial against 24 respondents accused of infringement in an ITC action. The judge made an Initial Determination that all cartridges accused in the case infringe Epson’s patents and recommended a General Exclusion Order that bars all imports of such infringing cartridges.

The ITC has issued a Final Determination on regarding the judge’s recommendations.

Epson has set up a web site at http://itc.epson.com to provide importers and resellers with timely information about the ITC action and orders.

The respondents in the ITC case are believed to supply most of the cartridges sold by the defendants in Epson’s latest lawsuit.

Epson anticipates that it may have to file additional lawsuits against retailers to limit unfair competition and assure the payment of any damages because some ITC respondents are continuing sales to U.S. retailers while limiting their direct presence in the U.S. and not actively defending the ITC action.

ITC Ruling Upholds Epson, 'Disappoints' Ninestar

EPSON PRESS RELEASE:

In a case filed by Epson against 24 aftermarket ink cartridge importers and resellers, the U.S. International Trade Commission issued a Final Determination on Oct. 19 that all the ink cartridges accused by Epson infringe one or more of the company’s patents. A

s a result, the ITC issued a General Exclusion Order that directs U.S. Customs to bar all imports of infringing cartridges, a Cease and Desist Order that bars the named respondents from selling infringing cartridges, and a bond of $13.60 per cartridge imported during the Presidential Review Period.

Epson has established a Web site at http://itc.epson.com to provide importers and resellers with timely information about the ITC decisions and their consequences.

The ITC order results from a complaint filed with the ITC by Epson Portland Inc., Epson America Inc. and Seiko Epson Corp. in February 2006 that accused 24 U.S., German, Korean and Chinese companies of importation and sales of infringing cartridges. Most of the accused companies settled or defaulted in the ITC action prior to trial.

In January 2007, the Hon. Paul J. Luckern, administrative law judge, conducted a trial that was defended by Dataproducts USA LLC, a division of Clover Technologies Group LLC; Ninestar Technology Co. Ltd; Zhuhai Gree Magneto-Electric Co. Ltd. and their affiliated companies.

The judge found that all 750 cartridges at issue infringed one or more of 11 Epson patents that cover innovations in cartridges for Epson desktop printers. The Cease and Desist Orders now prohibit all further sales of infringing cartridges by U.S. affiliates of these companies that defended the action and the companies that defaulted.

Following this Final Determination by the ITC is a 60-day review period during which the President of the United States can limit the remedies ordered by the ITC for policy reasons. A bond of $13.60 per cartridge is required for imports of the accused cartridges during the review period. This bond will be forfeited for all cartridges not returned to U.S. Customs if the ITC orders are not changed by the president.

The Epson companies filed a parallel action in the U.S. District Court in Portland, Ore., against the same 24 companies asserting similar patent claims. In June 2007, the Epson companies filed another District Court lawsuit against a large distributor and three large Internet resellers of cartridges alleging infringement of patents covering innovations in on-carriage cartridges of Epson desktop printers as well as innovations in off-carriage cartridges, such as those used in certain Epson large format printers. These District Court lawsuits seek both monetary damages and injunctive relief.

“We appreciate the ITC recognizing the validity and enforceability of our ink cartridge patents and more importantly for taking the necessary steps to prevent unfair competition,” said Elizabeth Leung, director of Consumer Supplies, Epson America Inc.“We will be working closely with U.S. Customs to ensure the effective enforcement of the ITC orders and will take whatever steps necessary to prevent continuing infringements.

Resellers should note that any damages for willful infringement following the ITC decisions could be substantial.”

Note: Metawatch continues to ensure that it is operating within all prescribed guidelines of the U.S. ITC for its US sales.

Ninestar Fights Back

Schulte Roth & Zabel Client Ninestar Technology Granted International Trade Commission Review of nitial Determination in Seiko Epson Ink Cartridge Case

New York, NY, July 5, 2007 LAWFUEL - Class Action Litigation Newswire - Schulte Roth & Zabel LLP (“SRZ”) is pleased to announce that the International Trade Commission (“ITC”) has agreed to review a final initial determination by an administrative law judge in the Seiko Epson ink cartridge investigation. SRZ had requested, on behalf of its client, Zhuhai, China-based Ninestar Technology Co., Ltd., that the commission review and reverse the determination, which found that Ninestar and 23 other companies violated Seiko Epson Corp.'s patents for ink cartridges.

First ITC decision to review patent invalidity

The June 29 decision by the ITC is the first time it has agreed to review patent invalidity issues under the altered legal standard for patent obviousness set forth by the U.S. Supreme Court in the landmark decision of KSR International v. Teleflex Inc.Following the KSR International decision, Schulte Roth & Zabel filed a letter with the ITC outlining the significance of the KSR International decision and contending that the new standard set by the Supreme Court for patent obviousness compelled a review and warranted a reversal of the initial determination upholding the validity of various Seiko Epson patents.

New Standards for Patent

The new standard set by the Supreme Court is that “when a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” Accordingly, the Commission determined to review whether those portions of the administrative law judge's findings of invalidity for obviousness “are consistent with the Supreme Court's decision in KSR International…”“We are pleased the ITC has decided to review the initial determination,” said Joel Lutzker, partner at Schulte Roth & Zabel and chair of the firm’s intellectual property department. “The new patent obviousness standards set by the Supreme Court’s decision in KSR International v. Teleflex Inc. reflects a shift in jurisprudence for the benefit of industry competition and, ultimately, consumers themselves. Ninestar has fought long and hard in this case to protect the investment the company has made in independently developed technology and we look forward to full Commission review of the initial determination.”

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.

Epson sues Third Party On-Line Retailers

Statement of Claim

Epson is taking US-based e-tailers to court over the sale of generic Epson compatible inkjet cartridges. Epson is pretty confident as it has successfully won cases against some companies in Europe and Asia.

The company filed complaints with the United States International Trade Commission (ITC) against 24 companies in February of this year. The infractions cited ranged from manufacturing aftermarket ink cartridges to importing ink cartridges from foreign countries for sale in the United States.

Settlements

According to Network World

Of the 24 companies, five have agreed to settle with Epson at both the ITC and district court. A further three companies have agreed with the ITC to stop importing cartridges, but will have their cases heard at the district court. Another eight companies have had default judgments filed against them at the ITC because they failed to respond to the complaint with the time allowed, said Epson. Trials against the remaining companies at the ITC will begin in January.

Dirty Tricks

The tricks that the printer manufacturers have used to get customers tied into buying expensive OEM cartridges (as mentioned earlier) range from giving customers "starter" cartridges with printer purchases or including chips on the cartridges to prevent customers from using generics and of course we can't forget the ink cartridges that will report empty even though there is still ink left to print.

Buy while you can !

Make sure you stock up on those Third party cartridges. One never knows when they will no longer be available.

Of course you can still shop at www.metawatch.ca for your supplies.

Check out our Epson Compatible cartridge section